Morrison Foerster is an international law firm with lawyers practicing throughout the United States, Asia, and Europe. Click to discover more.

mofo_share_image.jpg

Morrison Foerster

common-default.jpeg

Terms / Notices

Cookies

Privacy Policy

Reporting Hotline

Attorney Advertising

Alumni

  Linkedin

MoFo LinkedIN

  Facebook

MoFo Facebook

YouTube

MoFo Youtube

Morrison Foerster - Footer

Applying AI and Data Science to the Fight Against COVID-19: The Science and Legal Considerations

You have not solved the recaptcha challenge yet or session expired, try again.

Email Disclaimer

Disclaimer

Unsolicited e-mails and information sent to Morrison Foerster will not be considered confidential, may be disclosed to others pursuant to our <a href="https://www.mofo.com/about/privacy-policy.html">Privacy Policy</a>, may not receive a response, and do not create an attorney-client relationship with Morrison Foerster. If you are not already a client of Morrison Foerster, do not include any confidential information in this message. Also, please note that our attorneys do not seek to practice law in any jurisdiction in which they are not properly authorized to do so.

Feedback

mofo-logo-2022.svg

People

Capabilities

Resources

About

Culture

Offices

Careers

Stay Connected

In this second of a four-part podcast series on the science, regulatory framework, commercial transactions, and privacy and data security considerations of each

Life Sciences Podcast

Podcast Subscribe

Applying AI and Data Science to the Fight Against COVID-19: The Science and Legal Considerations

Sign Up

A former lead engineer at the NASA Jet Propulsion Laboratory, Dr. Nguyen focuses her practice on domestic and international patent prosecution. She is a founder and co-leader of the firm’s Life Sciences Data Analytics patent group. She applies her experience also from her doctoral studies and her work as a former research scholar to provide portfolio management and counseling, IP due diligence, and freedom-to-operate analyses. Dr. Nguyen also has experience drafting briefs and inter partes reviews (IPRs), analyzing prior art and patent infringement, working with experts, and handling disputes before the U.S. International Trade Commission (ITC) and the federal courts. Her clients include large domestic and international companies, early-stage startups, and universities.Dr. Nguyen’s knowledge spans a wide range of technology areas, including electronic devices, medical devices and health systems, semiconductor materials and fabrication, computer/device hardware, memory, optoelectronics, optics, nanotechnology, microelectromechanical systems (MEMs), electronic packaging, augmented/virtual reality systems, autonomous vehicles, smart glass, mechanical assemblies, and consumer products. Her experience also encompasses telecommunications and networks, integrated circuits and digital designs, quantum computing, computer software, and digital cameras.Prior to joining Morrison & Foerster, Dr. Nguyen was a lead engineer at the NASA Jet Propulsion Laboratory and a hardware engineer at Hewlett-Packard. She also worked as a research scholar at the Center for Quantum Devices, Georgia Tech Computer Aid Design Lab, and Berkeley Wireless Research Center, where her research involved collaborating with several companies and laboratories such as Raytheon, Cree, IBM, Intel, BAE Systems, Lockheed Martin, Sandia National Labs, U.S. Army Night Vision Labs, Naval Research Lab, Aerospace Corporation, Argonne National Lab, Lawrence Livermore National Lab, Los Alamos National Lab, L3 Communications, Boeing, General Electric, FLIR, Teledyne, and Rockwell Automation.Dr. Nguyen received her J.D. from Loyola Law School. She also received her Ph.D. in electrical engineering from Northwestern University, where she focused her studies on semiconductor materials and optoelectronic devices. She received her M.S. in computer science from the Georgia Institute of Technology, where she focused her studies on computer-aided design and quantum computing. Jean also received her B.S. degree in computer engineering from the University of Wisconsin at Madison with emphasis on integrated circuits and digital designs. She has authored over 40 technical publications, 50 conference proceedings, and three book chapters. She also holds three patents.Dr. Nguyen has served on several committees with the Los Angeles Intellectual Property Law Association (LAIPLA). She is registered to practice in California and before the United States Patent and Trademark Office.

Jean Nguyen

Of Counsel

Matt Karlyn has 25 years of experience in working with companies in the healthcare, pharmaceutical, medical device, and technology industries on a wide range of commercial life sciences, licensing, and technology transactions. His clients range from Fortune 100 companies to start-ups, and he regularly advises companies on matters involving IP commercialization, complex collaboration transactions, licensing initiatives, subscription-based economics, and business transactions related to the procurement, development, commercialization, and use of technology and life sciences products. He has also worked with a number of clients on corporate transactions including mergers and acquisitions, as well as private equity and venture capital financing.Matt is ranked Band 1 by Chambers USA for Intellectual Property: Licensing in Massachusetts. Clients in Chambers describe Matt as: “accessible and engaged, and he is really focused on getting the right answer for us."<h4>Life Sciences</h4>Life sciences clients, including pharmaceutical, medical device, and healthcare companies, rely on Matt for his breadth of knowledge in licensing, collaboration, and commercialization strategies across a wide range of transactions designed to strengthen operations and maximize value. Matt’s clients come from sectors across the global economy and include emerging companies, privately held companies, and many of the world’s biggest brands.Matt has broad experience with commercial transactions and agreements in the life sciences space, including:<ul><li>Intellectual property and technology licenses</li><li>Collaboration and development transactions</li><li>Commercialization agreements</li><li>Supply and manufacturing transactions</li></ul><h4>Technology</h4>Matt regularly advises on the use of technology in business, pricing strategies, and market terms across a wide variety of technology transactions that benefit clients both large and small. He has extensive experience negotiating a wide range of transactions, including:<ul><li>Enterprise resource planning and customer relationship management licensing and implementation transactions</li><li>Cloud-based transactions including software-as-a-services, platform-as-a-service, and infrastructure-as-a-service.</li><li>Software licensing</li><li>Supply chain and procurement deals</li></ul>Additionally, Matt has worked on many of the largest outsourcing transactions in the United States, representing numerous Fortune 100 companies on information technology, business process, finance and accounting, facilities services, and other outsourcing transactions.Matt is a frequent author and speaker on topics pertaining to drafting and negotiating commercial technology, outsourcing, and licensing transactions. He has published over 25 articles (including chapters in two books), given over 175 presentations on licensing, technology, outsourcing, and data security, and is the co-author of A Guide to IT Contracting: Checklists, Tools, and Techniques.Matt is currently co-chair of the Legal and Regulatory policy group at the Massachusetts Biotechnology Council. He served as chair of the New England Chapter of the International Association of Outsourcing Professionals, and served for five years on the board of directors of Julie’s Family Learning Program, a wellness program for mothers and children in South Boston. Matt has also been elected as a Fellow of the American Bar Foundation.

Matt Karlyn

Partner

Michael (Mike) Ward is co-chair of the firm's Life Sciences + Healthcare Group, Patent Group, Intellectual Property Group, and Food + Agriculture Group.As co-chair of the Patent Group, Mike manages a team that includes 80+ Ph.D.s and 100+ attorneys and others with advanced scientific degrees in life sciences and related engineering disciplines. From small molecules and antibodies to gene editing, artificial intelligence, and machine learning, MoFo has deep experience protecting some of the most important innovations in the life sciences and food and agriculture sectors.Life SciencesFor his work across the life sciences sector, Mike was named San Francisco Biotechnology Lawyer of the Year by Best Lawyers in America in 2020 and is recommended for his patent strategy and prosecution practice in LMG Life Sciences. He also led the team that was named 2022 Patent Management and Strategy Firm of the Year at the 2022 LMG Life Sciences Americas Awards.Food + AgricultureRecognized as “one of the world’s foremost plant and agriculture IP lawyers,” Mike manages a wide range of intellectual property issues related to plants and plant products. He and his team advise clients on plant and plant utility patents; licensing agreements for plant IP; litigation in U.S. state and federal court and before the International Trade Commission; and regulatory approvals from the USDA, FDA, and EPA for gene edited and genetically engineered plants.Patent Strategy + ProsecutionMike is a Legal 500 US Hall of Fame lawyer for patent prosecution and is consistently named one of the leading IP lawyers by Managing Intellectual Property, Chambers USA and Chambers Global, and IAM Patent 1000.Mike works closely with many clients to develop and manage their patent portfolios. He helps clients identify, monitor, and assess the infringement risks of third-party patents. He also assists clients in preparing both offensive and defensive patent portfolios, with a particular emphasis on drafting patent applications that will be utilized in licensing and in litigation efforts.IP Due DiligenceFor venture capitalists seeking to invest in early- and mid-stage companies, underwriters involved in IPOs, and companies seeking to acquire or merge with other companies, Mike has managed extensive IP diligence. His work includes assessment of the strengths and weaknesses of patent portfolios, evaluation of freedom to operate issues, and strategic recommendations for maximizing the value of patent portfolios going forward.Mike also works closely with the IP Litigation Group on various litigation matters including patent interferences to determine the first-to-invent and patent re-examination work and actively participates in both mediation and arbitration proceedings on behalf of clients in the life sciences and food and agriculture areas.He is a frequent lecturer and speaker. Among numerous speaking engagements, Mike is the IP instructor at the UC Davis Licensing Academy and founded Morrison Foerster’s annual Harvard Biotechnology Club Fall Patent Law Course.Mike holds a Ph.D. in plant physiology (biochemistry) and an M.S. in agronomy from the University of California, Davis; a B.S. in biology from the University of California, Berkeley; and a J.D. from Golden Gate University School of Law. He was a post-doctoral fellow in plant molecular biology at the Harvard Medical School and the Department of Molecular Biology at Massachusetts General Hospital, where he worked on the Arabidopsis genome project.