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Avoiding Trouble by Designing Around It
Client's Business Objective:
The client, a software developer that creates unique software for modeling dynamic systems, wanted to protect its flagship product. That product, used for three-dimensional modeling and simulation, has been a huge commercial success, particularly in the automotive sector.
The Challenge:
An out-of-state competitor had already sued the client in its home state and in a jurisdiction favorable to plaintiffs. Furthermore, the competitor had a previous verdict giving its technology broad protections. We needed to avoid injunctive relief, and had a narrow window of time to come up with a solution.
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What We Did:
Our legal team took note of the competitor’s concession that earlier versions of our client’s product were non-infringing. We worked with the client to develop a revision to the product that was like earlier versions of the product to avoid a possible injunction.
Results:
We were able to develop a “design around” that retained the essential characteristics of the flagship product without any characteristics that could be construed as infringing. No injunction was issued and the client continued selling its product profitably.
Key Takeaways:
It pays to have a legal defense team that has the business experience and technical background necessary to understand the products and company's goals, as well as the creativity essential to devising business solutions that can design around potential liabilities.
Building a Patent Portfolio for Mechanical Devices
Client's Business Objective:
The client, a manufacturer of mechanical seals used for sealing fluids in a mechanical housing, sought to obtain a series of patents to maintain its market-leading position.
The Challenge:
There are a number of makers of mechanical seals, and due to the numerous patents in this area, issues of patentability are often raised. The client’s groundbreaking design of “split” mechanical seals and follow-on improvements, which allows service people to replace seals or service machines without taking them apart, was particularly coveted and had to be protected.
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What We Did:
Our team did a thorough cost-benefit analysis and an assessment of potential return on investment for various possible patent applications. We visited with the client’s engineers and participated in corporate patent strategy meetings in order to shape a patent prosecution strategy that would limit potential objections and rejections by the U.S. Patent and Trademark Office. Then we managed the process to protect the most important innovations as quickly as possible.
Results:
We developed a patent portfolio that protected the mechanical seal technology from attack. The client also reached a favorable settlement with one competitor that had developed a similar seal.
Key Takeaways:
In order to write patent claims covering key aspects of the invention, patent attorneys need to understand how the products are actually derived from the theoretical innovations. Look for lawyers who know how to communicate with engineers, designers, and executives and who can protect the critical competitive advantages of the products.
Building a Strategic Patent Estate
Client's Business Objective:
The client, a start-up biotech company, licensed technology related to gene therapy from a research university, with the objective of commercializing the technology worldwide.
The Challenge:
The technology was covered by a single patent containing broad generic claims and filed only in the United States. The client desired a worldwide patent estate to protect global commercialization of the technology.
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What We Did:
We strengthened the U.S. patent estate by filing additional patents directed toward specific patentably distinct commercial uses of the technology. These patents were then filed worldwide to establish patent positions protecting the technology.
Results:
Through strategic claim drafting, we were able to achieve overseas protection nearly coextensive with the original U.S. filing while strengthening the U.S. patent position.
Key Takeaways:
An aggressive and creative patent strategy can strengthen a patent estate and compensate for potential weakness in the portfolio.
Identifying Hidden Risks and Remedies in Acquisitions
Client's Business Objective:
The client, a Japan-based company, sought to acquire a Philadelphia company in a $350 million deal. The client needed to identify any hidden risks and obtain a means of compensation or indemnity for such risks.
The Challenge:
The client needed to close the deal within a very tight time frame, and there were literally hundreds of contracts and intellectual property issues associated with the acquisition.
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What We Did:
Our due diligence team worked closely with our patent team for a comprehensive and efficient review. We effectively identified the real and practical risks in light of the client’s business objectives and created likely remedies for those risks while eliminating duplication of effort among lawyers.
Results:
The acquisition agreement was concluded on time, with an indemnification basket reserving proceeds of sale to cover post-closing risks for a reasonable period of time. We also ensured that certain post-closing fixes were possible, such as negotiation with third parties for additional license rights and invention around certain blocking patents. The legal team then made those remedies a reality after closing.
Key Takeaways:
It is important to have a legal team that understands business objectives and intellectual property rights. It is also critical to have experienced lawyers who can quickly identify, isolate, and remedy the problems that inevitably arise during the closing process.
International Patent Protections
Client's Business Objective:
The client, a large pharmaceutical company, sought to build out its patent portfolio protecting an antibody drug with a potential billion-dollar global market value.
The Challenge:
We had discovered patent filings by other companies that could present competing claims related to similar drugs already in use.
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What We Did:
We obtained issuance of expanded patent claims for our client’s drug and worked with our existing network of foreign associates to obtain recognition of these patent rights in more than 100 countries, including those that subscribe to critical Patent Cooperation Treaty terms.
Results:
Through use of our existing network of foreign associates, the client completed its buildout of a comprehensive and complex patent estate protecting the antibody drug throughout the world.
Key Takeaways:
Access to an extensive network of highly qualified foreign associates can expedite the process of establishing a comprehensive global patent estate.
Maintaining a Portfolio to Maximize Value as Acquisition Target
Client's Business Objective:
Our client, a regional producer of network management systems spun off from a larger company, wanted to clean up its patent portfolio in order to maximize the value of the company as an acquisition target.
The Challenge:
The client wanted to capture the attention of particular suitors who wanted to consummate a deal in the near future. The portfolio consisted of more than 100 U.S. and foreign patents, some of which had chain of title issues, some of which were unintentionally abandoned, and some of which were no longer relevant to the company’s business or objectives.
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What We Did:
When we took over the patent portfolio, our team eliminated the ownership issues by curing chain of title problems with the cooperation of third parties. We also cured the abandonments by quickly updating or amending pertinent patent filings. We facilitated the sale or licensing of properties that were no longer tied to the client’s objectives, and we cut costs by abandoning those filings which were not providing return on investment.
Results:
The client cut its patent portfolio costs, increased its patent-related revenues and successfully sold its business for a significant sum, closing the deal and obtaining proceeds of sale in fewer than three years.
Key Takeaways:
Periodically review intellectual property portfolios to ensure it is being properly maintained and is in alignment with the company's strategic objectives. Do not ignore portfolio problems, even problems that have accumulated over time can be addressed with the assistance of experienced counsel who understand IP and transactional work.
Patent Estates and Financing
Client's Business Objective:
The client, a venture capital financing syndicate, wanted to invest in a small biotech discovery company but needed to know that the intellectual property assets of the company were sound and that the company was free to commercialize its technology.
The Challenge:
Due diligence revealed a blocking patent position in the United States and overseas containing a broad scope of patent claims for the contemplated commercial application of the technology.
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What We Did:
We researched and uncovered a prior art publication (published prior to the blocking patent) that would destroy the validity of the patent. We then expanded and amended our client’s global patent estate to secure a superior patent position for the company.
Results:
The blocking patent was licensed under favorable terms, which minimized the investment risk. This, coupled with improvements to the company’s patent estate permitted a multimillion-dollar financing round to proceed without delay.
Key Takeaways:
Emerging companies and their investors can benefit from an early review of patent estates and the securing of freedom to operate opinions that facilitate financing.
Patent Estates and Revenue Streams
Client's Business Objective:
The client, a major Massachusetts medical school, sought to protect its right to future income streams from commercial development of several seminal RNAi discoveries made by its professors.
The Challenge:
RNAi technology, with its potential for beneficial inhibition of gene expression, had rapidly blossomed from the discovery stage to the unfolding of hundreds of potentially patentable commercial uses. The technology could soon be used in the development of anti-viral drugs that will attack many stubborn diseases and cancers.
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What We Did:
We participated with a team of lawyers in a comprehensive assessment of multiple legal strategies for protecting as many RNAi technology opportunities as possible. The team not only provided advice pertinent to the legal actions that would yield optimal return on investment, it also executed the client’s chosen strategies through multiple patent filings and license agreements that matched commercial objectives with patentable claims arising from RNAi discoveries.
Results:
In a very short time, the client succeeded in generating a significant and rapidly expanding revenue stream that is already valued at more than $1 billion.
Key Takeaways:
In order to commercialize an academic discovery quickly and effectively, an institution needs the support of a seasoned legal team that knows how to work collaboratively with groups of scientists, academics, business executives, and other lawyers.
Patent Prosecution for Fuel Cell Technology
Client's Business Objective:
The client, a Japan-based automobile manufacturer, sought U.S. patent protection for its state-of-the-art hydrogen fuel cell technology, which uses oxygen and hydrogen ions to create clean power, with pure water as a waste product.
The Challenge:
The legal team had to work quickly but carefully and thoroughly. Fuel cell technology is still evolving, and there are many competitors in the field working on new fuel cell devices. Furthermore, those seeking to occupy this competitive space have filed many patents, necessitating a careful assessment and planning of all patent filings and claims.
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What We Did:
Our legal team worked closely with the client and filed hundreds of patent applications. Utilizing creative prosecution techniques, we worked closely with Patent and Trademark Office examiners to address their customary questions and objections.
Results:
We successfully prosecuted several hundred patents in a five-year period, securing comprehensive patent protection for the client’s fuel cell technology.
Key Takeaways:
When business objectives require swift action and careful patent positioning, it pays to have a legal team that is experienced in dealing with the U.S. Patent and Trademark Office, has a practical sense of how to manage patent prosecutions quickly and efficiently, and can chart a course for likely success.
Patenting Health Care Management Devices on a Limited Budget
Client's Business Objective:
The client, a maker of indoor positioning systems that chart human traffic flow and locate critical assets that are transported between rooms inside large hospitals, wanted to develop patent protection for its unique inventions.
The Challenge:
The client was going through a funding process that necessarily limited the budget for patent filings, and there was a business need to secure these filings as quickly as possible.
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What We Did:
Our legal team did a cost-benefit analysis on which patent claims would offer the greatest protection and return on investment for the client. Then we pursued those patent claims before the U.S. Patent and Trademark Office. We also devised an alternative fee arrangement that worked within client’s budget.
Results:
The client’s competitive position was secured and the patent work was accomplished within budget. With a strong patent portfolio, the client was able to secure additional rounds of funding.
Key Takeaways:
The ability to practically assess and devise alternative means of achieving patent objectives that are aligned with business objectives can pay dividends.
Patents and Company Acquisitions
Client's Business Objective:
The client, a small biotech company, wanted to expand its patent estate in order to be an attractive acquisition candidate.
The Challenge:
The client’s window of opportunity for a sale was limited, and there had been a lack of time, budget, and priority for maintenance of the patent estate to keep it current with company’s commercial objectives.
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What We Did:
We conducted an extensive IP audit to identify any necessary and desirable additional protection. The client’s existing patents were strengthened with improved and expanded claims. Acceptance of these claims by the Patent and Trademark Office was facilitated by effective advocacy with the support of a team of our attorneys and key scientists during several in-person interviews with patent examiners in Washington.
Results:
In less than one year, the patent estate was strengthened and the company was acquired at a premium valuation of several hundred million dollars.
Key Takeaways:
A periodic IP audit can maximize the value and marketability of a company and its patents. Hiring counsel with the right experience is essential for companies seeking to strengthen and position their patent estates promptly and effectively for acquisition at optimal valuation.
Patents for Green Technologies
Client's Business Objective:
The client, an inventor and his primary investor, sought to protect and commercialize a unique technology that enabled rapid and convenient composting of large quantities of various organic materials blended together.
The Challenge:
The target for commercial partnership was a China-based entity, and the technology was being updated and perfected by our clients as talks were commencing. We had to work with the inventors to quickly file a provisional patent application to protect our client’s rights without stalling talks between the parties.
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What We Did:
Our legal team, which featured professionals with engineering and business backgrounds, worked together with the client, prompting a fine-tuning of the inventive device in a way that not only enhanced the likelihood of patent protection but improved the quality and functioning of the device.
Results:
The client’s device was enhanced in a way that made it more protectable and potentially more profitable and the provisional application was promptly filed. Negotiations ensued between the parties and they quickly reached preliminary agreements on the basic outline of a commercial partnership.
Key Takeaways:
It pays to invest in a legal team that not only has a sense of business urgency, but relevant practical experience as well as intellectual property knowledge.
Quickly Securing Medical Device Patents to Facilitate Funding
Client's Business Objective:
The client, a start-up medical device company, had designed a medical device that works in conjunction with ventilators to stimulate effective expectoration and coughing for patients with various respiratory issues. The company needed to secure a U.S. patent on the device to get its next round of funding.
The Challenge:
The client had been unable to move from patent application to allowance, despite sustained efforts by its previous counsel over several years. Furthermore, the client needed to obtain the patent quickly in order to get its funding.
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What We Did:
We studied the history of actions by the Patent and Trademark Office on similar inventions, and arranged for the examiner to visit in person with the inventor of the device. The inventor provided a demonstration with explanations of the novel, non-obvious nature of the device, and we explained how applicable law supported a patent grant.
Results:
In just eight months we succeeded in procuring a patent, which facilitated our client’s next round of funding and its progress from prototype to product development ready for regulatory approval.
Key Takeaways:
When companies need to obtain a patent allowance quickly, it pays to invest in a personal visit to the U.S. Patent and Trademark Office after careful preparation and study of legal precedents.
Representing David v. Goliath in Out-licening Commercial Partnerships
Client's Business Objective:
The client, an individual inventor who developed magnetic resonance imaging (MRI) technology, sought to find a commercial partner that could develop and sell machines using the technology.
The Challenge:
The best prospective licensor, a major manufacturer, needed to move quickly in order to successfully commercialize this technology. Furthermore, the licensor argued that the inventor’s discovery would be a relatively minor part of any next-generation MRI production.
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What We Did:
Our legal team quickly documented the uniqueness and utility of the inventor’s contribution, demonstrating that significant royalties were typical for similar inventions. We also used the licensor’s need to move quickly to our advantage, persuading the inventor to take a firm stand in negotiations while politely advancing ideas for reaching the objectives of both parties.
Results:
In a matter of weeks, our client obtained an out-license agreement with a successful and credible manufacturer that was potentially worth several million dollars (much more than the licensor initially offered).
Key Takeaways:
When dealing with a large and sophisticated party on the other side of the table, it pays to have experienced lawyers who understand the thought processes and needs of major institutions.
Securing Patent Protections for a Medical Device
Client's Business Objective:
The client, which had invented a handheld laser device that noninvasively reduces and eliminates subcutaneous fat deposits associated with cellulite, sought to develop a patent portfolio protecting this product.
The Challenge:
It was necessary to conduct a landscape review of competitors’ positions and carve out a patent position for a new kind of product. This particular area was prone to litigation, and the start-up client could not afford a large patent prosecution or litigation budget.
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What We Did:
Our legal team, which had conducted due diligence in connection with client financing, performed a critical but measured analysis of competitive portfolios and identified potential land mines in the patent process. We also worked closely with the client’s design team to make modifications to the design, enabling the drafting of patentable claims. In later development of the product, as the client looked to additional rounds of venture financing, we assisted the design team in executing a number of design modifications that improved the product’s operation and further protected it from competitive attacks.
Results:
Within a relatively short time, the client secured patent coverage for the product and began distributing it to health spas and other customers, receiving accolades for the product’s performance and results.
Key Takeaways:
When counsel work closely with designers and engineers, it can help in expediting the patent application process and minimizing bumps along the way. Furthermore, in a crowded technology field, it is extremely valuable to investigate the patent landscape early in the design process, before forging ahead with a product that cannot be protected with patents and may be in danger of infringing competitor rights.
Securing Patents Involving Devices and Algorithms
Client's Business Objective:
The client, an international manufacturer of medical imaging devices for in utero observations of tissue abnormalities, sought to build out its international patent portfolio with U.S. patent protections.
The Challenge:
The client’s next round of funding was contingent on acquisition of U.S. patents, and there was a narrow window of opportunity to obtain the funding. Furthermore, the law had recently changed making patent procurement more difficult.
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What We Did:
Our legal team brought the inventor and a member of the client's board of directors to the Patent and Trademark Office for a personal explanation about the development of the device. We demonstrated how the inventor combined unique algorithms with imaging technologies to develop a device for predicting which changes in cellular tissue were likely to be cancerous or pre-cancerous. Our team also produced extensive clinical data and peer-reviewed publications to overcome new and higher hurdles to patent allowance.
Results:
The client received a notice of patent allowance within six months, paving the way for another round of funding and expansion into U.S. markets.
Key Takeaways:
Work with patent counsel to carefully study of legal precedents and prepare for meetings with Patent and Trademark Office examiners.
