Partners  >  Paul Simboli

Paul Simboli

ContactEducationAdmissionsIndustry Experience

IMG_0676Paul Simboli is Managing Partner of Operations for the Firm. Paul’s practice is focused on U.S. and foreign patent prosecution, opinion work, due diligence studies, and client counseling in the fields of biotechnology, pharmaceuticals and medical devices. He also assists clients in the strategic development and monetization of internal patent portfolios, patent process implementation and the assessment of third-party IP collaborations. In addition, Paul works with clients on Hatch-Waxman litigations, post-grant proceedings, including inter parties review (“IPR”) and post-grant review petitions (“PGR”), and general post-grant patent strategy. He is a long-time and frequent lecturer on topics related to practice before the United States Patent Office, Federal District Courts and the Patent Trial and Appeal Board.  He speaks regularly for well know Intellectual Property education providers, such as Momentum, Consero and the American Conference Institute. Paul has been a member of Momentum’s IP Counsel Advisory Board for several years.

 

For 10 years, Paul was a Vice President, Chief Patent Counsel and Assistant General Counsel for Depomed Inc.; he continues to work with Depomed on IP related matters, including litigations (Depomed Inc., v Purdue Pharma L.P. in progress).  As Chief Patent Counsel, he ensured Depomed won all Hatch-Waxman Litigations, Regulatory litigations and Patent Infringement actions.  His technical experience includes chemical entities and formulations thereof, vaccines, antibodies, genomics, polypeptides, small molecules, gene therapy, diagnostics and therapeutics.

 

Prior to his legal career, Paul was an active-duty Chemist for the United States Army, stationed at Letterman Army Institute of Research (“LAIR”) in the Presidio of San Francisco; he was honorably discharged. After his military tour, Paul joined Chiron Corporation. While at Chiron, Paul transitioned from supervising a laboratory focused on biotechnology diagnostics, to joining a newly formed Intellectual Property group under Robert P. Blackburn, formerly with Morrison & Foerster. While working as a Patent Agent at Chiron, Paul attended law school in the evenings at Golden Gate University.

CONTACT

E-mail:
psimboli@helixip.com

Telephone:
(650) 218-1044


Education

J.D., Golden Gate University School of Law 1996
Graduate Studies-Biochemistry at The Ohio State University 1981-1984
B.S., Bowling Green State University, ACS A major in Chemistry 1981


Admissions

Minnesota 1997
California (RIHC) 2008
Pennsylvania 2018*
New Jersey 2018*
Court of Appeals for the Federal Circuit 1997
Eighth Circuit Court of Appeals 1998
U.S. Patent and Trademark Office

*(admission pending)


Industry Experience
  • Depomed, Inc. – Vice President of Intellectual Property and Assistant General Counsel

______________________________________________________________________

Representative Patent Office Proceedings (IPRs, Represented Party in bold)

  • Depomed Inc., v Purdue Pharma L.P.
  • Depomed Inc., v Endo Pharmaceuticals

______________________________________________________________________

Representative Litigations (represented party in bold)

Trials

  • Depomed Inc., v Actavis Elizabeth LLC; Roxane Laboratories and Alkem Laboratories Limited, DNJ
  • Depomed Inc., v Actavis Elizabeth LLC; Incepta Pharmaceuticals Co. LTD; Abon Pharmaceuticals, LLC; Watson Laboratories, Inc., DNJ

Other Litigations

  • Depomed Inc., v U.S. Department of Health and Human Services (FDA)
  • Depomed Inc., v Impax Laboratories Inc., and Par Pharmaceutical Companies Inc., DNJ
  • Depomed Inc., v Lupin Pharmaceuticals, Inc., ND Cal
  • Depomed Inc., v Sun Pharmaceutical Industries LTD and Valeant International, DNJ
  • Depomed Inc., v Ivax Pharmaceuticals Inc., ND Cal
  • Depomed Inc., v Strides Pharma Inc., DNJ
  • Depomed Inc., v Zydus Pharmaceuticals Inc., and Cadila Healthcare Limited, DNJ
  • Depomed Inc., v Endo Pharmaceuticals Inc., DNJ