ERIC P. MIRABEL : My Resume

Summary

Eric P. Mirabel, J.D., LL.M.
emirabel [at] comcast.net 3783 Darcus
Houston TX 77005

Member of State Bar of Texas and California
Registered Attorney – United States Patent & Trademark Office
American Intellectual Property Law Association

Drafted, negotiated and consummated nearly every type of IP transaction: including licenses, customer agreements (where price related to volume), starting material supply agreements, collaborative research and development agreements, materials transfer and confidentiality agreements.

Successful in obtaining patents and IP positions, through both negotiated agreements and litigation, for two different companies, with widely divergent technologies, while in-house, which changed their trajectories.

Tanox, Inc.: The intellectual property led the company from start-up to the largest IPO in biotech history to that time (April, 2000), and later to the sale of the Company to Genentech for nearly $1 Billion cash (see "Significant Professional Achievements").

BioArray Solutions Ltd.: The intellectual property led to an acquisition of this start-up bioinformatics company by a publicly-held company (see "Significant Professional Achievements" ).

Exceptionally successful in obtaining patents through appeals and negotiation, to obtain protection scope desired and thus provide the company with a significant patent asset, which can be utilized in negotiation, litigation or otherwise.

Successful in opposing and/re reexamining third party patents (i.e., without patent litigation) to invalidate or significantly reducing their effectiveness as inhibitors of client company's products and services. Experienced in litigation, trademark prosecution & litigation, and protecting trade secrets and other forms of IP.

Employment History

Feb. 2003 to Jan. 4, 2010 – Vice President of Intellectual Property & Licensing - BioArray Solutions Ltd. of Warren, New Jersey (subsidiary of Immucor, Inc.) Duties include: sole responsibility – no outside counsel -- for all patent preparation and prosecution; technologies include a semiconductor platform for a molecular diagnostic (DNA-based) array, which is analyzed in a secure web-based system; image analysis; chemistry (linking chemistry, solvent systems, bead polymers), and bioinformatics

Grew the portfolio from about 3 US patents to over 50 US patents, as well as over 20 issued foreign counterparts in 6 years
Succeeded in 10 of 12 appeals filed from Examiner rejections while there
Involved in settling litigation filed by Oxford Gene Technology
Successfully negotiating and drafting in-licenses, open source licenses, and drafting all types of intellectual property agreements including research collaborations, patent licenses, distributorships, employee/consultant agreements, customer agreements, and materials transfer and confidentiality agreements.
Rendered patent validity and infringement opinions
Trademark preparation and prosecution
Formulating strategies to enhance protection and leverage and avoid third party problems.

2002 to present: counseling, patent preparation and prosecution, agreement review and preparation for several companies, including: Wellness Wireless, Inc.; EOS Health, Inc. (Wireless web-based health management); TCP Reliable, Inc. (packaging for refrigerated shipment); Master Supplements (nutraceutical products); BioNumerik Pharmaceuticals (oncology drugs); C60 (substituted fullerenes); Thane Coat (elastomeric polymers).

1990 to 2002 - Tanox, Inc., of Houston -- Promoted to Vice President of Intellectual Property in 1994; (duties: included the same as those for BioArray Solutions Ltd.; i.e., without outside counsel

Built a portfolio of over 50 US patents, plus foreign counterparts
US patents obtained following decisions on appeal in 15 of 17 applications in which appeals were filed by me)
Headed pro-active litigation support, including direct involvement in strategizing on procedural and substantive issues, forum selection, preparing motions, preparing experts, preparing outside counsel for depositions and preparing pleadings

1986-1990 - Intellectual Property and Technology Law Section of Butler & Binion, Houston, Texas; duties included litigation in both intellectual property and commercial areas, patent prosecution, infringement and validity opinion drafting and agreement drafting, in chemical, electronic, mechanical (primarily oil-field), and medical device arts.

1983 -1985 - Lyon & Lyon, Los Angeles, California, duties included intellectual property litigation support, patent prosecution and infringement and validity opinion drafting in polymer, chemical process, electronic, medical device and mechanical arts.

Significant Professional Achievements

Following the merger with Immucor, Oxford Gene Technology (which had filed a lawsuit for infringement in Delaware, and had previously filed lawsuits against a multitude of defendants) settled, without parties filing reexamination of their patents
Immucor, Inc. announced in March, 2008 that one of the primary reasons it was pursuing the $117M merger with BioArray Solutions (since completed) was due to their large patent portfolio, put in place almost entirely by me (with internal help from technical, non-patent people)
Succeeded (in cooperation with European counsel) in an opposition to limit claims of a European patent by Illumina, Inc., and initiated, with EP counsel, four oppositions against Illumina patents

At Tanox, Inc. (1990 to 2002), it transformed from a small company with a vision to the company which in April, 2000 completed the largest IPO to that point in the history of the biotechnology industry (while in litigation/arbitration with both of its development partners, Novartis and Genentech, for its lead product – anti-IgE). In July 2007, Tanox merged with Genentech in a cash transaction for nearly $1 billion dollars (it's the only company Genentech has ever acquired). The value in both the IPO and the sale to Genentech was almost entirely the heavily-litigated anti-IgE agreements/patents (the anti-IgE antibody Xolair was approved by the FDA in 2003) – as evidenced by the fact that, immediately following the merger, Genentech closed the Tanox facilities and terminated almost all personnel and all programs. At Tanox, I was involved in:

obtaining, following appeal, significant patent protection for a wide array of technology and succeeding in defeating an opposition (by Genentech)
succeeding in opposing a patent in Europe of a competitor
initiating in 1993 and settling, in 1996, a lawsuit against Genentech, with an agreement for Tanox, Genentech and Novartis to go forward in collaborative development of Xolair;
initiating an arbitration (and aiding in defending a resulting lawsuit) against Genentech and Novartis over Tanox's contractual rights (from the 1996 agreements) to develop another anti-IgE product in parallel with Xolair
initiating an arbitration against three law firms which represented Tanox against Genentech prior to the 1996 settlement, over their claim for an unconscionable contingent fee
performing due diligence and preparing agreements relating to acquisition/mergers and establishment of subsidiary companies

Education

1985-1986 - National Law Center at George Washington University, Washington, D.C.; studies relating to degree of Master of Laws (LL.M.) in Patent & Trade Regulation Law; received in 1986.

1979-1982 - Northwestern School of Law at Lewis & Clark College, Portland, Oregon; received J.D. in 1982.

1978-1979 - University of British Columbia, Vancouver, B.C., Canada; studies relating to Masters degree in BioPhysics

1973-1978 - University of British Columbia, Vancouver, B.C., Canada; received B.Sc. in Chemistry/BioChemistry, minor in Physics, in 1978

Sample Publications and

(Only those repeatedly cited by courts, treatises or other commentators)

Journal of the Patent and Trademark Office Society 68:1-45 (1986): "Product-By-Process Claims: A Practical Perspective," [cited as support in: Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d. 1371 (Fed. Cir. 2008); Abbott Labs. v. Sandoz, Inc. 566 F.3d. 1282 (Fed. Cir. 2008) (dissenting opinion, Newman J.); SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) (dissenting opinion, Newman, J.); and in Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 23 U.S.P.Q.2d 1801, 1815 (Fed. Cir. 1992) (dissenting opinion, Newman, J.)]

Journal of the Patent and Trademark Office Society 77:539-570 (1995) "Principles of Inherency" (co-authored with Bradford J. Duft), cited in Promega Corp. v. Novagen, Inc., 6 F. Supp. 2d 1004 (D. Wisc. 1997)

Journal of the Patent and Trademark Office Society 71:842-845 (1989) "Kennecott v. Kyocera and 'Written Description': Is Possession Still Nine Tenths of the Law?"

Idea 28:228-247 (1988): "The Expanding Personal Liability of Corporate Officers and Directors for Patent Infringement" (co-authored with Ned L. Conley)

The American University Law Review 36: 811-823 (1987): "'Practical Utility' Is a Useless Concept"

Presentations

Speaker at Annual Houston Intellectual Property Law Association Fall Institutes in 2003 (panel discussion: "In-house Counsel Issues")

Speaker at Annual Houston Intellectual Property Law Association Fall Institutes in 2010 ("eDiscovery and Document Preservation")

BIO Annual Meeting, 1999 "Effective Patent Prosecution in Biotechnology"