Close X
Attorney Spotlight

How does Jessie Zeigler anticipate the intersection of privacy and smart technology will impact the future of litigation? Find out more>

Search

Close X

Experience

Search our Experience

Experience Spotlight

Primary Care Providers Win Challenge of CMS Interpretation of Enhanced Payment Law

With the help and support of the Tennessee Medical Association, 21 Tennessee physicians of underserved communities joined together and retained Bass, Berry & Sims to file suit against the Centers for Medicare & Medicaid Services to stop improper collection efforts. Our team, led by David King, was successful in halting efforts to recoup TennCare payments that were used legitimately to expand services in communities that needed them. Read more

Tennessee Medical Association & Bass, Berry & Sims

Close X

Thought Leadership

Enter your search terms in the relevant box(es) below to search for specific Thought Leadership.
To see a recent listing of Thought Leadership, click the blue Search button below.

Thought Leadership Spotlight

Healthcare Private Equity Compliance Checklist

The complex and ever-changing healthcare regulatory and enforcement environment, including increased focus on the role of private equity firms in their portfolio companies, make compliance a top priority for private equity firms investing in healthcare companies. The best way to limit your exposure as a private equity firm is to avoid a compliance misstep in the first place. Additionally, an effective and robust compliance program for your portfolio healthcare company makes it much more attractive to potential buyers and helps you avoid an unexpected and costly investigation or valuation hit down the road. Download the Healthcare Private Equity Compliance Checklist to assess whether your portfolio company's compliance program is up-to-date.

Click here to download the checklist.

Janelle D. Waack

Member

As co-chair of the firm's Intellectual Property & Technology Practice Group, Janelle Waack brings with her more than 20 years of experience focused on the strategic, cost-effective management of IP litigation, patent procurement and specialty proceedings before the USPTO Patent Trial and Appeal Board (PTAB). Her clients span technology sectors, including pharmaceuticals, chemistry, agricultural products, biotechnology, medical diagnostics, medical devices, genetically engineered crops, stem cell technology, veterinary products, retail, omnichannel marketing, software and unmanned vehicles. She is a registered U.S. patent attorney with a degree in chemical engineering and served as a former Patent Examiner at the U.S. Patent and Trademark Office in the biotechnology, medical diagnostics and medical device art units.

As co-chair of the firm's Intellectual Property & Technology Practice Group, Janelle Waack brings with her more than 20 years of experience focused on the strategic, cost-effective management of IP litigation, patent procurement and specialty proceedings before the USPTO Patent Trial and Appeal Board (PTAB). Her clients span technology sectors, including pharmaceuticals, chemistry, agricultural products, biotechnology, medical diagnostics, medical devices, genetically engineered crops, stem cell technology, veterinary products, retail, omnichannel marketing, software and unmanned vehicles. She is a registered U.S. patent attorney with a degree in chemical engineering and served as a former Patent Examiner at the U.S. Patent and Trademark Office in the biotechnology, medical diagnostics and medical device art units.

Janelle has managed IP due diligence reviews for corporate, product, and patent portfolio acquisitions of up to $2.6 billion, providing patent related opinions and advising clients on the strategic development and licensing of patent portfolios. She has served as lead counsel for numerous contested cases before the PTAB and prevailed in complex, multi-party and multi-jurisdiction disputes including actions before district courts and the Federal Circuit. She has extensive experience in patent interference matters, representing clients on issues of patentability, priority of invention, inventorship, and ownership. She also handles derivation proceedings, inter partes reviews, post grant reviews, and the post-grant correction of patents via reissue and reexamination procedures. Her work on the reissuance of a key patent in the agriculture biotechnology industry and associated trial testimony recently led to a $1 billion verdict for her client.

Her practice includes:

  • Patent Litigation – Representing clients in patent infringement, trade secret, patent validity and contract disputes in district courts and the Federal Circuit, and coordinating concurrent or multiple proceedings in the USPTO related to the same patents.
  • PTAB Contested Cases – Serving as lead counsel in interferences, derivation proceedings, inter partes review, and post grant review, and coordinating those proceedings with concurrent district court litigation and Federal Circuit appeals.
  • Patent Prosecution – Assisting clients in developing worldwide intellectual property protection strategies, including preparing and filing patent applications with the USPTO and coordinating counterpart filings throughout the Americas, Europe, Asia, Africa and Australia.
  • Intellectual Property Portfolio Review – Conducting due diligence reviews of patent and other IP assets and advising clients on the strategic worldwide development and licensing of patent portfolios.
  • Regulatory and Compliance – Monitoring ongoing developments in emerging technologies and advising clients on regulatory requirements in areas such as biologics and biosimilars, genetically engineered crops, as well as omnichannel marketing and unmanned systems (including FAA Section 333 exemptions).

Before joining Bass, Berry & Sims, Janelle worked as a Patent Examiner in the biotechnology, medical diagnostics and medical device art units at the USPTO, as a partner at national and IP boutique firms in Texas, and as a patent agent at a Washington D.C. law firm.

+ Read More

- Read Less

Memberships

American Bar Association

American Intellectual Property Law Association (AIPLA)

Federal Circuit Bar Association

Arkansas Bar Association 

Houston Intellectual Property Law Association

Northwest Arkansas Technology Council 

News

View More

Representative Experience

View More

Past Events

View More

Media Mentions

View More

Additional Thought Leadership

Articles:

Speaking Engagements:

  • "The Supreme Court Rocky Horror Picture Show: Myriad and Mayo," Texas Life Science Forum at Rice University, Houston, Texas (May 20, 2015)
  • "Patent Strategies for Emerging Biotechnology and Medical Device Companies," Texas Life Science Forum at Rice University, Houston, Texas (February 20, 2014)
  • "New Inter Partes Review and Interplay with Litigation," Texas Bar CLE and Intellectual Property Law Section of the State Bar of Texas 9th Annual Advanced Patent Litigation Course, Albuquerque, New Mexico (July 25-26, 2013)
  • "New AIA Regulations – Panel Presentation by USPTO Patent Reform Coordinator and Practicing IP Attorneys," 28th Annual Houston Intellectual Property Lawyers Association and University of Houston Law Center Fall IP Institute, Galveston, Texas (October 4-6, 2012)
  • "Patent Reform Under the America Invents Act and Other Developments in Intellectual Property Law and Policy," BioFlorida 14th Annual Conference, Tampa, Florida (October 23-25, 2011)
  • "Leahy-Smith America Invents Act – What Does It Mean for Biotech?" BIO Houston Seminar, Houston, Texas (October 19, 2011)
  • "Patent Reform: What are the Implications of the Enactment of the America Invents Act?" Bio / Medical Technology Club of Houston Seminar, Houston, Texas (September 6, 2011)
  • "Statutory Subject Matter and Obviousness Problems in Patent Law," 27th Annual Houston Intellectual Property Lawyers Association and University of Houston Law Center Fall IP Institute, Galveston, Texas (October 6-8, 2011)

Accolades

Best Lawyers in America® — Litigation: Intellectual Property (2016-2018)

Notice

Visiting, or interacting with, this website does not constitute an attorney-client relationship. Although we are always interested in hearing from visitors to our website, we cannot accept representation on a new matter from either existing clients or new clients until we know that we do not have a conflict of interest that would prevent us from doing so. Therefore, please do not send us any information about any new matter that may involve a potential legal representation until we have confirmed that a conflict of interest does not exist and we have expressly agreed in writing to the representation. Until there is such an agreement, we will not be deemed to have given you any advice, any information you send may not be deemed privileged and confidential, and we may be able to represent adverse parties.