G R O U P   S T A T S

  • 23 members
  • 14 members have advanced degrees; 7 have PhDs
  • Backgrounds include: Electrical Engineering, Computer and Information Science, Aerospace Engineering, Biomedical Engineering Design, and Applied Physics

Collectively, it’s hard to match our group’s depth and breadth of knowledge. Our clients choose us because of our strategic focus and the level of expertise and experience—both technical and legal—that we bring to the table. Clients also value the stability of our dedicated client teams that maintain continuity and assure a high level of responsiveness and efficiency.

Client testimonial:
"The patent field requires a fair amount of substantive technical knowledge, and I think that is one of their core areas of expertise. They can attack technical talents from a variety of ways. The attorneys have well-grounded, legitimate training in the technical arts."

We consider ourselves business lawyers with technology backgrounds. This means we focus on learning our clients’ business and strategic goals to provide on point solutions. We also recognize that an IP portfolio is a business tool that should evolve with your business. We routinely interact with clients to ensure the initial scope of protection is consistent with their current business plan and, when it is not, assist them with pivoting the portfolio.

Client testimonial:
"With prior counsel, I would have to read two or three drafts of an application, but with Wolf they have done an excellent job of learning our technology and industry so I only have to read one draft. There is a lot of efficiency in that, and that’s decreased the cost of new patent applications."

Our services cover all aspects of clients’ IP needs and include: strategic counseling on the development and management of portfolios; patent and trademark drafting and prosecution; international filing strategies and execution; post grant proceedings; IP audits; product clearance and design-around advice; due diligence; licensing and tech transfer agreements; patent infringement, validity, and other opinions; litigation; alternative dispute resolution; and copyright issues.

Client testimonial:
"I would say that in terms of balancing attention to detail without losing sight of the big picture Wolf Greenfield is much better than other firms. Most firms are good at one or the other but not both. Wolf Greenfield is in the top percentage of quality firms. "

Our clients include major consumer products companies, electronics and software companies, defense contractors, venture capitalists and investment banks, academic institutions, and startup companies. For start-up clients with limited resources, we quickly come up to speed on their technology, timelines, constraints, and anticipated exit strategies to develop IP solutions tailored to this critical time for their businesses.

Client testimonial:
"They have a lot of experience working with small companies as well as big companies, so they have a balanced understanding of the needs of both parties. They understand what a small company needs—what’s absolutely necessary—and they understand where we’d like to go from a corporate perspective. "
  • For a Fortune 500 client which had identified a critical need to join a licensing pool relating to a complex wireless communication standard, we searched through the client’s extensive patent portfolio to find potentially relevant patents and conducted infringement analyses to determine whether each patent read on the standard, resulting in our client successfully joining the licensing pool and receiving steady stream of royalty payments.
  • After evaluating potential design tweaks to circumvent a competitor’s patent, we were able to assist a client in identifying and implementing a design-around in under two weeks.
  • For a client who received a demand for nine-figure payment from a patentee holding over 100 patents relating to wireless technology, we were able to quickly process the portfolio to identify potential threats and opportunities for the client, using that knowledge to negotiate a resolution with the patentee that was satisfactory to our client.
  • We defended a diligence conducted by multiple potential investors as part of a multi-million dollar funding round for a client.
  • Following the acquisition of one client by a large, established company in its industry, we educated the acquiring company on the value of our client’s portfolio’s as well as the prior art identified by the patent examiner, thereby assisting the acquirer in pivoting the portfolio to maintain business value.
  • For a client acquiring thousands of patents and applications, we rapidly deconstructed the portfolio to understand the status and technical value of each patent and application, ensuring the portfolio preserved all IP rights.
  • We assisted a client in developing and implementing an industry wide licensing program, which included litigations against two competitors, both of whom ultimately settled on terms more favorable to our client than the standard terms initially offered.
  • For a major consumer products company seeking to enter a competitor’s market, we conducted a study to identify blocking patents and then guided the company through a design process so the resulting product would stand up to litigation attacks.
  • For major medical device client looking to purchase a particular technology, we led the IP diligence on assessing potential acquisition targets, simultaneously guiding client through an internal design process to develop similar patentable technology.
  • We worked with a manufacturer of consumer electronic devices to extend breadth of coverage of its earlier patents to cover de facto industry communication standard.
  • We helped an early-stage startup company build a worldwide patent portfolio, contributing to its valuation of $500M.

Representative clients:

  • AccuRev - software configuration management application acquired by Micro Focus in December 2013
  • Ai Squared - assistive technology company providing screen magnification and screen reading software products
  • Amphenol TCS - manufacturer of high-speed, high-density connection systems for networking, communications, storage, and computer server markets
  • Athenahealth, Inc. - provider of cloud-based electronic health records, management, and billing services 
  • Butterfly Network, Inc. - diagnostic and therapeutic imaging device company
  • DraftKings - daily online fantasy sports platform
  • EMC Corporation - provider of IT storage hardware solutions for data backup and recovery
  • FanDuel - daily online fantasy sports platform
  • FitLinxx, Inc. - creator of activity and health tracking devices that integrate with wellness programs
  • FLIR Systems, Inc. - designer, manufacturer, and marketer of thermal imaging infrared cameras
  • Fraunhofer Center for Sustainable Energy Systems (CSE) - nonprofit applied research and development laboratory commercializing clean energy technologies
  • GTECH - lottery and gaming company 
  • Harvard University & Medical School - Harvard's Office of Technology Development is responsible for managing its intellectual property assets for the public good
  • Hyperfine Research, Inc. - developer of health care devices and software
  • Lockheed Martin Mission Systems and Training - provider of systems engineering, software development, complex program management, and supply chain solutions and logistics
  • Massachusetts Institute of Technology - MIT's Technology Licensing Office fosters commercial investment in and licensing of inventions and discoveries flowing from the research at the Massachusetts Institute of Technology and Lincoln Laboratory
  • Nuance Communications, Inc. - provider of voice and language technologies, applications, and services
  • oneZero Financial Systems, LLC - developer of low-latency software systems for foreign exchange, commodities, and futures markets
  • PAREXEL International Corporation - biopharmaceutical services company providing contract research, consulting, medical communications, and technology solutions and services
  • Quantum Systems Integrators, Inc. - consulting and turnkey hardware/software solutions for industries including telecommunication, petrochemical, aviation, and automotive
  • Sony Corporation - manufacturer of audio, home video game consoles, communications, and key device and information technology products
  • Temperature@lert - cloud-based temperature monitoring products manufacturer
  • Tollgrade Communications, Inc. - provider of fault detection hardware and predictive analytics software
  • TrueFit - retail software company that helps consumers find brands and styles
  • University of Florida Research Foundation, Inc. - UFRF promotes, encourages, and provides assistance to research activities of faculty, staff, and students
  • Vector Controls Inc. - marine propulsion machinery and equipment manufacturer
  • Vestas Wind Systems - manufacturer of wind turbines
  • Yale University - Yale's Office of Cooperative Research facilitates the translation of research from Yale’s labs into products and services that benefit society

Recent Articles:

March 27, 2015
"Suprema v ITC: defining ‘articles that infringe'" by Eric G. J. Kaviar
The Federal Circuit’s decision in this closely watched litigation will likely have significant consequences that may extend beyond the issue of ‘inducement’ before the court. Read more 

February 12, 2015
"Commil v Cisco: The US is in the midst of rethinking defences to 'inducement' of patent infringement" by Charles T. Steenburg
The Supreme Court's upcoming decision may restrict defendants' options when charged with “inducing” patent infringement. Read more

September 8, 2014
"No, 'Alice' Wasn't a 'Death Knell' for Software Patents" by Ling Cheung Hughes and James H. Morris
In the Supreme Court's Alice decision, it solidly upheld patent eligibility of computer-implemented inventions and continued to refuse to recognize a separate exception for business methods. Read more

To view older publications, go to Publications

3 Functional Claiming Questions To Address Post-Williamson


G R O U P   S T A T S

  • 23 members
  • 14 members have advanced degrees; 7 have PhDs
  • Backgrounds include: Electrical Engineering, Computer and Information Science, Aerospace Engineering, Biomedical Engineering Design, and Applied Physics

Collectively, it’s hard to match our group’s depth and breadth of knowledge. Our clients choose us because of our strategic focus and the level of expertise and experience—both technical and legal—that we bring to the table. Clients also value the stability of our dedicated client teams that maintain continuity and assure a high level of responsiveness and efficiency.

Client testimonial:
"The patent field requires a fair amount of substantive technical knowledge, and I think that is one of their core areas of expertise. They can attack technical talents from a variety of ways. The attorneys have well-grounded, legitimate training in the technical arts."

We consider ourselves business lawyers with technology backgrounds. This means we focus on learning our clients’ business and strategic goals to provide on point solutions. We also recognize that an IP portfolio is a business tool that should evolve with your business. We routinely interact with clients to ensure the initial scope of protection is consistent with their current business plan and, when it is not, assist them with pivoting the portfolio.

Client testimonial:
"With prior counsel, I would have to read two or three drafts of an application, but with Wolf they have done an excellent job of learning our technology and industry so I only have to read one draft. There is a lot of efficiency in that, and that’s decreased the cost of new patent applications."

Our services cover all aspects of clients’ IP needs and include: strategic counseling on the development and management of portfolios; patent and trademark drafting and prosecution; international filing strategies and execution; post grant proceedings; IP audits; product clearance and design-around advice; due diligence; licensing and tech transfer agreements; patent infringement, validity, and other opinions; litigation; alternative dispute resolution; and copyright issues.

Client testimonial:
"I would say that in terms of balancing attention to detail without losing sight of the big picture Wolf Greenfield is much better than other firms. Most firms are good at one or the other but not both. Wolf Greenfield is in the top percentage of quality firms. "

Our clients include major consumer products companies, electronics and software companies, defense contractors, venture capitalists and investment banks, academic institutions, and startup companies. For start-up clients with limited resources, we quickly come up to speed on their technology, timelines, constraints, and anticipated exit strategies to develop IP solutions tailored to this critical time for their businesses.

Client testimonial:
"They have a lot of experience working with small companies as well as big companies, so they have a balanced understanding of the needs of both parties. They understand what a small company needs—what’s absolutely necessary—and they understand where we’d like to go from a corporate perspective. "
  • For a Fortune 500 client which had identified a critical need to join a licensing pool relating to a complex wireless communication standard, we searched through the client’s extensive patent portfolio to find potentially relevant patents and conducted infringement analyses to determine whether each patent read on the standard, resulting in our client successfully joining the licensing pool and receiving steady stream of royalty payments.
  • After evaluating potential design tweaks to circumvent a competitor’s patent, we were able to assist a client in identifying and implementing a design-around in under two weeks.
  • For a client who received a demand for nine-figure payment from a patentee holding over 100 patents relating to wireless technology, we were able to quickly process the portfolio to identify potential threats and opportunities for the client, using that knowledge to negotiate a resolution with the patentee that was satisfactory to our client.
  • We defended a diligence conducted by multiple potential investors as part of a multi-million dollar funding round for a client.
  • Following the acquisition of one client by a large, established company in its industry, we educated the acquiring company on the value of our client’s portfolio’s as well as the prior art identified by the patent examiner, thereby assisting the acquirer in pivoting the portfolio to maintain business value.
  • For a client acquiring thousands of patents and applications, we rapidly deconstructed the portfolio to understand the status and technical value of each patent and application, ensuring the portfolio preserved all IP rights.
  • We assisted a client in developing and implementing an industry wide licensing program, which included litigations against two competitors, both of whom ultimately settled on terms more favorable to our client than the standard terms initially offered.
  • For a major consumer products company seeking to enter a competitor’s market, we conducted a study to identify blocking patents and then guided the company through a design process so the resulting product would stand up to litigation attacks.
  • For major medical device client looking to purchase a particular technology, we led the IP diligence on assessing potential acquisition targets, simultaneously guiding client through an internal design process to develop similar patentable technology.
  • We worked with a manufacturer of consumer electronic devices to extend breadth of coverage of its earlier patents to cover de facto industry communication standard.
  • We helped an early-stage startup company build a worldwide patent portfolio, contributing to its valuation of $500M.

Representative clients:

  • AccuRev - software configuration management application acquired by Micro Focus in December 2013
  • Ai Squared - assistive technology company providing screen magnification and screen reading software products
  • Amphenol TCS - manufacturer of high-speed, high-density connection systems for networking, communications, storage, and computer server markets
  • Athenahealth, Inc. - provider of cloud-based electronic health records, management, and billing services 
  • Butterfly Network, Inc. - diagnostic and therapeutic imaging device company
  • DraftKings - daily online fantasy sports platform
  • EMC Corporation - provider of IT storage hardware solutions for data backup and recovery
  • FanDuel - daily online fantasy sports platform
  • FitLinxx, Inc. - creator of activity and health tracking devices that integrate with wellness programs
  • FLIR Systems, Inc. - designer, manufacturer, and marketer of thermal imaging infrared cameras
  • Fraunhofer Center for Sustainable Energy Systems (CSE) - nonprofit applied research and development laboratory commercializing clean energy technologies
  • GTECH - lottery and gaming company 
  • Harvard University & Medical School - Harvard's Office of Technology Development is responsible for managing its intellectual property assets for the public good
  • Hyperfine Research, Inc. - developer of health care devices and software
  • Lockheed Martin Mission Systems and Training - provider of systems engineering, software development, complex program management, and supply chain solutions and logistics
  • Massachusetts Institute of Technology - MIT's Technology Licensing Office fosters commercial investment in and licensing of inventions and discoveries flowing from the research at the Massachusetts Institute of Technology and Lincoln Laboratory
  • Nuance Communications, Inc. - provider of voice and language technologies, applications, and services
  • oneZero Financial Systems, LLC - developer of low-latency software systems for foreign exchange, commodities, and futures markets
  • PAREXEL International Corporation - biopharmaceutical services company providing contract research, consulting, medical communications, and technology solutions and services
  • Quantum Systems Integrators, Inc. - consulting and turnkey hardware/software solutions for industries including telecommunication, petrochemical, aviation, and automotive
  • Sony Corporation - manufacturer of audio, home video game consoles, communications, and key device and information technology products
  • Temperature@lert - cloud-based temperature monitoring products manufacturer
  • Tollgrade Communications, Inc. - provider of fault detection hardware and predictive analytics software
  • TrueFit - retail software company that helps consumers find brands and styles
  • University of Florida Research Foundation, Inc. - UFRF promotes, encourages, and provides assistance to research activities of faculty, staff, and students
  • Vector Controls Inc. - marine propulsion machinery and equipment manufacturer
  • Vestas Wind Systems - manufacturer of wind turbines
  • Yale University - Yale's Office of Cooperative Research facilitates the translation of research from Yale’s labs into products and services that benefit society

Recent Articles:

March 27, 2015
"Suprema v ITC: defining ‘articles that infringe'" by Eric G. J. Kaviar
The Federal Circuit’s decision in this closely watched litigation will likely have significant consequences that may extend beyond the issue of ‘inducement’ before the court. Read more 

February 12, 2015
"Commil v Cisco: The US is in the midst of rethinking defences to 'inducement' of patent infringement" by Charles T. Steenburg
The Supreme Court's upcoming decision may restrict defendants' options when charged with “inducing” patent infringement. Read more

September 8, 2014
"No, 'Alice' Wasn't a 'Death Knell' for Software Patents" by Ling Cheung Hughes and James H. Morris
In the Supreme Court's Alice decision, it solidly upheld patent eligibility of computer-implemented inventions and continued to refuse to recognize a separate exception for business methods. Read more

To view older publications, go to Publications

3 Functional Claiming Questions To Address Post-Williamson