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Tamara Fraizer
Partner
Tamara Fraizer leads the firm’s Intellectual Property & Technology litigation practice in the US, and draws on over 20 years of experience. Her work as a patent attorney and litigator allows her to provide tailored IP assessments, opinions, and counseling, and to effectively execute on IP matters including patent procurement, post-grant patent proceedings, IP dispute resolution, and the defense and enforcement of IP rights.
Tamara has litigated countless patent cases in federal district courts across the nation, including the popular jurisdictions of Delaware, Western and Eastern Districts of Texas, Northern District of Illinois, and Northern, Central and Southern Districts of California, and at the US International Trade Commission (ITC). She is also a registered patent attorney who prepares and prosecutes patents at the US Patent & Trademark Office (USPTO), and litigates post-grant challenges before the Patent Trial and Appeal Board (PTAB).
Tamara’s experience spans a variety of industries including life sciences, biotechnology, medical devices, data analytics, pharmaceuticals, healthcare-related consumer products, internet technologies and software. She earned bachelor’s degrees in biology and environmental studies and a PhD in population biology, which involves mathematical modeling of biological systems.
Tamara has represented public and private businesses of all sizes – from the smallest start-ups to mid-sized private companies, to publicly traded, global corporations. She understands the strategic and operational challenges that businesses face with patent and other IP issues. She works closely with her clients to understand their priorities and manages IP-related matters according to their goals and constraints.
As a former university lecturer, Tamara enjoys speaking on patent law topics and, since 2019, has served as editor of the firm’s Global Intellectual Property & Technology blog. She also started and supervises the firm’s Pro Bono Patent program and enjoys counseling innovators and entrepreneurs on their IP strategies to help position them for success.
Life Sciences
- Counseling a biotech company on US and European patent priority disputes with a competitor involving certain uses of CRISPR technology.
- Defended a medical device company in litigation involving patents related to optimization methods used in radiation therapy treatment planning. Filed four petitions for inter partes review (IPR) of the asserted patents and argued appeal of IPR decisions resulting in invalidation of asserted patent claims. Case settled favorably thereafter.
- Defended a medical device company against claims of infringement of patent for user interface of surgical equipment, uncovering and developing facts through third party discovery to invalidate patent while also challenging validity in an IPR petition. Case settled favorably before completion of discovery.
- Developing a patent portfolio for a company providing manipulations of the gut microbiome in pets to improve digestive health.
- Developing a patent portfolio relating to systems and methods for microtissue assays.
- Represented a medical device company in assertion of patent on systems and methods for radiotherapy treatment against a global competitor, coordinated the handling of proceedings between the same parties in the US, UK, Germany and the US PTO, and worked with the client to settle all matters..
- Represented a healthcare product company in assertion of patents on cold compression therapy and assisted with prosecution of patents. Settled case with minimal litigation.
- Represented a pharmaceutical company in assertion of newly issued patents on an ophthalmic NSAID formulation against three companies having generic versions already on the market. All cases settled favorably during discovery or after Markman order.
- Represented a biotechnology company, taking over longstanding litigation between the parties after appeal to the Federal Circuit. Conducted trial focused on inventorship of RNase H minus reverse transcriptase and potential damages. Case settled during trial.
- Represented a biotechnology company in a case involving inventorship and ownership dispute of polymerase blends for use in PCR. Obtained favorable cross-license and settlement.
- Defended a pharmaceutical company in one of many multiparty litigations brought by another pharmaceutical company regarding methods and compositions for treatment of the skin. Successfully limited potential liability. Case settled.
- Defended a biotechnology company in a patent infringement suit regarding fluorescence polarization assay for kinase reaction. Defeated preliminary injunction motion. Case settled after Markman hearing.
- Represented a biotechnology company in assertion of patents for a genetically modified tissue plasminogen activator, implicating products used for treatment of acute myocardial infarction. Case settled for favorable cross-license.
Software/Devices
- Working to develop and enforce foundational patents directed to certain trading of futures and options.
- Advising various companies on matters involving internet and software patents held by monetizing entities.
- Defended an advertising company against claims of copyright infringement for use of internet games. Obtained early settlement.
- Defended genetics company against allegations of infringement of software patents, developing prior art product facts to leverage favorable settlement.
- Defended a global technology corporation against claims of infringement of early 1990’s patent on certain aspects of relational databases. Case settled favorably with limited discovery.
- Defended and asserted patents of an energy efficient lighting manufacturer in a multi-patent litigation between competitors concerning their occupancy sensor light switch products. Resolved favorably prior to trial.
- Represented the licensee of a garage door opener manufacturer in a patent infringement action concerning security algorithm software and transmitter hardware for use in garage door technology. Resolved to the satisfaction of the client prior to trial.
- Defended a software company in a patent infringement suit brought by a competitor regarding software for wireless communications. Parties merged after trial.
- Represented a design automation company in assertion of patent infringement claims implicating an electronic design automation company’s popular chip design software. Case settled after Markman hearing and expert reports.
Other Technologies
- Successfully defended consumer products company in follow-on case alleging breach of contract and infringement of patents on percussive massage devices, with strategic assertion of venue and invalidity challenges and negotiation. Case settled early and favorably.
- Defended hoverboard distributor in litigation on foundational hoverboard patents, defeating motion for preliminary injunction and handling extended negotiations resulting in settlement of the litigation and licensing of the patents.
- Settled cofounder dispute involving rights to clothing patent and polymer technology on the eve of trial.
- Successfully defended a client in a multi-patent investigation concerning the design, manufacture and use of probe card assemblies. Invalidated claims of two patents and demonstrated no infringement of any of the asserted patents, with determination affirmed by the ITC.
- Successfully asserted patents relating to circuits used in power supplies. Jury found that defendant had willfully infringed all four patents asserted in the case, and awarded damages of US$34 million. A second jury found all asserted claims not invalid.
- Represented an electronic components supplier in assertion of patents on circuits used in power supplies. Prevailed at trial in the ITC, where the patents were found to be valid and infringed, and obtained order excluding downstream products from importation into the US. Decision upheld on appeal to the Federal Circuit.
- Represented a technology company in multi-forum dispute involving 34 patents on various technologies used in cell phones. Case settled favorably.
Education
- Stanford University, J.D., 2001
- University of California, Davis, Ph.D., 1996
- University of Kansas, B.S., with honors and highest distinction, 1987
Admissions
- U.S. Patent and Trademark Office, 2002
- California, 2001
- Squire Patton Boggs Pro Bono Partner of the Year, 2021, Pro Bono Patent program,
- Named one of the World’s Most Influential Women in IP by World Intellectual Property Review, 2019
- Named Profiles in Diversity Journal’s Women Worth Watching in STEM in 2017
- California Super Lawyer in IP Litigation for 2011-2013 and 2016-2020
- Author, “Bridging the Divide: How IP Lawyers Can Play Their Role in the Pro Bono Tradition,” Intellectual Property Magazine, December 2021/January 2022.
- Co-author, “Trends and Developments,” Chambers Patent Litigation 2021, February 15, 2021.
- Co-author, “The Top 10 Legal Mistakes Made by Early-Stage Companies,” Private Wealth, July 23, 2019.
- Co-author, “Moveable Pieces,” Intellectual Property Magazine, April 2019.
- Author, “How Is Residency Determined in Multi-district States?,” Intellectual Property Magazine, March 2018.
- Author, “A Guide to Developing an International Patent Portfolio,” San Francisco Daily Journal, November 28, 2016.
- Author, “Taking Stock of Rule 101,” Intellectual Property Magazine, June 2, 2016.
- Author, “The New Way to Plead,” Intellectual Property Magazine, December 15, 2015.
- Author, “The Inter Partes Review Indefiniteness Trap,” Law360 Expert Opinion, November 17, 2015.