Media Mentions
2010
Yar Chaikovsky commented forLaw360 about the uncertain prospects for patent reform legislation that has passed the House of Representatives and is now before the Senate. Mr. Chaikovsky said he was hopeful that the legislation, the first major reform in patent law in 55 years, would move forward, but added a note of caution: “It’s nice that the bill came out of the Senate Judiciary Committee, but that’s still a long way from it pushing through different constituencies and interests, let alone meshing with the House bill.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
Jeremy Elman was mentioned in the March 2 Broward Daily Business Review for having received the 2009 Wavemaker Award from the Surfrider Foundation board of directors. The Award recognizes Mr. Elman’s volunteer support for the organization and its mission of protecting oceans, waves and beaches.
Jeremy T. Elman, Intellectual Property, Pro Bono & Community Service
Carey Jordan and Iona Kaiser were mentioned by Texas Lawyer on March 1 as having joined McDermott’s Houston office as partners. The publication also noted that Andrew Metrailer and Melody Wirz had joined the Firm as associates.
Carey C. Jordan, Iona Kaiser, Andrew Metrailer, Melody Wirz, Energy and Derivatives Markets, Intellectual Property
David Kays was quoted in The Recorder’s February 16 profile of John Bates, Jr., a noted alternative dispute resolution practitioner. Mr. Kays said he has mediated 10 to 15 cases with Bates, and noted: “We’ve had a 100 percent success rate. I’ve never not settled a case with John.”
David A. Kays, Intellectual Property
John Lee was mentioned in a February 8 item in The Recorder concerning his return to McDermott as a partner in intellectual property litigation. He previously had been with the Firm from 2004 to 2008, and rejoined after practicing with another Firm.
John A. Lee, Intellectual Property, IP Litigation
Yar Chaikovsky was mentioned in a February 4 story on major lateral moves by attorneys in 2009, as carried by the Broward Daily Business Review. Mr. Chaikofsky, one of the first patent lawyers at Yahoo!, left another major law firm to join McDermott late in the year.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
Yar Chaikovsky was mentioned in a February 2 Law.com story about law firm lateral partner moves in 2009. The story noted that Mr. Chaikovsky was one of the first patent lawyers at Yahoo! Inc. and called him a “high profile” partner at his former firm before he joined McDermott’s Silicon Valley office late in 2009.
Yar R. Chaikovsky, Intellectual Property
John Lee was quoted in a January 29 Law360 story about his return to McDermott as a partner in the Silicon Valley office, where he had worked for four years as an associate. Mr. Lee joined McDermott shortly after Yar Chaikovsky came to the Firm. “The Firm’s robust, internationally ranked IP practice was always a strong draw for me,” Mr. Lee said. “Yar is an outstanding lawyer and I am delighted to be able to continue to work with him, as well as the talented attorneys across the firm.” Both lawyers focus on patent litigation, with Mr. Lee working mostly in the pharmaceutical and technology industries.”
Yar R. Chaikovsky, John A. Lee, Intellectual Property, IP Litigation
Sarah Columbia told Law360 on January 29 that she sees changes in the way that companies are approaching intellectual property litigation. Given the bad economy in 2009, Ms. Columbia said, “What we were seeing was companies more inclined to resolve IP litigation when it involved one commercial company suing another. … [W]aging a huge patent fight costing millions of dollars just didn’t make sense.” However, she added, when companies were sued by patent-holding firms, they often chose not to back down, a trend that (along with more lawsuits between competitors) she expects to continue in 2010. “Companies that are being chronically sued are starting to say, ‘Let’s not just pay off patent holders in settlements. Let’s make these guys work to prove their case,’” she declared.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
Leigh Martinson commented for The National Law Journal (January 28) concerning a small company’s federal court victory against the U.S. Patent & Trademark Office. The win reinstated the company’s patent for safety protection equipment seven years after the PTO ruled the patent had expired after the company’s lawyer at the time missed paying a maintenance fee on the patent application. Mr. Martinson (who was not directly involved in the case) said that “[i]t’s a high hurdle” for a plaintiff to win reinstatement by proving that the PTO acted in an arbitrary and capricious manner, and elaborated: “It’s something that is typically not easy to overcome. But I think in this case, when you look at the record, I’m not surprised that they won.”
Leigh J. Martinson, Intellectual Property, IP Litigation
Carey Jordan and other members of her team of legal and technology professionals (partner Iona Kaiser, associates Andrew Metrailer and Melody Wirz and scientific adviser Kristen Mittelman) were all mentioned in stories by North American Windpower (January 14) and Texas Lawyer (January 18) about their move to McDermott’s Houston office. They will focus on intellectual property portfolio management and transactions in the cleantech, energy and chemical industries.
Carey C. Jordan, Iona Kaiser, Andrew Metrailer, Kristen Mittelman Ph.D., Melody Wirz, Energy and Derivatives Markets, Intellectual Property
Jean Marie Pechette was cited by Chicago Lawyer on January 6 for her move to McDermott from Kelley Drye, as a partner practicing in the areas of information technology and intellectual property.
Jean Marie R. Pechette, Electronic Data Management, Privacy & Discovery, Intellectual Property
Blair Jacobs spoke extensively to Law360 on January 4 regarding intellectual property litigation trends. He cited a perceived decrease in the importance of copyright litigation, saying that "in-house counsel was looking at prioritization of litigation needs and where the company should place its time and money during the year, and...copyright litigation in 2009 was viewed as a lower priority than patent and trademark litigation." Mr. Jacobs noted that in the latter cases, "Damages are helpful, but gathering market space and protecting market power are important as well." He added that trademark infringement suits "are more likely to get a settlement fairly quickly than patent ones...[I]f you have a good claim, you likely will be able to stop the infringement." Looking to 2010, Mr. Jacobs predicted "a fairly robust year for IP litigation, [n]ow that in-house and outside counsel have agreements and strategy planning in place."
Blair M. Jacobs, Intellectual Property, IP Litigation
2009
Mary Boyle and Eugene Litvinoff were mentioned by The Recorder on December 14 for their promotion to partner in McDermott’s Silicon Valley office. Ms. Boyle focuses on intellectual property litigation, Mr. Litvinoff on white collar defense and internal investigations.
Mary Boyle Ph.D., Eugene S. Litvinoff, Intellectual Property, Trial, White-Collar Criminal Defense
Michael O’Neill was quoted in a December 7ChannelWeb story that discussed the role that video gamers have played in demanding faster personal computers and better graphics. Such improvements have benefited all PC users, Mr. O’Neil stated. “Video games are now widely used in all walks of life as educational and training tools,” he observed. “Schools use video games to teach children math, spelling, grammar and geography. The United States military uses video games extensively to train soldiers and pilots. Computer graphics technology is used in the medical field to enhance MRI scans.” The article noted that Mr. O’Neil is co-head of the Video Game Technology section in McDermott’s IP Department.
Michael R. O'Neill, Computer Hardware/Networking, Intellectual Property, Software & IT Services
Michael Keller was profiled by Law360 and mentioned in AmLaw Daily’s “The Churn” (both December 4), as he joined McDermott’s Miami office to become a partner in the Firm’s intellectual property practice. Mr. Keller has more than 17 years of experience in patent prosecution, trademark work, counseling and licensing in the areas of therapeutic, diagnostic and medical device products.
Michael J. Keller, Intellectual Property
Joanne Ludovici-Lint was quoted in a November 30 Law360 examination of how social networking web sites are changing trademark enforcement. Although the risk of trademark infringement on such sites is great, Ms. Ludovici-Lint advises clients to be cautious in pursuing infringers. “Trademark owners have to be more careful how they go after social media users,” she said. “How a company responds can get out so quickly and will be broadcast to millions.” If a site user is just misspelling a brand, not misusing or counterfeiting it, a simple letter pointing out the error often is the best course. “I tell clients to only write what they want to see come back in public,” Ms. Ludovici-Lint said. “You don’t want to alienate your core demographic.”
Joanne Ludovici-Lint, e-Business, e-Business - IP, Intellectual Property
Terrence McMahon was quoted in The Recorder on November 23 concerning a U.S. Magistrate Judge’s reversal of his own preliminary injunction, which initially went against his client in a patent infringement case. The judge said that after more briefing by both sides he decided against issuing the injunction, leading Mr. McMahon to comment: “We said we were going to pursue this vigorously and we did. We are extremely pleased.”
Terrence P. McMahon, Intellectual Property, IP Litigation
Louis DelJuidice and Paul Zagar were quoted in a November 17 Law360 story that covered their move to the Intellectual Property, Media and Technology group of McDermott's New York City office as partners in the Firm. Both had previously practiced with an IP boutique firm, Mr. DelJuidice in the high-tech sector and Mr. Zagar in biotechnology, and both said they were drawn to the full range of services that McDermott offered to their clients. Mr. DelJuidice cited "a deeper bench of people to draw from … [and] the depth of services we can provide," while Mr. Zagar looked forward to "working with not only the cross-border IP team but also the life sciences and controversy teams to continue to grow our practices" at the Firm. The story also noted that associate Shilpa Patel and scientific advisor Nicole Sullivan had also joined McDermott, both from the same firm where Messrs. DelJuidice and Zagar had practiced.
Louis J. DelJuidice, Shilpa V. Patel Ph.D., Nicole R. Sullivan Ph.D., Paul M. Zagar M.D., Intellectual Property
Joseph Robinson and Robert Schaffer were featured in a Biotech Business Week story on November 2 that covered their move to McDermott’s New York City office as partners. Both lawyers focus on patent prosecution, patent litigation and transaction work predominantly within the biotechnology and pharmaceutical industries. Similar stories also appeared in Drug Week, Biotech Week and Pharma Business Week.
Joseph R. Robinson, Robert Schaffer, Intellectual Property
Ralf Weisser was cited in Financial Times Deutschland (FTD.de) on October 31 concerning the infringement of copyrights through the internet. Collecting societies and authorities agreed on the importance of a collective rights management. Regarding this Mr. Weisser said, “Otherwise individual rights of several owners would get lost.“
Ralf Weisser, Germany, Intellectual Property
Joseph Robinson and Robert Schaffer were featured in an October 21 Law360 story about their joining McDermott from IP boutique firm Darby & Darby. Both new partners are respected patent litigators with 20 years of experience in the New York market. In addition, Mr. Robinson has strong international experience, while Mr. Shaffer handles patent and trademark portfolios for major corporate and technology clients. Sarah Columbia, vice chair of the Firm’s IP group, called the addition of the two lawyers “a brilliant catch,” and expects them to expand their McDermott work beyond just IP.
Sarah Chapin Columbia, Joseph R. Robinson, Robert Schaffer, Intellectual Property
Eric Hagen was pictured in The Alliance for Children’s Rights e-newsletter (Summer 2009), recognizing his pro bono participation in the Summer Adoption Day program of The Alliance for Children’s Rights.
Eric W. Hagen, Intellectual Property, Pro Bono & Community Service
Leigh Martinson was quoted in a September 29 Law.com examination of the increasing amount of time required by the Patent & Trademark Office Appeals Board to resolve patent filing appeals. Mr. Martinson cited the problems that such long timeframes can cause, saying that while waiting for an appeal to be resolved, “You could get a change in the law that affects the arguments that you’ve made. You could get a new ground of rejection that you hadn’t faced before.” He added that such developments could send the case back to the examiner, with the result that a possible new rejection would mean another appeal. Mr. Martinson provided similar comments to the Broward Daily Business Review on September 30.
Leigh J. Martinson, Intellectual Property
Paul Devinsky and Robert Walters were featured in Law360 (September 15) examining the unique procedures for U.S. ITC cases. Compared to patent litigation in U.S. district courts, Mr. Walters said, ITC proceedings move much quicker: "There's an extremely short discovery period, and you get to the trial very quickly. None of the [district courts] will get you to trial that quickly." Mr. Devinsky added that ITC complaints must be much more detailed than those filed in federal court. "A very well prepared team for a district court case would be a very poorly prepared team for an ITC case," he observed," adding that if there is not sufficient documentation when seeking to bar a class of product imports, "your chance of getting a general exclusion order diminishes to near zero." In short, Mr. Devinsky said, lawyers who approach ITC cases like district court ones "are going to find themselves in some difficult spots."
Paul Devinsky, Robert J. Walters, Intellectual Property, International Trade Commission, IP Litigation
Jennifer Chen was profiled in a September 15 Law360 story about her return to McDermott after five years as patent and licensing counsel in Tokyo for electronics giant Hitachi. Ms. Chen, who had been in the Washington, DC office and is now a partner in the Firm’s Silicon Valley office, will focus on patent licensing and asset management matters. Noting that “McDermott has a global practice,” she stated that “I believe my in-house experience, which involved working with regional and multinational technology companies in Asia, the United States and the European Union, fits McDermott’s current and future plans.”
Jennifer C. Chen, Intellectual Property
Scott Clark discussed for the Houston Business Journal (September 7) the intellectual property impact that the push for renewable energy sources will have on energy technology. He stated that “because renewable energy from wind, solar and tidal energy is intermittent, it poses reliability challenges to grid operators” who will face “a unique set of intellectual property challenges … as new technologies are developed to integrate renewable energy generation and transmission.” Mr. Clark added that renewable energy projects also “will need to evaluate potential patent infringement risks, which may be resolved through appropriate licensing agreements.”
Scott W. Clark, Intellectual Property, Life Sciences - IP
Robert Zelnick is quoted in the September 1 issue of Inside Counsel, addressing how social media create risks for trademark holders because there is little jurisprudence on whether using another’s trademark in a social media subdomain can be infringing. Mr. Zelnick notes that there are clear rules and legal procedures for resolving cybersquatting and other domain name disputes on the Internet, but the law has not yet caught up to social media. “This is somewhat uncharted territory,” he stated.
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
Joel Grosberg was quoted by the Financial Times on August 29 concerning Apple Computer’s online App Store to sell approved programs for its iPhone. Mr. Grosberg, a former Federal Trade Commission lawyer, stated that it would be difficult to make a case in U.S. courts that the App Store gives Apple a monopoly because the company has a small share of the market for Internet-capable phones. “You would have to establish that the iPhone is some sort of essential utility,” he noted, “but the Supreme Court has cut down on that theory.”
Joel R. Grosberg, Antitrust & Competition, Intellectual Property
Peter Townshend spoke to the Silicon Valley/San Jose Business Journal about his use of the Twitter social networking tool. “It’s a fantastic way to keep up with clients on a personal level – to know what’s going on in their lives,” he said. Mr. Townshend advises private equity investors and emerging technology companies. The story notes that neither McDermott nor other major law firms have fashioned specific guidance on the use of social media.
Peter N. Townshend, Corporate, e-Business, Intellectual Property
Mark Itri spoke to American Medical News (Amednews.com) on August 24 about the problems that using open-source software in health IT systems could pose for medical professionals. Because such software is often written anonymously, Mr. Itri said, there is “no one for you to hold liable at the end of the day” if there are such problems as a “back door” that releases patient data back to the authors, or a system that is not HIPAA-compliant. Although the attraction of open-source is that it is essentially cost-free, Mr. Itri added that hiring someone to solve the problems could ultimately cost more than buying a proprietary system from a company that could be held accountable to solve problems if necessary.
Mark J. Itri, Intellectual Property
Cheng Tan was quoted by Law360 on August 7 concerning a ruling by the European Court of Justice that a beer collective’s trademark did not impede another beer’s protected geographic indication (PGI) rights. The collective, Bayerischer Brauerbund, won approval for its protected use of “Bavaria” under a PGI filing approved in 2001, despite the fact that plaintiff Bavaria NV has sold beer under the “Bavaria” name since 1925. Mr. Tan said other companies should not repeat Bavaria NV’s mistake and “need to monitor what’s happening out there. Bavaria NV did not submit objections to the PGI application, but after this PGI was granted to Bayerischer Brauerbund they felt its full force.”
Cheng Foong Tan, Intellectual Property, Trademark/Brand Protection & Enforcement
Leigh Martinson commented for Law.com (July 6) on the decrease in patent allowance rates and resulting sharp increase in patent appeals at the U.S. Patent & Trademark Office. Mr. Martinson noted a growing reluctance by patent examiners to suggest changes that address concerns about a patent application. “You stopped getting that negotiating feeling with examiners,” he said. “The only way you can get past them is to go to the [appeals] board.” Mr. Martinson added that appeals are more expensive than continuing an application: “It becomes a much more involved response. You’ve really got to point out everything the examiner has done incorrectly.”
Leigh J. Martinson, Intellectual Property, IP Litigation
Sarah Chapin Columbia was quoted in The National Law Journal on June 15, for a story about an increase in motions to transfer patent infringement cases out of the plaintiff-friendly Eastern District of Texas in the wake of two decisions by the U.S. Court of Appeals for the Federal Circuit that chastised the Texas federal court for not transferring cases. Ms. Columbia noted that, before the Federal Circuit rulings, she often advised clients that fighting for a transfer out of the district would not be money well spent. Now she is advising clients to try transferring when they can make a case that parties or evidence are concentrated outside of the Eastern District of Texas. "I suspect we're all going to be thinking of that possibility [more often]," Ms. Columbia said. The NLJ story also appeared in Law.com and Corporate Legal Times.
Sarah Chapin Columbia, Intellectual Property, Patent Prosecution
Dennis Duchene is quoted in Law360 concerning his return to McDermott as an intellectual property partner in the San Diego office, after serving as vice president and senior intellectual property counsel at a wireless communication company. "I enjoyed being in-house for a while," he said, "but I really enjoy being in the law firm environment more, and working with a variety of clients. Not to mention that the team here and nationwide, the IP team, is just outstanding." Mr. Duchene had originally joined the Firm in 2004.
Dennis A. Duchene, Intellectual Property
William Gaede and Paul Devinsky were both quoted in Law360 on June 1 concerning the U.S. Supreme Court's decision to hear an appeal of In re: Bilski, in which the Federal Circuit Court limited business method patentability. "The position the Supreme Court will have to address," Mr. Gaede said, "is whether the test for patentability of processes or methods defined by the Federal Circuit is too rigid a reading of Supreme Court precedent that could result in stifling innovation in emerging industries." Mr. Devinsky noted that a key question was whether the Court would let the Federal Circuit "down easy" or deliver a strong reversal, adding: "The patent world will soon learn just how high a threshold Section 101 presents to patent-eligible subject matter."
Paul Devinsky, William Gaede, Intellectual Property, IP Litigation, Patent Prosecution
Paul Devinsky commented favorably for Law360 on May concerning the possible nomination of Q. Todd Dickinson, executive director of the American Intellectual Property Law Association, to head the U.S. Patent & Trademark Office. "Dickinson is well equipped to return us to a time when people felt less combative, when customers and members of the patent office did not always feel so much at war," Mr. Devinsky said. He added that the new director will face substantial challenges in implementing policy changes being considered by Congress: "The USPTO does not have enough staff to handle them. This is going to be a big resource allocation issue."
Paul Devinsky, Intellectual Property
Scott Clark was cited in a May 17 Houston Chronicle story about the economic conditions in the Houston legal services market. Mr. Clark said that patent law practices are suffering, but that his own practice stayed health enough to prompt McDermott to hire him away from his previous firm.
Scott W. Clark, Intellectual Property
John Hankins commented on the U.S. Patent & Trademark Office (PTO) "hoteling" program, which allows nearly a quarter of its patent examiners to work from home, for Law360 on May 12. Mr. Hankins noted that the program's goals of improving examiner morale, increasing retention and reducing PTO costs can benefit the patent applicant community, but such problems as securing in-person interviews with examiners, and ensuring that junior examiners remain in the PTO enough to get experience, still need to be addressed. And, he added, still more can be done to reduce PTO filing backlogs. "Examiners should provide applicants with first office actions that give good hints on what is patentable and be more receptive to interviews. They also should be more willing to work as a partnership with applicants to allow a patent that is valid to be granted."
John A. Hankins, Intellectual Property
David Beckwith discussed the recession's effect on patent filings and litigation for The Daily Transcript "Law Week" on April 28. He noted that cost concerns have "led many companies to be more selective in pursuing patent protection for their core technologies, and [to] be more discriminating in the jurisdictions where patent protection is sought." Mr. Beckwith added that companies are also being more selective in pursuing infringement litigation, instead being "more willing to entertain licensing arrangements, so as to avoid the financial statement impact of the significant attorney's fees typically required to pursue a patent infringement lawsuit."
David M. Beckwith, Intellectual Property, Trademark/Brand Protection & Enforcement
Scott Clark was called "a key hire" and "a considerable" gain for McDermott's Houston office in an April 27 Law360 story stating that he has joined the office as an intellectual property partner. Mr. Clark, who joined the Firm from Howrey, said that "McDermott offered me a great opportunity to come in at a very exciting time, when the firm is a couple of years into developing an outstanding office in Houston." He added that McDermott's "highly desirable, worldwide IP scope and stellar rankings within the industry will launch opportunities for me and my practice."
Scott W. Clark, Intellectual Property
Mark Itri noted on April 24 for Law360 that unanticipated problems can arise for companies that use open source software. One example is if company management is unaware that software engineers have attempted to meet development deadlines by plugging open source programs and applications into larger proprietary products without proper licensing. The result could be violation of a license and copyright infringement. "Although open source software is free to use," Mr. Itri said, "it will come at a price if a company has to remove it. If a company has violated an open source agreement, it may be stopped from using its whole program or may have to sell its program for free." He added that companies "are not policing [open source] use as well as they can, and are not thinking out the consequences of their use to the furthest extent."
Mark J. Itri, Intellectual Property, Licensing
William Gaede was quoted in a detailed BNA Life Sciences Law and Industry March 27 report on the impact that bills introduced in Congress to "reform" the patent law system could have on life science/medical device companies. He focused specifically on the reasonable royalty measure of damage provisions for infringement in the pending S. 515, saying that they "put a level of rigidity into the analysis that ultimately may fail to capture the value of patent contributions to the overall value of infringing product or process." He noted that a patented composition or process "may be a small component of a product, but without that composition or process the product may not be operable, have sufficient value, or even be able to be produced," and that by not giving them due weight S. 515 may “potentially encourage infringement."
William Gaede, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
William Gaede was quoted in the March 27 BNA Life Sciences Law and Industry regarding the Federal Circuit Court of Appeals decision in Tafas v. Doll. The decision upheld several new Patent & Trademark Office rules intended to limit the number of an applicant's requests for continued examinations and the number of independent claims. Mr. Gaede observed that Tafas struck down Rule 78, which limited continuations to two, but upheld Rule 75, which limits independent claims and total claims to five and 25 respectively. "The limits on the number of claims and the practical effect that subject matter will have to be pursued in continuations to obtain comprehensive coverage will delay the ability of an entity to obtain comprehensive coverage," he said, and because of that delay "a cloud could be put on the financing efforts" to monetize or license patents, since investors cannot be confident a patent will be granted.
William Gaede, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP, Life Sciences - Medical Device & Technology
Astrid Spain told Law 360 on March 27 that the Federal Circuit's Tafas v. Doll decision is a shock to everybody in the Patent Office customer community. "Practitioners consider these rules drastically altering to their practice of obtaining thorough patent coverage for their clients' technology," she stated. The court decision held that the rules were merely procedural and thus within PTO authority, but Ms. Spain asked, "If these rules are procedural, what else can the patent office do? How much more drastic do they have to be so that they are substantive?" She added that they create delays that "could be a huge problem for a computer company, because of how important it is to get protection for its technology fast out of the gate."
Astrid R. Spain, Intellectual Property, IP Litigation, Patent Prosecution
Astrid Spain was quoted in a March 10 Law360 story that discussed congressional hearings on the latest version of a bill to overhaul the U.S. patent system. Ms. Spain noted that reform must be approached in light of key decisions by the U.S. Supreme Court and the Federal Circuit Court of Appeals, which have made it much more difficult to secure as well as to defend patent rights. As she stated, "Even ardent supporters of the reforms have to admit that the proposed changes must be re-evaluated against the backdrop of a drastically different economic and legal landscape than the one in which the reforms were initially contemplated."
Astrid R. Spain, Intellectual Property, IP Litigation, Patent Prosecution
Sarah Columbia was interviewed in the February 6 issue of Mass High Tech in an article regarding what questions entrepreneurs should ask their lawyers. Ms. Columbia noted that, "The first question I am typically asked by the smart entrepreneur is: 'How can you grow with us?' This is code for several different questions. Can you help us as we get started with limited resources (i.e. can you work with us to limit our expenses in the early days)? Can you grow with us as we move along our business plan?" She added that, "It is not easy to find a legal team that will work with you in the early days yet has the depth and expertise to grow with you as you realize your goals and objectives. But it is essential to find a legal team that has exactly this fit."
Sarah Chapin Columbia, Intellectual Property
Sarah Columbia was quoted in Law360's 2009 Litigation Almanac in an article regarding patent trends. Ms. Columbia noted that the Federal Circuit's decision in In Re Bilski could significantly impact both patent prosecution and litigation. "I think that it is first going to have an impact on patent prosecution, in terms of what patents are getting through the patent office, but then it will have an impact on patent litigation in terms of what kinds of claims patent holders are going to be able to assert," she said.
Sarah Chapin Columbia, Intellectual Property, IP Litigation, Patent Prosecution
Yuichiro Takayanagi was mentioned in the February 2 issue of theOrange County Business Journal in an article regarding his move to McDermott. Mr. Takayanagi recently joined the Firm as a partner in the Intellectual Property, Media & Technology Department.
Yuichiro Takayanagi, European Telecom, Media & Technology, Intellectual Property
Paul Devinsky was quoted on February 2 by Law360 in an article regarding an International Trade Commission (ITC) case brought by Saxon Innovations LLC, a suspected patent troll, against Nokia Corporation, Research in Motion Ltd. and several other companies. The ITC has not traditionally been a popular forum for nonpracticing entities because the commission can award only exclusion orders on the importation of infringing goods and not monetary damages. Mr. Devinsky noted that an exclusion order, however, is functionally equivalent to an injunction issued by a district court. "A respondent, facing an exclusion order, is likely to agree to a coercive settlement in order to avoid disruption in its business since it is unlikely to get a stay of an exclusion order pending its appeal to the Federal Circuit," he said.
Paul Devinsky, Intellectual Property, International Trade Commission
Astrid R. Spain was quoted in the January 30 issue of Intellectual Property Watch in an article regarding the difficulties IP owners may face in 2009 as U.S. courts continue to cut back on patent rights. The Federal Circuit is expected to decide In Re Kubin, in which the USPTO rejected a patent application for rights to a DNA sequence on grounds that the invention was obvious to try. "If the [USPTO] decision is upheld, it would have far-reaching effects," said Ms. Spain. "If the Federal Circuit overturns Deuel [in which the Federal Circuit held that DNA sequences are not made obvious by knowledge of a desired protein sequence], that would call into question a lot of [biotech] patents that have been issued, especially recently issued patents," she added.
Astrid R. Spain, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP, Patent Prosecution
Francesco Mattina is quoted in the December 2008/January 2009 issue of Legal Business in a piece which assesses which firms are best placed to come through the tough times ahead.
Francesco Mattina, Intellectual Property, Italy
2008
David Marx was quoted in the December 30 issue of Global Competition Review in an article regarding Inverness Medical Innovations' settlement with the Federal Trade Commission (FTC) on charges that the company illegally sought to maintain its monopoly on pregnancy tests by acquiring assets from competitor ACON Laboratories. Inverness must sell the assets, including an intellectual property license for dye technology. "With this decision, the FTC shows it remains committed to enforcing antitrust laws in the health-care sector," said Mr. Marx. "The FTC has ensured that the market has returned to an even more competitive state than it was before Inverness acquired ACON's assets," he added.
David Marx Jr., Antitrust & Competition, Antitrust - IP, Health, Health - Antitrust, Intellectual Property
Gary Moss was quoted on December 15 by Law360 in an article regarding the U.K. High Court of Justice's order that Allen & Overy and McDermott Will & Emery LLP disclose what they will charge clients Research in Motion Ltd. and Visto Corp. in their latest legal battle. The order comes after Allen & Overy racked up £5.2 million in fees during its successful defense of RIM in an earlier case against Visto. Lord Justice Timothy A.W. Lloyd of the U.K. High Court of Justice determined at the time that the fees, which RIM was seeking to reclaim from Visto, were excessive. "Visto applied for an order that RIM disclose an estimate for fees because they were concerned that history might repeat itself," said Mr. Moss, who is representing Visto in the current patent litigation.
Gary Moss, Intellectual Property, IP Litigation
Sarah Columbia was quoted in the December 12 issue of the Boston Business Journal in an article regarding how growing companies can select the right lawyer or law firm to meet their intellectual property legal needs. Ms. Columbia recommends that a business interview several law firms to determine what it needs in an IP lawyer, noting that the best choice would be a firm that can grow with the business over time. "You really want somebody who will be a strategic partner with you. Most companies we work with are really looking for lawyers and a firm that can be strategic advisers....In the end, a firm should be able to develop an IP strategy that is driven by the business plan first," she said.
Sarah Chapin Columbia, Intellectual Property
Nathaniel D. McQueen was quoted on December 5 by Law360 in an article regarding the U.S. Patent and Trademark Office's (USPTO) efforts to reverse a U.S. District Court for the Eastern District of Virginia decision, which voids a set of contested rules the agency says are needed to streamline its processes and clear a backlog of paperwork. The U.S. District Court for the Eastern District of Virginia struck down the rules in April, finding that the USPTO does not have the authority to make them and handing a victory to plaintiffs Dr. Triantafyllos Tafas, an inventor, and GlaxoSmithKline. "Overall, I think it was a victory for patent applicants. It seems to me that Tafas and GSK have the law on their side and that the PTO was not very convincing," said Mr. McQueen.
Nathaniel McQueen, Intellectual Property, Patent Prosecution
David H. Dolkas was quoted in the November 17 issue of Lawyers USA in an article regarding the important role case visuals can play in the early stages of a case and even before a complaint is filed. Mr. Dolkas has used his case visuals at pre-trial client presentations, hearings and meetings with experts. "Cases move at such a fast pace, and lawyers often don't stop to think about the visual part of the story until close to trial, but using visuals early on helps you build the story," said Mr. Dolkas.
David Henry Dolkas, Intellectual Property, IP Litigation
Terrence P. McMahon was quoted on November 5 by Law360 in an article regarding a ruling from Judge Barbara B. Crabb in which she granted part of Extreme Networks' request for a permanent injunction against Enterasys Networks. The court ordered Enterasys to stop selling three types of routers that were found to infringe Extreme patents. "That was our real focus, so we're delighted with the judge's ruling in that regard, and this was indeed a hard-fought case on both sides," said Mr. McMahon.
Terrence P. McMahon, Intellectual Property, IP Litigation
Margaret Duncan was quoted on November 5 by Law360 in an article regarding a ruling from Judge Barbara B. Crabb in which she granted part of Extreme Networks' request for a permanent injunction against Enterasys Networks. The court ordered Enterasys to stop selling three types of routers that were found to infringe Extreme patents. Although Judge Crabb narrowed the scope of Extreme's request for an injunction, Ms. Duncan noted that it was still fairly wide. "We were extremely pleased that the judge in her judgment [confirmed] the jury's verdict and denied [the defendant's] post-trial motions and entered and respected the jury's verdict here," she said.
Margaret M. Duncan, Intellectual Property, IP Litigation
Blair M. Jacobs was mentioned in the October issue of Intellectual Property Today in an article regarding his move to McDermott. Mr. Jacobs joins the Firm as a partner in the Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation.
Blair M. Jacobs, Intellectual Property, IP Litigation
Vera M. Elson was quoted in the October 31 issue of The Recorder in an article regarding young women lawyers who want to make partner and the importance mentoring plays in helping them to become successful. Ms. Elson noted that it is important that women be proactive, identifying their needs and then seeking out mentors who can teach them what they want to learn. "Seek out the person you want to emulate, and then team up with them," she said.
Vera M. Elson, Intellectual Property
Robert J. Walters was mentioned in the October issue of Intellectual Property Today in an article regarding his move to McDermott. Mr. Walters joins the Firm as a partner in the Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation and counseling on intellectual property matters.
Robert J. Walters, Intellectual Property, IP Litigation
Toby H. Kusmer was quoted on October 30 by Law360 in an article regarding the U.S. Court of Appeals for the Federal Circuit's ruling in In Re Bilski. The court ruled that the business method failed to meet the test requiring a process to be tied to a particular machine or to physically transform an article into something different. Mr. Kusmer noted that the court tried to reconcile all previous tests and ended up ruling down the middle. "Proponents of business methods wanted a broad interpretation that said anything under the sun made by man should be patentable, while the other side didn't like business methods at all. Traditionally business methods were not considered patentable until State Street, which opened up a can of worms," he said.
Toby H. Kusmer PC, Intellectual Property, Patent Prosecution
Jason A. Levine was quoted on October 24 by Law360 in an article regarding nuisance-value lawsuit settlements. A nuisance-value lawsuit is a case in which a litigant brings a tenuous claim and then offers to settle the case for less than it would cost the defendant to litigate the matter. Mr. Levine noted that while a nuisance-value settlement may cost less than litigating the matter at hand, it can lead to additional lawsuits. "You have to think about the precedent being set. It's really a complicated calculus a company has to make about whether a nuisance-value settlement makes sense," he said.
Jason A. Levine, Intellectual Property, Trial
Bernard P. Codd was quoted on October 17 by Law360 in an article regarding changes to several U.S. Patent and Trademark Office rules which will limit appellants' arguments and make the appeals process more expensive and time-consuming. Mr. Codd noted that the USPTO likely made the changes to discourage people from filing appeals and to allow the office to reject more appeals based on procedural grounds. "I think they are concentrating on form over substance. The reason to do that is to decrease the number of appeals because applicants think twice about appealing. It's also more expensive for our clients," he said.
Bernard P. Codd, Intellectual Property, Patent Prosecution
Fay E. Morisseau was quoted on October 14 by Law360 in an article regarding a federal appeals court's order to move a product liability case against Volkswagen of America Inc. out of the plaintiff-friendly Eastern District of Texas and into the Dallas Division of the Northern District of Texas. Lawyers with interests in patent litigation are watching the case closely as many view the Eastern District of Texas as a district where patent plaintiffs can win favorable verdicts. Mr. Morisseau noted that the appeals court's decision likely won't affect pending cases, but that it may affect new cases. "Most of the new cases will have motions to transfer. Some of them will be granted. It's going to change how people do business, but it's not going to completely change," he said.
Fay Morisseau, Intellectual Property, IP Litigation
Terrence P. McMahon was quoted in the October 13 issue of The Daily Business Review in an article regarding the effect of the financial crisis on companies and their patent assets. Mr. McMahon noted that many companies are reviewing their patent assets, looking for new ways to make money and to ensure that assets are protected from rivals. "They're looking at their patent portfolios to monetize them or to make them a source of profits," said Mr. McMahon.
Terrence P. McMahon, Intellectual Property
On October 6, McDermott Will & Emery was profiled in the Houston Business Journal in an article titled, "Firm Forms East Texas Group to Focus on Litigation Hotbed." The article highlights McDermott's East Texas Patent Litigation Group, which includes partners Fay E. Morisseau and David M. Stein. Mr. Morisseau commented, "We've had so much litigation in East Texas, both from a plaintiff's side and defendant's side, we've had a lot of expertise in representing clients there, and we thought we could add to the expertise by bringing these attorneys together."
Fay Morisseau, David M. Stein, Intellectual Property, IP Litigation
Robert H. Underwood was mentioned in the September issue of Intellectual Property Today in an article regarding his move to McDermott. Mr. Underwood joins the Firm as a partner in the Intellectual Property, Media & Technology Department and the Life Sciences & Medical Devices Practice Group.
Robert H. Underwood, Intellectual Property, Life Sciences & Medical Devices
Robert J. Walters was mentioned in the September 29 issue of The Washington Post in an article regarding his move to McDermott. Mr. Walters joins the Firm as a partner in its Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation and counseling on intellectual property matters.
Robert J. Walters, Intellectual Property, IP Litigation
Blair M. Jacobs was mentioned in the September 29 issue of The Washington Post in an article regarding his move to McDermott. Mr. Jacobs joins the Firm as a partner in its Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation and related antitrust disputes.
Blair M. Jacobs, Intellectual Property, IP Litigation
Anthony de Alcuaz was quoted on September 23 by Law360 in an article regarding Aristocrat Technologies Australia Party Ltd.'s appeal of a U.S. District Court for the Northern District of California decision which rendered Aristocrat's patents relating to slot machines invalid based on an improperly revived patent application. The federal appeals court, however, ruled that the improper revival of a patent application is not a cognizable defense and remanded the case back to the district court. "For the clients, we're extremely happy because the [district] decision wasn't a correct one," said Mr. de Alcuaz, one of Aristocrat's lawyers in the case.
Anthony de Alcuaz, Intellectual Property, IP Litigation
Robert H. Underwood was mentioned in the September 8 issue of The National Law Journal in an article regarding his recent move to McDermott. Mr. Underwood is a partner in the Boston office and a member of the Firm's Intellectual Property, Media & Technology Department and Life Sciences Practice Group.
Robert H. Underwood, Intellectual Property, Life Sciences & Medical Devices
Eric Levinrad authored an article entitled, "Risk Reduction Strategies in 'Bet the Company' Trade Secret Misappropriation Actions" in the August edition of Orange County Lawyer. The article addresses the range of damages available in trade secret misappropriation actions brought under the Uniform Trade Secret Act, discusses possible theories for the limitation of such damages and defines pre- and post-litigation steps that employers should take when hiring employees from competitors to reduce the risk of exposure for trade secret misappropriation.
Eric Levinrad, Intellectual Property, Trade Secrets
James Hill, MD, and M. Todd Hales co-authored an article in the August edition of Orange County Lawyer entitled "Patent Reexamination after KSR." The article discusses the fundamentals of ex parte and inter partes reexamination, how the Supreme Court of the United States' decision in KSR v. Teleflex impacts patent reexamination, and strategic considerations in choosing between reexamination and litigation in attempting to invalidate a patent.
M. Todd Hales, James W. Hill M.D., Intellectual Property, Patent Prosecution
McDermott Will & Emery's Intellectual Property, Media & Technology Department was featured in IP Law360 on September 3. The article discusses the Intellectual Property Department, highlights some of the Firm's recent accomplishments and includes comments on some of the trends of IP. To view the entire article click here.
Terrence P. McMahon, Intellectual Property, IP Litigation, Patent Prosecution
On September 1 McDermott Will & Emery was profiled in The National Law Journal in an article titled, "McDermott's IP litigation team tallies jury trial wins." The article highlights McDermott's intellectual property litigation team including, Sarah Columbia, Joel Freed, Terry McMahon and Fay Morisseau, "rack[ing] up five mainly favorable jury trial verdicts in the course of five months in five different federal districts." The article notes, "...[I]t's an unusual string of results in an era when most cases don't even go to trial. The trials took place in federal courts in California, Delaware, Massachusetts, Texas and Wisconsin." Mr. Morisseau commented, "What we do better than anyone else in the country is we work across offices to pull the people with the skills needed and we are not hesitant to take a case to trial."
Sarah Chapin Columbia, Joel M. Freed, Terrence P. McMahon, Fay Morisseau, Intellectual Property, IP Litigation
Sarah Chapin Columbia was quoted in the August 15 issue of IP Law360 in an article discussing the Firm's recent addition of Dr. Robert Underwood to its Intellectual Property, Media & Technology Department. Regarding Dr. Robert Underwood, Ms. Columbia commented, "He is a highly skilled lawyer and the wide range of experience he brings with him is a significant addition to our firm-wide patent prosecution and life sciences practices, as well as a strong supplement to our overall Boston intellectual property practice."
Sarah Chapin Columbia, Robert H. Underwood, Intellectual Property, Life Sciences - IP, Patent Prosecution
Robert H. Underwood was mentioned in the August 11 issue of the Boston Business Journal in an article regarding his move to McDermott. Mr. Underwood is a member of the Firm's Intellectual Property, Media & Technology Department and the Life Sciences & Medical Devices Practice Group.
Robert H. Underwood, Intellectual Property, Life Sciences & Medical Devices
Terrence P. McMahon was quoted in the August 4 issue of The Recorder in an article regarding the U.S. Court of Appeals for the Federal Circuit's removal of U.S. District Judge Manuel Real from a patent infringement case. The Federal Circuit threw out Microsoft's 2006 win over Research Corporation Technologies (RCT), reversing Real's decision declaring RCT's patents unenforceable and tossing his orders that found the patents invalid and non-infringing. Mr. McMahon, who represented RCT before Judge Real, said he was happy to get a new judge on the case. "It was clear that he had a point of view and we disagreed with it – we tried the case and he cut us off at every pass. I've never had something like this in my whole career, and I hope I never do again," he said. "A new day has dawned. Everything that Judge Real did has been erased," he added.
Terrence P. McMahon, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the July 30 issue of The Tech Transfer Blog in an article regarding the growing tension in the tech transfer community over whether TTOs should be seen as profit or cost centers. Mr. Devinsky noted that universities tread dangerous ground by trying to run TTOs as profit centers. "Every university doesn't have the leverage of MIT, Harvard, Scripps, or Stanford. There seems to be a certain uniformity in approach, with everyone insisting on clauses that might be appropriate for dealing with a seasoned researcher at a particular university but not appropriate across the board," he said. "Many times, what universities think they can squeeze out of some piece of technology just isn't rational. Even when dealing with incubators and start-ups, many tech transfer folks insist on deal terms that almost seem calculated to create barriers to the success of the emerging company," he added.
Paul Devinsky, Intellectual Property, Licensing
Paul Devinsky was quoted in the June 2008 issue of Inside Counsel in an article regarding the Federal Circuit's ruling in the case of David Barstow, a former employee of Schlumberger Technology Corporation who invented software while employed by the company. The court ruled that Schlumberger must prove that the patents at issue were related to or suggested by David's work for the company in order to gain ownership. "This was a huge signal to the district court judge that unless Schlumberger did something to make people think the inventions belonged to the company, the inventions belong to David Barstow," Mr. Devinsky said. As for whether companies should create internal review processes for determining whether they own employees' inventions, Mr. Devinsky noted that "most companies will not be happy to make a decision on whether or not they own something."
Paul Devinsky, Intellectual Property, IP Litigation
Joel M. Freed was recognized in the 2008 issue of the Legal Times Almanac of Leading Lawyers. Mr. Freed was noted for his work in Intergraph Corp. v. Intel Corp., a case that struck the balance between intellectual property and antitrust in favor of intellectual property.
Joel M. Freed, Antitrust - IP, Intellectual Property, IP Litigation
Sarah Chapin Columbia was quoted in the June 6 issue of the Boston Business Journal in an article regarding the decreasing number of IP-related lawsuits going to trial in Massachusetts due to the belief that other venues offer speedier resolution. Some Massachusetts companies are opting to file in other federal courts where, for example, the court may have a record of being plaintiff-friendly or may offer a faster trial. "There's a lot of venue shopping going on," Ms. Columbia said.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
Toby H. Kusmer was quoted in the June 6 issue of the Boston Business Journal in an article regarding the most unique patents IP lawyers' have helped secure and protect. Mr. Kusmer noted that when stereo TV was first considered in the 1980s, the Broadcast Television Systems Committee (BTSC) wanted to develop a uniform standard to prevent competing technologies that could have hindered the success of stereo transmission. "Originally developed to reduce noise in audio signals recorded on magnetic tape, the Adaptive Signal Weighting System patent disclosed and claimed technology later adopted by the BTSC for reducing noise in the 'R-L channel' of stereo audio for analog TV," Mr. Kusmer said.
Toby H. Kusmer PC, Intellectual Property, Patent Prosecution
Paul Devinsky was quoted in the May 1 issue of CFO Magazine in an article regarding whether business-process methods should be protected by patent law. On May 8, the U.S. Court of Appeals for the Federal Circuit will hear In Re Bernard L. Bilski and Rand A. Warsaw and may deliver a decision that clarifies where to draw the line on patentable subject matter. Mr. Devinsky noted, however, that if Bilski doesn’t decide the matter, the business-method patent issue will be "all teed up for the Supreme Court."
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
Astrid R. Spain was quoted in the April 29 issue of The Daily Transcript in an article regarding patent reform bills currently before Congress. Ms. Spain commented on the bills' controversial provision which requires reasonable royalties or lost profits in infringement lawsuits to only be applied to the economic value of the specific contribution the patent makes to the product. The change, "bogs down the judges and juries with massive data and expert testimony on figuring out what exactly is the apportionment, which would make lawsuits more expensive and increase damages," Ms. Spain said. Regarding hopes that the bills will pass, Ms. Spain noted, "Clearly we have a lot of different industries with divergent interests, and our Congress represents all of these businesses and needs to strike a balance to encourage American innovation."
Astrid R. Spain, Intellectual Property, IP Litigation
William Gaede is quoted in The Recorder on March 23 (as presented on Law.com), speaking about the patent infringement litigation impact of the Federal Circuit's In re Bilski decision. Bilski held that methods are not patentable unless they are tied to a machine or can transform an article. Concerning the use of the decision by defendants in infringement claims, Mr. Gaede says: "Is Bilski the killer defense? I think the answer is no, because you may face other claims."
William Gaede, Intellectual Property, IP Litigation, Life Sciences - IP
Joan M. Griffin appeared in an on-air interview on New England Cable News' NewsNight with Jim Braude on March 13. Ms. Griffin discussed a new federal study that confirms ballistics matches are based on wholly unproven assumptions.
Robert W. Zelnick was quoted in the February 2008 issue of Inside Counsel in an article regarding the use of trademark law to suppress online criticism. As a partner in McDermott's Intellectual Property, Media & Technology Department, Mr. Zelnick discussed the elements needed for a successful trademark infringement case including proof that the website is associated with the sale of goods or services and that use of the trademark confuses at least some of the plaintiff's potential customers. Mr. Zelnick noted, however, that, "people are afraid of losing their house in a legal proceeding, so the dominant response is to accede to the demands made of them. Very few of these cases hit a judge’s desk. The vast majority of law is being made outside judicial scrutiny."
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
David M. Beckwith was quoted in a February 11 article published by the San Diego Business Journal regarding a patent infringement lawsuit set to determine whether patent holders can collect royalties and sue subsequent purchasers of patented goods. As a partner in McDermott's Intellectual Property, Media & Technology Practice Department, Mr. Beckwith stated that the case would affect "likely any area of manufacturing where you are putting limits on how the technology can be used or hope to use it." Regarding the sale of products with contractual restraints, Mr. Beckwith added that "there’s a fairly long history of being able to impose some restrictions of use of what you can do with the patented article."
David M. Beckwith, Intellectual Property
Paul Devinsky was quoted extensively in the January 2008 issue of Technology Transfer Tactics in an article regarding sublicensing strategies for tech transfer offices. Click here to access the full text article.
Paul Devinsky, Intellectual Property, Licensing
2007
The Washingtonian released its fifth list of "Big Guns" in the December 2007 issue. The Washingtonian selects "Big Guns" based on peer recommendations and follow-up interviews. The following McDermott lawyers were named "Big Guns": Bobby R. Burchfield, Joel M. Freed, Abbe D. Lowell and Blake D. Rubin.
Bobby R. Burchfield, Joel M. Freed, Abbe D. Lowell, Blake D. Rubin, Intellectual Property, Tax, Trial
Michelle Burke was quoted in a November 18 article in the online edition of Naples News regarding the growth of the Ave Maria brand. Started by Domino's founder Tom Monaghan, the brand originally promoted traditional Christian products, but has expanded to include such items as wigs and umbrellas. Ms. Burke discussed the trademark implications of the Ave Maria brand as it is increasingly being used on ever more products. "The more diverse you are, the easier it is for the trademark owner to claim confusion if someone starts an unaffiliated business" using the product brand, she said.
Michelle C. Burke, Intellectual Property
Laurence M. Berman was mentioned in an October 31 article published in IP Law360 regarding an interview that was done with Floyd A. Mandell. When asked who another IP lawyer outside his firmed has impressed him, he responded, "Laurence M. Berman…is a fantastic trial attorney and has a passion for the law and a great presence in front of juries."
Laurence Berman, Intellectual Property
William Gaede was quoted in an October 23 article published by IP Law360 regarding a federal jury's ruling that Amgen Inc.'s patents were infringed by Roche Holding AG's generic drug Mircera. Mr. Gaede represented Amgen in the case along with others from McDermott. "We're thrilled with it…It's a terrific victory for Amgen," Mr. Gaede commented.
William Gaede, Intellectual Property, IP Litigation, Life Sciences & Medical Device Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Laurence Berman was quoted in an October 10 article published by IP Law360 regarding Google Inc.'s new feature, AdSense, which allows websites to target YouTube videos with embedded ads. Mr. Berman commented on how as a result of this ability to match up contextual advertisements with the applicable videos, Google may end up with issues defending itself from copyright holders. "The legal standard is the following - if you can show that Google knew or should have known that they are infringing someone's copyright, they can be liable for a contributory infringement claim. Anything that shows that they could know more about one video over another could help a plaintiff meet the legal standard for showing copyright infringement," Mr. Berman said.
Laurence Berman, Intellectual Property
Raphael V. Lupo was quoted in the October edition of Technology Transfer Tactics regarding the U.S. Court of Appeals decision in the case, In Re Seagate Technology, LLC, and it's effects on proving willful infringement. Mr. Lupo stated that the courts decision will make it more difficult for plaintiffs to prove that opponents are engaged in willful infringement. "They have to show that there was a reckless disregard for the patent and for the warning they gave the licensee about infringement," he said.
Raphael V. Lupo, Intellectual Property
Paul Devinsky was quoted in a September 11 article by Technology Daily regarding patent holding firm NTP's decision to sue several of the nation's largest wireless carriers for alleged patent infringement. Mr. Devinsky's prediction is that the defendants would move for an immediate stay pending conclusion of the re-examination and that the stay would be granted. He suggested that NTP may be concerned about pending patent litigation on Capitol Hill and that NTP "is seeking to be certain their damage claim is calculated under the current statute."
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
On August 6, Ralf Weisser was mentioned in several news wire stories such as Yahoo News as a speaker at the EUROFORUM Conference "IPTV" scheduled for September 17 to 18 in Cologne, Germany.
Ralf Weisser, Intellectual Property, Telecommunications
Raquel Rodriguez was mentioned in a July 31 article published by the Miami Herald regarding a trademark infringement case over the rights to use the phrase "Miami Fashion Week." Currently three companies refer to their fashion week as "Miami Fashion Week", however Fashion Week of the Americas, represented by Ms. Rodriguez, has brought a lawsuit regarding their rights to this phrase. Ms. Rodriguez stated that her client first used the phrase in 1999 and that the longevity strengthens her case.
Raquel Rodriguez, Intellectual Property, Trademark/Brand Protection & Enforcement, Trial
Vera M. Elson was quoted in the July 20 issue of The Recorder in an article regarding law firms expanding their practice in the area of accelerated patent cases before the International Trade Commission. Ms. Elson explains that it is very difficult for firms to enter the practice of accelerated patent cases. "It's the kind of thing where you can't make a halfhearted effort....It's a hard thing to dabble in," Ms. Elson said.
Vera M. Elson, Intellectual Property, International Trade Commission, IP Litigation
John J. Dabney was quoted in a July 20 article published by Intellectual Property Watch regarding a U.S. ruling that won the protection given to famous foreign trademarks. Mr. Dabney commented on the new International Trade Commission Ruling and it's effect on foreign companies operating within the U.S. "It creates an incentive for unscrupulous companies to find well-known foreign trademarks, use them in the US [thus obtaining US trademark rights], and try to shake down the marks' owners when they try to expand into the US market," Mr. Dabney said.
John J. Dabney, Intellectual Property, International Trade Commission, Trademark/Brand Protection & Enforcement
Joan M. Griffin appeared in an on-air interview with Boston Channel 5 on July 6 for a story concerning the recent difficulties of the Massachusetts State crime lab and specifically the lack of oversight by trained scientists. The story coincided with the release of the Vance report, an independent review of the state crime lab. "In my mind, there's no question that if this could be separated from the police, we would be better off. You have people running laboratories who are traffic cops with no scientific training at all," said Ms. Griffin.
, Intellectual Property, Life Sciences - IP
Gordon Greenberg and Terrence McMahon have been recongnized in the Who's Who Legal: California 2007 edition. Who’s Who Legal: California recognizes 725 leading private practitioners in 25 distinct practice areas. Gordon Greenberg has been recognized for his business crime practice, while Terrence McMahon has been recognized for his patent practice.
Gordon A. Greenberg, Terrence P. McMahon, Intellectual Property, Trial
Michael E. Shanahan was mentioned in a June 28 article published by IP Law360 for joining McDermott's Intellectual Property, Media & Technology Department in New York. Mr. Shanahan has recently been counseling clients looking to merge, acquire or invest in technology companies. "There's a greater awareness among investors of the importance of intellectual property. For private equity groups or any other company looking to make an investment, the value of a company's intellectual property is looming larger than it has in past years," he said.
Michael E. Shanahan, Intellectual Property
Joel Grosberg was quoted in a June 26 article published by Red Herring regarding Google's request to a federal judge for intervention in the Microsoft anti-trust settlement with the U.S. that is set to expire in November. Mr. Grosberg spoke about Google's legal strategy and it's attempt to limit Microsoft's business. "It's quite common for competitors to use the government or make anti-trust complaints to attempt to gain some competitive advantage in the market or make it more difficult to compete. It's not unusual in that (Google) is doing it. It is unusual in making it a public dispute rather than a private one," Mr. Grosberg said.
Joel R. Grosberg, Antitrust & Competition, Antitrust - IP, Intellectual Property
Mark Wine was quoted on May 15 in IP Law360 in regards to Microsoft’s move to seek patent royalties from open source distributors and users. “It was a surprise last Fall when they signed [an agreement] with Novell….You had to figure at some point they’d engage in some kind of marketing attempt that would steer people towards their licensed Linux provider…. This may simply be the beginning of that effort,” commented Mr. Wine. He continued, “There are several big contracts up for consideration…. By threatening users and distributors with a lawsuit, they could [be using] this announcement to steer customers towards licensed software instead of unlicensed Linux providers, such as Red Hat.”
, Intellectual Property, IP Litigation, Licensing, Patent Prosecution
Mark P. Wine was quoted in a May 15 article published by IDG News Service regarding Microsoft’s move to seek patent royalties from open source distributors and users in an attempt to use legal threats to deflect attention from company problems. Mr. Wine agreed that Microsoft is hoping companies will pay without a fight rather than engage them in a legal battle. He also said Microsoft may be trying to drive open source software users to migrate to its products. "I think it's as much a marketing move as anything else," he said. "If you're really serious, you sit down and have a discussion, and you tell [open-source users] which patents, or you sue them." This article appeared in MacWorld and Computer World.
, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
Marc Brown was quoted in the May 5 edition of Information Week regarding business method patents resulting from the U.S. Supreme Court's recent decision on the KSR v. Teleflex case. "Business method patents already are difficult to get, and this ruling will make them even more so. They're going to be much more prone to attack," he said
Marc E. Brown, Intellectual Property, Patent Prosecution
Marc Brown was interviewed by the EE Times for its May 2 issue regarding the U.S. Supreme Court's ruling on KSR v. Teleflex. While the decision clearly rejected a "rigid rule" test, the Court wasn't explicit about what takes its place. “What they have been less clear about is what the new test is. Some of the most controversial patents of recent years have been so-called ‘business method’ patents, such as a company patenting a particular way of doing business. One such example is a long-running case involving eBay and its 'buy it now' option, which a jury decided violated a patent held by a small company, MercExchange. Business method patents already are difficult to get, and this ruling will make it even more so. They're going to be much more prone to attack," said Mr. Brown.
Marc E. Brown, Intellectual Property, Patent Prosecution
Paul Devinsky was quoted in the May issue of ABA Journal regarding the issues behind patenting tax strategies. Mr. Devinsky states, “If you think a patent claim is invalid, you have to get your patent attorney involved and get an opinion of counsel stating that the claim is invalid—which is one of the best ways to protect yourself...." “That’s a pretty big deal every time you want to file a tax return for a major client.”
Paul Devinsky, Intellectual Property, Patent Prosecution, Trademark/Brand Protection & Enforcement
McDermott Will & Emery was mentioned in the 25 April issue of Handelsblatt regarding being the legal advisor of DSS in an article about its success in the patent litigation and the possible appeal against the judgement through EZB which doubts the competency of the EuGH.
Germany, Intellectual Property, IP, Media & Tech - Germany
Mark Wine was quoted in IP Law360 on April 20 in regard to Hewlett-Packard's filing of a patent infringement suit against Acer Inc. and its American subsidiary, Acer America Corp. "It's a compliment of sorts to Acer, which has made up a lot of ground and is beginning to challenge its competitors," commented Mr. Wine. He continued by commenting that, "And when a competitor starts nipping at your heels you start to look at IP more critically." This article also appeared on March 28.
, Intellectual Property, IP Litigation
Toby Kusmer was quoted in the March 2 issue of the Boston Business Journal regarding changes to the Federal Rules of Civil Procedure which went into effect on December 1, 2006. "This is a classic case of the law not really being ready for changes in the way we do business," commented Mr. Kusmer. He continued by commenting that "The rule changes are affecting the advice lawyers give their clients in terms of how to keep their electronic records and have consistent policies in place. Otherwise, clients could set themselves up for charges of destroying evidence."
Toby H. Kusmer PC, Intellectual Property
Stephen Becker was quoted by Reuters on February 23 regarding the $1.52 billion patent verdict against Microsoft Corp. "This is one that impacts on everyone that has an MPS," commented Mr. Becker. "It's not only impacting on makers of esoteric technology."
Stephen A. Becker PC, Intellectual Property, IP Litigation
David Gay was quoted in the Contra Costa Times on February 22 in an article on the ruling by the USPTO against Genentech in the re-examination of its patent that generates an estimated $300 million a year in royalties from companies using the technology to make cancer and rheumatoid arthritis treatments. "An earlier patent on the technology expired last year, and companies paying royalties expected to be able to stop," said Mr. Gay. "That's the idea that's upsetting people, and they are hoping the patent would go away," he said. "Somebody got heated up enough to say, 'I'm going to stop this,' and they filed the re-exam request."
David A. Gay Ph.D., Intellectual Property, IP Litigation
Astrid Spain was quoted in the East Bay Business Times on February 21 in an article about the rejection by the USPTO of Genentech's claims to a lucrative patent covering methods for making monoclonal antibodies. "If the decision holds up, it would mean there was clearly some art that was missed in the initial examination that would create a substantial new question of patentability," said Ms. Spain. "In general, Genentech is known to have a very sound patent strategy and high-level patent prosecution. That something was missed - a piece of prior art - is surprising, particularly for a patent that is of such importance."
Astrid R. Spain, Intellectual Property, IP Litigation
Terrence P. McMahon and William Gaede were featured in the February 2007 issue of IP Law & Business in a two-page article, "Trial Tips: In the race to develop a new drug for juvenile growth disorder, did Insmed rely on Genentech's patents?" This article discusses the closely watched biotechnology case, Genentech Inc. et al. v. Insmed Incorporated et al., the history of the patent battle for co-plaintiffs Genentech and Tercica, and the trial strategies employed by the McDermott team for Firm client Tercica.
William Gaede, Terrence P. McMahon, Intellectual Property, IP Litigation, Trial
James Hill, M.D., was quoted in MX, a publication dedicated to business strategies for medical technology executives, in its article "Preparing for Patent Reform" (January/February 2007). The article discusses the key elements of the U.S. patent reform proposals and the implications for medtech manufacturers. Dr. Hill stated, "clients that previously opted not to have their applications published will need to change their strategy." He also goes on to discuss what issues need to be considered by patent holders including infringement suits, injunctions and trade secrets. Additionally, McDermott Will & Emery was listed as one of the top IP firms for the medtech industry.
James W. Hill M.D., Intellectual Property
Christian von Sydow, David Cifrino and Paul Melot de Beauregard were mentioned in the February issue of Juve Rechtsmarkt regarding Nova Analytics in the acquisition of Ebro Electronic Instruments.
Paul Melot de Beauregard, David A. Cifrino PC, Christian von Sydow, Corporate, Employee Benefits & Pensions, Intellectual Property
Astrid R. Spain was quoted in the January 21 edition of The Star-Ledger in an article discussing the case regarding Sanofi-Aventis' patent for clopidogrel bisulfate, the chemical name for Plavix, which the drugmaker co-markets with Bristol-Myers. The companies are expected to prevail in their patent-infringement suit against Apotex. Ms. Spain commented, "There isn't anything remarkable about the merits that are being argued. The arguments are pretty ordinary. The science behind it is not that complicated and Apotex is going to have an uphill fight on the merits."
Astrid R. Spain, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
David A. Gay, Ph.D. was quoted in the January 10 issue of The Baltimore Sun regarding the Supreme Court's decision on MedImmune patent case. Dr. Gay said the decision has the potential to restructure everything.
David A. Gay Ph.D., Intellectual Property, Life Sciences & Medical Devices
Paul Devinsky was quoted by Reuters on January 9 in regard to the Supreme Court's decision in favor of MedImmune. Mr. Devinsky commented that the decision could prompt patent owners to put conditions in their licenses that trigger immediate termination when a patent's validity is challenged.
Paul Devinsky, Intellectual Property
2006
Astrid Spain was quoted in The Deal on December 4 in an article on the pharmaceutical industry in China. "I think the only strategy to deal with China is to take into account that they are moving through industrialization into a capital market society and to keep in mind that not long ago they made a shift from socialism into a capitalist society. Those things still significantly shape their business environment," commented Ms. Spain.
Astrid R. Spain, Intellectual Property, International, Life Sciences & Medical Devices
Joan Griffin was quoted in The Boston Globe on December 4 in regard to a trademark dispute between Lunesta and Tharos Laboratories, Inc. "In the old days, you'd say a logo didn’t really matter, because these things are prescribed by doctors," commented Ms. Griffin. "But if they're advertising it on TV, they're aiming it at consumers, and the logo matters." She continued and said Tharos could face a tough road proving that a big green moth is causing confusion with its blue butterfly.
, Intellectual Property, Life Sciences & Medical Devices
Margaret "Peg" Duncan was quoted in the November 15 issue of The Chicago Tribune in regard to potential buyers of a company examining the target company's patent portfolios as part of due diligence.
Margaret M. Duncan, Intellectual Property
Stephen Becker was quoted in the November 8 issue of The National Law Journal regarding the massive backlog at the U.S. Patent & Trademark Office. He commented on the office's idea of deferred examinations, saying, "I think fewer people might opt not to examine patent applications if they think they're not going to get commercial importance because filing fees are high."
Stephen A. Becker PC, Intellectual Property
Terrence P. McMahon was profiled in the November issue of American Lawyer in regard to his representation of Creative Technology, Ltd. in its lawsuit against Apple Computer, Inc. The article, "Top of the Docket: McDermott's Jury Master," was part of the Big Suits column which also featured the litigation.
Terrence P. McMahon, Intellectual Property, IP Litigation
On October 25 on AccountingWEB.com, an article on the patenting of tax strategies references the article, "Whose Tax Law Is It?" by Paul Devinsky and Thomas Sykes published in the October 16 issue of Legal Times. The article references the authors' statement that tax patents could lead to unequal treatment under the tax code, becoming "government issued barbed wire" for some taxpayers.
Paul Devinsky, Thomas D. Sykes, Intellectual Property, Tax
A pro bono case led by Evan Parke was reported on in the October 23 issue of The National Law Journal. The case is a class action against three term paper websites and its owners for alleged theft of academic work. Mr. Parke commented, "This type of issue where you have rampant unauthorized use of someone else's information is widespread on the internet, and it's just now beginning to be dealt with."
, Intellectual Property, Pro Bono & Community Service
On Friday, October 20, the front page of The New York Times business section included an article on the patenting of tax strategies with a significant reference to the article, "Whose Tax Law Is It?" by Paul Devinsky and Thomas Sykes published in the October 16 issue of Legal Times. This article also appeared in the International Herald Tribune on October 19 and the Kansas City Star on October 25.
Paul Devinsky, Thomas D. Sykes, Intellectual Property, Tax
Astrid Spain was quoted in the October 5 edition of The Baltimore Sun in an article discussing the arguments presented before the U.S. Supreme Court in the MedImmune Inc. v. Genentech Inc. Ms. Spain commented, "Licensing relationships are such an integral part of everyday business, that I think there's a lot of interest from the corporate world in this case." She was also quoted in an interview with Bloomberg News. A ruling in MedImmune's favor would put companies seeking a license "in a totally different position in that power balance" in negotiations.
Astrid R. Spain, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Thomas Sykes was quoted in the October 2006 issue of The Chicago Lawyer in the article, "Patent attorneys, tax advisers square off over patenting tax strategies," about the controversy growing out of a surge in patents being granted for specific tax planning techniques. "Patents are allowing people to own a piece of the law. One arm of government is granting the tax benefit [while] another hand of government is taking away from it. It just runs counter to every instinct I think most of us have as to how law ought to work," Mr. Sykes said.
Thomas D. Sykes, Intellectual Property, Tax
Thomas Sykes was quoted in the October 1 issue of Financial Advisor magazine on the implications of granting patents for tax reduction methods. "For many strategies you consider that haven't been in the public domain for very long, you'll have to perform due diligence to make sure someone hasn’t patented them. It would be a major burden," Mr. Sykes said.
Thomas D. Sykes, Intellectual Property, Tax
Joan Griffin was quoted by the Boston Business Journal on September 22 in an article concerning genetic-related treatments boosting patent filings. Ms. Griffin commented, "In our experience most biotech patents represent an invention well beyond just basic scientific knowledge, which is unpatentable." "There is a difference between identifying a gene and its relationship to a disease or other condition, and figuring out how to use that knowledge to treat the disease or condition."
Wolfgang von Frentz was recognized in the September issue of Juve Rechtsmarkt in its "40 under 40" feature about young lawyers with a special power of character, which might be the reason why and how they are going to conquer the law market.
Wolfgang Freiherr Raitz von Frentz, Germany, Intellectual Property, IP, Media & Tech - Germany
Michael Anthony, Bobby Burchfield, Gordon Greenberg, Christopher Jedrey, Ray Lupo, Terry McMahon, Michael Pope, Richard Smith and Jeffrey Stone will be recognized in the fall edition of Lawdragon magazine on its annual survey of the top 500 lawyers in the United States, the Lawdragon 500.
Michael F. Anthony, Bobby R. Burchfield, Gordon A. Greenberg, Christopher M. Jedrey, Raphael V. Lupo, Terrence P. McMahon, Michael A. Pope PC, Richard W. Smith, Jeffrey E. Stone, Corporate, Health, Intellectual Property, Trial
Carol Harrington was quoted in an August 30 article in Fortune Magazine in an article that explored the recent trend of patenting tax shelters and loopholes. "If you can patent an interpretation of the tax law, why not patent anyone's legal advise?" Ms. Harrington said. "Then you could say people being prosecuted for murder can't use a certain defense without paying a licensing fee. Something is seriously wrong with that in my view," she added.
Carol A. Harrington, Intellectual Property, Private Client
David Bloch was quoted in the August 14 edition of IP Law360 in an article discussing the legal warning letters Google Inc. recently sent to mass media companies warning against the dilution of the company's trademark by using the company's name as a verb. "Google is a very long way from losing its trademark rights, even with the rise of the verb to google in common parlance. It's extremely uncommon for marks to become so generic that all trademark exclusivity is lost," said Mr. Bloch. He continued, "I don't think Google has any legal mechanism to prevent a media outlet from using the verb to google, unless the article deliberately connects the verb to the use of a competing search engine."
Boris Uphoff was quoted in the August edition of IP Law & Business on ambush marketing specific to the FIFA World Cup.
Boris Uphoff, Germany, Intellectual Property, IP, Media & Tech - Germany
David Gay and client Glen Evans were featured in the August edition of IP Law & Business as a "dynamic duo." Mentioned in two articles, David and Glen's inventor-lawyer relationship was showcased highlighting the ingenuity of the attorney that allowed the inventor to reap maximum value from his ideas. The story discusses the biotech start-up founded by Glen Evans and David's role in ensuring that the intellectual property was in synch with the company's business goals. The company was sold to Johnson & Johnson in 2004 for millions of dollars.
David A. Gay Ph.D., Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
On June 22, Marc E. Brown was quoted in InformationWeek in the article, "Supreme Court Sidesteps Deciding Key Patent Case." The article discussed the Court’s ruling on a patent infringement case that had the potential to invalidate business-method patents. Regarding the Court’s decision to dismiss an appeal by Laboratory Corporation of America because it addressed issues not dealt with by lower courts, Mr. Brown suggested a decision could have removed one of the clouds hanging over business method payments. "This case had the potential of seriously disrupting the status quo, but the Court's inaction signaled that a change is no longer immediately on the horizon as the Federal Circuit has been very pro business-method patents, so contrary to a decision by the Supreme Court, the right to a business-method patent is pretty secure."
Marc E. Brown, Intellectual Property, IP Litigation
Jason Levine was named in Lawdragon Magazine's (June 2006) inaugural list, "Lawdragon 500 New Stars," recognizing both up-and-coming talent as well as lawyers who have created fascinating new practices.
Jason A. Levine, Intellectual Property, Trial
David Beckwith was quoted in the May 19 issue of the San Diego Daily Transcript in an article discussing the recent decision by the U.S. Supreme Court in eBay v. MercExchange: "The District Court really put a lot of focus on the fact that MercExchange was willing to license and wasn't practicing an invention themselves."
David M. Beckwith, Intellectual Property, IP Litigation
Oliver Steffens and Wolfgang von Frentz were guests on the Indian television station T1 in connection with their speaking engagement at the televised 2006 World Customs Organisation IT Conference and Exhibition.
Oliver Steffens, Wolfgang Freiherr Raitz von Frentz, Antitrust & Competition, Competition - Germany, Germany, Intellectual Property, IP, Media & Tech - Germany
Paul Devinsky was quoted by Globe and Mail on April 11 regarding China Unicom Ltd.’s. new push mail service called "RedBerry" and its possible trademark infringement of the "BlackBerry" name. Mr. Devinsky commented that the consumers' likelihood of confusion would be strong enough for Research in Motion (RIM) to have a persuasive case. Mr. Devinsky also said "RIM's position would probably be enhanced in a Chinese court if China Mobile joined any action against RedBerry. Ultimately, any legal fight would hinge on who registered the trademark and service mark for BlackBerry first in China…"
Paul Devinsky, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the Friday, March 3 release of IPLaw 360 following the Research in Motion (RIM) settlement with NTP, Inc. Mr. Devinsky stated, ""This settlement is not unexpected. Judge Spencer's insistence that he would soon issue a judgment and his impatience that an agreement had not yet been made were clear indicators that the parties needed to come to a business resolution."
Paul Devinsky, Intellectual Property
Kori Anne Bagrowski was quoted in Investor's Business Daily on February 27 after attending the Blackberry hearing.
Paul Devinsky was quoted in The Globe and Mail on February 25 regarding the Blackberry case and stated, "RIM should go gung-ho and implement its design around and be done with it, or it should settle...". "Obviously, there are huge egos at play here on both sides."
Paul Devinsky, Intellectual Property
Boris Uphoff was quoted in the February 18-24 issue of The Economist on Britain's House of Lords debate on anti-ambush-marketing provisions in the London Olympics Bill.
Boris Uphoff, Germany, Intellectual Property, IP, Media & Tech - Germany
William Gaede was recognized in American Lawyer's (February 2006) "Star Laterals of the Year" as one of the 10 most significant lateral moves in the United States in 2005.
William Gaede, Intellectual Property, Life Sciences & Medical Devices
Paul Devinsky was quoted by the National Journal's Technology Daily on January 23 in the article, "Supreme Court Declines Review of Blackberry Dispute." Mr. Devinksy commented, "Basically, RIM has to figure out a way of either getting [U.S. District] Judge [James] Spencer to issue his injunction, and put it on stay pending Patent and Trademark Office developments, or they're going to have to settle..."
Paul Devinsky, Intellectual Property, IP Litigation
David Beckwith was quoted in the January 11 issue of the San Diego Daily Transcript in an article discussing issues surrounding patent law reform proposed by the U.S. House of Representatives.
David M. Beckwith, Intellectual Property, Patent Prosecution
Boris Uphoff was quoted in the January 5 issue of Handelsblatt and several other publications concerning the fight against product piracy in Asia.
Boris Uphoff, Germany, Intellectual Property, IP, Media & Tech - Germany
2005
John Dabney was quoted in the December 2005 issue of Corporate Legal Times in regard to the Lanham Act. Mr. Dabney commented said, "The First Circuit' has definitely established a new framework for applying the Lanham Act extraterritorially," in response to a recent court decision involving a Japanese infringement in the United States.
John J. Dabney, Intellectual Property
Paul Devinsky was quoted in the December 1 issue of the Globe and Mail regarding the Research in Motion intellectual property litigation. Paul commented that the best legal strategy would be to remove any claims of infringement from the start.
Paul Devinsky, Intellectual Property
Ralf Weisser was mentioned in the December issue of JUVE Rechtsmarkt regarding the cooperation of T-Online and Warner Bros. in the video-on-demand sector.
Ralf Weisser, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecommunications
McDermott won the JUVE Award 2005 as best law firm of the year for media and was mentioned among the 50 most renowned business law firms in Germany in the November 25 issue of Handelsblatt.
Ralf Weisser, Intellectual Property, Telecommunications
Rohan Massey was interviewed for the weekly Radio 4 Law in Action program regarding his views on the relationship between the growth of internet use and the growth in reports of identity theft.
Rohan Massey, Intellectual Property, IP, Media & Tech - London, London
McDermott was announced in the 28 October issue of Juve newsline as winner of the Juve award "law firm of the year for media."
European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany
McDermott Will & Emery was mentioned in the Big Suits column in the October issue of IP Law & Business in regard to representing Document Security Systems Inc. in its suit against the European Central Bank alleging that all euro banknotes in circulation infringe its European patent.
, Intellectual Property, IP, Media & Tech - London, London
Boris Uphoff was quoted several times in the September 29 issue of the Handelsblatt regarding concept protection for agencies. He also published an article in the October 2005 issue of Absatzwirtschaft on the same topic.
Boris Uphoff, Germany, Intellectual Property, IP, Media & Tech - Germany
Wolfgang von Frentz was quoted in the August 14 issue of Frankfurter Allgemeine Zeitung concerning an article about the Firm's victory for RTL, RTL II and Vox, all part of the RTL Group, one of the top TV and radio broadcasting groups in Europe, on a successful litigation before the Regional Courts in Leipzig, Munich and Cologne against Netlantic GmbH. Netlantic produces an online video recorder under the name of www.shift.tv and was transmitting programs seen on RTL Group's Free-TV stations via its internet provider. The Firms was retained by RTL Group to represent its three Free TV-stations, RTL Television (Germany's biggest TV-station), RTL II and Vox in a litigation to stop the transmissions of the programs being seen on www.shift.tv.
Wolfgang Freiherr Raitz von Frentz, European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom - Litigation, Telecommunications
McDermott was mentioned in the August 3 issue of Financial Times Deutschland and Süddeutsche Zeitung as the law firm advising DSSI in its lawsuit against the European Central Bank.
, Intellectual Property, IP, Media & Tech - London, London
McDermott was recommended in Legal 500 European Edition 2005 for the practice area of IP: trade marks: "McDermott Will & Emery Rechtsanwälte LLP has strength across all areas of IP law. In trade marks, the firm advised one international client on the adaptation of a trade mark portfolio across territories throughout Europe, and represented others in trade mark opposition proceedings. The firm is also frequently involved in unfair competition issues."
Germany, Intellectual Property, IP, Media & Tech - Germany
McDermott was recommended in Legal 500 European Edition 2005 for the practice area of information technology: "Ralf Weisser's team at McDermott Will & Emery Rechtsanwälte LLP is making great strides, epitomized by the level of work undertaken in the last twelve months by the firm. T-Online instructed the firm on video-on-demand movie licensing agreements and manufacturing agreements for DSL boxes, and Telepool GmbH was advised on a bid for the Kirch Media library. The arrival of Wolfgang von Frentz from Freshfields Bruckhaus Deringer further strengthened a practice very much on the up."
Wolfgang Freiherr Raitz von Frentz, Ralf Weisser, European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany
Bobby Burchfield was listed among the Greater Washington Legal Elite in the August issue of Washington Smart CEO. The magazine contacted thousands of lawyers in the Washington, D.C. area asking them to assess their peers and colleagues and nominate those whom they believe to be among the top Washington, D.C. attorneys.
Bobby R. Burchfield, Intellectual Property, Trial
McDermott was recommended in Legal 500 European Edition 2005 for the practice area of IP: copyright: "McDermott Will & Emery Rechtsanwälte LLP has put a heavy emphasis on building up its IP practice since the entrance of the firm in the German market in 2002. The firm advised several international clients, including Fuji on a variety of matters in 2004, and is frequently involved in associated litigation matters."
Copyrights, Germany, Intellectual Property, IP, Media & Tech - Germany
McDermott was recommended in Legal 500 European Edition 2005 for the practice area of media, entertainment and press: "The arrival of Wolfgang von Frentz from Freshfields Bruckhaus Deringer gives McDermott Will & Emery Rechtsanwälte LLP a considerable presence in the market. His close relationships with major television clients will elevate the firm's already strong standing in film and television broadband delivery matters."
Wolfgang Freiherr Raitz von Frentz, European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany
An article entitled "Express Route" from the August 2005 issue of IP Law & Business features the success that Tracey Thomas, American Express's Chief IP Counsel, has had in developing American Express's IP program. The article notes that in the five years that Tracey has been American Express's Chief IP Counsel, he has increased the number of patents in American Express's patent portfolio from 10 to 50, launched a patent licensing program that has generated millions of dollars in revenue and successfully defended the company in several patent infringement cases. McDermott is mentioned as American Express's patent litigation counsel.
Intellectual Property, IP Litigation
McDermott was recommended in Legal 500 European Edition 2005 for the practice area of telecoms: "McDermott Will & Emery Rechtsanwälte LLP has a significant profile in terms of its key client, T-Online, but the firm's expertise is equally worthy of note. Downloads and streaming, particularly video-on-demand, have been significant areas for the firm."
European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany
Margaret Duncan was quoted in the July 25 issue of the Chicago Sun-Times in an article reporting that the Joe Boxer brand, formerly an exclusive Kmart brand, is being sold. Ms. Duncan commented that both a licensor and licensee must agree to change the terms of their contracts.
Margaret M. Duncan, Intellectual Property
Mauricio Flores was quoted in the June 14 issue of the ABA Journal regarding the U.S. Supreme Court's decision in Merck KGaA v. Integra LifeSciences (03-1237). Mr. Flores said the running "won't have a dramatic impact" on drug companies' research practices.
, Intellectual Property, IP Litigation
Mauricio Flores was quoted in The Wall Street Journal on June 14 in regard to the U.S. Supreme Court's decision, vacated and remanded, in Merck KGaA v. Integra LifeSciences (03-1237), in which Mauricio argued before the Court on behalf of Integra. Mauricio was also quoted in the Associated Press, Law.com, Washington Post,Los Angeles Times, The New York Times, San Diego Union-Tribune and San Francisco Daily Journal.
, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP, Trial
Cathryn Campbell and Mauricio Flores were quoted in the June 13 issue of the San Diego Daily Transcript in regard to the U.S. Supreme Court's decision, in Merck KGaA v. Integra LifeSciences (03-1237). "We would've been disappointed if they came out with a bright line that said everything in pre-clinical research is exempt, and they didn't do that," commented Dr. Campbell. "In fact the Supreme Court in effect adopted the interpretation of the law that Mauricio Flores and his team proposed at the trial." Mr. Flores commented: "This issue has to be approached on a case-by-case basis."
, Intellectual Property, IP Litigation
Mauricio Flores was quoted in the June issue of Corporate Legal Times in an article reporting on Merck KGaA v. Integra LifeSciences, et al. which was argued before the U.S. Supreme Court this spring. Integra argued that Scripps was conducting research for a lot of commercial reasons unrelated to a FDA application. "We think that the evidence show that what was going on at Scripps was not FDA related, that they were just trying to come up with some FDA justification after the fact," commented Mr. Flores, who argued the case before the Supreme Court on behalf of Integra. "They were doing it to generally strengthen the scientific premise of Merck's drug program. The premise is that if you inhibit a particular receptor with anything, whether its' an RGD peptide or something completely different, you can inhibit the growth of blood vessels. So that's a non-FDA related purpose."
, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Terry McMahon was named among the top 30 IP lawyers in the state of California, published on May 2 in the Daily Journal EXTRA.
Terrence P. McMahon, Intellectual Property
McDermott Will & Emery's Intellectual Property, Media & Technology Department's trademark practice ranked 17th in Intellectual Property Today's latest "Top Trademark Firms" survey (May 2005). With 441 trademark registrations secured for clients in 2004, a 38 percent increase from 2003, the Firm ranked in the top five percent among 330 U.S. law firms.
Intellectual Property, Trademark/Brand Protection & Enforcement
Terry McMahon and Vera Elson were quoted in the May issue of Patent Litigation Reporter in regard to Extreme Networks' patent victory against Lucent Technologies. "We are very thankful," commented Mr. McMahon. "It was a very smart, careful jury." The jury's verdict was a "victory for the little guy," according to Mr. McMahon. Vera commented that "Lucent missed the boat," with the technology it chose to pursue.
Vera M. Elson, Terrence P. McMahon, Intellectual Property, IP Legislation, Trial
Mauricio Flores was quoted in the April 21 issue of the San Diego Union-Tribune in regard to representing Integra LifeSciences before the U.S. Supreme Court.
, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Cathryn Campbell was quoted in the New York Times on April 19 and the Boston Globe and Los Angeles Times on April 20 regarding our representation of Integra LifeSciences in Merck RGaA v. Integra Life Sciences before the U.S. Supreme Court.
, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Mauricio Flores was quoted, "Justices to Review Patent Safe Harbor," an article that appeared in the April 11 issue of The National Law Journal regarding Merck KGaA v. Integra LifeSciences. Mr. Flores commented on the case which is scheduled to be argued before the U.S. Supreme Court on April 20. The article examined the Merck case and questioned "how far down the chain of research and experimentation into new drugs does a federal safe harbor statute reach to protect drug manufacturers from liability for patent infringement."
, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Cathryn Campbell and Mauricio Flores were quoted in the April 1 issue of San Diego's The Daily Transcript in the article, "Patent disputed leads local law firm to the U.S. Supreme Court." Mr. Flores will present the case for Integra LifeSciences, which is charging Merck KGaA with patent infringement. Mr. Flores states, "it's always exciting to argue something in front of the highest court in the land, especially something this important." Dr. Campbell notes that "this is a very important case and it's been recognized as such," and "everyone from big pharmaceutical companies and biotech firms to bar associations and law professors will be watching the proceedings."
, Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
Boris Uphoff was mentioned in the April issue of Juve Rechtsmarkt regarding McDermott's representation of Intergraph in Intergraph's litigation against Hewlett- Packard.
Boris Uphoff, Germany, Intellectual Property, IP, Media & Tech - Germany
Thomas Hauss was quoted in the March 20 issue of Welt am Sonntag concerning the fight against product pirates. McDermott is mentioned as a law firm with many clients which are victims of design plagiarism from Asian companies.
Thomas Hauss, Intellectual Property, IP, Media & Tech - Germany
Ralf Weisser and Wolfgang von Frentz published an article in PLC Cross-border Handbooks Communications 2005 (March 2005) on the telecommunications market in Germany.
Wolfgang Freiherr Raitz von Frentz, Ralf Weisser, European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecommunications
McDermott Will & Emery was recommended in the 2005 edition of PLC Cross-border Handbooks Communications 2005 (March 2005) as law firm for Media in Germany.
European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecommunications
Ralf Weisser was identified in the 2005 edition of PLC Cross-border Handbooks Communications 2005 (March 2005) as one of the Top 5 leading lawyers for Media in Germany.
Ralf Weisser, European Telecom, Media & Technology, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecommunications
2004
Judith Toffenetti was quoted in the December 10 issue of The Miami Herald regarding ways a company might stretch the life of patent or created new patents for older drugs. Ms. Toffenetti said different crystal forms, different dosage forms, molecular variations on the drugs and combinations of drugs are among the ways to extend the life of a drug.
Judith L. Toffenetti, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
Cathryn Campbell was quoted in the November 2004 issue of California Lawyer in regard to the success of the biotech industry, now exceeding $39 billion and the success is due in large part to the amount of litigation. Cathryn Campbell states, "[V]irtually every product that's come out of biotech has been the subject of a lawsuit." "Those lawsuits have included everything from infringement to inventorship to licensing to whether royalties have been sufficient." Cathryn Campbell explains how much of the litigation stems from the early licensing agreements and how the royalty base is effected. She concludes that "[E]ven though we're getting more sophisticated, there will be a lot of disputes, because of the amount of money at stake and the difficulty of writing prospective licenses...."
, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
Chambers USA 2004, states clients were quick to commend [the IP group] as one that is "focused on cost control, easy to work with and understanding of all the technology issues." The firm dedicates a huge amount of resources to the IP arena, with over 40 attorneys in the Washington, D.C. office covering patent litigation, for example. Peers and clients alike praised its work at the ITC as "an example of real expertise." Operating on a cross-office basis, the firm uses the expertise of colleagues in California for its hi-tech clients.
Intellectual Property, International Trade Commission, IP Litigation
Robert Zelnick was quoted in the August 30 issue of The New York Times in regard to Donald Trump's attempt to register the trademark "You're Fired!" with the U.S. Patent & Trademark Office. The USPTO has initially rejected Trump's application to register "You're Fired!," because it could cause confusion with "You're Hired!" -- an existing registered trademark for an educational board game designed to give middle-school students a taste for the job hunt. The article reported that legal experts say conflicts were common early in the registration process, as government lawyers scrutinize applications for similarities between the sight, sound and source of the marks. "It's not just a matter that consumers would overlook the difference between the F and the H," Mr. Zelnick commented.
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
Terry McMahon was recognized as one of the "Best in the West," in an article published in the August 2004 issue of California Lawyer. The article which featured California's leading business lawyers in a range of practice areas was a result of a collaboration between California Lawyer and Chambers & Partners, the London-based publishing company that annually ranks lawyers by practice as a result of in-depth interviews with clients and peers. Mr. McMahon was one of three lawyers recognized in the area of IP.
Terrence P. McMahon, Intellectual Property, IP Litigation
Vera Elson was quoted in the July 6 issue of The Daily Journal Extra article entitled "The X Factor." As a predominant female litigator in California, Vera commented on a colleague's experience in the field.
Vera M. Elson, Intellectual Property
Marc Brown was quoted in the March 12 issue of Silicon Valley Biz Ink in the article, "Illegal P2P File Downloading May Threaten Employers." The article concerns companies the potential liability for companies if their employees use their network to illegally download copyrighted files using peer-to-peer file-sharing software. Mr. Brown commented "there hasn't been a court ruling on whether or not a company can be held liable for copyrighted content on its network." Mr. Brown says a company can say file sharing is not part of an employee's job and, as a result, can't be held liable if an employee illegally downloads material on the company network. However, Mr. Brown believes that if an employee illegally downloads copyrighted material at work and then stores it on the company server, the company could be held liable if management knew the material was stored there and did not remove it.
Marc E. Brown, Intellectual Property
In the March 2004 issue of IP Law & Business, McDermott Will & Emery was recognized in the annual patent-quality survey conducted by PatentRatings, LLC and was listed as one of the top firms that creates value for our clients’ patents. PatentRatings ranks firms based on patents issued in six categories, biotechnology, chemistry, electrical, medical, computer and software and mechanical. McDermott placed within the top 5 of 3 categories — chemical, electrical and mechanical patents; and was one of only three large full-service firms to make it on to the list. The number of patents issued is not a factor in the ranking of firms but rather the number of times the patent is cited in subsequent patents. In this way, PatentRatings evaluates and ranks each firm based on the value the firm creates for its clients.
Intellectual Property, Patent Prosecution
Ray Lupo and Paul Devinsky were quoted in the National Law Journal on February 9 on the Federal Circuit's shifting views on how to define the words or claims that describe the scope of a patent. In Texas Digital Systems it ruled that dictionary definitions are the first source for construing the meaning of a claim. "The court backed off on Texas Digital," commented Mr. Lupo. It has tried to harmonize Texas digital with a 1996 decision (Vitronics) where it established tools courts should use to evaluate claim constructions. In the Vitronics decision specifications in the patent were considered the most important tool. "In Judge Richard Linn's view, you go to the dictionary first, and only if the specification is inconsistent with the dictionary need it be considered," commented Mr. Devinsky. "In Judge Michel's view, the specification has to be consulted in every claim construction."
Paul Devinsky, Raphael V. Lupo, Intellectual Property, IP Litigation
Matthew Weil was quoted on Newsday.com January 9 regarding a trademark infringement case between KP Permanent Make-up Inc. and Lasting Impressions. The article explained that the two companies, who both sell bottled pigment to salons for the purpose of tattooing permanent makeup, are fighting over the use of "micro color" as a trademark. Mr. Weil commented that the Supreme Court will decide whether there can be infringement by one company's use of the word "micro color" when another company has that term as part of its trademark-protected logo.
Matthew F. Weil, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
2003
McDermott Will & Emery’s Intellectual Property Department was recognized in IP Law & Business’ third annual survey on which firms represent the world’s largest companies, "Global Guardians" (November 2003 issue). The information came straight from IP chiefs at Global 100 companies, who were asked which firms they used for IP work. The 48 companies that responded to the survey resulted in 29 firms being listed. MWE was listed as IP counsel by three of the world’s largest companies, Hitachi, Nissan Motor and Toyota Motor.
Stephen Becker was quoted in the Wall Street and Technology on October 1 regarding Reuters lawsuit against Bloomberg. Mr. Becker stated that "If Reuters prevails in this litigation there may be retroactive damages, future payments, or even an order prohibiting Bloomberg from using the patented technologies". Mr. Becker continued by stating, "During litigation there’s a huge war chest available to redo whatever research the patent examiner has already done." Mr. Becker notes if the precedent prevails, the most likely outcome would be either payment or settlement.
Stephen A. Becker PC, Intellectual Property, IP Litigation
Marc Brown was quoted in the September 24 issue of the Los Angeles Daily Journal in the article, "Advise and Dissent." This article addressed scientific litigation in which the use of technical advisers is done in the judges cambers, behind closed doors. Mr. Brown commented "any time a judge is advised by someone in private, the lawyers get nervous because they have less control." Mr. Brown continued "such appointments could prove particularly critical in patent cases, where there's a high premium placed on a technical expert's opinion. The problem is that many people with technical background apply a much higher standard of what can and cannot be patented than the law requires. The party seeking to invalidate a patent may benefit from the technical expert."
Marc E. Brown, Intellectual Property
McDermott Will & Emery was mentioned in the August 2003 issue of Intellectual Property Today for successfully representing Burnham Institute and Integra LifeSciences, by obtaining a significant victory related to patent infringement in the context of biomedical research.
Intellectual Property, IP Litigation, Life Sciences & Medical Devices, Life Sciences - IP
McDermott Will & Emery was mentioned in the July 21 issue of the Legal Times in an article entitled, “Nice Niche: Firms That Lead in ITC Patent Cases.” It listed the Firm with eight ITC patent cases in 2002.
Intellectual Property, International Trade Commission
McDermott Will & Emery's Intellectual Property Department was recognized in Intellectual Property Today's Top Trademark Firm survey, published in its May 2003 issue. McDermott Will & Emery ranked 35th (the Top 10th percentile) of 358 U.S. law firms with trademark practices. The Firm's IP Department issued 371 trademark registrations in 2002, which is a 44% increase from 2001.
Intellectual Property, Trademark/Brand Protection & Enforcement
In its May 2003 issue, Intellectual Property Today ranked McDermott Will & Emery 35 of top trademark firms.
Intellectual Property, Trademark/Brand Protection & Enforcement
McDermott Will & Emery's Intellectual Property Department was recognized in IP Law & Business' (formerly IP Worldwide) third annual report on who's winning all the business, "Swords & Shields," published in its May 2003 issue. McDermott Will & Emery ranked as one of the Top 10 defense firms in the U.S. and was 11th among the top 41 law firms to be recognized as counsel hired by plaintiffs and defendants involved in patent cases filed in 2002. The Firm's IP Department filed a total of 30 patent cases on behalf of Firm clients and defended 22 cases in 2002.
Intellectual Property, IP Litigation
Toby Kusmer was quoted in the April 26 issue of The Boston Globe regarding a trademark dispute between a small cooperative art gallery and Intel Corp. "As a trademark owner you worry that your trademark may become generic, or diluted," commented Mr. Kusmer. He continued by commenting that the pursuit of 'Art Inside' is a "stretch…There is very little likelihood of confusion."
Toby H. Kusmer PC, Intellectual Property, Trademark/Brand Protection & Enforcement
Cathryn Campbell was quoted in the April 11 issue of the Boston Business Journal regarding how companies merge their intellectual property during a corporate merger or acquisition. "Often, firms merge to get the intellectual property, particularly in the biotech and pharmaceutical industry." Ms. Campbell continued, "Before the merger, they were in essence competitors; now they own the competing technologies. You have two companies working in the same field, or they're working to find treatments for the same disease, and they'll realize by combining technologies and approaches they're in a better position to tackle that."
, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
McDermott Will & Emery was mentioned in the April issue of Intellectual Property Today regarding the acquisition of Campbell & Flores, a San Diego-based biotechnology intellectual property law firm.
, Intellectual Property, Life Sciences & Medical Devices
McDermott Will & Emery was mentioned in the April 1 issue of Managing Intellectual Property regarding the addition of the 10-strong biotech IP boutique Campbell & Flores.
, Intellectual Property, Life Sciences & Medical Devices
McDermott Will & Emery was mentioned in the March 4 issue of San Diego Daily Transcript in regard to adding 10 lawyers and professionals from Campbell & Flores, a San Diego-based biotechnology intellectual property law firm.
, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
McDermott Will & Emery was mentioned in the March issue of Intellectual Property Today in regard to the Firm's IP victory for CIBA Vision in the U.S. Court of Appeals for the Federal Circuit and the victorious multi-patent litigation settlement on behalf of Three Rivers Pharmaceutical.
Intellectual Property, IP Litigation
Toby Kusmer was quoted in the February 28 issue of The Boston Business Journal regarding the protection of copyrights. Mr. Kusmer commented that many companies have difficulty stopping knockoffs of their products from coming into the country.
Toby H. Kusmer PC, Copyrights, Intellectual Property
Terry McMahon was listed as one of California's top intellectual property lawyers in the cover story, "Think Big," which ran in the Daily Journal EXTRA on February 24. Mr. McMahon, who was among 25 IP lawyers recognized, was noted for both his success in the courtroom on big ticket IP litigation and his efforts to help build the Firm's IP practice. Click here to see an excerpt.
Terrence P. McMahon, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the February 21 issue of Hedge World in regard to the Sandor Document dispute, and explaining the two types of prior art defenses, anticipation and obviousness, in U.S. patent litigation. Mr. Devinsky outlined that anticipation requires a single piece of prior art that teaches everything within the scope of the plaintiff's patent claims.
Paul Devinsky, Intellectual Property
McDermott Will & Emery was mentioned as counsel for Wesley Jessen in its patent infringement case against Bausch & Lomb's PureVision contract lenses. On February 20, the Asia Intelligence reported on the Federal Circuit Court's decision to uphold the lower court decision which prevents the sale of PureVision contact lenses in the United States.
Intellectual Property, IP Litigation
Ray Lupo was quoted extensively on February 11 in a IDG News Service wire, which appeared as an article on February 11 in InfoWorld. The article reported on the SCO Group and the Linux legal war. Mr. Lupo commented that a weak economy can open the doors for revenue-starved vendors to file intellectual property claims.
Raphael V. Lupo, Intellectual Property, IP Litigation
Wolfgang von Frentz was mentioned in Handelsblatt on January 23 regarding data protection.
Wolfgang Freiherr Raitz von Frentz, Germany, Intellectual Property, IP, Media & Tech - Germany
McDermott Will & Emery was mentioned in the January issue of Intellectual Property Today in regard to the success of the Firm's IP litigation team representing Roxio, Inc. in Caffarelli v. Adaptec.
Intellectual Property, IP Litigation
2002
Anthony de Alcuaz, partner-in-charge of our Silicon Valley office, was named one of California's Managers of the Year, published in the Daily Journal EXTRA on December 30. The Daily Journal Extra, a supplement to the Los Angeles Daily Journal and San Francisco Daily Journal, recognized 13 law firm leaders, "who successfully guided their California offices" in 2002. The profile on Mr. de Alcauz included a summary on the growth of MW&E's Silicon Valley office through lateral acquisition since 2000, when Mr. de Alcuaz joined the Firm. The addition of Terry McMahon in January 2001 and the international tax group from Fenwick & West, which included Frederick Chilton, Paul Dau, John Ryan and James Garahan in March 2002 were also mentioned.
Anthony de Alcuaz, Intellectual Property
On December 2, Marc Brown was quoted on KNX 1070 radio during the business news segment. Mr. Brown commented on business method patents.
Marc E. Brown, Intellectual Property, Software & IT Services
Marc Brown was quoted in the November 25 issue of Fortune magazine, "Reverse Engineering." Mr. Brown, in response to a reader's inquiry regarding reverse engineering, commented that "software can no longer be reverse-engineered with impunity, which is welcome news to those seeking to prevent copying."
Marc E. Brown, Intellectual Property
Paul Devinsky was quoted in the November 16 issue of International Financing Review regarding the newest U.S. patent law which provides a right of appeal in patent re-examination proceedings. Mr. Devinsky commented on business method patents and the inability to local "prior art," in previous business method patent filings.
Paul Devinsky, Intellectual Property
Marc Brown was quoted in the November 1 issue of Electronic Business, "Protecting the Crown Jewels" in regard to preventing intellectual property theft.
Marc E. Brown, Intellectual Property
McDermott Will & Emery was identified as trademark counsel for three of the Fortune Global 50 companies, as published by IP Worldwide in its November 2002 issue. McDermott Will & Emery's Trademark Practice tied for second-place for most prosecution mentions among the Global 50 companies.
Intellectual Property, Trademark/Brand Protection & Enforcement
McDermott Will & Emery's Boston office was ranked second in Mass High Tech's "Rank & File" survey, published on September 30, which ranked New England's top patent law firms by the number of patent applications.
Intellectual Property, Patent Prosecution
Paul Devinsky was quoted in the September 5 issue of Financial Times regarding a 30-year old document, unearthed in a Chicago basement that could provide evidence of "prior art" in an electronic trading patent dispute. Mr. Devinsky commented that if the document is prior art, the Wagner patent, which registered the idea of electronic trading for commodity futures in 1990 could be invalid.
Paul Devinsky, Intellectual Property
Marc Brown was quoted in the August 1 issue of Electronic Business, "Patent Ruling Reversed" in regard to a U.S. Supreme Court decision which reversed a circuit court ruling that severely limited the scope of infringement claims inventors could make in certain patent suits.
Marc E. Brown, Intellectual Property
McDermott's patent victory for CIBA Vision, identified as a "high-stakes patent suit" was mentioned in the July 8 issue of Legal Times. The Firm's legal team included partners Ken Cage, Ray Lupo, Tom Steindler and Chuck Work, and associates Pascale Bishop and Dan Bucca.
Intellectual Property, IP Litigation, Trial
McDermott Will & Emery was ranked 17th in Managing Intellectual Property's survey of the biggest IP practices in terms of number of lawyers, published in its July issue.
Marc Brown was quoted in the June 28 issue of Reuters, "Software Errors Cost Billions." Mr. Brown commented on the cost to consumers if software makers were held liable for security breaches.
Marc E. Brown, Intellectual Property
Marc Brown was quoted in "Watchdogs: Let Laws Get Software Makers," ZDNet News, June 18, discussing IP law and protection.
Marc E. Brown, Intellectual Property
Anthony de Alcuaz was quoted in the June 13 issue of The Recorder in reference to his prior work at Howard, Rice and his reasoning for joining McDermott the Firm’s large national IP practice and its higher profits per partner.
Anthony de Alcuaz, Intellectual Property
McDermott Will & Emery was listed in Intellectual Property Today’s Top Trademark Firms, published in the its May 2002 issue. McDermott was ranked among the top 50 firms, having issued 258 trademarks in 2001.
Intellectual Property, Trademark/Brand Protection & Enforcement
The Firm's Intellectual Property Practice on behalf of client Medtronic in Cordis Corp. v. Medtronic AVE was named the "Defense Win of the Month" in the April 22 issue of The National Law Journal. On December 21, 2000, a jury awarded Cordis Corp. $271.1 million in damages in a consolidated civil action against Medtronic AVE. Following this adverse verdict, Medtronic asked McDermott Will & Emery to step in and handle the post-trial briefs. MW&E's legal team led by Ray Lupo and included Natalia Blinkova. Mr. Lupo argued the motion and successfully convinced Chief Judge Sue Robinson of the District Court of Delaware that Medtronic AVE had not infringed the Palmaz-Schatz patents, resulting in the overturning of the jury's verdict and damages award.
Intellectual Property, IP Litigation, Trial
Cathryn Campbell was honored by UCSD Athena, an organization that unites women executives in high tech and life sciences companies and the firms that support them, receiving the organization's Individual Pinnacle Award in the service category in April 2002. Click here to reed the USCD Athena press release.
, Intellectual Property, Life Sciences & Medical Devices, Life Sciences - IP
Toby Kusmer was quoted in the April 12-18 issue of the Boston Business Journal in regard to waiting for the U.S. Supreme Court to decide on the Festo v. SMC case, which could weaken and devalue patents by narrowing the scope of protection currently afforded to patent holders.
Toby H. Kusmer PC, Intellectual Property, Patent Prosecution
Toby Kusmer was quoted in the March 29 issue of the Boston Business Journal in regard to the lawsuits arising in the biotech industry. The article mentions that biotech lawsuits sometimes get emotional because the executives involved invented the technology or product in dispute.
Toby H. Kusmer PC, Intellectual Property, Life Sciences & Medical Devices
Terry McMahon and the Firm's West Coast IP Group were profiled on the front page of the March 14 issue of the San Francisco Daily Journal. Mr. McMahon, whose continued success in the courtroom is expounded upon by multiple third parties, was called the "Go-To Guy in the Valley for Intellectual Property." The article highlights McDermott's IP practice by mentioning the Firm's recent successes, client-base and recruitment of leading lawyers.
Terrence P. McMahon, Intellectual Property, IP Litigation, Trial
Ray Lupo was mentioned as counsel for the appellants in Aptix Corp., et. al. v. Quickturn Design Systems Inc., which was ranked by in the March 4 issue of Legal Times as one of the top 10 patent decisions from the U.S. Court of Appeals for the Federal Circuit from October 2001 through January 2002.
Raphael V. Lupo, Intellectual Property, IP Litigation, Trial
McDermott Will & Emery was listed in the May 2 issue of Corporate Counsel as one of top law firms that global companies call when they need U.S. patent litigation and patent prosecution.
Intellectual Property, IP Litigation, Patent Prosecution
Intellectual Property Practice was recommended as one of "Six Strong IP Law Firms" in an article published in the March issue of Washington Business Forward. The article, "Smart Moves on Intellectual Property," lists three IP boutique firms and three general practice law firms. The article addresses the benefits and sales pitch of general practice firms like McDermott arguing they can offer clients a broader range of services. Ray Lupo agreed commenting, "Patent and IP boutiques don't have some of the broader range of expertise that comes up in patent cases. We sell that we have both." McDermott was also mentioned as having 140 IP lawyers, as well as currently handling 60 patent infringement cases in federal courts and at the International Trade Commission.
Intellectual Property, IP Litigation, Patent Prosecution
Terry McMahon was profiled in "A New Meaning for 'Win-tel'" in the March issue of American Lawyer. Included with the Big Suits report on the Intel v. Broadcom case, the article focused on Terry's 3-0 patent litigation record against Intel.
Terrence P. McMahon, Intellectual Property, IP Litigation, Trial
McDermott Will & Emery was recommended as a firm best used for IP in the Intellectual Property 2002 survey published in the February issue of Global Counsel. The Firm was described as having "a developing department, now noted for patent and IT-related issues."
Terry McMahon was profiled as one of the "biggest ripples in the lateral pond" (2001) in the February 2002 issue of American Lawyer.
Terrence P. McMahon, Intellectual Property, IP Litigation
2001
Marc Brown was quoted in the December 12 issue of Computer & Online Industry Litigation Reporter in the article, "Appeals Court Lifts Injunction Against BN's Online Ordering Method." Mr. Brown commented on a decision by the U.S. Court of Appeals for the Federal Circuit regarding the requirements for proving the invalidity of a patent.
Marc E. Brown, Intellectual Property
Toby Kusmer was quoted in the August 1 issue of The Boston Globe in regard to the recent success of Aboimed, Inc.'s self-contained mechanical heart and the lack of intellectual property protection the company has on the heart. The company chose to keep the technologies and processes as trade secrets rather than filing for patents because of the limited length of patents. Mr. Kusmer commented on the risks of trade secrets, "once somebody independently invents it or discovers it, you have no way of stopping them for using it."
Toby H. Kusmer PC, Intellectual Property, Patent Prosecution
Marc Brown was quoted in the July 10 issue of the Los Angeles Daily Journal regarding pending patent applications in the article, "Critics say 'Festo' Ups Patent Costs."
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the July 2 issue of the San Francisco Daily Journal in the article, "Patented Problems" in regard to pending patent applications. Mr. Brown commented "there's really not much you can do, but if you've filed a series of amendments and you're not feeling too good about it, you can refile the case again if you don't mind losing the filing date." He continued "or you may file a continuing application and refile your original claim."
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the July issue of Twin Cities Business Monthly, "Impending Changes" discussing IP law and protection.
Marc E. Brown, Intellectual Property
On June 27, theOrange County Business Journal reported on McDermott's increase of intellectual property legal work. Fay Morisseau, partner-in-charge of the Orange County office, commented on the growth of the Firm’s Orange County practice and mentioned the office’s 50% growth over the past nine months and its initiative to add a dozen more lawyers by year’s end
Fay Morisseau, Intellectual Property
Marc Brown was quoted in the June 12 issue of Industrial Week in the article, "Viewpoint - Personal Computing: Ward Off Internet Legal Woes." Mr. Brown commented on how users can protect themselves regarding copyright and trademark issues.
Marc E. Brown, Intellectual Property
Allan Schare was mentioned in the May 15 issue of the Intellectual Property Litigation Reporter in regard to representing Juno Online Services, Inc. in NetZero Inc. v. Juno Online Services Inc.
Allan L. Schare, Intellectual Property, Trial
Marc Brown was quoted in the May 14 issue of Electronic News, "Rambus Ruling Could Have Broad Impact." Mr. Brown commented on the impact of this decision on future litigation involving Rambus, Micron and Hynix.
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the May 11 issue of the San Francisco Daily Journal, "Fraud Verdict Imperils Tech Company's Income." Mr. Brown commented "typically fraud requires an affirmative misrepresentation of fact. ... failure to disclose is not a sufficient basis for fraud."
Marc E. Brown, Intellectual Property
Allan Schare was mentioned in the May 8 issue of Telecommunications Industry Litigation Reporter & the April 2001 issue ofe-Patent Litigation Reporter in regard to representing Juno Online Services Inc.
Allan L. Schare, Intellectual Property, Trial
McDermott Will & Emery was mentioned in the May 7 issue of The National Law Journal as a member of the victorious legal team representing Juno Online Services in a recent patent dispute against NetZero.
Ray Lupo was mentioned in "Standouts," in the April 30 issue of The National Law Journal. Mr. Lupo was included in "a highly specialized group of practitioners from all over the country," that have appeared before the U.S. Court of Appeals for the Federal Circuit.
Raphael V. Lupo, Intellectual Property
Allan Schare was mentioned in the April 24 issue of Computer & Online Industry Litigation Reporter in regard to their representation of Juno Online Services, Inc. in NetZero Inc. v. Juno Online Services Inc.
Allan L. Schare, Intellectual Property, Trial
Marc Brown was quoted in the March 8 issue of the San Francisco Daily Journal, "Patent Pending" in regard to business method patents.
Marc E. Brown, Intellectual Property
McDermott Will & Emery's Intellectual Property Practice was ranked ninth in IP Today's annual survey of top patent firms published in March 2001. The survey is based on the number of patents issued by the U.S. Patent & Trademark Office in the previous calendar year, ranks McDermott third among general practice firms with a total of 1530 patents issued in 2000.
Intellectual Property, Patent Prosecution
Robert Kohn and Allan Schare were mentioned in the March 2001 issue of American Lawyer in regard to their representation of Juno Online Services, Inc. in NetZero v. Juno.
Allan L. Schare, Intellectual Property, Trial
Marc Brown was quoted in the February 12 issue of Forbes, "Domain Name Loss for Boss."
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the February 12 issue of Electronic News, "Up Next in the Realm of Lawsuits: Globalization." Mr. Brown commented "in exchange for that, the applicant gets the right to seek compensation for infringement after publication if the patent is eventually issued. Plus you can get it published immediately, if you want to. It is retroactive. You file, ask that the application is published, then if it gets issued, you can sue for infringement."
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the February 9 issue of the San Francisco Daily Journal, "The Patent Jam." Mr. Brown commented on the legally protected right to make crustless, peanut-butter-and-jelly sandwiches. "A lot of people think that in order to get a patent the item has to be some great innovation, but that is not so." He continued, "the standard of patentability is the invention's uniqueness both in terms of the public's familiarity with the object and the object's prior existence ."
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the February 9 issue of the Los Angeles Daily Journal, "Rambus Lawyers Travel the Globe to Enforce Patent Rights." He commented on issues related to patent validity. This article also appeared in the February 9 issues of the San Francisco Daily Journal, the Washington Daily Journal, the Colorado Daily Journal, the Arizona Daily Journal and the Nevada Daily Journal.
Marc E. Brown, Intellectual Property
Marc Brown was quoted in the January issue of Software Law Bulletin, "Federal Circuit Severely Restricts Use of Doctrine of Equivalents."
