Philip A. Kunz

Lead IP due diligence counsel on over 10 M&A deals each with values exceeding $1 billion.

Lead supervisory patent counsel advising on patent prosecution strategy for dozens of portfolios containing several thousand U.S. and foreign patents for clients ranging from start-ups to large multinational corporations.

Conducting portfolio analyses and partnering with clients to: identify competitor technology and IP; evaluate offensive and defensive portfolios for strategic licensing and/or acquisition opportunities; and provide client business units with competitor commercial intelligence informed by patent literature.

Vast experience as a strategic team leader and supervisor for portfolio management and patent counseling related to an array of technologies, including mechanical and electrical arts, computer and software, and chemical and pharmaceutical compounds.

Drafting and prosecuting domestic and international patent applications involving a wide range of technology including medical devices, infusion pumps, medical diagnostic and monitoring systems, child safety products, wireless headphones, automated pharmacies, ocular devices and treatments, counter flow centrifugation devices, micro-implants, drug-eluding stents, processes and compounds to mitigate interferences in diagnostic testing, DNA sequencing and PCR devices and methods, optoelectronic components and sensors, nutrition feeding apparatuses and compositions, gaming devices, nanotechnology, food processing and packaging, software and computer systems, and sporting equipment.

Providing strategic counseling for and handling of U.S. Inter Partes Review proceedings, reexaminations, and other Post-Grant proceedings.

Performing patentability and invalidity analyses and opinions. He counsels clients in patent related matters including claim analysis due diligence for potential portfolio acquisition, patent clearance, invalidity, and non-infringement opinions.

Licensing experience includes counseling a client in negotiating, identifying, and valuing individual IP assets of a cross-licensing settlement agreement that included over one hundred U.S. and foreign patents, applications, nine domestic and foreign litigations, and post-grant proceedings.

Other licensing experience includes advising clients on joint ventures, NDAs, patent acquisition and divestiture, and structuring creative covenants, cross-licenses or royalty programs to settle or avoid litigations with competitors.

Mr. Kunz was a strategic architect for a series of enforcement actions on behalf of a plaintiff client against several of its competitors in various US District Courts (Western Texas, Northern California, Southern California, Massachusetts, and Utah).

Mr. Kunz was the primary architect and strategic lead of an ongoing infringement investigation of a multi-jurisdictional global enforcement project in which 15 patents were asserted in two separate actions in US District Court and 6 patents were asserted in two separate actions in the District Court of Dusseldorf, Germany against a competitor.

Mr. Kunz was the primary strategic and technical counselor for a plaintiff client in a competitor lawsuit in the U.S. District of Delaware.

Mr. Kunz was the primary strategic and technical counselor for a defendant client in a competitor lawsuit in the U.S. District of South Carolina