$132 Million Sale of Patent Pool Administrator

Represented a minority owner in the $132 million sale of a patent pool administrator to another patent pool administrator in the audio and video coding technology space.

Patent Portfolio Evaluations for Pharmaceutical Company

Evaluated patent portfolios and performed freedom-to-operate assessments on ribonucleic acid/lipid nanoparticle (RNA/LNP) technologies of multiple emerging companies to arm a large, international pharmaceutical company with strong negotiation positions to complete mergers, acquisitions or business development deals.

RNA/LNP Landscape Analysis for Partnership, Acquisition Potential

Analyzed the ribonucleic acid/lipid nanoparticle (RNA/LNP) landscape to assess the IP positions of major companies in the field and to identify potential companies for partnering or acquisition.

Represented Clean Energy Client in Growth of Multimillion-Pound IP Portfolio

Represented a domestic client in the field of clean energy, drafting and prosecuting patent applications in the U.K. and internationally. The client has now grown from a small startup to encompass two entities who have received millions of pounds in investment on the strength of their IP portfolio.

Advised Clients on Computer-implemented Inventions

Assisted multiple clients in obtaining patents for computer-implemented inventions, which have traditionally posed difficulties in prosecution before the European Patent Office.

$65 Million Sale of Specialty Home Furnishings Business

Represented the seller, a manufacturer of specialty home furnishings, in its acquisition by a leading brand aggregator in numerous different consumer products spaces. The sale, for $65 million in cash and equity, represented the buyer’s first acquisition in the home furnishings space. We also provided counsel on employment, employee benefits, tax, patent, and intellectual property aspects of the transaction.

Counsel Regarding COVID-19 Vaccine Patent Application

Provided counseling and creative solutions regarding prosecution strategy related to a COVID-19 vaccine patent application in view of various business agreements with a research institution and attendant Bayh-Dole considerations to promote business development.

Patent Portfolio Development for Fortune 100 Company

Assisted in developing patent portfolio of Fortune 100 company by drafting and successfully prosecuting patents on technologies including robotics, additive manufacturing, generators, and inspection systems. Interacted directly with inventors to ensure that all important aspects of inventions were covered and that the portfolio was consistent. Personally prepared over 100 patent applications for the client.

IP Portfolio Development for Cybersecurity Startup

Developed and grew intellectual property portfolio for startup company in the cybersecurity space. Identified key values for the company and prepared and prosecuted patents protecting and building on the value for the client. Obtained the first patent for the company within one year of receiving disclosure to help startup quickly obtain funding and continue strategic growth.

Patent Portfolio for Construction Products Client

Developed patent portfolio for construction products client that was in business for decades but did not have any prior patents. Guided the client through protection of emerging technologies for their space and built a portfolio around key products release.

Prior Art Analysis, Product Development Counsel for International Client

Advised large international company on prior art analyses and product developments for launches in very crowded technology fields. Directly interacted with engineers to ensure that the products were protected and the client’s risk was understood and minimized.

Patent Portfolio for Semiconductor Materials Supplier

Managing U.S. and international patent portfolios for a leading materials supplier to the semiconductor industry.

IP Due Diligence for Life Sciences Company

Performed IP due diligence and authored multiple noninfringement and invalidity opinions to position a small life sciences company developing and marketing biological wound healing materials for a possible IPO and eventual acquisition for $300 million, plus an additional $100 million upon reaching certain growth milestones.

Oversight of Significant Global Patent Portfolio

Oversaw a worldwide intellectual property portfolio consisting of approximately 11,000 trademark filings, over 70 patent filings and over 8,000 domain names.

Trademark Portfolio for Global Packaging Company

Managing the trademark portfolio for a major global packaging company.

Successful PTAB Administrative Appeal

Won an administrative appeal for a global technology company before the U.S. Patent Trial and Appeal Board in a case involving a patent application that sought to protect a method of predicting a consumer’s future purchases, based on previous transaction card purchases indicating that a “life event” had recently occurred for the consumer.  The United States Patent and Trademark Office had rejected the application as directed to an abstract idea under a 2014 Supreme Court case.  In its decision in favor of the client, the Appeal Board held that any abstract idea was integrated into a practical application because the patent claims “improve the underlying consumer behavior prediction technology.”

Noninfringement Opinion for Biotech Startup

Prepared a noninfringement opinion for a startup biotech company in order for the company to receive funding.

Patent Portfolio Strategy for University Covering Pharmaceuticals, Life Sciences and Medical Fields

Developed and executed patent filing strategy and managed diverse patent portfolio for a large university client. Technologies span various subject areas including pharmaceuticals, life sciences and medical fields.

Advised on Paragraph (iv) Certification Strategy Related to Development of Generic Pharmaceuticals

Advised in-house counsel on paragraph (iv) certification strategy and provided related opinion work, including noninfringement and invalidity analyses of competitor patents in support of Hatch-Waxman litigation. Further advised on design-around and re-formulation strategies.

Patent Portfolio Strategy for University Covering Science, Engineering and Medical Fields

Developed and executed patent filing strategy and managed diverse patent portfolio for a large university client. Technologies span various subject areas including science, engineering and medical fields.

Successful Enforcement of Global Intellectual Property Rights

Enforced and defended trademarks, copyrights and patent rights for a jewelry designer and retailer against third-party infringers.

Drafted IP Agreements for University

Evaluated and drafted IP licensing agreements, research and collaboration agreements and material transfer agreements for a large U.S. university.

Advised on Patent Matters Related to Automotive Technologies

Advised in-house counsel on patent-related matters, including noninfringement and invalidity analyses of competitor patents. Prepared and prosecuted patent applications directed to variety of automotive technologies including automotive manufacturing, infotainment systems, electric vehicle (EV) charge controllers, audio systems, suspension systems and other mechanical systems.

Developed, Executed Patent Filing Strategy Central to Multimillion-Dollar Acquisition for Client

Developed and executed patent filing strategy resulting in patent family that was central to multimillion-dollar acquisition by large, publicly traded fluidics systems and specialty engineered products company.

Domestic and Foreign Patent Strategy and Portfolio Management for Agricultural Equipment Company

Developed and executed domestic and foreign patent filing strategy and management of patent portfolio related to precision agricultural equipment, including the development of offensive and defensive patent filing strategies.

Filed University's First Ever Patent Applications

Filed the first ever patent applications for a university client. Worked with the university to create and implement internal intellectual property procedures for the client.

IP Agreements for Health Client Entering Third-Party Partnerships

Prepared various IP-related agreements including licenses, commercialization and joint development agreements, enabling client to successfully enter into partnerships with third parties.

IP Due Diligence in Business Acquisitions

Led the IP due diligence team in the successful acquisition of at least six animal care products businesses, resulting in the addition of hundreds of trademarks, patents, copyrights and domain names to the client's IP portfolio.

Contact Us
  • Worldwide
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  • London, England
  • Miami, FL
  • New York, NY
  • Orange County, CA
  • Philadelphia, PA
  • Princeton, NJ
  • Salt Lake City, UT
  • St. Louis, MO
  • Washington, D.C.
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Boston, MA
800 Boylston St.
30th Floor
Boston, MA 02199
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Boston, Massachusetts
Chicago, IL
100 North Riverside Plaza
Suite 1500
Chicago, IL 60606-1520
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Chicago, Illinois
Denver, CO
4643 S. Ulster St.
Suite 800
Denver, CO 80237
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Denver, Colorado
Dublin, Ireland
Fitzwilliam Hall, Fitzwilliam Place
Dublin 2, Ireland
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Edwardsville, IL
115 N. Second St.
Edwardsville, IL 62025
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Edwardsville, Illinois
Jefferson City, MO
101 E. High St.
First Floor
Jefferson City, MO 65101
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Jefferson City, Missouri
Kansas City, MO
2345 Grand Blvd.
Suite 1500
Kansas City, MO 64108
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Kansas City, Missouri
Las Vegas, NV
7160 Rafael Rivera Way
Suite 320
Las Vegas, NV 89113
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Las Vegas, Nevada
London, England
Royal College of Surgeons of England
38-43 Lincoln’s Inn Fields
London, WC2A 3PE
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Miami, FL
355 Alhambra Circle
Suite 1200
Coral Gables, FL 33134
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New York, NY
7 Times Square, 44th Floor
New York, NY 10036
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Orange County, CA
19800 MacArthur Boulevard
Suite 300
Irvine, CA 92612
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Philadelphia, PA
2005 Market Street
29th Floor, One Commerce Square
Philadelphia, PA 19103
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Philadelphia, Pennsylvania
Princeton, NJ
100 Overlook Center
Second Floor
Princeton, NJ 08540
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Princeton, New Jersey
Salt Lake City, UT
222 South Main St.
Suite 1830
Salt Lake City, UT 84101
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Salt Lake City, Utah
St. Louis, MO
7700 Forsyth Blvd.
Suite 1800
St. Louis, MO 63105
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Washington, D.C.
1717 Pennsylvania Avenue NW
Suite 400
Washington, DC 20006
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Wilmington, DE
1007 North Market Street
Wilmington, DE 19801
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Wilmington, Delaware