Gilberto M. Villacorta

Of Counsel

Gilberto M. Villacorta

Of Counsel

Dr. Gilberto M. (Ybet) Villacorta is an intellectual property lawyer with Foley & Lardner LLP where he focuses on establishing, exploiting and enforcing intellectual property rights in marketable products, systems and servicesSM. He assists technologically diverse clients worldwide with their intellectual property and business transactions needs. These needs may include the planning, development and maintenance of patent and trademark portfolios; IP monetization, licensing, marketing, product development negotiations and the preparation of the resulting agreements; due diligence investigations in connection with mergers, acquisitions, formation of joint ventures and financing; patentability, registrability, peer review, market assessment, validity and infringement opinions; and enforcement and litigation. Dr. Villacorta is chair of the firm’s Washington, D.C. office Intellectual Property Department.

Prior to his legal career, Dr. Villacorta was a member of the technical staff of AT&T Bell Laboratories in Murray Hill, New Jersey.

Representative Experience

  • [ redacted ] v. [ redacted ] –- arbitration to resolve disputes arising from a license agreement
  • Core Ventures III v. Stimwave Technologies — books and records case and allegations of breach of fiduciary duty
  • Amgen v. Elanex — patent infringement case concerning a gene for erythropoietin
  • Taguchi v. Jorgensen — interference matter to determine how much of gene one has to sequence to own it
  • Eli Lilly v. Teva — ANDA case involving the PMS drug, Sarafem
  • ADS v. USCubed — misappropriation of trade secrets and copyright infringement of information management system
  • Parkson v. Severn Trent — declaratory judgment action against patent for denitrification control system
  • FireStar v. Red Hat — patent infringement action against marketing, distribution and support for open source software product

Awards and Recognition

Dr. Villacorta has been peer review rated in the Martindale-Hubbell® Peer Review Ratings™  system and was recognized in 2009, 2007 and 2004 as a Top Lawyer in Intellectual Property by the Washingtonian Magazine. He was a previous runner-up in the Washington Business Journal’s Top Washington Lawyers in Intellectual Property and was identified as “One of 15 leading IP Lawyers in Washington D.C.” by the Legal Times in 2003. He was recognized among IAM Patent 1000 – The World’s Leading Patent Practitioners (2012 – 2016), and has been named an IP Star by Managing Intellectual Property magazine every year since 2015.

Affiliations

Outside his work with Foley, Dr. Villacorta is a co-founder of Tomopath Inc., a Boston-based startup that aims to assist biopharmaceutical companies seeking to gain FDA approval to market immunotherapeutic agents by use of radiolabeled pharmaceuticals as imaging agents. Beginning in June 2020, Dr. Villacorta takes on the additional role of executive vice president, business development at Hesperos Inc., The Human-on-a-Chip® Company, located in Orlando, Florida. Dr. Villacorta also co-founded two enterprises that have since ceased their operations, TrustedElement LLC, a D.C. Metro Area business accelerator and PL&Y LLC, a developer of products and services in the healthcare space. Currently, Dr. Villacorta is a member of the board of directors of the MIT Club of Washington, D.C. Dr. Villacorta is a past secretary and member of the board of directors of River Bend Golf & Country Club, Great Falls, Virginia. He is also a member of Kinloch Golf Club, Richmond, Virginia, as well as Ballyhack Golf Club, Roanoke, Virginia, a part of the Dormie Network.

Presentations and Publications

Over the years, Dr. Villacorta has authored or co-authored dozens of scientific and legal publications, been granted his own patents and copyrights, and presented numerous lectures on various intellectual property topics. He co-wrote “Biogen Decision Shows Need for Clinical, Legal Collaboration,” published by Bloomberg Law (May 2020). He authored “What’s More Unnatural Than A Clone?” that was published by Law360 (August 2014). Dr. Villacorta participated in a plenary session during the AIPLA Mid-Winter Institute in Las Vegas in January 2012, presenting a talk on “Hot Topics in Patent Law.” A copy of his manuscript is available upon request. He was a panelist in a presentation by seasoned entrepreneurs on “Navigating the Valley of Death,” Nanotech Commercialization Conference, Wake Forest Biotech Place, (April 9, 2013). Dr. Villacorta was a speaker during the 12th Annual NanoBusiness Commercialization Association 2014 DC Roundtable (May 6-7). He spoke on infringement topics before in-house counsel at Novartis Pharma, East Hanover, New Jersey on August 13, 2014.

27 May 2020 Article

INSIGHT: Biogen Decision Shows Need for Clinical, Legal Collaboration

In Biogen International GmbH v. Banner Life Sciences LLC, a panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) held that the scope of a patent term restoration under 35 U.S.C. §156 only includes the active ingredient of an approved product (in this case, dimethyl fumarate or DMF, the active ingredient in Biogen’s Tecfidera®) or an ester or salt of that active ingredient.
14 April 2020 Press Releases

Singelmann Named Pro Bono Attorney of the Year Award by Tahirih Justice Center

Olivia Singelmann, a senior counsel and litigation attorney in Foley’s Washington, D.C. office, was honored by the Tahirih Justice Center as Pro Bono Attorney of the Year Award. The annual award is presented to an outstanding pro bono attorney who has consistently demonstrated excellence and commitment to the protection of immigrant women and girls from violence.
19 June 2019 Newsletters

The State of Patent Eligibility – Report on Senate Hearings

This month, the Senate Judiciary Committee held three hearings on “The State of Patent Eligibility in America.”
04 June 2019 Events

2019 BIO Reception: Clover Clubs, Cheesesteaks, and Convention Connections

Foley is pleased to host its annual networking reception at the 2019 BIO International Convention in Philadelphia on Tuesday, June 4, in partnership with the Personalized Medicine Coalition.
20 June 2017 Events

2017 BIO Reception: SoCal Under the Stars

Foley is pleased to host its annual networking reception at the 2017 BIO International Convention in San Diego on Tuesday, June 20, in partnership with the Personalized Medicine Coalition.
19 July 2016 Events

Washington DC ArchAngels Host "Meet the Angel Investors"

On July 19th, 2016, Foley will host Washington DC ArchAngels’ yearly “Meet the Angel Investors!” reception. This reception will honor and showcase some the most successful angel investors in the DC region.