Finch & Lynde 1842-1844 Hubbell, Finch & Lynde 1844-1845 Finch & Lynde 1845-1857 Finches, Lynde & Miller 1857-1890 Miller, Noyes & Miller, 1890-1895 Miller, Noyes, Miller & Wahl 1895-1900 Miller, Noyes & Miller 1900-1906 Miller, Mack & Fairchild 1906-1951 Fairchild, Foley & Sammond 1951-1960 Foley, Sammond & Lardner 1960-1969
PARTNERS
G. Peter (Peter) Albert, Jr. (Partner) admitted to bar, 1993, Michigan; 1994, Illinois; 2000, California; U.S. District Court for the Southern, Northern, Eastern and Central Districts of California; U.S. District Court, Eastern District of Michigan; U.S. District Court, Northern District of Illinois; U.S. District Court, Eastern and Western Districts of Wisconsin; U.S. Court of Appeals for the Federal Circuit; registered to practice before U.S. Patent & Trademark Office. Education: Michigan Technological University (B.S.E.E.); John Marshall Law School (J.D.).
G. Peter Albert, Jr. is a partner with Foley & Lardner LLP and chair of the San Diego/Del Mar office Intellectual Property Department. He is also a member of the Electronics; IP Litigation; Private Equity & Venture Capital; and Trademark, Copyright & Advertising Practices, as well as the Emerging Technologies Industry Team.
Mr. Albert's practice encompasses all phases of international patent, trademark, and copyright litigation, prosecution, licensing and intellectual property counseling. He has experience with a variety of technologies, including wireless communications systems, ultra-fast laser applications, multilayer optical elements, digital/analog circuits, fuzzy logic controllers, broadband and embedded antennas, sensors and sensor networks, communications protocols, robot guidance systems, computer hardware/software, and the Internet.
Mr. Albert is a frequent lecturer on intellectual property law. Prior to his legal career, Mr. Albert worked as a design engineer and design team leader for Reuters, Inc., where he was responsible for the design and development of communications and information systems.
Mr. Albert received an undergraduate degree in electrical engineering from Michigan Technological University and a J.D. from the John Marshall School of Law in Chicago. Mr. Albert is a member of the State Bars of California, Michigan, and Illinois. Mr. Albert is also a member of the U.S. District Courts for the Southern, Northern, Eastern and Central Districts of California, as well as the Eastern District of Michigan, the Northern District of Illinois, and the Eastern and Western Districts of Wisconsin. Mr. Albert is admitted to practice in front of the U.S. Court of Appeals for the Federal Circuit and is a Registered Patent Attorney in the U.S. Patent & Trademark Office.
Mr. Albert was selected as a 2009 San Diego County Top Attorney by The Daily Transcript.
Publications:
· Contributing author of the legal treatise Legal Issues in Electronic Commerce, published by Captus Press (2002 and 2005)
· Author of the legal treatise Intellectual Property Law in Cyberspace, published by BNA Books (1999) and supplements (2000, 2002, 2003, 2004, 2005, 2006)
· "Robots, Spiders, Spam and Other Trademark Threats in Cyberspace: Recent Developments in Trademark Law of the Internet," University of San Diego Law Review, 2002
· "Software Patent Evolution in the U.S. and Europe," Center for International Legal Studies, Protection of Intellectual Property Rights, 2002
· "Market Niches, Patents and Copyrights," San Diego State University, Knowledge Protection and Management, 2001
· "Representing Startups and Emerging Growth Companies in a Down Market," California Education of the Bar, Capitalizing & Protecting New Businesses, 2001
· "Jurisdiction in Internet Litigation," Law Education Institute, Civil Litigation, 2001
· "It Started With Domain Names," BNA Professional Information Centers, 2000
· "Trademark Infringement and Dilution in Cyberspace," Internet Law & Regulation, 1999
· "Using Copyright Law to Prevent Linking, Framing, and Other Copyright Misuse on the Internet," AIPLA Working Papers, 1998
· "Eminent Domain Names: The Struggle to Gain Control of the Internet Domain Name System," John Marshall Computer and Information Law Journal, 1998
· "Right on the Mark: Finding the Nexus Between Trademarks and Internet Domain Names," John Marshall Computer and Information Law Journal, 1996
· "Responding to § 103 Rejections in Electronics/Computer Cases," Patent Resource Group, Electronics & Computer Patent & Copyright Practices, 1995
Member: State Bar of California; State Bar of Michigan; Illinois State Bar Association.
(Also at Palo Alto Office). Practice Areas: Electronics; IP Litigation; Private Equity & Venture Capital; Trademark, Copyright & Advertising.Email: G. Peter (Peter) Albert, Jr.
Douglas H. (Doug) Carsten (Partner) admitted to bar, 1998, California; United States District Court for the Central, Northern and Southern Districts of California; United States Court of Appeal for the Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: State University of New York at Stony Brook (B.S., Chemistry and English Literature, summa cum laude, 1993); Harvard University (M.A., Organic Chemistry, 1995); Georgetown University Law Center (J.D., cum laude, 1998).
Douglas Carsten is a partner with Foley & Lardner LLP and a member of the IP Litigation Practice. He is also a member of the Life Sciences Industry Team. He focuses his practice on complex patent litigation in the pharmaceutical and biotechnology fields.
Before joining Foley, Mr. Carsten was an attorney in the San Diego office of Gray Cary Ware & Freidenrich LLP (which later became DLA Piper Rudnick Gray Cary US LLP). His practice included intellectual property litigation, with an emphasis on pharmaceutical patent litigation. Prior to that he was an associate at the firm of Irell & Manella LLP, where his practice was primarily focused on complex biotechnology patent litigation.
Mr. Carsten earned his J.D., cum laude, from Georgetown University Law Center in 1998. He holds a Masters of Arts degree in organic chemistry from Harvard University (1995) and graduated summa cum laude from the State University of New York at Stony Brook with a B.S. in chemistry and English literature (1993).
Mr. Carsten is admitted to practice in California and before the United States District Court for the Central, Northern and Southern Districts of California, the United States Court of Appeal for the Federal Circuit, and before the U.S. Patent and Trademark Office.
Representative Cases:
· Pfizer et al. v. Cobalt Pharmaceuticals (D.Del.). Obtained favorable dismissal of Hatch-Waxman patent litigation.
· Solvay Pharmaceuticals et al. v. Cobalt Pharmaceuticals (D.Ga.). Obtained favorable settlement of Hatch-Waxman patent litigation.
· Biovail Laboratories Int'l v. Andrx Pharmaceuticals (D.Del.). Obtained favorable settlement Hatch-Waxman patent litigation during trial.
· In re Metoprolol Succinate Patent Litigation, 2006 WL 120343 (Jan. 17, 2006 E.D. Mo.). Obtained favorable summary judgment ruling of invalidity and unenforceability of two AstraZeneca patents, invalidity summary judgment affirmed on appeal.
· Aventis Pharma Deutschland GmbH et al. v. Cobalt Pharmaceuticals, 355 F.Supp.2d 586 (D. Mass. 2005). Obtained favorable summary judgment ruling of non-infringement on one Aventis patent and summary judgment dismissing claim of willful infringement on a second Aventis patent. The case was dismissed during Cobalt's presentation of its case-in-chief.
· Dey L.P. v. Breath Limited (C.D. Cal.). Obtained favorable settlement of Hatch-Waxman patent litigation for client Breath Limited.
· Dri Mark Products v. National Ink Inc., 2002 WL 550968 (April 11, 2002 S.D.N.Y.), aff'd., 2003 WL 1194271 (March 7, 2003 Fed. Cir.) (mem.). Obtained a favorable Markman ruling and summary judgment of non-infringement on a patent relating to metallic inks. Affirmed on appeal to Federal Circuit.
· Chou v. University of Chicago et al., 254 F.3d 1347 (Fed. Cir. 2001). Obtained favorable ruling affirming the dismissal of all state-law damages claims against Aviron.
Practice Areas: IP Litigation.Email: Douglas H. (Doug) Carsten
Chad R. Fuller (Partner) admitted to bar, 1997, California. Education: University of California at San Diego (B.A., Political Science, 1993) Dean's List; Member, Golden Key National Honor Society; University of San Diego, School of Law (J.D., 1997).
Chad Fuller is a partner with Foley & Lardner LLP and a member of the firm's General Commercial Litigation, Information Technology & Outsourcing and Privacy, Security & Information Management Practices.
Mr. Fuller has an extensive background in the preparation of pleadings and other court filings, including motions and briefs in opposition to class certification. He has coordinated court filings with local counsel, conducted depositions, and prepared Rule 26 disclosures, discovery interrogatories and jury instructions. In addition, he has significant experience in motion practice, including summary judgment, and has prepared experts and handled expert depositions. Mr. Fuller also has extensive experience in defending and managing class action litigation including MDL claims.
Mr. Fuller was a partner with Heller Ehrman LLP before the firm joined Foley in October 2008. During his tenure with Heller, he second chaired a case at trial, and prepared another that was dismissed after motions in limine were heard. He also assisted in numerous arbitrations and managed matter responsibility for several clients.
Mr. Fuller received his law degree from the University of San Diego, School of Law (J.D., 1997) and his bachelor's degree in political science from the University of California at San Diego (B.A., 1993), where he was on the dean's list and a member of the Golden Key National Honor Society. Mr. Fuller is a former judicial extern to the Honorable Napoleon A. Jones, Jr., of the U.S. District Court for San Diego.
Mr. Fuller served in the U.S. Marine Corps from 1981-1989 and attained the rank of sergeant, meritoriously. Mr. Fuller was the honor graduate and first in his class at Non-Commissioned Officer Leadership Academy, Class 1-87.
Mr. Fuller is a member of the board of directors for the University of San Diego School of Law; barrister to the Honorable J. Clifford Wallace American Inn of Court; and a member of the American Bar Association. Previously, he was co-chair of the San Diego County Bar Association's Litigation Section.
Mr. Fuller is admitted to practice in California.
Member: American Bar Association; San Diego County Bar Association (Co-Chair, Litigation Section).
Practice Areas: General Commercial Litigation; Information Technology & Outsourcing; Privacy, Security & Information Management.Email: Chad R. Fuller
Robert E. Goldstein (Partner) admitted to bar, 1973, Connecticut; 1975, Florida; 1982, District of Columbia; 1993, California; United States Tax Court; United States Supreme Court. Education: University of Connecticut (B.A., 1969); Suffolk University Law School (J.D., 1973); University of Miami School of Law (LL.M., Taxation, 1974).
Robert E. Goldstein is a partner with Foley & Lardner LLP. As a certified public accountant, he is a member of the firm's Tax & Individual Planning and Tax & Employee Benefits Practices. He is also a member of the firm's National Pro Bono Committee.
Mr. Goldstein currently focuses his practice on employee benefits and all forms of qualified and nonqualified retirement programs. He also has extensive experience in a variety of other executive compensation and employee benefit programs such as health and welfare plans, cafeteria plans, Section 403(b) tax-sheltered annuity plans, Section 457 plans, and employee fringe benefits.
Mr. Goldstein serves as tax and employee benefits counsel to several large retirement plans, sponsored by both private and public sector employees. He also advises nonprofit organizations, primarily arts organizations, trade associations and universities, regarding a variety of tax issues such as unrelated business income and exemption problems.
Mr. Goldstein previously served as an attorney in the Chief Counsel's Office of the Internal Revenue Service in Washington, D.C. He lectures frequently on a variety of topics involving compensation and benefit issues, most recently at the University of Southern California 46th Annual Institute of Taxation. He also has published several articles in such periodicals as The Journal of Taxation and Taxes Magazine.
Mr. Goldstein is a graduate of the University of Miami School of Law (LL.M., Taxation, 1974), Suffolk University Law School (J.D., 1973), and the University of Connecticut (B.A., 1969). He was admitted to the Connecticut Bar in 1973, the Florida Bar in 1975, the Bar Association of the District of Columbia in 1982, and the California Bar in 1993. He also is admitted to practice before the United States Tax Court and the United States Supreme Court.
Member: Connecticut Bar Association; The Florida Bar; District of Columbia Bar; State Bar of California.
Languages: German. Practice Areas: Tax & Employee Benefits.Email: Robert E. Goldstein
Kurt M. Kjelland (Partner) admitted to bar, 1994, California; 1995, Arizona; Court of Appeals for the Federal Circuit; U.S. District Court, Southern, Northern, Eastern and Central Districts of California; U.S. Patent and Trademark Office. Education: University of California, Los Angeles (B.S., Chemical Engineering, 1988); Notre Dame Law School (J.D., 1994).
Kurt M. Kjelland is a partner with Foley & Lardner LLP and a member of the IP Litigation Practice and the Life Sciences Industry Team. Mr. Kjelland's practice focuses on patent litigation and counseling.
He is a registered patent attorney with substantial experience litigating high-stakes patent and trade secret cases in the life sciences and electronics fields. Mr. Kjelland's cases have involved pharmaceutical formulations, injectable wrinkle-fillers, automated prescription delivery instruments, cellular phones, hard disc drives, dental implants, automated DNA sequencing instruments, E. coli diagnostics, transgenic plants, femtosecond lasers used in corneal surgery, peptides, data deconvolution algorithms and optical and laser scanners. He also has handled matters involving consumer products, including hockey equipment, sunglasses, animal transport units, and automobiles.
Mr. Kjelland recently obtained a substantial verdict in an ICC arbitration involving disputed patent royalties. He has also successfully obtained a preliminary injunction preventing a client's customer from disclosing or using his client's trade secrets related to an insulation product, and then successfully defended that judgment on appeal. He recently handled a three patent case in the ITC involving methods of manufacturing hard disc drives.
Mr. Kjelland has considerable experience conducting Hatch-Waxman litigation on behalf of generic drug manufacturers. He was a member of the trial team that invalidated a patent covering the antitumor drug cisplatin.
Mr. Kjelland routinely counsels start-up companies on a variety of IP issues, including strategic patent portfolio development, trade secrets, financing transactions, patentability and infringement analyses, and litigation avoidance strategies.
Prior to his legal career, Mr. Kjelland worked as a chemical engineer for the Dow Chemical Company. Before joining Foley, he was a shareholder at Heller Ehrman LLP.
Mr. Kjelland has written and lectured for the Practicing Law Institute's Patent Litigation program. He co-authored "Not The Same As It Ever Was - Proving Infringement After the Supreme Court's Festo Decision" (PLI 2002). He lectured before the American Chemical Society on written description issues for biotech inventions (ACS 2003). He has written and lectured on methods for protecting and accounting for intellectual property assets, including a San Diego Business Journal article entitled "Intellectual Property Finds Increasing Importance In New Accounting and SEC Regulations" (2002) and a seminar entitled "Owning Markets: Proven Strategies for Intellectual Property Success" (2002).
Mr. Kjelland earned his law degree from Notre Dame Law School (J.D., 1994). He is a graduate of the University of California, Los Angeles (B.S., chemical engineering, 1988).
Mr. Kjelland is admitted to practice in California and Arizona and before the Court of Appeals for the Federal Circuit; the U.S. Patent and Trademark Office; and several U.S. District Courts, including the Southern, Northern, Eastern and Central Districts of California.
He is a member of the California, Arizona and American Bar Associations as well as the American Intellectual Property Law Association; the San Diego Intellectual Property Law Association; and the San Diego Bar Association.
Member: State Bar of California; State Bar of Arizona; American Bar Association; American Intellectual Property Law Association; San Diego Intellectual Property Law Association; San Diego Bar Association.
Practice Areas: IP Litigation.Email: Kurt M. Kjelland
David E. Kleinfeld (Partner) admitted to bar, 1981, New York; 1983, California; U.S. District Court for the Central, Northern, Eastern and Southern Districts of California; U.S. District Court for the Southern and Eastern Districts of New York; U.S. Court of Appeals, Ninth Circuit; U.S. Court of Appeals, Second Circuit; U.S. Court of Appeals for the Federal Circuit; Supreme Court of the United States. Education: Wesleyan University (B.A., Government, cum laude, 1977); New York University School of Law (J.D., 1980).
David Kleinfeld is a partner with Foley & Lardner LLP, where he is a member of the firm's General Commercial Litigation and IP Litigation Practices.
Mr. Kleinfeld has significant experience in representing corporations in litigation involving intellectual property, unfair competition and various business and commercial disputes. During his tenure at Foley, Mr. Kleinfeld has achieved significant patent litigation victories for Kyocera Corporation and Kyocera Wireless Corporation. Other clients in recent and current matters include QUALCOMM, Sprint, MetroPCS, Cricket, ZTE, and Nokia.
Mr. Kleinfeld was a partner with Heller Ehrman LLP before joining Foley in 2008. His successes while at Heller include a complete defense victory by QUALCOMM on patent infringement claims after a three-week jury trial involving position location technology; a plaintiffs' jury trial victory on behalf of QUALCOMM and against Trimble Navigation regarding defective GPS receivers; and a defense victory on behalf of Ernst & Young regarding accounting malpractice and related claims. He defended QUALCOMM in litigation brought by more than 120 plaintiffs, in eight consolidated cases, seeking in excess of $150 million for claimed damages related to lost stock options. A complete defense victory was achieved in the trial court following the granting of 10 successive summary adjudication motions. Mr. Kleinfeld also defended QUALCOMM in class action litigation brought by former employees seeking damages of over $500 million. He obtained dismissal of claims by 97 percent of the class and the action was subsequently settled with payment made entirely by third parties. In addition, Mr. Kleinfeld represented QUALCOMM in five consolidated cases including patent and license disputes with Motorola, in which claims for injunctive relief and damages were successfully resisted. Most recently he obtained substantial verdict in an ICC arbitration involving disputed patent royalties.
Mr. Kleinfeld's additional previous representations include:
· Represented Washington Mutual and Hewlett Packard in class action litigation.
· Represented the City of San Diego in litigation relating to the multibillion dollar underfunding of the San Diego City Employee Retirement System.
· Represented Jostens, Mail Boxes, Etc. and Kaplan in litigation including unfair competition and theft of trade secret claims where he obtained permanent injunctions and other relief.
He has extensive experience in lender liability defense and served as lead counsel for Mitsui Manufacturers Bank in obtaining the first reported appellate decision to establish that banks are not liable for tort damages of breach of standard commercial loan agreements.
Mr. Kleinfeld was part of the trial team that obtained a defense verdict and award of attorneys and accounting fees in excess of $1 million from the advisory jury in Grivas v. Security Pacific National Bank. He was also part of the trial team that obtained a defense verdict and award of $3.5 million to the bank from the jury in Bianchi v. Bank of America.
Mr. Kleinfeld is listed by San Diego Magazine as one of San Diego's top commercial and intellectual property litigators and by California Law Business as one of California's top rainmakers. He was selected by his peers for inclusion in The Best Lawyers in America®, 2008 and 2010 editions, in the areas of commercial and intellectual property litigation and was selected for inclusion in the 2007-2009 San Diego Super Lawyers® lists for his intellectual property litigation practice.
Mr. Kleinfeld graduated from the New York University School of Law (J.D., 1980) and received his undergraduate degree in government from the Wesleyan University (B.A., cum laude, 1977).
Mr. Kleinfeld is author of "New Local Rules Pave the Way to Speedier Patent Trials," San Diego Daily Transcript, June 12, 2007.
Mr. Kleinfeld is a member of the State Bar of New York; State Bar of California; State Bar Litigation Section Executive Committee; Founding Master J. Clifford Wallace American Inn of Court; and San Diego County Bar Association. He is a member of the Committee of Adoption of Local Patent Rules of the United States District Court Southern District of California; and president of the board of directors of San Diego Opera. He is a former member of the Board of Governors of the San Diego Association of Business Trial Lawyers and American Arbitration Association.
Mr. Kleinfeld is admitted to practice in California and New York. He is admitted to practice before the U.S. District Court for the Central, Northern, Eastern and Southern Districts of California; U.S. District Court for the Southern and Eastern Districts of New York; U.S. Court of Appeals, Ninth Circuit; U.S. Court of Appeals, Second Circuit; U.S. Court of Appeals for the Federal Circuit; and the Supreme Court of the United States.
Member: New York State Bar Association; State Bar of California (Litigation Section Executive Committee); San Diego County Bar Association.
Practice Areas: General Commercial Litigation; IP Litigation; Information Technology & Outsourcing; Privacy, Security & Information Management.Email: David E. Kleinfeld
Debra D. (Debbie) Nye (Partner) admitted to bar, 1998, Missouri; 1999, Illinois; 2003, California; United States Court of Appeals for the Federal Circuit; registered to practice before U.S. Patent and Trademark Office. Education: Medical College of Georgia (B.S., Nuclear Medicine Technology, magna cum laude, 1990); Washington University School of Law in St. Louis (J.D., 1998) Recipient, Clifford W. Gaylord Foundation Scholar in Law Award.
Debra Nye is a partner in the San Diego office of Foley & Lardner LLP. She is a member of the firm's Intellectual Property Litigation; Biotechnology & Pharmaceutical; and Privacy, Security & Information Management Practices, as well its Life Sciences Industry Team. She focuses her practice on all aspects of intellectual property counseling and litigation. Ms. Nye has broad experience in intellectual property litigation including trademark, copyright, trade secret and unfair competition disputes, with a focus on patent disputes. Ms. Nye has successfully prevailed in patent cases at jury trials and in summary judgment rulings. Ms. Nye's patent litigation experience includes disputes involving many different technologies such as medical devices, pharmaceuticals, chemical manufacture, genetics, computer software, and electronics. Ms. Nye also advises clients on issues of intellectual property protection and management.
Before joining Foley, Ms. Nye was an associate at the intellectual property firm of Senniger, Powers, Leavitt & Roedel in St. Louis, Missouri. Her practice included patent preparation and prosecution, intellectual property litigation and dispute resolution, and patent and intellectual property counseling. Prior to beginning her legal career, Ms. Nye was a senior nuclear medicine technologist with The Johns Hopkins Hospital in Baltimore, Maryland.
Ms. Nye graduated, magna cum laude, from Medical College of Georgia in 1990 with a B.S. in nuclear medicine technology. She earned her J.D. from Washington University School of Law in St. Louis in 1998, where she received the Clifford W. Gaylord Foundation Scholar in Law Award. Ms. Nye is admitted to practice in California, Missouri, Illinois, and before the U.S. Patent and Trademark Office. Ms. Nye is also admitted to practice before numerous United States District Courts and the United States Court of Appeals for the Federal Circuit. She is a member of the American Intellectual Property Law Association, the San Diego Intellectual Property Law Association, the San Diego County Bar Association, and the Society of Nuclear Medicine.
Member: American Intellectual Property Law Association; San Diego Intellectual Property Law Association; San Diego County Bar Association; Society of Nuclear Medicine.
Practice Areas: Biotechnology & Pharmaceutical; IP Litigation; Information Technology & Outsourcing; Privacy, Security & Information Management.Email: Debra D. (Debbie) Nye
Stephen E. (Steve) Reiter (Partner) admitted to bar, 1985, Oklahoma; 1988, Tennessee; 1991, California; registered to practice before U.S. Patent and Trademark Office. Education: University of Florida (B.S., 1972); Louisiana State University (Ph.D., 1977); University of Tulsa (J.D., 1985) Staff Member, Tulsa Law Journal; Order of the Curule Chair.
Stephen E. Reiter is a partner with Foley & Lardner LLP and a member of the Biotechnology & Pharmaceutical, Chemical & Pharmaceutical and International Practices. He is also a member of the firm's Life Sciences Industry Team. Dr. Reiter focuses his practice in the biotechnology, pharmaceutical and chemical industries. He has over 20 years of experience in addressing intellectual property counseling, transactional issues, and all aspects of domestic and foreign patent prosecution. Dr. Reiter has held positions as in-house corporate counsel and in law firm practice, and most recently was a partner in the San Diego office of another major law firm.
Dr. Reiter is a fellow of the American Institute of Chemists. His professional memberships also include the American Chemical Society and the American Intellectual Property Law Association. He is registered to practice before the U.S. Patent and Trademark Office, and his practice admissions include the states of California, Oklahoma and Tennessee.
Dr. Reiter received his Bachelor of Science degree from the University of Florida and his doctorate in chemistry in 1977 from Louisiana State University. His J.D. degree was conferred in 1985 by the University of Tulsa, where he was a staff member of the Tulsa Law Journal and elected to the Order of the Curule Chair.
Practice Areas: Biotechnology & Pharmaceutical; Chemical & Pharmaceutical.Email: Stephen E. (Steve) Reiter
R. Michael Scarano Jr. (Partner) admitted to bar, 1984, California. Education: University of California, Berkeley (A.B. with academic distinction, 1978); University of California, Boalt Hall School of Law (J.D., 1984).
R. Michael Scarano, Jr. is a partner with Foley & Lardner LLP, and is vice chair of the firm's Health Care Industry Team. He is also a member of the Privacy, Security & Information Management Practice and Life Sciences and Senior Living Industry Teams.
Mr. Scarano has represented a wide variety of health care clients, including private and governmental hospitals and their medical staffs, nursing homes, physician organizations, management services organizations (MSOs), managed care organizations, emergency medical services providers, diagnostic test providers and professional associations. He represents these clients in a wide range of transactional and regulatory matters, including reimbursement, managed care, fraud and abuse/compliance, privacy law and general business transactions.
Mr. Scarano was selected for inclusion in the recent editions of The Best Lawyers in America® (2007-2010), the 2007-2009 San Diego Super Lawyers® lists, and was ranked as one of the top health care attorneys in the nation in 2009 by Chambers USA. He also served as co-chair of the Health Law Committee of the State Bar of California for 2006-2007.
Mr. Scarano has extensive knowledge regarding emergency medical services law and physician assistant law. He currently serves as chair of the American Health Lawyers Association Emergency Medical Services/Medical Transportation Affinity Group. He is the author of "The California Physician Assistant's and Supervising Physician's Legal Handbook," (2008) co-author of the book "Healthcare Compliance Professional's Guide to the False Claims Act," (2007) and has been an associate editor and regular legal columnist for EMS Insider for 15 years. He speaks regularly before health care professional organizations and has published numerous articles on a variety of health law topics.
Mr. Scarano is a 1984 graduate of Boalt Hall School of Law at the University of California at Berkeley, where he was an associate editor of the Ecology Law Quarterly. He received his Bachelor of Arts degree, with academic distinction, from the University of California at Berkeley in 1978.
Practice Areas: Information Technology & Outsourcing; Privacy, Security & Information Management.Email: R. Michael Scarano Jr.
Amar L. Thakur (Partner) admitted to bar, 1995, Arizona; 1998, California; registered to practice before U.S. Patent and Trademark Office. Education: University of Washington (B.S.E.E., 1992); Arizona State University (J.D., 1995).
Amar L. Thakur is a partner with Foley & Lardner LLP. His practice is devoted to IP litigation and technology transactions matters.
Mr. Thakur's litigation experience includes representation of large technology companies in telecommunications / VOIP, medical devices, software and semiconductors in patent, trademark and commercial disputes. He has appeared before the federal courts throughout California, Arizona, New York, Texas, Virginia and the International Trade Commission.
With substantial experience in technology transactional and licensing matters, including acquisition and protection of intellectual property, Mr. Thakur's practice focuses on the development and enforcement of patent portfolios, as well as creating partnerships between IP clients and large private equity firms and other investors who can help to grow promising IP portfolios. He is considered a pioneer in the development of new alternative fee strategies for patent litigation.
Mr. Thakur has particular experience with wireless and software related technology. He has litigated IP matters against Microsoft and Research in Motion and has represented Mformation Technologies, Samsung, Quantum, and other high-tech companies in litigation.
Representative clients of Mr. Thakur's have included BAE Systems, Broadcom, Conexant Systems, Entropic Communications, Gen-Probe, International Rectifier, Kratos Defense, Medtronic, Mformation Technologies, Nextec Corporation, Overland Storage, Quantum Corporation, Samsung, Sony Ericsson, Sony Online Entertainment, State Compensation Insurance Fund, and XIFIN.
Mr. Thakur was selected for inclusion in the 2009 San Diego Super Lawyers® list and was included in the list of 2006 Top Intellectual Property Attorneys in the San Diego Daily Transcript.
Prior to joining Foley, Mr. Thakur was co-chair of Sheppard, Mullin, Richter & Hampton LLP's Intellectual Property Practice Group.
Mr. Thakur earned his law degree, cum laude, from Arizona State University (J.D., 1995) and an undergraduate degree in electrical engineering from the University of Washington (B.S., 1992).
Mr. Thakur is admitted to practice in Arizona, California, and before the U.S. Patent and Trademark Office. He is a member of the San Diego Intellectual Property Association and serves on the board of directors of the Arthritis Foundation.
Publications and Presentations:
Mr. Thakur frequently speaks publicly about legal issues related to intellectual property and technology transactions. He participates on panels on a regular basis for American Corporate Counsel Association events and is a guest lecturer at the Graduate School of Management at the University of California, Irvine. In addition, he has been featured in numerous articles regarding the development of law firm IP practices. His written publications include:
· Co-Author, "Just One Good Idea - Companies Should Go Back To The Basics When Licensing Intellectual Property Assets," Los Angeles and San Francisco Daily Journal, April 5, 2007
· Co Author, "E-Discovery Made Simple(r): Practical Steps for Locating, Analyzing, & Producing Electronic Documents," Corporate Counselor newsletter, Summer 2008
Representative Cases
· Mformation Technologies, Inc. v. Research In Motion (Northern District of California) - Lead trial counsel for plaintiff in a multi patent infringement matter regarding wireless device management software.
· Telespree Communications v. Mformation Technologies Inc. (Northern District of California) - Lead counsel for defendant in a trade secrets action regarding software platforms for activating, managing and updating mobile devices over the air.
· Nextec Applications, Inc. v. Brookwood Companies, Inc. (Southern District of New York) - Lead trial counsel for plaintiff in a patent infringement matter regarding encapsulation technology.
· Sandisk IL, f/k/a mSystems, Ltd. v. Samsung Electronics Co. Ltd. (American Arbitration Association (New York)) - Intellectual property counsel for Samsung in an arbitration for breach of a patent license and supply agreement.
· Quantum Corporation v. Riverbed Technology, Inc. (Northern District of California) - Lead trial counsel for plaintiff and cross-defendant in multiple patent infringement lawsuits regarding data storage products utilizing de-duplication technology (settled favorably).
· Canon U.S.A., Inc., Eastman Kodak Company, Panasonic Corporation of North America, et. al. adv. Screentone Systems Corporation, et al. (Central District of California) - Lead trial counsel for Peerless Systems in lawsuit in which Panasonic had tendered its defense of patent infringement case to Peerless (settled).
· InfoVista S.A. and InfoVista Corporation v. Microsoft Corporation (Northern District of California) - Lead trial counsel for plaintiffs in a trademark infringement action regarding Windows® Vista software (settled favorably).
· Bridgepoint Education, Inc. v. Professional Career Development Institute, LLC (Southern District of California) - Lead trial counsel for plaintiff in a trademark infringement action regarding ASHFORD UNIVERSITY® mark (settled favorably).
· State Compensation Insurance Fund v. Real Consulting and Software Development, LLC, et al. (Superior Court for the County of San Francisco) - Co-lead trial counsel for plaintiff in a breach of contract, good faith and fair dealing and fraudulent inducement matter relating to software development and implementation.
· Kratos Defense and Security Solutions, Inc. and Kratos Government Solutions, Inc. v. Celeris Systems, Inc., et al. (Superior Court for the County of Orange) - Lead trial counsel for plaintiffs in a trade secret, duty of loyalty, and unfair competition matter regarding government contracts related to GPS and telecommunications software (settled).
Recent Representative Transactions
Business and Technology Transactions:
· Represented Broadcom Corporation (NASDAQ: BRCM) in various software license agreements, master services agreements and joint development agreements
· Represented client in multi-million dollar long-term application software license, service level agreement and implementation with Fair Isaac Corp. (NYSE:FIC) for mission critical application software product
· Represented International Rectifier Corp. (NYSE: IRF) in resolution of license dispute with Toshiba relating to MOSFET transistors
Intellectual Property Mergers and Acquisitions Representation:
· Represented Entropic Communications, Inc. (NASDAQ:ENTR) with regards to IP matters in its acquisition of RF Magic
· Represented Expedia, Inc. (NASDAQ:EXPE) with regards to IP matters in its acquisition of Smarter Living, Inc.
· Represented Jamdat Mobile (NASDAQ: JMDT) with regards to its license of Tetris and with regards to IP matters in its sale to Electronic Arts Inc. (NASDAQ:ERTS)
Member: Maricopa and American Bar Associations; State Bar of Arizona; State Bar of California.
Practice Areas: Intellectual Property Litigation; Technology Licensing; Intellectual Property.Email: Amar L. Thakur
Richard J. Warburg (Partner) admitted to bar, 1990, Massachusetts; 1991, California; U.S. Court of Appeals for the Ninth and Federal Circuits; registered to practice before U.S. Patent and Trademark Office. Education: Birmingham University, England (B.Sc., 1978; Ph.D., Molecular Biology, 1981); Suffolk University (J.D., magna cum laude, Valedictorian, 1990).
Dr. Richard Warburg is a partner with Foley & Lardner. He is a member of the Biotechnology & Pharmaceutical, Intellectual Property Litigation, and Chemical & Pharmaceutical Practices, as well as the firm's Health Care, Food, Emerging Technologies, Life Sciences, and Nanotechnology Industry Teams. Dr. Warburg has a strong background in intellectual property litigation, strategic counseling and patent prosecution. He has been lead trial counsel in a variety of patent and trade secret lawsuits. Over the past 18 years, Dr. Warburg's practice has involved him in diverse technical fields including chemistry, biology, computers and mechanics. He has secured patent protection for innovations worldwide.
Unlike many who have extensive knowledge in the biotechnology arena, Dr. Warburg has significant appellate, litigation, and prosecution experience in most technical areas including those as diverse as biopharmacology, proteomics, antisense, diagnostic devices and related machines including laser technology, automobile alarms and accessories, neutron radiation devices, simple and complex mechanical and medical devices, foods and food additives, computer hardware and software and business related technology.
Dr. Warburg is registered to practice before the U.S. Patent and Trademark office. He is admitted to practice in California and Massachusetts, and in the U.S. Courts of Appeals for the Ninth and Federal Circuits.
Dr. Warburg is a graduate of Birmingham University, England, where he received his Bachelor of Science degree in 1978 and his Ph.D. in molecular biology in 1981. He was valedictorian and his law degree was conferred, magna cum laude, by Suffolk University in 1990.
Dr. Warburg was selected for inclusion in the 2007-2009 San Diego Super Lawyers® lists.
Practice Areas: Biotechnology & Pharmaceutical; Chemical & Pharmaceutical; IP Litigation.Email: Richard J. Warburg
SENIOR COUNSEL
Sanjeev K. Dhand (Senior Counsel) admitted to bar, 2000, California; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois (B.S., Aeronautical and Astronautical Engineering, 1988); Georgetown University (J.D., 2000). Member: State Bar of California. Languages: Hindi and Punjabi. Practice Areas: Intellectual Property; Electronic Intellectual Property.Email: Sanjeev K. Dhand
Steven Moore (Senior Counsel) admitted to bar, 2004, California; registered to practice before U.S. Patent and Trademark Office. Education: University of North Carolina at Charlotte (B.S., Electrical Engineering, 1998; M.S., Electrical Engineering, 1998; Ph.D., Electrical Engineering, 2001); California Western School of Law (J.D., 2003). Member: San Diego Bar Association; State Bar of California; San Diego Intellectual Property Law Association. [With U.S. Navy, 1985-1994]. Practice Areas: Patents; Computer and Software Patents; Computer Architecture Patents; Electrical Patent Prosecution; Electrical Patents; Electro-Mechanical Patents; Electronic Patents; Mechanical Patent Prosecution; Mechanical Patents; Patent Applications; Patent Infringement; Patent Prosecution.
Jeffrey Solomon (Senior Counsel) admitted to bar, 2001, California. Education: University of California, San Diego (B.A., 1995); University of Southern California (M.B.A., 2000); University of Southern California Law School (J.D., 2000). Member: Bar Association of San Diego; Bar Association of Los Angeles County. Practice Areas: Information Technology; Outsourcing; Commercial Transactions; Business Counseling.
OF COUNSEL
Barry S. Wilson (Of Counsel) admitted to bar, 1999, California; registered to practice before U.S. Patent and Trademark Office. Education: University of Illinois (B.S., Biology, 1973); University of Illinois Medical Center (M.S., Microbiology and Immunology, 1975; Ph.D., Microbiology and Immunology, 1977); University of San Diego School of Law (J.D., with honors, 1998) Member, Law Review.
Barry S. Wilson is of counsel in Foley's San Diego office. A member of the firm's Biotechnology & Pharmaceutical Practice and Life Sciences Industry Team, Dr. Wilson focuses on obtaining broad-based patent protection for biotechnological inventions having diagnostic and/or therapeutic applications. Dr. Wilson is experienced in both U.S. and foreign patent prosecution.
Prior to joining Foley, Dr. Wilson served as a patent agent where he gained significant experience in patent prosecution, including both domestic and foreign filings, and the preparation of patent applications. He also has experience in patent litigation, assisting with recruiting and preparing scientific expert witnesses for deposition. Previously, Dr. Wilson was a scientific investigator for Hybritech Inc, an early successful biotechnology company later acquired by Eli-Lilly and Co. There, he headed an antibody engineering research team, led interdiscipline product development teams and assisted in evaluation of external intellectual property.
Dr. Wilson has an extensive scientific career in immunology and molecular biology and has authored over 70 articles of scientific research. He was an assistant professor for the University of Michigan Medical School where he headed monoclonal antibody laboratory dedicated to identification of new diagnostic markers for surgical pathology.
As an adjunct professor of Biology at California State University, San Marcos, Dr. Wilson taught immunology. He was a postdoctoral fellowship at Scripps Clinic and Research Foundation where he developed monoclonal antibodies and polyclonal antisera to detect and analyze human histocompatibility and melanoma tumor associated antigens.
Dr. Wilson graduated from the University of Illinois (B.S., Biology, 1973), the University of Illinois Medical Center (M.S., Microbiology and Immunology, 1975; Ph.D., Microbiology and Immunology, 1977), and the University of San Diego School of Law (J.D., with honors, 1998) where he was a member of the Law Review.
Dr. Wilson is a member of the San Diego Intellectual Property Law Association, American Association of Immunologists, and the American Cancer Society. Dr. Wilson is admitted to practice before the U.S. Patent and Trademark Office.
Member: San Diego Intellectual Property Law Association.
Practice Areas: Biotechnology & Pharmaceutical.Email: Barry S. Wilson
ASSOCIATES
Tammy H. Boggs (Associate) admitted to bar, 2007, California and U.S. District Court, Southern District of California. Education: University of California, Los Angeles (B.A., magna cum laude, 1999); University of California, Hastings College of the Law (J.D., cum laude, 2007). Languages: Mandarin Chinese. Practice Areas: Litigation; Intellectual Property Litigation.Email: Tammy H. Boggs
Ary Chang (Associate) admitted to bar, 2006, California and U.S. District Court, Central District of California. Education: University of California at Riverside (B.S., Environmental Engineering, cum laude, 1996); University of California at Irvine (M.S., Engineering, with emphasis in Air Quality and Combustion Engineering, 1998); University of California at Los Angeles (J.D., 2005). Member, UCR University Honors Program, University of California Riverside. Recipient: UC Regents Scholarship; National Science Scholarship; Rockwell International Engineering Scholarship, University of California Riverside. Member: State Bar of California. Languages: Lao, Thai and Chinese (Chaur-Jo). Practice Areas: Intellectual Property; Patents; Intellectual Property Litigation.Email: Ary Chang
Nicole Cunningham (Associate) admitted to bar, 2004, California. Education: Duke University (A.B., Biology, 2001); University of California School of Law, Los Angeles (J.D., 2004). Articles Editor, UCLA Journal of Law and Technology, 2003-2004. Practice Areas: Intellectual Property Litigation; General Commercial Litigation.Email: Nicole Cunningham
Anthony Kuhlmann (Associate) admitted to bar, 2008, California and Massachusetts; registered to practice before U.S. Patent and Trademark Office. Education: University of Guelph (B.Sc., with highest honors, 1993); Suffolk University Law School (J.D., cum laude, 2004); Johns Hopkins University School of Hygiene and Public Health (Ph.D.). Practice Areas: Chemical Intellectual Property; Pharmaceutical Intellectual Property; China.Email: Anthony Kuhlmann
Kim Carl Lobring (Associate) admitted to bar, 2007, California. Education: McKendree College (B.S., 1995); Northern Illinois University (Ph.D., Chemistry, 2001); University of Illinois (J.D., magna cum laude, 2007). Member: State Bar of California. Practice Areas: Biotechnology; Pharmaceutical Intellectual Property; Intellectual Property; Nanotechnology.Email: Kim Carl Lobring
Robert Moore (Associate) admitted to bar, 2004, California. Education: University of California at Santa Barbara (B.S., 1995; M.S.; Ph.D., 2000); University of San Diego (J.D., 2008). Member: State Bar of California. Practice Areas: Biotechnology; Pharmaceutical; Patent Prosecution.Email: Robert Moore
Leslie B. Overman (Associate) admitted to bar, 2003, California; U.S. District Court, Southern District of California; registered to practice before U.S. Patent and Trademark Office. Education: University of Maryland (B.A., Biochemistry, 1982); Texas A & M University (Ph.D., Biochemistry, 1989); California Western School of Law (J.D., 2003). Phi Lambda Upsilon. Recipient, American Cancer Society Post-Doctoral Fellow, 1990-1992. Co-Author: "A highly salt-dependent enthalpy change for Escherichia coli SSB proteinnucleic acid binding due to ion-protein interactions," Biochemistry, 35 (16), 5272-5279, 1996; "Linkage of pH, Anion and Cation Effects in Protein-Nucleic Acid Equilibria. Escherichia coli SSB Protein-Single Stranded Nucleic Acid Interaction," Journal of Molecular Biology, 236, 165-178, 1994; "E. coli single strand binding protein: a new look at helix-destabilizing proteins," Trends in Biochemical Sciences, 13, 250-255, 1988; "Equilibrium Binding of Escherichia coli Single-Strand Binding Protein to Single-stranded Nucleic Acids in the (SSB) 65 Binding Mode. Cation and Anion Effects and Polynucleotide Specificity," Biochemistry, 27, 456-471, 1988; "Salt-dependent changes in the DNA Binding Co-operativity of Escherichia coli Single Strand Binding Protein," Journal of Molecular Biology, 187, 603-615, 1986; "Two Binding Modes in Escherichia coli Single Strand Binding Protein-Single Stranded DNA Complexes; " Journal of Biological Chemistry, 260 (6), Modulation by NaCI Concentration, 3594-3603, 1985. Member, Legislation Committee, Intellectual Property Law Section, American Bar Association. Member: San Diego County Bar Association; San Diego Intellectual Property Law Association (Co-Chair, Mentoring Committee); Licensing Executives Society; BIOCOM (Member, Intellectual Property and Patent Law Committee). Practice Areas: Biotechnology; Intellectual Property; Intellectual Property Portfolio Management; Intellectual Property Prosecution; Patents; Biochemical Patents; Biotechnology Patent Prosecution; Biotechnology Patents; Molecular Biology Patents; Patent Applications; Patent Infringement; Patent Prosecution; Patent Protection; Life Sciences.
Richard W. Thill (Associate) admitted to bar, 2005, California; 2009, U.S. Court of Appeals for the Federal Court, U.S. District Court, Northern and Southern Districts of California and U.S. Supreme Court; registered to practice before U.S. Patent and Trademark Office. Education: Stanford University (B.S.E.E., 1971); Santa Clara University (M.S.E.E., 1981); California Western School of Law (J.D., 2004). Member: State Bar of California; American Bar Association; Intellectual Property Law Association; Silicon Valley Intellectual Property Law Association; San Diego Intellectual Property Law Association. Practice Areas: Electronic Intellectual Property; Intellectual Property Litigation; Patent Prosecution; Patent Litigation; Emerging Growth Companies; Technology Law.Email: Richard W. Thill