Nicole S. Dunham
- Firmwide Chair, Patent Prosecution & Portfolio Counseling Practice
Nicole develops and implements patent strategies to advance her clients' business objectives.
Nicole Dunham handles all aspects of patent preparation and prosecution, strategic development of patent portfolios, freedom to operate analysis, patent validity analysis, and other intellectual property due diligence. Known for her strategic insights into her clients’ business, Nicole leads both company-side and investor-side patent-related due diligence, representing venture capital firms, institutional investors, multinational corporations, and emerging companies from incubation through acquisition. She has served as lead IP counsel in securing hundreds of millions in funding for medical device companies and has played a pivotal role in acquisitions exceeding $1 billion.
Within the medical tech sector, Nicole counsels clients in a variety of different fields. These include neurostimulation and monitoring, metered dose inhalers, auto-injectors, cardiac valve replacement and repair, cardiac pacing, neurovascular devices, orthopedic devices, vascular surgery, otorhinolaryngological systems, gastrointestinal devices, electrosurgical tools, stents, shunts, gynecological devices, therapeutic ultrasound, and ophthalmic devices. She also has significant experience with medical imaging, real-time marker tracking, digital health, and wearables.
Nicole provides strategic patent counseling on a diverse range of technologies, including aerospace, femtech, composable packaging, consumer products, Internet of Things, automated retail systems, augmented and virtual reality, and mobile applications. She has prepared, prosecuted, and analyzed patent applications in a variety of other technical areas, including semiconductor fabrication and design, cleantech, commercial equipment, and other mechanical and electromechanical technologies. She also partners with patent litigation counsel on infringement matters, as well as transactional counsel during corporate financings and mergers and acquisitions transactions associated with tech companies.
Areas of focus
Education & Credentials
Education
- Loyola Law School, Los Angeles, J.D., 2009
- Loyola Marymount University, B.S., Mechanical Engineering, cum laude, 2006
Bar and Court Admissions
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Washington
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U.S. Patent and Trademark Office
Related Employment
- Perkins Coie LLP, Seattle, WA, Summer Associate, 2008
Professional Recognition
Listed in Intellectual Asset Management Patent 1000, 2023-2024
Selected as a "Washington Rising Star" in Super Lawyers Magazine, 2016-2023
Lawyer Monthly "Women in Law Award," Patent, Trademark and Copyright, 2018
Recipient of Eastside Legal Assistance Program's "Volunteer of the Year," 2010
Impact
Professional Leadership
- UCSF Rosenman Institute, Screening Committee Member
- Washington State Patent Law Association
- WINGS (The Medical Technology Angels), Screening Committee Member
- UCSF Rosenman Institute, Screening Committee Member
Community Involvement
- Life Science Washington, Board Member
News
Professional Experience
Patent & IP Diligence Counsel
Medtronic
Provided patent preparation, prosecution, counseling, strategic patent due diligence and opinions for the world's largest standalone medical device company in fields of renal denervation, heart valves and neurovascular devices.
Twelve
Represented the heart valve company in patent preparation, prosecution and strategic counseling. Served as IP counsel for financing rounds and in Medtronic’s $458 million acquisition of Twelve in 2015.
Altura Medical
Advised on the patent preparation, prosecution and strategic counseling for the endovascular aneurysm repair device company in its acquisition by Lombard Medical for $50.5 million in 2015.
Reshape Medical, Inc.
Advised on patent preparation, prosecution and strategic counseling for the FDA-approved intragastric balloon company and served as IP counsel during numerous financing rounds.
Calypso Medical Technologies, Inc.
Provided patent preparation and prosecution counsel in wireless implantable transducers for guiding surgery, radiation and other treatments. Served as company IP counsel before and after 2011 acquisition by Varian Medical Systems.
Micron Technology Inc.
Represented and advised company in its patent portfolio planning, development and counseling, including patent preparation and prosecution in the fields of semiconductor packaging, chemical-mechanical polishing, photolithography, vapor deposition and other wafer processing technologies.
Coinstar, LLC (Formerly Outerwall Inc.)
Provided strategic counselling, development and management of U.S. and foreign patent portfolios for Coinstar and other Outerwall lines of business. Counsel also included providing competitive analysis and IP diligence on acquisitions.
Amsafe
Prepared and prosecuted patent applications on aircraft airbag systems and vehicle occupant restraint systems, as well as provided clearance opinions and advice regarding freedom to operate for the world’s leading provider of safety restraint products for the aerospace, defense, specialty and vehicle industries.
Mergers & Acquisitions
Acquisitions by Microsoft Corporation
- Represented Microsoft in its acquisition of Semantic Machines.
- Represented Microsoft in its acquisition of Bonsai AI, Inc.
- Represented Microsoft in its acquisition of Avere Systems.