Adam K. Whiting

E: adam.whiting@fisherbroyles.com

T: (650) 351-7236

Palo Alto Office

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Practice Areas:

  • Commercial Transactions
  • Intellectual Property
  • Litigation – Civil Pretrial and Trial Services
  • Litigation & Risk Management
  • Technology

Bar Admissions:

  • California
  • U.S. Patent & Trademark Office
  • U.S. District Court, Northern District of California

Education:

  • Santa Clara University, J.D., 2003
  • University of Oregon, Ph.D., Chemistry, 1993
  • Reed College, B.A., Chemistry, 1986

Large Law Firm Experience:

  • Howrey, LLP

Adam K. Whiting is a US patent attorney with a Ph.D. in chemistry and over 15 years experience preparing, prosecuting, licensing, and litigating patents for clients in the chemical and life sciences. Dr. Whiting’s legal career includes over 10 years as a patent agent, associate, and senior associate at the international law firm, Howrey LLP, and nearly 5 years as Senior Director of Intellectual Property at the publicly traded biotechnology company, Codexis. Dr. Whiting’s combination of scientific fluency, big law-firm seasoning, and in-house business IP savvy allow him to provide his clients with the targeted counseling they need to manage IP risk and capture, protect, license, and commercialize their innovations.

Dr. Whiting provides his clients a range of legal services including:

  • Drafting and prosecuting new patent applications, and building portfolios that efficiently provide worldwide protection aligned with business needs.
  • Performing IP diligence in support of business development and M&A activities, including patentability, validity, freedom-to-operate analyses.
  • Drafting and negotiating IP transactions in complex joint-development, government, and commercial agreements.
  • Counseling in US patent litigation, USPTO post-grant proceedings, and EPO opposition proceedings.

Dr. Whiting has counseled clients in a range of technologies including:

  • Small-molecule and biologic pharmaceuticals, therapeutic methods, and pharma manufacturing processes
  • Green- and clean-technologies, biobased chemical manufacturing, and carbon-capture processes
  • Engineered enzymes, metabolic pathway engineering, and biotech processing
  • Liquid crystal display (LCD) chemical compositions and manufacture, polymer synthesis, semiconductor materials manufacturing
  • Diagnostic devices, microarrays and microfluidics, fluorescence microscopy
  • Sequencing and genomics technologies, reagents and software

Unlike many patent prosecutors, Dr. Whiting has extensive US patent litigation experience including drafting complaints, managing discovery, taking and defending depositions, working with experts, preparing claim construction, invalidity and infringement disclosures, and preparing summary judgment and Markman briefs.

Dr. Whiting has litigated patents in US district court across numerous jurisdictions including the following representations:

  • Counsel for defendant GE Healthcare in patent litigation brought by Invitrogen involving random primer DNA amplification technology. (E.D. of Texas)
  • Counsel for declaratory judgment plaintiff QIAGEN-Corbett in patent litigation against ABI involving real-time PCR. (N.D. of California)
  • Counsel for defendant Merck in patent litigation brought by Anticancer, Inc. involving in vivo screening methods using Green Fluorescent Protein (GFP). (S.D. of California)
  • Counsel for defendant Amersham in patent infringement litigation brought by Enzo Biochemicals involving fluorescent nucleotide labelling compounds. (S.D. of New York)
  • Served on litigation team for Columbia University and Stanford University asserting patents involving recombinant monoclonal antibody technology against MedImmune Inc. (D. of Maryland)
  • Served on litigation team for defendants Incyte Genomics, Inc. and Stanford University against Affymetrix, Inc. in district court actions involving DNA microarray technologies. (N.D. of California)

Prior to entering the legal profession, Dr. Whiting was an NIH-funded post-doctoral researcher applying advanced spectroscopic and chemical technologies to understanding the structure and function of complex molecules including proteins, DNA, and inorganic catalysts.

Presentations & Teaching Experience:

  • “IP Profanity in a Global Patent Application” – Invited CLE Presentation – Association of Corporate Counsel, Palo Alto (May 20, 2009)
  • “Post-KSR Practice Tips: Fighting Gobbledygook to Achieve Nonobviousness” – Invited CLE Presentation – GE Healthcare, Waukesha (Feb. 20, 2008)
  • “Understanding The New USPTO Rules On Continuations and Examination of Claims” – Invited CLE Presentation – Office of Technology Licensing, Stanford University, Palo Alto (Oct. 8, 2007)
  • “USPTO Update for Litigators: Provisional Rights, Accelerated Exam, and Coming Limits on Continuation Practice” – Invited CLE Presentation – Tuesdays With Howrey, Palo Alto (Nov. 20, 2006)
  • “The Role of Patents in the Biotechnology Industry” – Invited Lecture to biotech industry course, Medical School, Stanford University, Palo Alto (Apr. 30, 2002)

Publications:

  • Reynolds, M.F., Costas, M., Ito, M., Jo, D.-H., Tipton, A.A., Whiting, A.K. and Que, L., Jr., “4-Nitrocatechol as a probe of a Mn(II)-dependent extradiol-cleaving catechol dioxygenase (MndD): comparison with relevant Fe(II) and Mn(II) model complexes” J. Biol. Inorg. Chem.¸ DOI 10.1007/s00775-002-0411-x, published online Nov. 9, 2002.
  • Halluin, A., and Whiting, A., “Intellectual Property Protection Of Expressed Sequence Tags: A New Approach,” Biopharm Patent Forum: Practical Strategies for Obtaining and Enforcing Genomic and Research Tool Patents in Europe, the USA and Japan, 19–20 October, London, UK (1999)
  • Wang, X., Ho, R.Y.N., Whiting, A.K., and Que, L., Jr., “Spectroscopic Characterization of a Ternary Phosphatase-Substrate-Fluoride Complex. Mechanistic Implications for Dinuclear Hydrolases” J. Am. Chem. Soc., 1999, 121(39), 9235-9236.
  • Hegg, E.L., Whiting, A.K., Saari, R.E., McCracken, J., Hausinger, R.P., Que, L., Jr., “Herbicide-Degrading a-Keto Acid-Dependent Enzyme TfdA: Metal Coordination Environment and Mechanistic Insights” Biochemistry; 1999, 38(50), 16714-16726.
  • Boldt, Y. R., Whiting, A.K., Wagner, M.L., Sadowsky, M.J., Que, L., Jr., and Wackett, L.P., “Manganese (II) Active Site Mutants of 3,4-Dihydroxyphenylacetate 2,3-Dioxygenase from Arthrobacter globiformis strain CM-2″, Biochemistry 1997, 36, 2147-2153.
  • Whiting, A.K., Que, L., Jr., Saari, R.E., Hausinger, R.P., Fredrick, M.A. and McCracken, J., “Metal Coordination Environment of a Cu(II)-Substituted a-Keto Acid-Dependent Dioxygenase That Degrades the Herbicide 2,4-D”, J. Am. Chem. Soc. 1997, 119, 3413-3414.
  • Whiting, A.K.; Boldt, Y.R.; Hendrich, M.P.; Wackett, L.P.; Que, L., Jr., “Manganese (II)-Dependent Extradiol-Cleaving Catechol Dioxygenase from Arthrobacter globiformis CM-2″, Biochemistry 1996, 35, 160-170.
  • Whiting A.K. and Peticolas W.L., “Details of the Acyl-Enzyme Intermediate and the Oxyanion Hole in Serine Protease Catalysis,” Biochemistry 1994, 33, 552-61.