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Catherine M. Polizzi

Polizzi, Catherine M.

Partner

Palo Alto, (650) 813-5651

Education

University of Mississippi (B.A., 1976)
University of California, Santa Barbara (M.A., 1978)
University of California, Santa Barbara (Ph.D., 1990)
Stanford Law School (J.D., 1994)

Bar Admissions

California
U.S. Patent & Trademark Office

Intellectual versatility combined with incisive, pragmatic counseling and business acumen has become the hallmark of Dr. Catherine Polizzi's practice.

Dr. Polizzi helps emerging and established companies through the challenging process of obtaining patents, providing strategic, effective portfolio counseling and management. She develops valuable, strategic portfolios around breakthrough therapies in a variety of areas, including cancer, autoimmune diseases, inflammatory diseases, infectious diseases, cardiovascular disease, metabolic disorders, and neurodegenerative diseases such as Alzheimer’s Disease. She also has significant experience in a wide spectrum of technology areas, including regenerative medicine, biologics (such as antibodies and polypeptides, nucleic acids, personalized medicine, diagnostics, drug formulation technologies, drug screening systems, amplification technologies, nutraceuticals, nanotechnology, spectroscopy), and organic chemistry including small molecule drugs. Her unique background, her ability to integrate IP with a given business model to translate to meaningful risk assessment and advice, and her highly effective communication skills in critical settings such as R&D, all phases of product development, and investment contexts, enable Dr. Polizzi to provide effective, creative solutions to the significant challenges often faced by clients.

Dr. Polizzi's practice also includes due diligence evaluation and counseling in the context of venture investment assessments, as well as in connection with public and private financing, spin-offs, partnerships, and mergers and acquisitions. Representative transactions resulting from Dr. Polizzi’s leadership include Celgene Corporation’s $2.9 billion acquisition of client Abraxis BioScience; over $225 million investment by Pfizer in client Medivation, Inc.; Pfizer’s acquisition of client Rinat Neuroscience; and TOPICA Pharmaceuticals’ $27 million Series B financing.

In addition to helping create value and commercialize her clients’ technologies, Dr. Polizzi devises strategies and defenses to fortify their patents in the event of legal challenges by competitors. Accordingly, she renders advice on all aspects of patent positioning, including opinions on patentability, validity, freedom of operation, infringement, and competitor IP evaluation. She is also often engaged in third-party challenges such as oppositions, reexaminations, and patent interference, as well as licensing and litigation matters. On behalf of clients, Dr. Polizzi has also successfully obtained patent term extensions under Hatch-Waxman. For many of her smaller, venture-backed clients, she frequently serves as the equivalent of in-house patent counsel.

Dr. Polizzi is patent counsel to numerous publicly traded and privately held companies in the therapeutics industry.

Genentech, the world’s first and most successful biotechnology company, relies on Dr. Polizzi’s strategic patent counseling and prosecution services for its most difficult and challenging patent matters. Her work involves developing overall patent strategy, patent application drafting, and prosecution for key technologies. Her high-value work for Genentech also includes strategic assessment of key and novel technologies.

Dr. Polizzi has worked with Abraxis BioScience for a number of years on patent strategy, drafting, and prosecution to help the company develop its highly successful cancer drug, Abraxane, and, in the process, become a leader in the biopharmaceuticals industry. Dr. Polizzi counseled the company through its $2.9 billion acquisition by Celgene Corporation, including providing significant IP strategy and due diligence counseling. This IP platform was a major component of the valuation of the company. Dr. Polizzi now also represents Celgene as its counsel for the Abraxis patent portfolio and continues to work closely with Dr. Patrick Soon-Shiong, the billionaire philanthropist founder of Abraxis.

Other representative clients include St. Jude Children’s Research Hospital, the Buck Institute for Research on Aging, University of California, Boston University, and clinical-stage biopharmaceutical companies such as Dynavax Technologies and Medivation, Inc.

From 2006 through 2009, Dr. Polizzi served as the chair of the firm's Patent Prosecution & Counseling Group and co-chair of the firm's Intellectual Property Group. She is ranked by Chambers USA 2014 in Life Sciences: IP/Patent Litigation. Chambers has noted that Dr. Polizzi “adds great depth to the firm’s patent’s expertise” and that clients view her as an “extremely bright and responsive” attorney. Dr. Polizzi has also received the following awards and accolades:

  • Recognized in the IAM Patent 1000 – The World’s Leading Patent Practitioners 2014

  • Selected as one of the 100 most influential women in Silicon Valley of 2013 by the Silicon Valley Business Journal

  • Named to The Recorder’s 2013 Women Leaders in Tech Law list for demonstrating leadership and expertise in solving the most pressing legal concerns tech companies can face

  • Recognized as a leader by Euromoney Legal Media Group and received their 2013 Americas Women in Business Law Award for best in life sciences

  • Recognized in the “Lawyers to the Innovators” section of the 2013 edition of the Financial Times U.S. Innovative Lawyers report

  • Recognized as a “Life Science Star” by LMG Life Sciences in 2012 and 2013

  • Selected as one of the Top 25 IP Portfolio Managers in California by the Daily Journal for 2009–2014

  • Recommended as a leading lawyer by Legal 500 U.S. for 2014

  • Named to the 2012 and 2013 Northern California Super Lawyers list

  • Managing Intellectual Property – Top 250 Women in IP (2013)

Additionally, while earning her J.D. at Stanford, Dr. Polizzi was a recipient of the Hilmer Oehlmann, Jr. Award for Legal Research and Writing.