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Michael R. Samardzija, Ph.D.

Samardzija, Ph.D., Michael R.

Partner

P +1.713.221.1112
F +1.713.437.5306
michaels@bgllp.com

Assistant

Debra Odum
+1.713.221.3375

Dr. Samardzija's practice focuses on assisting life sciences and clean technology companies secure, transfer, commercialize and protect the rights to their innovations.  He has represented clients in patent infringement litigations and in various technology-based transactions, including licenses, agreements for technology development, transfer, acquisition, joint development, collaboration, product development, strategic alliance, and product distribution.

Dr. Samardzija served as Director of Intellectual Property at The University of Texas M.D. Anderson Cancer Center's Office of Technology Commercialization. During his tenure, Dr. Samardzija reviewed over 300 invention disclosures and filed over 100 provisional patent applications. One of the high points of his tenure was being involved in policy discussions with members of Congress regarding patent law reform.

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For four years, Dr. Samardzija was the sole in-house attorney at NeurogesX, Inc., a specialty biopharmaceutical company in San Carlos, CA focusing on pain. At NeurogesX, he restructured the intellectual property department; prepared and prosecuted U.S. and foreign patent applications in the areas of pharmaceuticals, drug delivery and medical devices; prepared patentability, infringement and freedom to operate opinions; conducted due diligence on potential in-licensing candidates; negotiated and drafted agreements; and provided legal support to NeurogesX’s regulatory affairs, clinical, biological sciences, pharmacological sciences and business development departments. Prior to this, he was an associate with Skjerven Morrill MacPherson LLP.

He received his law degree from the University of San Diego School of Law in 2001. Before entering law school, Dr. Samardzija worked as a Senior Research Scientist with Alliance Pharmaceutical Corp. where he developed and analyzed drug delivery experiments and coordinated all experiments dealing with novel drug candidates.

Once he received his doctorate, Dr. Samardzija worked as a postdoctoral fellow at the Department of Pharmacology at the University of California at San Diego and the Bockus Research Institute in Philadelphia. His work focused on the modulation of contraction in vascular smooth muscle strips and cultured cells. In doing so he employed a number of biophysical, biochemical, cellular, and molecular tools. For example, in this quest, Dr. Samardzija altered membrane fluidity and permeability to determine their effect on calcium ion influx into smooth muscle cells, used antisense and knockout models to determine the role of phospholipase D in potentiating smooth muscle contractions, synthesized proteins – caldesmon and calmodulin – to understand their role in potentiating myosin light chain kinase phosphorilation. 

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 DNA- and RNA-analyzing products made and sold by Illumina infringed U.S. Patent 6,951,682. 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.

Represented a clean technology start-up in successfully obtaining $1.5 million funding approval from the Texas Emerging Technology Fund.

Represented a French animal health company against allegations of patent infringement; the suit settled following a filing of a motion for summary judgment on damages.

Represented a life sciences company in the conduct of internal corporate investigation of intellectual property procedures.

Represented a hedge fund in the acquisition of assets out of bankruptcy; the assets comprised of over 700 international trademarks and over 500 international patents.

Represented a quality assurance software developer in a multi-million dollar strategic alliance agreement with an international vendor of developer tools and UI components for .NET. 

Represented a company regarding intellectual property rights pertaining to joint development and technology commercialization agreements. 

Represented Virbac Corporation, the U.S. subsidiary of a French veterinary pharmaceutical company, in the sale of consumer products division to Sergeant's Pet Care Products, Inc.

Represented a healthcare products company regarding a master value added reseller agreement for the use and implementation of medically related software.

Represented a biostatistics company regarding licensing of its intellectual property rights.

Publications and Speeches

"Lame-Duck Patent Reform Goes Almost Entirely Unnoticed," Law360, December 2012

"Deciding Where Patent Malpractice Actions Belong," Law360, October 2012

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

"Business Aspects of Patent Reform," Federal Laboratory Consortium, September 2012

"Clash of the Titans," BNA Patent, Trademark & Copyright Journal, August 2012

"Business Aspects of the Patent Reform," Licensing Executives Society Spring Meeting, May 2012

"Effects of Patent Reform on Licensing and Acquisitions," Licensing Executives Society Seattle Chapter, April 2012

"Innovators Take Note, 'Imitation Two-Year Provisional' Option Extended Through 2012," Intellectual Property Today, April 2012

"Business Aspects of Patent Reform," Licensing Executives Society, February 2012

"Recent Patent Rulings Can Impede the Progress of Personalized Medicine," Biofarm International, August 2009

"Of Patents and Cancers: The Implications of the Case Against Myriad," BioWorld Online, July 2009

"Bucking the Anti-Patentee Trend, the Federal Circuit Adjusts the Anticipation Rule in the Patentee's Favor," Thomson Reuters, June 2009

"Minimizing Liability for Copyright Infringement." Intellectual Property & Technology Law Journal, 21(1): 16-20 (2009)

"Still Under Construction: The Patent Prosecution Highway and the Triway: Are These The Roads To A World Patent Office?," Intellectual Property & Technology Law Journal, 20(11): 23-27 (2008)

"Compulsory Patent Licensing: Is it a Viable Option for the United States," 13 Michigan Telecommunications and Technology Law Review 509, 2007

"The Obvious War." Science 315(5809): 190-191, 2007

"Protecting Lifescience Innovations," Department of Internal Medicine Grand Rounds, The University of Texas M.D. Anderson Cancer Center, Houston, Texas, July 23, 2007

"The Latest Changes in the U.S. Patent System," Technology Transfer Luncheon, BioHouston, Houston, Texas, July 12, 2007

"Abolishing Applicant’s Duty of Candor and Good Faith to the PTO during Patent Prosecution," Eighth Annual Intellectual Property Symposium, The University of Texas School of Law, Austin, Texas, February 9, 2007

"Frontiers of Intellectual Property, Panel IV – Patent Reform; Compulsive Patent Licensing of Non-Used Patents," The University of Texas School of Law, Austin, Texas, November 10-11, 2006

Education

J.D., University of San Diego School of Law, 2001
Ph.D., Physiology, Loma Linda University, 1994
M.S., Loma Linda University, 1988
B.S., Brooklyn College, 1987

Bar Admissions

U.S. Patent and Trademark Office
Texas
California
New York

Court Admissions

U.S. Supreme Court
U.S. Courts of Appeals for the 5th, 9th and Federal Circuits
Supreme Courts of California, New York, and Texas
U.S. District Court for the Northern, Southern, Eastern, and Western Districts of Texas

Certifications

Certified Licensing Professional

Affiliations

State Bar of Texas

Noteworthy

US Legal 500, Technology: Transactions, 2011-2013
National Research Service Award recipient from the National Institutes of Health
Licensing Executives Society, 2010-2011, Chair, Life Sciences Sector
Licensing Executives Society Foundation, 2011-2014, Member of the Board of Trustees and VP, Fundraising
Order of the Coif

Languages

Serbian
Bosnian
Croatian
French