Patents
Global Patent Portfolio Management & Counseling
From patent procurement, portfolio management and transactional guidance through enforcement and defense, Benesch patent lawyers help clients build, manage and optimize the value of their patent portfolios on a global scale.
Patent Procurement
Our Global Patent Portfolio Management & Counseling Group lawyers help companies ranging from startup and emerging businesses to global enterprises acquire strong and broad patents and devise and implement patent strategies focused on giving them a competitive edge worldwide. We guide clients through all stages of patent prosecution, including patentability assessment, patent applications, examinations and post-grant issues and proceedings, including post-grant reviews, interferences, inter partes reviews, covered business methods reviews, oppositions and reexaminations.
Strategic Counsel
Benesch lawyers provide cost-effective, strategic counsel that aligns with client business goals. We maximize the value of our clients’ innovations and inventions through patent and technology acquisitions and transfer agreements, licensing and co-development agreements, and inventor assignment agreements. We advise on intellectual property in the context of mergers, acquisitions and other corporate transactions, and we negotiate, draft and enforce noncompetition, nondisclosure and confidentiality agreements to protect our clients’ creative assets.
Clients also rely on us for patentability, invalidity, enforceability, infringement, freedom-to-operate and product clearance opinions. We regularly conduct patent searches, evaluate prior art, and review the patents and innovations of our clients’ competitors when advising on and prosecuting patent applications. In this way, we limit infringement risk while crafting patent claims that will withstand challenge.
Patent Portfolio Growth and Management
Our patent team manages patent portfolios in the United States and throughout North America, Europe, Asia and South America, as well as in other parts of the world either through the Patent Cooperation Treaty (PCT) or direct filings, ensuring prosecution strategies are consistent worldwide. Clients benefit from our ability to anticipate and overcome potential hurdles, identify and leverage opportunities, build their patent portfolios and coordinate patent strategies on a global scale.
Experienced in both crafting and enforcing patents – and well-versed in technologies, sciences and our clients’ businesses – we are exceptionally skilled in identifying patentable innovations and drafting compelling patent applications to meet examiner expectations and secure USPTO allowance. With a clear understanding of our clients’ technologies, we are also well prepared to argue convincingly to enforce our clients’ patents and to fight infringers.
Patent Enforcement and Defense
Operating at the forefront of innovation, our patent team advises clients at the earliest stages, meeting with their scientists and engineers to learn about what they are working on and regularly reviewing competitor inventions and patents. In this way, we can help identify patentable innovations, suggest changes to avoid infringing others' rights and swiftly file patent applications to protect our clients' IP assets. Clients also frequently call on our IP litigators to enforce or defend their rights in court. We have achieved an impressive record in favorably resolving patent-related disputes both in and out of court.
The Right Team With the Right Approach
Our patent team includes a former head in-house IP counsel, engineers, scientists, transactional attorneys, litigators, lawyers registered to practice before the United States Patent and Trademark Office (USPTO), patent agents, former patent examiners and innovators. We combine a well-rounded perspective with extensive experience in wide-ranging sciences, industries and technologies, including mechanical and electrical engineering, computer sciences, biology, chemistry, material science and metallurgy, medical devices, pharmaceuticals, manufacturing and energy, as well as emerging areas such as AI and machine learning, and a host of other areas.
Representative Experience
- Counseled a multinational company on developing and managing a global patent portfolio related to water-soluble, sustainable technology and materials.
- Counseled a Nasdaq 100 company operating market-leading businesses that design and develop vertical software- and technology-enabled products for a variety of niche markets on all aspects of patent procurement and enforcement.
- Counseled one of the world’s largest integrated energy and chemicals companies on developing and managing its extensive global patent portfolio.
- Managing extensive patent portfolios and prosecution activities in North and South America for a global multinational elevator company.
- Conducting complex patent invalidity, infringement, due diligence and freedom-to-operate studies and analyses for numerous technology companies and clients in a wide variety of industries to assist clients in designing around third-party IP and mitigating infringement risks in new product development and identifying patent infringers to pursue in enforcement actions.
- Serving on corporate patent councils, regularly advising senior leadership regarding pursuit of patent applications for new invention concepts to help achieve business goals and protect valuable IP.
Experience
- Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00095). Subject: U.S. Patent No. 6,483,080. Counsel for Petitioner Atom Medical International, Inc.
- Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00194). Subject: U.S. Patent No. 7,335,157. Counsel for Petitioner Atom Medical International, Inc.
- Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00232). Subject: U.S. Patent No. 6,345,402. Counsel for Petitioner Atom Medical International, Inc.
- Dyson, Inc. v. LG Electronics USA, Inc. (Inter Partes Reexamination No. 95/002,102). Subject: U.S. Patent No. 7,600,292. Counsel for Requester LG Electronics USA, Inc.
- Gramm et al. v. Deere & Company (IPR2015-00898). Subject U.S. Patent No. 6,202,395. Counsel for Petitioner Deere & Company.
- Gramm et al. v. Deere & Company (IPR2015-00899). Subject U.S. Patent No. 6,202,395. Counsel for Petitioner Deere & Company.
- Abbott Laboratories et al. v. Watson Laboratories, Inc.-Florida et al. (D.N.J. 2010). Represented Watson in a Hatch Waxman litigation related to choline fenofibrate sold by Abbott as Trilipix®.
- Alliance v. Altivity (W.D. Wash. 2007). Patent and trade secret case relating to containers for packaging cat litter.
- Alticor Inc., Amway Corp. and Quixtar Inc. v. NCR Corp. (W.D. Mich. 2007). Represented plaintiffs in an action seeking a declaratory judgment of non-infringement and invalidity of seven NCR patents relating to e-commerce.
- AOL, Inc. v. Yahoo! Inc. (S.D.N.Y. 2009). Multi-patent infringement litigation relating to internet advertising technology.
- AstraZeneca LP v. Sandoz Inc. (D.N.J. 2010). Represented Sandoz in a Hatch Waxman litigation related to budesonide sold by AstraZeneca as Pulmicort®.
- Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing the Same, ITC Inv. No. 337-TA-855. Counsel for respondent Skullcandy defending against claims of patent infringement relating to manufacturing processes for magnets.
- Draeger Med. Sys., Inc. v. Atom Med. Int’l, Inc. and Philips Elecs. N. Am. Corp., d/b/a Philips Healthcare, Case No. 2:12-cv-00512-UA-DNF (M.D. Fla. 2012). Represented Atom Medical in patent infringement action relating to infant warmers and incubators.
- Dyson, Inc. v. LG Electronics USA, Inc. (N.D. Ill., 2012). Counsel in patent infringement action pertaining to vacuum cleaners, responsible for formulating noninfringement and invalidity defenses. Case currently stayed pending inter partes reexamination.
- GHJ Holdings LLC v Plasticade Products Corporation (E.D. Tex. 2010). Defended Plasticade against false marketing allegations.
- Gramm v. John Deere and Company, (N.D. Ind. 2014). Represented Deere in patent infringement lawsuit relating to corn crop headers. Responsible for formulating and proving up non-infringement and invalidity defenses.
- Grupo Bimbo, S.A. B. de C.V., et al. v. Snak-King Corp., et al., (C.D. Cal. 2013). Represented Grupo Bimbo in dispute over trademarks, trade dress, patent and unfair business practices.
- ICOR International, Inc. v. DuPont (S.D. Ind. 2010). Brought declaratory judgment action relating to refrigerant compositions.
- In the Matter of Certain Thermal Support Devices, Infant Incubators, Infant Warmers, and Components Thereof, ITC Inv. No. No. 337-TA-896. Counsel for Atom Medical in ITC action relating to infant incubators and warmers.
- Jackson v. Contour, et al. (N.D. Ill. 2007). Co-lead counsel in a pro bono matter relating to an inmate's contraction of tuberculosis.
- King v. Chapman, et al. (N.D. Ill. 2009). Co-lead counsel in a pro bono matter relating to the violation of an inmate's 8th Amendment rights.
- Lennon Image Technologies, LLC v. Skullcandy, Inc. (D. Del. 2012). Represented Skullcandy in patent infringement action pertaining to virtual image interface technology.
- Noven Pharms., Inc. v. Watson Labs., Inc. et al. (D.N.J. 2011). Represented generic client in Hatch-Waxman patent litigation in a first to file (FTF) opportunity related to a methylphenidate transdermal patch sold by Noven as Daytrana®.
- PRE Holding, Inc. v. Monaghan Medical Corp., et al. (E.D. Va. 2009). Represented client in a patent infringement case relating to medical devices.
- S-Line LLC v. Squyres et al., (N.D. Tex. 2014). Represented patentee S-Line in patent infringement action involving bulkheads used for cargo containers. Managing day-to-day activities including discovery and responsible for infringement case.
- Teijin, Inc. et al. v. Alembic Pharms. Ltd. (D. Del. 2013). Representing Alembic as a first to file applicant in Hatch-Waxman litigation involving Uloric® (febuxostat). Responsible for managing day to day activities and primary client contact.
- Yakima Products, Inc. v. Saris Cycling Group, Inc. (D. Or. 2009). Represented Saris Cycling Group, Inc. in a patent litigation relating to bicycle racks.
- Represented defendant in patent infringement litigation concerning lawn tool; successfully transferred action to local district court; court held for client after Markman hearing.
