Lenny Weinstein has years of experience working with a wide range of technologies and providing a diverse array of IP-related services. He delivers customized strategic IP solutions to companies large and small, from early-stage to established Fortune 500 companies. Lenny diligently explores all details related to companies’ ideas, needs, constraints, competitors, and objectives to formulate legal strategies centered on providing optimal business outcomes.
Lenny has drafted, prosecuted, and worked with foreign associates around the world to manage portfolios including patents and applications for medical devices, computer and software technologies, networking applications, heavy equipment systems, fluid and lighting systems for pools, automotive components, consumer products, and database conversion systems. With medical devices, Lenny has worked with surgical instruments, stimulating catheters, transfer-assistive patient garments, and other devices that deliver medicants, track body movements, manage healthcare data, or employ machine learning to deliver real-time corrective movement feedback.
Lenny provides clients with legal opinions regarding patentability, freedom-to-operate, invalidity, and non-infringement issues. Companies with an eye towards transactions involving intellectual property assets, acquisition and investment seeking alike, look to Lenny to implement filing strategies that build their IP portfolios, evaluate the strength and product coverage of portfolio assets, and conduct due-diligence investigations. In addition, Lenny helps companies draft and negotiate complex licensing agreements.
Prior to joining BoMc, Lenny acquired an intimate knowledge of the patent examination process as a patent examiner. He then honed his prosecution skills as an attorney at a well-known IP firm next door to the USPTO. Upon joining a large general practice firm in DC, Lenny developed a passion for medical technology and a prowess for patent preparation, client counseling, and IP portfolio management. More recently, at an Atlanta-based law firm founded by fellow Georgia Tech alumni, Lenny cultivated his abilities for protecting software-related technologies, challenging patents before the PTAB, and providing companies with creative, portfolio expansion-focused, and business-driven IP solutions.
- Over one calendar year, drafted, filed, and prosecuted to allowance, each parent application in a portfolio of seven applications related to a fluid handling system. Each of the seven applications included a set of claims directed toward patentably distinct subject matter. The portfolio and associated product were purchased at the end of the calendar year for US$12m by an industry leader in the field of fluid handling systems.
- Obtained four patents in the United States and India for a client’s medical device that tracks body movements and delivers real-time corrective feedback. Procuring the patents was instrumental in the client’s successful efforts to raise funding and bringing the device to market.
- Crafted the patentability challenging arguments employed in a petition for inter partes review originally denied institution by the PTAB. These arguments were cited in a rare dissenting opinion, and in an even more rare grant for rehearing and institution, as providing one reason the parallel district court proceeding should not bar institution because they established a strong case that most of the challenged claims were unpatentable.
- Drafted and filed, pro bono, a patent application for eight middle school students. For their entry for the First Lego League competition, the young inventors developed a now-patented (U.S. Pat. No. 9,486,020) daily-use garment that converts into a flotation device in emergency flooding situations.
- District of Columbia
- U.S. Court of Appeals for Veterans Claims
- U.S. Department of Veterans Affairs
- U.S. Patent and Trademark Office
- The George Washington University Law School, J.D., 2012
- Georgia Institute of Technology, B.S., Mechanical Engineering, 2002
- American Bar Association (ABA), Member
- American Intellectual Property Association (AIPLA), Member
- Georgia Tech Bar Association, Member