McDermott Will & Schulte, a global law firm

He has extensive experience in transactional IP matters, including transaction structuring and portfolio due diligence for investments and acquisitions, and negotiating collaboration license agreements, joint ventures, and other strategic commercial contracts involving key IP assets.

He also actively supports and counsels on transatlantic disputes, including US District Court cases, Patent Trial and Appeal Board (PTAB) proceedings, Reexaminations, EPO Oppositions, and litigation in Europe’s Unified Patent Court.

Chuck has advised on a wide range of technology in engineering and life sciences, including medical technology, pharmaceuticals, microfluidics, drug delivery, machine learning, signal processing, combustion, and energy. In the medical technology sector, his experience has involved a wide range of technologies, including medical diagnostics, intravascular devices, respiratory systems, orthopedic implants, cellular therapy, tissue engineering, neuromonitoring, spine technology, electrical stimulation, healthcare informatics, DNA sequencing, software driven devices, and biologic manufacturing.

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• Represented a global medical diagnostics company in structuring its IP portfolio for assertion in US litigation*
• Represented a US medical technology company in European and US patent office disputes and litigation, and in strategic portfolio development to protect a cutting-edge cardiovascular technology*
• Represented a US media company in defending its patent estate in numerous European opposition proceedings and in European litigation*
• Represented a US pain management company in defending core patent against inter partes review at the PTAB and EPO oppositions*
• Represented a US drug delivery device manufacturer in challenging an estate of competitor patents through inter partes review proceedings at the PTAB*
• Represented a US medical device manufacturer in building and positioning its IP for enforcement in the respiratory care space*
• Represented a US hardware company as patent proprietor in an opposition before the EPO, successfully defending the patent*
• Represented a US medical device manufacturer in a 2011 reexamination proceeding before the US Patent Office, successfully securing affirmation of patents simultaneously being litigated in US Federal Court*
• Represented a US medical device manufacturer in defending a European patent in the EPO Opposition Division and before the EPO Board of Appeals*
• Represented a US medical instrumentation company in a 2013 EPO opposition of a patent held by a major competitor*
• Represented a US-based consumer goods company in developing and implementing a global patent, trademark and technology licensing program to monetize its intellectual property assets*
• Represented a US-based hospital in a national licensing campaign to enforce core technology for medical diagnostics*
• Represented an emerging medical diagnostics company in international patent and freedom to operate strategies*
• Represented a global medical device company in its acquisition of an extremity orthopedic company*
• Represented a global private investment firm and a global blood technology company in connection with the sale to a European healthcare company*
• Represented a global private investment firm in its acquisition of a medical diagnostics company*
• Represented a global private investment firm and a medical diagnostics company in connection with the acquisition of the transplants diagnostics business of a medical products company*
• Represented a personal care products company in its acquisition of an oral care products company*

*Matter handled prior to joining the firm.

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