Our client started with a potentially dominant set of broad patent applications. They faced a competitor who filed over 30 narrower claims in an effort to push theirs through the PTO more quickly and establish market dominance. We developed an aggressive strategy using interference rules and meeting with PTO executives to consolidate the examiners, who were looking at all patents involved. There was an abrupt halt of patents issued to the competitor. Our client’s claims and IP position prevailed.
A start-up biotechnology client needed to convert a self-written provisional application into full utility filings in the US and abroad. Our team of biotech, chemistry, and materials experts worked with the client to craft a comprehensive application suitable for filing in all geographies. This application serves as the foundation of the client’s business plan. The client has successfully presented its IP strategy to investors and potential business partners.
A semiconductor client was at risk because its portfolio was small and operating in a competitive market with aggressive companies. We drafted a patent policy, educated business and technical personnel on patent issues, and helped the client develop a significant patent portfolio. Our client has been able to reach cross-licensing deals with competitors and stay out of litigation.
A handful of high-ranking employees left our client, started a competing explosives detection company, and filed patents they invented while employed by our client. We were required to seek recourse through the PTO, where we filed continuations to prove the client owned and showed patentability of claims the competitor contended were not patentable. The efforts forced a multi-million dollar settlement in favor of our client, fully resolving all issues between the parties.
A new client thought it had a dominant IP position based on patents filed years earlier. We were asked to do diligence and a freedom-to-operate opinion respecting a lead product. We uncovered a series of prior art documents that would have undermined the client’s position in the eyes of an investor. The client bought the competitor’s IP, took a new position in-line with the discovered prior art and yielded a strong valuation and investment.
Our client worked in a competitive industry with high potential for infringement and litigation threats from a particular competitor. We interpreted the scope of the competitor's patent claims and worked to change the design of our client's product to avoid infringement. We also discovered they owned a European patent with broad claims. We successfully opposed the patent and the competitor was left with much narrower claims that posed no infringement risk to our client.
An individual inventor developed a prototype carousel for kitchen storage containers and needed rock-solid IP protection to approach infomercial promoters. We obtained patents broad enough to cover the product and future products or extensions. We assisted in negotiations in an industry known for copycat products. Our client’s product is one of the most successful infomercial products in history. Over six million units were sold in the first six months.
Our client, a biotechnology company, had a case stuck in suspension at the USPTO for many years due to a potential interference with a competitor. We developed a prosecution strategy that moved the case out of suspension, avoided an interference, and obtained a patent that dominated the competitor. Our client is now moving along the development pipeline with technology, and a secure commercialization strategy.
A technology company was being sold to a global printing inks and coatings company. They needed to prepare all the IP diligence reports and organize the IP portfolio to best position the business. Having prepared and prosecuted their IP, we were in a unique position to comment on it and facilitated transfer of the portfolio. Our client sold the portfolio and business for the asking price and the manufacturing company retained continuity with retaining us.
Our client owned patented inspection equipment which they sought to commercialize in a highly competitive market, and they needed to ensure clearance. We discovered an earlier patent owned by their top competitor that potentially covered our client's proposed product. The competitor was in litigation with another company over the same patent. The client successfully avoided infringement of any competitors and earned over $500K in sales that year.
