Proskauer Rose LLP's Patent Law Practice forms a significant part of the Firm's Intellectual Property Group. The practice is based in Proskauer's New York, Boston and Washington, DC offices. The practice includes patent and technology-related litigation, patent counseling, licensing and technology transfer, and patent procurement. For more information about this practice area, contact:
The practice is led by partners Kenneth Rubenstein, a Ph.D. in physics, James Shalek and Steven Bauer, nationally known litigators facile with electrical, chemical and life sciences technologies, and Joseph Capraro, a specialist in strategic patent and trademark portfolio development, technology transfer, and related intellectual property counseling for companies in the high technology sector. The practice also includes over two dozen senior counsel, associates, and technology specialists and patent agents. The practice works with a diverse group of industries, with special emphasis in the life sciences (pharmaceutical, medical device, biotechnology), engineering technology (consumer electronics, video processing, DVD and CD, circuit design, semiconductor processing, computer hardware and software, telecommunications), chemical and materials (alternative energy, polymer adhesives, material science), and financial service industries.
With respect to patent litigation, the Patent Law Practice greatly benefits by being part of a full-service national law firm having great depth and breadth of capabilities. When we are involved in a patent litigation, we are able to call upon the resources of a Litigation Department that has almost 280 attorneys experienced in trials and alternative dispute resolution. We are able to staff patent litigations with both technically trained patent trial attorneys and experienced commercial litigators, allowing us to bring a diversity of perspective and experience to these cases. The addition of Lou Solomon's and Jim Shalek's two groups in New York, Steve Bauer's group in Boston and the recent addition of Colin Sandercock's group in Washington, DC, have added significantly to our patent litigation expertise.
Similarly, when we are involved in a licensing or technology transfer transaction, we have significant expertise within the Patent Law Practice and are able to call upon a Corporate Department with nearly 220 attorneys on an as-needed basis. When attorneys from the Corporate Department are involved in a corporate transaction, such as a merger or acquisition, we help assess the value of a company's patent portfolio, and assess risks to the transaction due to third-party patents.
Today, high-tech business success often depends on an organization's ability to protect and build its intellectual property. Accordingly, we will often call upon our Non-Compete and Trade Secrets Practice attorneys for preventive planning measures, such as drafting confidentiality, non- compete and other agreements. These attorneys also provide counseling on the hiring and firing of key employees possessing confidential technical information, and conduct litigation involving claims of employee raiding and theft of trade secrets.
Another important part of patent practice today is patent antitrust. This is currently an important topic for the Justice Department and the FTC. Very often, license and technology transfer agreements are agreements among companies with competitive relationships. It is important to consider the transaction from the antitrust point of view. The Proskauer Patent Practice has worked on some of the most complex licensing arrangements ever undertaken in which substantial antitrust issues were raised and dealt with successfully.
Litigation
The following are some types of patent issues that Proskauer's Patent Law Practice has handled:
- In re Omeprazole Patent Litigation. Six-month, four-phase trial over 10+ patents. Issues of infringement, invalidity, and unenforceability. Related patent and antitrust litigation pending in SDNY.
- Schering v. Andrx. Infringement and invalidity issues relating to Claritin D-24®. Prevailed on summary judgment on one patent; pending trial on the second.
- Andrx v. aai Pharma. Declaratory judgment suit seeking declaration of non-infringement or invalidity pending in SDNY.
- MKS Instruments v. Advanced Energy. Our client obtained a first jury verdict of patent infringement and award of $4.2 million against its major competitor on a patent related to the semiconductor manufacturing industry. Our client then obtained a second, jury verdict of infringement on its competitors "redesigned" product.
- Refac v. Matsushita, et al. Representation of Refac in patent infringement litigation; retained to try issues concerning alleged champerty. No champerty found.
- Hammel v. IBM. Defense against claims of patent infringement covering the electronic cash register.
- Dr. Reddy's v. FDA. Successful defense of FDA's grant of exclusivity to first-to-file generic. APA claims dismissed.
- Representation of Massachusetts Institute of Technology in a matter against the U.S. Patent Office in federal court in Boston relating to high temperature superconductors. After a one-week trial, M.I.T. and its exclusive licensee, American Superconductor, obtained a judicial declaration of broad patent scope from the federal court in an appeal of a Patent Office Board of Interference Appeals decision.
- Amerian BioScience (Taxol)®. Defense of NDA holder's right to list or de-list patents in Orange Book. Conduct specifically approved by D.C. Circuit in significant decision.
- Tiazac®. Preliminary injunction and appeal to the Federal Circuit on behalf of a generic drug manufacturer; prosecuted a motion for a preliminary injunction under the Hatch- Waxman Act, the Administrative Procedures Act, and the antitrust laws challenging the listing in the FDA's Orange Book of a patent on the pharmaceutical product. Ancillary and successful proceedings before the FTC causing de-listing of the patent.
- Representation of Skystream Networks in case brought by Helius related to satellite transmissions to local area networks.
- Representation of RSA Security in an international patent arbitration held in Paris, France, on encryption algorithms, and in which the licensor claimed RSA owed over $100 million in damages. After a one-week hearing, RSA obtained not only a decision in its favor, but recovered its legal fees as well.
- Representation of Columbia University, Motorola, Philips, Matsushita, Mitsubishi, France Telecom, and Japan Victor Corporation in a 26-patent lawsuit against Compaq for infringing patents related to MPEG technology.
- Representation of Alcatel in a major patent and trade secret litigation against Cisco related to telecommunications equipment.
- Defense of the National Securities Clearing Corporation in a lawsuit brought by Mopex related to a business method patent.
- Representation of System Management Arts (SMARTS) in a litigation against Avesta involving object-oriented software.
- Representation of Nova, a company in the field of semiconductor chip metrology, in a lawsuit against Sensys.
- Representation of Hauppauge Computer in a litigation against Advanced Interactive related to video cards for computers.
- Representation of Standard Microsystems in a litigation against Datapoint relating to LAN technology.
- Representation of Prince Sports Group in a litigation against Wilson Sporting Goods in a patent litigation related to tennis rackets.
- Representation of Schein Pharmaceutical and Ranbaxy Laboratories in a litigation against Glaxo-Wellcome relating to the drug Zantac®.
- Representation of Ohm Laboratories in a litigation against Richardson-Vicks relating to the drug Co-Advil®.
- Representation of Ranbaxy Laboratories in a litigation against Eli Lilly involving the drug Cefaclor®.
- Representation of Ranbaxy Laboratories in a litigation against Bayer AG involving the drug Ciprofloxacin®.
- Representation of Armkel, LLC in a patent infringement action against Pfizer, Inc. relating to kits for pregnancy testing.
- Defense of PSC Inc. in a patent infringement action brought by Metrologic Instruments alleging infringement of patents relating to bar code scanners.
- Defense of Vantico Inc. in a patent infringement action by DSM Desotech alleging infringement of three patents relating to stereolithography.
- Representation of Schein Pharmaceuticals and Marsam in Taxol® patent litigation.
- Summary judgment of non-infringement for client SeaChange International after a four-day Markman hearing, in a case relating to the cable television industry and in which the plaintiff was seeking over $100 million in damages.
- Summary judgment of non-infringement for MacDermid Inc. after a two-day Markman hearing in a case relating to the use of surfactants for the manufacture of printed circuit boards.
Licensing
We have worked on the formation of a pioneering patent pool for MPEG-2 technology, first on behalf of CableLabs, the research and development consortium of the cable TV industry, and now on behalf of MPEG LA LLC, an entity set up to license MPEG-2 essential patents. MPEG-2 is an important digital video compression standard with applications in cable TV, satellite TV and packaged media. We were instrumental in selecting those patents which are "essential" to the MPEG-2 standard and therefore suitable for inclusion in the pool. We worked with major consumer electronics companies and set top box makers in doing this job. Under this arrangement, the MPEG-2 "essential" patents of a number of major companies are being made available in a single license. The pool has been operational since July 1997 and now has over five hundred licensees. We are presently working with major consumer electronics and entertainment companies on patent pools relating to DVD technology. We have also been retained to apply this pioneering approach to licensing to the IEEE 1394 standard related to the Firewire system and to DVB-T (Digital Video Broadcast-Terrestrial).
On behalf of MPEG LA LLC we have also worked on setting up a patent pool for MPEG-4 Visual, a successor to MPEG-2 video compression. Similarly, on behalf of MPEG LA LLC we are now organizing a patent pool related to AVC, a new video compression standard, and a patent pool related to Digital Rights Management.
Counseling and Patent Prosecution
We counsel clients with respect to the validity and infringement of competitors' patents, and provide product clearance. We also have an active practice within the Patent Office involving the prosecution of patent applications, the filing of re-examinations and reissues, and the handling of patent interferences. Representative clients have included Corning, in the field of optical components; Standard Microsystems, an IC and Local Area Network component company; Skystream, in the field of digital video broadcast equipment; Solectron, in the field of PCMCIA cards memory; Madison CMP, in the field of semiconductor processing; Candela, in the field of medical lasers; MKS Instruments and Hypertherm, in the field of high temperature plasma devices; Evergreen Solar, in the field of alternative energy systems; numerous companies in the telecommunications switching industries; Children's Hospital of Boston in the field of pediatric medical devices; and Vantico Inc., in the field of polymers and adhesives, as well as Paul Hartmann AG, in the field of consumer disposable products.
Business Method Patents
We are at the forefront of business method patents. We expect that patents relating to business methods will become crucially important to our clients in the financial services industries in the next few years. We are representing outstanding financial services companies, including AIG and Brown Brothers Harriman, in connection with the procurement of patents relating to topics such as hedge fund structures, insurance products, e-commerce products and services, etc. We have also represented National Securities Clearing Corporation in a litigation involving a patent relating to Exchange-Traded Funds.
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