Patents



Leveraging our experience filing patents and developing comprehensive patent strategies, we partner with clients that drive technological and/or scientific advancements to protect, exploit and commercialize their patents.

Our Approach

Our patent attorneys, patent agents and technical specialists hold undergraduate and/or advanced degrees in computer, electrical and mechanical engineering, biology, biochemistry, chemistry, microbiology or other related areas. Many team members also have worked outside the legal field as business industry leaders or as cutting-edge researchers. These combined experiences give us the legal and business acumen to provide clients with the strategic counsel necessary to develop strong, innovative and enforceable patent portfolios integral to business success.

Our goal is always to develop a patent strategy that neutralizes our clients’ competition. We remove obstacles and help clients stay ahead of patent laws and judicial decisions, including the ever-changing post-issuance America Invents Act procedures. Furthermore, we provide solutions for navigating around competitors’ patents. We have extensive experience helping clients maintain rights and ownership, protect assets, generate revenue from patents and leverage the technologies of the future.

Our Experience

  • Represent Vanderbilt University, a private research university located in Nashville, Tennessee, in drafting and filing patent applications and managing a patent portfolio.
  • Assist Semiconductor Energy Laboratory (“SEL”), a Japan-based company that engages in the research and development of crystalline thin film integrated circuits, liquid crystal and organic electroluminescent displays, semiconductor thin film transistors, lithium-ion batteries, oxide semiconductors and wireless elements in building and managing its U.S. patent portfolio, which is focused on semiconductor and flat panel displays.
  • Assist Brigham and Women’s Hospital, a major Boston research hospital that is part of the Partners Healthcare not-for-profit health care system, with creating a program that educates researchers and hospital technology transfer staff on IP protection to protect specific technologies.
  • Assist California Institute of Technology, a private doctorate-granting university, on managing a portfolio of U.S. and international patents.
  • Assist Massachusetts General Hospital, a teaching hospital of Harvard Medical School that has been ranked by U.S. News as the #1 hospital in Massachusetts, in managing an extensive portfolio of patents.
  • Represent Partners Healthcare, a Boston-based nonprofit hospital and physicians network that includes Brigham and Women’s Hospital and Massachusetts General Hospital, on managing an extensive portfolio of patents related to ground-breaking innovations in immune therapy for cancer treatments and gastrointestinal disorders.
  • Assist Cedars-Sinai Medical Center, a nonprofit, hospital and multi-specialty academic health science center located in Los Angeles, on a range of patent prosecution matters and tech transfer matters, including licensing and spin-off transactions, collaboration agreements, material transfer agreements and confidentiality agreements.
  • Assist sComm, a consumer electronics company focused on developing technology to enhance personal interactions with those in the deaf community, in building and managing a patent portfolio with their products, particularly their wireless face-to-face communication device, which facilitates real time texting for mobile devices.
  • Assist the Wyss Institute, a cross-disciplinary research institute at Harvard University focused on developing new bio-inspired materials and devices for applications in health care, manufacturing, robotics, energy and sustainable architecture, in building a patent portfolio related to specific technologies.
  • Represent Children’s Hospital, Los Angeles, a nonprofit, pediatric academic medical center, in managing a large patent portfolio.

ITC to Probe Amazon, Walmart, Others in LED Patent Case

Law360 | August 29, 2019

This article highlights recent developments in the University of California’s campaign to protect its rights related to filament LED technology developed at UC Santa Barbara. On Wednesday, the U.S. International Trade Commission opened an investigation in response to UC’s complaint, filed in July by the Nixon Peabody team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen.

Microbiome biotechs grapple with how to protect their IP

Boston Business Journal | August 08, 2019

This story quotes Boston Intellectual Property partner David Resnick on best practices and challenges facing microbiome companies, which create novel disease-fighting treatments from naturally occurring substances, as they try to patent their innovations.

Ikea, Amazon, and the billion-dollar war over light bulb design

Fast Company | August 02, 2019

This article highlights the University of California’s campaign to protect its rights related to filament LED technology developed at the university. An NP team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen is representing UC in this campaign.

PTAB rejects CBM challenges to profit measurement patents

Law360 | May 31, 2019

This article mentions Chicago Intellectual Property counsel Matt Werber and Los Angeles Intellectual Property partner Jennifer Hayes for their representation of B*IEOR in a matter before the Patent Trial and Appeal Board.

Patent office issues new guidance on patent applications

Rochester Business Journal | February 22, 2019

Rochester Corporate partner Jeremy Wolk, with the help of Los Angeles Intellectual Property partner Jennifer Hayes and Washington, DC, Intellectual Property associates Anthony Duncan and Emily Sandhaus, authored this column the United States Patent and Trademark Office’s new guidance on software patent applications.

Senate approves legislation to crack down on patent trolls

The Boston Globe | July 27, 2018

Boston Intellectual Property co-practice group leader Jason Kravitz is quoted in this article analyzing legislation approved by the Massachusetts Senate to reduce patent infringement claims made by “patent trolls.”  Jason says such legislation is important in a state with a strong entrepreneurial economy.

A To-Do List for New USPTO Director Iancu

Law360 | February 04, 2018

Washington DC IP counseling and transactions partner Jeffrey Costellia is quoted in this article about the possibility of reforms at the Patent Trial and Appeal Board. Andrei Iancu was confirmed as the new director of the U.S. Patent and Trademark Office, which oversees the board.

Drugmaker asks federal judge to invalidate rival company patents

Los Angeles Daily Journal | October 09, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in this article about drug maker Amgen Inc.’s request for a federal judge to invalidate patents claimed by a rival company so it can create a generic, less expensive version of a popular cancer drug.

Attorneys react to Supreme Court patent venue ruling

Law360 | May 21, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in the following articles discussing the Supreme Court’s decision in the patent case TC Heartland LLC v. Kraft Food Brands Group LLC, which limits where plaintiffs can file patent lawsuits.

Supreme Court ruling could hinder ‘patent trolls’

The New York Times | May 21, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in the following articles discussing the Supreme Court’s decision in the patent case TC Heartland LLC v. Kraft Food Brands Group LLC, which limits where plaintiffs can file patent lawsuits.

Supreme Court decides how far patent laws can reach

Rochester Business Journal | April 20, 2017

Rochester private equity and investment funds partner Jeremy Wolk, Washington DC IP counseling and transactions partner Jeff Costellia and Chicago IP counseling and transactions associate Angelo Christopher co-authored this column about a Supreme Court decision regarding the reach of U.S. patent rights for exported products.

Biosimilar battle heads to high court

Los Angeles/San Francisco Daily Journal | February 14, 2017

Los Angeles IP litigation partner Shawn Hansen authored this column about an upcoming case in the U.S. Supreme Court that will deal with Biologics Price Competition and Innovation Act of 2009 (BPCIA), which was enacted as part of the Affordable Care Act (ACA).

Breville USA alleges patentable juicer design was used without authority

Northern California Record | December 05, 2016

San Francisco commercial litigation partner Bruce Copeland and associate Shady Joulani are noted as Breville USA Inc.’s counsel in a patent infringement case before the Northern District of California.

Contacts

Jeffrey L. Costellia

Partner
Co-leader, Intellectual Property

jcostellia@nixonpeabody.com

Phone: 202-585-8207

Jason C. Kravitz

Partner
Co-leader, Intellectual Property

jkravitz@nixonpeabody.com

Phone: 617-345-1318

  • U.S. News/Best Lawyers—Recognized for Patent Law (2015–2019)
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent prosecution, including seven patent lawyers individually listed (2012–2019)
  • Managing Intellectual Property—Ranked as a top U.S. law firm for securing “the highest-quality patents”; recognized as a national leader in the patent category for life sciences; seven IP attorneys recognized as “IP Stars” (2013–2019)
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