Karthika Perumal, Ph.D.

Associate

P 713.221.1342
F 800.404.3970
E karthika.perumal@bgllp.com

Assistant

Debra Odum
713.221.3375

Dr. Perumal works on intellectual property matters including patents, copyrights and trademarks, as well as the licensing, transfer, acquisition, and distribution of various technologies. Her experience includes technology areas such as biology, chemistry, biotechnology, biomedical devices, and surgical procedures.

Prior to joining Bracewell, Dr. Perumal was the associate director for technology development at the University of Texas Medical Branch. During her ten years with UTMB, she developed commercialization strategies for over 65 technologies including multi-party collaboration agreements, sponsored research agreements, material transfer agreements, options and licensing transactions. She participated in structuring and financing of six start-up companies for various pharmaceutical, medical device and medical informatics products. As part of her scientific training, Dr. Perumal was also involved in biological research projects and has several publications in peer reviewed journals.

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Representative Matters

Syntrix Biosystems Inc. v. Illumina Inc. - Represented Syntrix Biosystems Inc., a biotechnology research firm, in a patent suit against Illumina in the U.S. District Court for the Western District of Washington. Syntrix first filed the suit in November 2010, alleging that certain microarray products made and sold by Illumina infringed U.S. Patent 6,951,682. Assisted in preparation of infringement and validity expert reports, prepared expert witnesses for depositions and trial, assisted in taking and defending numerous individual and corporate representative depositions, managed the document review team, drafted Daubert motions and motions for summary judgment, and prepared various pretrial and trial documents. After an 11 day jury trial, the court awarded Syntrix $95,795,507 in damages and a 6 percent royalty rate.

Publications and Speeches

"On Remand, Federal Circuit Spreads Mayo on Myriad," Westlaw Journal Intellectual Property, September 2012

"Placing your Bets on Non-Obvious Horses: Capturing Value from Non-patentable Subject Matter," AUTM Central Meeting, July 2011

"How Do You Know the Price is Right: Valuation Methods in Technology Licensing," AUTM Central Meeting, July 2010

"Technology Assignments to the Inventor," AUTM Central Meeting, July 2009

"Deal Or No Deal: Is There a Third Choice?" AUTM Central Meeting, July 2008

"Fantasy Versus Reality in Licensing: How is Industry Responding to Licensing Overtures?" AUTM Central Meeting, July 2008

"Evolving Patent Strategies: Top Ten Questions to Ask When Filing and Prosecuting," AUTM Annual Meeting, March 2008

"Understanding Your Customer and the Deal," AUTM Graduate Course, November 2007

"Capitalizing on Know-How," AUTM Central Meeting, July 2007

"Interinstitutional Agreements – All for One and One for All," LES Winter Meeting, February 2007

"Hold that Thought? Ideas for Sale?" Super Sci-tech Saturday Event, supported by UTMB and hosted by Clear Creek, Dickinson, Friendswood, Galveston and LaPorte Independent School Districts, February 2007

"Technology Transfer Panel Discussion: Lessons from the Front Lines," Life Science Entrepreneurship and Mentoring Series, sponsored by RICE ALLIANCE FOR TECHNOLOGY AND ENTREPRENEURSHIP, SEPTEMBER 2006

"Dissection of Licensing Activities behind a Product," LES Annual Meeting, September 2005

"Role of Technology Transfer Offices in Economic Development," BioMedical Technology Club of Houston, August 2005

Education

J.D., magna cum laude, University of Houston Law Center, 2011
Ph.D., Pharmacology, Baylor College of Medicine, 2001
B. Tech., Industrial Biotechnology, Anna University, Chennai, India, 1996

Bar Admissions

U.S. Patent and Trademark Office
Texas

Certifications

Certified Licensing Professional

Affiliations

Licensing Executives Society
Association of University Technology Managers, Program Committee
BioHouston

Noteworthy

Associate Editor, Houston Law Review
Order of the Barons, University of Houston Law Center
Prof. John Trentin Award for Scholastic Excellence, Baylor College of Medicine