Venable Strengthens National Patent Prosecution/Litigation Practice with Addition of Five-Attorney Group, Including Three Partners

6 min

Partners Mark Shanks, Toni Herbert, and Michele Frank, Of Counsel Therese Finan and Associate Fabian M. Koenigbauer join Venable to focus on litigation as well as patent counsel/prosecution in biotech, pharmaceuticals, medical devices, and software; the group handles M&A, commercialization and licensing of IP assets

WASHINGTON, DC (January 23, 2012) – Venable LLP notably strengthens its patent prosecution and litigation practices with the arrival of three new partners – Michele Van Patten Frank, Toni-Junell Herbert, and Mark Shanks; Of Counsel Therese Finan; and Associate Fabian M. Koenigbauer to the firm's Washington, DC, office.

Mr. Shanks, Ms. Herbert and Ms. Frank are all patent prosecutors, strategic portfolio counselors and IP transactional attorneys, as well as litigators. They focus on medical devices, biotechnology, pharmaceutical, mechanical, and computer technologies. Ms. Finan is a patent prosecution and portfolio advisor who also counsels on the full range of trademark matters, including clearing marks, securing brand ownership, and maintaining registration. The attorneys all previously practiced at Patton Boggs LLP.

Venable IP partner Michael Gollin, chair of the firm’s Life Sciences practice group, said, “We are seeing strong demand for top-notch IP counsel. In Michele, Toni, Mark, Therese and Fabian, we gain outstanding attorneys who have proven skills representing life sciences companies, through every step of the IP life cycle, including commercialization and disputes.  Their arrival significantly enhances our strategic counseling and litigation capabilities, and they share our vision of integrating IP, regulatory, corporate and related law practices.” 

Mr. Shanks said, “Venable is one of the rare examples of a general practice firm that has successfully built a full-service intellectual property practice, with top-tier infrastructure and client service principles.  Its accomplished life science team and renowned litigation capabilities makes it a natural fit for our practices, and allows us to offer our clients the quality and cost effectiveness of a boutique with access to the diversity of expertise that only a large general practice firm can provide.  We’re very happy to come to a firm like Venable that is dedicated to best-in-class service for our clients.” 

Jeffrey Dunn, who heads Venable’s Technology Practice Group, noted that the addition of these five lawyers, plus five previously announced recent additions to the IP practices – Marci Ballard, Frank Gasparo, Brett Garner, Justin Pierce and Greg Sater "underlines Venable’s commitment to meeting our client’s IP needs with attorneys who are, individually and as a group, respected leaders in the field.  We welcome them to the firm."

Michele Frank Background

Ms. Frank, who earlier in her career was a patent examiner at the U.S. Patent & Trademark Office, focuses on patent counseling and portfolio management, transactions and due diligence, and advice on setting up in-house intellectual property departments. She represents clients before the USPTO and advises emerging companies in making strategic patent decisions.

Among the products she has shepherded through the IP protection process include medical devices, spectroscopic instruments, optical discs, surveillance systems, home health care monitoring systems, GPS, computer graphics, respiratory technologies, and superconductors. She is trusted advisor to several Israeli companies developing novel technologies.

Ms. Frank also represents clients in all phases of complex patent litigation in matters involving medical devices, business methods, and internet technology, among others.

She earned her J.D. at American University (1994), and a B.S. at Union College (1988).

Toni Herbert Background

Ms. Herbert is a patent counselor and prosecutor, and IP auditor, who is also a first-chair trial attorney in interference and patent infringement matters. With a particular focus on drug development, she analyzes, negotiates, and prepares the extensive documentation required for patent rights acquisition in the U.S. and in international venues, and advises clients on patent validity and potential for enforcement and infringement. Her clients have included investors large and small, among them investment banks, venture capital groups, and corporations.

Ms. Herbert also represents clients in all stages of the litigation process, from initial documentation through deposing witnesses and experts, to trial. Her clients have come from industries including chemicals, pharmaceuticals, boat propulsion technology, and biotechnology; she advised one of the world’s most prominent pharmaceutical companies in its evaluation of a potential multibillion-dollar acquisition of a major European biotech firm.

In addition, she has done significant pro bono work on behalf of disabled veterans, appearing in forums from the Board of Veterans Appeals all the way to the U.S. Supreme Court. Ms. Herbert is a frequent speaker as well as prolific writer of both general interest and technical articles on legal and intellectual property issues in a broad range of fields.

Along with Mr. Shanks, she founded Shanks & Herbert, an IP boutique, which they folded in to Reed Smith LLP in 2003.

Ms. Herbert received her J.D., with honors, from the University of Baltimore School (1990), after earning a B.A. at the University of Colorado, Boulder (1980). She clerked for Judge Phillip Baldwin of the U.S. Court of Appeals for the Federal Circuit (1988-’89).

Mark Shanks Background

Mr. Shanks is an experienced IP litigator who represents U.S. and foreign companies in all facets of patent and trade secret litigation spanning a wide range of technologies, including biotech, pharmaceuticals and mechanical devices. 

He also counsels clients on the development of patent portfolios, the monetization of IP assets through licensing and enforcement, and performs the due diligence associated with IP transactions, mergers and acquisitions.  He further prepares and prosecutes patent applications in a variety of technologies relating to biotechnology, pharmaceuticals and chemical processing.

Mr. Shanks is a sought-after speaker and has also written extensively on intellectual property issues, notably for publications focused on or located in Japan.

Mr. Shanks earned his J.D., with distinction, from the University of Iowa (1987), and a B.S. from Iowa State University (1985)

Therese Finan Background

Ms. Finan is a patent and trademark attorney who has worked most extensively in the areas of biotechnology, nanotechnology, pharmaceuticals, and medical devices. She advises U.S. and overseas clients in all phases of the patent process, including both U.S. and foreign application and prosecution procedures, through to reexamination, infringement, and validity issues.

She has also done extensive public- and private-sector work in biomedical research, especially biochemistry, cell biology, and immunology. Ms. Finan is a former public policy analyst on the staff of the governor of Pennsylvania and former director of research and programs for a noted healthcare institution in Washington, DC.

Ms. Finan received her J.D. from Widener University School of Law (1993), and a B.S. from Pennsylvania State University (1984).


Note: An American Lawyer Global 100 law firm, Venable serves corporate, institutional, governmental, nonprofit and individual clients throughout the U.S. and around the world. Headquartered in Washington, DC, with offices in California, Maryland, New York and Virginia, Venable LLP lawyers and legislative advisors serve the needs of our domestic and global clients in all areas of corporate and business law, complex litigation, intellectual property, regulatory, and government affairs.