Biography

Dr. Li-Hsien (Lily) Rin-Laures is a leading partner in "one of the best biotechnology practices in the country," as ranked by Chambers USA. Dr. Rin-Laures, a former General Counsel of a publicly-held biotechnology company, regularly counsels clients - from Fortune 500 companies to startups - on patent strategy relating to new pharmaceutical/biotechnology product development, therapeutic uses, and product lifecycle management, as well as the interface of patents with FDA regulations and related exclusivity provisions. Her unique insider’s perspective, technical expertise, and wide-ranging industry knowledge acquired from managing global patent portfolios for nine different approved drugs and numerous clinical candidates enables her to be a valuable strategic partner to clients. Dr. Rin-Laures is also a former member of the Firm’s Executive Committee responsible for managing the firm.

Dr. Rin-Laures was recognized as one of the 2015 National Law Journal's (NLJ) "Outstanding Women Lawyers." In 2016, LMG Life Sciences named her "Patent Strategy & Management Attorney of the Year - Midwest." In 2014, Dr. Rin-Laures was inducted into the LMG Life Sciences Hall of Fame and named "Patent Prosecution Pharmaceutical Attorney of the Year." In recognition of her outstanding patent work in life sciences, Dr. Rin-Laures has been featured as a Life Sciences Star in LMG Life Sciences, 2012-2016. She was recognized as a 2012 Leading Law Firm Rainmaker in MCCA's Diversity & The Bar and as an "IP Star" in Managing IP’s IP Stars Survey (fka the World IP Handbook and Survey) (2013-2016). Dr. Rin-Laures has been selected as one of the "World’s Leading Patent Practitioners" from 2013-2016 by Intellectual Asset Management (IAM) magazine and selected to the 2014 and 2016 editions of Managing IP's IP Stars list of the Top 250 Women in IP. She was inducted into Law Bulletin Publishing Company’s "40 Illinois Attorneys Under Forty To Watch" Hall of Fame in 2014. She has also been voted an "Illinois Super Lawyer" for a number of years, a list which identifies the top five percent of the lawyers in Illinois based on a survey and research conducted by Law & Politics. She has been selected by the Chicago Law Bulletin’s Leading Lawyer Network as a "Leading Lawyer."

Education

  • Harvard Law School (J.D., cum laude)
  • Northwestern University (M.D.)
  • Johns Hopkins University (B.A., with honors)
    • Chemistry

Bar Admissions

  • Illinois
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office

Representative Experience

  • Member of the team prosecuting U.S. Patent 8,063,182 related to ENBREL.
  • Worked creatively and closely with attorneys and scientists at different companies to obtain patent protection covering several approved drugs.
  • Counseled clients regarding Orange Book patent listings and patent term extension applications for multiple different approved products.
  • Successfully argued an appeal before the U.S. Patent Office’s Board of Patent Appeals and Interferences on claims covering a commercially successful FDA-approved drug.
  • Partnered with a company’s management team to craft worldwide IP strategy, and led IP interactions and negotiation of alliance agreements with collaborators.
  • Advised on due diligence, valuation of patent portfolios and freedom-to-operate issues.
  • Provided IP opinions to support securities offerings.

Dr. Rin-Laures' extensive patent work for clients with biotechnology, pharmaceutical and medical technologies includes:

  • Antibodies
  • Antisense and RNAi
  • Recombinant biological drug products, including hemopoietic factors, growth factors, chemokines, neurotrophic factors, cellular adhesion molecules, enzymes, macrophage and neutrophil products, and bacterial antigens
  • Small peptides and chemically modified derivatives
  • Vaccines and immune therapies
  • Chemical pharmaceutical products
  • Pharmaceutical formulations, including aqueous compositions, lyophilized compositions, hydrogels and transdermal delivery
  • Therapeutic methods using traditional pharmaceuticals or biologicals
  • Processes and vectors for recombinant protein production in bacteria, cell lines and plants
  • Diagnostic methods, e.g., for cancer, infection and autoimmune diseases
  • GMO plants

Background and Credentials

Dr. Rin-Laures’ capabilities in managing global patent portfolios for the biopharma industry are backed by her extensive experience in patent prosecution and contested proceedings, both in the U.S. and abroad, her familiarity with negotiating licenses and other transactions and her prior in-house role as General Counsel.

She has protected clients’ interests in securing patents on a number of important commercially-marketed products, providing advice on freedom-to-operate searches, validity and infringement opinions, patent opposition proceedings, reexaminations, protests, inter partes PTAB proceedings and interferences, as well as appeals to the Federal Circuit, where she clerked after law school.

Dr. Rin-Laures regularly counsels clients – from startups to Fortune 500 companies – on patent strategy relating to new pharmaceutical/biotechnology product development, therapeutic uses, product life cycle management, as well as the interface with FDA regulations and related exclusivity provisions.

She also advises clients in a variety of transactions from due diligence to term sheet negotiations and drafting complex agreements. Her experience includes agreements dealing with licenses, collaborations and other strategic alliances, sponsored research, technology and material transfer.

Dr. Rin-Laures served as General Counsel of Hyseq Pharmaceuticals, Inc. (later known as Nuvelo, Inc.) in 2001-2002, while on leave of absence from Marshall, Gerstein & Borun. As General Counsel, she was responsible for settling litigation and negotiating numerous strategic alliance and license agreements.

She graduated in 1992 from Harvard Law School, cum laude, where she was Executive Editor and Managing Editor of Harvard Journal of Law and Technology and Editor-in-Chief of "Recent Developments in Health Law" in Law, Medicine & Health Care. In 1992-93, after graduation, she served a clerkship with the Hon. S. Jay Plager at the Court of Appeals for the Federal Circuit.

Dr. Rin-Laures completed her medical school studies in 1988 when she received her M.D. from Northwestern University Medical School. She was the youngest woman graduate at Johns Hopkins University where she received her B.A. in Chemistry, with honors, in 1984.

Publications and Presentations

Dr. Rin-Laures has been a speaker on patent and licensing issues. Some former presentations include:

Past articles include:

  • "Incentives to foster new antibiotics are proposed," Co-Author, The National Law Journal, August 29, 2005.
  • "Industries Await Exemption Verdict," Co-Author, Managing IP, No. 148, April 2005.

Community and Professional Involvement

  • Recipient of the Association for Women in Science (AWIS) annual Motivator Award, given to individuals with demonstrated service, support, and mentorship of women in science.
  • Member, National Women in Bio Board of Directors
  • Past President and Chair of Women in Bio - Chicago Chapter
  • Past Delegate to the Coalition of Women’s Initiatives in Law Firms
  • Member, Intellectual Property Owner’s organization
  • Fellow of the American Bar Foundation
  • Past mentor for Menttium
  • Co-Author, "How do we encourage more women to stay and progress in the profession?" ManagingIP.com, March 2015
  • Profiled in Leading Lawyers Magazine – Women's Edition, April 2015

Representative Matters

Adams (Monsanto)* v. Leemans (Bayer CropSciences)
U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

American Home Products Corporation v. The Upjohn Company*
U.S. District Court, District of New Jersey
Case Type(s): Patent Infringement
Area(s) of practice: Pharmaceuticals

Barton v. Fischhoff* (Monsanto) v. Adang (Mycogen Plant Science)
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Chee (Affymetrix) v. Drmanac (Hyseq)*
U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference, Appeal
Area(s) of practice: Biotechnology

Conflict re: Amgen Inc*
Commissioner of Patents, Canadian Intellectual Property Office
Case Type(s): Conflict
Area(s) of practice: Pharmaceuticals, Biotechnology

*Party Represented

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