Mary Consalvi has more than 20 years of patent law experience in the biotech industry. She has represented start-up, emerging and mature public companies in a wide variety of intellectual property disputes and transactions. She has litigated patents on diagnostic assays and devices, amplification technologies, antibodies, genetic probes, viruses and drugs. In addition to US trial experience, she has directed strategy and briefed counsel in multinational patent litigation, including before the UK House of Lords.
An experienced patent prosecutor, Mary also provides strategic advice on a variety of intellectual property issues, including building and managing patent and trademark portfolios, conducting due diligence and freedom to operate analyses, drafting invalidity and non-infringement opinions, negotiating licensing and supply agreements for the commercialization of developing products, and negotiating settlements in a variety of contested matters. Her technical areas of experience include biotechnology, microbiology, molecular biology, immunology, biochemistry, drug development and delivery, nucleic acid chemistry, medical devices and diagnostic assays.
Prior to joining Proskauer, in 2012, Mary was President and General Counsel of NetBio, Inc, of Waltham, Massachusetts, a leading provider of clinical and forensic products based on a proprietary microfluidic electrophoresis platform. While at NetBio, she was responsible for all aspects of the company’s legal affairs and had key strategic roles in obtaining financing, in- and out- licensing of technology, business development, negotiating supply and other key relationships, and corporate matters.
Prior to her tenure at NetBio, Mary served as Vice President and Chief Intellectual Property Counsel at biotechnology company Transkaryotic Therapies (TKT), a developer of drugs for rare inherited diseases. At TKT, she was responsible for U. S. and foreign patent litigation, interferences, oppositions and cancellations, which included defeating U.S. patent challenge to the Replagal™ product, and defeating challenges to the Replagal™ product and the gene activation platform at the Hague and before the EPO. Mary also set strategy and managed litigation in several proceedings in patent challenges to TKT’s gene activation portfolio, including the Federal Circuit Appeal, District Court remand, the Appeals to the UK Court of Appeals and to the House of Lords. She played a strategic role in business development and licensing activities, including negotiations to reacquire rights to the gene activation technology, litigation settlements and out- licensing of the gene-activation portfolio. Mary established and staffed TKT’s first in-house patent and trademark prosecution department.
Mary began her legal career at Baker & McKenzie, where she had an active international trademark and copyright practice, which included a posting to the firm’s Sydney, Australia office, then moved to patent firm Lyon & Lyon where she became that firm’s first female partner. She also had a leadership role in expanding Howrey LLP’s biotechnology practice on the West Coast.
Mary also has served as an Adjunct Professor teaching Patent Law and Food and Drug Law.
Representative Patent Litigation Matters
Lead trial counsel in the successful assertion of a patent for microbiological diagnostic products used in water testing
Lead trial counsel in the successful assertion of a patent for feline immunodeficiency virus against a competitor and the successful defense of the patent in related proceedings challenging ownership and inventorship
Member of a trial team that successfully defended a client’s foundational patents for rRNA diagnostic platform from challenges brought by three competitors on ownership, validity and non-infringement grounds