Li-H Partner Hsien (Lily) Rin-Laures, M.D. Tel 312.474.6641 lrinlaures@marshallip.com Dr. Li-Hsien (Lily) Rin-Laures is a leading partner in "one of the best biotechnology practices in the country," as ranked by Chambers USA. Dr. Rin-Laures, - from Fortune 500 companies to startups - on patent strategy relating to new a former General Counsel of a publicly-held biotechnology company, regularly counsels clients pharmaceutical/biotechnology product development, therapeutic uses, and product lifecycle management, as well as the interface of patents with FDA regulations and related exclusivity provisions. Her unique insider ss perspective, technical expertise, and wide-ranging industry knowledge acquired from managing global patent portfolios for nine different approved drugs and numerous clinical candidates enables her to be a valuable strategic partner to clients. Dr. Rin-Laures is also a former member of the Firm s Executive Committeee responsible for managing the firm. Dr. Rin-Laures was recognized as one of the 2015 National Law Journal's (NLJ) "Outstanding Women Lawyers." In 2014, she was inducted into the LMG Life Sciences Hall of Fame alongg with winning Patent Prosecution Pharmaceutical Attorney of the Year. In recognition of her outstanding patent work in life sciences, Dr. Rin-Laures has been featured as a Life Sciences Star in LMG Life Sciences, 2012-2015. She was recognized as a 2012 Leading Law Firm Rainmaker in MCCA's Diversity & The Bar and as an "IP Star" in Managing IP s IP Stars Survey (fka the World IP Handbook and Survey) (2013-2016). Dr. Rin-Laures has been selectedd as one of the "World s Leading Patent Practitioners" from 2013-2015 by Intellectual Asset Management (IAM)) magazine and selected to the 2014 and 2016 editions of Managing IP'sIPP Stars list of the Top 250 Women in IP. Shee was inducted into Law Bulletin Publishing Company s "40 Illinois Attorneys Under Forty To Watch" Hall of Fame in 2014. She has also been voted an "Illinois Super Lawyer" for a number of years, a list which identifies the top fivee percent of the lawyers in Illinois based on a survey and research conducted by Law & Politics. She has been selected by the Chicago Law Bulletin s Leading Lawyer Network as a "Leading Lawyer." PRACTICE AREAS Patent Prosecution Post-Grant Patent Proceedings INDUSTRIES Biotechnology Pharmaceutical
REPRESENTATIVE EXPERIENCE Member of the team prosecuting U.S. Patent 8,,063,182 related to ENBREL.. Worked creatively and closely with attorneys and scientists att different companies to obtain patent protection covering several approved drugs. Counseled clients regarding Orange Book patent listings and patent term extension applications for multiple different approved products. Successfully argued an appeal before the U.S. Patent Office ss Board of on claims covering a commercially successful FDA-approved drug. Partnered with a company s management team to craft worldwide IP strategy, and led IP interactions and negotiation of alliance agreements with collaborators. Advised on due diligence, valuation of patent portfolios and freedom-to-operate issues. Provided IP opinions to support securities offerings. Dr. Rin-Laures' extensive patent work for clients with biotechnology, pharmaceutical and medical technologies includes: Antibodies Antisense and RNAi Recombinant biological drug products, including hemopoietic factors, growth factors, chemokines, neurotrophic factors, cellular adhesion molecules, enzymes, macrophage and neutrophil products, and bacterial antigens Small peptides and chemically modified derivatives Vaccines and immune therapies Chemical pharmaceutical products Pharmaceutical formulations, including aqueous compositions, lyophilized compositions, hydrogels and transdermal delivery Therapeutic methods using traditional pharmaceuticals or biologicals Processes and vectors for recombinant protein production in bacteria, cell lines and plants Diagnostic methods, e.g., for cancer, infection and autoimmune diseases GMO plants BACKGROUND AND CREDENTIALS Dr. Rin-Laures capabilities in managing global patent portfolios for thee biopharma industry are backed by her extensive experience in patent prosecution and contested proceedings, both in the U.S. and abroad, her familiarity with negotiating licenses and other transactions and her priorr in-house role as General Counsel. She has protected clients interests in securing patents on a number off important commercially-marketed products, providing advice on freedom-to-operate searches, validity and infringement opinions, patent opposition proceedings, reexaminations, protests, inter partes PTAB proceedings and interferences, as well as appeals to the Federal Circuit, where she clerked after law school.
Dr. Rin-Laures regularly counsels clients from startupss to Fortune 500 companies on patent strategy relating to new pharmaceutical/biotechnology product development, therapeutic uses, product life cycle management, as well as the interface with FDA regulations and related exclusivity provisions. She also advises clients in a variety of transactions from due diligence to term sheet negotiations and drafting complex agreements. Her experience includes agreements dealing with licenses, collaborations and other strategic alliances, sponsored research, technology and material transfer. Dr. Rin-Laures served as General Counsel of Hyseq Pharmaceuticals, Inc. (later known as Nuvelo, Inc.) in 2001-2002, while on leave of absence from Marshall, Gerstein & Borun. As General Counsel, she was responsible for settling litigation and negotiating numerous strategic alliance and license agreements. She graduated in 1992 from Harvard Law School, cum laude, where she was Executive Editor and Managing Editor of Harvard Journal of Law and Technology and Editor-in-Chief of "Recentt Developments in Health Law" in Law, Medicine & Health Care. In 1992-93, after graduation, she served a clerkship with the Hon. S. Jay Plager at the Court of Appeals for the Federal Circuit. Dr. Rin-Laures completed her medical school studies in 1988 when shee received her M.D. from Northwestern University Medical School. She was the youngest woman graduate at Johns Hopkins Universityy where she received her B.A. in Chemistry, with honors, in 1984. EDUCATION Harvard Law School J.D., cum laude Northwestern University M.D. Johns Hopkins University B.A., with honors, Chemistry ADMISSIONS Illinois U.S. Court of Appeals, Federal Circuit U.S. Patent and Trademark Office PUBLICATIONS AND PRESENTATI ONS Dr. Rin-Laures has been a speaker on patent and licensing issues. Some former presentations include: "Preparing Patents to Withstand AIA Trials and Defending a Patent in AIA Trials," Co-Presenter, 2014 IP Defense Summit, Chicago, IL, October of 2014. "International IP Strategy: A Cornerstone for Growth in Globall Markets," Panelist, International Executivee Resources Group (IERG) Chicago Chapter Meeting, March 2013. "Mastering Hot New Issues that Arise from New Technology," " Complex Intellectual Property Licensing seminar, Chicago, IL, April 2006. "Creating an Intellectual Property Framework for your Collaboration," National Pharmaceutical and Biotech IP Licensing and Dealmaking Forum, Boston, MA, June 2005.
Past articles include: "Incentives to foster new antibiotics are proposed," Co-Author, The Nationall Law Journal, August 29, 2005. "Industries Await Exemption Verdict," Co-Author, Managing IP, No. 148, April 2005. COMMUNITY AND PROFESSIONAL INVOLVEMENT Recipient of the Association for Women in Science (AWIS) annual Motivatorr Award, given to individuals with demonstrated service, support, and mentorship of women in science. Member, National Women in Bio Board of Directors Past President and Chair of Women in Bio - Chicago Chapterr Past Delegate to the Coalition of Women s Initiatives in Law Firms Member, Intellectual Property Owner s organization Fellow of the American Bar Foundation Past mentor for Menttium Co-Author, "How do we encourage more women to stay and progress in the profession?" ManagingIP.com, March 2015 Profiled in Leading Lawyers Magazine Women's Edition, April 2015 REPRESENTATIVE MATTERS Adams (Monsanto)* v. Leemans (Bayer CropSciences) U.S. Patent and Trademark Office Board of Case Type(s): Patent Interference American Home Products Corporation v. The Upjohn Company* U.S. District Court, District of New Jersey Case Type(s): Patent Infringement Area(s) of practice: Pharmaceuticals Barton v. Fischhoff* (Monsanto) v. Adang (Mycogen Plant Science) Case Type(s): Patent Interference Chee (Affymetrix) v. Drmanac (Hyseq)* U.S. Patent and Trademark Office Board of Case Type(s): Patent Interference, Appeal
Conflict re: Amgen Inc* Commissioner of Patents, Canadian Intellectual Property Office Case Type(s): Conflict Area(s) of practice: Pharmaceuticals, Biotechnology Elsbach (Monsanto)* v. Scott Case Type(s): Patent Interference, Appeal Area(s) of practice: Pharmaceuticals, Biotechnology Grinna* v. Marra Area(s) of practice: Pharmaceuticals Masinovsky* v. Newman v. Rice Case Type(s): Patent Interference McDonald v. Miyazaki*, Pharmaceuticals Opposition and Appeal on behalf of Amgen Inc.* re: Genentech, Pharmaceuticals Opposition and Appeal re: Amgen Inc.* Case Type(s): Opposition, Appeal, Pharmaceuticals Opposition on behalf of ICOS Corporation* re: Protein Design Labs, Inc., Pharmaceuticals Opposition on behalf of Kirin Brewery Co. Ltd.* re: Genentech Australian Patent Office, Pharmaceuticals Opposition on behalf of XOMA Ltd.* re: Protein Design Labs, Inc., Pharmaceuticals
Opposition and Appeal re: Celltech R&D* Case Type(s): Opposition, Appeal, Pharmaceuticals Opposition re: InterMune, Inc.* Opposition Division of the European Patent Office Case Type(s): Opposition Area(s) of practice: Pharmaceuticals Opposition re: Infectious Disease Research Institute (licensee Immune Design Corporation*) Opposition Division of the European Patent Office Case Type(s): Opposition Area(s) of practice: Pharmaceuticals, Vaccines Opposition re: Immune Design Corporation* Opposition Division of the European Patent Office Case Type(s): Opposition Area(s) of practice: Pharmaceuticals, Vaccines *Party Represented