G R O U P   S T A T S

  • 20 members
  • Industry experience includes: medical devices, laboratory & diagnostic equipment, sporting goods & recreational equipment, consumer products, apparel & footwear, textiles, manufacturing & industrial equipment, electrical connectors, electromechanical devices, imaging & control systems, sensors, optics, microfluidic devices, automotive, environmental technologies, and communications systems

We are among the largest mechanical groups in New England, with 20 attorneys and technology specialists whose engineering backgrounds and industry experience blanket all aspects of mechanical technologies. Clients know we can handle virtually any technology, which means we don’t spend time getting up to speed and can focus, instead, on providing perceptive advice on issues such as new product development and competitive targeting. We also spend time educating senior management on IP issues so they can react quickly to opportunities and threats.

Client testimonial:
"We have enjoyed a monopoly with our patents, which means they must be strong. There is more strategic thinking than with other firms."

Our group’s clients range from industry leaders like Bard and Husky Injection Molding, to leading research institutions, like MIT and Brown University, to emerging start-ups like Coravin, and to some of the most recognizable consumer product companies like Nikon, Burton Snowboards and Keurig/Green Mountain. Many of our clients have been with us for decades because they value our consistency and institutional knowledge.

Client testimonial:
"They have been a fantastic partner. They are thoughtful and responsive, and they out-lawyer anyone we have been up against."

The services we provide are always tied to the business needs of clients, with both a short term and long term focus. We take into consideration a client’s plans for growth, locations of key manufacturing activities, downstream markets, industry trends, and competitive obstacles, among others. We then might advise on which type of application and how many to file, or in which foreign markets to seek protection, or the benefits of a design patent over a utility application, all the while considering engineering alternatives and other steps to minimize exposure.

Client testimonial:
"It’s fair to say we would not be where we are as a business without them. They were a key decision that we made years ago that has enabled us to go from being a $30 million company to being a multi-billion dollar business. They give me peace of mind."

For more information on our patent services, please visit our patent profile. Other services our group provides include: product clearance, patent validity, trade dress protection, intellectual property audits and due diligence, competitive intelligence and monitoring services, licensing and other IP agreements, post grant proceedings and infringement enforcement and defense.

Client testimonial:
"Whenever and wherever needed, Wolf has always been there without fail. They are exceptional attorneys and great people."
  • We took over prosecution for a new client whose prior counsel could not convince the patent examiner that its invention was patent eligible. We re-crafted the claims and flew to the USPTO, armed with samples and reasons why the invention differed from prior art. The examiner and supervisor agreed to the changes, and we received a notice of allowance shortly thereafter.
  • We strategically counseled a client in a successful patent infringement litigation against a leading sports equipment company, resulting in a favorable financial settlement and withdrawal of the competitor from our client's product space.
  • In reviewing a patent portfolio for a new client, we discovered an infringement by a major competitor, resulting in an eight-figure damages settlement and leaving our client with a patent that now covers the bulk of its products in that particular market.
  • We worked with a new client to mine an existing portfolio and to file new cases to gain coverage and prevent competitors from entering its marketplace. Years later, the client was still the only competitor in a market for tools used by nearly every major research institution.
  • A client looking to enter into joint development with a major supplier was uneasy about background technology potentially infringing its third-party rights. The supplier was unwilling to give our client access to the technology for conducting the clearance, so we entered into a confidentiality agreement with the supplier, met with its technical staff, and conducted the clearance investigation. Based on our confidential analysis and the trust we had built with the client over the years, the client went forward with the agreement.
  • After uncovering a third-party US patent that prevented our client from producing a particular product design, we discovered the corresponding European patent application had been withdrawn due to a prior art German reference and were then able to use the reference in a subsequent invalidity opinion. The speed with which we found the highly relevant reference enabled our client to proceed with the proposed product in a timely manner.
  • For a major medical device client looking to purchase a particular technology, we led the IP diligence on assessing potential acquisition targets, simultaneously guiding the client through an internal design process to develop similar patentable technology.
  • While performing a targeted infringement clearance study relating to a different feature of a client’s product, we discovered an infringement issue which was resolved with a change in design in under two weeks.

Representative clients:

  • Aavid Thermalloy, LLC – manufacturer of thermal management solutions for electronics industry
  • Agnovos Healthcare, LLC – healthcare company focused on bone health
  • Biogen Idec – biopharmaceutical company developing therapies for serious neurological, autoimmune, and hematologic disorders
  • Boston Beer Company – brewer of Samuel Adams® beer, Twisted Tea® hard ice tea, Angry Orchard® hard cider, and several craft beers
  • Boston Children's Hospital – a Harvard Medical School teaching hospital and research center focused on pediatric health care
  • Burton Snowboards – developer of products and apparel for snowboarding and the snowboard lifestyle
  • C.R. Bard, Inc. – medical equipment and devices manufacturer
  • Cellaegis Devices, Inc. – clinical stage medical device company working on remote ischemic conditioning (RIC)
  • Coravin – manufacturer of a wine preservation tool
  • Covaris – technology company providing tools and technologies for drug discovery process
  • DEKA Research & Development Corporation – developer of new technologies for diverse applications in engineering, industrial design, manufacturing, and regulatory/clinical systems
  • Euro-Pro Operating, LLC – manufacturer of household cleaning devices and small household appliances and creator of brands Shark® & Ninja®
  • Husky Injection Molding Systems, Ltd. – producer of injection molding equipment and services for the plastics industry
  • Keurig Green Mountain, Inc. – manufacturer of coffee and beverage brewers, specialty coffee, teas, and other beverages
  • Levant Power Corporation – developer of active vehicle suspension and energy recovery technology for ride control
  • Massachusetts Institute of Technology – education and research institute managing commercial investment in and licensing of inventions and discoveries from research at MIT and Lincoln Laboratory
  • Performance Sports Group – ice hockey, roller hockey, lacrosse, baseball, and softball equipment and related apparel supplier and manufacturer
  • Revision Military, Ltd. – producer of ballistic eyewear and advanced head systems for military and law enforcement
  • Staples, Inc. – office products manufacturer and seller
  • Vestas Wind Systems – manufacturer, seller, installer, and servicer of wind turbines

Recent IP Alerts:

May 13, 2015
"New International Design Patent Application, Increased Patent Term Now in Effect"
For those considering the use of design patents as part of their patent protection arsenal, an additional system for pursuing domestic and foreign design rights is now available to United States applicants, along with associated changes to U.S. design patent law. Read more

Recent Articles:

May 22, 2015
"Saving Patents from Inter Partes Review with Reissue" by Edmund J. Walsh and Stuart V.C. Duncan Smith
Patent owners anticipating an IPR challenge may find refuge in the amendment options available through reissue. Read more

March 31, 2015
"Establishing non-infringement and other creative uses of inter partes review" by Michael N. Rader
IPR proceedings can be used creatively to achieve results beyond their statutory mandate. Read more

February 24, 2015
"Going to the ends of the earth to kill a patent – without breaking the bank" by Michael N. Rader
This article provides four tips for locating superior prior art on a budget. Read more

January 28, 2015
"Looking Behind The Different Invalidation Rates Of Oppositions And IPRs" by Janice A. Vatland and Y. Jenny Chen
Current statistics indicate a higher invalidation rate for IPRs as compared to EPO oppositions. Read more

December 22, 2014
"Recent Cases Warn Of Dangers Of Trying For Second Bite At The IPR Apple" by John L. Strand and Stuart V.C. Duncan Smith
Recent PTAB decisions demonstrate limits to the strategy of filing an IPR petition quickly and correcting deficiencies or mistakes with a second petition. Read more

December 8, 2014
"One Bite At The Apple: PTAB Closes IPR Joinder Loophole" by John L. Strand and W. Brett Morrison 

Recent decisions may signal a shift in the PTAB’s interpretation of the IPR joinder provision. Read more

September 17, 2014
"Never underestimate the power of a post-grant proceeding" by Hunter Keeton
In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Read more

July 10, 2014
"Assignor Estoppel Not a Defense in Inter Partes Review" by Nathan Speed
To read the full text of the article, log in to Intellectual Property Today.

To view older publications, go to Publications

Using Patents To Secure Repeat Customers


G R O U P   S T A T S

  • 20 members
  • Industry experience includes: medical devices, laboratory & diagnostic equipment, sporting goods & recreational equipment, consumer products, apparel & footwear, textiles, manufacturing & industrial equipment, electrical connectors, electromechanical devices, imaging & control systems, sensors, optics, microfluidic devices, automotive, environmental technologies, and communications systems

We are among the largest mechanical groups in New England, with 20 attorneys and technology specialists whose engineering backgrounds and industry experience blanket all aspects of mechanical technologies. Clients know we can handle virtually any technology, which means we don’t spend time getting up to speed and can focus, instead, on providing perceptive advice on issues such as new product development and competitive targeting. We also spend time educating senior management on IP issues so they can react quickly to opportunities and threats.

Client testimonial:
"We have enjoyed a monopoly with our patents, which means they must be strong. There is more strategic thinking than with other firms."

Our group’s clients range from industry leaders like Bard and Husky Injection Molding, to leading research institutions, like MIT and Brown University, to emerging start-ups like Coravin, and to some of the most recognizable consumer product companies like Nikon, Burton Snowboards and Keurig/Green Mountain. Many of our clients have been with us for decades because they value our consistency and institutional knowledge.

Client testimonial:
"They have been a fantastic partner. They are thoughtful and responsive, and they out-lawyer anyone we have been up against."

The services we provide are always tied to the business needs of clients, with both a short term and long term focus. We take into consideration a client’s plans for growth, locations of key manufacturing activities, downstream markets, industry trends, and competitive obstacles, among others. We then might advise on which type of application and how many to file, or in which foreign markets to seek protection, or the benefits of a design patent over a utility application, all the while considering engineering alternatives and other steps to minimize exposure.

Client testimonial:
"It’s fair to say we would not be where we are as a business without them. They were a key decision that we made years ago that has enabled us to go from being a $30 million company to being a multi-billion dollar business. They give me peace of mind."

For more information on our patent services, please visit our patent profile. Other services our group provides include: product clearance, patent validity, trade dress protection, intellectual property audits and due diligence, competitive intelligence and monitoring services, licensing and other IP agreements, post grant proceedings and infringement enforcement and defense.

Client testimonial:
"Whenever and wherever needed, Wolf has always been there without fail. They are exceptional attorneys and great people."
  • We took over prosecution for a new client whose prior counsel could not convince the patent examiner that its invention was patent eligible. We re-crafted the claims and flew to the USPTO, armed with samples and reasons why the invention differed from prior art. The examiner and supervisor agreed to the changes, and we received a notice of allowance shortly thereafter.
  • We strategically counseled a client in a successful patent infringement litigation against a leading sports equipment company, resulting in a favorable financial settlement and withdrawal of the competitor from our client's product space.
  • In reviewing a patent portfolio for a new client, we discovered an infringement by a major competitor, resulting in an eight-figure damages settlement and leaving our client with a patent that now covers the bulk of its products in that particular market.
  • We worked with a new client to mine an existing portfolio and to file new cases to gain coverage and prevent competitors from entering its marketplace. Years later, the client was still the only competitor in a market for tools used by nearly every major research institution.
  • A client looking to enter into joint development with a major supplier was uneasy about background technology potentially infringing its third-party rights. The supplier was unwilling to give our client access to the technology for conducting the clearance, so we entered into a confidentiality agreement with the supplier, met with its technical staff, and conducted the clearance investigation. Based on our confidential analysis and the trust we had built with the client over the years, the client went forward with the agreement.
  • After uncovering a third-party US patent that prevented our client from producing a particular product design, we discovered the corresponding European patent application had been withdrawn due to a prior art German reference and were then able to use the reference in a subsequent invalidity opinion. The speed with which we found the highly relevant reference enabled our client to proceed with the proposed product in a timely manner.
  • For a major medical device client looking to purchase a particular technology, we led the IP diligence on assessing potential acquisition targets, simultaneously guiding the client through an internal design process to develop similar patentable technology.
  • While performing a targeted infringement clearance study relating to a different feature of a client’s product, we discovered an infringement issue which was resolved with a change in design in under two weeks.

Representative clients:

  • Aavid Thermalloy, LLC – manufacturer of thermal management solutions for electronics industry
  • Agnovos Healthcare, LLC – healthcare company focused on bone health
  • Biogen Idec – biopharmaceutical company developing therapies for serious neurological, autoimmune, and hematologic disorders
  • Boston Beer Company – brewer of Samuel Adams® beer, Twisted Tea® hard ice tea, Angry Orchard® hard cider, and several craft beers
  • Boston Children's Hospital – a Harvard Medical School teaching hospital and research center focused on pediatric health care
  • Burton Snowboards – developer of products and apparel for snowboarding and the snowboard lifestyle
  • C.R. Bard, Inc. – medical equipment and devices manufacturer
  • Cellaegis Devices, Inc. – clinical stage medical device company working on remote ischemic conditioning (RIC)
  • Coravin – manufacturer of a wine preservation tool
  • Covaris – technology company providing tools and technologies for drug discovery process
  • DEKA Research & Development Corporation – developer of new technologies for diverse applications in engineering, industrial design, manufacturing, and regulatory/clinical systems
  • Euro-Pro Operating, LLC – manufacturer of household cleaning devices and small household appliances and creator of brands Shark® & Ninja®
  • Husky Injection Molding Systems, Ltd. – producer of injection molding equipment and services for the plastics industry
  • Keurig Green Mountain, Inc. – manufacturer of coffee and beverage brewers, specialty coffee, teas, and other beverages
  • Levant Power Corporation – developer of active vehicle suspension and energy recovery technology for ride control
  • Massachusetts Institute of Technology – education and research institute managing commercial investment in and licensing of inventions and discoveries from research at MIT and Lincoln Laboratory
  • Performance Sports Group – ice hockey, roller hockey, lacrosse, baseball, and softball equipment and related apparel supplier and manufacturer
  • Revision Military, Ltd. – producer of ballistic eyewear and advanced head systems for military and law enforcement
  • Staples, Inc. – office products manufacturer and seller
  • Vestas Wind Systems – manufacturer, seller, installer, and servicer of wind turbines

Recent IP Alerts:

May 13, 2015
"New International Design Patent Application, Increased Patent Term Now in Effect"
For those considering the use of design patents as part of their patent protection arsenal, an additional system for pursuing domestic and foreign design rights is now available to United States applicants, along with associated changes to U.S. design patent law. Read more

Recent Articles:

May 22, 2015
"Saving Patents from Inter Partes Review with Reissue" by Edmund J. Walsh and Stuart V.C. Duncan Smith
Patent owners anticipating an IPR challenge may find refuge in the amendment options available through reissue. Read more

March 31, 2015
"Establishing non-infringement and other creative uses of inter partes review" by Michael N. Rader
IPR proceedings can be used creatively to achieve results beyond their statutory mandate. Read more

February 24, 2015
"Going to the ends of the earth to kill a patent – without breaking the bank" by Michael N. Rader
This article provides four tips for locating superior prior art on a budget. Read more

January 28, 2015
"Looking Behind The Different Invalidation Rates Of Oppositions And IPRs" by Janice A. Vatland and Y. Jenny Chen
Current statistics indicate a higher invalidation rate for IPRs as compared to EPO oppositions. Read more

December 22, 2014
"Recent Cases Warn Of Dangers Of Trying For Second Bite At The IPR Apple" by John L. Strand and Stuart V.C. Duncan Smith
Recent PTAB decisions demonstrate limits to the strategy of filing an IPR petition quickly and correcting deficiencies or mistakes with a second petition. Read more

December 8, 2014
"One Bite At The Apple: PTAB Closes IPR Joinder Loophole" by John L. Strand and W. Brett Morrison 

Recent decisions may signal a shift in the PTAB’s interpretation of the IPR joinder provision. Read more

September 17, 2014
"Never underestimate the power of a post-grant proceeding" by Hunter Keeton
In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Read more

July 10, 2014
"Assignor Estoppel Not a Defense in Inter Partes Review" by Nathan Speed
To read the full text of the article, log in to Intellectual Property Today.

To view older publications, go to Publications

Using Patents To Secure Repeat Customers