With clients ranging from multinational companies to entrepreneurial start-ups, the patent practice offers legal services in virtually every aspect of patent law. Representative clients include leaders in the fields of financial and information services, software development, consumer electronics and other goods, chemicals, pharmaceuticals, telecommunications, entertainment, nanotechnology software and technology, e-commerce, real estate and arts/education/non-profit. Kelley Drye has patent professionals in most of its offices, with a concentration in Stamford, Chicago and Washington, DC.
Kelley Drye’s patent practice includes a diverse group of attorneys and patent agents with technological backgrounds in the electrical, mechanical and chemical arenas. Most of Kelley Drye’s patent professionals have significant experience in industry and/or academia. Many have advanced degrees (Master, Ph.D.) in their technological fields, and are experienced scientists and engineers.
- Patent litigation in all the technological arts including: pharmaceutical (in particular actions under the Hatch-Waxman statutes), chemical, electronic, software, mechanical, nanotechnology and business methods.
- Preparing opinions on patentability, validity and non-infringement.
- Preparation and prosecution of U.S. and foreign patent applications.
- Patent reissues, re-examinations and interferences.
- Patent and technology licensing.
- Providing strategic advice on matters such as
infringement avoidance, alternative dispute resolution and settlement
options.
- Appeals to the U.S. Court of Appeals for the Federal Circuit.
- Counseling on various aspects of patent acquisition, transfer and licensing, including related issues such as antitrust considerations.
- Experience before U.S. International Trade Commission and U.S. Customs Service.
- Corporate mergers and acquisitions, joint venture, co-marketing and investment due diligence (patents, copyrights, trademarks, advertising compliance, domain names, Internet web page compliance).
Patent Prosecution
An advantage of our team is that its members have significant patent litigation, patent prosecution and patent licensing experience. As a result, we prepare and prosecute patent applications with an eye towards how the claims will be construed if litigation becomes necessary. We are cognizant of the fact that statements made in the patent specification in the application prosecution history may well impact on the scope and enforceability of claims and, to the extent possible, guard against the evisceration of those claims during the prosecution process.
The core patent team is able to draw on Kelley Drye’s resources, both in the Intellectual Property Group and outside this group, on an as-needed basis.
Kelley Drye’s patent prosecution professionals are highly respected attorneys and patent agents with impeccable credentials in the life sciences, chemistry, and biochemistry. Many of Kelley Drye’s patent professionals have come from top posts in industry and academia. Most have advanced degrees in their areas of specialization.
Our patent lawyers and technical professionals have demonstrated the expertise and experience needed to deal with a full range of patent assignments in a cost-efficient manner. Our capabilities include:
- Searching, preparing and prosecuting U.S. and foreign patents.
- Counseling on all aspects of patent acquisitions, term extensions, transfers and licensing, including related regulatory issues such as antitrust considerations.
- Advising clients on right-to-use disputes.
- Conducting due diligence on IP and patent assets in connection with corporate mergers and acquisitions, and joint venture, co-marketing and investment agreements.
- Supervising audits identifying and evaluating IP and patent assets, and implementing comprehensive “best practices” IP management programs.
Representative Experience
Our patent litigation experience includes the following:
Administrative Law
- Summary judgment granted to client in action against the USPTO on proposed rule changes relating to limitations on the number of patent claims and continuations in an application.
Hatch-Waxman
- Represented defendant in Hatch-Waxman case to produce generic version of Depakote E.R.
- Represented defendant in a Hatch-Waxman case involving Strattera.
- Represented defendant in patent infringement case pertaining to a generic version of a pharmaceutical drug.
- Hatch-Waxman litigation involving ribavirin – represented defendant.
- Represented defendant in respect of ANDA filing.
Infringement
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Counsel in declaratory judgment action seeking declaration of non-infringement and invalidity of patent.
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Counsel in defense of patent infringement action.
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Successful defense of patent infringement suit including defeating motion for preliminary injunction and obtaining judgment of invalidity of patent.
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Successful assertion of patent infringement suit. Settlement negotiated licensing defendant under asserted patent.
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Represented defendant in patent infringement case involving process for formulating a drug.
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Successful assertion of Swedish shipping company's patent on ship hull design against the United States resulting in award of $3.2 million to client.
- Successful defense of patent infringement suit. Settlement negotiated after Markman briefing and argument.
- Represented defendant in patent infringement case pertaining to a phosphor and preparation process.
- Successful defense of patent infringement suit; following Markman ruling construing claims in client’s favor, summary judgment motion granted dismissing suit.
- Represented plaintiff in patent infringement suit involving a speaker independent system for unified communications via telephone and Internet.
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Successful defense of patent infringement action resulting in license to client for nominal fee.
- Obtained an emergency stay followed by a judgment vacating preliminary injunction entered in the Northern District of California.
I.T.C.
- Successful settlement of claims asserting the world's largest semiconductor chip maker's chipset patents against foreign infringer.
