Rolando Medina, PhD

Dr. Rolando Medina has extensive experience in intellectual property, including patent prosecution, opinions, due diligence studies, IP counseling, and licensing in biotechnology and the medical sciences. Rolando has experience representing academic universities and start-up companies, as well as mid-sized and large biotechnology and pharmaceutical companies.

Rolando advises clients on a broad range of patent matters, including the preparation and prosecution of patent applications, portfolio management and counseling, with particular experience in novel genes, antibodies, gene therapy, vaccines, antisense, stem cells, pharmaceutical formulations, peptide and antibody display technologies, nanotechnology, biofuels and potential treatments, and diagnostic methods for various diseases.

Rolando has led hundreds of landscape and freedom-to-operate analyses; non-infringement and invalidity opinions; IP due diligence reviews in the context of mergers and acquisitions, venture capital financings, internal audits, and licensing. He also routinely provides advice to clients in AIA post-grant review proceedings, including inter partes review and post-grant review proceedings.

Prior to law school, Rolando was a Postdoctoral Fellow in the Laboratory of James M. Anderson at Yale University School of Medicine, researching occludin function in epithelial cell tight junctions. As a graduate student in the Laboratory of Catherine H. Berlot at Yale University School of Medicine, his research involved structure/function analysis of the interactions of heterotrimeric G protein subunit, Gqα, with phospholipase C.

Recognition

  • Who’s Who Legal’s list of top Life Sciences transactional attorneys
  • Managing Intellectual Property “IP Star”

Representative Engagements

Patent Prosecution and Counseling

  • Managed and counseled on complex patent portfolios related to products in clinical trials for mid-sized biotech company.
  • Performed due diligence and negotiated and drafted complex license agreement on behalf of start-up public company.
  • Created strategic patent portfolio for start-up biofuel company leading to successful financing round.
  • Assisted mid-sized biotech company with license and transfer of technology for creation of joint venture.
  • Assisted in obtaining patent term extension due to regulatory delay for mid-sized biotech company.

Patent Trial and Appeal Board and Appellate Proceedings

  • Kashiv BioSciences, LLC v. Amgen Inc., PTAB: Counsel for Kashiv in IPR proceedings challenging patents relating to methods of protein refolding and purification.
  • Guardant Health, Inc. v. Foundation Medicine, Inc., PTAB: Counsel for Foundation Medicine in IPR proceedings defending patents protecting innovative comprehensive genomic cancer assays using next generation sequencing.
  • Foundation Medicine, Inc. v. Guardant Health, Inc., PTAB: Counsel for Foundation Medicine in IPR proceedings challenging patents directed to methods for detecting genetic mutations.

Publications and Presentations

Professional and Community Involvement

  • Member of the Boston Bar Association
  • Member of the Boston Patent Law Association
  • Former co-chair and board member of the Massachusetts LGBTQ Bar Association
  • Member of the BBA’s Diversity & Inclusion Section Steering Committee

Education & Credentials

University of Pittsburgh School of Law
JD, 2003, cum laude

Yale University
PhD, 1999, Neuroscience
MPhil, 1996, Neuroscience

Westminster College of Salt Lake City
BS, 1993, magna cum laude, Biology and Chemistry

Admissions

Massachusetts

U.S. Patent & Trademark Office

Rolando's Insights