Patents

Nixon Vanderhye is dedicated to delivering efficient partner-level attention and creativity to every representation. Clients across the globe rely on the skill, deep technical understanding, and legal acumen of our attorneys and registered Patent Agents to obtain protection in the United States. Likewise, clients routinely depend on the practice’s extensive international network of trusted contacts and close working relationships with foreign firms when pursuing patent protection in jurisdictions around the world.

Clients also benefit from the wide range of legal, corporate, industry, and government experience that Nixon Vanderhye lawyers bring to the table. Many firm attorneys have past experience examining patents at the U.S. Patent and Trademark Office (USPTO); working at various government agencies; serving as clerks to federal appellate and district court judges; and holding in-house counsel or technical positions in the private sector. Our team includes lawyers with advanced degrees in a variety of science and engineering disciplines.

We work with a diverse group of clients, from Fortune 500 companies and universities to startups and individual inventors. We routinely handle inventions encompassing the latest technologies, including:

Next Generation Antibody, Nucleic Acid, Chemical, and Cell-Based Therapeutics and Diagnostics; Genome Editing; Cell and Tissue Engineering; and Drug Discovery, Formulation, and Delivery Platforms.
Artificial Intelligence (AI), Machine Learning, and Data Science
Healthcare Technology and Medical Devices
Fintech and Blockchain
Communication Protocols and IoT

The comprehensive array of services provided by our Patent team includes:

Preparation & Prosecution
Nixon Vanderhye’s approach begins with a thorough examination of both what to protect and how to best protect it. We work directly with inventors in order to draft applications that provide comprehensive detailed descriptions and strategic claims. We then develop a patent prosecution strategy that aligns with our clients’ goals.

Our team is particularly proud of the work we have done for one of the world’s leading manufacturers of consumer electronics. Over the course of more than three decades, we have procured thousands of patents covering their hardware systems and software releases. We are also proud of our work with a start-up, defining and executing on a strategy to lock up design and utility protection for a stylish, collapsible bike helmet before the invention attracted the attention of competitors. With each representation, we provide added value through creatively framing the innovation for success and ensuring it fits – both horizontally and vertically – within key markets and industries.

In addition to working with the USPTO to obtain domestic patents, the close working relationships we have established with law firms in other countries is a tremendous asset to our clients. Through this network, we help clients secure patent protection in the European Union, Japan, Australia, New Zealand, China, and across the globe. In turn, we routinely work with our partners around the world to help secure protection in the U.S. for inventions originating abroad.

Post-Grant Proceedings
Nixon Vanderhye is solidly positioned to handle Patent Trial and Appeal Board (PTAB) inter partes review (IPR), post-grant review (PGR), covered business method review (CBM) proceedings, and Federal Circuit appeals – where patent prosecution and patent litigation converge. Our deep experience includes representing patent owners whose patents are challenged, and petitioners challenging the validity of granted patents. Our Arlington, Virginia, location provides convenient access to the USPTO and the Federal Circuit.

Because of our stellar reputation for crafting detailed, comprehensive patent applications, and our reputation for efficiently handling litigations of all sizes, our team is uniquely positioned to advocate in post-grant proceedings. We are proud to defend patent claims that we have procured and to take up the defense of patents procured by others.

In connection with a worldwide patent dispute between two industry giants, we successfully defended 95% of the claims at issue across multiple patents – a result that far exceeds the national average that is less than a third of that amount. Acting as petitioner, we secured a victory for a longstanding client who had been sued for patent infringement in U.S. District Court, invalidating 100% of 87 challenged claims across six different patents.

In addition to working side by side with members of the Nixon Vanderhye Patent Litigation team, we are frequently retained by general practice firms and in-house lawyers to provide patent post-grant advice and services in connection with companion district court litigation. When we partner in this manner, we often take the lead on post-grant proceedings. We work collaboratively to define specific legal strategies and flesh out technical positions critical to successful outcomes in complex patent litigations.

PTAB Practice
Far from viewing appeals to the PTAB as an overly aggressive action that should be used in rare instances, Nixon Vanderhye attorneys understand that the appeal process presents a series of strategic tools for advancing prosecution when prosecution stalls, when a cycle needs to be broken, or when there is a desire to push the envelope. Using a combination of intuition, experience, and analytics, we work with our clients to explore the most appropriate course of action to obtain the best outcome in the most efficient manner.

We regularly file Pre-Appeal Brief Requests for Review, Appeal Briefs, Reply Briefs, and supplemental papers as may be appropriate for any given situation. If and when the time comes, we have extensive experience participating in oral hearings in-person at the USPTO to guide Administrative Patent Judges through the key issues.

Due Diligence
Maximizing the potential of a deal involving IP Due Diligence requires technical and legal acumen, as well as business savvy and strategic thinking. Nixon Vanderhye attorneys regularly call on these skills when assessing the strength or value of an IP portfolio in contemplation of a litigation, brokered sale, licensing campaign, merger, or acquisition, as well as when preparing for a new round of funding from an angel, institutional investor, or in advance of an IPO. By identifying and simplifying the myriad, complex and interrelated issues associated with transactions, we empower decision-makers to execute on strategic objectives while we handle important technical and legal details.

Domestic and Worldwide Portfolio Management
Nixon Vanderhye attorneys work with clients to develop strong patent portfolios in the U.S. and throughout the world, aligning global business strategies with corresponding global patent strategies to effectively and efficiently protect inventions. We proactively review our clients’ product developments to ensure they are effectively covered by patent rights. We also mine past patent filings to provide additional patent protection for newly developed products. Our longstanding relationships with foreign associates in Europe, Asia, the Middle East and Africa, the Americas, Australia, and New Zealand allow us to implement cohesive global patent strategies in an efficient, cost-effective manner.

Enforcement
An essential aspect of our Patent practice is dedicated to enforcing our clients’ IP rights and protecting those accused of infringement. We work closely with clients to explore all the different options when disputes arise, and advise on the risks, costs, and benefits associated with each alternative. Whether asserting a bet-the-company case or defending against a nuisance action, Nixon Vanderhye’s patent attorneys work closely with the firm’s Litigation team to develop a strategy that aligns with a client’s goals.

When litigation is called for, we are fearless advocates for our clients’ positions. By assembling an experienced team with not only trial experience, but also deep technical and industry knowledge, we strive to gather the facts and craft compelling arguments. We have represented clients in jury and bench trials, ITC proceedings, and federal appellate courts. In addition, we are often called upon by other law firms to handle the core technological and patent issues in large, complex litigations. Our attorneys have also served as expert witnesses in patent litigations, opining on issues of infringement, validity, inequitable conduct, and malpractice in cases involving issues that range from complex telecommunications protocols to pharmaceutical ingredients.

Our litigation experience includes a $315 million verdict on behalf of Shuffle Tech and two other plaintiffs in a sham patent infringement litigation / Walker Process fraud case in the U.S. District Court for the Northern District of Illinois. The case was predicated on the enforcement of two fraudulently obtained patents for automatic card shufflers for regulated casinos, resulting in a complete monopoly of the relevant market in violation of Section 2 of the Sherman Act. As post-trial motions were pending, the case settled for $151.5 million.

Design Patents
We consider the interplay between design patents, utility patents, trademarks, and trade dress to develop a comprehensive strategy for our clients to protect every aspect of their products. Nearly every product has a unique aesthetic that can be protected using design patents. We work with our clients to understand their products, the larger competitive landscape, and how to effectively protect the designs of those products. Understanding the broader context and the interplay allows us to obtain effective design patents and to create market barriers that protect products from knock-offs and other more subtle copy attempts.

Opinions & Counseling
We regularly provide competent opinions on patentability of new inventions as well as enforceability, validity, and infringement of existing patents. Freedom to operate opinions for new products are also possible. Our counseling experience ranges from clients involved in multi-country litigations with layered patent portfolios to rendering an opinion on validity and/or infringement of a single patent. Our competent opinions have been used successfully to defend against allegations of willful infringement. When clients are developing new products, we can and do provide technical input for design-around considerations (e.g., if advisable to better avoid infringement of patents owned by others) directly to client engineers and other technical staff. Our informed opinions rely on an in-depth understanding of the underlying technology as well as the most current statutory, regulatory and case law.

Technical industry standards and specifications are important aspects to the modern economy. We have extensive experience working with and advising clients regarding standards involving video compression, image processing, telecommunications, and computer hardware. Our clients also rely on our counsel for various “open source” matters and complexities that can often arise when “open source” software products are acquired and incorporated within original software for a commercial product.

We are frequently involved in pre-litigation matters where our litigation experience provides considerable advantageous leverage helping us to develop strategies that often lead to favorable client results without the expense and burden of formal litigation.

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