Scott J. Popma, Managing Partner

1 202 251 0874
scott.popma@ballastiplaw.com

Scott is an industry leader on issues surrounding the intersection of intellectual property law and emerging technologies and advises clients on a wide variety of IP legal issues including licensing, freedom to operate, portfolio and landscape analysis, litigation strategy, patent prosecution, and monetization. 

Scott has extensive experience in counseling on IP issues across a broad variety of technologies, and in the bio field has represented major innovative pharmaceutical clients, genetically modified seed companies, and food processors, among others. Scott has also represented large defense contractors, telecommunication companies, and data trading platforms.  He has also counseled smaller technology hardware and software based start-ups.

Prior to founding Ballast IP Law, Scott was a Partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP where he amassed over 16 years of experience in all aspects of obtaining and enforcing patents.  Prior to entering law school, Scott spent four years working on the Human Genome Project and performed one year of cancer research at the University of Michigan.

Bar and Court Admissions: California; District of Columbia; U.S. Court of Appeals, Federal Circuit; U. S. Supreme Court; U.S. Court of Federal Claims; U.S. District Court, N.D. of California; U. S. Patent & Trademark Office.

Education: University of Michigan, B.S. Cellular and Molecular Biology, 1995; University of Michigan Law School, J.D., 1998.

Select Publications: 

  • Your Creative, Open Hackathon is Ripe for Ownership Disputes, Wired.com, July 22, 2013

  • Freedom to Operate Analysis Could Be Key to Crowdfunding Success, BNA's Patent, Trademark & Copyright Journal, May 31, 2013

  • Changes in the Gaming Industry Call for New Strategies for Intellectual Property Protection and Enforcement, Gamasutra, April 19, 2013 

  • Patent Valuation During a Crowdfund Offering, Financier Worldwide, September 25, 2012

  • Bayh-Dole: Statute, Regulation and Implications for Government Contractors, Journal of Intellectual Property Law & Practice, July 2012

  • Legal Maneuvers: Litigation Strategies and Interpretations Dominate the Process for Abbreviated New Drug Applications, Drug Discovery & Development, October 2009

Speeches and Presentations:

  • "Managing Conflicts Of Interest and Compliance Issues in University Crowdfunding" Technology Transfer Tactics Webinar; March 3, 2015

  • "Getting Funded: Traditional v. Aleternative Sources of Capital" American Chemical Society Entrepreneurial Summit  Washington, D.C.; October 14, 2014

  •  "Legal Considerations for Swedish Companies Entering the US Market" NUWA Delegation,  Washington, D.C.;  May 27, 2014.

  • "Crowdfunding for University Start-Ups in 2014: Opportunities and Risks"Technology Transfer Tactics Webinar, January 16, 2014

  • "Equity Crowdfunding Progress on SEC Rulemaking, State's Securities Boards and Discussion on Fraud and Other Concerns" the PIPES Conference, New York, NY; November 4, 2013

  • In-House Counsel Workshop "How to Monetize Patent Portfolios" The Monetization Summit, New York, NY; April 23-24, 2013

  •  "Intellectual Property, Understanding Copyrights and Patents" Crowdfunding Conference, San Francisco, CA; October 15, 2012

 

Press Mentions:

  • New Reg A+ Rules From the SEC Broaden Access to Capital, Technology Transfer Tactics, May 2015

  • Backers With Benefits: Why Companies Are Outsourcing To Kickstarter,  MIT Technology Review, February 11, 2013. 

  • Playing to the Crowd, IAM MAGAZINE, September 2013

 

Sean O’Donnell, Ph.D.,  Partner  

1 202 340 4576
sean.odonnell@ballastiplaw.com

Dr. O'Donnell heads the Life Sciences Practice where he employs a strategic planning approach to help client companies identify the key elements of their intellectual property and maximize the value of their IP portfolio.  Dr. O’Donnell provides IP services directed to increasing valuations, paving a path to market entry, and optimizing future expansion for technology companies.

Dr. O'Donnell has counseled start-ups, institutions, and Fortune 500 companies on how to acquire, assert, and defend their intellectual property rights.  He advises companies and institutions operating across a wide variety of technologies, including pharmaceuticals, biological products, medical devices, high throughput sequencing, and telecommunications.  Dr. O'Donnell specializes in IP consulting, strategic planning, due diligence, freedom to operate, and client counseling.

Dr. O’Donnell earned his Ph.D. in molecular biology and biophysics from Columbia University, where he studied mammalian neurobiology in the laboratory of Richard Axel, M.D., recipient of the 2004 Nobel Prize in Physiology or Medicine.  Dr. O'Donnell graduated with honors from George Washington University Law School and obtained a Bachelor of Arts from Princeton University.  He teaches Patent and Know-How Licensing as an adjunct professor at George Mason University School of Law.  He is also active in the D.C. Bar, serving as Vice-Chairman of the Trade Secrets Committee, and in Princeton Athletics, serving as Class Agent for the Friends of Princeton Swimming.

Bar and Court Admissions: California; District of Columbia; U. S. Patent & Trademark Office

Education:  Princeton University, B.A. History, 1989; Columbia University Integrated Program in Cellular, Molecular, and Biophysical Studies, Ph.D., 2004; George Washington University School of Law, J.D., 2008.

Select Publications:

  • The Explicit Definition of a Claim Term Is Not Limiting Where It Excludes a Preferred Embodiment,  IP Update, March 2014.

  • Combining Two Drugs Is Not Always Obvious, IP Update, May 2014.

  • A Compound Is Obvious Where Only Minor Changes to a Prior Art “Lead Compound" Are Required to Make the Claimed Compound, IP Update, July 2014

  • Patent Owners: Better Address All Obviousness Arguments Raised by Petitioner, IP Update, September 2014.

  • PTAB On Analogous Art, IP Update, September 2014.

Scientific Publications:

  • Odorant Receptors on Axon Termini in the Brain, 304(5676) Science 1468 (2004).

  • Gene Switching and the Stability of Odorant Receptor Gene Choice, 117(6) Cell 801 (2004).

  • Spontaneous Activity is Required for the Establishment and Maintenance of the Olfactory Sensory Map, 42(4) Neuron 552 (2004).

Speeches and Presentations:

  • "Managing Conflicts Of Interest and Compliance Issues in University Crowdfunding" Technology Transfer Tactics Webinar; March 3, 2015

Christopher L. May, PLLC,  Partner

CLM headshot.jpg

1 773 793 3056
christopher.May@ballastiplaw.com

Christopher L. May focuses his practice on patent and trademark litigation and Section 337 investigations before the International Trade Commission (ITC). He has handled matters in a variety of industries, including the pharmaceutical, mechanical and consumer electronic fields, and has experience in all aspects of patent litigation, including pre-litigation investigations, writing and arguing claim construction at Markman hearings, examining and cross-examining fact and expert witnesses, and management of litigation before judges and juries at trial.

Christopher earned his Master of Business Administration, with a concentration in entrepreneurship, from the University of Chicago Graduate School of Business. He is also an adjunct professor at Michigan State University's School of Law, where he teaches a course on general intellectual property.

Results:

  • Represented respondent Funai Electric Co. and its subsidiaries in an ITC investigation, resulting in a finding of no violation and termination of the investigation in Funai’s favor (Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837) (Fed. Cir.))
  • Represented the King Center in an action by the King Estate to terminate the center’s right to use intellectual property, including the writings and spoken words of Dr. Martin Luther King, Jr., alleged to be owned by the estate (Estate of Martin Luther King, Jr. v. Martin Luther King, Jr. Center for Nonviolent Social Change (Ga. Sup. Ct.))
  • Represented defendants in a patent infringement case concerning rotary disc filter technology; the case was settled after claim construction (Veolia Water Solutions & Technologies Support v. Siemens Industry, Inc. et al. (E.D.N.C.))
  • Represented Sandoz in Abbreviated New Drug Application (ANDA) litigation concerning the drug doripenem; the case was settled after briefing on claim construction (Shionogi v. Sandoz Inc. (D.N.J.))
  • Represented respondent Funai Electric Co. and its subsidiaries in a series of ITC investigations and subsequent district court litigation involving integrated circuits incorporated into Funai’s consumer electronics products, resulting in a finding of no violation and settlement on favorable terms (Certain Integrated Circuits, Chipsets and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. 337-TA-709, 786) (E.D. Tex.))
  • Represented complainant Spansion, LLC in an ITC investigation concerning the importation of flash memory chips and third-party products incorporating those chips into the United States (Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-735))
  • Represented Sybase and obtained an extremely favorable settlement in the competitor’s litigation; the technology at issue involved enterprise software that manages, analyzes and mobilizes information on handheld devices, using relational databases, analytics and data warehousing solutions (Sybase v. Telecommunications System (E.D. Va.))
  • Represented respondent Spansion, LLC in an ITC investigation concerning the importation of Spansion’s flash memory chips into the United States in third-party products; the investigation was terminated after the commission issued a notice of review (Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685))
  • Represented McKesson in a case involving automated robotic storage systems for the packaging and dispensing of prescriptions within hospital wards (McKesson Corp. v. Swisslog (D. Del.))

Bar and Court Admissions: New York; District of Columbia; US Court of Appeals for the Federal Circuit; US District Court for the District of Columbia; US District Court for the Eastern District of New York; US District Court for the Southern District of New York; US Patent and Trademark Office

Education: University of Chicago Law School, JD, 2001; University of Chicago Graduate School of Business, MBA, 2001;  Massachusetts Institute of Technology, MS, Chemistry, 1997;·   Duke University, BS, Chemistry, cum laude, 1994

Recognition:

  • The Best Lawyers in America 2015 to 2017

Community:

  • Children’s Law Center, serves as a guardian ad litem for children in neglect and custody cases
  • Federal Circuit Bar Association