Strategically Analyzing and Maximizing the Value of Patents and Patent Transactions
Arie M. Michelsohn, PhD, focuses his practice on IP due diligence investigations, preparation of patent opinions, strategic patent counseling, and contentious patent proceedings.
Arie has over 20 years of experience as a patent lawyer, litigator, strategic analyst, and problem solver in high-value matters on behalf of US and international biotechnology, chemical, and pharmaceutical companies. He has conducted several large-scale IP due diligence investigations, including leading an IP diligence team in a transaction involving a portfolio of over 1000 US patents. As a litigator, Arie has experience in nearly all phases of patent litigation, from pre-litigation investigations through discovery and preparation for trial. He has taken dozens of fact and expert depositions in patent cases, as well as defended depositions; has argued at two Markman hearings, including an evidentiary Markman hearing at which he conducted direct and cross examinations of expert witnesses; and has contributed briefing in a wide range of litigation contexts, including two appeals before the US Court of Appeals for the Federal Circuit. Arie has also drafted opinions for biotechnology, chemical, and pharmaceutical companies across a range of technologies on issues including infringement, validity/enforceability, freedom to operate, and patent strategy. He also has experience drafting and prosecuting patent applications in the areas of small molecule pharmaceuticals as well as DNA and protein diagnostics.
Arie's scientific background focused on developmental molecular and cellular neurobiology and biochemistry. He earned his PhD in Professor David Anderson’s lab at Caltech, studying the effects of steroids on the development of neuronal stem cells. Prior to joining McNeill Baur, Arie served as a legal consultant in patent law, litigation, and policy analysis to law firms, corporations, and associations, after spending 11 years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP and 6 years at Milbank, Tweed, Hadley & McCloy, LLP. Arie has an inside knowledge of the patent system because he started his career as a Patent Examiner at the USPTO in molecular neurobiology, and he also served as a law clerk to the Honorable Raymond C. Clevenger, III, at the US Court of Appeals for the Federal Circuit.
Michelsohn, A.M., “The Biosimilar Ballet: Patent Litigation Under the 2010 Health Care Reform Act,” Corporate Counsel (January 6, 2011).
Michelsohn, A.M., “Reaching Opposite Findings on Inequitable Conduct,” National Law Journal (April 10, 2006).
Romary, J.M. and Michelsohn, A.M., “Claim Interpretation After Markman: How the Federal Circuit Interprets Claims,” 46 American Univ. L. Rev. 1887 (1997).
Michelsohn, A.M. and Anderson, D.J., “Changes in competence determine the timing of two sequential glucocorticoid effects on sympathoadrenal progenitors,” Neuron 8(3):589-604 (1992).