Concentration

Biotechnology, bioagriculture, chemical, electrochemical, pharmaceutical and medical device litigation, patent procurement, licensing and opinions

Summary

Michelle LeCointe's practice centers on litigation, opinions, patent procurement and licensing in the biotechnology, pharmaceutical, medical device, bioagriculture, electrochemical and chemical fields. Her practice involves all aspects of intellectual property law, with a particular emphasis on the strategic needs of biotechnology, electrochemistry and medical device clients.

Ms. LeCointe has represented clients of all sizes, from large corporations to universities and small companies with fledgling intellectual property. Her work has ranged from litigation and opinions to patent prosecution, both domestic and international, and even due diligence and licensing or other transactional intellectual property matters as well as general advice regarding product regulation. She draws upon this breadth of experience to provide clients with multiple options to fit their needs and to identify potential complications, with particular insight in areas that the clients themselves may find less familiar.

As an undergraduate, Ms. LeCointe worked for four years as a research assistant in the Department of Immunology at Harvard Medical School. Her work culminated in a thesis exploring the role of integrins in the migration of mast cells, an immune cell associated with allergies, to various tissues. She was awarded the magna cum laude distinction in recognition of her thesis work and other academic achievements.

Representative Engagements

Corporations

• Large utility company - strategic counseling for the formation and management of commercialization alliance for rechargeable battery technology and implementation and coordination of enforcement and protection strategy including litigation asserting patents, prosecution of additional patents worldwide, defense of patents in Chinese invalidation proceeding and negotiation and drafting of licenses
• Major energy company - portfolio management including enforcement counseling and strategic patent prosecution for complex mechanical devices and related chemical-based manufacturing processes; preparation of opinions and responses to intellectual property challenges from competitors
• Large medical device and pharmaceutical company – litigation asserting electrochemical glucose monitoring device patents against multiple competitors
• Major pharmaceutical company – renegotiation or termination of multiple agreements, including joint venture in connection with spin-off of a subsidiary; freedom-to-operate opinions; patent, other IP, and contract due diligence review for a proposed merger/joint venture
• Multinational medical device company – preparation of invalidity and noninfringement opinions for the launch of products in the U.S.; patentability evaluations; preparation and prosecution of patent applications and strategic counseling regarding patent protection
• Worldwide medical device company – analysis of competitors patent portfolios and evaluation of product development options; strategic patent prosecution
• Growing biotechnology, medical device, and chemical companies – planning for research and patent protection in new markets; preparation and prosecution of key patents for expansion

Universities

• Large Texas public university – patent prosecution in the areas of biotechnology, bioagriculture, and chemistry
• Large Texas public university and medical center – invalidity and noninfringement opinions; contract evaluation and negotiation; patentability evaluations; and patent application preparation, and prosecution
• Prestigious Texas private university – patentability evaluation; preparation and prosecution of patent applications; evaluations of proposed licenses

Publications, Speeches and Presentations

• "The Successful Inventor - Basic Principles of Protecting Inventions," Senior Design Class Lecture, The University of Texas at Austin, Department of Biomedical Engineering, November, 2008
• "The Life and Times of Written Description," Baker Botts Life Sciences Practice Group CLE Presentation, October, 2008
• "Legal and Ethical Issues in a Hypothetical Medical Device Scenario," VaNTH Ethics Module, The University of Texas at Austin, Department of Biomedical Engineering, Spring 2005
• "The Shrinking World of Experimental Use for Clinical Research," Phacilitate Cell & Gene Therapy Forum, January 2005 (Rochelle Seide, co-author and presenter)
• "How to Value a Research Tool," IP Law and Business, November 2004 (Rochelle K. Seide, co-author)
• "Avoiding Common Misperceptions and Mistakes in IP License Agreements," The Licensing Journal, August 2004 (other versions also appear in State Bar of Texas, Corporate Counsel Section Report, Spring 2004; Patent Strategy and Management, December 2003; and Baker Botts IP Report, September 2003) (Jonathan Gordon and Jeffery D. Sullivan, co-authors)
• "Curtailment of 'Reach-Through' Infringement Claims: Bayer AG v. Housey Pharmaceuticals, Inc. Case Study," Journal of BioLaw and Business, Summer 2004 (Rochelle K. Seide, co-author)
• "Legal and Ethical Issues in Stem Cell Research," VaNTH Ethics Module, The University of Texas at Austin, Department of Biomedical Engineering, Spring 2004
• "Researchers Beware: Not All 'Experiments' Are Exempt From Patent Infringement Suits," Trendspotter, GenomeWeb.com, July 2003 (Rochelle K. Seide, co-author)
• "Biotechnology Patents: How Much Description and Research Is Required?" Texas Lawyer, March 2003
• "Patent Practice in the Aftermath of Festo and Vornado," Practicing Law Institute, October 2002 (Rochelle K. Seide, co-author)
• "New Festo Decision Is a Fairer Standard for Prosecution History Estoppel," Trendspotter, GenomeWeb.com, June 2002 (Rochelle K. Seide, co-author)
• "Two New Bills Present Challenges to DNA Patentability," Trendspotter, GenomeWeb.com, May 2002 (Rochelle K. Seide, co-author)
• "Reach-Through Claims," International Pharmaceutical 2002, April 2002 (Rochelle K. Seide, co-author)
• "Pharmaceutical Patent Law Cycles: The Interplay of Patent and FDA Law," Patent World, March 2002 (Rochelle K. Seide, co-author)
• "Housey v. Bayer Decision Limits Reach-Through Infringement," Trendspotter, GenomeWeb.com, December 2001 (Rochelle K. Seide, co-author)