Product Licensing Expert in Implantable Medical Devices

Case Description:

A product licensing expert was needed for a breach of contract case involving implantable medical devices. The plaintiff was an accomplished surgeon who was the primary inventor on a number of patents for biocompatible prosthesis. The defendant was a company that engineers, manufactures and supplies biomedical devices. The parties negotiated a licensing agreement under which the defendant would develop products based on the plaintiff's intellectual property in exchange for licensing fees paid as royalty payments. Plaintiff claimed the defendant failed to pay the full amount owed and sued for breach of contract.

IMS ExpertServices was asked to locate product licensing experts with experience licensing medical devices and the valuation of intellectual property, especially implantable medical devices. The expert was needed to opine on the structure of the product licensing agreement and on the potential value of the biomedical devices.

Experts Presented:

  • Technology Valuation Expert

    This product licensing expert has over 30 years of experience in product development and technology management. Most recently he was responsible for management of the intellectual property for a large research university's technology licensing and IP portfolio. Previously he managed technology transfer for the engineering department of another large university. He developed product licensing policies, located partners, and negotiated contracts for licensing their intellectual property. This expert has handled approximately 20 product licensing agreements for medical devices, some of which were implantable medical devices. IMS Reference #5008220

  • Intellectual Property Valuation Expert

    This IP licensing expert is a partner and chair of the intellectual property group at one of the branch offices of an AmLaw 200 firm. He has extensive experience negotiating technology development, product licensing, and technology transfer agreements. Previously he managed product licensing agreements for medical devices for the healthcare division of a multinational manufacturing company. This expert has also worked as a patent examiner in the electromechanical and biomedical arts groups of the USPTO. IMS Reference #3701186

  • Medical Technology Expert

    This medical technology expert has more than 30 years of experience in the medical industry managing technology and product licensing agreements. He served as president of two independent biomedical technology companies and as president of the independent medical technology division of a major global medical device company. On behalf of those companies, this expert has negotiated or overseen the negotiation of over 200 product licensing agreements, including agreements involving implantable medical devices. He is an experienced expert witness who has been qualified as a technology licensing and royalty valuation expert in patent and intellectual property litigation. IMS Reference #5039218

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