| EXPERIENCE: John Storella is Special Counsel at Wilson Sonsini Goodrich & Rosati. He has 20 years of experience in biotechnology intellectual property. John's mission is to help companies in biotechnology and related areas to get financed, commercialize their products, and build value by leveraging their intellectual property as a business asset. John negotiates licenses to IP covering core technologies so that clients secure the rights they need to develop and commercialize the technology. He develops patent strategies that advance a set of patent claims that provide clients with meaningful exclusionary power in their market. He performs freedom-to-operate and clearance analyses that identify possible impediments to market entry and develops solutions to avoid any impediments, including designing around patents, licensing, or developing non-infringement or invalidity opinions. In addition, John performs intellectual property due diligence on companies for venture capitalists and other investors. He identifies strengths in a company's patent portfolios and determines how to shore up weaknesses. He also performs freedom-to-operate analyses to ensure a path to market for products of the target company. John is familiar with many technology areas, including molecular biology, genomics and microarrays, proteomics, diagnostics, biologics, pharmaceuticals, chromatography, clean technology, and recombinant DNA. Current clients include Cobalt Biofuels, Helixis, SwitchGear Genomics, Taiji Biomedical, SARCode, and Microchip Biotechnologies. Before joining Wilson Sonsini Goodrich & Rosati, John served as vice president for intellectual property at Ciphergen (now Vermillion), a company that commercializes proteomics-based diagnostic tests. John was also a partner and associate at Townsend and Townsend and Crew in San Francisco, where he focused on developing patent portfolios. Before that, he worked as an associate attorney at Fish & Neave in New York, where he focused on patent prosecution and patent litigation.
EDUCATION: - J.D., University of Virginia School of Law
- M.S., Zoology (Cell and Molecular Biology Program), University of Massachusetts
- A.B., Biology, Dartmouth College
Cum Laude  John R. Storella
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SELECT PATENTS: - U.S. Patent No. 7,309,602: AmbroZea - Fermentation residuals with enhanced nutritional value that increase value of biofuel production
- U.S. Patent No. 6,734,022: Baylor - "Desorption and Ionization of analytes" (SELDI) - Foundational technology of Ciphergen Biosystems (successful re-examination)
- U.S. Patent No. 6,271,037: Rockefeller University and Scripps - "Sequence determination of peptides" - Covers CHCA, the most popular matrix for detecting peptides by MALDI mass spectrometry
- U.S. Patent No. 6,264,891: Invitrogen - "Method for concurrent chemical synthesis" - DNA synthesizer used to make custom oligos for PCR
- U.S. Patent No. 5,958,680: Geron - "Mammalian telomerase" - Covers GRN163L, an oligonucleotide presently in Phase I clinical trials for solid phase tumors
- U.S. Patent No. 5,625,048: University of California - "Modified Green Fluorescent Proteins" - Fluorescent proteins engineered to emit light other than green. Inventor Roger Tsien won the Nobel Prize for Chemistry in 2008 for work that included this invention.
- U.S. Patent No. 5,545,531: Affymetrix - "Multiple biological chip assays" - Held infringed by Illumina
SELECT PRESENTATIONS: - "Developing an Intellectual Property Strategy," September 2008
- "Timeline of a Startup — The Role of IP from Idea to Commercialization," presentation at the BioWest Conference, Denver, November 2005
- "A Bioinformatics Business Model and The Bold Patent Strategy Behind It: The Case of Incyte Genomics," presentation to the American Conference Institute's 5th Advanced Forum On Biotech Patents, September 2005
- "Licensing Theory and Practice — Four Lessons Learned Handling Licenses," presentation to the IP Society Colloquium on Licensing Biotech IP, Palo Alto, August 2004
- "How Much is Your Patent Portfolio Worth?" CLE International, San Diego, February 2001
ADMISSIONS: - State Bar of California
- Bar of the Commonwealth of Massachusetts
- State Bar of New York
- U.S. Patent and Trademark Office
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