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Karthika Perumal, Ph.D.

Perumal, Ph.D., Karthika

Associate

P +1.713.221.1342
F +1.800.404.3970
karthika.perumal@bgllp.com

Assistant

Debra Odum
+1.713.221.3375

Dr. Perumal advises clients on the protection, licensing, transfer, and acquisition of intellectual property, including patents, copyrights and trademarks, for a variety of technologies.  Her experience includes technology areas such as biology, chemistry, biotechnology, biomedical devices, and software.

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.  When the final judgment was entered in June 2013, Syntrix was awarded a total of $115,106.105, which included the verdict plus prejudgment interest of $7,273,130, and supplemental damages in the amount of $12,037,468.

Advised a large medical research institution in relation to a technology collaboration agreement between the institution and a biologics development company.

Performed due diligence reviews and advised an animal health company regarding intellectual property rights in connection with financing and acquisition transactions.

Developed patent portfolio strategy and prepared patent applications relating to chemical extraction and purification processes for a company dealing with commodity minerals and metals.

Prepared patent applications relating to nucleic acids and antibodies for a medical research institution.

Publications and Speeches

"Supreme Court Delivers a Jolt to Patentees in Medtronic," January 2014

"A Myriad of Issues to Consider in the Wake of Myriad," Texas CEO Magazine, November 2, 2013

"Section 101 and Biotechnological Innovations," 29th Annual Institute on Intellectual Property Law, organized by the Houston Intellectual Property Law Association and the University of Houston Law Center, September 2013.

"Texas Puts its Lone-Star Spin on Trade Secret Protection," IP Today, 2013

"Batting Practice with DNA Patents at the U.S. Supreme Court," IP Today, 2013

"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

Education

J.D., magna cum laude, Order of the Coif, 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
Houston Intellectual Property Law Association
Intellectual Property Owners Association
Association of University Technology Managers
BioHouston

Noteworthy

Associate Editor, Houston Law Review
Prof. John Trentin Award for Scholastic Excellence, Baylor College of Medicine

Languages

Hindi
Tamil