POWERFUL ADVOCATES

Intellectual Property

LEADERSHIP: William D. Belanger

Patents

  • represented CertainTeed Corporation in a patent licensing and inventorship dispute over a patent for a PCV piping device for irrigation systems
  • secured a victory for Siemens Healthcare Diagnostics, Inc. when a federal court ruled that the Patent Trial and Appeal Board had erred in awarding a patent to Enzo Life Sciences, Inc., enabling Siemens to protect its own patent for HIV test technology
  • defending a wide variety of products against patent infringement claims in Texas, New Jersey, Michigan, Massachusetts, Pennsylvania and California
  • providing strategic counseling, patent prosecution services and product clearance and legal opinions to large corporate clients such DuPont, Pfizer and Colgate-Palmolive
  • assisting smaller life science companies, such as Avraham Pharmaceuticals, Inc., Remadur Pharmaceuticals, Inc. and Targeted Diagnostics and Therapeutics, Inc., in their efforts to strategically obtain patent protection, to in-license and out-license technology, and to evaluate and assess the scope, strength and value of patent rights in order to aid in business and product development endeavors
  • instituted a Section 337 investigation before the U.S. International Trade Commission to enforce various patents owned by Litepanels; obtained sweeping general exclusion order prohibiting importation of infringing goods by any source, regardless of whether the importer was named in the investigation
  • serving as IP counsel to Palomar Medical Technologies, Inc. (recently acquired by Cynosure Inc.), including ongoing prosecution of a patent portfolio of more than 300 patent applications directed to professional and personal hair removal and skin rejuvenation light-based devices
  • procured patents for chemical compounds, pharmaceuticals, nutraceuticals, cosmetics, nanotechnology, video display technologies, portable electronic devices, surgical compositions, infra-red-based and radio communications systems, security and encryption technologies, semiconductors, industrial designs, environmental monitoring systems, financial business methods and computer software
  • provided legal opinions on the validity, enforceability and infringement of patents and related technology
  • counseling drug companies on unique patent issues relating to drug development, including Orange Book listing; label claims; patent term restoration and extension; and subtle issues of written description, enablement, genus and species, and anticipation and obviousness in the “unpredictable arts”
  • rendering legal opinions on issues of patentability, inventorship, ownership, infringement, invalidity, enforceability and freedom to operate
  • assisting venture capital groups and investment funds in evaluating biotechnology and life science opportunities
  • advising on the interplay of FDA and patent law on cosmetic, pharmaceutical, nutraceutical and medical device products
  • managed diverse patent portfolios and helped businesses ensure that new inventions are adequately documented and protected, whether through patent or trade secret laws
  • handled license/settlement negotiations that involved the evaluation of relative strengths of competing patent positions, including formulation of potential theories of noninfringement, invalidity and unenforceability

Trademarks and Copyrights

  • represented Paul van Meter d/b/a VIADUCTgreene in a trademark dispute between the founder of a community non-profit organization and its new officers; secured back all rights to our client’s logo and trademarks
  • stopped trademark infringements in many cases throughout the country in national trademark enforcement programs for In-N-Out Burgers, El Pollo Loco, Inc., ADT Security Services, Inc., Streamlight, Inc., Holt’s Company and SKF USA, Inc.
  • Successfully prosecuted numerous U.S. Patent and Trademark Office trademark opposition prosecutions for Vanity Fair, Inc., H.D. Lee Company, Wrangler Apparel Corp., Seven For All Mankind, Inc., REEF and Bike Alert Plc.
  • represented Tyco Integrated Security in a trademark trade dress infringement and unfair competition dispute
  • oversee and manage the intellectual property requirements of a major U.S. apparel manufacturer, the largest U.S. manufacturer/retailer of maternity clothing, an international petroleum producer and retailer, a large medical equipment manufacturer and an international yeast company
  • manage and prosecute many U.S. and foreign trademark programs, including for one of the largest U.S. financial institutions
  • prepare and prosecute trademark applications in the United States and throughout the world
  • enforce trademark rights
  • protect against trademark infringement on the internet
  • organized trademark enforcement program for one of the largest professional sports leagues in the United States
  • negotiated trademark license agreements for a university client

Technology Transfer and Licensing

  • represented Pentair Flow Control Pty, Ltd. in a licensing dispute over know-how and trademarks for industrial valves
  • represented universities in connection with their technology development and transfer programs, including license and sponsored-research transactions, and related equity features
  • counseled a biotechnology company in a coordinated international licensing and development program, including (1) the licensing of patents and trade secrets from multiple U.S. and foreign patent holders, (2) the negotiation and documentation of research and development agreements with multiple U.S. and foreign research institutions and (3) the negotiation and documentation of debt and equity financing to fund the research and development program
  • represented a pharmaceutical company in negotiations with a publicly traded biotechnology company to acquire the rights to various potential cancer therapies; represented its parent company in negotiations to create a corporate partnering relationship to support the development of a promising cancer therapy and to distribute the resulting products to the world market
  • assisted the developer of a new drug delivery system in negotiating a license agreement with a major pharmaceutical company
  • counseled an international pharmaceutical company in its acquisition of and license to certain antibodies, intellectual property rights and other related assets
  • represented a privately held biotechnology company in the acquisition of a publicly traded biotechnology company
  • advised a U.S. subsidiary of a German pharmaceutical company in a series of acquisitions of products from other pharmaceutical companies