Jay Cahill Email & Phone Number

Massachusetts, United States

Head of IP• Championed global IP strategy, competitive assessments, led risk appraisals and mitigation. Provided thoughtful actionable advice to senior leadership.• Developed a landscape to evaluate portfolio gaps and assess competitor IP. • Mapped third-party patent claims to products and improvements. • Architected an international portfolio of 150+ patent families for three affiliates.• Assessed know-how for trade secrets; implemented physical, software, and contractual safeguards.• Cleared trademarks, monitored infringement, globally prosecuted 50+ TM. Contracts and M&A:• Drove IP diligence for M&A including 3 closings over $125M.• Negotiated and drafted complex commercial sales, licenses, supply agreements, as well as government contracts, e.g., licenses, sales, JDA, (e.g., Navy CRADA). Compliance• Implemented policies to govern trade, import/export, customs, ITAR, and ensured adherence.• Implemented policies and training covering privacy, anti-corruption/bribery, trade, open source, AI to align with business objectives and reduce operational risk.• Successfully resolved non-compliance incidents alleviating repercussions related to trade under the watch of the US DOC, US State Department, Treasury, and US CBP.Leadership and Corporate Governance• Pivotal during funding rounds, growth to $100M+ in revenue, $2B valuation and a successful IPO.• Regularly updated the Board of Directors of strategic IP and litigation.• Developed IP, open source, trade compliance policies, and regularly presented trainings. • Negotiated employment disputes, supervised employee departures, handled PEOs.• Developed and maintained metrics to enhance efficiency, reducing outside counsel costs 50%+.• Budgeted all outside counsel yearly spend.Complex Litigation• Orchestrated a successful patent infringement defense, preserving company product market and IP. • Counseled key stakeholders regarding potential litigation outcomes and strategies, and recommended actions.

Boston, Massachusetts

• Performed FTO analyses for product commercialization and evaluation for licensing. • Conducted due diligence and participated in negotiations for university tech-transfer agreements.• Counseled clients on FDA 510(k) requirements and performed product assessments for sale and export.• Prepared and prosecuted U.S., international, and foreign applications, appeal briefs, and inventor declarations.

Boston, Massachusetts

• Counseled CEOs; heads of IP; R&D teams regarding commercialization, licensing, litigation, and prosecution strategies with a primary focus on life sciences. Counseled clients on FDA requirements and submissions.• Prepared and prosecuted U.S., PCT, and foreign applications for industry, universities, and start-ups with a focus on biotechnology, medical devices, cellular therapeutic and drug delivery devices, molecular diagnostic devices, as well as aggregation and analysis of data for machine learning (ML) and artificial intelligence (AI) applications.• Supported litigation teams in district court, e.g., endoscopic vein harvesting medical device and system.• Performed IP assessments for due diligence, FTO, litigation, patentability, etc. for M&A, licenses, opinions. • Evaluated, drafted, and participated in agreement negotiations, in-licensing and out-licensing technology between large pharmaceutical, small startups, and university.

Newark, New Jersey

• Core member of patent litigation teams that primarily focused on chemical and pharmaceutical patents under the Hatch-Waxman (ANDA proceedings), drafted briefs, claim charts, motions, and pleadings; prepared and responded to discovery; and defended and took expert deposition. • Drafted claim construction briefs, e.g., infringement of a chemical composition; prepared Markman exhibits.• Conducted due diligence regarding validity, infringement, FTO, patentability, and prepared opinions. • Prevailed on a reexamination, successfully defending the validity of valuable claims.

Tucson, Az

• Spearheaded engineering team developing a medical device for treating MRSA infections and skin diseases. Interacted with FDA advisors. Drafted the 510(k) submission. Directed R&D, industrial design, and manufacturing operations across multiple organizations with responsibility for the budget, revenue, and the commercial strategy.• Designed a diode stack with expansion matched materials coupled to an optical array. Prepared research proposals and presentations. Designed testing apparatus. Conducted reliability studies. Managed resources for $1M program operating budget. Led the design strategy team and participated as a member of the government oversight team.

Vancouver, Wa

• Designed and qualified a diode array system for surgical and dental applications. • Managed a team of engineers focused on diode process development, including: photolithography, ion implantation, e-beam, ion beam, thin-film deposition, electro-plating, and materials bonding.

Vadnais Heights, Mn

• Designed and built laser diode pump modules for medical and industrial applications and single-mode 980 nm pump modules for erbium doped fiber optic amplifiers. • Served as a scientist, engineer, and project leader. Led all aspects of design and qualification of diodes, including operated MBE systems, process equipment, and performed bonding, assembly, and testing of devices.

New Orleans, La

• Drove R&D efforts for synthesis and characterization of novel biochemical and inorganic materials.• Mentored and trained undergraduate and graduate researchers.

New Orleans, La

• Conducted basic and applied materials research of materials, thin films, and semiconductors. Designed and deposited thin film materials via MOCVD and MBE. Performed in situ analysis on processes using TOFMS, Quadrupole MS; performed material and post processing surface analysis, e.g. using XPS, Auger, SIMS, SEM, and AFM. • Led a Smith-Kline Beecham funded studies of small molecules, such as Tamoxifen e.g. using LC/MS. Designed analysis and testing systems and apparatus. Performed data analysis and correlation.• Taught lab and upper-level undergraduate courses; mentored undergraduate researchers.

J.D.

Ph.D., Physical Chemistry

Mba, Business Administration And Management, General

Ba, Biochemistry

Education record