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Erik J. Birkeneder



Erik is a partner in the Intellectual Property group and is based out of the firm’s Los Angeles and San Francisco offices. Erik assists clients in identifying, protecting and enforcing their intellectual property, particularly in the health care, medical device, software and digital health fields. Erik also assists clients with technology transactions, including intellectual property due diligence and funding transactions, and acts as outside general counsel to emerging growth companies. Erik is particularly active in the digital health field. He serves as co-president of Health 2.0’s San Francisco chapter, frequently speaks and writes on the topic and has been published in TechCrunch.

What Do You Focus On?

Intellectual Property Protection and Enforcement

I use my master’s degree in biomedical engineering in combination with my intellectual property experience, which includes both transactions and extensive litigation, to help clients develop intellectual property strategies and portfolios, particularly for health care, medical device, digital health and software-based technologies. For instance, I have helped clients obtain patents in technology fields that include image recognition, pulse oximeters, cancer diagnostics, diabetic monitors, connected inhalers, implants, colorimetric sensors, artificial intelligence, distributed storage, a range of monitoring and diagnostic technologies, a range of medical devices that include software and electrical engineering components, and many others. I build portfolios for all types of companies with international portfolios, including academic institutions, Fortune 500 companies and emerging growth companies.

I also counsel clients on forming optimal strategies for enforcement of intellectual property, and have extensive experience in patent and trademark litigation, including obtaining favorable settlements for clients.

Technology Transactions

I also have deep experience in technology transactions, particularly those that are IP centric transactions. My recent experience includes due diligence and licensing for a $20M investment in a health care startup, licensing IP from academic institutions on behalf of startups, non-disclosure and employment agreements and joint development agreements.

Digital Health and Outside General Counsel

I also focus extensively in the digital health area. I co-organized the Bay Area Digital Health Mini-Conference and serve as co-president of Health 2.0 SF. I also frequently blog and speak on 3D printing and assist in organizing the 3D Heals conference in San Francisco.

I serve as outside general counsel for emerging growth companies—particularly in the digital health field, including by serving as the touch-point to address corporate formation and fundraising and the rapidly evolving regulatory issues in this space that include HIPAA and FDA.

Prior to joining Nixon Peabody, I was an associate with a leading intellectual property law firm in Southern California for six years.

What do you see on the horizon?

I believe innovation and IP protection will continue to grow in the converging fields of technology and health care. Particularly, I believe artificial intelligence and 3D printing will continue to improve health care, and patent strategies should be crafted to capture these innovations in light of recent changes in software patentability.

Articles

  • “The Healing Power of AI,” TechCrunch, August 12, 2016
  • “Legal: Take Care Not to Trigger HIPAA When Outsourcing Medical 3D Printing,” 3D Heals Blog, July 29, 2016
  • “Protecting the Intellectual Property (IP) in Your 3D Printable Digital Files: A Case Study in the Theft of CAD Files,” 3D Heals Blog, June 5, 2016

Speeches

  • “Building an IP Strategy,” LA BioStart Legal Basics Program, February 2018
  • “Practicing Law in the Digital Age: The Ethics of Using Unsecure Technology,” Nixon Peabody Annual MCLE Seminar, Los Angeles, January 2018
  • “Intellectual property issues in 3D printing,” 3DHEALS 2018 Global Healthcare 3D Printing Conference, Bespoke, San Francisco, April 20-21, 2018
  • “Building an IP Strategy,” LA BioStart Legal Basics Program, Los Angeles, July 14, 2017
  • “Ethical considerations in a digital age,” Nixon Peabody Annual MCLE Seminar, Los Angeles, January 19, 2017
  • “Patent Strategies for 3D Printed Health Care Devices,” 3D Heals Conference, San Francisco CA, August 10, 2016
  • “Intellectual Property for Entrepreneurs,” USC Gould School of Law, Los Angeles, July 13, 2012

Automated telemedicine is coming, for everyone

TechCrunch | September 22, 2017

Los Angles IP counseling and transactions associate Erik Birkeneder authored this column about the future and benefits of health care mobile applications.

What do companies need to know to avoid legal missteps?

MedCity News | June 15, 2017

Los Angeles IP counseling and transactions associate Erik Birkeneder and health care associate Daniel Eliav co-authored this article about legal issues digital health companies should consider.

The Healing Power of AI

Tech Crunch | August 12, 2016

Silicon Valley IP litigation associate Erik Birkeneder authored this article about how deep learning algorithms can have the potential to improve medical diagnostics and care.

Contact

Erik J. Birkeneder

Partner

Los Angeles

Phone: 213-629-6122

San Francisco

Phone: 415-984-8225


Fax: 855-472-2230

University of Minnesota Law School, J.D.

University of Wisconsin, M.A., Biomedical Engineering

University of Wisconsin, B.A., Biomedical Engineering

California

Minnesota

U.S. District Court, Central District of California

U.S. Patent and Trademark Office

  • Giles Rich Intellectual Property Moot Court (Second at Eastern Regional and National Qualifier 2008)
  • Minnesota Intellectual Property Law Association Moot Court Winner (2008)
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