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

  • Chambers USA: America’s Leading Lawyers for Business – Ranked our Washington DC Intellectual Property: Patent Prosecution practice in 2019. In addition, ranked our California (2012–2019), Colorado (2016–2019), DC (2012–2019) and New York (2012–2019) intellectual property practices.
  • IAM Patent 1000 – Ranked WilmerHale a leading firm again in 2019 for litigation nationally, as well as in California, Colorado, the DC Metro area and Massachusetts. The firm was also recommended in Massachusetts for its transactions practice.
  • Law360 – Named WilmerHale its Technology Group of the Year for 2016–2018.
  • Best Lawyers in America recognized 124 WilmerHale lawyers and named 11 of them “Lawyers of the Year” for 2020, including Michael Bevilacqua, who was named Boston Trademark Law Lawyer of the Year, and Lisa Pirozzolo, who was named Boston Patent Litigation Lawyer of the Year.
  • LMG Life Sciences – Named WilmerHale General Patent Litigation Firm of the Year and Intellectual Property Firm of the Year at the LMG Life Sciences Awards 2019. In addition to these winning categories, WilmerHale was shortlisted for Hatch-Waxman Litigation Firm of the Year – Branded and Inter-Partes Review Firm of the Year. LMG also shortlisted Amy Wigmore as General Patent Litigator of the Year – District of Columbia, Lisa Pirozzolo as General Patent Litigator of the Year – New England, Robert Gunther as General Patent Litigator of the Year – New York, Emily Whelan as Post-Grant Proceedings Attorney of the Year and Kevin Prussia as US Rising Star – Intellectual Property.
  • The Legal 500 United States – Ranked WilmerHale’s Intellectual Property Practice in the top tier in its 2011–2019 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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