Practice Areas

Dr. Casimir counsels clients in all areas of intellectual property including patents, trademarks, copyrights, and trade secrets. A major focus of his practice is in the area of patent prosecution, post-issuance proceedings, litigation, litigation avoidance, due diligence, business counseling, and licensing with an emphasis in the biotechnology, pharmaceutical, chemical, medical device, and business methods fields.

Dr. Casimir has participated in the prosecution of over a thousand patent applications spanning topics such as molecular diagnostics, imaging systems, disease therapies, drugs, vaccines, drug delivery systems, research tools, enzymes, genes, artificial organs, transgenic animals, stem cells, nucleic acid synthesis, organic synthesis, multimedia information processing, material sciences, sensory substitution and enhancement, medical devices, nutraceuticals, ballistics systems, software, and Internet applications.

Dr. Casimir has worked with numerous small and large companies, universities, and institutes on all aspects of the intellectual property life cycle from procurement, post-issuance proceedings (re-examinations, re-issues, oppositions), strategic analysis, complex portfolio development, due diligence in funding rounds, IPOs, and mergers and acquisitions, licensing and negotiation, and litigation and dispute settlement.  Dr. Casimir has significant experience and expertise in managing large, complex patent portfolios and positioning such portfolios for withstanding scrutiny in litigation and due diligence analysis associated with funding or acquisition events.

Dr. Casimir has participated in numerous intellectual property lawsuits, representing both plaintiffs and defendants.  Dr. Casimir is also frequently engaged to provide freedom-to-operate opinions, including non-infringement and invalidity opinions.

 

 

 

Professional Experience

Founding Shareholder, Casimir Jones, S.C., 2007 to present
Adjunct professor, University of Wisconsin Law School, 2012 to present
Partner, Medlen & Carroll, LLP, 2001-2007
Associate, Medlen & Carroll, LLP, 2000-2001
Patent Agent, Medlen & Carroll, LLP, 1998-2000
Technology Specialist, Medlen & Carroll, LLP, 1997-1998
Research Fellow, University of Wisconsin-Madison, 1993-1996

 

 

 

Education

Stanford Law School, Stanford, CA, J.D.
University of Wisconsin-Madison, Madison, WI, Ph.D., Biochemistry
University of Wisconsin-Madison, Madison, WI, M.S., Biochemistry
University of Michigan-Ann Arbor, Ann Arbor, MI, B.S., Cellular and Molecular Biology

 

 

 

Lecturer/Instructor/Advisor

University of Wisconsin Law School, 2012-present
University of Wisconsin School of Business, 2005-present
Madison Area Technical College, 2003-2007
University of Michigan, Medical School, Department of Pharmacology, 2011-present
University of Wisconsin, Law & Entrepreneurship Clinic, 2010-present

 

 

 

Speaker

Dr. Casimir is a prolific public speaker on various topics related to patent law, intellectual property, biotechnology, and legal careers. Representative speaking events have occurred at the University of California, University of Wisconsin, American Society for Microbiology, Thrivent Financial, BioMed Expo (Michigan), University of Michigan, BioPharmaceutical Technology Center Institute, Duke University, Northwestern University, University of Colorado, and a variety of private corporations and investment groups.

 

 

 

Admitted

U.S. District Court, Western District of Wisconsin
State Bar of Wisconsin
United States Patent and Trademark Office
U.S. District Court, Western District of Michigan

 

 

 

Publications

1. "cAMP Activates the Expression of Stearoyl-CoA Desaturase Gene 1 During Early Preadipocyte Differentiation," Journal of Biological Chemistry 271:29847-29853 (1996).

2. "Preadipocyte Differentiation Blocked by Prostaglandin Stimulation of Prostanoid FP2 Receptor in Murine 3T3-L1 Cells," Differentiation 60:203-210 (1996).

3. "The Mechanism of Inhibition of 3T3-L1 Preadipocyte Differentiation by Prostaglandin F2alpha," Endocrinology 137:5641-5650 (1996).

4. "Preadipocyte differentiation blocked by prostaglandin stimulation of FP receptor," South African J. Sci. 92, Abs., p. 563 (1996).

5. "PCR Patent Issues" in PCR Protocols, 2nd ed. Bartlett and Stirling, eds. (2002).

6. U.S. Patent Number 7,282,333

 

 

 

Representative Cases

Third Wave Technologies, Inc. v. Stratagene Corporation (W.D. Wis.)

Represented Third Wave Technologies in patent litigation against Stratagene Corporation related to Invader® assay.

Jury verdict resulted in finding of Third Wave’s patents willfully infringed by Stratagene and valid. Damages and attorney fees awarded at greater than $21,000,000. Case settled prior to appellate review.


Hoffmann-LaRoche, Inc. v. Promega Corporation  
    323 F.3d 1354, 66 USPQ2d 1385 (Fed. Cir. 2003)

Defended Promega Corporation in a patent litigation pertaining to PCR and Taq polymerase patent portfolio.

Successfully obtained ruling from District Court and Federal Circuit that Taq polymerase patent was procured by inequitable conduct.  Case settled.


Third Wave Technologies, Inc. v. Digene Corporation (W.D. Wis.) and Digene Corporation v. Third Wave Technologies, Inc. (W.D. Wis.) (Fed. Cir.)

Defended Third Wave Technologies in declaratory judgment patent litigation pertaining to nucleic acid detection methods related to HPV. Case settled. Defended Third Wave Technologies in patent infringement suit. Obtained narrow, non-infringing claim construction at the District Court that was upheld at the Federal Circuit.


Promega Corp. v. Applera Corp. (W.D. Wis.)

Defended Promega Corporation in patent litigation pertaining to DNA sequencer patent portfolio developed at Caltech University and licensed to Applera Corporation. Successfully obtained narrow claim scope in Markman hearing to avoid infringement claims. Case settled.


Third Wave Technologies, Inc. v. Eragen Corp. (W.D. Wis.)

Represented Third Wave Technologies in patent litigation against Eragen Corporation related to Invader® assay technology. Successfully defended Third Wave claim scope in Markman hearing, leading to settlement agreement with Eragen Corporation withdrawing accused product from the market.


U.S.A. ex rel., Promega Corporation et al. v. Hoffmann-LaRoche, Inc., PE Applied Biosystems, et al. (E.D. Vir.)

Represented U.S.A. via Promega Corporation in qui tam suit against Hoffmann-LaRoche et al. related to false claims act violation. Case settled.


Third Wave Technologies, Inc. v. ID Biomedical Corp. (W.D. Wis.)

Defended Third Wave Technologies in declaratory judgment patent litigation pertaining to nucleic acid detection methods. Case settled.


Dade Berhing v. Third Wave Technologies (N.D. Ill.)

Defended Third Wave Technologies in patent litigation pertaining to nucleic acid detection methods. Case settled.


American Horse Show Association v. John Madden, et al., AHSA Administrative Hearing, N.Y

Defended defendants in horse drugging hearing under strict liability administrative statute. Succeeded in obtaining favorable outcome by demonstrating likelihood of natural sources of detected drugs in animals’ diets.


Horus Vision v. Pride Fowler (N.D. Cal.)

Represented Horus Vision as lead counsel in patent infringement litigation pertaining to gunsight reticles against Pride Fowler. Case settled.


Third Wave Technologies, Inc. v. Bayer Corporation/Chiron Corporation (W.D. Wis.)

Defended Third Wave Technologies in declaratory judgment patent litigation pertaining to nucleic acid detection methods related to HCV. Case settled.


Innogenetics v. Third Wave Technologies, Inc. (W.D. Wis.)

Defended Third Wave Technologies in declaratory judgment patent litigation pertaining to nucleic acid detection methods related to HCV. Case settled.


Stryker Corp. v. Monster Medic, Inc. (W.D. Mich)

Defended Monster Medic, Inc. as lead counsel in patent infringement suit pertaining to ambulance cots. Case settled.

 

 

Spam Arrest v. Rhino et al. (W.D. Wis.)

 

Defended Digiportal Software, Inc. as lead counsel in patent infringement suit pertaining to software products for reducing unwanted spam e-mails. Case settled following claim construction briefing (prior to order).


Brockman v. Ruesch Cranberry, LLC and Joseph Ruesch (W.D. Wis.)

Defended Ruesch Cranberry as lead counsel in patent infringement suit pertaining to cranberry harvesting equipment. Case settled.

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