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Biography
Tim J. Massimo heads Squared’s Business and M&A Practice Areas.
A recognized leader in his field, Tim focuses on representing emerging growth technology companies and Fortune 500 companies in a broad array of venture capital, private equity, securities and strategic transactions from Silicon Valley to Boston to New York and around the globe. He counsels senior executives, boards of directors and venture firm principals on a wide range of issues, including business strategy, finance, mergers and acquisitions, executive compensation, board governance, intellectual property and litigation strategy, and he has been recognized for his deep network among venture firms and investment banks. His clientele reflects a cross-section of industries, including software, digital media, mobile and Internet/e-commerce. He also devotes a significant amount of time to advising universities, federal labs and corporations seeking to commercialize technology and protect their IP rights.
Tim has been recognized by Chambers USA as one of the leading practitioners in the sector. Under his leadership, Squared has been ranked among the top 10 nationally in venture capital deals, as reported in Dow Jones Private Equity Analyst. He has also been selected as one of AlwaysOn’s Power Players New York City.
- Bodor Laboratories, Inc.: Obtained a highly-favorable multimillion dollar settlement in two patent litigation cases, and a related arbitration proceeding, against a U.S. licensee and Japanese sub-licensee involving a breach of license agreement concerning a high-value global pharmaceutical patent portfolio. With this settlement, our client will receive multiple 7-figure payments of cash and stock to address unpaid royalties and milestones, additional royalties from sales in the Asian territories and substantially-improved terms under an amended and restated license agreement. The licensed patents at issue are directed to a novel drug for treating an indication that impacts more than 15 million patients in the U.S. and an even greater number of patients in other licensed countries/regions.
- Representation of leading biotech company as lead counsel in dispute involving breach of a US$700 million commercialization and patent license agreement resulting in favorable multi-million dollar settlement following mediation.
- Representation of London-based cell therapy company in patent legal matters related to treating human diseases, including cancer, using proprietary cellular immunotherapy techniques. To date, company has raised over US$200 million in various rounds of funding.
- Representation of European specialty chemicals and advanced materials company in high-value (multimillion-dollar), cross-border product launch and due diligence matters in the U.S., European and Asian markets.
- Representation of European investment bank in the patent due diligence and negotiations for a US$38.5 million series B funding of progressive multiple sclerosis drug.
- Representation of biotechnology company specializing in drug delivery and food/beverage technologies, as lead counsel in an appeal to the US Court of Appeals for the Federal Circuit following reexamination of a patent directed to nanoemulsion concentrates for dispersing non-polar actives into polar solvents.
- Representation of a European patent client (with qualified Chinese counsel) in a Chinese antitrust investigation initiated by the Shanghai Pricing Bureau involving a multimillion-dollar patent licensing effort across China.
- Representation of a world-renowned medicinal chemist in preparing and prosecuting global patent portfolio directed to pharmaceutical compounds and methods of treatment including soft anticholinergic analogs and related licensing of the same in the US, and to a major Asian pharmaceutical company.
- Representation of privately held clinical-stage pharmaceutical development company in patent prosecution, counseling and diligence concerning ophthalmic drugs and novel drug delivery to the eye, including a successful phase II cyclodextrin nanoparticle eye drop product to treat diabetic macular edema (DME).
- Representation of a global branded pharmaceutical company in patent prosecution, counseling and enforcement efforts, including Orange Book listing of patents and related counseling, including analysis of paragraph IV certifications and participation in related litigation.
- Representation of a New York-based client in a patent due diligence and freedom-to-operate investigation of food industry technology valued at US$150 million.
- Representation of a patent holder (with qualified French counsel) in product seizure operations in France and related patent infringement litigation proceedings in the High Court of Paris.
- Representation (with qualified foreign counsel) of a major European patent holder in a product import monitoring and patent enforcement campaign covering the US, Canada, France and the United Kingdom.
- Representation of a large international chemical company in patent due diligence matters concerning construction of a multimillion-dollar biofuel plant in South America.
- Representation (with qualified German counsel) of a large international chemical company in legal matters pertaining to joint research efforts in Germany.
- Representation of an early-stage biotechnology company in global patent legal matters directed to biocatalytic technologies in the water, energy and chemical industries.
- Representation of a global financial services company in patent due diligence issues arising in connection with high-value pharmaceutical investments.
- Representation of a specialty prescription pharmaceutical company on patent legal aspects of its acquisition of a specialty pharmaceutical company, focused on development of products for female and male hormone deficiencies.
- Representation of one of the largest manufacturers of specialty chemicals in connection with arbitration proceedings in Switzerland concerning inventorship rights to a US patent directed to the synthesis of compounds having nitrile functions.
- Representation of an intellectual property development company, co-founded by a distinguished professor and recent recipient of the Nobel Prize in Medicine, in connection with the licensing, procurement and commercialization of intellectual property directed to life sciences technologies.
- Representation of a startup biotechnology company in connection with the procurement of intellectual property directed to therapeutic vaccine technologies.
- Conducted a due diligence investigation for a global biopharmaceutical company in advance of clinical trials to assess the safety and effectiveness of novel compounds and prodrugs for the treatment of viral infections.
- Representation of a subsidiary of a major international health care products manufacturer in patent interference matters concerning implantable medical device technology.
- Conducted a due diligence investigation for the acquisition of a multimillion-dollar patent portfolio directed to medical device technology.
- Conducted a freedom-to-operate investigation for the construction of a US$50 million chemical manufacturing facility.
- Representation of one of the largest global manufacturers of security products in a patent interference matter concerning automotive technology.
- Conducted a due diligence investigation for a US$30 million acquisition and commercialization of a patent portfolio directed to medical technology.
- Agere Systems Guardian Corp. v. Proxim, Inc., United States District Court for the District of Delaware. Representation of the defendant in a patent infringement action concerning wireless communications technology.
- Akzenta Paneele + Profile GmbH and W. Classen GmbH & Co., KG v. Brown-West, L.L.C. d/b/a Carpet One Floor & Home, Shaw Industries Group, Inc. and Valinge Innovation AB (f/k/a Valinge Aluminium AB), United States District Court for the Eastern District of Texas. Representation of the defendant in a patent infringement action concerning mechanical locking systems for floor panels.
- Anthurium Solutions, Inc. v. MedQuist Inc., et al., United States District Court for the Eastern District of Texas. Representation of the defendant in a patent infringement action concerning a system for automatic electronic document processing.
- APBI Holdings, Inc. v. Hon. David Kappos, United States District Court for the District of Columbia. Representation of the patentee in an action seeking recalculation of patent term adjustment for a patent directed to methods of using rapid-onset selective serotonin reuptake inhibitors.
- Avocet Sports Technology, Inc. v. Implus Footcare, LLC, et al., United States District Court for the Northern District of California. Representation of a defendant accused of infringing a United States patent covering pressure measurement devices with a selective pressure threshold crossing accumulator.
- A.R. Arena Products, Inc. v. Grayling Industries, Inc., United States District Court for the Northern District of Ohio. Representation of plaintiff and counterclaim defendant in patent infringement action and multiple, related inter partes and ex parte patent reexaminations concerning apparatuses and methods for enhancing evacuation of materials from liners used inside intermediate bulk containers, and related antitrust claims.
- Dropbox, Inc. v. Synchronos Technologies, Inc., PTAB-IPR2016-00850. Representation of patent owner in IPR concerning patent directed to data transfer and synchronization system.
- Dropbox, Inc. v Synchronos Technologies, Inc., PTAB-IPR2016-00851. Representation of patent owner in IPR concerning patent directed to data transfer and synchronization system
- Cargill, Inc. v. Ajinomoto Co., Inc., United States Board of Patent Appeals and Interferences. Representation of a senior party in a patent interference concerning processes for the production of glutamic acid compounds.
- DuPont/CSIRO v. Rhodia Chimie, United States Board of Patent Appeals and Interferences. Representation of Rhodia in a patent interference concerning a radical polymerization process for the synthesis of block polymers.
- Embrex, Inc. v. Breuil S.A. and New Tech Solutions, Inc., United States District Court for the Eastern District of North Carolina. Representation of the defendants in a patent infringement action concerning poultry egg candling and vaccination technology.
- Galderma Research & Development v. Hon. David Kappos, United States District Court for the District of Columbia. Representation of the patentee in an action seeking recalculation of patent term adjustment for a patent directed to the treatment of dermatological disorders.
- General Components, Inc. v. Micron Technology, Inc., et al, United States District Court for the Eastern District of Virginia. Representation of the defendant in a patent infringement action concerning minimum dead volume fittings.
- Georgetown University v. Hon. David Kappos, United States District Court for the District of Columbia. Representation of the patentee in an action seeking recalculation of patent term adjustment for a patent directed to peripheral-type benzodiazepine receptor expression level as an index of organ damage and regeneration.
- Golden Hour Data Systems, Inc. v. emsCharts, Inc. et al., United States Court of Appeals for the Federal Circuit. Representation of the appellee in an appeal of the decision in a patent infringement action concerning integrated emergency medical transportation database system.
- Board of trustees, New York Venture Capital Association
- Founder, Sprout Incubator
- Former member, board of trustees, University of Pennsylvania Law Alumni Society
