Steve Parmelee SENIOR COUNSEL

Litigation Seattle

FOCUS AREAS EXPERIENCE

Steve Parmelee is senior counsel in Wilson Sonsini Goodrich & Rosati's Seattle oﬀice. He Intellectual Property has over 25 years of experience in inter partes proceedings before the Patent Trial and Life Sciences Appeal Board (PTAB) of the U.S. Patent and Trademark Oﬀice (PTO). He has represented patent applicants in many patent interference proceedings at the PTAB. In addition, he has Litigation experience representing clients in the new post-grant trial proceedings that were enacted in Patents and Innovations the America Invents Act of 2011, including inter partes review (IPR) and covered business method (CBM) challenges to issued patents. Post-Grant Review

Steve has acted as lead counsel in a number of patent interferences at the PTAB covering a wide range of technologies, including medical devices, photolithography, wireless security protocols, high-density recording media, and biotechnology. Notable cases include University of Washington v. Eli Lilly & Co., in which Steve represented the prevailing party in establishing the now-standard "two-way test" for declaring interferences, and Aﬀymetrix v. Incyte, where he represented the prevailing party Aﬀymetrix in a major gene array dispute.

Steve has worked extensively on client patent portfolios in the areas of immunology, molecular biology, and infectious disease. He obtained patent protection for a licensee's immunotherapy product with sales of more than $1.3 billion per year, generating substantial royalties for the client. He also advises clients on freedom-to-operate issues and due diligence concerns prior to licensing, investments, or acquisitions. Client technologies with which he has experience include microRNA, HIV diagnostics and therapeutics, phage display, medical devices, adoptive immunotherapies, adjuvant formulations, vaccines for inﬂuenza, RSV and rotavirus, coagulation factors, antisense, and monoclonal antibody technology.

Steve's prior experience includes positions as in-house patent counsel for a pioneering Seattle technology company and for a multinational pharmaceutical company. These roles provided him with an understanding of the pressures and expectations of corporate counsel, which allows him to work successfully with a variety of companies and institutions. Prior to joining Wilson Sonsini Goodrich & Rosati, Steve was a partner at a national intellectual property law ﬁrm, founding its Seattle oﬀice in 1990 and serving as its managing partner through 2008.

CREDENTIALS

Education J.D., University of Denver, Sturm College of Law M.S., Medical Microbiology, Creighton University B.A., Zoology, University of Washington Emphasis on Microbiology/Immunology

Admissions

Copyright © 2021 Wilson Sonsini Goodrich & Rosati. All Rights Reserved. State Bar of Washington U.S. District Court for the Western District of Washington U.S. Court of Appeals for the Federal Circuit U.S. Patent and Trademark Oﬀice

MATTERS

SELECT MATTERS:

Bristol-Myers Squib* v. Univ. of Texas (screening assays using farnesyltransferase) Airtight Networks, Inc.* v. AirDefense, Inc. (monitoring wireless traffic) Incyte Pharmaceuticals/Stanford U. v. Affymetrix* (high density nucleotide arrays) British Bio-Technology Ltd. v. ZymoGenetics* (recombinant PDGF analogues) Hitachi Global Storage Technologies* v. Fujitsu Limited (magnetic recording medium) National Institutes of Health* v. Institut Pasteur (detecting HIV genomic sequences) Affymetrix* v. Hyseq Pharmaceuticals (nucleotide sequencing techniques) Affymetrix* v. Oxford Gene Technology (making an array of oligonucletides) NexStar Pharmaceuticals v. Aptein* (large-scale polysome screening) AstraZeneca and Incyte Corp. v. Rigel Pharmaceuticals* (Apo3 protein) Goodchild v. National Institutes of Health* (antisense compounds) Cell Genesys, Inc. v. Schering-Plough Corp.* (expressing a prostate specific protein) Bristol-Myers Squibb* v. Celltech, Ltd. v. Eli Lilly & Co. (beta-lactamase prodrugs) Genetics Institute v. ZymoGenetics* v. British Technology, Ltd. (human Factor IX) U. California* v. Canyon Materials, Inc. (photoresist material for micro-optic devices) U. Washington * v. UCLA (recombinant human glutamic acid decarboxylase GAD) Chiron Corp. v. National Institutes of Health* (method for detecting HIV) MIT v. ZymoGenetics* (thrombopoietin for stimulating erythropoiesis) Bristol-Myers Squibb* v. Zeneca, Ltd. (antibody enzyme conjugates for prodrugs) University of Washington* v. Eli Lilly & Co. (recombinant human protein C) ZymoGenetics, Inc.* v. Ludwig Institute (platelet-derived growth factor-C)

*Party represented

INSIGHTS

Select Publications

"Supreme Court KOs Human Gene Patents," KCBA Bar Bulletin, Vol. 32, Issue 2, October 2013 "Patent Update: Grace Period, Prior Art and New Patent Fees," COJK Bulletin, February 2013 Co-author, "Patent Update: First-Inventor-To-File Transition," COJK Bulletin, November 2012 Co-author, "New Patent Rules in Eﬀect September 16, 2012, Permit Owners of Inventions to Be Patent Applicants," COJK Bulletin, September 2012 Co-author, "Congress Passes Patent Reform Bill," COJK Bulletin, September 2011

Select Speaking Engagements

Speaker, "U.S. Supreme Court Delivers a Unanimous Knockout to Human Gene Patents in Association for Molecular Pathology v. Myriad Genetics, Inc.: What Are the Implications?" King County Bar Association CLE Program, July 30, 2013 Speaker, "Patent Reform: Now What?" King County Bar Association, IP Law Section Meeting, May 2, 2013