Defense of Multinational Tech Company in Patent Infringement Claims
Represented multinational technology company specializing in internet-related services and products (online advertising technologies, search engine, cloud computing, mobile software and hardware) in several matters ranging from alleged infringement of patent covering software methods used in generating differential update packages for mobile device operating systems to patent claims related to the non-cellular signal use in determining a cell phone’s location.
Successful Verdict in Four-Week Trial for Disease/Genetics Testing Corporation
Represented plaintiff health sciences corporation in a patent infringement action relating to its automated tissue processing systems used in the diagnosis of a variety of diseases. The four-week jury trial resulted in a verdict finding infringement on all asserted claims, which was upheld on appeal before the Federal Circuit.
Evaluations of Large Tech, Patent Portfolios for Valuation and Market Potential
Evaluated large technology and patent portfolios consisting of thousands of assets, for valuation and total addressable market (TAM) potential to identify assets for investment, license and/or sale. Identified market participants and developed licensing programs to maximize client ROI. Negotiated resulting agreements and licenses.
Successful Defense of Game-Changing Technology for Agricultural Manufacturer
Successfully defended game-changing agricultural equipment patents before the USPTO during reexamination related to a pending infringement suit in which the major manufacturer is the plaintiff.
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.”
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.
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.
Inter Partes Review for Multinational Security Company
Handled four different inter partes reviews for multinational company specializing in security and identity solutions.
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.
IP Due Diligence Review for Billion-Dollar Fragrance, Flavors Company
Managed large IP due diligence review for a billion-dollar fragrance and flavors company leading up to a significant acquisition.
Managed International Patent Portfolio for Health Care Company
Managed U.S. and international patent portfolio related to heart pumps, cardiac catheters, electrocardiograms, heart mapping, heart monitoring and ablation therapy technologies.
Managed Multiple International Patent Portfolios for Manufacturer
Provided development and strategic counsel oversight for multiple U.S. and international patent portfolios for commercially valuable products and systems of a multinational electrical product manufacturer for more than 20 years.
Management of U.S. and Foreign Patent Families for Major Medical Device Companies
Managed multiple U.S. and foreign patent families and provided strategic counsel for medical device companies involving technologies related to fluorescent imaging, vascular occlusion, neuromodulation, and renal and cardiovascular devices.
Patent Clearance Projects in Pharmaceutical Industry
Managed several patent clearance projects relating to a computer ecosystem designed to manage the prescription process and use by patients of a multimillion-dollar pharmaceutical product.
Patent Infringement, Invalidity Analysis Relating to Display Screen Technology
Managed patent infringement and invalidity analysis for a client in the area of display screen technology. This involved numerous design patents covering various types of display screens.
Patent Landscape Analysis for Fintech Client
Conducted patent landscape analyses and ideation sessions for a large fintech client in the area of authenticating online users.
Patent Portfolio Development Related to Autonomous Vehicles
Led a team of patent attorneys to prepare and file several patent applications for a large client directed to the control, management and diagnostic testing of autonomous vehicles.
Patent Portfolio in Touch Screen Technology
Managed the filing of a portfolio of patent applications for an international client in the touch screen technology area.
Patent Portfolio Management for Multinational Aerospace Corporation
Managed patent applications relating to semiconductors, avionics, antennas, modeling, simulation, non-destructive testing, flight control systems, communication systems, electronics, and unmanned systems.
Payment Authentication Patent Portfolio for Fintech Client
Developed patent portfolio for large fintech client in the area of payment authentication services. Multiple patent attorneys prepared and filed numerous patent applications directed to authenticating online users using client device metadata.
Pharmaceutical Patent Portfolio for University
Managed pharmaceutical patent portfolio that includes filings in over 16 different countries. Worked with university and licensee on achieving patent protection worldwide.
Portfolio Management, Strategic Direction for Multiple Consumer Products, Health Care Companies
Managed global patent portfolios for and provided strategic counsel to multimillion-dollar consumer products and health care companies in the U.S. and abroad, including preparation and prosecution, opinion work, Inter Partes Review work and litigation.
Prosecuted Patent Applications for Large University Client
Drafted and prosecuted patent applications relating to medical imaging technologies including CT, MRI, optical tomography and image processing.
U.S. National Applications for Multibillion-Dollar Foreign Clients
Managed the filing and prosecution of extensive U.S. National (371) applications for a number of multibillion-dollar foreign clients. Armstrong Teasdale represents clients based in China, Japan, Singapore, the United Kingdom, Germany, Australia and many other countries.
Due Diligence for Multinational Chemical Company
Managed significant due diligence project for multinational chemical company. The project included clearing the client's product through a freedom-to-operate opinion and also identifying any potentially problematic references owned by competitors.
Prepared Invalidity Opinions for Client's New Product Release
Prepared over a dozen invalidity opinions on competitors' patents that presented a potential issue for a global client's release of a new product.
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