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Patent attorney

Tuckahoe, NY
February 24, 2020

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*** **** ******

Tuckahoe, NY 10707


Versatile intellectual property attorney experienced in significant litigation and transactional matters, including patent prosecution and licensing for major clients in healthcare sector. Lead patent counsel for start-ups to Fortune 200 and

AM Law 50 organizations.


Philips Corporation, Valhalla, NY– Senior Intellectual Property Counsel – Healthcare Business Sector

2008 – 2019

Counseled and managed multiple, diverse IP matters for worldwide Fortune 200 medical device/healthcare business including:

manage outside counsel and budgets for high-profile patent litigations; conduct document collection; prepare fact and expert witnesses; formulate and drive trial/appellate strategy; initiate and prosecute inter partes PTO review proceedings;

draft and negotiate licensing and settlement agreements; counsel top management and negotiate IP terms of major business transactions for sophisticated medical devices and patient treatment systems.

conduct competitive portfolio review and clearance opinions for various healthcare business sectors; technologies include cancer genomics; personalized medicine; remote critical care patient monitoring systems and medical devices;

manage attorneys and oversee patent docket; including drafting patent applications and prosecution responses ranging from start-up genomics business to $800 MM remote patient monitoring sectors;

Goodwin Procter LLP, New York, NY– Litigation attorney – AM Law 50 Intellectual Property Practice Group

2001 – 2008

Managed and litigated major patent cases through trial including:

draft patent clearance opinions and detailed FDA statements for major pharma client on non-infringement and invalidity positions; manage discovery; draft pleadings; protective orders; discovery and trial motions; expert declarations and reports; pre-trial orders and motions; trial and appellate briefs;

identify, retain and prepare technical fact/expert witnesses for deposition and trial testimony; develop and counsel major client on litigation strategies;

take and defend numerous fact/expert depositions on complex scientific and patent issues; argue and defend client in court at hearings and trial.

Cooper & Dunham LLP, New York, NY– Attorney

2000 – 2001

Prepared and prosecuted U.S. and PCT patent applications to allowance; managed patent docket for biotech, pharmaceutical, and chemical clients. Technologies included personalized genomic HIV test kits; Hepatitis C assays; monoclonal anti-bodies. Drafted responses/amendments for U.S. and foreign office actions. Counseled biotech, pharmaceutical and major university clients on key life science patent matters.

St. Onge, Steward, Johnston & Reens LLC, Stamford, CT – Attorney

1998 – 2000

Prepared and prosecuted patent applications in numerous technologies. Drafted amendments and responses to PTO office actions and instructions to foreign agents. Counseled clients on patent matters. Drafted patentability, patent infringement and clearance opinions. Managed trademark opposition. Drafted briefs on trademark and copyright litigation matters.


322 Read Avenue

Tuckahoe, NY 10707



BOC Gases, Murray Hill, NJ – Principal Engineer

1991 – 1995

Managed efforts of R&D, engineering and sales to commercialize new applications for clients in pharmaceutical, chemical, petrochemical, refinery, aerospace and mining industries (e.g., Dupont, Shell Oil, Upjohn Pharmaceutical, etc.). Led test

demos at customer sites. Obtained $1.5 million per year in new business contracts. Received company performance award.

Lotepro Corporation, Valhalla, NY– Environmental Engineer

1988 – 1991

Designed major high-tech water treatment systems for cities of Dallas, Los Angeles, Miami and Winnipeg. Obtained $25 mm in new projects. Received company performance award.

AC Biotechnics, Inc., Woodbury, NY – Field Service Engineer

1985 – 1988

Commissioned innovative industrial water treatment plants. Managed process start-up troubleshooting, laboratory and operator training for client at sites throughout North America. Services involved meeting contractual treatment guarantees.


Seton Hall University, School of Law – J.D. cum laude honors

Columbia University, School of Engineering and Applied Science – B.S. Chemical Engineering

BAR ADMISSIONS: New York; Connecticut; U.S. Patent and Trademark Office; Federal Circuit Court of Appeals

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