Drafted a comprehensive trade secret policy for a client in the energy sector. Compiled a trade secret inventory reflecting the sensitivity/value of the trade secrets along with other key tracking information. Counseled client on patent vs. trade secret protection for individual secrets and inventions.
For a Fortune 500 client which had identified a critical need to join a licensing pool relating to a complex wireless communication standard, we searched through the client’s extensive patent portfolio to find potentially relevant patents and conducted infringement analyses to determine whether each patent read on the standard, resulting in our client successfully joining the licensing pool and receiving steady stream of royalty payments.
After evaluating potential design tweaks to circumvent a competitor’s patent, we were able to assist a client in identifying and implementing a design-around in under two weeks.
For a client who received a demand for nine-figure payment from a patentee holding over 100 patents relating to wireless technology, we were able to quickly process the portfolio to identify potential threats and opportunities for the client, using that knowledge to negotiate a resolution with the patentee that was satisfactory to our client.
We defended a diligence conducted by multiple potential investors as part of a multi-million dollar funding round for a client.
Following the acquisition of one client by a large, established company in its industry, we educated the acquiring company on the value of our client’s portfolios as well as the prior art identified by the patent examiner, thereby assisting the acquirer in pivoting the portfolio to maintain business value.
For a client acquiring thousands of patents and applications, we rapidly deconstructed the portfolio to understand the status and technical value of each patent and application, ensuring the portfolio preserved all IP rights.
We assisted a client in developing and implementing an industry wide licensing program, which included litigations against two competitors, both of whom ultimately settled on terms more favorable to our client than the standard terms initially offered.
For a major consumer products company seeking to enter a competitor’s market, we conducted a study to identify blocking patents and then guided the company through a design process so the resulting product would stand up to litigation attacks.
For major medical device client looking to purchase a particular technology, we led the IP diligence on assessing potential acquisition targets, simultaneously guiding client through an internal design process to develop similar patentable technology.
We worked with a manufacturer of consumer electronic devices to extend breadth of coverage of its earlier patents to cover de facto industry communication standard.
We helped an early-stage startup company build a worldwide patent portfolio, contributing to its valuation of $500M.
We provide worldwide patent prosecution and strategic IP counseling work to a biomedical software company using AI-based molecular and immune profiling to improve the standard of care in healthcare. The company’s IP portfolio recently helped them reach a valuation of over $1 billion.
We handle the patent portfolio of one of the largest e-commerce retailers of home goods in the US that spans various technologies including computer vision, computational photography, augmented and virtual reality, 3D visualization and other technologies that facilitate and improve consumers’ shopping experiences.
For one of the world’s largest audio streaming and media services, we perform competitive patent landscape analyses helping the company strategically analyze and negotiate matters when approached by other companies and patent holders, including analyzing the technical and legal strength of those patents.
We handled patent prosecution and patent landscape analyses for a machine learning start-up company that was acquired by a multinational technology conglomerate for between $500M and $1B.
We manage several patent portfolios in the biotech, data processing, data science and machine learning space for a clinical stage biotechnology company pioneering messenger RNA (mRNA) therapeutics. We also conducted IP due diligence work that helped take the company public.
Drafted a comprehensive trade secret policy for a client developing analytical instruments. Tailored level of measures employed to protect the trade secrets based on company culture.
Counseled a healthcare company on the risks of a proposal by engineers to use generative AI to process internal data. Assessed policies of various generative AI solutions as part of risk assessment.
Performed IP diligence for a potential acquisition of a target company. Identified previously unknown allegations of past trade secret misappropriation against a key employee who had joined the target company from a competitor. Counseled the client on risks of proceeding with the acquisition.
Defended an explosive detection supplies company against claims for misappropriation of trade secrets and breach of confidentiality obligations brought by competitor. Litigated the case efficiently and secured a favorable settlement at the close of fact discovery that did not disrupt the client’s business.
Successfully defended the world’s largest advertising company and its subsidiaries in a suit involving three patents, 24 trade secrets, four separate contracts, fiduciary duty claims, and a $120 million damages claim. Eliminated all claims through summary judgment and in limine motions.
Successfully defended a major patent and trade secret case brought against Burton. Obtained summary judgment that four of the five asserted patents were invalid, and forced plaintiff to withdraw seven of the eight trade secrets underlying his trade secret allegation. Following these results, the case settled on very favorable terms.
Won the largest trade secrets jury verdict in Massachusetts history, in a case relating to nuclear power reactor technology. We successfully defended this verdict before the First Circuit Court of Appeals.
Won a $23.7 million jury verdict against a national credit reporting company for misuse of confidential computerized customer information.
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