Media Mentions
2012
“Brain Drain: Protecting Your Organisation’s IP”
CIO, February 3, 2012
Mark Itri recalled an incident where, when he was on a plane going to visit a major aircraft manufacturer, he overheard a conversation about new jet engines between company employees who “were talking really loud. Everyone could hear. All over the [engine] schematics were the words ‘confidential and proprietary.’” When Mr. Itri arrived at the manufacturer he repeated what had happened and stated, “This is how you lose your trade secrets.”
Mark J. Itri, Intellectual Property, Patent Prosecution
“Firm Life”
Chicago Lawyer, February 1, 2012
Erin Arnold, Kevin Miller, Brett Johnson and Maureen O’Brien, Amol Parikh and Adam Sherman were cited as the six McDermott Chicago office lawyers among 29 recently named to the Firm’s partnership.
Erin Arnold, Brett R. Johnson, Kevin L. Miller, Maureen O'Brien, Amol Parikh, Adam Sherman, Airport & Aviation, Employee Benefits, Health, Intellectual Property, IP Litigation, Private Client, Trial
“Porn Site Disputes Are Litmus Test”
The Daily Journal, January 26, 2012
Lynne Boisineau questioned efforts to streamline the method for resolving disputes over unauthorized attempts to apply legitimate company or personal names to .xxx adult websites. Ms. Boisineau stated that panel decisions reached by the current process “go through all the evidence and explain why it comes out that way. The opinions are very helpful tools when you’re later drafting a complaint, because you can see what’s important to the panel.” She added that the decisions can also be used by winners to head off similar problems, “so other people can clearly see why they’re going to lose.”
Lynne Boisineau, Intellectual Property, Patent Prosecution
“Court of Appeal Dismisses William Hill’s 32Red Appeal”
The Lawyer.com, January 25, 2012
Hiroshi Sheraton was noted for his role in the successful Appeal Court defense of a High Court infringement ruling that involved an online gambling website.
Hiroshi Sheraton, Intellectual Property, IP Litigation
“Louboutin Presses 2nd Circ. to Reverse Red Sole Mark Ruling”
Law360, January 24, 2012
Robert Zelnick, commenting on a high-profile effort by French fashion goods maker Louboutin to seek trademark protection for its use of red as shoe sole color, said that the company has “created a new mouse trap … by making the sole of a shoe such an enormous source identifier.” However, Mr. Zelnick added, getting trademark exclusivity for a color may be difficult because “there are concerns about color depletion. There are only so many primary colors.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“Kappos Guides PTO As It Revs Up for New Law”
National Law Journal, January 23, 2012
Leigh Martinson praised Patent & Trademark Office director David Kappos as “doing a fantastic job,” adding of Mr. Kappos that “his communication has been clear, concise and on-point.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“McDermott Moves to Jamboree”
Orange County Business Journal, January 23, 2012
Fay Morisseau called the move of McDermott’s Orange County, CA office to larger quarters “a sign of very significant growth in our client demands.” The office during the past 12 months has had the biggest increase in attorneys of any Orange County law firm, with a particularly strong intellectual property performance. “We’re happy to be moving into much bigger quarters,” said Mr. Morisseau. “We have grown out of the (prior) office."
Fay Morisseau, Intellectual Property, IP Litigation
“Inventor of Method for Making Compound Is Joint Inventor of Compound’s Patent Claim, Federal Circuit Rules”
National Law Journal, January 23, 2012
Paul Devinsky warned that a Federal Circuit decision finding the inventor of a process to synthesize a compound to be co-inventor of the compound itself means that patent applicants should be wary of over-broad claims that avoid prior art. If a patent genus (class) is innovative, Mr. Devinsky said, “You have to look to people who either devised a method of making the genus, [or] developed compounds that fall within the genus because they are inventors.”
Paul Devinsky, Intellectual Property, IP Litigation
“McKesson’s Bid to Revive Pill Dispenser IP Suit Nixed”
Law360, January 12, 2012
Blair Jacobs, Charles Hawkins, Christina Ondrick and Christopher May were noted as co-counsel to McKesson Automation Inc. in seeking to overturn a Delaware federal court’s ruling that a Swiss logistics company had not infringed two McKesson patents.
Charles J. Hawkins, Blair M. Jacobs, Christopher L. May, Christina A. Ondrick, Intellectual Property, IP Litigation
“Adidas Exits Lodsys’ Product Patent Data Suit”
Law360, January 11, 2012
Michael Shanahan and John Low represented Adidas America Inc. in exiting through settlement a patent infringement lawsuit brought by a patent licensing company against Adidas and a number of other companies.
John C. Low Ph.D., Michael E. Shanahan, Intellectual Property, IP Litigation
“Area Intellectual Property Firms Hungry for Talent”
Boston Business Journal, January 6, 2012
Sarah Chapin Columbia assessed the strong demand for intellectual property services in the Boston area, noting that McDermott has “added several people in the IP group here in Boston, and I know in looking at the firms I deal with on a regular basis that others have expanded staffing as well.” Ms. Columbia, who is pictured in the article, said that for McDermott, “We have seen increased hiring in all areas, but life sciences remains particularly strong in this market.”
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Interview: Common Misperceptions About Monetizing Patents”
Thomson Reuters “Legal Current,” January 6, 2012
Yar Chaikovsky stated in this podcast interview that, for “producing companies in the business of making products,” monetizing a patent involves completely new issues once the patent is prosecuted. “You really need to focus on, are you willing to back it up with litigation, because you cannot monetize through licensing without being willing to incur the risk of litigation,” Mr. Chaikovsky explained. “If you are not willing to put up a fight, everyone else knows that therefore you cannot monetize your patent.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“High Court’s USPTO Evidence Ruling Could Sting Agencies”
Law360, January 6, 2012
Paul Devinsky contended that an anticipated Supreme Court of the United States ruling on the extent of new evidence that patent applicants can present to a district court after the U.S. Patent and Trademark Office has rejected their application will likely have limited impact because the new patent reform law allows for a direct appeal only to the Federal Circuit, not a district court.
Paul Devinsky, Intellectual Property, Patent Prosecution
“Amazon Resolves Kindle Patent Feud”
Law360, January 4, 2012
Yar Chaikovsky, Michael Martin and David Beckwith were co-counsel to Amazon.com Inc. in settling a dispute over claims that Amazon’s Kindle e-reader violated several digital communication and network patents.
David M. Beckwith, Yar R. Chaikovsky, Michael F. Martin, Intellectual Property, IP Litigation
2011
“ITC to Probe Rovi’s IP Claims Against Vizio, Haier”
Law360, December 16, 2011
Joel Freed, David Larson, Hong Lin, Yar Chaikovsky, Jeremiah Armstrong, Cary Chien, Christopher Paulraj and Alexander Ott were listed as representing Rovi Corporation in an International Trade Commission claim that two importers of televisions and Blu-ray players infringe Rovi’s patents for interactive program guides and parental control technology.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Alexander P. Ott, Christopher G. Paulraj, Intellectual Property, IP Litigation
“Fighting Movie Piracy Seen Likely to Swamp U.S. Trade Agency”
Bloomberg News, December 7, 2011
Paul Devinsky said that a proposal for the International Trade Commission to do more policing of foreign websites accused of Internet and media piracy would require new judges, support staff, hearing rooms and an expansion of the Office of Unfair Import Investigations. “You’re not going to see too many of these foreign websites show up with lawyers,” Mr. Devinsky noted. “Someone’s going to have to stand up for the public interest to make sure there’s no overreaching.”
Paul Devinsky, Intellectual Property, Patent Prosecution
“On the Move: New Partners”
The Recorder, December 2, 2011
Eric Levinrad (Los Angeles), Lynne Boisineau and Ahsan Shaikh (both Orange County) were noted as California office lawyers among the 29 attorneys firm-wide elected to McDermott’s partnership effective January 1, 2012.
Lynne Boisineau, Eric Levinrad, Ahsan A. Shaikh, Intellectual Property, IP Litigation, Patent Prosecution
“Washington’s Best Lawyers”
Washingtonian, December 2011
Included in this assessment of “Washington’s very best legal talent” were McDermott DC office partners Margaret Warner (insurance litigation), Stephen Becker and Joel Freed (both intellectual property) and Blake Rubin (tax).
Stephen A. Becker PC, Joel M. Freed, Blake D. Rubin, Margaret H. Warner, Insurance, Intellectual Property, IP Litigation, Patent Prosecution, Tax
“Despite Judges Reining in Damages Awards, Patent Litigation Shows Growth”
Corporate Counsel, December 1, 2011
Sarah Chapin Columbia noted that the Federal Circuit, attempting to reduce damages awards in patent suits, has “made it a mission to get the word out about how damages should be calculated, and that’s had an impact on recoveries.” However, despite the new postgrant review process provided in the patent reform law to reduce patent litigation, Ms. Columbia said “I don’t think there will be the rush to postgrant review that some people are claiming, because the cost of giving up later court arguments is pretty high.” As a result, she doubted that the law “is going to have too much of an effect on [litigants] and the volume and frequency with which they file.”
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“A New Mother of Invention: After Years of Setbacks, Patent Reform Finally Makes It Through”
ABA Journal, December 2011
Yar Chaikovsky said that, although the America Invents Act patent reform law made many patent system changes that had long been sought, it is unlikely to satisfy the business and patent communities for long. “Within two to three years, we will be talking about patent reform again. You can bank on it,” Mr. Chaikovsky asserted.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Power Circuit: Morgan Lewis Loses One Partner, Gains Another”
Washingtonian, November 30, 2011
Christopher May, Rita Weeks, David Crump, Alison Levin Nadel, Nathaniel Dorfman, Caroline Hong Ngo, Timothy Shuman, Amy Hooper Kearbey, Joanna Kerpen were cited as the Firm’s ten new Washington, D.C. partners effective January 1, 2012. The article also said that the Firm welcomed a new partner from Morgan Lewis & Bockius, Karol Lyn Newman who has joined the Energy Advisory practice.
David O. Crump, Nathaniel J. Dorfman, Amy Hooper Kearbey, Joanna C. Kerpen, Christopher L. May, Alison Levin Nadel, Karol Lyn Newman, Caroline Hong Ngo, Timothy S. Shuman, Rita Weeks, Employee Benefits, Energy Advisory, Health, Intellectual Property, International Tax, IP Litigation, Patent Prosecution, Tax
“Chinese Wheel Co. Fights ITC Secrets Ruling in Fed. Circ.”
Law360, November 29, 2011
Joel Freed, Geoffrey Vance and Steven Hoeft were noted as McDermott co-counsel to a Chinese importer of railway wheels in appealing to the full Federal Circuit Court of Appeals for a rehearing of an International Trade Commission trade secrets ruling.
Joel M. Freed, Steven H. Hoeft PC, Geoffrey A. Vance, Intellectual Property, IP Litigation, Trial
“In the Law Firms”
Chicago Daily Law Bulletin, November 28, 2011
Erin Arnold (Trial), Brett Johnson (Employee Benefits), Kevin Miller (Health), Maureen O’Brien (Employee Benefits), Amol Parikh (Intellectual Property) and Adam Sherman (Private Client) were the Chicago office lawyers among the 29 new global partners that McDermott announced effective January 1, 2012.
Erin Arnold, Brett R. Johnson, Kevin L. Miller, Maureen O'Brien, Amol Parikh, Adam Sherman, Employee Benefits, Health, Intellectual Property, Private Client, Trial
“Rovi Launches ITC Suit Over TV Guide, V-Chip Patents”
Law360, November 16, 2011
Joel Freed, David Larson, Hong Lin, Yar Chaikovsky, Jeremiah Armstrong, Cary Chien, Christopher Paulraj, and Alexander Ott represent client Rovi Corp. in an International Trade Commission complaint against two electronics manufacturers for importing televisions and Blue-Ray players that infringe patents covering on-screen program guides and parental controls.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Alexander P. Ott, Christopher G. Paulraj, Intellectual Property, IP Litigation
“Race for Cheaper Solar-Energy Systems Turns on ITC Patent Case”
Bloomberg News, November 10, 2011
Carey Jordan said that “the stakes are high” in a patent infringement case before the International Trade Commission involving designs of two companies to reduce the hardware and labor costs of installing solar panels on roofs. “This technology makes installing much easier – it’s almost like a plug and play,” she noted. Ms. Jordan added that resolving the case is “not going to be a walk in the park. [Both companies] have pretty strong arguments.”
Carey C. Jordan, Energy and Chemicals - IP, Global Energy & Infrastructure Projects, GREEN and Alternative Energy — IP, Intellectual Property, Patent Prosecution
“Networking Co. Extreme Didn’t Violate Switch IP, Jury Says”
Law360, November 8, 2011
David Dolkas said he and his client, Extreme Networks, were “delighted” that a Wisconsin federal court jury found Extreme did not infringe a patent covering network switches. Calling the lawsuit “years’ worth of meritless litigation,” Mr. Dolkas added that “charges of patent infringement against a large product family can be particularly harmful to any company’s bottom line.” Margaret Duncan, David Larson, Keith Stolte, Terrence McMahon and Ryan Phelan were other McDermott counsel for Extreme.
David Henry Dolkas, Margaret M. Duncan, David L. Larson, Terrence P. McMahon, Ryan N. Phelan, Keith M. Stolte, Intellectual Property, IP Litigation
“Patent Reform Seen Reducing Multi-Defendant Suits”
WSJ.com/Dow Jones Newswires, November 8, 2011
Yar Chaikovsky expressed the belief that, although some critics say the America Invents Act did not do enough to restrain costly patent infringement litigation by plaintiffs, “No matter what, I think we’re going to see statistically fewer suits in the next few months.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“McDermott Helps Extreme Networks Defeat Patent Infringement Claims”
The Recorder, November 8, 2011
David Dolkas, who led a McDermott team that successfully defeated patent infringement claims in Wisconsin federal court against client Extreme Networks, attributed the good courtroom result to “the importance of effective teaching in patent cases. I really do believe these cases come down to who teaches best, because it’s complicated and jurors’ eyes roll when they realize they’re on a patent case.” Other lawyers on the McDermott team included Terrence McMahon, Margaret Duncan, David Larson and Keith Stolte.
David Henry Dolkas, Margaret M. Duncan, David L. Larson, Terrence P. McMahon, Keith M. Stolte, Intellectual Property, IP Litigation
“Administration Says America Invents Act Will Address Software Ban Petitioners’ Concerns”
BNA’s Patent, Trademark & Copyright Journal, November 4, 2011
Leigh Martinson called the Obama Administration’s response to an online petition to halt and void software patents “very well done. They said all the right things.” The response cited provisions in the new America Invents Act and other initiatives to keep overly broad patents from inhibiting innovation. Saying he appreciated the focus on patent quality, Mr. Martinson summarized the administration’s view as, “If there is a problem with software patents, it’s up to the Congress or the Supreme Court to figure that out. And that’s the way it should be.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Farewell, False Markings”
Inside Counsel, November 2011
Yar Chaikovsky identified as a major positive the new patent reform law’s substantial narrowing of false patent marking claims that plaintiffs can bring against companies. Mr. Chaikovsky called this provision “a win for all companies that make products, … a win for the American economy.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“America Invents Act Overhauls U.S. Patent System”
Inside Counsel, November 2011
Yar Chaikovsky said that the new inter partes review contained in the patent reform law to allow patent challenges is “a big difference” from the previous inter partes re-examination because it requires showing a “reasonable likelihood” of invalidity. By contrast, the former system had “a pretty broad standard” that Mr. Chaikovsky said made it “easy to get a review.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Patent Reform Aims to Take Toll on Trolls”
Silicon Valley/San Jose Business Journal, October 28, 2011
Yar Chaikovsky stated that since the signing of the patent reform law he has not seen any instances of non-practicing entities filing the kind of multi-defendant infringement claims that the law aimed to reduce. However, this litigation increased right before the law took effect – Mr. Chaikovsky noted that Apple Inc. received18 such lawsuits in early September compared to eight in the two prior months.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“If the Don Can’t Get ‘You’re Fired,’ and Paris Hilton Can’t Get ‘That’s Hot,’ Then ‘OWS’ Will Probably Stay Free”
Forbes, October 28, 2011
Robert Zelnick noted that parties seeking to trademark what he called “fads and phrases” often have “a fundamental misunderstanding” of their ability to do so, because they “won’t have actual rights – or the ability to prevent others from using the mark – until the mark is actually used in a commercial way.” For that reason, Mr. Zelnick added, “What’s hot now might be gone by the time the trademark registration is granted or the goods can be merchandised on a large scale.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“Q&A with Intellectual Property Lawyer Robert Zelnick”
Bloomberg Law Reports Student Edition, October 27, 2011
Robert Zelnick advised law students considering a career in intellectual property (IP) law that, while boutique firms offer advantages, “A general practice firm opens the door to so many more client relationships.” Speaking of his career at McDermott, Mr. Zelnick explained that “my opportunities to represent so many amazing brands came in many cases from my partners who had established relationships with the brand owners in some way.” He added that a large firm like McDermott “offers a much more comprehensive view of a client’s business objectives, and how IP matters fit into major corporate transactions.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“ITC Adopts New Public Interest Rule for Patent Cases”
Law360, October 19, 2011
Robert Walters said that “time will tell” if a new International Trade Commission rule, which allows the agency to gather information on potential public interest issues involved in a Section 337 patent infringement complaint, is “an indication of change” in previous ITC policy. Mr. Walters noted that public interest concerns have rarely outweighed other considerations in ITC exclusion orders, but the new rule may signal the agency’s interest in reviewing them.
Robert J. Walters, Intellectual Property, IP Litigation
“Lawyers Brace for Patent Reform”
National Law Journal, October 17, 2011
Bernard Codd was pictured and quoted extensively regarding the new America Invents Act. Mr. Codd said the law’s first-to-file patent prosecution provision “raises liability concerns” and “could lead to malpractice suits” because “if you get something on file just one day after your competitor, your client’s not going to be very happy.” He also noted that patent interference proceedings to challenge filings “will largely disappear,” and that preparing the post-grant oppositions that will replace re-examination proceedings “could be quite a booming business for lawyers.”
Bernard P. Codd, Intellectual Property, Patent Prosecution
“Pharma Co. Wants Ropes & Gray Atty Tossed from IP Suit”
Law360, October 14, 2011
Melissa Nott Davis and Sarah Chapin Columbia were noted as representing a Japanese pharmaceutical company and its U.S. distributor in defense of a patent infringement lawsuit over a pain relief treatment.
Sarah Chapin Columbia, Melissa Nott Davis, Intellectual Property
“S&T Presents Awards During Homecoming”
Rolla Daily News, October 13, 2011
Kenneth Cage was presented with the Missouri University of Science and Technology’s Alumni Achievement Award. Mr. Cage received his Bachelor’s degree in mechanical engineering and a Master’s degree in nuclear engineering from the university.
Kenneth L. Cage, Intellectual Property, Patent Prosecution
“Patent Lawyer Demand Rises Following U.S. Legislative Overhaul”
The New York Times, October 8, 2011
Mark Itri cited the new patent reform law, plus expansion by companies into new technologies like cloud computing even as they consolidate patent lawyers, as reasons why, “near term, you’ll see a big demand” by outside law firms for hiring new patent attorneys “to meet some of those client needs.” Mr. Itri noted that McDermott has hired 28 patent lawyers and agents so far this year and another 20 new hires are planned by next spring, with experience in telecom, software and the Internet most sought-after.
Mark J. Itri, Intellectual Property, Patent Prosecution
“People on the Move”
Silicon Valley/San Jose Business Journal, October 7, 2011
Lin Deng was noted as a new partner in McDermott’s Menlo Park/Silicon Valley office, focusing on patent prosecution, trademark protection and client counseling.
Lin Deng, Intellectual Property, Patent Prosecution
“Univision Tells DAR.fm to Pull Stations Off Website”
Radio World, October 7, 2011
Jorge Arciniega, representing Univision, requested that a radio recording service cease and desist allowing permanent downloads of his client’s MP3 recordings. Mr. Arciniega stated in a letter to the service that to permit such downloads “is essentially opening the door for users to engage in copyright infringement, since unlimited copies can be made from downloaded MP3 files and then distributed to others.”
Jorge R. Arciniega, Intellectual Property, Patent Prosecution
“Sharp, Rovi Make Peace in Patent Suit, ITC Action”
Law360, October 5, 2011
Joel Freed, Yar Chaikovsky, David Larson, Hong Lin, Jeremiah Armstrong and Cary Chien represented client Rovi in securing a settlement with Sharp Corp. over allegations that some of Sharp’s products infringe three of Rovi’s programming guide technology patents.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Intellectual Property, IP Litigation
“Genzyme Gets Rival Pain Med Barred For Now In IP Row”
Law360, October 4, 2011
Melissa Nott Davis and Sarah Chapin Columbia represent Seikagaku Corp. in a patent infringement case brought on by Genzyme Corp.
Sarah Chapin Columbia, Melissa Nott Davis, Intellectual Property, IP Litigation
“Global View”
World Trademark Review, October/November 2011
Robert Lundie-Smith commenting on the European Commission's blueprint for IP right's, which has been designed to boost creativity and innovation in Europe, said that "A review of the proposal shows that the commission sees the fragmentation of IP rights across the Community as having negative implications for Europe's growth, job creation and competitiveness and, therefore, is likely to press for an ever more harmonised rights system within Europe".
Robert Lundie-Smith, Intellectual Property, IP Litigation, IP, Media & Tech - London
“New Patent Law Highlights the Need for Speed”
CFO.com, October 1, 2011
Yar Chaikovsky, referring to the first-to-file system under the America Invents Act said, “Under the new law, companies may file less-expensive provisional applications that essentially save their place in line for up to a year before they submit a full patent application. But the provisional application is not a magic pill. Mr. Chaikovsky continues, “If companies do not spend enough time (and money) producing detailed provisional documents, their subsequent , more comprehensive applications may be so far removed from their initial proposals that they may lose their rights to the earlier filing date.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“McDermott Will & Emery Announce Several Hires”
Intellectual Property Magazine, September 30, 2011
Lin Deng, Victoria Friedman and Jon D. Magluyan were noted among the 25 IP lawyers who joined McDermott Will & Emery’s Intellectual Property Practice throughout the year of 2011.
Lin Deng, Victoria Friedman, John D. Magluyan, Intellectual Property, Patent Prosecution
“Yahoo Denied Atty Fees After Beating Patent Suit”
Law360, September 30, 2011
Yar Chaikovsky, Fay E. Morisseau, Christopher D. Bright and Natalie A. Bennett successfully represented Yahoo Inc. against Bedrock Computer Technologies in an infringement lawsuit over a patent covering Linux data storage. A Texas federal judge ruled that Bedrock will not have to pick up Yahoo Inc.’s legal fees.
Natalie A. Bennett, Christopher D. Bright, Yar R. Chaikovsky, Fay Morisseau, Intellectual Property, IP Litigation
“The Long-Awaited Patent Reform is Now Law. This Week, We Look at its Ramifications”
Boston Business Journal, September 30, 2011
Leigh Martinson, commenting on the patent reform law’s effect on the first-to-file system, said, “I think it will force some companies to change the way they do things. Now there’s a risk every time you decide not to file for something because someone else could.” Mr. Martinson continued, “We might see companies streamline their patent review process and maybe even force people like me to have tighter deadlines.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“President’s We the People Website Includes Well Supported Software Patent Ban Petition”
BNA’s Patent, Trademark & Copyright Journal, September 30, 2011
Leigh Martinson, commenting on a September 28 petition that received more than twice the minimum required to force the administration to provide a response, said “While this is an old debate, the passing of the new patent reform laws seems to have sparked interest in the topic again.” Mr. Martinson continued, “Certainly arguments can be made for both pro- and anti-software patent positions. However, a close review of the new legislation could lead one to believe Congress is actually encouraging the ‘individual inventor’ to protect his patentable software ideas by substantially lowering the official patent office fees associated with the prosecution of patent.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Global News About Intellectual Property Topics”
Bloomberg News, September 28, 2011
Lin Deng, new Intellectual Property partner in McDermott’s Silicon Valley office, counseled China’s Hangzhou Zhongce Rubber in a 2008 patent dispute involving tire treads. She will advise Chinese companies on IP matters, and also works for clients in the semiconductor, telecom, automotive and computer sectors. Also joining the firm’s IP practice is Victoria Friedman as counsel in the Chicago office. Ms. Friedman does patent and trademark acquisition and licensing.
Lin Deng, Victoria Friedman, Intellectual Property, Patent Prosecution
“Anti-Software-Patent Petition Makes White House’s Top 10”
Computerworld, September 28, 2011
Leigh Martinson, commenting about the large number of signatures on a petition to ban software patents that has been submitted to the White House, said that while it is hard for the solo software developer to know if the program they are working on is already patented, a software patent overall provides “a competitive advantage, and it keeps people employed.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“McDermott Will & Emery Adds Lin Deng as Partner”
San Jose Business Journal, September 27, 2011
Lin Deng joined McDermott’s Menlo Park/Silicon Valley office as a partner focusing on patent and trademark prosecution and patent counseling, particularly in working with Chinese companies on their IP strategies and patent portfolio management.
Lin Deng, Intellectual Property, Patent Prosecution
“McDermott Adding Patent Prosecutors in S.V., O.C.”
The National Law Journal, September 27, 2011
Mark Itri said the addition of 11 patent lawyers in McDermott's Orange County office and 2 in the Silicon Valley office, as well as other additions in four other U.S. offices, illustrates that client demand for IP counseling is up and shows no signs of slowing down. Itri said that about one year ago,"we realized that with our then-current bandwidth, we would not be able to meet the needs of our clients. Clients would be more willing to send us more work if we had a larger bench.” The two most recent additions in the Silicon Valley office are partner Lin Deng (who advises Chinese companies on IP strategies) and associate Gregory Rabin.
Lin Deng, Mark J. Itri, Gregory S. Rabin, Intellectual Property, Patent Prosecution
“CLC’s Kennedy Center Rooftop Celebration”
Legal Bisnow, September 27, 2011
Joanne Ludovici-Lint and Christopher Paulraj were pictured at the Helping Children Soar benefit for the Children’s Law Center, Washington DC’s largest legal nonprofit. The article noted that Ms. Ludovici-Lint heads the Firm’s global trademark prosecution practice, while Mr. Pauraj, also an Intellectual Property lawyer, has degrees in Biomedical Engineering and Polymer Science.
Joanne Ludovici-Lint, Christopher G. Paulraj, Intellectual Property, Patent Prosecution
“Petitioners Ask White House to End Software Patents”
Law360, September 26, 2011
Leigh Martinson said that, despite the fact that thousands of signatures appear on a petition calling for abolition of all software patents sent to the White House, “I can’t imagine the government is going to go out of its way to make a statement with regard to this.” Mr. Martinson noted that the new patent reform law did not address software patents, and that it would be highly impractical to void such patents. “Hundreds of man-hours of labor can go into creating software,” he added. “Why should you not be able to protect that work?”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Isis Calls Out Santaris Over Drug Development Deals”
Law360, September 23, 2011
William Gaede III, Shane Smith, Jason Strabo and Derek Meyer represent drug developer Isis Pharmaceuticals in a patent infringement lawsuit that accuses a competitor of exploiting the antisense technology pioneered and patented by Isis through repeatedly selling and offering it for sale to other pharmaceutical companies.
William Gaede, Derek J. Meyer, Shane G. Smith Ph.D., Jason D. Strabo, Intellectual Property, Trial
“McDermott Wins Asylum for Woman in Trafficking Case”
Chicago Daily Law Bulletin, September 21, 2011
Brett Johnson said that a McDermott pro bono team won asylum for a sex trafficking victim from Democratic Republic of Congo by “present[ing] the case as one of persecution” because “the odds of her being sex trafficked again were very high.” On the team with Mr. Johnson were Brett Bachtell, Mennatallah Eltaki, Katherine Schon and Sandra McGill (who as a French speaker did most of the communication with the client). Pro Bono Counsel Latonia Haney Keith said the team’s success “speaks a lot to the quality of work and dedication” the firm has in asylum cases.
Brett E. Bachtell, Brett R. Johnson, Latonia Haney Keith, Sandra P. McGill, Katherine M. Schon, Employee Benefits, Intellectual Property, Pro Bono & Community Service, Tax
“Patent Bar in Mass. Split on Impact of New Law”
Massachusetts Lawyers Weekly, September 20, 2011
Leigh Martinson predicted that the new patent reform law’s impact on infringement claims will mean “fewer defendants in each multiple-defendant case, but won’t slow down the pace of filing” of such cases by non-practicing entities (NPEs) who sue in the hope of getting licensing agreements for patents they hold. He added that the law will thus likely slow down NPE licensing revenue because “it messes with their strategy.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Obama Signs Patent Bill, Sees Boost for Innovators”
Reuters, September 16, 2011
Bernard Codd called predictions that the new patent reform law will spur the addition of large numbers of jobs “a little bit overblown,” adding that such an employment increase is “going to depend more on the national economy picking up. This [law] may be a piece of the puzzle.”
Bernard P. Codd, Intellectual Property
"Easily Confused Trademarks Refused Registration (Policy Interpretation)"
People’s Daily of China (China’s Largest Newspaper), September, 14 2011
Wendy Wu (MWE China Law Offices) was quoted in this publication regarding the amendments to China's Trademark Law. Ms. Wu pointed out that, under the amendments, sound will for the first time become eligible for a trademark in China. She explained that, as in the U.S., sounds could now be recognized as a unique asset for which individual and businesses could seek a trademark. However, there are many technical issues to resolve in China, including how best to enforce sound trademarks and the standard of determining the similarity and identity of two sound trademarks. To view the full article in Chinese, click here.
Intellectual Property, Patent Prosecution
“Patent Law’s Passage Spurs Flood of New Complaints”
The Recorder, September 14, 2011
Yar Chaikovsky predicted that, because the new patent reform law attempts to curb multi-defendant infringement lawsuits by nonpracticing entities, “at least in the short term, there’s going to be a lot more patent litigation” filed by those entities before the law takes effect. “That means litigators will be busy,” Mr. Chaikovsky added.
Yar R. Chaikovsky, Intellectual Property
“1st Circ. Affirms Airframe Loss in Source Code Row”
Law360, September 14, 2011
John Dabney, Neal Minahan and Michael Shanahan represented Airframe Systems Inc. as plaintiff in copyright infringement litigation involving aircraft maintenance tracking software.
John J. Dabney, Neal E. Minahan, Michael E. Shanahan, Intellectual Property, Trial
“US Capitol Capsule: Patent Reform Done, But Will It Create Jobs?”
Scrip, September 12, 2011
Bernard Codd said the new patent reform law replaces patent interference proceedings with a derivation proceeding in which “the later filers will have to show that the earlier filer derived their invention from the later filer’s invention,” meaning the first to file may not absolutely win a patent. Mr. Codd also questioned the law’s ban on patent claims encompassing human organism cloning, saying that if individual body organs could be cloned, “that should be something that should be patented, because it obviously would be an expensive undertaking to do research in those areas.” Finally, Mr. Codd said “it would be nice” if the bill helped create new jobs, “but I’m not convinced about that.”
Bernard P. Codd, Intellectual Property
“Congress Approves Historic Patent Legislation”
National Journal, September 8, 2011
Paul Devinsky welcomed the new patent reform law, saying that, “While some controversial issues remain to be tackled, most in the patent community hope that [the law’s] steps towards harmonization and procedures to filter out undeserving patents will go a long way towards strengthening the overall system without damaging the incentives to innovate.”
Paul Devinsky, Intellectual Property
“Senate Passes Historic Patent Reform Legislation”
National Law Journal, September 8, 2011
Yar Chaikovsky said the new patent reform law will provide “some benefits to the patent office, but some of the benefits are being overstated.” For example, he felt there is “no support” for claims that the law will create substantial numbers of new jobs, and lamented the fact that the law does not contain proposed provisions on calculating damages in infringement litigation, which would have been “helpful to corporations large and small and people involved in patent litigation generally.”
Yar R. Chaikovsky, Intellectual Property
“How Internet Naming Authority ICANN Plans to Double Its Revenues”
Paid Content.org, September 8, 2011
Lynne Boisineau said that registering brands as one of the top-level Internet domain names offered by independent domain name authority ICANN may interest some media sector companies, but “it doesn’t make sense for other businesses” to pursue such a strategy.
Lynne Boisineau, Intellectual Property
“Leahy: Amending Patent Bill Would Be Unnecessary Delay”
National Journal, September 8, 2011
Paul Devinsky said that while many in the patent community support a Senate patent reform bill amendment to prohibit diverting PTO fees, they do not want wrangling over such an amendment to delay passage of the bill. Mr. Devinsky still expected that the House-passed bill, which does not prohibit diversion, “is likely to pass intact” in the Senate, but added that “the latest attempt to impose an amendment will likely prevent the bill from being a ‘mission accomplished’ passage” in President Obama’s 9/8 congressional address to propose a jobs program.
Paul Devinsky, Intellectual Property
“Kobo Sues to Keep Its E-Reader Away from Borders Buyer”
Paid Content.org, September 8, 2011
Shon Lo, speaking of an e-reader maker’s attempt to keep the license for its product from whoever buys the bankrupt book retailer that made the e-reader available, said that “generally, a trademark license can’t be assigned without the owner’s permission.”
Shon Lo, Intellectual Property
“Porn Domain Blocking Period for Brand Owners Kicks Off”
Law360, September 6, 2011
Lynne Boisineau said legitimate companies that pay an Internet registry of pornographic web sites to prevent the company’s association with the .xxx web domain “may send a message to the adult industry that the registration of misspellings and other variations of a company’s trademarks will be opposed, and may deter such registrations.”
Lynne Boisineau, Intellectual Property
“Patent Reform Faces Final Hurdles in Senate”
National Journal, September 5, 2011
Yar Chaikovsky called the current version of a patent reform bill before the Senate “significantly controversial,” saying that “small businesses, corporations and individual inventors are significantly opposed” to the measure. “Some estimate the reform could create as many as 2 million jobs, but when you look under the covers, there does not appear to be any support for this,” Mr. Chaikovsky added.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Senate Set to Vote Yes on Patent Reform Bill”
Law360, September 2, 2011
Yar Chaikovsky said the patent reform bill nearing a final vote in the Senate was a step in the right direction but not a “transformational reform,” and expressed the opinion that “even with this passing, we’re going to be talking next year about what’s broken in the patent system.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Podcast: Patent Reform”
Thomson Reuters Legal Current, September 2011
Bernard Codd said in this online interview that the new patent reform law’s replacement of first-to-invent with first-to-file for patent applications is “a concern to all patent practitioners,” because any delay in making a filing means the slower patent lawyer could be “exposed to some pretty big liabilities.” Another concern is the elimination of the interference proceedings in which some lawyers specialize. He noted, though, that the post-grant review process to replace interferences “has the potential to become a very flourishing area of patent practice.”
Bernard P. Codd, Intellectual Property
“Unconstitutional Cuts”
California Lawyer, September 2011
Shane Smith noted that if recent cuts made by the California legislature to funding of the state’s court system are challenged, the case would have to be considered from first principles. He pointed to the 2005 LeFrancois v. Goel decision of the California Supreme Court, which held that legislators may regulate the inherent power of the judiciary but not deprive or materially impair its ability to resolve cases.
Shane G. Smith Ph.D., Intellectual Property
“Ruling Leaves Silicon Valley Lawyers Wondering Whether ‘Practicality’ Means ‘Patentable’”
The Recorder, August 30, 2011
Yar Chaikovsky observed that a new Federal Circuit ruling invalidating broad business method software patent claims is “one of the few instances ever where a ruling has come out of the Federal Circuit that’s negatively impacted both nonpracticing entities and traditional corporations,” the former being patent holders sometimes referred to as patent trolls.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Shire Patent Suit Over Generic Intuniv Survives”
Law360, August 29, 2011
William Gaede III, Joseph Robinson and Heather Ettinger, representing Irish drugmaker Shire PLC as plaintiff in a patent infringement lawsuit against two U.S. companies over an attention deficit hyperactivity disorder drug, successfully secured a California federal judge’s denial of the defendants’ attempt to dismiss the suit.
Heather Morehouse Ettinger Ph.D., William Gaede, Joseph R. Robinson, Intellectual Property, IP Litigation
“Monsanto Must Cough Up Info on Seed Patent Application”
Law360, August 23, 2011
Steven Spears served as co-counsel to Monsanto in matters related to its litigation against DuPont regarding, in particular, the reissue application for a seed gene patent.
Steven G. Spears, Intellectual Property
“Rovi Sues Sharp Over Programming Guide Patents”
Law360, August 18, 2011
Joel Freed, Yar Chaikovsky, David Larson, Hong Lin, Jeremiah Armstrong and Cary Chien represented client Rovi Corp. in filing suit in Virginia federal court against Sharp Corp. and two subsidiaries. The lawsuit, similar to one filed earlier at the U.S. International Trade Commission, alleged that some of the defendants’ televisions and electronic recorder products infringe three Rovi patents related to programming guide technologies.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Intellectual Property
“Patent Reform Is Coming: Who Should Care”
GigaOm.com, August 17, 2011
Bernard Codd said that the “fundamental change” represented by the first to file provision of the patent reform bill doesn’t necessarily favor large companies as some charge – it may in fact help small businesses because it means “you can’t afford to sit on ideas anymore” no matter how big your company is. He also said that the bill does not restrict so-called patent trolls because “one person’s troll is another person’s hard-working small inventor.” Mr. Codd also expects the final bill to have an unlimited deadline for seeking post-grant review of business method patents.
Bernard P. Codd, Intellectual Property
“News Makers: New Positions”
Texas Lawyer, August 15, 2011
Steven Spears was noted as new partner-in-charge of McDermott’s Houston office. Mr. Spears focuses his practice on technology-related litigation involving the chemical, biotechnology and petrochemical industries.
Steven G. Spears, Intellectual Property
“25 Leading Biotech Lawyers in California”
The Daily Journal, August 10, 2011
William Gaede was singled out as a top California biotech attorney, illustrated by his current work as lead counsel in the Northern District of California on two high-profile cases involving the Hatch-Waxman Act and as author of an amicus brief for a positive Federal Circuit ruling on the patentability of DNA sequencing in diagnostics. As Mr. Gaede explained his litigation philosophy, “Life sciences companies, in particular, need strong patents to protect their long-term investments, [because] it takes years to research, develop and get the approval of biological products.”
William Gaede, Intellectual Property
“Qualcomm, Spansion Take Chip Patent Row to High Court”
Law360, August 8, 2011
Terrence McMahon, David Dolkas, David Larson, Daniel Foster, Peter Siavelis and Matthew Gryzlo are co-counsel representing Qualcomm, Inc. as one of two companies seeking a writ of certiorari for the U.S. Supreme Court to hear an appeal of an International Trade Commission patent infringement finding. The certiorari petition holds that the ITC decision on semiconductor chips, upheld by the Federal Circuit, is at odds with the Supreme Court’s recent Global-Tech opinion.
David Henry Dolkas, Daniel R. Foster, Matthew J. Gryzlo, David L. Larson, Terrence P. McMahon, Peter M. Siavelis, Intellectual Property
“People in Business”
Houston Chronicle, July 23, 2011
Steven Spears was noted as new partner-in-charge of McDermott’s Houston office. Mr. Spears is a partner in the Intellectual Property Litigation practice group.
Steven G. Spears, Intellectual Property
“The Churn: Lateral Moves and Promotions in the AmLaw 200”
AmLaw Daily, July 15, 2011
Steven Spears and Paul Thompson were both noted for their new McDermott leadership positions. Mr. Spears (intellectual property practice) is partner-in-charge of the Houston office, while Mr. Thompson (white-collar practice) is co-partner-in-charge for Washington, DC.
Steven G. Spears, Paul M. Thompson, Intellectual Property, White-Collar & Securities Defense
“Teva Drops Azilect Patent Claim Against Watson, Mylan”
Law360, July 14, 2011
Joseph Robinson, Robert Schaffer, Paul Zagar and Louis DelJuidice represented Mylan, Inc. in the dismissal of Teva Pharmaceutical’s patent infringement claims over a drug to treat Parkinson’s disease. Mylan and other companies named in the lawsuit had filed counterclaims alleging that the patent at issue was invalid and not infringed.
Louis J. DelJuidice, Joseph R. Robinson, Robert Schaffer, Paul M. Zagar M.D., Intellectual Property
“McDermott Names New Head of Houston Office”
Citybizlist Houston, July 14, 2011
Steven Spears was called “quite simply the best choice” to head McDermott’s Houston office by Firm co-chair Jeffrey Stone. McDermott co-chair Peter Sacripanti added that Mr. Spears is “a strong and capable leader” and a “battle-tested courtroom attorney and mentor to others.” Mr. Spears was recently included by his professional peers in The Best Lawyers in America for intellectual property law.
Peter John Sacripanti, Steven G. Spears, Jeffrey E. Stone, Intellectual Property, Trial, White-Collar & Securities Defense
“Patent Measure Concerns Independent Inventors”
The Sun-Sentinel (Fort Lauderdale, FL), July 14, 2011
Yar Chaikovsky warned small inventors not to show unpatented innovations to potential investors or customers, because the “first to file” provision in the new patent law reform bill could allow such viewers to file their own patent on the invention. Mr. Chaikovsky suggested that inventors get a signed non-disclosure agreement before showing an innovation that is not yet patented.
Yar R. Chaikovsky, Intellectual Property
“McDermott Will & Emery Names Houston Partner-in-Charge”
Houston Business Journal, July 14, 2011
Steven Spears was recognized for his appointment to head the Firm’s Houston office. An intellectual property lawyer focused on the chemical, biotechnology and petrochemical sectors, Mr. Spears is responsible for oversight and implementation of McDermott’s strategic regional goals.
Steven G. Spears, Intellectual Property, IP Litigation
“Patent Measure Causing Concern Among Independent Inventors”
The Los Angeles Times, July 11, 2011
Yar Chaikovsky said that the first-to-file patent system contained in the new patent law reform bill could make it difficult for small inventors to show a new product to a potential investor or customer before committing resources to a patent filing. Inventors should get such viewers of non-patented products to sign a non-disclosure agreement, Mr. Chaikovsky warned that otherwise, “If you don’t get someone to sign, if they go use it, you’re dead.”
Yar R. Chaikovsky, Intellectual Property
“Lodsys Won’t Back Down, Moves to Wage Patent War in Texas”
Thomson Reuters News and Insight, July 6, 2011
Michael Shanahan was noted as counsel to plaintiff ForeSee, one of several companies to file declaratory judgment actions against patent holding company Lodsys. The actions seek court rulings that the companies have not infringed Lodsys patents.
Michael E. Shanahan, Intellectual Property
"Common Touch”
SuperLawyers (Northern California), 2011
Terrence McMahon was featured in this cover story, which called him “one of the nation’s top intellectual property attorneys” and “one of the most sought-after IP attorneys in the state” of California, saying he “is renowned for mesmerizing jurors” and praising him for his “common touch.” Mr. McMahon himself said in describing his practice, “I assume everything will go to court and I will have to prove everything I need to prove. It’s get-your-hands-dirty work… I’m tough, but fair.”
To read the full article click here.
Terrence P. McMahon, Intellectual Property
“Reactions to the Supreme Court Decision on Video Game Violence”
VentureBeat, June 27, 2011
Ahsan Shaikh noted the US Supreme Court’s rejection of California’s ban on selling violent video games to minors, and observed that “ the time is ripe for developers in the industry, both hardware and software, to respond to the increasing attention on video game violence” by developing innovative content restrictions or alternative violence displays. “The developer that addresses these concerns and patents their innovation will gain a controlling position in the industry” now that parents are more aware of video game violence levels, Mr. Shaikh predicted.
Ahsan A. Shaikh, Intellectual Property
“House to Debate Diversion of USPTO Funds”
Law360, June 21, 2011
Yar Chaikovsky called it “a significant issue” that a House of Representatives amendment to the patent reform bill passed by the Senate could jeopardize the Senate’s decision to end diverting of Patent Office application fees. “If they strip it [the diversion prohibition] out, you possibly don’t have patent reform at all,” he said.
Yar R. Chaikovsky, Intellectual Property
“IP Cases to Watch at the District Court Level”
Law360, June 21, 2011
Paul Devinsky assessed the Federal Circuit’s hearing of appeals on two lower court decisions that rejected qui tam false patent marking lawsuits under the false marking statute. “How these cases get resolved is a serious issue because the Federal Circuit could – subject to Supreme Court review – wipe out false marking qui tam cases without congressional activity if it agrees with the Pennsylvania and Ohio courts,” he said.
Paul Devinsky, Intellectual Property
“Supremes Wrestle with California Vidgame Law”
Variety, June 17, 2011
Ahsan Shaikh remarked that if the U.S. Supreme Court upholds a California law that restricts the sale of ultraviolent videogames to minors, game publishers will look for ways to alter the games “as little as possible to make games less violent and get them out quickly” – for example, he suggested, by patenting a technique by which a character is not killed violently but instead “ages really quickly and turns to dust.”
Ahsan A. Shaikh, Intellectual Property
“Patent Holding Company Targeting App Developers Faces Backlash”
American Lawyer, June 13, 2011
Michael Shanahan declared in seeking a declaratory judgment against a patent holder who had threatened infringement action against his client’s Internet service provider’s customers that the infringement claims “are without merit.”
Michael E. Shanahan, Intellectual Property, IP Litigation
“Supreme Court Ruling Seen as a Win for Patent Trolls”
Computer World, June 9, 2011
Sarah Columbia noted that the Microsoft v. i4i patent infringement lawsuit made it to the US Supreme Court over the burden of proof issue – namely, when a patent holder makes an infringement claim, the burden is on the alleged infringer to prove with “clear and convincing evidence” that the patent is invalid. Microsoft had argued for a lower standard, but the Court upheld the higher burden of proof test.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Microsoft Loses at Top U.S. Court in Patent Case Involving Toronto’s i4i”
Bloomberg.com, June 9, 2011
Paul Devinsky observed that although the U.S. Supreme Court, in upholding the “clear and convincing” standard for patent infringement, said that Congress could change this standard of proof, such change is unlikely. “It’s been criticized for many years and Congress has looked at the statute many times over the years and never felt the need to change it,” Mr. Devinsky said. “If this is confronted directly by statute, it would be hugely controversial.”
Paul Devinsky, Intellectual Property
“Invalidity Must Be Clear and Convincing: High Court”
Law360, June 9, 2011
Yar Chaikovsky asserted regarding the US Supreme Court’s ruling to uphold the “clear and convincing” standard for patent infringement, “The effect is that clear and convincing is here to stay for quite some time. The only way you can change it is through congressional action, and that’s not going to be happening anytime soon.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Microsoft Loses $290m Final Appeal”
Financial Times, June 9, 2011
Paul Devinsky assessed a unanimous US Supreme Court ruling that upheld the current “clear and convincing” standard for demonstrating patent infringement, a standard that Microsoft had argued was too high and was used by so-called patent trolls to make infringement claims. “I’m sure the [trolls] are rejoicing and the defense bar are scratching their heads,” Mr. Devinsky said, noting that a lower standard would have left defendants in patent suits needing to show that more than 50 per cent of the evidence supported their cases, compared to the 70-80 per cent requirement under the “clear and convincing” test.
Paul Devinsky, Intellectual Property
“Is McDermott Will App Developers’ (Accidental) White Knight?”
Thomson Reuters News & Insight, June 8, 2011
Michael Shanahan explained his filing for a declaratory judgment in Chicago federal district court on behalf of Internet services company ForeSee Results against a patent holder who has been suing mobile device application developers and demanding that ForeSee’s customers take out licenses or face an infringement suit. “Rather than have our business disrupted and placed in doubt by these baseless threats, we have taken offensive action,” Mr. Shanahan said, adding the he believes the patents are both invalid and un-infringed.
Michael E. Shanahan, Intellectual Property, IP Litigation
“McDermott Joins Backlash Against Patent Holding Company Targeting App Developers”
Am Law Litigation Daily, June 8, 2011
Michael Shanahan, representing web analytics company ForeSee Results in seeking a declaratory judgment that a patent holder’s patents are invalid and not infringed by his client’s products, said that the patent holder had sent ForeSee’s customers letters accusing them of infringement. “ForeSee believes these allegations are without merit,” Mr. Shanahan stated.
Michael E. Shanahan, Intellectual Property, IP Litigation
“Yahoo Wants Attys’ Fees in Bedrock’s Failed IP Suit”
Law360, June 7, 2011
Yar Chaikovsky, Fay Morisseau, Christopher Bright and Natalie Bennett were noted as McDermott’s counsel for Yahoo Inc. in the company’s major win of an infringement lawsuit over a Linux storage patent. After a five-day trial, the jury took just 40 minutes to deliver a verdict in Yahoo’s favor.
Natalie A. Bennett, Christopher D. Bright, Yar R. Chaikovsky, Fay Morisseau, Intellectual Property
“The Strategic Use of Patent Reexamination”
Forbes, June 6, 2011
Mark Itri offered extensive guidance on using the Patent Office’s reexamination process as an offensive and defensive strategy to question a patent’s validity. In working with in-house counsel on a fact-specific, case-by-case basis, Mr. Itri has advised, “If there is a question of validity, then be proactive before instituting litigation. Use the reexamination process before such measures.” By contrast, if a patent holder uses the process to affirm validity, “licensees will know that the patent has withstood reexamination.”
Mark J. Itri, Intellectual Property, Patent Prosecution
“With Some Changes, Patent Reform Bill Cruising Toward House Passage”
Genetic Engineering & Biotechnology News, May 25, 2011
Leigh Martinson predicted that if the House of Representatives passes its own version of patent reform, “On the big issues such as first-to-file, processes for improving quality and addressing opposition, as well as supplemental examinations, the House and Senate bills will not be that far apart.” Robert Underwood said the Patent & Trademark Office “isn’t well equipped” to enforce a proposed House patent reform bill amendment that would bar examination of patents where fraud was attempted.
Leigh J. Martinson, Robert H. Underwood Ph.D., Intellectual Property, IP Litigation
“Q&A with McDermott’s Fay Morisseau”
Law360, May 25, 2011
Fay Morisseau, who has successfully defended such major actions as the first product liability lawsuit alleging that cell phone use caused cancer, explained that “when representing a defendant, trial preparation begins as soon as we are hired. My team will have the opening statement and trial outlines for key witnesses prepared at least two months before trial.” Mr. Morisseau summarized his approach this way: “Timing is the key to trial preparation.”
Fay Morisseau, Intellectual Property
“Q&A with McDermott’s Jeffrey Gargano”
Law360, May 24, 2011
Jeffrey Gargano explained that in his IP litigation he spends “a significant amount of time conducting an initial triage of the facts and legal issues presented by the case... I have found that by spending more time on a case at the very beginning, we can more efficiently manage the case throughout the discovery process and ultimately be better prepared for trial.” Some matters can be lengthy, like a five-year dispute over a disposable food service product in which Mr. Gargano secured a Federal Circuit reversal and eventual favorable settlement for client Solo Cup Co. He added that successful IP litigation depends on being able to “explain the technology in a way that the jury will understand it.”
Jeffrey R. Gargano, Intellectual Property
“Intellectual Property Pioneer Has Matlock-Like Instincts”
San Jose Business Journal, April 15, 2011
Terrence P. McMahon was described as “a leader in intellectual property law for high-tech companies” for his 35 years representing such giants as Apple, Atari, Broadcom and Advanced Micro Devices in litigation.
Terrence P. McMahon, Intellectual Property
“How Yahoo Won the Bedrock Patent Trial that Google Lost”
Thomson Reuters Legal, May 12, 2011
Yar Chaikovsky and Fay Morisseau, as lead trial lawyers for Yahoo in its successful Texas patent infringement defense of a case that Google lost and other major companies settled rather than take to a jury, were singled out in this analysis for their “smart” trial strategy. “Give Yahoo and McDermott credit for toughing out a trial after the Google verdict,” the analysis stated, quoting Mr. Chaikovsky that the defense verdict was “a fantastic result.”
Yar R. Chaikovsky, Fay Morisseau, Intellectual Property
“Yar Chaikovsky Sees Patent Reform Problems for Startups”
Bloomberg Law podcast, May 11, 2011
Yar Chaikovsky said that if the America Invents Act now before Congress adopts the “first to file” patent prosecution standard used in the EU and Japan, small startup companies would have to “rethink their parameters” for patent filing because they “can’t afford to lose their ideas to a larger corporation who may file on them first.” For venture capital firms backing startups, Mr. Chaikovsky predicted that “getting a patent will not be a nicety anymore – filing must be on their roadmap.” And startups without venture backing will face problems: “They don’t have the financial wherewithal to pay the filing fees on one patent, let alone a portfolio; but now they will need to worry about filing.”
Yar R. Chaikovsky, Intellectual Property
“Yahoo Succeeds Where Google Failed in East Texas Patent Trial”
American Lawyer, May 11, 2011
Yar Chaikovsky and Fay Morisseau were cited in a story titled “Yahoo! Succeeds Where Google Failed in East Texas Patent Trial” highlighting a major jury win for Firm client Yahoo! in notoriously plaintiff-friendly East Texas. Yar was quoted as saying, "It was a great result...We appreciate the service of the jury here in Tyler."
Yar R. Chaikovsky, Fay Morisseau, Intellectual Property
“Aristocrat Ducks IGT’s Inequitable Conduct Claims”
Law360, May 11, 2011
Anthony de Alcuaz, as lead counsel for Aristocrat Technologies in its patent infringement lawsuit over progressive video gaming technology, said that a California judge’s ruling that the patents were not unenforceable due to alleged inequitable conduct “has preserved the enforceability of Aristocrat’s valuable patent family against a longtime foe …” Jeremy Elman and Terry Ahearn were noted as members of the McDermott team for Aristocrat.
Terry W. Ahearn, Anthony de Alcuaz, Jeremy T. Elman, Intellectual Property
“Yahoo Wins Defense Verdict in Patent Case”
Daily Journal, May 11, 2011
“Yahoo Beats Back Patent Claims in Texas’ Eastern District”
The Recorder, May 10, 2011
Yar Chaikovsky and Fay Morisseau, partners with McDermott Will & Emery LLP, led the defense against Bedrock Computer Technologies LLP. "Yahoo is very pleased with the verdict," Chaikovsky said. Mr. Chaikovsky and Fay Morisseau led a McDermott team that included Christopher Bright and Natalie Bennett.
Natalie A. Bennett, Christopher D. Bright, Yar R. Chaikovsky, Fay Morisseau, Intellectual Property
“Jury Finds Yahoo Didn’t Infringe Linux Patent”
Law360, May 10, 2011
Yar Chaikovsky called a Texas jury’s decision that Firm client Yahoo did not infringe a Linux storage patent held by Bedrock Computer Technologies a “fantastic result,” and added that Yahoo was “very pleased” with the verdict. Another jury had assessed co-defendant Google $5 million in damages, leading four additional co-defendants in the case besides Yahoo to settle. Mr. Chaikovsky and Fay Morisseau led a McDermott team that included Christopher Bright and Natalie Bennett.
Natalie A. Bennett, Christopher D. Bright, Yar R. Chaikovsky, Fay Morisseau, Intellectual Property
“When a System is Used, Who is Responsible for the ‘Use’?”
National Law Journal, May 9, 2011
Leigh Martinson and Brett Bachtell authored this bylined article assessing the Federal Circuit’s Centillion patent infringement decision, which held that even if a party does not have direct physical control over all elements of a system, use (and infringement) can be shown if its customers use it. This means, the authors wrote, that patent drafters should now “ensure the[ir] claims are formatted in a way that will allow the proper target to be identified as a defendant in any future litigation.” Also, plaintiffs must now “sue customers of the defendant in combination with the corporate defendant … to identify and include as many users as possible in the litigation.”
Brett E. Bachtell, Leigh J. Martinson, Intellectual Property, IP Litigation
“The Patent Office Dilemma: How Congress Robs Peter to Pay Paul”
Forbes.com, May 6, 2011
Toby Kusmer wrote in this bylined article that, although the Patent & Trademark Office theoretically can use its fees to add resources and address a massive review backlog that harms inventors and investors, the PTO actually “has no control over the revenue it earns” because “what Congress gives it can take away” through appropriation of PTO surpluses. Patent reform legislation under consideration does not address this issue, and Mr. Kusmer wrote that “it is difficult to see how the provisions of the proposed legislation will in any significant way address the delay issues, and for that matter encourage innovation.”
Toby H. Kusmer PC, Intellectual Property
“On the Move: Southern California”
The Recorder, April 29, 2011
John Magluyan was noted as a new intellectual property prosecution, transactions and strategy partner in McDermott’s Orange County Office. Mr. Magluyan is a 2003 graduate of Whittier Law School.
John D. Magluyan, Intellectual Property
“Some Praise, Some Pans for PTO Proposal to Streamline Re-Exam Process”
National Law Journal, April 26, 2011
Soyeon (Karen) Laub called proposed Patent & Trademark Office changes to the patent re-examination process “totally necessary” and said they “will definitely streamline the process and take care of a lot of issues that we have had in the past for re-examinations. I’m happy that we have this.” Ms. Laub asserted that provision to require that re-exam requesters be more precise and detailed “will really speed up the process.”
Soyeon (Karen) Laub, Intellectual Property
“Guggenheim Impostor Can’t Shake $10M Suit”
Law360, April 22, 2011
John Dabney, Rita Weeks, Robert Zelnick and Michael Shanahan are noted as representing two financial firms associated with the Guggenheim family in a $10 million lawsuit against persons charged with impersonating Guggenheim family members to perpetrate investment fraud. A federal district court in New York has rejected one defendant’s attempt to contest the charges.
John J. Dabney, Michael E. Shanahan, Rita Weeks, Robert W. Zelnick, Intellectual Property
“John Magluyan Joins McDermott’s World Class Intellectual Property Team”
Intellectual Property Today, April 21, 2011
John Magluyan was profiled as a new partner in the Firm’s Orange County, California office. With technical and engineering experience, he advises clients in various technology fields (including software, semiconductors, digital communications, image processing, Internet and materials technologies, aerospace and optics) on foreign and domestic patent prosecution and on strategic IP transactional and litigation issues.
John D. Magluyan, Intellectual Property
“Microsoft Takes Patent Battle to Supreme Court”
CNET News, April 18, 2011
Sarah Chapin Columbia noted the large number of companies that filed supporting briefs with the Supreme Court for both parties in the Microsoft-i4i patent infringement case and said: “It’s a big deal…You don't often see that many companies investing in writing amici briefs.” She added that “the status quo could have stayed as it is had the court just not taken the case,” indicating the Court’s possible willingness to make a change in invalidity standards.
Sarah Chapin Columbia, Intellectual Property
“Supreme Court to Hear Microsoft, i4i Case Monday”
CIO.com, April 16, 2011
Sarah Chapin Columbia considered the consequence of defendant Microsoft’s position in this infringement case that only a “preponderance,” not “clear and convincing,” evidence should be needed to prove invalidity. “We already have a situation where the [patent] examiners are fairly overwhelmed with the volume of work. I think we're going to make it worse” if Microsoft wins, she said. Ms. Columbia noted that Microsoft and supporting companies “tend to … get a lot of lawsuits against them on patents, and in particular … by what we call non-practicing entities,” and thus, even though they have their own patents to defend, “would rather have the standard lowered for these non-practicing-entity cases.”
Sarah Chapin Columbia, Intellectual Property
“Five IP Traps in Nanotech Deals”
The Deal Magazine, April 15, 2011
Iona Kaiser and Valerie Moore wrote that acquirers of nanotechnology companies should make certain that all intellectual property rights are part of the deal. Prior agreements, pending infringement claims, liens, and failure to properly protect or exploit IP rights are all “issues that can impact an M&A transaction with a target nanotech company that should be evaluated during due diligence,” which should be done with the “aid of a firm with both broad IP expertise and extensive knowledge of nanotechnology.”
Iona Kaiser, Valerie C. Moore Ph.D., Intellectual Property
“Patent Strategies of a Laser Battle”
Law360, April 14, 2011
Daniel Foster analyzed several complex decisions by the federal courts for the District of Louisiana and the Federal Circuit in a patent dispute over a board game that uses laser beams. The dispute hinged on issues of invalidity, infringement and lost profits, and both the plaintiffs and the defendants benefited from the courts’ shifting decisions. “In the end,” he summarized, “the Federal Circuit upheld the district court on infringement, but vacated and remanded the invalidity decision” and vacated the permanent injunction given to the plaintiff. “Stay tuned,” Mr. Foster added, “as this ‘game’ is not yet over.”
Daniel R. Foster, Intellectual Property
“Supreme Court Microsoft Case Could Reshape Invalidity”
Law360, April 14, 2011
Sarah Chapin Columbia observed that in agreeing to hear Microsoft’s appeal of a major patent infringement damage award, “Many of us feel the Supreme Court would not have granted cert[iorari] unless [it] had designs on fiddling with the standard of proof” on patent validity. If the Court wanted the standard to stay the same, she added, “That would have been easy enough.” In Ms. Columbia’s opinion, if the Court lowers the current standard to one that requires only a preponderance of evidence, “Over time that weakens the position of patent holders and makes it easier to prove invalidity.”
Sarah Chapin Columbia, Intellectual Property
“Microsoft Finds Friends Among Foes in Supreme Court Patent Case”
Bloomberg News, April 13, 2011
Sarah Chapin Columbia said that defining the current standard of “clear and convincing” evidence of invalidity is difficult in an infringement trial because juries are instructed that they have to find “a very high probability,” which is “one of those instructions that doesn’t tell you anything.” If the Supreme Court’s decision in the current Microsoft-i4i infringement case upholds a lower “preponderance” standard, she added, it “has the potential to redraw the rules” on what is needed to invalidate a patent.
Sarah Chapin Columbia, Intellectual Property
“Top Intellectual Property Lawyers: Yar Chaikovsky”
Daily Journal, April 6, 2011
Yar Chaikovsky’s recognition as a top California patent litigator featured his defense of Zumbox Inc., a small digital postal system provider sued by a much larger competitor for infringing three patents. Even though the Patent Office upheld two of the patents, the district court stayed with the case and eventually found for Mr. Chaikovsky’s client – “with no precedential support for that position,” he noted, adding “I staved [Zumbox] off from spending massive amounts of litigation fees.” Mr. Chaikovsky also represents such companies as Yahoo Inc., Amazon.com and Adobe Systems Inc. in IP litigation.
Yar R. Chaikovsky, Intellectual Property
“Top Intellectual Property Lawyers: Terrence McMahon”
Daily Journal, April 6, 2011
Terrence McMahon’s designation as a top California IP lawyer reflects his three decades of practice in Silicon Valley, combined with a nationwide practice in patent litigation. “Cases regularly sweep him across the country,” the Daily Journal noted, including recent successful infringement defense of software maker Sybase Inc. in Virginia federal court, and a favorable settlement for Research Corporation Technologies Inc. in a 10-year Arizona court battle against Microsoft. Please click here to view the article.
Terrence P. McMahon, Intellectual Property
“Top Intellectual Property Lawyers: Jorge Arciniega”
Daily Journal, April 6, 2011
Jorge Arciniega, Yar Chaikovsky, Mark Itri and Terrence McMahon were selected for the publication’s annual rankings of the “Top 75 California IP Litigators” and “Top 25 California Portfolio Managers and Patent Prosecutors” for 2011. All four partners were profiled in this issue.
Jorge R. Arciniega, Intellectual Property, IP Litigation, Patent Prosecution
“Top Intellectual Property Lawyers: Mark Itri”
Daily Journal, April 6, 2011
Mark Itri’s wide-ranging patent and trademark practice – from reexaminations and cyber security to work for technology and alternative energy companies – was cited in his selection as a top California IP lawyer. He noted that reexamination “has to be done very strategically. It’s an under utilized tool” in portfolio management. Mr. Itri also spoke forcefully about his cyber security work, saying of those who infringe client web sites: “It’s a crime, and we’ve used Scotland Yard, the FBI and local police to bring these people to justice.” Please click here to view the article.
Mark J. Itri, Intellectual Property, Patent Prosecution
“Microsoft v. i4i: How High Will the Future Barrier to Invalidity Be?”
Bloomberg Law Reports, April 4, 2011
Paul Devinsky and Keith Stolte considered the Supreme Court’s agreement to hear this case, in which petitioner Microsoft and other large corporations as amici seek to overturn the Federal Circuit’s decades-old standard that a challenge to patent validity based on prior art not considered by the PTO must be based on “clear and convincing” evidence. The authors note that Microsoft characterizes this standard as inflexible and wants a return to the former preponderance standard, in which a defendant seeking to invalidate a patent must merely show that the evidence makes it more likely than not that the patent is invalid.
Paul Devinsky, Keith M. Stolte, Intellectual Property
“Guggenheim Imposter Still Using Family Name: Atty”
Law360, April 4, 2011
John Dabney requested a permanent injunction and statutory damages against one of several defendants in a multi-million trademark infringement case in New York federal district court against a group of imposters accused of using the Guggenheim family name to commit investment fraud. Mr. Dabney, who is representing two Guggenheim financial affiliates, said the defendant’s conduct in continuing to profess a family connection to sell oil interests violated an injunction and was “willful contempt over and over and over and over again.”
John J. Dabney, Intellectual Property
“People in Business”
Houston Chronicle, April 2, 2011
Carey Jordan was noted for her election as a board member of the Houston Intellectual Property Association for 2011-2012. Ms. Jordan focuses on patent prosecution, transactions and strategic portfolio management as a partner in the Firm’s Houston office.
Carey C. Jordan, Intellectual Property
“Put On Your Copyright Transfer Shoes”
Law360, April 1, 2011
Jeremy Elman discussed the implications of Barefoot Architect Inc. v. Bunge, a Third Circuit decision upholding a summary judgment that the plaintiff did not own copyrighted architectural plans at the time it allegedly infringed them. The plaintiff contended it had received oral transfer of the plans, but the court’s ruling demonstrated that, while subsequent agreements can effectively transfer copyright ownership, oral transfers of copyrights cannot be validated only by the subsequent agreements. Parties transferring copyright via an oral transfer must have contemporaneous evidence of the transfer.
Jeremy T. Elman, Intellectual Property
“A Patent Plaintiff is Forced to Pause”
Corporate Counsel, April 2011
Leigh Martinson observed that if wireless device patents of patent-holding company NPT Inc. are ruled invalid in a current matter before the Court of Appeals for the Federal Circuit, it would probably affect the company’s “ability to extract royalties from others going forward on those patents,” as it famously did from Research in Motion Ltd. for its BlackBerry product.
Leigh J. Martinson, Intellectual Property
“‘Me Too’ Tech Firms Race to Emulate Groupon, Others”
TheStreet.com, March 29, 2011
Yar Chaikovsky noted that, unlike a decade ago, the technology startups that are generating investor interest today have operated long enough to generate tangible revenue. “Companies like Groupon and Zynga are established companies, not overnight companies,” he said.
Yar R. Chaikovsky, Intellectual Property
“2011 Top Patent Firms”
Intellectual Property Today, March 24, 2011
McDermott was ranked 8th on this year’s list of top patent firms. Firms were ranked according to the number of utility patents issued in 2010 where the firm or individual is listed as the legal representative on the issued patent. Last year, McDermott was ranked 11th on this list.
“Tech Market: Frothy, But No Bubble”
TheStreet.com, March 9, 2011
Yar Chaikovsky stated his belief that, although several well-known technology startup companies have filed for IPOs in 2011, investor enthusiasm has yet to reach the levels seen when Netscape’s initial offering helped trigger the Internet stock boom. “Maybe when Facebook goes public it’ll be like a Netscape,” Mr. Chaikofsky added. “But then again, not even Google … created that level of craziness.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
"Legal advisors of Humana"
Juve online, March 8, 2011
McDermott Will and Emery was mentioned as legal advisor of Humana in the merger with Nordmilch. The joint venture operates now under the name of DMK Deutsches Milchkontor.
Thomas Ammermann, Gudrun Germakowski, Uwe Goetker, Daniel Klein, Christian Neumann, Norbert Schulte, Volker Teigelkötter, Sebastian von Lossow, Corporate, Corporate - Germany, Employee Benefits, Germany, Intellectual Property, IP, Media & Tech - Germany, M&A - Germany, Mergers & Acquisitions, Real Estate, Real Estate - Germany
“Slimmed Down Patent Reform Bill May Win Passage”
The Recorder, March 3, 2011
Yar Chaikovsky said that, even if U.S. Senate passes a patent reform bill from which all controversial elements have been dropped except a switch to a first-to-file patent system, House of Representatives members who don’t support that change “could still kill the possibility of the remnants of patent reform passing.”
Yar R. Chaikovsky, Intellectual Property
“Open for Business”
Corporate Counsel, March 1, 2011
Blair Jacobs noted that foreign companies that own U.S. patents were major contributors to the record number of IP cases heard in 2010 by the International Trade Commission (ITC). “Ten years ago, foreign companies were being dragged to the ITC,” Mr. Jacobs said. “Nowadays, a good number of filers are foreign companies.”
Blair M. Jacobs, Intellectual Property, International Trade Commission, IP Litigation
“Ex-Examiners Target USPTO’s 3-Track Patent Plan”
Law360, February 25, 2011
Bernard Codd said that an Administration plan for higher fast-track patent approval fees to add more patent examiners may not shrink the review backlog. “[N]ew examiners are generally not that efficient, and it takes about two to three years of examining to get the job down and understand patent law, how the system works and the technology sector they are working in,” he said. Mr. Codd also saw other problems, including that more fast-track applications could mean “examining may have to be put off for regular applications,” and that in a rush review, “if the examiner didn’t have access to relevant prior art when making a decision, a re-exam request could be filed and that patent could later be invalidated.”
Bernard P. Codd, Intellectual Property, Patent Prosecution
“Latest Try at Patent Reform Faces Long Odds”
The Recorder, February 21, 2011
Yar Chaikovsky warned that a patent reform bill now moving through the Senate could still be derailed if small companies and independent investors muster enough support to challenge the bill’s switch of the patent system from first-to-invent to first-to-file. “The small inventor will never support a first-to-file system,” Mr. Chaikovsky asserted. “Why? It costs money to file patents. They will always support a first-to-conceive rather than a first-to-file system.” He added about the bill, “I don’t think there’s enough support one way or another for this to pass.”
Yar R. Chaikovsky, Intellectual Property, Patent Prosecution
“Sarah Palin’s Attempt to Register Name with PTO Highlights Celebrity, Politician Concerns”
BNA Patent, Trademark & Copyright Law Daily, February 10, 2011
Robert Zelnick said the re-submission of “Sarah Palin” and “Bristol Palin” for trademarks under the political elections information and educational/entertainment classes of services could be successful because it “probably qualifies as use in commerce,” but added that if it does, “I’m curious to know what merchandising will follow.” Even if none does, Mr. Zelnick said he would “have a hard time telling almost anyone who has the ability to get a federal registration not to do it,” because “the investment isn’t huge, and maybe the deterrent effect alone is worth it.”
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
“NTP Faces Crucial Patent Challenge”
National Law Journal, February 7, 2011
Leigh Martinson, commenting on NTP Inc.’s appeal to the Federal Circuit on Patent Office rulings that invalidated a number of patents that it holds and has used to sue other companies for infringement, observed that losing at the circuit court level would likely affect NTP’s “ability to extract royalties from others going forward on those patents.”
Leigh J. Martinson, Intellectual Property, IP Litigation, Patent Prosecution
“En Banc Decision Allows Rejected Patent Applicants to Introduce New Evidence”
Inside Counsel, February 1, 2011
Paul Devinsky assessed an en banc Federal Circuit decision that removes limits on new evidence that patent applicants can enter in a Section 145 civil action to challenge a Patent & Trademark Office (USPTO) decision to deny patent rights. “The USPTO, for years now, has been trying to weed [Section]145[cases] out of the jurisprudence to avoid having to deal with new evidence,” Mr. Devinsky said. “I think it was becoming disruptive and a waste of time…” He added that district court applicants should not “leave any gray area in connection with the issue of whether or not you introduced new evidence and turned it into a de novo review.”
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
"McDermott's Columbia Offers Expertise, a Steady Hand and Wry Wit to Lead a Strong IP Litigation Group"
Of Counsel, January 2011
Sarah Chapin Columbia, in an extensive interview, said the McDermott IP Litigation Group's "real focus, particularly through the recession, has been clients, clients, clients, and we've really targeted our resources and our energies at client service and client attention." She enjoys her practice, saying, "It's intellectually challenging, it's stimulating, it's fun, it's cutting edge," but noted that "the biggest thing [we'll] continue to be challenged by through the next several years is ... the demand by our clients for alternative billing structures." Ms. Columbia also expressed pride that "here at McDermott within the IP Litigation Group we have three very senior and prominent women partners who are genuine trial lawyers... That's ... helped us a lot in recruiting [and] in client pitches ..."
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“US Supreme Court Expected to Weaken Patent Validity”
Intellectual Property Watch, January 12, 2011
Paul Devinsky predicted that the Supreme Court’s eventual ruling in Microsoft Corp. v. i4i Ltd. Partnership could create a “sea change” in U.S. patent law that would “affect what patent applications are filed, how patent applications are prosecuted, … and how patents are litigated.” The case focuses on whether a jury can strike down a patent as invalid, and Mr. Devinsky foresees that a Supreme Court decision “reducing the presumption of validity would make patents less powerful and more likely to be overturned.”
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
“PricewaterhouseCoopers Study Finds Jury Trials from 1995 to 2009 Yielded Higher Patent Damages Awards”
National Law Journal, January 11, 2011
Texas Lawyer, January 17, 2011
Sarah Chapin Colubmia said of the 14-year Pricewaterhouse Coopers study that, although lawyers have “all known for some time that juries are more generous than judges” in patent litigation cases, the report “demonstrates that very clearly over an extended period of time.” She added that this trend may change because the Federal Circuit “has been sending clear messages about damages awards and trying to put the pressure on patent holders to prove their damages.”
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Newegg GC Shops for Bargains at Small Firms”
The Recorder, January 10, 2011
Yar Chaikovsky was identified as one of several high-profile IP litigators serving as outside counsel to Newegg Inc., a seller of technology products that is the second largest online-only retailer in the U.S.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“IP Legislation to Watch in 2011”
Law360, January 1, 2011
Yar Chaikovsky predicted that the conflicting interests that have previously stalled patent reform legislation, such as between technology and life sciences companies, will continue to do so in 2011. “There will be patent reform legislation proposed as always,” he said of the new Congressional session, “but I don’t see any chance of that passing. I don’t care how it’s cut up. It’s not happening.” Mr. Chaikovsky added that while Congress is “burnt out on the patent side … there may be a push from the House or Senate to move on the copyright side,” but “in the IP world, legislation usually does not pass in the first instance even if the Senate and House are in agreement. Let’s look for 2012.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Patently Successful”
American Lawyer, January 1, 2011
Sarah Chapin Columbia, head of McDermott’s Intellectual Property Litigation Practice Group, is noted as one of the few top female IP litigators and practice group leaders at major U.S. law firms.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
2010
“Welcome to Patent Law’s Hottest Venue”
The National Law Journal, December 13, 2010
“International Trade Commission Flooded With Cases”
Broward Daily Business Review, December 20, 2010
Blair Jacobs noted that foreign companies that own U.S. patents were major contributors to the record number of IP cases heard in 2010 by the International Trade Commission (ITC). “Ten years ago, foreign companies were being dragged to the ITC,” Mr. Jacobs said. “Nowadays, a good number of filers are foreign companies.”
Blair M. Jacobs, Intellectual Property, International Trade Commission, IP Litigation
"Decision of the European Court of Justice concerning e-commerce"
Financial Times Deutschland, December, 7, 2010
Boris Uphoff is quoted referring to the dispute, wether internet presence comes with the risk of foreign litigation if firms provide their services to international consumers.
Boris Uphoff, Germany, Intellectual Property, IP Litigation
“Experts Fear Court Could Chill DOE/University Pacts”
Inside Energy, December 6, 2010
Carey Jordan said that a case before the Supreme Court involves whether universities own patent rights to federally funded energy projects as stipulated by the Bayh-Dole Act. “From a clean-tech perspective, if you get [federal] funding … then you have to think about … what your assignments look like” if the Court rules against university ownership, she warned. Ms. Jordan noted that, whoever wins the case, research contracts should define IP rights more clearly. “Inventors are going to have to be very careful of the documents they’re signing … [For those] working at … small businesses and universities, their assignment agreements will be much tighter.”
Carey C. Jordan, Energy Advisory, Intellectual Property
“PTO Extends Green Tech Program”
Daily Journal, November 12, 2010
Karen Laub noted that a recently extended U.S. Patent & Trademark Office pilot program that facilitates green technology patent approvals in one year instead of up to four “is perfect for startups,” and added that the only reason startups are not using the program is that too many do not know about it.
Soyeon (Karen) Laub, Intellectual Property
“Study: Progress of Female Lawyers Remains Static”
Boston Business Journal, November 11, 2010
Sarah Chapin Columbia acknowledged surveys that show numbers of female partners lagging at major law firms, but added that the statistics “don’t explain what happened with individual, highly talented lawyers who decided to do something different.” She declared that firms should “look out into future generations and identify top talent, which will be a mix of women, men and diverse groups … and invest ourselves in their success because that will make us stronger.”
Sarah Chapin Columbia, Intellectual Property
“Wanna Buy a Watch?”
Corporate Counsel, November 1, 2010
Robert Zelnick assessed the controversy over whether “gray market” resale in the U.S. of products made for sale abroad constitutes infringement, saying that the issue of provenance is especially important in today’s global economy. “If you are already manufacturing a product for a foreign market,” he explained, “you don’t have to drastically amend your business model to send some of that product to the U.S.”
Robert W. Zelnick, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
“Patent Litigation Survey 2010: An Unexpected Turn”
Corporate Counsel, October 28, 2010
Yar Chaikovsky commented that the Federal Circuit’s greater reliance on the entire market value rule for plaintiffs with infringement claims is having “a noticeable effect on the high-tech side” in patent litigation. “The ‘entire market value’ rule is applied much more vigorously,” he explained. “It’s causing plaintiffs to search for other methods, and be much more creative in their damage theories.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
"A Sedona Award Winner Discusses the Future of IP Law"
National Law Journal, October 22, 2010
Ray Lupo, honored with the 2010 Sedona Conference Lifetime Achievement Award, sees "the enormous number of patent applications" and the re-examination process in which the Patent Office must "determine whether the technology should have been issued," as major impacts on IP law. "From the filing [of a case] to knowing whether there is a valid patent that’s being infringed, if that’s going to take years because of re-examination, that’s going to slow down corporations from investing money," Mr. Lupo said. The combined effect, he warned, is that "a very important patent system and a judiciary that patent system are in trouble, in that the technology is not being judged quickly."
Raphael V. Lupo, Intellectual Property, IP Litigation
“Zelnick Discusses Brand Protection via Social Media”
Bloomberg Law Podcast, October 11, 2010
Robert Zelnick talks with Bloomberg Law's legal analyst Spencer Mazyck about business strategies for protecting and communicating brands via social media. Click here to watch the full segment.
Robert W. Zelnick, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
“A common defense: Recession pushes cooperation”
Boston Business Journal, September 24, 2010
Leigh Martinson was quoted regarding the trend of defendants who are sued by patent-holders to pool their resources and advance a common defense. Mr. Martinson noted that in such instances there is a risk that one or more defendants will settle before trial, leaving fewer parties to bear defense costs. The result among defendants, he said, “is a lot of striving for price competition from law firms. If you have a flat fee for a case of, say, 10 defendants, and each pays $500,000, that may make sense, but what happens if two of the 10 settle?” For this reason, Mr. Martinson added, a joint defense “needs to be carefully planned out and accounted for. But in most cases, working together is at least worth a long look.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Boston Bar housing affinity bars to boost diversity”
Boston Business Journal, September 24, 2010
Sarah Chapin Columbia discussed how increased fines for companies that mark products with expired or incorrect patent numbers have spurred a rash of damage claims against those companies. “No one stops to think that those patents have expired and we have to change our packaging.… That has attracted a lot of attention from plaintiffs and plaintiff attorneys who smell the money,” Ms. Columbia said regarding companies caught in this bind. She added that it behooves companies to properly label products with the correct patent numbers in order to alert potential infringers of patented status, so they know they cannot legally copy the product; by contrast, intentionally using an expired or incorrect patent number could be viewed as unfairly stifling competition.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
"Q & A With McDermott’s Sarah Chapin Columbia"
Law360, September 13, 2010
Sarah Chapin Columbia, spoke about key trends in infringement litigation. Noting efforts to "reform" the litigation process, she stated: "I don't think we need reform or legislation; rather, we need clear guidance from the Federal Circuit to help the district court judges and the parties gain some predictability around patent litigation cases. I would also be in favor of greater deference to the district courts on issues of claim construction." Ms. Columbia, in assessing future litigation trends, predicted a "wave" of life sciences cases "resulting from the follow-on biologics -- either as a result of legislative changes or not. In the electrical/mechanical fields, the next wave will be the plethora of cases that are yet to be filed by the growing number of very sophisticated patent-holding companies around the country."
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Lawsuits allege copyright violations in posting of newspaper's articles on Web sites”
Washington Post, September 13, 2010
Robert Zelnick commented about a Las Vegas firm that purchased the rights to articles from a newspaper in that city and had filed copyright infringement lawsuits against organizations that quote those articles on their websites. “I’m not sure the amount sought or settled for is a direct reflection of the quantum of guilt or the egregiousness of conduct,” Mr. Zelnick said of the cases. “But from what I’ve been reading, many of the parties are settling for a number that’s around a few thousand dollars. I think from their perspective, it would cost more to hire a lawyer with expertise to evaluate the claims and pull together defenses.”
Robert W. Zelnick, Intellectual Property, IP Litigation
Karen Pak Laub spoke to Law360 (August 30) about dangers for companies that outsource computer hardware and software to third-party providers of so-called "cloud computing"services. Ms. Laub said such arrangements may subject businesses to infringement litigation because "if patent claims are directed to a method of operating and the only way to show infringement is through customers, not a competitor, a provider may bring them into a suit.” She added that there is greater risk when such plaintiffs are "patent holders that don’t make or sell anything because they have a patent they want to enforce and they don’t have any customers." Ms. Laub advised cloud computing customers to negotiate indemnity protection with providers: "Customers that are using a lot of services should ask for a warranty of noninfringement. If you’re a big customer, your risk is higher and you should be in a better bargaining position."
Soyeon (Karen) Laub, Computer Hardware/Networking, Intellectual Property, IP Litigation
Steven Spears was cited in an August 1 Inside Counsel / insidecounsel.com review of the TiVo Inc. v. EchoStar Corp. litigation involving allegations of repeat patent infringement by the same defendant. In March a Federal Circuit Court of Appeals panel granted district court judges wide latitude to use contempt proceedings to handle allegations of repeat infringement, but the full Court vacated that ruling in May and will rehear the case en banc this fall. Mr. Spears said he expects that the Court will clarify the standards for using contempt proceedings against repeat infringers. “My expectation is they will give some guidance regarding a more bright line standard for when contempt citations are appropriate,” he stated.
Steven G. Spears, Intellectual Property, IP Litigation
Blair Jacobs addressed for Law360 (July 23) the most effective approach for defense attorneys to bring a Daubert admissibility challenge to exclude expert testimony. Such a challenge applies standards set by the U.S. Supreme Court in its 1993 Daubert decision, and Mr. Jacobs advised laying the groundwork for such a challenge early and amply preparing for depositions. “You can’t treat Daubert as something to look at at the end,” he stated. “You have to look at [it] as soon as the expert process begins to make sure you develop a record so that you can show the judge” if the expert is being speculative.
Blair M. Jacobs, Intellectual Property, IP Litigation
Joseph Robinson spoke to PharmaWire on July 13 about a bill passed by the House of Representatives that gives the FTC the authority to prosecute pay-for-delay settlements in patent infringement disputes between brand name and generic pharmaceutical companies. Mr. Robinson said that the legislation will make it difficult to determine if such settlements will withstand FTC scrutiny, and he added that there will likely be more large generic drug companies doing at-risk launches of new products because, in the absence of a settlement, any possible infringement litigation will be prolonged.
Joseph R. Robinson, Intellectual Property, IP Litigation, Life Sciences - IP
Yar Chaikovsky commented (June 28) regarding the U.S. Supreme Court's Bilski ruling, which found the business method patent application at issue too abstract to be patent eligible, but held 5-4 that business methods themselves are not excluded from patent protection. For Law360 he said, "It was hoped that the case would end business method patents. Instead, the Court effectively punted the issue while relying on its past precedent." For The New York Times he said of Justice Stevens (whose dissenting opinion in the 5-4 ruling called for finding that business methods are not patentable), "He was swinging for the fences to have something to be remembered for many, many decades to come." For The Recorder he called the opinion by Justice Stevens "a pretty strong rebuke to the majority opinion," adding: "It appears Stevens does think that business method patents are a problem, but he couldn't convince a fifth member of the Court to agree."
Yar R. Chaikovsky, Intellectual Property, IP Litigation
Robert Underwood was quoted June 4 in the Boston Business Journal concerning the growing phenomenon of distressed companies attempting to sell intellectual property assets. He noted that thorough due diligence about the IP by buyers is essential, because “sometimes the seller doesn’t want to disclose all the details in case the deal doesn’t close,” or because, if the seller is in economic trouble, “a lot of the information and people who led to the creation of that IP are lost, because people are scattered to the winds.” Mr. Underwood recommended that development teams from both buyer and seller get on the same page regarding the scope and depth of the IP analysis, but added that even then a problem like potential litigation could show up after the deal is done. When a troubled company is the seller, he said, “It’s more of a buyer beware [situation].”
Robert H. Underwood Ph.D., Intellectual Property
Robert Underwood told Mass High Tech (May 26) that while many small technology companies believe they own a technology “platform” that will produce the kind of multiple products that investors want, “Too often the IP of these companies tells a different story – they merely own a promising product.” Mr. Underwood said that creating IP that covers a platform is a significant challenge in light of recent court decisions, adding that “in this environment, successful companies invest in developing the IP and aligning the message [to investors] with the IP.”
Robert H. Underwood Ph.D., Intellectual Property
On May 25 Enhanced Online News reported that Firm client Zumbox, Inc. announced that the United States District Court for the Central District of California granted its Motion to Stay a patent infringement litigation brought by Pitney Bowes, Inc. The Stay was issued after the USPTO commenced a reexamination of the Pitney Bowes patents. Furthermore, Zumbox filed a motion to stay the litigation with the United States District Court pending the outcome of the reexaminations. On May 20, 2010, the Court issued an order granting Zumbox's motion to stay the litigation. Partner Yar Chaikovsky, lead attorney for Zumbox, commented, "As a result of this order, the patent litigation will not proceed while the reexaminations are moving forward. Zumbox is very pleased with this result." Click here to view the full release.
Terry W. Ahearn, Yar R. Chaikovsky, Intellectual Property, IP Litigation
Steven Spears spoke to Law360 on May 18 concerning the U.S. Court of Appeals for the Federal Circuit’s decision to rehear en banc the infringement dispute between Echostar Corp. and TiVo Inc. over a digital video recorder patent. Saying that the case “will be on everyone’s list of the top five Federal Circuit decisions of the year,” Mr. Spears believes that the so-called colorable difference standard for deciding whether a redesigned product infringes is at the heart of the dispute, noting that, given its lack of clarity, “how to put meat on that standard is the issue the Federal Circuit will be wrestling with.” He added that “this is an area that could use clarification, and clarification is always good.”
Steven G. Spears, Intellectual Property, IP Litigation
Leigh Martinson spoke about the economic pressures driving patent law reform in a May 10 Mass. High Tech article. He said that such pressure is “a result of the law not keeping up with how fast technology is moving, so you’re hearing about patent reform in every Congressional session now.” Mr. Martinson also noted that “the courts are taking matters into their own hands” by updating patent law with “changes in how damages are calculated and what reasonable royalties are. If anything, changes in technology are driving changes in the law.” For many companies, he added, intellectual property is now “the core of the business. It used to be, ‘just get me a patent.’ Now its, ‘Get me a patent that’s going to allow me to leverage relationships and compete.’ That’s exciting.”
Leigh J. Martinson, Intellectual Property, Patent Prosecution
David Beckwith discussed for the Daily Transcript (May 7) the substantial increase in litigation filed by plaintiffs alleging that companies have falsely marked a product with an incorrect or expired patent number. “In the past manufacturers would mark products and packaging with the patent numbers and forget about it,” Mr. Beckwith noted, but several federal court decisions imposing per-item fines for false marking with expired patent numbers have prompted numerous individual lawsuits because “it doesn’t cost [plaintiffs] anything to figure out what the patent is for and when it expires.” He advised companies that “if you review your patents periodically then you can mount a defense,” adding that “it’s better to do so before a lawsuit is brought on.”
David M. Beckwith, Intellectual Property, IP Litigation
Terrence McMahon and Peter Sacripanti were quoted (April 26) in stories covering the U.S. Court of Appeals for the Federal Circuit's reversal of a federal district court's imposition of sanctions and fees against McDermott for the Firm's handling of a patent infringement lawsuit. Mr. McMahon, lead attorney in lawsuit, expressed pleasure in the Federal Circuit's finding that "we engaged in proper and zealous advocacy on behalf of our client, Medtronic." As co-chair of the Firm, Mr. Sacripanti added that "we believe in giving 100 percent for our clients, but always within legal and ethical guidelines," and praised McDermott's Medtronic team as "excellent trial lawyers who are committed to giving our clients the best possible representation within the bounds of ethical advocacy..." The stories appeared in Above the Law, AmLaw Daily, Blog of Legal Times, Law.com, The National Law Journal and The Recorder.
Terrence P. McMahon, Peter John Sacripanti, Intellectual Property, IP Litigation
Terrence McMahon was quoted on April 28 by JD Journal concerning the Federal Circuit Court of Appeals reversal of a district court’s sanctions against McDermott for litigation tactics in a 2008 patent infringement representation of Medtronic. “This is a complete vindication of the trial work that we did for Medtronic, and I’m pleased that the Federal Circuit has concluded that we engaged in proper and zealous advocacy,” Mr. McMahon said. In an April 29 Broward Daily Business Review summary of the matter, Mr. McMahon added that he was “delighted” by the Federal Circuit Court’s decision.
Terrence P. McMahon, Intellectual Property, IP Litigation
Terrence McMahon commented on the Federal Circuit’s reversal of a federal district court’s sanctions against McDermott in April 27 interviews. Mr. McMahon, lead attorney in the Medtronic patent infringement lawsuit that was the target of the district court’s action, told Law360 that the Federal Circuit’s ruling was “a vindication for all trial lawyers who assertively and fairly advocate on behalf of their clients.” To Law.com he added of the Federal Court’s action, “This is a complete vindication of the trial work that we did for Medtronic, and I’m pleased that the Federal Circuit has concluded that we engaged in proper and zealous advocacy.”
Terrence P. McMahon, Peter John Sacripanti, Intellectual Property, IP Litigation
Leigh Martinson was quoted in an April 15 National Law Journal story about a streamlined review process at the U.S. Patent & Trademark Office (PTO). Mr. Martinson said that the new procedures should help keep patent lawyers from receiving “notices over the most stupid things and that really slows you down.” He added that patent appeals have become more critical as the number of patents approved has dropped. “If you think you cannot make any headway with a patent examiner, your only option is to appeal,” Mr. Martinson stated, “and the speed in which you can have your appeal heard and reversed or confirmed is important.”
Leigh J. Martinson, Intellectual Property, IP Litigation, Patent Prosecution
David Dolkas was quoted in an April 12 Law360 assessment of effective project management strategies for law firms. Mr. Dolkas suggested that both law firms and litigation clients should “do a really aggressive analysis of the case at the front end, so they know what’s important and have a good idea of the risk.” He also said lawyers should have “a very good sense of who’s doing what, and what needs to be done” on a case, so they can keep clients “dialed in on where you are that the start of the month, or the middle of the month, in terms of fees and costs.” Mr. Dolkas also urged open communication between lawyers and clients about a matter, and said that should continue after a case is completed in an “afteraction” review – “not to assess blame,” he said, “but to foster improvement” and to give clients attention that they will appreciate.
David Henry Dolkas, Intellectual Property, IP Litigation
Paul Devinsky was quoted extensively in an April 8 Law360 review of intellectual property enforcement in China. Mr. Devinsky noted that, because trademark proceedings against infringers move quickly, "Companies may have a lot of work to do to protect against counterfeiting, but if they put their fingers in a lot of holes they can diligently police their marks and prevent specific activities." Infringement damages are relatively limited so, as Mr. Devinsky stated, "what a company may win may not appear to be a victory."
Paul Devinsky, Intellectual Property
William Gaede was quoted in a March 30 Law360 story about the potential negative impact on the biotechnology industry of a federal judge’s ruling that invalidated patents on two genes linked to breast and ovarian cancer because they involve DNA as it is found in nature. Mr. Gaede, who filed an amicus brief in the case for a coalition of diagnostic companies, expressed concern about the ruling’s impact on life sciences investors. “The incentive to invest in diagnostic and biologic companies rests on certainty in patent law,” he said. “This decision will create uncertainty in investors’ minds as to whether the business models of certain companies are sustainable under the patent laws.”
William Gaede, Intellectual Property, Life Sciences & Medical Products, Life Sciences - IP
Blair Jacobs was quoted in a March 30 Law360 report concerning the resolution of three lawsuits by TeleCommunication Systems Inc. against Sybase 365 Inc. The confidential settlement resolved federal court litigation in Virginia and Delaware and also involved an earlier resolution of claims that gave Sybase licensing access to certain text messaging technology in exchange for a payment to settle patent infringement claims. Mr. Jacobs, who represented Sybase, said the company was “pleased that all the litigation has been settled and resolved.”
Blair M. Jacobs, Intellectual Property
Yar Chaikovsky commented for Law360 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.
Carey C. Jordan, Iona Kaiser, Energy Advisory, 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 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, Energy Advisory, 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 & Securities Defense
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.
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, Trademark/Brand Protection & Enforcement
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 scientific advisor Nicole Sullivan had also joined McDermott, both from the same firm where Messrs. DelJuidice and Zagar had practiced.
Louis J. DelJuidice, 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
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
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.
, 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 Products, 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 Products, Life Sciences - IP, Life Sciences - Medical Products & Technology
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.
, Intellectual Property, Telecom, Media & Technology
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
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
"Legal advisor of Lloyd's"
Juve Rechtsmarkt, December 2008
Boris Uphoff was mentioned as legal advisor of Lloyd's in litigation against Woolworths.
Boris Uphoff, Germany, Intellectual Property, IP, Media & Tech - Germany
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
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
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
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.
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.
, 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, 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 Ph.D., Intellectual Property, Life Sciences & Medical Products
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 Ph.D., Intellectual Property, Life Sciences & Medical Products
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 Ph.D., 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 Ph.D., Intellectual Property, Life Sciences & Medical Products
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
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
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
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
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 and Blake D. Rubin.
Bobby R. Burchfield, Joel M. Freed, 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
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 Products, Life Sciences & Medical Products Litigation, Life Sciences - IP
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.
, 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.
, 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
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, Intellectual Property
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
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
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 Products
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 published in the October 16 issue of Legal Times. The article references the author's statement that tax patents could lead to unequal treatment under the tax code, becoming "government issued barbed wire" for some taxpayers.
Paul Devinsky, 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 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, 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."
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
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
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
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
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
Wolfgang von Frentz was a guest on the Indian television station T1 in connection with his speaking engagement at the televised 2006 World Customs Organisation IT Conference and Exhibition.
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 Products
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
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
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
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."
Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology
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, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology, 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
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 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, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology
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, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology
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."
Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology
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
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 Products, 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 Products, 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
Terry McMahon was 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.
Terrence P. McMahon, Intellectual Property, Trial
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
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 Products, 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 Products, 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 Products, 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
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 Products, Life Sciences - IP
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, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology, 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.
Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology, 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, Germany, Intellectual Property, IP, Media & Tech - Germany, Telecom, Media & Technology, 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 Ph.D., Intellectual Property, Life Sciences & Medical Products, 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 Products, 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
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
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 Products, 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
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 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
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 Products, 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 Products
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 Products
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 Products, 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 Products, 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 Products
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
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
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
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.
, 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.
, 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.
, 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
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.
, Intellectual Property, Trial
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
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 12 issue of Forbes, "Domain Name Loss for Boss."
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."
