Overview
Makoto (“Mak”) is focused on helping clients build and protect intellectual property assets with a global perspective. Mak’s practice includes client counseling and global portfolio management in intellectual property, patent prosecution, and IP due diligence. He has experience in areas of biotechnology, bioinformatics, diagnostics, personalized medicine, medical devices, microelectromagnetic systems (MEMS), and computer software.
Mak received a J.D. from the University of California, Berkeley, School of Law, and a Ph.D. in Cell Biology from the University of California, San Francisco. Mak joined the firm in 2019.
Clerk Experience
Judicial extern to the Honorable Susan Y. Illston, U.S. District Court, Northern District of California, 2018.
Education
- University of California - Berkeley - School of Law (CAL) (J.D., 2019)
- University of California - San Francisco (Ph.D. Cell Biology, 2008)
- Amherst College (B.A. Biology, 2000), Magna cum laude
News & Insights
Articles
Litigation Blog
- Famous Trademark Not Abandoned After Original Owner’s Bankruptcy
- What’s in a Name?: Third Party Use of a Descriptive Term Without Secondary Meaning Can Undermine Assertions of Substantially Exclusive Use of the Term
- Ineffective Skinny Label Leaves Generic Liable Despite Effort to Carve-Out the Patented Indication
- Copying From a Copyrighted Computer Program May Be Fair Use to the Extent Needed to Promote Adoption of the Use of Accrued Talents in Creating a New Software Platform
- Non-Disclosure Agreement Controls Ownership of Patents Arising From Confidential Information Received Thereunder
- Government’s Pre-Litigation Conduct Cannot Justify a Court of Claims Fee Award
- Intrinsic Evidence Establishing the Context of a Claim Term Can Limit Claim Scope
- En Banc Federal Circuit Denies Rehearing of Holding That Severance of an Unconstitutional Restriction in the America Invents Act Is Consistent With Congressional Intent and Is the Least Disruptive Solution
Biotechnology Blog
Latest Updates and News
Novo Nordisk Seeks to Block Compounded Versions of Diabetes / Weight Loss Drug
On October 22, 2024, Novo Nordisk made a submission to the U.S. Food and Drug Administration (FDA) nominating Novo Nordisk’s semaglutide products (WEGOVY, OZEMPIC and RYBELUS) to be included in...
FDA Approves Colony Stimulating Factor-1 Receptor (Csf-1R) Blocking Antibody for Treatment of Chronic Graft-Versus-Host Disease (Cgvhd)
On August 14, 2024, the U.S. Food and Drug Administration (FDA) approved a colony stimulating factor-1 receptor (CSF-1R)-blocking antibody, NIKTIMVO (axatilimab-csfr) developed by Incyte Corporation (and in-licensed from Syndax Pharmaceuticals), for treatment of chronic graft-versus-host disease (cGvHD) after failure of at least two prior lines of systemic therapy in adult and pediatric patients weighing at least 40 kg.
Flavored E-cigarette Manufacturers Face Regulatory Challenges
Manufacturers of e-cigarettes find themselves in a challenging regulatory environment to obtain U.S. Food and Drug Administration (FDA) marketing approval of flavored products. On October 12, 2023, the FDA denied premarket authorization of flavored e-cigarette products from R.J. Reynolds Vapor Company under its Vuse Alto brand. This follows on the heels of the U.S. Supreme Court’s denial of e-cigarette manufacturer Avail Vapor’s challenge to the FDA’s rejection of premarket authorization of Avail Vapor’s flavored e-cigarette products, which was affirmed earlier by the U.S. Court of Appeals for the 4th Circuit. This is the latest case in a series of legal setbacks for the vaping industry, which has ballooned into an $8.2 billion market in less than a decade.
Famous Trademark Not Abandoned After Original Owner’s Bankruptcy
TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
Before Lourie, Bryson, and Prost. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
Summary: A trademark associated with a bankrupt company was not abandoned when the trademark continued to be used during bankruptcy and was the subject of active licenses.
What’s in a Name?: Third Party Use of a Descriptive Term Without Secondary Meaning Can Undermine Assertions of Substantially Exclusive Use of the Term
GALPERTI, INC. v. GALPERTI S.R.L.
Before: Moore, Prost, Taranto. Appeal from the Trademark Trial and Appeal Board.
Summary: Evidence of use of a term even without a showing of secondary meaning, by any third party, is relevant to demonstrate that an assertion of substantially exclusive use was false.
Ineffective Skinny Label Leaves Generic Liable Despite Effort to Carve-Out the Patented Indication
GLAXOSMITHKLINE LLC v. TEVA PHARMACEUTICALS USA, INC. [OPINION] - PRECEDENTIAL
Before Moore, Newman, Prost (dissent). Panel rehearing of an appeal from the U.S. District Court for the District of Delaware
Summary: Substantial evidence supported the jury verdict of induced infringement when testimony indicated that a generic failed to carve out a potentially infringing use from a label and the generic’s advertisements provided further evidence of an intent to encourage the patented use.