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 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 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 complete freedom to operate analyses concerning a variety of products and technologies.

Recognition

  • Law360 – In 2017, named WilmerHale its Technology Group of the Year.
  • The Legal 500 United States – Ranked WilmerHale’s Intellectual Property Practice in the top tier in its 2011-2017 editions.
  • The BTI Consulting Group – Recognized WilmerHale as the “Most-Favored IP Department” in the United States and one of five firms called out as “Go To IP Firms” in the BTI Intellectual Property Outlook 2015: Changes, Trends and Opportunities in IP & IP Litigation report.

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