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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 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 ensure a high level of responsiveness and efficiency. BUSINESS ADVANTAGE We consider ourselves business lawyers with technology backgrounds. This means we focus on learning our clients’ business and strategic goals in order to provide on-point solutions. We also recognize that an IP portfolio is a tool that should evolve with your business. We routinely work 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 their portfolio. BROAD RANGE OF IP SERVICES Our services cover all aspects of clients’ IP needs: 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; and alternative dispute resolution. OUR CLIENTS Our clients include major consumer products companies like Sony and Dell EMC, electronics and software companies like Nuance Communications, defense contractors like Lockheed Martin, venture capitalists and investment banks, academic institutions like MIT and Harvard, and startup companies like MongoDB and DraftKings. For startup clients with limited resources, we quickly get up to speed on their technology, timelines, constraints and anticipated exit strategies to develop IP solutions tailored to this critical time for their business.
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 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 Dell EMC - 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 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 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 Twitter Inc. - online news and social networking service 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
To view older publications, go to Publications. Mar 30, 2022 Client Spotlight: Detect Feb 16, 2022 Is Patent Marking the Patent Owner's Right or Statutory Duty? Jun 15, 2021 Experts Connect™ No. 15: Exploring the Reasons that Guiding Case No. 20 Lost Its Guiding Effect May 29, 2020 The Impact of Foreign-Based Witnesses on COVID-Related Requests for Extensions May 14, 2020 COVID-19: Impact on Patent Procedures Feb 12, 2020 Strategies for Patenting Artificial Intelligence Innovations in the Life Sciences Oct 09, 2019 Understanding Foreign Filing License Requirements Aug 01, 2019 Strategies For Patenting AI Innovations In Life Sciences Jan 11, 2019 Patent Office Releases New Section 101 Guidance for Examiners Apr 19, 2018 Innovative Use of Patent Examiner Statistics Improves Efficiency and Strengthens Portfolio
For older news items, please go to News & Events. July 19, 2012 Justin Colannino Presents on Software Patents
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 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 ensure a high level of responsiveness and efficiency. BUSINESS ADVANTAGE We consider ourselves business lawyers with technology backgrounds. This means we focus on learning our clients’ business and strategic goals in order to provide on-point solutions. We also recognize that an IP portfolio is a tool that should evolve with your business. We routinely work 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 their portfolio. BROAD RANGE OF IP SERVICES Our services cover all aspects of clients’ IP needs: 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; and alternative dispute resolution. OUR CLIENTS Our clients include major consumer products companies like Sony and Dell EMC, electronics and software companies like Nuance Communications, defense contractors like Lockheed Martin, venture capitalists and investment banks, academic institutions like MIT and Harvard, and startup companies like MongoDB and DraftKings. For startup clients with limited resources, we quickly get up to speed on their technology, timelines, constraints and anticipated exit strategies to develop IP solutions tailored to this critical time for their business.
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 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 Dell EMC - 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 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 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 Twitter Inc. - online news and social networking service 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
To view older publications, go to Publications. Mar 30, 2022 Client Spotlight: Detect Feb 16, 2022 Is Patent Marking the Patent Owner's Right or Statutory Duty? Jun 15, 2021 Experts Connect™ No. 15: Exploring the Reasons that Guiding Case No. 20 Lost Its Guiding Effect May 29, 2020 The Impact of Foreign-Based Witnesses on COVID-Related Requests for Extensions May 14, 2020 COVID-19: Impact on Patent Procedures Feb 12, 2020 Strategies for Patenting Artificial Intelligence Innovations in the Life Sciences Oct 09, 2019 Understanding Foreign Filing License Requirements Aug 01, 2019 Strategies For Patenting AI Innovations In Life Sciences Jan 11, 2019 Patent Office Releases New Section 101 Guidance for Examiners Apr 19, 2018 Innovative Use of Patent Examiner Statistics Improves Efficiency and Strengthens Portfolio
For older news items, please go to News & Events. Recent News July 19, 2012 Justin Colannino Presents on Software Patents