Janelle D. Waack

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.