Saul Ewing Arnstein & Lehr’s experienced patent attorneys assist companies and institutions in securing, leveraging, and enforcing commercially valuable intellectual property. From developing patent strategies on a global scale to vigorously asserting and defending patents in court, our team serves as trusted patent advisors on a variety of matters, including in the following areas:

  • Strategies & Opinions
    • Developing IP protection, enforcement, and licensing strategies
    • Developing design-around solutions
    • Conducting patent clearance searches, drafting patentability opinions, and conducting freedom-to-operate studies to help mitigate infringement risks and identify open market spaces
    • Evaluating competitive products
    • Providing non-infringement and/or invalidity opinions to help insulate clients from treble damages in the event of a patent infringement lawsuit
    • Providing pre-enforcement infringement opinions in support of patent enforcement activities
  • Patent Portfolios
    • Managing domestic and international patent portfolios
    • Analyzing large patent portfolios to determine strategic value
    • Advising on exit strategies
  • Patent Prosecution & Enforcement
    • Drafting, filing, and prosecuting patent applications with the United States Patent and Trademark Office (USPTO) and abroad
    • Representing clients in USPTO Patent Trial & Appeal Board proceedings, including appeals, interferences, re-examinations, and inter partes reviews
    • Developing enforcement strategies
  • Patent Infringement Litigation
    • Representing clients in patent infringement trials including Hatch-Waxman/ANDA cases
    • Advocating before the Court of Appeals for the Federal Circuit
    • Serving as lead counsel in patent jury trials
  • Transactions & Licensing
    • Conducting patent due diligence in corporate transactions, including the identification of IP assets, and assessing the strength or weakness of patents therein
    • Advising on joint ventures and collaborations, including technology transfers for colleges and universities
    • Performing IP audits and mining patent portfolios for licensing/sale opportunities
    • Negotiating licensing agreements for monetizing clients’ patent assets

Our team of attorneys and patent agents have diverse backgrounds, including many who have Ph.Ds. in various scientific fields and engineering degrees, and who have worked for the USPTO. Our vast experience informs the practical, real-world legal advice we provide to help advance our clients’ business goals across a variety of industries, including life sciences, higher education, technology, consumer products and manufacturing, and engineering.

Experience

Saul Ewing Arnstein & Lehr attorneys have represented the following clients in these select patent matters:

  • Litigation
    An academic medical center in securing a settlement win in a patent ownership dispute in a California court. A biotechnology company sued the medical center for breach of contract and sought specific performance of ownership for a patented combination therapy for treating a multisystem disease. Our team secured a favorable settlement and litigation dismissal in which our client maintained ownership of the patented therapy and will receive future licensing fees.
    A manufacturer in winning a $1.85 million jury verdict in a claim against a competitor for willful patent infringement, and, on appeal before the Federal Circuit, secured a reversal of the trial judge’s decision setting aside the jury verdict for obviousness.
    An online consumer review company in a patent litigation involving infringement claims surrounding web browser method technology. We reached a successful settlement.
    A pharmaceutical company in a trial victory in Hatch-Waxman patent litigation involving a blockbuster type 2 diabetes drug.
    A pharmaceutical company in obtaining a preliminary injunction against an at-risk launch by a generic drug company in a Hatch-Waxman case.
    A pharmaceutical company in obtaining a rare award of attorneys’ fees against a generic drug maker after a trial victory in a Hatch-Waxman patent case.
    An international drug manufacturer in a high-profile patent litigation dispute in the U.S. involving the issue of whether our client could lawfully market its FDA-approved biosimilar drug to compete against another drug manufacturer’s product, which had already expired. The case, which received substantial coverage in the media, settled on favorable terms for our client.
    A medical device company in defense of a patent infringement claim related to patent on digital non-invasive thermometer. We successfully settled the case after the district court granted post-trial judgment as a matter of law invalidating patent.
    A provider of third-party authentication and grading services for collectibles in prevailing on a motion to stay in defense of patent litigation relating to a protection, authentication and identification device for collectible objects.
    A computer network storage system manufacturer in a patent infringement action dealing with systems and methods for providing virtual local storage, in the U.S. District Court for the Western District of Texas.
    A pharmaceutical company as a plaintiff in a patent infringement case for patent related to method for treating herpes. We received a jury verdict of patent infringement.
    A global telecommunications provider in U.S. District Court for the Southern District of Florida in a patent action relating to in-flight entertainment.
    A thermoplastic company in defense in a patent litigation case. Representation resulted in invalidating asserted polymer technology patents under 35 USC 112 and successful affirmation on appeal before the Federal Circuit.
    A software developer in U.S. District Court for the District of Delaware in a patent action relating to remote login software.
    A video game developer in U.S. District Court for the District of Delaware in a patent action relating to lip sync software.
    New construction home builders in a patent infringement action dealing with methods of locating real estate, in the U.S. District Court for the Central District of California.
  • Patent Strategy & Prosecution
    The University of Pennsylvania as lead patent counsel in its alliance with Novartis to create the Novartis-Penn Center for Advanced Cellular Therapeutics, which focuses on the development of Chimeric Antigen Receptor (CAR) immunotherapy. This type of partnership between a university and big pharma is a landmark in the field of cell therapy in its breadth and magnitude. On August 30, 2017, the FDA approved, for the first time, the use of CAR gene therapy for treatment of acute lymphoblastic leukemia (ALL) in the United States. The approval of Kymriah ushers in a new approach for treating certain children and young adults with B-cell acute lymphoblastic leukemia.
    A Connecticut university in obtaining allowance for a key U.S. patent. Prosecution of this patent required extensive negotiation with the USPTO Examiner, including the filing of multiple administrative petitions. The patent broadly claims proteolysis targeting chimera compounds.
    A products manufacturer in drafting, filing and prosecuting patent applications related to its steel tubing product directed to both the new tubing and a new fitting, which are designed to allow the manufacturer to market a more cost-effective offering while maintaining its leading resistance to lightning and arc faults.
    A Pennsylvania university hospital as its designated primary intellectual property counsel in its U.S. and foreign patent applications.
    A leading Massachusetts hospital in a Federal Circuit decision vacating and remanding in-part a US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) decision dismissing an interference suggested by the hospital directed to hair removal technology, especially for individuals with lightly pigmented hair. The Federal Circuit panel agreed that the PTAB’s denial of the hospital’s motion to add a claim to the interference was arbitrary and capricious.
    A biotechnology company in a variety of matters, including patent preparation and patent prosecution.
    A molecular diagnostics company in multiple national phase patent filings with related strategy discussions and prosecution.
    A Pennsylvania university in a due diligence review that allowed for our client to sign an exclusive, worldwide licensing agreement with an oncology therapies company to develop and commercialize small molecule compounds that can be used to treat tumors, such as breast cancer.
    A gaming company in filing and prosecuting its entire U.S. patent portfolio, including more than more than 200 U.S. patent applications. We also provide ongoing advice on strategic considerations related to the various U.S. patent applications in their portfolio.
 

Recognition

The group includes attorneys who have received the following recognition:

Trade Groups & Associations

Contacts

Mark D. Simpson
Patent Strategy & Prosecution
Brian R. Landry
Patent Strategy & Prosecution
Sarah A. Sullivan
Patent Litigation
Brian R. Michalek
Patent Litigation