Clara N. Jiménez
Clara Jiménez counsels patent owners as well as clients accused of infringement in the chemical, cosmetic, and medical device industries. She has experience with consumer, industrial, and pharmaceuticals products, and a variety of chemical products such as polymers, catalyst, metallurgical, and advanced materials. Ms. Jiménez's practice encompasses patent prosecution, client counseling, post-grant practice, and patent litigation.
Ms. Jiménez works with clients to develop intellectual property protection strategies to fit their business needs. She drafts and prosecutes U.S. patent applications, coordinates foreign patent prosecution, and assists clients in the development of trade secret policies. Ms. Jiménez also prepares validity and freedom-to-operate opinions, and performs acquisition-related and pre-litigation due diligence analyses in the areas of material science, chemistry, and polymer chemistry.
Ms. Jiménez has experience in reexamination, interference, and inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office (USPTO). She represents patentees and accused infringers in litigation before U.S. district courts and the U.S. International Trade Commission (ITC), and has assisted clients in patent opposition proceedings in Europe, South America, and Asia.
Before attending law school, Ms. Jiménez worked as a process engineer in the chemical industry. Her technical experience includes designing and developing chemical processes for the manufacturing of chemiluminescent reagents for clinical diagnostic assays, polyurethane resins, and aerogel insulation.
- Koninklijke Philips N.V. v. ZOLL Medical Corp. (D. Mass.) and Koninklijke Philips N.V. v. ZOLL Lifecor Corp. (W.D. Pa.). Representing Philips in patent litigations involving defibrillators and defibrillator electrodes.
- ZOLL Medical Corp. v. Respironics Inc. (D. Del., PTAB). Representing Respironics in patent litigation and inter partes reexamination involving transmission of data from sleep apnea devices.
- Brooks Automation Inc. v. Telemark (N.D. Cal.). Representing Brooks in patent litigation involving mixed refrigerants.
- Represents chemical company in U.S. and foreign patent infringement actions and post-grant oppositions relating to innovative catalytic materials.
- Represented foreign ship manufacturer in inter partes review of patents related to epoxides and sealants.
- Represented potential acquisition targets and potential purchasers in intellectual property due diligence investigations related to fluorine compounds and oil additives.
- Represents on a pro bono basis disabled military veterans before the U.S. Court of Appeals for Veteran Claims in appeals related to denial of benefits, and domestic abuse victims for the Family Law Project of the Women's Bar Foundation
- Volunteers at pro-bono immigration and family law clinics in Washington, D.C. and Boston, MA.
- Law clerk for the University of Massachusetts General Counsel’s office, 2009-2010.
- Capital Pro Bono Honor Roll, 2016.
- Sheila McGovern Scholarship, Massachusetts Association of Women Lawyers, 2009
- Judge Helen W. Nies Scholarship, Federal Circuit Bar, 2007
- American Intellectual Property Law Association
- Hispanic National Bar Association
- Hispanic Bar Association of the District of Columbia
- National Bar Association
- American Institute of Chemical Engineers
- International Association for the Protection of Intellectual Property
- American Bar Association
- Serves as an editor for Full Disclosure, Finnegan's patent prosecution newsletter; and as a regular contributor to Finnegan's AIA blog on PTAB trials and AIA provisions.
- Editor, AIPLA Chemical Practice Chronicles newsletter.
- Coauthor. "Are the Crown Jewels Really Safe? Considerations for Building a Strong Trade Secret Portfolio in Today's Market," Landslide, March/April 2017.
- Coauthor. "The Halo Effect: Threading Carefully to Minimize Damages from Patent Infringement," Specialty Fabrics Review, Nov. 1, 2016.
- Coauthor. "Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.:The First Successful Defense of Orange Book Listed Patents," AIPLA Chemical Practice Chronicles Newsletter, Jan. 26, 2016.
- Coauthor. "When Induced Infringement Under §271(f)(1) Turns into a Party of One: Promega Corp. v. Life Technologies Corp.," AIPLA Chemical Practice Chronicles Newsletter, Winter 2015.
- Coauthor. "Only a True Divisional Can Enter the Safe Harbor of 35 U.S.C. § 121," AIPLA Chemical Practice Chronicles, Fall 2015.
- Coauthor. "GSK v. Banner Pharmacaps, Inc.: A Refresher on Adequate Written Description Support for Structural Limitations in Chemical Claims," AIPLA Chemical Practice Chronicles Newsletter, Fall 2014.
- Coauthor. "Navigating the Supreme Court's 2013-2014 Patent Docket," CIPA Journal, June 2014.
- "PPH 2.0: Global Prosecution in the Fast Lane," IP Frontline, Nov. 18, 2013.
- Coauthor. "Inter Partes Review: Making Heads or Tails of the 'Reasonable Likelihood of Success' Standard," BNA's Patent, Trademark & Copyright Journal, Oct. 25, 2013.