Our lawyers are skilled in all phases of the patent process, including prosecution of individual patent applications, as well as handling patent disputes and litigation. We follow a well-planned process to assess whether an invention is distinctive enough to receive patent office approval and obtain meaningful protection. We perform complete patent searches for possible infringement conflicts before clients attempt to patent and introduce a new product or product family, and offer guidance on how to circumvent any possible conflicts and still gain innovative advantage. We have also handled a significant number of patent litigations and related disputes.

Delivering on Your Next: Case Study

Resolving a significant patent ownership dispute

Challenge

The client, a major foreign research university, needed help resolving an ownership dispute with leading US universities and a US government agency over ownership of patent applications on valuable CRISPR innovations in the biotechnology space.

Getting to Next

The IP group worked as an interdisciplinary team to transform a difficult situation into a great result. The matter involved complex issues of international law, patents, contracts, employment obligations, and sensitivity surrounding the involvement of powerful academic and government institutions. Our investigation and analysis allowed us to establish the client’s joint ownership of the patent applications, and secure the client’s rights to receive a fair share of royalties on future patent licenses. 

Results

Our client is now a joint owner of the patent applications and shares in revenue from licensing royalties.

Representative Client Work

Counseling and Opinion Matters

  • Counseling and analysis of patents relating to electronic medical devices
  • Investigation and analysis of patents relating to pharmaceuticals and related formulations (handled a variety of clearance and other matters for pharmaceutical and biotech companies)
  • Counseling and opinion work on patent issues spanning a variety of technologies, including: location-based services in mobile telecommunications; earthquake monitoring; customer loyalty rewards programs; network and database security; bar code technology; carbon fiber fabric manufacturing; design patent infringement; website operations; database operations; and business methods

  • Investigation and analysis of patents owned by the Lemelson foundation relating to bar code technology (this analysis correctly predicted the invalidity and unenforceability of these patents)
  • Investigation and analysis of patents owned by the Ronald Katz patent portfolio (these patents relate to automated call center technology)
  • Investigation and analysis of patents covering software related to shipping goods internationally (this analysis correctly predicted a later claim construction that significantly narrowed the scope of the relevant claims)
  • Represented a gaming and software development company in creating and maintaining a portfolio of several hundred patents around the world
  • Represented a dental company in connection with the strategic development and prosecution of its patent portfolio related to medical and dental devices and compositions

Litigation and Disputed Matters

  • Representing defendant in patent infringement action involving digital file management
  • Served as a testifying expert on patent law issues and as a person of skill in the art in an arbitration involving polymer chemistry
  • Resolved a dispute over several patents asserted against our client involving software used to manage networked devices
  • Resolved a dispute over several patents asserted against our client involving website operations
  • Represented defendant in patent infringement action involving calculating credit and trust scores
  • Represented defendant in patent infringement action involving Internet website navigation
  • Represented patent holder in patent infringement action involving merchandise display stands
  • Represented patent holder in patent infringement action involving systems for videophones
  • Represented defendant in patent infringement action involving electronic visual display systems
  • Represented defendant in patent infringement action involving online advertising (settled favorably prior to trial)
  • Represented defendant Southwestern Bell Telephone in patent litigation involving telecommunications technology (obtained favorable claim construction ruling)
  • Represented patent applicant in interference directed to methods of obtaining biologically active molecules known as aptamers
  • Represented patentee in infringement action involving veterinary pharmaceuticals (settled favorably prior to trial)
  • Represented patent applicant in multiple interferences directed to decomposing perfluorinated compounds (obtained favorable final order)
  • Represented patent holder in infringement case involving microscope systems
  • Represented a defendant in patent infringement action involving online advertising software
  • Represented a chemical company in patent procurement and an infringement action involving water purification

Key Contacts

Related Practices

Related Industries

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