Experience

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 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.

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.

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.

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.

Contact Us
  • Worldwide
  • Boston, MA
  • Denver, CO
  • Edwardsville, IL
  • Jefferson City, MO
  • Kansas City, MO
  • Las Vegas, NV
  • New York, NY
  • Philadelphia, PA
  • Princeton, NJ
  • Salt Lake City, UT
  • St. Louis, MO
Worldwide
abstract image of world map
Boston, MA
225 Franklin Street
26th Floor
Boston, MA 02110
Google Maps
Boston, Massachusetts
Denver, CO
4643 S. Ulster St.
Suite 800
Denver, CO 80237
Google Maps
Denver, Colorado
Edwardsville, IL
115 N. Second St.
Edwardsville, IL 62025
Google Maps
Edwardsville, Illinois
Jefferson City, MO
3405 W. Truman Boulevard
Suite 210
Jefferson City, MO 65109
Google Maps
Jefferson City, Missouri
Kansas City, MO
2345 Grand Blvd.
Suite 1500
Kansas City, MO 64108
Google Maps
Kansas City, Missouri
Las Vegas, NV
3770 Howard Hughes Parkway
Suite 200
Las Vegas, NV 89169
Google Maps
Las Vegas, Nevada
New York, NY
919 Third Ave., 37th Floor
New York, NY 10022
Google Maps
New York City
Philadelphia, PA
2005 Market Street
29th Floor, One Commerce Square
Philadelphia, PA 19103
Google Maps
Philadelphia, Pennsylvania
Princeton, NJ
100 Overlook Center
Second Floor
Princeton, NJ 08540
Google Maps
Princeton, New Jersey
Salt Lake City, UT
257 East 200 South
Suite 350
Salt Lake City, UT 84111
Google Maps
Salt Lake City, Utah
St. Louis, MO
7700 Forsyth Blvd.
Suite 1800
St. Louis, MO 63105
Google Maps
St. Louis, Missouri