Intellectual Property Counseling and Prosecution

Intellectual Property Counseling and Prosecution

Providing comprehensive solutions for the acquisition, enforcement and protection of IP.

Key Contacts

Meet Our Team

Areas of Focus

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Experience

  • For Unified Patents, achieved a victory against American Vehicular Sciences when the Patent Trial and Appeal Board (PTAB) invalidated all challenged claims of US Patent No. 9,043,093. The ’093 patent was asserted against Honda, Nissan, Hyundai and Toyota.
  • For a major financial institution, achieved a series of victories against Intellectual Ventures, which filed suit alleging infringement of patents related to online banking. The case ended following four successful covered business method proceedings before the US Patent and Trademark Office (USPTO) in which the PTAB invalidated 83 of IV’s claims across the four patents as directed toward unpatentable abstract ideas.
  • For a technology company, provided representation in an international copyright infringement and trade secret misappropriation dispute in the United States and in parallel declaratory proceedings in the United Kingdom.
  • Numerous global companies, including a consumer electronics company, a sportswear and athletic goods company, and a car manufacturer, have relied on our representation in various trademark and trade dress matters.
  • Our copyright experience includes securing a major victory for Google in the Second Circuit in a copyright dispute with the Authors Guild over Google Books, representing an American toy and board game company against allegations of copyright infringement, and representing several major television networks in a copyright case.
  • For NitroMed, filed and obtained patents covering methods of treatment using the company’s commercial drug product, BiDil—which is targeted to the treatment of heart failure in black patients—and worked with the company to implement strategies for product life cycle management.
  • For Wyeth and its licensee XCyte, prosecuted a large and complex family of US and foreign patents concerning an anti-cancer immunotherapy.
  • Represented Columbia University in the negotiation of several intellectual property licenses, and in patent prosecution relating to diverse fields such as software applications, integrated circuits, life sciences, chemistry and physical sciences.
  • Working closely with corporate colleagues, counseled clients in transactions that include:

    • WebMD’s $160 million acquisition of VIPS
    • Idenix Pharmaceuticals’s $156.8 million IPO and private placement to Novartis
    • NitroMed’s $61.34 million IPO
    • A $49.4 million follow-on offering for Lexicon Genetics
    • A $69.7 million follow-on offering for EPIX Medical
    • Predix Pharmaceuticals’s merger with Physiome Sciences
  • A number of clients have relied on us to analyze their patent portfolios vis-a-vis their field of interest and the effect of targeted competitors’ portfolios on their business, and to complete freedom to operate analyses concerning a variety of products and technologies.

Recognition

  • Award Text

    IP Group of the Year

    Law360

    2012–2016

  • Award Text

    Best Law Firms–Band One: Intellectual Property

    Chambers USA

    Since 2011

  • Award Text

    Intellectual Property Firm of the Year

    LMG Life Sciences

    2019

  • BTI Intellectual Property Outlook – Recognized as the Most-Favored IP Department in the nation and one of five Go To IP Firms for non-litigation IP work (2015). 
  • Chambers USA: America’s Leading Lawyers for Business – Ranked nationally in band one (2011–2020); noted as “outstanding at all levels, combining first-rate technical and legal acumen and great trial skills.” Consistently recognized in the national International Trade: IP (section 337) category (2013–2020) and in regional IP tables for Massachusetts (2003–2020), California (2012–2020), Colorado (2016–2020), New York (2012–2020) and Washington DC (2012–2020).
  • Law360 – Named among IP or Technology Groups of the Year seven times since 2010. 
  • The Legal 500 United States – Named among the top law firms for intellectual property (2011–2020) and winner of the Best Law Firm for IP: Patent Litigation (2014).
  • LMG Life Sciences – Recognized in the areas of patent prosecution, patent strategy and management, general patent litigation, Hatch-Waxman patent litigation, corporate, licensing and collaboration, M&A, venture capital and white collar/government investigations (2012–2019). 
  • LMG Life Sciences Awards – Received the Impact Case of the Year Award for our work on Enzo Life Sciences v. Roche Molecular Systems and shortlisted for Firm of the Year in the Licensing  & Collaboration, General Patent Litigation, IP, Inter Partes Review, and Government Investigations categories (2020); named as the General Patent Litigation Firm of the Year and Intellectual Property Firm of the Year and shortlisted for the Hatch-Waxman Litigation (Branded) Firm of the Year, Inter Partes Review Firm of the Year and US Life Cycle Firm of the Year (2019); and won the Hatch-Waxman Impact Case of the Year Award for our role in Millennium Pharmaceuticals v. Sandoz (2018).
  • Managing IP – Named as Patent Contentious Firm of the Year for the Northeast region and recognized with the Impact Case of the Year Award for our role in Mission Products Holdings Inc v. Tempnology LLC (2020); named as the US Patent Contentious Firm of the Year or shortlisted for the recognition (2011–2019); ranked Tier 1 for PTAB Litigation (2020); listed among the top 10 “Law Firms for Petitioners and Patent Owners in PTAB Proceedings Filed in 2019” and the top 15 “Law Firms at the PTAB 2019 – Petitioners and Respondents Combined.”
  • U.S. News - Best Lawyers® – Named Patent Firm of the Year (2021), Biotechnology Law Firm of the Year (2020) and IP Litigation Law Firm of the Year (2018). Honored with first-tier national “Best Law Firm” rankings in Patent Law, Biotechnology Law, IP Litigation and Patent Litigation; and first-tier metropolitan rankings in Washington DC and San Jose for IP Litigation; in Boston for Copyright Law, Patent Law, Patent Litigation, IP Litigation and Trademark Law; in Colorado for Patent Law; and in New York for Biotechnology Law (2013–2020).

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