VERN NORVIEL

Partner

IP Counseling & Patents
IP Litigation
Global Generics
Intellectual Property
Life Sciences
Litigation

EXPERIENCE:

Vern Norviel is a partner at Wilson Sonsini Goodrich & Rosati, where he leads the patents and innovation counseling practice. Vern has more than two decades of experience in formulating successful strategies for life science companies and the development of their IP programs. He represents a wide variety of companies, as well as venture capital firms, in areas such as therapeutics, diagnostics, nanotechnology, genomics, proteomics, and personalized medicine. In fact, Vern's interest in the field of personalized medicine prompted him to become the first attorney to have had his or her entire genome sequenced and made available in a public database.

Before joining the firm in 2003, Vern was the general counsel and corporate secretary of Perlegen Sciences, Inc., a start-up biotechnology company that scans the entire human genome for important therapeutic and diagnostic products. Previously, as senior vice president and general counsel, he was an early employee of Affymetrix, the biotechnology company that pioneered and developed DNA chip technology. He also had been a partner at Townsend and Townsend and Crew in Palo Alto.

During his career, Vern has authored or prosecuted more than 20 patents that have been litigated in the United States and abroad, and has overseen intellectual property lawsuits throughout the world.

Vern currently serves as a member of Wilson Sonsini Goodrich & Rosati's Policy Committee and its Compensation Committee, as well as on the board of the WSGR Foundation. In addition, he is a lecturer in biotechnology law at UC Berkeley School of Law.

SELECT RECENT MATTERS:

Served as a patent expert for Brigham Young University in connection with the school's settlement of a long-running, multibillion-dollar lawsuit with Pfizer involving the drug Celebrex
Developed and oversaw the patent portfolios of Envoy Therapeutics, Intellikine, Verinata Health, Ion Torrent, and QuantaLife

EDUCATION:

J.D., University of San Francisco School of Law
With Honors
Master's degree, University of Santa Clara
Undergraduate degree, University of Colorado, Boulder
With Honors

ASSOCIATIONS AND MEMBERSHIPS:

Lecturer, "Biotechnology Law," UC Berkeley School of Law
Board Member, The Parkinson's Institute
Advisory Board Member, Center of Science, Technology, and Society, Santa Clara University
Advisory Board Member, The Whitaker Biomedical Engineering Institute at Johns Hopkins University School of Medicine
Chairman of the Board, Advisory Committee, School of Engineering, University of Colorado
Inaugural Member, Public Advisory Committee, U.S. Patent and Trademark Office
Member, American Intellectual Property Law Association
Member, American Association for the Advancement of Science
Member, American Bar Association

HONORS:

Honored among the "Top 25 Intellectual Property Portfolio Managers" in California for 2012 and 2013 by the Daily Journal
AV Preeminent Peer Review Rating, Martindale-Hubbell
Recognized as a "Top Rated Lawyer in Intellectual Property" for 2013 by Martindale-Hubbell and American Lawyer Media
Named among California's top life sciences attorneys in the 2011 and 2012 editions of Chambers USA: America's Leading Lawyers for Business
Selected for inclusion in the life sciences category of The International Who's Who of Business Lawyers 2011
Selected for inclusion in the 2007 edition of The Legal 500 US
Named to the Lawdragon 500 "New Stars, New Worlds" list, 2006

SELECT PUBLICATIONS:

Brief for amicus curiae Lynch Syndrome International in support of respondents, The Association for Molecular Pathology et al., v. Myriad Genetics, Inc., et al., On Writ of Certiorari to the United States Court of Appeals for the Federal Circuit, No. 12-398
Brief for amicus curiae Eric S. Lander, The Association for Molecular Pathology, et al., v. Myriad Genetics, Inc., et al., On Writ of Certiorari to the U.S. Supreme Court, No. 12-398
Co-author with L.D. Lieto, "Fast or Slow? Strategies to Speed Up the Patent Process Among Worldwide Patent Offices," The Intellectual Property Strategist, Vol. 17, No. 4, January 2011
Co-author with R. Akhavan and A.R. Alemozafar, "Role of intellectual property in investment-backed personalized medicine," 7(1) Personalized Medicine 95-102, January 2010
Brief for amici curiae Caris Diagnostics, Inc. in support of petitioners, Bernard L. Bilski and Rand A. Warsaw v. John J. Doll, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, On Writ of Certiorari to the U.S. Supreme Court, No. 08-964
Brief for amici curiae Perlegen Sciences, Inc. and Mohr, Davidow Ventures in support of respondents, Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc. and Competitive Technologies, Inc., On Writ of Certiorari to the U.S. Supreme Court, No. 04-607
"Brief of Amicus Curiae, Biotechnology Industry Organization in Support of Plaintiffs' Motions for Summary Judgment, Triantafyllos Tafas and SmithKline Beecham Corp. v. Dudas," 27(1) Biotechnology Law Report 36-43, 2008
Co-author with P. McGarrigle, "Laws of Nature and the Business of Biotechnology," 24 Santa Clara Computer and High Technology Law Journal 275-334, 2008
"Invalid! The Supreme Court Questions the Basis for Diagnostic Patents," Start-Up,
February 2006
Co-author with A. Roche, "Are Method Patents Still Valuable?" Corporate Dealmaker, December 13, 2004

SELECT SPEAKING ENGAGEMENTS:

Panelist, "Patent Pending: Corporations, the Constitution, and the Human Gene," UC Hastings College of the Law, February 20, 2013
Moderator, "Between a Rock and a Hard Place: The Biotech Startup & Walking the Line Between the University and the Venture Investor," Wharton San Francisco and QB3 panel discussion, April 25, 2012
Speaker, "Back to School: The New Patent Law Explained," Berkeley Center for Law and Technology, October 21, 2011
White House participant, Transparency Task Force of the Food and Drug Administration (FDA), August 11, 2009
Participant, Federal Trade Commission hearings on the evolving IP marketplace, May 4-5, 2009
"From Drug Discovery to Drug Approval: Working with the FDA," Yale University
"Building a Life Science Enterprise in Current Market Conditions," The Johns Hopkins University
"Real Life Case Studies Where The Due Diligence Went Terribly Wrong," 3rd National Conference on Life Sciences IP Due Diligence
"Bio MEMS: Opportunities and Barriers," MIT Symposium
"More Way to Market With Your BioPharma Technology," Larta Venture Forum – BioPharma
Participant, President's Counsel on Personalized Medicine Panel
Moderator, Algae Biomass Summit

ADMISSIONS:

Bar of the District of Columbia
State Bar of California
U.S. Patent and Trademark Office

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