Patent Prosecution
Our Patent Prosecution teamโcomposed of experienced intellectual property lawyers and skilled litigatorsโworks hand-in-hand with our clients to develop strategies to identify, secure and license domestic and worldwide patent rights for their innovations and discoveries. We also provide competitive patent assessments to meet our clientsโ needs.
We prepare and prosecute U.S. and foreign patent applications across a broad spectrum of technologies, including chemicals and pharmaceuticals, biotechnology, e-commerce and business methods, computer hardware and software, electrical and electronic components, mechanical devices, and components of any complexity.
Working closely with our firmโs litigators, we stand ready to help you enforce your patent rights against infringers and defend them against assertions of infringement, using our extensive experience to develop a comprehensive pre-litigation strategy and assist with any necessary litigation. Teaming with our litigation staff, we defend our clients rights before the Federal Courts and administrative agencies, including the U.S. Patent and Trademark Office and U.S. International Trade Commission.
Teaming with our corporate lawyers, we help our clients develop innovative licensing agreements, strategic alliances, collaborations and mergers to help exploit their patents and maximize the value of their IP assets.
We have found that the business and legal issues involving patent matters frequently require the input of legal professionals with litigation, finance, M&A, business, franchising, tax, regulatory, and/or other specialized skills. At Wiggin and Dana, our patent attorneys are free to call upon over 130 attorneys at the firm with experience in these diverse areas.
For all of its new clients, Wiggin and Dana freely and gladly invests its own time to become familiar with the clientโs patent portfolio, as well as its other intellectual property assets and competitive concerns, in order to enable the client to engage our firm with as little disruption and cost as possible. In addition, our patent attorneys stay current on cutting-edge issues and trends by active involvement in many industry and legal organizations, such as the Institute of Electrical and Electronics Engineers (IEEE), the American Chemical Society (ACS), the Licensing Executives Society (LES), The New York Intellectual Property Law Association (NYIPLA), the American Intellectual Property Law Association (AIPLA), the International Federation of Intellectual Property Attorneys (FICPI), as well as relevant sections of the International, American, Federal Circuit, and Connecticut Bar Associations. In fact, one of our attorneysย served as NYIPLAโs President.
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- Lufthansa Technik AG v. Astronics Advanced Electronic Systems Corp., Case No. 2:14-CV-1821, Western District of Washington. In this avionics industry case, firm client Astronics obtained a successful claim construction and summary judgment of patent indefiniteness.
- Genovis AB et al. v. Promega Corp., Case No. 3:15-CV-00206, Western District of Wisconsin. In this biotech case, firm client Genovis asserted its key patent against a competitor ending a hard found litigation with a beneficial settlement.
- Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117, Northern District of California. In this medical device case, a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent was obtained on behalf of Bayer Corporation, including an award of attorneysโ fees. The current standards for inequitable conduct were established in the en banc decision by the Federal Circuit in this case.
- Roche Diagnostic Operations, Inc. et al. v. Bayer Corporation et al., Civil Action No. 07-753-JJF. This suit was filed in the District of Delaware and involved blood glucose meters and test strips. Bayer successfully moved to have the matter resolved in arbitration.
- Matsushita Electric Industrial Co., Ltd. et al. v. Inverness Medical Technologies, Inc. et al., Civil Action No.: 00-143-SLR. This case was filed in the District of Delaware and involved medical devices. Our team represented the patentee (Panasonic) and the case concluded when the alleged infringer agreed to stop production of its generic product.
- Matsushita Battery Industrial Co., Ltd. et al. v. Energy Conversion Devices, Inc. et al., Civil Action No.: 96-101-SLR. Panasonic filed a declaratory judgment action in the District of Delaware. The matter was resolved when the patentee agreed to a covenant not to sue.
- Eveready Corporation v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No.: 1:01CV877, filed in the Northern District of Ohio. The case settled after the patent-in-suit was challenged by our client on the ground of inequitable conduct.
- International Control Systems, L.L.C. v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No. 3:00 CV 00537, filed in the District of Connecticut. After our team pressed for Rule 11 sanctions, the Plaintiff withdrew the case in its entirety.
- Typhoon Touch Technologies, Inc. v. Nova Mobility Systems, Inc. et al., Civil Action No. 6:07cv546, Eastern District of Texas. We pursued a successful Markman strategy that resulted in a stipulation of non-infringement and successful appeal.
- Sony Electronics, Inc. et al. v. Soundview Technologies, Inc., Case No.: 3:00-CV-754, District of Connecticut. We filed summary judgment of non-infringement, and was successful before the district court and was affirmed by the Federal Circuit.
- In Re Compression Labs, Inc. Patent Litigation, Case No. MDL 05-01654, Eastern District of Texas. We pursued a transfer strategy that resulted in one of the first cases involving a non-practicing entity that was transferred out of the Eastern District of Texas. Our team developed the key prior art defense for the group and took the lead at depositions dealing with prior art and inequitable conduct defenses. Based on the prior art defense and a successful Markman hearing, the case was successfully resolved.
- Technology Licensing Corporation v. JVC Americas Corporation, Civ. Action No. 1:12-cv-1444, Northern District of Illinois. Firm client JVC moved for summary judgment on the ground of non-infringement due to license and was successful. The plaintiff did not appeal.
- Digital Corporation v. JVC Kenwood Corporation et al., Case No. 3:13-cv-00356, Southern District of California. Firm client JVC moved for collateral estoppel on claim construction, which eliminated two patents from the case before any discovery was allowed. Thereafter, the matter was quickly resolved by settlement.
- Optimum Power Solutions, LLC v. Panasonic Corporation of North America, Case No. 3:12-cv-03123 SI, Northern District of California. Our client moved for summary judgment of non-infringement, which was granted and affirmed on appeal.
- Carl M. Burnett v. Panasonic Corp. et al, Case No.8:17-cv-00236-PX, District of Maryland. Our client successfully won a motion to dismiss on the elusive issue of patentability under 35 U.S.C. 101 which was upheld by the Federal Circuit after it had decided Berkheimer, which toughened the standard for prevailing on such strategy.
- Trial counsel to YKK in a patent infringement and false advertising case in the Southern District of New York. Devised successful strategy to reduce the multi-million dollar false advertising claim, and after a bifurcated trial, the case settled on favorable terms.
- Represented Soverain Software LLC in patent infringement case in the Eastern District of Texas involving e-commerce technology against a number of defendants including J.C Penney, Victoriaโs Secret, Avon and other online retailers. Obtained jury verdict of infringement, validity, and millions in damages.
- Represented Symantec Corporation in several patent cases in the Northern District of California and District of Delaware regarding backup and recovery software. Cases settled favorably after filing summary judgment motions.
- Defended Symantec Corporation in patent litigation in the Northern District of California, regarding anti-virus software. Case settled favorably after winning a key motion that gutted Plaintiffโs damages case.
- Represented various brand pharmaceutical companies against generic companies in Hatch Waxman ANDA litigation including against Teva, Amneal Pharmaceuticals and others in separate unrelated matters, reaching successful settlements or summary judgment.
- Represented INVISTA, a subsidiary of Koch Industries, in a breach of contract and patent infringement litigation in the Southern District of New York. Case settled favorably after filing an early motion for summary judgment.
- Wikeshire v. Kapsch (2022): Represented manufacturer of RFID electronic tolling equipment in patent infringement suit.
- mCom v. CSI (2021/Ongoing): Represent developer of electronic banking system in patent infringement suit.
- RFID ITC case (2020): Represented manufacturer of RFID electronic tolling equipment in ITC case.
- Sipco v. Streetline (2016): Represented manufacturer of electronic parking system in patent infringement suit.
- T-Rex v. Interactivation Health (2015): Represented developer of medical electronic programming systems in patent infringement suit.
- Schindler Elevator Corp. v. Otis (2008 to 2013): Represented Swiss elevator manufacturer in patent infringement suit.
- Inventio v. ThyssenKrupp (2008 to 2015): Represented Swiss IP holding company asserting elevator technology patents in patent infringement suit.
- Lochner v VIZIO โ Represented VIZIO.ย Invalidated a patent directed to a wireless dummy terminal/base station system that Lochner tried to read on tablet computers based on the plaintiffโs broad claim construction.ย CAFC reversed on the grounds that the claim construction should have been narrowed, and the case settled after filing a motion for summary judgment of non-infringement.
- Oplus v. VIZIO โ Obtained summary judgment of anticipation based on prior art in case involving high-definition TV signal processing.ย Wrote and argued the motion and took the expert deposition that got us the admissions we used.
- DNP v. Natural Alternatives International โ Argued Markman hearing and obtained favorable constructions on behalf of DNP in nutraceutical patent case.
- Blu-Ray Disc Players (ITC) โ Obtained favorable walk-away settlement of ITC matter and related district court case on behalf of VIZIO in case brought by Walker Digital against entire Blu-Ray player industry.