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.

More Certainty on Limits to Early Section 101 Challenges – How Will This Impact Patent Owners and Applications?

Intellectual Property & Technology Law Journal | May 01, 2020

Intellectual Property partner Pete Prommer in Chicago and associate Ravi Braich, Ph.D. in Boston contributed this article analyzing the Supreme Court’s denial of several petitions for certiorari on patent decision in HP Inc. v. Berkheimer, and the effect on patent owners and applicants. Click here for the full article.

Gut Check: Microbiome Patent Update

Intellectual Property & Technology Law Journal | May 01, 2020

Intellectual Property partner Mark FitzGerald in Boston and associate Matt Kitces in Washington, D.C. contributed this article examining the post-grant review challenge of a U.S. patent related microbiomes and the treatment of cancer. The result could provide an indication of how microbiome-related patents will fare when challenged for validity. Click here for the full article.

Validity Attack on US Patent for Bifidobacetrium Combo-Therapy: What can we learn?

Microbiome Times | April 29, 2020

Boston Intellectual Property partners Mark FitzGerald and David Resnick co-authored this article analyzing a recent decision by the U.S. Patent Trial and Appeal Board to invalidate a University of Chicago U.S. microbiome patent. The authors note some positive aspects of that decision within the microbiome community, as it provides increased definition around what they can protect with patents.

The Impact of Overturning eBay v MercExchange

IPWatchdog | March 02, 2020

Washington, DC, Intellectual Property partner Evan Langdon wrote this contributed article about the possible impact of proposed legislation that would overturn eBay v. MercExchange, an important Supreme Court decision regarding patent litigation.

The China Spy Scandal that Entangled Harvard Could Hit Yale and MIT Next

Newsweek | February 29, 2020

Boston Government Investigations and White Collar Defense partner Brian Kelly provides third-party commentary in this article about investigations into scientists and researchers at universities across the country for alleged theft of intellectual property and U.S. secrets as part of a long-term Chinese campaign.

Universities should consider ITC for IP protection

Tech Transfer Tactics | February 18, 2020

Intellectual Property partners Evan Langdon of Washington, DC, and Shawn Hansen and Seth Levy of Los Angeles co-wrote this article explaining how the U.S. International Trade Commission (ITC) can be a “powerfully effective venue” for patent protection. Evan, Shawn, and Seth are leading the NP team representing the University of California in an investigation pending at the ITC concerning LED lightbulb technology. Read the full article on techtransfercentral.com.

Obtaining injunctions under eBay versus at the International Trade Commission

IPWatchdog | February 16, 2020

Washington, DC, Intellectual Property partner Evan Langdon co-wrote this contributed article with IPWatchdog founder and CEO Gene Quinn, analyzing the International Trade Commission’s role as an important forum for patent owners in light of the Supreme Court’s eBay decision.

What the University of California case means for retailers and IP in the supply chain

TotalRetail | February 13, 2020

This article analyzes the potential for lasting implications to the global supply chain as a result of the University of California’s (UC) patent enforcement campaign against several retailers selling filament LED lightbulbs. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Central Coast tech firms, UCSB use litigation to protect patents

Pacific Coast Business Times | February 07, 2020

The article mentions Nixon Peabody’s ongoing representation of the Regents of the University of California in UC Santa Barbara’s patent enforcement matter, noting that a recent $1.1 billion verdict for the California Institute of Technology in another matter could bode well for UC Santa Barbara. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Think universities are making lots of money from inventions? Think again

The Hechinger Report | January 17, 2020

In this article about the ways universities succeed or fail in monetizing their intellectual property, Los Angeles Intellectual Property partner Seth Levy talks about NP’s patent enforcement work on behalf of the University of California.

University of California targets General Electric in campaign against patent infringement

Tech Transfer Central | January 08, 2020

This article quotes Los Angeles Intellectual Property partner Seth Levy discussing Nixon Peabody’s representation of the University of California, which has sued General Electric as part of its ongoing campaign to enforce its patents on LED lightbulb technology. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

UCSB adds GE to lawsuit defending LED patents

Pacific Coast Business Times | January 02, 2020

Los Angeles Intellectual Property partner Seth Levy is quoted in this story covering the latest developments in UC Santa Barbara’s patent enforcement campaign to protect its LED lightbulb technology, including the addition of General Electric as a defendant. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

‘Post-Chemical World’ Is Taking Shape as Agribusiness Goes Green

Bloomberg News | December 12, 2019

In this article about how agribusiness is shifting to sustainable alternatives, Boston Intellectual Property patent agent Nicole Kling provides commentary about increased agricultural patenting technology as researchers work to promote organic and non-GMO farming.

A Year Out and a Supreme Court Case Still Leaves Patent Questions Unanswered

Intellectual Property & Technology Law Journal | December 05, 2019

Intellectual Property associates Sydney Pritchett, Ben Rosborough and Ravi Braich authored this patent alert about remaining questions and uncertainty following the U.S. Supreme Court ‘s ruling in Helsinn Healthcare S.A. v. Teva Pharmaceuticals U.S.

LEDVANCE Reaches Agreement on UC Santa Barbara's Patented LED Technology

Yahoo! Finance | December 02, 2019

This announcement related to UC Santa Barbara's first-of-its-kind patent enforcement campaign shares that LEDVANCE, one of the world’s leading general lighting providers, has entered into a licensing agreement that authorizes the company to manufacture and distribute UC Santa Barbara’s patented filament LED technology. LEDVANCE is the largest manufacturer to date that has signed a licensing agreement. The announcement mentions Nixon Peabody for representing UC Santa Barbara.

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.

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

  • 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; nine IP attorneys recognized as “IP Stars” (2013–2020)
  • U.S. News/Best Lawyers “Best Law Firms” 2020 ranked as National Tier One in Patent Law
  • In addition, many Nixon Peabody practices received U.S. News/Best Lawyers Tier 1 rankings at the regional level in the following geographies: Albany, NY; Boston; Buffalo; Chicago; Long Island; Los Angeles; Manchester, NH; New York City; Providence, RI; Rochester, NY; San Francisco; and Washington, DC.
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent prosecution and litigation, including seven patent lawyers individually listed (2012–2020)
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