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Serial entrepreneur, help start-up companies create IP assets and finance operations. Specialize in monetizing patent rights and securing freedom to operate in patent neighborhoods with multiple landmines. Manage legal operations in a cost-effective manner. Specialties: Pharma, biotech, multidisciplinary, chemicals, energy are technical field specialities. Securing freedom to operate by taking on over-broad patents in cost-effective post-grant proceedings. Have opened up freedom to operate in clinical diagnostics using PCR techniques by significantly narrowing claims in multiple second generation PCR patents. Have managed and set up the largest jury damage award in Washington State history (in Syntrix v. Illumina). Successfully defended inter parties reexamination attack of the BHQ patents used for influenza testing. Successfully defended and prevented institution of a PTAB trial in an IPR (inter parties review) by Illumina (written by Finnegan Henderson) challenging the validity of the key independent claims of a patent from The Scripps Research Institute (TSRI) with a decision supporting the position of TSRI showing patentability of the issued claims against three grounds of rejection.
Lemba Therapeutics Us And Lemba Bv
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General Counsel And Co-FounderLemba Therapeutics Us And Lemba BvKirkland, Wa, Us
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General CounselAardvark Therapeutics, Inc. Jun 2019 - PresentSan Diego Metropolitan AreaCo-founder. Created product-based IP portfolio that enabled Series A and Series B financings. Did not participate in execution of Phase 2 clinicals or execution of Series C attempted financing as shifted efforts to Lemba and independent projects.
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General Counsel And Co-FounderLemba Therapeutics Us And Lemba Bv Feb 2020 - PresentNijmegen, NlSet up International Pioneering RNA therapeutics company to build its key intellectual property assets for ASO (antisense oligonucleotide) lead candidates in major therapeutic areas of vaccines/immunology (innate and adaptive), inflammatory diseases and oncology (chemotherapy resistant solid tumors via senescent cells). Able to utilize dual (US/EU) citizenship. Managed contracts for large lead arthritis preclinical development grant financing, major pharma partnerships for mRNA vaccine adjuvant candidates evaluation and preclinical development.
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Founding MemberTroll Busters Llc Oct 2006 - PresentMercer Island, WaI started Troll Busters LLC when I was asked to continue being a patent assassin using administrative proceedings for others. As I have a high patent "kill" rate, someone called and said "you know Jeff, you could actually do this for a living. Just check under your car before you get in each time." And so the Troll Busters story began... Troll Busters has achieved major successes, both on the offense side and the defense side. On offense, we narrowed (rendered unenforceable) or cancelled over-broad claims for the entire second generation PCR portfolio, adenovirus vector formulations and electrochemical catalyst screening methods and equipment. On defense, I defeated Illumina invalidity challenges twice. The first was a Syntrix patent and that led to a $115Mil patent infringement jury verdict, largest in Washington State history. The second was preventing IPR (inter parties review) trial institution by Illumina (petition written by Finnegan Henderson) of a Scripps Research Institute (TSRI) patent (having a Nobel Prize winner as an inventor), a low probability event.
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Part Time LawyerVarious Start Up Pharma And Diagnostic Companies Jan 2011 - Mar 2024MultipleI create the IP portfolio and strategy so that the company can create value for its intangible assets. I also implement FTO (freedom to operate) strategies, including proactive or pre-emptive strikes (not waiting for litigation, but avoiding litigation) on over-broad third party patents so that they cannot be used to deter or delay product development of others. Some have failed but each failure taught a lesson that has not been repeated. I continue to invest my time and skills in creating value, so long as my co-founders avoid turning a company into an extension of their academic research.
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Lawyer (Part Time)Sorrento Therapeutics, Inc. Feb 2011 - Dec 2019San DiegoI created the initial IP portfolio, and helped to create a functional IP team that fixed an outside counsel portfolio into a high quality patent portfolio, despite adverse conditions. Created freedom to operate conditions for lead clinical candidates, awaiting execution of strategy. Tried to manage adverse contracts from anti-competitive sale of micellular paclitaxel asset. -
Counsel (Part Time)Ndc Power Jan 2007 - Feb 2016Cheyenne, Wyoming AreaNDC Power was a defense contractor that failed to cross the valley of death. The team has transitioned to GridThink. When management did not succeed in detangling GridThink from NDC, we've all scattered to various clean energy projects.
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Part Time In-House CounselSyntrix Biosystems Jan 2007 - May 2013Auburn, WaCreated multiple drug product IP portfolios. Extended aminopterin product patent term for 5 years. Set up Aminopterin LLC, a JV to clinically develop and finance aminopterin. Set up the '682 patent for enforcement by successfully defending reexamination validity challenge without claim narrowing, protecting from any possible ownership claims, and financing a litigation effort through successful jury trial at the Western District of Washington (Tacoma).
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General CounselCombimatrix Corporation Oct 2000 - Oct 2006Mukilteo, WaJoined a client company from DWT. Ran a legal department. Trained a new lawyer. Successfully smashed the Affymetrix patent cartel in Europe. Implemented Sarb-Ox procedures then had to go up the ladder to report and totally pissed off the CEO in the process, then settled a retaliation claim.
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Contract PartnerDavis Wright Tremaine Jan 1998 - Oct 2000Greater Seattle AreaCreated and managed patent group in a general practice firm. Grew practice group from 1 lawyer (me) to 5 lawyers.
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Chief CounselCytokine Networks And Picower Institute For Medical Research 1996 - 2000Seattle And Manhasset, NyCo-Founded Cytokine Networks (Seattle) as a for profit pharma development company partly owned by the non-profit Picower Institute for Medical Research (Manhasset, NY and currently the Feinstein Institute of North Shore Hosp). Created, managed and licensed IP portfolios into a pharma product portfolio and clinical pipeline that was discovered at Picower and put into clinical trials by Cytokine. Employed by both entities under a one year contract (but extended to two years). Then ported the work to Davis Wright Tremaine (DWT of counsel and then contract partner) where I created the patent group firmwide with Picower becoming one of the top DWT clients.Cytokine later acquired by Pharmasciences to form the present day entity, creatively named, Cytokine Pharmasciences in King of Prussia, PA. Pharmasciences acquired by Ferring.
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Vp LegalCell Therapeutics Inc. (Cti)) Aug 1993 - Dec 1996Seattle, Washington, United StatesIn the biggest mistake of my career, I turned down an offer of first counsel at Gilead and became the initial lawyer at CTI because local Seattle venture capital (who funded CTI and were my Gilead references) asked me to not go to California and stay in Seattle (as my oldest was starting kindergarten). Was able to accomplish a precedent of protecting lysofylline as an enantiomer with the racemic mixture in the prior art. The rest of the drama is best left to the screen-writers.
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Ip Litigation CounselImmunex 1990 - 1993Successfully secured freedom to operate for the first Immunex product (GM-CSF or Prokine) by employing a scorched earth technique using an interference proceeding as an opposition to prevent issuance of a claim to the wild type sequence. -
Associate AttorneySeed Law Group (Formerly Seed And Berry) 1988 - 1989Moved to Seattle. Fed Cir briefs for Ex parte Allen (precedent: animals altered by hand of person patentable subject matter). University of Washington prosecution work.
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Associate AttorneyFish And Neave (Now Ropes And Gray) 1985 - 1987New York CityPractice was mostly litigation, interference, European oppositions and ITC.
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Clinical Pharmacologist And Licensing ManagerPfizer Oct 1981 - Jan 1986Morris Plains NjRan clinical trials, wrote FDA regulatory submissions, transferred to licensing after completing part of law school. Attended law school at night while working full time. -
ToxicologistProcter & Gamble Jun 1979 - Oct 1981Cincinnati, Ohio AreaWent through the 2-year corporate boot camp program in management and writing as a new graduate. Then we both realized I'm not that conservative to be a successful "lifer" at P&G.
Jeff Oster Skills
Jeff Oster Education Details
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Pharmacology -
Emphasis In Bankruptcy, Fda Law -
Biochemistry, Chemistry, Marine Biology, Literature
Frequently Asked Questions about Jeff Oster
What company does Jeff Oster work for?
Jeff Oster works for Lemba Therapeutics Us And Lemba Bv
What is Jeff Oster's role at the current company?
Jeff Oster's current role is general counsel and co-founder.
What is Jeff Oster's email address?
Jeff Oster's email address is je****@****ast.net
What is Jeff Oster's direct phone number?
Jeff Oster's direct phone number is +162324*****
What schools did Jeff Oster attend?
Jeff Oster attended University Of Pennsylvania, Rutgers University School Of Law - Newark, The Johns Hopkins University.
What are some of Jeff Oster's interests?
Jeff Oster has interest in Kids, Collecting Antiques, Exercise, Cooking, Gardening, Outdoors, Electronics, Home Improvement, Reading, Shooting.
What skills is Jeff Oster known for?
Jeff Oster has skills like Patents, Biotechnology, Licensing, Intellectual Property, Life Sciences, Drug Discovery, Patent Litigation, Technology Transfer, Litigation, Lifesciences, Patent Prosecution, Joint Ventures.
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