Gregory J. Carlin

Biography

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, enforcement, 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.

Greg serves as a guest lecturer for the Entrepreneurs’ Workshop Series in which he presents to Duke University students and faculty on technology entrepreneurialism and startups.

Greg’s select work experience includes:

• 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; and
  • Attacked with and defended against dozens of IPRs on a range of products, including consumer products, security products and medical devices.
• 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, AI 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.