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2020 All Day MCLE La-LAW-palooza

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The GC’s role in the life of an invention — from (1) steps to consider how to protect, (2) patent prosecution, (3) bringing infringement action.

The GC’s role in the life of an invention — from (1) steps to consider how to protect, (2) patent prosecution, (3) bringing infringement action.Moderator: Eric Acker, litigation partnerPanelists:<ul><li>Matt Hayenga (Alcon)</li><li>Kaare Larson )DexCom, Inc.)</li><li>Karen Potter, patent partner</li><li>Brian Kramer, litigation partner</li></ul><hr>

Association of Corporate Counsel (ACC) – San Diego Chapter

2020 All Day MCLE La-LAW-palooza

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Eric has tried more than 50 trials (including more than 47 jury trials) in courtrooms across the country and was inducted into the American College of Trial Lawyers in 2018. His cases have involved a wide variety of technologies - including software, drug compositions, antibodies, medical devices, ultra-short pulse lasers, camera-based object recognition systems and atomic force microscopes – and significant stakes for clients.For instance, in the high-profile SCO v. Novell case, following a three-week trial, the jury affirmed our client Novell’s ownership of the copyrights to the UNIX software code and rejected SCO’s claim for damages of $100 to $200 million. Eric received a California Lawyer Attorney of the Year (CLAY) Award for his defense of Novell. In the Chugai v. Alexion case involving recycling antibody technology, he helped secure a $775 million settlement for Chugai hours before jury selection and opening statements. He has recently tried intellectual property cases in district courts in seven different states.Eric was named the Best Lawyers in America San Diego Litigation Patent Lawyer of the Year in 2014 and San Diego Litigation - Intellectual Property Lawyer of the Year in 2018 and was named a “California Local Litigation Star” in the 2015-2018 and 2022 and 2023 issues of Benchmark Litigation.Prior to joining Morrison Foerster, Eric spent 10 years as a federal prosecutor in the U.S. Attorney’s Offices for the District of Columbia and the Southern District of California.

Eric M. Acker

Partner

Brian is a trial lawyer focusing primarily on patent litigation, often defending companies accused of patent infringement. His work spans diverse technology areas, such as pharmaceuticals, medical devices, diagnostic tools, and DNA sequencing techniques. He has also represented makers of ultracapacitors, video compression techniques, and wireless technology.Brian has successfully tried cases in U.S. district courts and successfully argued appeals before the U.S. Court of Appeals for the Federal Circuit. His trial experience includes obtaining a jury verdict of non–infringement for a client sued by a rival for over $100 million, and a bench trial involving a drug with annual sales over $4 billion.Brian is a member of the American Intellectual Property Law Association, Federal Circuit Bar Association, and American Bar Association. He is chair of the board of directors of the Japan Society of San Diego and Tijuana, and past president of the board of directors of the Legal Aid Society of San Diego.In law school, he served as an associate editor of the University of Illinois Law Review and as the first managing editor of the University of Illinois Journal of Law, Technology & Policy.

Brian M. Kramer

Karen Potter is a partner in Morrison Foerster’s Life Sciences Patent group. Her practice focuses on patent preparation, prosecution, and strategic counseling for start‑up, emerging, and established life sciences and biotechnology companies. She advises clients in the development and management of comprehensive patent portfolios that match their scientific and business objectives. Karen also helps identify and evaluate patentability, ensure freedom to operate, and perform due diligence review of patent portfolios for clients, including investor-side and target-side due diligence.Building on her technical expertise in cellular and molecular biology and immunology, Karen has experience managing and developing patent portfolios in the areas of cell and gene therapies, including T-cell therapies, Natural Killer cell-based therapies,stem cell therapies and gene-based therapies; protein therapeutics such as immunotherapies, including antibody and protein-based therapies; virus therapies; companion diagnostics; and diagnostic assays and bioassays.Karen has 18 years of experience in global patent portfolio development and strategy. She works closely with clients to counsel them on all matters of patent strategy and prosecution and is adept at quickly understanding complex technologies to implement patent filing strategies. She manages and mentors a team of scientific analysts, patent agents, and associates in establishing and building life sciences patent portfolios. Representative clients include Alpine Immune Sciences, Applied Biomedical Science Institute, Aspen Neuroscience,  Bristol Myers Squibb and its subsidiaries Juno Therapeutics and Celgene, Indapta Therapeutics, Inhibrx, Rakuten Medical, Sana Biotechnology, Tune Therapeutics, and Turnstone Biologics.Before entering the patent field, Karen was a postdoctoral fellow at the La Jolla Institute for Allergy and Immunology, Department of Molecular Immunology, in the laboratory of Dr. Carl F. Ware. During her doctorate studies, she worked in the laboratory of the late Dr. Jo Rae Wright who served as an invaluable mentor and supporter. The results of her research have been published in peer-reviewed scientific journals, and she has presented her results at national scientific meetings.She received her J.D. from California Western School of Law, Ph.D. in cellular and molecular biology from Duke University, and B.S. in molecular biology from the University of California, San Diego. Karen has been recognized for her achievements as a patent attorney including recognition by the Legal 500 US.

Karen Potter

Patent Strategy + Prosecution

2020 All Day MCLE La-LAW-palooza

29 Jan 2020 3:15 PM - 4:15 PM PST