Practice

Patent, Trade Secrets & Related Rights Litigation

Protecting your innovation and success

In today's highly competitive, knowledge-based economy, a company's IP strategy is the driver of business success. Your company's intellectual property protects its investments in technology and allows you to build market advantage. Increasingly, legal disputes over the ownership and breadth of patent rights are among the most important issues faced by companies competing in the global marketplace.

To assure prompt, efficient and effective resolution of disputes, our intellectual property litigation lawyers and scientists work as a team to advocate your interests in U.S. and foreign courts, in arbitration arbitral proceedings, in the International Trade Commission, and in the U.S. Patent and Trademark Office. Foley Hoag also manages global patent litigation in multiple foreign jurisdictions.

We litigate intellectual property disputes for our clients in a wide variety of complex technical fields, including biotechnology, pharmaceuticals, medical devices and diagnostics, computer electronics and software, cellular telephones, Internet search engines and novel business methods. To maximize your success, Foley Hoag has assembled a talented group of intellectual property litigators who combine in-depth knowledge of patent law, aptitude for science and technology, and trial expertise, including substantial jury trial experience.

Advocacy of intellectual property rights will best succeed when presented to a judge or jury in clear, simple, and persuasive language. To make your story compelling, we select scientific and economic experts with the same objective in mind (usually leaders in their fields at top universities and research institutions). We also take advantage of the latest technology in animation, video and computer graphics to add depth and clarity to your story in the courtroom. To optimize success in front of juries, Foley Hoag regularly conducts mock trials and applies our jury research to the unique facts and circumstances of your intellectual property litigation case.

From the outset of an engagement, often well before any litigation has begun, Foley Hoag will help you understand the legal challenges, risks, budgetary implications, and opportunities associated with different forms of dispute resolution, including litigation, mediation, arbitration, and negotiated settlements. Whether your goal is enforcing your intellectual property rights against competitors, resolving inventorship disputes, or defending against overreaching infringement claims, we focus on your business objectives. Foley Hoag will advocate on your behalf as though they were our own.

Areas of Focus

Our lawyers litigate intellectual property disputes for clients in a wide variety of complex technical fields, including:
  • Biotechnology
  • Pharmaceuticals
  • Medical device and diagnostics
  • Computer electronics and software
  • Cellular telephones
  • Internet search engines
  • Novel business methods

Experience

PATENT

  • We represented Becton, Dickinson and Company and the University of California in a patent infringement litigation. The case asserted multiple patents covering polymer dyes and their use in flow cytometry, and resulted in the negotiation of a favorable settlement just before trial.
  • We advised Dana-Farber Cancer Institute in patent litigation against Bristol-Myers Squibb and Ono Pharmaceutical. The matter concerned inventorship and ownership of patents for six cancer treatment therapies.
  • We helped 3M in connection with PTAB appeals involving reexamination of three patents directed to antiseptic caps for cleaning medical instruments. The PTAB reversed on all grounds for all patents.
  • We filed an amicus brief in the Supreme Court on behalf of 3M and fourteen other large U.S. companies in Cuozzo Speed Technologies, LLC v. Lee, challenging the PTAB’s use of the “broadest reasonable interpretation” rule in post-grant proceedings.
  • We obtained judgment on the pleadings for FitNow in connection with its mobile application LoseIt! This patent infringement action, filed in the District of Utah, invalidated the asserted patent prior to any discovery.
  • We argued on behalf of the Biotechnology Industry Organization (BIO) as amicus before the en banc Court of Appeals for the Federal Circuit in Lexmark International, Inc. v. Impression Products, Inc., concerning international and domestic patent exhaustion.
  • We represented Becton Dickinson in a patent infringement suit brought by Gen-Probe involving consumable products. We obtained a favorable settlement just before trial.
  • We defended the University of Massachusetts (UMass) in federal court action brought by Max Planck Institute and Alnylam Pharmaceuticals against three co-owners of patent applications directed to therapeutic uses of RNA interference. We obtained judgment in favor of UMass on all claims as well as a global settlement agreement by which UMass became co-owner of Max Planck’s competing patent applications on RNA interference.
  • We advised Johns Hopkins University and Xanthus Pharmaceuticals in a dispute over ownership of intellectual property, resulting in the negotiation of patent license.
  • We provided counsel for the respondent in a Section 337 investigation of patents. We obtained a ruling that the two patents were invalid and unenforceable due to inequitable conduct.
  • We defended Becton, Dickinson and Company in a patent infringement suit brought by Enzo Biochem. Summary judgment of invalidity was affirmed in Enzo Biochem, Inc. v. Gen-Probe, Inc. et al., 424 F.3d 1276 (Fed. Cir. 2005.).
  • We represented Becton, Dickinson and Company in a contract licensing dispute.
  • We advised QLT Inc. in a patent infringement suit brought by the Massachusetts Eye and Ear Infirmary. The suit involved the inventorship of patented treatment methods for macular degeneration. We obtained a district court order correcting inventorship to add QLT’s scientist to the patent, leading to stipulated dismissal.
  • We handled a complex patent dispute for a multinational corporation that is one of the world's largest oil field services companies. The resulting litigation gave rise to 17 decisions, 15 of which were successful.
  • We provided counsel for two leading medical research institutions in patent infringement action and related PTAB proceedings concerning a patent for cancer therapy.


TRADE SECRETS

  • We defended Orange in a federal jury trial in San Francisco. A unanimous jury cleared the company of a $60 million trade secret misappropriation claim as well as hacking claims.
  • We represented Prospect Therapeutics against Pro-Pharmaceuticals and its founder David Platt in a case in Massachusetts Superior Court. The matter ended in a business resolution after a bench trial, and so the judge did not issue a ruling. Prior to trial, we successfully defended against Pro-Pharmaceuticals’ motions for summary judgment on Prospect’s trade secret claims.
  • We advised Entegrion in bringing an action against its competitor Velico relating to technology for spray-dried plasma products. The case settled after we obtained favorable rulings on motions to dismiss Velico’s counterclaims.
  • We worked with Robert Reiser & Co. in a contract action in which we brought a trade secret counterclaim on Reiser’s behalf against its supplier CFS Kempten. The case settled after the jury found against both parties on all claims.
  • We provided counsel for a military contractor concerning the misappropriation of trade secrets in a matter against a competitor involving military helicopter simulator technology.
  • We advised a gas turbine engine manufacturer in a case involving the misappropriation of trade secrets against a former engineering consultant concerning the design of turbine blade and combustor technology.
  • We represented a computer software company in a misappropriation of trade secrets action against a competitor start-up company formed by former employees of our client.

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