MURCH LAW

Varian Medical Systems, a Siemens Healthineers company (medical device company)

Senior Director, Chief Counsel IP

Responsible for improving alignment of the IP and corporate strategies, advising on IP and legal matters, encouraging innovation, and building a comprehensive company IP position. Successes include:

• Built collaborative relationships with R&D, strategic M&A, marketing, sales, tax, finance, procurement, and manufacturing to monitor for and address IP and legal concerns. 

• Performed analyses and due diligence for multiple strategic business development projects, presented risks and opportunities to management, and assisted management in decision-making regarding the projects. 

• Planned and implemented processes and process optimizations, engaging multiple internal and external stakeholders to optimize the processes to allow more focus on value-add activity for all stakeholders.

• Defined a process for R&D to engage the IP department early in the R&D cycle, and shepherded the process to implementation within the corporate R&D V-cycle approval process.

• Negotiated a SAAS master services agreement including individual project template.

• Proactively identified areas of patentability in process and software projects and engaged the associated teams to define inventive concepts to enable the preparation of multiple patent applications.

InCube Labs (incubator of medical device startups) and                Rani Therapeutics (drug+device startup)

Vice President, IP and legal

Responsible for identifying and addressing legal and IP matters arising between InCube and external parties as well as legal and IP matters arising between InCube and its several self-created startups (including Rani). Successes include:

• Prepared and negotiated numerous contracts with suppliers, contractors, collaborators, investors, universities, and contract research organizations (CROs), including master service agreements, supply agreements, service agreements, and licenses, with a focus on clarity and risk minimization.

• Identified a $22.5 million loophole in a complex body of merger agreements and successfully negotiated verbiage closing the loophole.

• Oversaw and participated in patent preparation and prosecution.

• Proactively identified areas of patentability in software projects and engaged the associated teams to define inventive concepts to enable the preparation of multiple patent applications.

• Identified regulatory exclusivities that may be applicable for each product in a product pipeline to extend the term of exclusion against competitive activities. 

• Protected trademark rights of InCube and the startups. 

Foley & Lardner

Senior Counsel

• Provided individualized strategic advice to clients and assisted clients in implementing strategies.

• Served as primary technical member of a defendant litigation team in a patent infringement case (7 patents asserted, with responsive countersuit and 7 inter parties reviews), remotely directing activities of various attorneys and a technical expert, maintaining consistent positioning from litigation inception to settlement.

• Created and managed global patent portfolios to align with client strategies. 

• Managed a remote team of 3 senior counsel-level attorneys on an extensive patent landscaping project around a client’s remote surgical system to advise the client on minimizing infringement risk.

• Participated with a client’s engineers in designing a system to avoid the patent landscape.

Rader, Fishman & Grauer (and National Semiconductor secondment)

Intellectual Property Attorney

• Assisted clients with intellectual property and corporate matters.

• Served as primary technical member of a plaintiff litigation team in a patent infringement case (5 patents, over $1B damages asserted by client, multiple tech giant defendants), remotely directing the activities of various attorneys and 2 technical experts, maintaining consistent positioning for 2.5 years of litigation activity.

• Conducted landscape and freedom to operate analyses; prepared inter partes review claim constructions.

• Wrote and prosecuted patent applications on numerous technologies with a focus on broad-based protection. 

• During secondment at National Semiconductor, participated in M&A projects, negotiated contracts, wrote and prosecuted patents, and assisted with litigation.