Paul has practiced in the intellectual property law field for over 30 years. He has handled litigation, prosecution and patent strategy matters in a variety of market sectors, representing such clients as St. Jude Medical (now Abbott), Synthes (now a Johnson & Johnson company), Acacia Research Group, VIASYS Healthcare, Vestar, Spectra-Physics, Shell Canada Ltd., KBA-Giori (North America), and Genentech. Before working with HDMN, Paul was partner at the internationally known law firms Sidley Austin LLP and Lyon & Lyon. He has been recognized as one of the top IP litigators in the U.S. by The Legal 500 (“very focused with quality work”).
Paul has deep experience in numerous technologies and markets, ranging from the medical and life sciences (including orthopedic products, implantable and external medical devices, recombinant DNA techniques, respiratory therapies and equipment, diagnostics, pharmaceuticals, dietary supplements), to electronics (telecommunications, optical imaging, signal processing, cardiac and neural stimulation), to chemistry (nucleotide and polypeptide products, fuel additives, topical skin formulations, liposome and sustained-release technologies, medical imaging agents). He has worked closely with industry and academic experts and inventors in developing testimony across many of these areas.
As examples of litigation, Paul represented Spine Solutions, Inc. (then a Synthes company) in trial and appeal against Medtronic, successfully asserting a patent to an implanted spinal device for restoring patient mobility. In the field of implantable heart stimulation electronics, Paul represented St. Jude Medical and, separately, Intermedics Inc. in multi-patent actions against Cardiac Pacemakers Inc., resulting in favorable settlements for both clients (including a buy-out of Intermedics by CPI). Paul’s development of trial expert testimony was critical to client KBA-Giori’s successful assertion (against competitor Muhlbauer Inc.) of patents covering opto-electric inspection of high-value printed sheets such as U.S. Treasury banknotes.
Paul has prepared and successfully prosecuted patents directed to many markets and technologies, including nucleic acid therapies to inhibit RNA translation; lipid nanoparticles for drug delivery (technology used in the Pfizer and Moderna COVID-19 vaccines); topical anti-irritant formulations; MRI contrast enhancement agents; extruded polymer sheets; and many others. From a broader client counseling standpoint, Paul has analyzed scores of third-party patents and patent portfolios to assess, for example, acquisition value, defensive positions, and client prosecution strategies. Technologies assessed include the medical and chemical arts outlined above, as well as focused analysis of (alleged) standard-essential patents in the telecommunications sector.
• Boalt Hall School of Law (UC Berkeley) – J.D., 1984
• UCLA – B.S., Chemistry, 1979; Regents Scholarship, 1977-1979
Representative Litigations
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305 (Fed. Cir. 2010) – affirming jury verdict of patent validity, and key aspects of infringement and injunction. Client’s U.S. Patent (“USP”) 6,936,071 is directed to an orthopedic spinal implant used to restore mobility in cases where the natural intervertebral disc has degenerated.
KBA-Giori, North America, Inc. v. Muhlbauer, Inc. (E.D. Va. 2:08-cv-34-HCM) – obtained 2009 jury verdict of patent validity and infringement regarding USP 5,384,859, directed to opto-electronic inspection of high resolution printed sheets (such as U.S. Treasury banknotes). Following the verdict, this and a companion case (No. 2:09-cv-216-HCM, asserting USP 6,665,424) were settled favorably prior to trial on the ’424 patent.
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 576 F.3d 1348 (Fed. Cir. 2009) (en banc) – affirming client’s positions that infringement damages under USP 4,407,288 (relating to an implantable heart stimulator) do not extend to devices that did not actually perform the claimed method, nor to devices outside the U.S. (35 U.S.C. § 271(f)). In earlier district court proceedings, plaintiffs’ principal patent (USP 4,316,472) was successfully invalidated.
INO Therapeutics, Inc. v. SensorMedics Corp. (D.N.J. 00-6033 (AET)) and InnoMed Technologies, Inc. v. VIASYS Healthcare, Inc. et al. (M.D. Fla. 6:03-cv-68-Orl-28JGG) – obtained favorable settlements in 2004 and 2005 following expert discovery. Technology included pulmonary vasoconstriction therapy using nitric oxide gas (e.g. USP 5,873,359 to Zapol et al. of Mass. General Hospital), and sleep apnea ventilation interface (USP 6,595,215).
Intermedics, Inc. v. Cardiac Pacemakers, Inc. (D. Minn. 4‑95‑716 (JRT)) – obtained favorable pretrial settlement following extensive discovery and expert proceedings. The 14 patents in suit related to implantable cardiac pacemakers and defibrillators, and associated electronics, programming and heart physiology technology.
The Liposome Company, Inc. v. Vestar, Inc., 36 USPQ2d 1295 (D. Del. 1994) – judgment of invalidity and non-infringement of plaintiff’s USP 4,229,360, relating to liposomal drug delivery vehicle processing.
Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558 (Fed. Cir. 1990) – affirming summary judgment of no literal infringement, and remanding for analysis under doctrine of equivalents, under USP 3,853,833 (directed to synthetic human growth hormone). The case was successfully settled upon remand.
Eco-Separator Co., Inc. v. Shell Canada Ltd., 12 USPQ2d 1635 (9th Cir. 1989) – affirming directed verdict of no trade secret misappropriation in favor of Shell Canada. The technology involved the design of industrial equipment for separation of oil-water emulsions.
Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524 (Fed. Cir. 1987) – reversing district court’s finding that defendant’s patents complied with best mode requirement of 35 U.S.C. § 112(1), thus invalidating both patents. The involved patents (USP 4,376,328 and USP 4,378,600) related to a structure and method of fabrication of ion lasers.
Quantum Corp. v. Mountain Computer, Inc., 229 USPQ 637 (N.D. Cal. 1986) – granting preliminary injunction against infringement of plaintiff’s “Hardcard” trademark for hard disk drive expansion board products.
Representative Patent Prosecution and Counseling
Implantable microelectronics: prepared and presented patent portfolio analyses related to $700+ million merger of medical device companies.
Medical devices, medical electronics: counseled USPTO reexaminations of patents related to external bone fixation and implantable cardiac stimulators; counseled EPO opposition and European court proceedings regarding impedance tomography patient monitoring equipment and methods, and orthopedic devices.
Pharmaceuticals, and related chemistry, biology, etc.: see, as examples of patents drafted and prosecuted –
• WO 95/26733 (also USP 5,854,410) – nucleic acid “anti-sense” compounds to inhibit messenger RNA translation
• WO 96/02560 (also USP 6,015,893) – cancer cell inhibition compounds, and related chemistry, formulations, and assays
• WO 88/07853 (also USP 4,877,619) – liposomal vesicles for drug delivery
• USP 6,139,850, USP 5,958,436, others – topical anti-irritant formulations; additionally, prepared and presented related freedom-to-operate analysis regarding L’Oreal S.A. patent portfolio
• USP 5,912,233 – peptide-based anti-inflammatory compounds, and related formulations and bioassays
• USP 4,895,807 – cell membrane channel protein, and related drug screening assays
• USP 5,494,655 – methods for magnetic resonance imaging using paramagnetic metal contrast enhancement agents
Petroleum and plastics industries: see WO 01/62483 – extruded polymer sheets; additionally, counseled freedom-to-operate regarding patents related to government-mandated fuel formulations, and carbon fiber plastics processing.
Data processing and transmission: investigated development of data transmission and compression standards (IEEE 802.11, ITU H.264) and related standard-essential patents; developed litigation submissions relating to voice/image processing for video gaming, and video streaming; supervised patent prosecution relating to flat-screen video signal processing.