Greg joined with Messrs. Meunier and Curfman to create a firm that provides practical intellectual property solutions to clients exhausted by the big firm approach to IP law. The big law firm approach leaves clients with a rotation of experts for each matter, none of whom have the time (or budget) to gain a deep understanding of the client’s business. The traditional legal industry approach has been hyper-specialization to justify ever-increasing fees. Greg, on the other hand, strives to cultivate an understanding of a wide range of IP legal expertise, including patent prosecution, IP licensing, transactions and litigation.
Greg brings deep technical and legal expertise as a biomechanical engineer, medical researcher and in-house corporate counsel to a global medical device company to the service of clients in the medical technology and software industries. Greg frequently advises corporate officers, product managers, boards of directors, business development executives and research engineers on strategic approaches to product clearance, research and development and portfolio management.
Greg also has experience in performing IP due diligence for mergers and acquisitions, excelling at identifying salient deal points and conveying a weighted understanding of the relevant IP issues to business development executives. He also prepares agreements associated with mergers and acquisitions, including complex, multi-staged collaboration, confidentiality, asset purchase, in-licensing and out-licensing agreements.
Greg was a primary contributor to AdvaMed’s efforts to protect the interests of medical technology companies by lobbying Congress on the Patent Reform Bill. He has also contributed to an amicus brief on In re Bilski on behalf of AdvaMed, addressing the needs of medical device software developers.
Greg also provided a range of litigation services. Greg worked as part of a team helping Edwards Lifesciences in multi-jurisdictional, multiple-venue patent litigation with Medtronic. Meunier, Carlin and Curfman’s litigation team, along with Greg, helped Edwards Lifesciences achieve a favorable settlement with Medtronic. Medtronic paid licensing fees to Edwards Lifesciences of over $1 billion, one of the largest patent settlements on record.
Select Work Experience
- Assisted Newell Rubbermaid’s subsidiary Graco in patent and copyright litigation over baby swings and play yards.
- Extensive post-grant work at the USPTO, including:
- Inventorship-based interference on a pill sorting machine patent;
- Ex parte re-examination of an embolic filtration device patent;
- Inter-partes review (IPR) petition against a well-known, heavily litigated nitinol stent patent;
- IPR defense of three drinking container patents; and
- IPR defense of two hole saw patents.
- Counsels medical and biotechnology clients on orthopedics, including implants, soft tissues, vascular and non-vascular stents, critical care monitoring including hemodynamic and blood analyte monitoring, cardiac surgical tools and devices, including robot interfacing minimally invasive surgical tools and catheter delivered heart valves as well as manufacturing systems for large scale production of biological materials for biotechnology therapeutics.
- Assists clients with computer software applications, including a range of Internet-based business technologies and business method patents, particularly in the financial and logistics industries.
- Wrote patents for electronic trading platforms, smart credit card operation clearing processes, electronic securitization processes, including those leveraged into trading systems, systems integrating funds, information and package flows to facilitate cross-border and other transactions.
- Involved in patent prosecution, freedom to operate and other IP services on a range of automotive technologies. These technologies include use of touch-interface controls, steering wheel systems, use of mobile devices in repairs and driver monitoring systems.
- Experience with other mechanical, communications and computer technologies including packaging systems, box construction, computer architecture and computer programming, object oriented software, satellite propulsion technologies, tools for manufacturing aircraft, aircraft structures and aircraft control software, combustion systems, including turbo and superchargers, as well as cell phone handsets, including cell phone housings and display systems.
Memberships and Affiliations
- Member, IP Working Group, Advanced Medical Technology Association (AdvaMed)
- Member, Association of Corporate Counsel (ACC) 2007-2010
- Member, Los Angeles Intellectual Property Law Association (LAIPLA)
- Member, International Association for the Protection of Intellectual Property (AIPPI)
- Board of Directors, ASIAM, a non-profit organization facilitating cross-cultural medical knowledge exchange between Asia and the Americas
- Founding Member, Former Chair of the Economic Development and Lifesciences Committee, Health Services Council, Charlotte Chamber of Commerce
Publications and Presentations
- “The Key to Prosecution Laches” Gregory J. Carlin and Kimberlynn B. Davis; J. of Intellectual Property Law; The U. of Georgia School of Law; Vol. 18; Spring 2011; No. 2; pp. 533 to 540.
- Sorting Out Inventors and Patent Rights: A profit-maximizing strategy for establishing patent ownership cuts out unnecessary royalty payments. MX Magazine. November/December 2004.
- Harner C, Baek G, Vogrin T, Carlin G, Kashiwaguchi S, Woo S: Quantitative Analysis of Human Cruciate Ligament Insertions. Anthroscopy. 1999 Oct;15(7):741-9.
- Hoher J, Vogrin T, Woo S, Carlin G, Aroen A, Harner C: In Situ Forces in the Human Posterior Cruciate Ligament in Response to Muscle Loads: A Cadaveric Study. J Orthop Res. 1999 Sep;17(5):763-8.
- Stone D, Green C, Johnson G, Aizawa H: Cytokine induced tendinitis: A new biologic model with comparison to collagenase model. Journal of Orthopaedic Research, 17(2):168-77, 1999.
- Baek G, Vogrin T, Carlin G, Marks P, Woo S and Harner C: A Quantitative Analysis of Collagen Fibrils of Human Cruciate and Meniscofemoral Ligaments. Clinical Orthopaedics and Related Research, 357:205-211, 1998.
- Harner C, Hoher J, Vogrin T, Carlin G, Woo S: The Effects of a Popliteus Muscle Load on In Situ Forces in the Posterior Cruciate Ligament and on Knee Kinematics. American Journal of Sports Medicine, 26, No. 5:669-673, 1998.
- Hoher J, Harner C, Vogrin T, Baek G, Carlin G, Woo S: In situ forces in the posterolateral structures of the knee under posterior tibial loading in the intact and PCL deficient knee. Journal of Orthopaedic Research, 16(6):675-81, 1998.
- Przybylski G, Patel P, Carlin G, Woo S: Quantitative anthropometry of the subatlantal cervical longitudinal ligaments. Spine 23(8):893-898, 1998.
- Xerogeanes J, Fox R, Takeda Y, Kim H-S: A functional comparison of animal cruciate ligament models to the human anterior cruciate ligament. Annals of Biomedical Engineering 26:345-352, 1998.
- Fox R, Harner C, Sakane M, Carlin G: Determination of the in situ forces in the human posterior cruciate ligament using robotics technology. American Journal of Sports Medicine 26:395-401, 1997.
- Przybylski G, Carlin G, Patel P, Woo S: Human anterior and posterior cervical longitudinal ligaments possess similar properties. Journal of Orthopaedic Research 14:1005-1008, 1997.
- Carlin G, Livesay G, Harner C, Ishibashi Y: In-situ forces in the human posterior cruciate ligament in response to posterior tibial loading. Annals of Biomedical Engineering 24:1-5, 1996.
- Przybylski G, Carlin G, Patel P and Woo S: Tensile Properties of Human Cervical Longitudinal Ligaments. Journal of Orthopaedic Research, 14(6): 1005-1008, 1996.
- Stone J, Carlin G, Ishibashi Y, Harner C: Assessment of PCL graft performance using robotics technology. American Journal of Sports Medicine 24:824-828, 1996.
- Harner C, Xerogeanes J, Livesay G, Carlin G, et al.: The human posterior cruciate ligament complex: An interdisciplinary study – ligament morphology and biomechanical evaluation. American Journal of Sport Medicine 1994 Excellence in Research Award 23(6): 736-745, 1995.
- Livesay G, Harner C, Xerogeanes J, Carlin G: Anatomy and biomechanics of the human posterior cruciate ligament. Clinical Biomechanics and Related Research 1:200-214, 1995.
- Kusayama T, Harner C, Carlin G, Xerogeanes J: Anatomical and biomechanical characteristics of human meniscofemoral ligaments. Knee Surgery Sports Traumatology Arthroscopy 2:234-237, 1994.
- Senior Intellectual Property Counsel, Edwards Lifesciences
- Attorney, Alston & Bird, LLP
- Law Clerk, Banner & Witcoff, Ltd
- Laboratory Supervisor, Research Engineer, Musculoskeletal Research Center, University of Pittsburgh