Patents

As the landscape of patent procurement and enforcement continues to evolve, the patent team assists clients with a broad spectrum of issues, including the maintenance, litigation and prosecution of patents. Clients benefit from an integrated approach, which leverages the scientific backgrounds of patent prosecutors in areas such as pharmaceuticals, chemistry and biotechnology with an experienced team of litigators. We help clients uphold their rights by counseling on various aspects of enforcement and defense, and guiding them through complex litigation and post-grant proceedings when necessary.

Patent Prosecution and Counseling

Our team has extensive experience in the strategic, cost-effective management of patent portfolios, including prosecution before the U.S. Patent and Trademark Office (USPTO), including the Patent Trial and Appeal Board (PTAB), and coordination of related international proceedings. We regularly assist clients with the preparation and prosecution of patent applications; counsel them on rendering opinions on patentability, reexamination procedures, and infringement; and evaluate patent portfolios.

Patent Litigation

Our litigators have extensive IP litigation experience in a wide range of scientific and technical fields, representing national and international clients in the federal district courts, U.S. Court of Appeals for the Federal Circuit, U.S. International Trade Commission and in proceedings before the USPTO. Our litigators have extensive experience in the federal courts where IP disputes are most often litigated, including the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, the Northern District of California, and the District of New Jersey, where we are consistently successful. The team is known for their skills in the courtroom and their ability to develop novel strategies to resolve matters in an efficient and cost-effective method. Our experience in handling both complex and routine cases, coupled with a deep understanding of our clients’ businesses, puts us in a unique position to help clients achieve their strategic business objectives.

Proceedings Before the USPTO Patent Trial and Appeal Board (PTAB)

Our attorneys represent both petitioners and patent owners in the evolving landscape of post-grant proceedings introduced by the Leahy-Smith America Invents Act. The team’s breadth of experience in patent litigation matters, combined with our patent prosecution experience before the USPTO, enables us to help clients successfully navigate the intricacies of the PTAB’s procedural rules, including those related to inter partes review and post-grant review. These proceedings are often completed within one year, making them a faster and more cost-effective alternative to traditional litigation, but they also require a deep understanding of the technical intricacies of the patents in question. We routinely include the new procedures in conjunction with our overall defense strategy. For example, we use IPR proceedings in the USPTO to challenge the validity of the asserted patents and simultaneously achieve a stay of pending federal district court litigation. By utilizing a comprehensive approach to patent law, we provide a solution that is efficient and more cost-effective than conventional litigation.

Patent Diligence

We routinely represent buyers and sellers in both public and private company transactions in analyzing and examining the strength, scope, status, validity and enforceability of, the ownership rights to, and the future potential to be derived from the subject patent portfolios. Our attorneys leverage their scientific and technical backgrounds to scrutinize the patent assets being bought or sold. From the perspective of the buyer, we determine, amongst other things, the provenance of the target’s patent assets, the scope of the target’s patent assets to ensure requisite exclusivity for the company’s key products and technologies, and the validity and enforceability of the target’s portfolio. From the perspective of the seller, we address and resolve issues with the seller’s patent assets to maximize the value of the portfolio. Our attorneys deliver commercially viable advice to provide our clients with the requisite insight needed to make informed decisions throughout the diligence process.

  • We represented nutritional supplement manufacturing company, Natural Alternatives International, Inc. (Nasdaq: NAII), in a Federal Circuit Court of Appeals case in which our client had brought claims against rival Creative Compounds LLC, accusing Creative Compounds of infringing six of its patents covering various forms of beta-alanine and its use as a muscle-building supplement.  The Southern District of California had dismissed the suit, finding the patent claims to be directed toward a product of nature (beta-alanine) and a law of nature (that taking beta-alanine in sufficient quantities builds muscle) and thus patent-ineligible.  On appeal, a split panel sided with our client, finding the district court applied too broadly the ineligibility doctrine of the “Alice/Mayo test” and that, although beta-alanine itself can occur as a natural substance, the claims containing beta-alanine as one aspect covered more than an unpatentable natural law.

    Law360 provided analysis of the case in the articles:

    We represented nutritional supplement manufacturing company, Natural Alternatives International, Inc. (Nasdaq: NAII), in a Federal Circuit Court of Appeals case...
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    Client Type: Public Company
  • Represented Life Technologies Corp. in a Federal Circuit Appeal stemming from a 2017 Patent Trial and Appeal Board (PTAB) decision in a covered business method proceeding (CBM). Michael Kiklis represented Life Technologies in two covered business method proceedings: one was filed in 2014 and the other was filed in 2015. Life Technologies prevailed in both proceedings with the PTAB finding that all challenged claims of Unisone Strategic IP Inc.’s inventory management patent recited ineligible subject matter pursuant to 35 U.S.C. § 101. This appeal involved the second CBM. Unisone chose not to appeal the first CBM. The Federal Circuit heard oral argument on December 4, 2018, and then affirmed the PTAB’s decision less than one week later.

    We represented Life Technologies Corp. in a Federal Circuit Appeal stemming from a 2017 Patent Trial and Appeal Board (PTAB)...
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    Client Type: Private Company
  • Representation of the plaintiff in a patent infringement lawsuit relating to a patent on an award-winning toy

    We represented the plaintiff in a patent infringement lawsuit relating to a patent on an award-winning toy. We won a...
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    Client Type: Individual
  • Representation of one of the world’s largest manufacturers of outdoor camping gear against claims of patent infringement

    Members of the intellectual property litigation group successfully resolved a patent infringement suit filed by a prolific patent troll in...
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    Client Type: Private Company
  • Representation of Camping World, one of the nation’s largest retailers of RVs, RV accessories and RV-related services, in Federal Circuit Court against claims of patent infringement

    Our team represented Camping World, one of the nation's largest retailers of RVs, RV accessories and RV-related services, in Federal...
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    Client Type: Private Company
  • Represented AutoZone in a patent infringement case and were granted summary judgment of non-infringement

    We represented AutoZone in a patent infringement case and were granted summary judgment of non-infringement. EMG Technology filed suit claiming...
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    Client Type: Public Company
  • Representation of a pharmaceutical company in a patent infringement case related to the sale and marketing of a cancer treatment drug

    We successfully moved to dismiss a patent infringement case alleging that our client's marketing and sale of a highly successful...
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    Client Type: Private Company
  • Represented one of the largest distributors of camping and outdoor equipment in a patent infringement suit related to LED flashlights

    We represented one of the largest distributors of camping and outdoor equipment in a patent infringement suit related to LED...
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  • Represented edo Interactive and two well-known financial institutions in connection with patent infringement claims

    We represented edo Interactive and two well-known financial institutions in connection with patent infringement claims. This matter involved four defense...
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    Client Type: Private Company
Shu Chen, Ph.D.
Associate
Terry L. Clark
Member
John S. Golwen
Member
Brian R. Iverson
Member
Michael L. Kiklis
Member
Britt K. Latham
Member
Paige Waldrop Mills
Member
R. Gregory Parker
Member
Overton Thompson III
Member
Rodrigo N. Valle
Associate
Janelle D. Waack
Member
Caitlin Wilkinson
Associate
Matthew D. Zapadka
Associate