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Patents

Related Practices

Rankings & Honors

  • U.S. News/Best Lawyers “Best Law Firms”
  • IAM Patent 1000
  • Managing IP magazine
    • Ranked in the top 15 among all U.S. law firms for securing “the highest quality patents” for clients across all industries
    • Recognized as a national leader in the patent category for bio life sciences
 

PATENTS

We have the scientific, legal, and business acumen to help clients strategically develop strong, innovative, and enforceable patent portfolios that are the foundation of their business.

Our approach

The patent landscape and global business landscape are rapidly shifting. Companies are increasingly encountering obstacles in their path to commercialization. Our attorneys are at the forefront of the shifting landscape. We work closely with clients to remove obstacles, help them stay ahead of changing patent laws and judicial decisions, and provide solutions for navigating around competitors’ patents, extracting value from their intellectual property, and for protecting their assets.

As one of the leading, full-service, patent firms, we’re very experienced in helping clients maintain rights and ownership, generate significant revenue from their patents, and leverage the technologies of the future.

We understand the changing post-issuance AIA procedures and help clients leverage those procedures as part of an overall strategy to neutralize competitors.

Who we work with

  • Leading universities and medical centers
  • Biotech, medical device, health care, and pharmaceutical companies
  • Companies operating in the software and hardware industries
  • Manufacturers in a wide variety of business sectors including semiconductors, optics, and communications
  • Electronics companies

Representative Experience

  • Assist a major software company in protecting its breakthrough advances in the areas of science and engineering and successfully defended the company against three reexamination attempts by third parties
    Assist a major software company in protecting its breakthrough advances in the areas of science and engineering and successfully defended the company against three reexamination attempts by third parties
  • Manage a portfolio of U.S. and international patents on behalf of one the largest companies in the computer entertainment and video game industry  
    Manage a portfolio of U.S. and international patents on behalf of one the largest companies in the computer entertainment and video game industry
  • Conduct IP due diligence on behalf of a large semiconductor company related to potential acquisition targets
    Conduct IP due diligence on behalf of a large semiconductor company related to potential acquisition targets
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  • Advise a leading currency authentication company with respect to managing a wide portfolio of U.S. and foreign patent
    Advise a leading currency authentication company with respect to managing a wide portfolio of U.S. and foreign patent

  • Represent a large media company in various IP transactions, including licensing arrangements
    Represent a large media company in various IP transactions, including licensing arrangements

  • Handle technology transfer and licensing work on behalf of a leading academic medical center
    Handle technology transfer and licensing work on behalf of a leading academic medical center

  • Represent one of the world’s most recognized energy companies in a variety of licensing transactions, as well as a joint venture
    Represent one of the world’s most recognized energy companies in a variety of licensing transactions, as well as a joint venture

  • Conduct IP due diligence on behalf of a financial service firm related to its investment in a third party
    Conduct IP due diligence on behalf of a financial service firm related to its investment in a third party

  • Work with one of the leading academic institutions in the United States to develop and execute an overall patent strategy for a water purification technology; this technology is particularly promising for under-developed countries
    Work with one of the leading academic institutions in the United States to develop and execute an overall patent strategy for a water purification technology; this technology is particularly promising for under-developed countries

  • Provide U.S. and international patent prosecution services to one of the leading global manufacturers of conveyor belts for food processing and other applications
    Provide U.S. and international patent prosecution services to one of the leading global manufacturers of conveyor belts for food processing and other applications

  • Assist a cutting-edge stem cell institute in devising and executing strategies that will extract the greatest value from their IP and also assist the institute in maneuvering around other people’s patents
    Assist a cutting-edge stem cell institute in devising and executing strategies that will extract the greatest value from their IP and also assist the institute in maneuvering around other people’s patents

  • Manage an extensive patent portfolio on behalf of one of the leading wireless telecommunications companies
    Manage an extensive patent portfolio on behalf of one of the leading wireless telecommunications companies

  • Manage a large U.S. patent portfolio for a  Japanese research and development company focused on semiconductor and flat panel displays; the work we do is critical to the company’s success since its revenue model is predicated on its R&
    Manage a large U.S. patent portfolio for a  Japanese research and development company focused on semiconductor and flat panel displays; the work we do is critical to the company’s success since its revenue model is predicated on its R&D

Media Clips

  • New Ammo for Apple in Patent Trial
    Daily Journal | October 8, 2014
    San Francisco IP Litigation partner Ron Lopez provides commentary in this feature story on the ongoing patent trial involving Apple.
  • Optics firm taking Chinese manufacturers to task
    Democrat & Chronicle | September 18, 2014
    Rochester IP Counseling & Transactions partner Kristen Walsh is quoted in this article on IP issues for U.S. companies operating, or considering starting operations, in China.
  • The Past, Present and Future of Stem Cells
    Daily Journal | August 27, 2014
    Los Angeles office managing partner Seth Levy and Los Angeles patent agent Stephen Chen co-authored this column looking at the state of stem cells and what’s next.
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  • Fed. Circ. May Ditch Rigid Stance after High Court Reversals
    Law360 | June 27, 2014
    Silicon Valley IP Litigation partner Shawn Hansen discusses the U.S. Supreme Court's repeated reversals of patent decisions by the Federal Circuit.
  • Lawyers Weigh In On High Court's Software Patent Ruling
    Law360 | June 19, 2014
    Silicon Valley IP litigation partner Shawn Hansen and Washington, DC, IP Counseling & Transactions professional specialist Rob Pilaud provide commentary on the Supreme Court’s decision in Alice Corp. v. CLS Bank ruling that computerized abstract ideas are not patent eligible.
  • USPTO Plan to Speed Up Patent Apps Will Limit Protection
    Law360 | June 12, 2014
    Boston IP Counseling & Transactions partner David Crosby discusses a new U.S. Patent and Trademark Office program that will speed up the process by which software patent applications are processed.
  • In the News
    Chicago Daily Law Bulletin | May 21, 2014
    This coverage notes that Chicago IP Counseling & Transactions partner Sorin Cimpoes has been named to the board of managers of the Intellectual Property Law Association of Chicago.
  • Personalized Medicine Changes the Rules of the Play (Personoitu Laaketiede Muuttaa Pelisaantoja)
    Mediuutiset (Finland) | March 21, 2014
    In this Finnish health care publication, Boston Patents counsel Leena Karttunen Contarino provides commentary on how the FDA defines personalized medicine and about the FDA’s attempts to handle personalized medicine drugs and devices in an integrated process.
  • Provisional Patent Apps Need More Detail In Post-AIA Era
    Law360 | February 26, 2014
    Silicon Valley Patents partner Kal Shami discusses how provisional applications need to provide a more complete picture of the claimed invention to protect patents in a post-America Invents Act world.
  • In the News
    Chicago Daily Law Bulletin | February 10, 2014
    This news brief notes that Chicago Patents attorney Sorin Cimpoes has been elected to the firm’s partnership.
  • Universities Seek More Legal Help on Export Control Compliance
    Daily Journal | February 4, 2014
    Patents partner and Los Angeles office managing partner Seth Levy discusses export control compliance relating to increased federal enforcement attention on academic institutions bringing in top international talent.
  • People on the Move
    San Jose/Silicon Valley Business Journal | February 4, 2014
    This coverage notes that Silicon Valley Patents attorney Maria Swiatek has been elected to the firm's partnership.
  • Strong Software Patents Crucial, Michel Tells Justices
    Law360 | January 28, 2014
    Chicago Intellectual Property Litigation partner Mark Halligan is noted in this article for his representation of the International Association for the Protection of Intellectual Property who recently filed an amicus brief with the Supreme Court urging that any ruling that weakens software patents "would be a step backward for the United States."
  • Patentable Subject Matter in the U.S.
    IP Copy | December 17, 2013

    Los Angeles patents partner Seth Levy discusses the current state of case law in the U.S., the U.S. Supreme Court's Myriad decision and its aftermath, USPTO Guidance, and patent prosecution tips.

  • Personalized Medicine Providers, FDA Has Your Back
    Law360 | December 8, 2013
    Boston Patents counsel Leena Karttunen Contarino and Washington, DC, Health Services and Life Sciences partner Areta Kupchyk authored this column discussing the U.S. Food and Drug Administration’s comprehensive personalized medicine report.
  • Enter the Academic-Entrepreneur
    Daily Journal | November 27, 2013
    Los Angeles Patents and office managing partner Seth Levy authored this contributed article focusing on some of the pitfalls that exist for the academic-entrepreneur and the university technology transfer programs whose currency is those academician’s innovations.
  • Patent Law Committee Taps Nixon Peabody's Paul Kitch as Vice-Chair
    Intellectual Property Today | October 28, 2013
    This article notes that Chicago Patents partner Paul Kitch has been named vice chair of the American Intellectual Property Law Association’s Patent Law Committee.
  • Myriad Decision Aftershocks Ripple through Biotech
    Nature Biotechnology | August 8, 2013

    Co-leader of the Patents practice and Life Sciences partner David Resnick discusses the impact of the June 2013 U.S. Supreme Court decision in the Myriad Genetics case.

  • Patent Troll Lawsuits Rare In Device Industry, But May Increase, Attorneys Say
    The Gray Sheet | June 24, 2013

    Chicago partner and leader of the firm’s Intellectual Property Litigation practice Russ Genet discusses the trend of lawsuits from firms that buy up device patents purely to pursue litigation becoming more commonplace.

  • SCOTUS: Human Genes Can't Be Patented
    CNBC | June 13, 2013

    Co-leader of the firm’s Patents practice and member of the Life Sciences team David Resnick discusses the U.S. Supreme Court’s ruling that human genes cannot be patented, striking down Myriad Genetics Inc.'s patents on isolated DNA associated with an increased risk of breast cancer.

  • High Court's Myriad Ruling Won't Crush Biotech Industry
    Life Sciences Law360 | June 13, 2013

    Co-leader of the firm’s Patents practice and member of the Life Sciences team Ron Eisenstein discusses the U.S. Supreme Courts’ ruling that human genes cannot be patented, striking down Myriad Genetics Inc.’s patents on isolated DNA associated with an increased risk of breast cancer.

  • Attorneys, Tech Transfer Pros Offer Their Take on How to Address New Rules under AIA
    Technology Transfer Tactics | March 1, 2013

    Boston partner and Patents practice co-leader Ron Eisenstein discusses new key provisions of the America Invents Act (AIA).

  • Top 40 Angelenos to Know in Intellectual Property Law
    Los Angeles Business Journal | October 29, 2012

    Los Angeles Patents partner Seth Levy is profiled in this special section highlighting “Who’s Who” in intellectual property in the region.

  • EXTRA! EXTRA! En Banc Federal Circuit Overrules Its Precedent on Induced Infringement
    IP Today | October 16, 2012

    Authored by Chicago intellectual property partner Paul Kitch and Chicago intellectual property litigation associate Jason Kunze, this article discusses the law concerning induced infringement of patented methods. Click here to download the article.

  • Federal Circuit Again Upholds Myriad's BRCA Gene Claims
    BioWorld Today | August 17, 2012

    Washington, DC, Patents counsel Mary Webster provides commentary in this article focused on the decision by the U.S. Court of Appeals for the Federal Circuit regarding the validity of Myriad Genetics Inc.’s claims for its BRACAnalysis breast cancer gene test.

  • Washington Roundup: Federal Circuit Broadens Hatch-Waxman Safe Harbor
    BioWorld Today | August 7, 2012

    This article recaps a recent U.S. Court of Appeals decision expanding the safe harbor for generic drug makers. Washington, DC, patents counsel Mary Webster is quoted discussing how expanding the safe harbor will affect patent claims.

  • Federal Circuit Revisits Myriad Breast Cancer Gene Claims
    BioWorld Today | July 23, 2012

    This article focuses on the Association for Molecular Pathology v. Myriad Genetics Inc. case and arguments in the Federal Circuit about the patentability of isolated DNA. Washington, DC, Patents counsel Mary Webster provides commentary.

  • Business of Law: Nixon Peabody Expands IP Practice in L.A. with Davis Wright Team
    Bloomberg News | May 8, 2012

    This article highlights the arrival of Los Angeles Patents and Life Sciences partner Seth Levy and his team.

  • Nixon Peabody LLP Meets KenJiva’s IP Challenge
    The Law Project | April 12, 2012

    Chicago Patents counsel Wayne Tang is featured in this story discussing an intellectual property matter faced by the CEO of KenJiva Energy Systems, a startup energy management firm. Wayne provided legal counsel pro bono through the organization the Law Project.

  • Fallout from Court Decision to Have Long-Term Impact
    BioWorld Today | March 21, 2012

    This article focuses on the Supreme Court ruling determining that Prometheus Laboratories Inc.’s process claims were not patent eligible. Boston partner and co-leader of the firm’s Patents practice group Ron Eisenstein provides third-party commentary about what the ruling means for the biopharma industry and personalized medicine.

  • Start-Up Biotechs May Face Rock-Hard Patent Quandary
    BioWorld Today | March 12, 2012

    This article notes that small biotechs, universities, and other holders of early upstream patents could find themselves caught between the new first-to-file patent system and the ever tougher patent standard being set by the Court of Appeals for the Federal Circuit. Washington, DC, Patents counsel Mary Webster provides commentary.

  • Increased Biopharma Patent Valuation Fuels Litigation
    BioWorld Insight | January 30, 2012

    This article notes that as patents are becoming increasing more important for biopharma organizations, patent litigation is also increasing and raising the patents’ values at the same time. Washington, DC, Patents counsel Mary Webster provides commentary.

  • TTOs Often Walk a Fine Line When Negotiating Rights to Improvements
    Technology Transfer Tactics | January 1, 2012

    This feature story discusses how technology transfer offices (TTOs) can effectively deal with the rights to intellectual property improvements in license agreements. Boston partner and co-leader of the firm’s Patents practice Ron Eisenstein provides commentary in the piece.

  • Personalized Medicine Could Hinge on Supreme Court Ruling
    BioWorld Today | December 8, 2011

    This story notes that the future of personalized medicine rests in the hands of the U.S. Supreme Court as it mulls arguments in Mayo Collaborative Services v. Prometheus Laboratories Inc. Patents practice co-leader and member of the firm’s Life Sciences practice David Resnick provides third-party commentary.

  • What TTOs Need to Know about Freedom-to-operate Analyses
    Technology Transfer Tactics | December 1, 2011

    Boston partner and co-leader of the firm’s Patents practice Ron Eisenstein provides commentary in this article abut what Technology Transfer Office (TTO) managers need to know about freedom to operate investigations.

Ideas

USPTO extends deadline for Patents for Humanity applications to October 31, 2014
Intellectual Property Alert | September 26, 2014

Third Circuit extends Supreme Court's Octane decision to Lanham Act cases
Intellectual Property Alert | September 8, 2014

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Webcast Recording: Patents for Humanity
Originally recorded August 14, 2014 | August 20, 2014

Webinar Recording: Seven Things You Need To Know Now About The Continually Shifting IP Landscape
Originally recorded July 10, 2014 | July 11, 2014

The Supreme Court did not kill software patents in its decision in Alice Corp. v. CLS Bank
Intellectual Property Alert | June 19, 2014

Personalized medicine patent watch
Intellectual Property Alert | May 20, 2014

Initial take on U.S. Patent Office's public forum on new 101 subject matter eligibility guidelines
Life Sciences Alert | May 12, 2014

Supreme Court relaxes standard for awarding attorneys' fees in patent infringement cases
Intellectual Property Alert | May 1, 2014

New patent-eligible subject matter guidelines announced
Intellectual Property Law Alert | March 12, 2014

Personalized medicine patent watch
Intellectual Property Law Alert | February 27, 2014

Personalized Medicine Patent Watch - June 2013
Intellectual Property Alert | June 12, 2013

Personalized Medicine Patent Watch
Intellectual Property Alert | October 31, 2012

Federal circuit holds an assertion of induced infringement does not require proof of underlying direct infringement by a single party
Intellectual Property Alert | September 10, 2012

The developing legacy of Prometheus: new interim guidelines for patent eligible subject matter
Intellectual Property Alert | July 16, 2012

How abstract is too abstract for a patent?
Intellectual Property Alert | July 10, 2012

Personalized Medicine Patent Watch Update
Intellectual Property Alert | July 9, 2012

Federal Circuit holds the objective prong of the willful infringement analysis is a question of law to be reviewed de novo
Intellectual Property Alert | June 26, 2012

Webinar Recording: Marketing Your Products and Services Without Losing Your IP
Originally recorded June 14, 2012 | June 19, 2012

Supreme Court unanimously holds § 145 to allow admission of new evidence and de novo review of BPAI decisions by the District of Columbia
Intellectual Property Alert | April 23, 2012

Webinar Recording: Surviving Mayo v. Prometheus
Originally recorded April 10, 2012 | April 11, 2012

Divided en banc Federal Circuit: only new or amended claims in reexamination give rise to intervening rights
Intellectual Property Alert | March 19, 2012

Federal Circuit holds res judicata bars new action after reexam, but not infringing actions or device modifications occurring after the previous complaint
Intellectual Property Alert | March 16, 2012

‘First-to-File' is a year away, but planning should start today
Intellectual Property Alert | March 14, 2012

Federal Circuit avoids "murky morass" of Section 101 jurisprudence, proceeds directly to Sections 102 and 103
Intellectual Property Alert | March 7, 2012

Crafting personalized medicine IP protection—walking the thin line between patent eligibility and enforcement
Intellectual Property Alert | January 10, 2012

USPTO announces: fast-track patent processing available after the filing of an RCE
Intellectual Property Alert | December 21, 2011

Federal Circuit grants mandamus, transfers patent case against Delaware company out of Delaware
Intellectual Property Alert | December 9, 2011

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