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NORTHERN CALIFORNIA RECORD

Friday, March 29, 2024

MORGAN LEWIS & BOCKIUS: Morgan Lewis Continues IP Practice Expansion with 9-Partner Team in California

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Morgan Lewis & Bockius issued the following announcement on Aug. 22.

Morgan Lewis is continuing a significant expansion of its market-leading intellectual property practice by adding a full-service patent prosecution and litigation team resident in Orange County and led by nine partners. The new partners already admitted to Morgan Lewis are Mark J. Itri, Christopher D. Bright, Michael G. Dreznes, M. Todd Hales, Soyeon Pak “Karen” Laub, John D. Magluyan, Andrew D. Mickelsen, and Nathan S. Smith. A ninth partner will be admitted later this week.

The team, which ultimately will also include more than 40 of counsel, associates, technical specialists, patent agents, and docketing personnel, arrives from the same global law firm as the seven-partner team that joined Morgan Lewis in late July/early August in Chicago, Northern California, and Washington, DC. The new additions give Morgan Lewis one of the most commanding IP practices offered by a global law firm.

“The arrival of these new teams is a transformative moment for our firm and for our clients, who will benefit immediately from our enhanced range of elite IP services,” said Firm Chair Jami McKeon. “The longstanding relationships our new partners have with their colleagues who arrived earlier this summer pave the way for a seamless transition that will result in coast-to-coast advantages for our clients doing business in technology, life sciences, and other cutting-edge industries.”

All nine new partners in Orange County have scientific or engineering backgrounds and many have worked closely with clients doing business outside the United States requiring guidance in navigating local IP laws and issues.

“It marks an exciting new development in the evolution of our IP capabilities, strategically reinforcing our services to clients seeking to protect and commercialize their most important innovations,” said Eric Kraeutler, who leads Morgan Lewis’s IP practice. “The wide-ranging patent prosecution and litigation experience of our new partners—coupled with their shared commitment to teamwork, collaboration, and exceptional client service—make them an ideal fit for Morgan Lewis.”

More about the new Morgan Lewis IP partners:

Mark Itri for more than 27 years has provided full-service IP counsel to a variety of businesses, including directing the preparation and prosecution of patent applications, providing offensive and defensive patent prosecution strategy, and negotiating and drafting technology transfer agreements, joint development agreements, and licenses. He also has successfully concluded numerous patent litigation matters. From 2010 through 2015, Mr. Itri headed his former firm’s global IP prosecution, transactions, and strategy practice, and prior to joining Morgan Lewis was head of that firm’s Orange County IP prosecution practice. Before practicing law, Mr. Itri worked in research and development of microprocessor designs and flight control systems in the aerospace industry.

Christopher Bright litigates and tries US patent cases, handles global patent licensing negotiations, and provides patent due diligence for mergers and acquisitions. The holder of a physics degree, he has successfully tried numerous patent cases in federal district courts across the country and before the International Trade Commission (ITC). As a member of the patent bar, he has served as lead counsel in inter partes reviews at the US Patent and Trademark Office (USPTO) and before the US Court of Appeals for the Federal Circuit. Mr. Bright has litigated and counseled on a broad array of patents in the areas of computer networks, consumer electronics, mechanical devices, medical devices, semiconductors and integrated circuits, and software. His industry knowledge includes many years of litigating and negotiating licenses for industry standard essential patents.

Michael Dreznes represents clients in patent prosecution regarding computer and electrical arts, including emerging technology areas such as wearable technology. He also advises on patent litigation and patent licensing matters, and assists clients with building strategic patent portfolios around a wide array of industry standards, such as long-term evolution (LTE), 802.11x, and Multimedia over Coax Alliance (MoCA). Mr. Dreznes also has worked extensively with interactive voice response systems, communication protocols, and corporate risk management client/server applications. He previously was a software engineer.

Todd Hales focuses on all aspects of IP law with a concentration on strategic IP portfolio development, management, and counseling. He also conducts due diligence investigations in connection with funding, acquisition, and merger transactions; prepares legal opinions on patent validity, infringement and non-infringement; and handles portfolio and landscape evaluations and prelitigation analyses. Mr. Hales has represented clients in a wide range of technologies, including medical, life sciences, computer hardware and software, mechanical, electromechanical, and optical. He holds a degree in physics and mechanical engineering.

Karen Laub focuses on patent prosecution, portfolio management, intellectual property due diligence, licensing and other IP-related agreements, litigation, and strategic counseling. She has worked extensively to help companies commercialize their technology and maximize their competitive position and profits from proprietary IP. These matters include negotiating complex licensing, development, manufacturing, and employee/consulting agreements; conducting due diligence with respect to mergers and acquisitions; and reducing risks of infringement. She has successfully arbitrated and litigated cases before US federal courts and the ITC. Born and educated in Korea, Ms. Laub understands the challenges facing clients with global interests. Prior to her legal career, she worked as an electrical and software engineer, researcher, and inventor.

John Magluyan focuses on patent prosecution in the technology sector. He represents clients in various fields, including software, semiconductor devices, digital communications, image processing, internet technologies, materials technologies, aerospace, and optics. He has worked on both US and non-US patent prosecution, rendering opinions concerning infringement and validity of patents, pre-litigation analyses, and investor due diligence. Mr. Magluyan has technical and practical engineering experience in the design, development, and testing of computer software. With a degree in computer science, he formerly worked as a software engineer and patent technology analyst.

Andrew Mickelsen advises on IP matters with an emphasis on portfolio management and counseling. He counsels on the preparation and prosecution of US and non-US patent applications in computer software and hardware, electronic devices, data storage systems, data analytics, network systems, telecommunications, semiconductors, mechanical devices, machine control systems, and green technologies. Mr. Mickelsen, who has a degree in electrical and computer engineering, also has worked on due diligence matters in connection with technology acquisitions and patent litigation.

Nathan Smith focuses on IP portfolio management; competitive market strategies; offensive and defensive IP due diligence; licensing; and domestic and foreign patent prosecution for utility and design protection. With a degree in mechanical engineering, his technical background encompasses a broad range of technologies, including medical and mechanical, and he has written a variety of articles relating to IP issues.

Original source can be found here.

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