protecting intellectual property

Protecting Intellectual Property

Rapid digitization of the global economy has transformed our understanding of asset values, highlighting just how vital intellectual property is to corporate success. Protecting this largely intangible asset is an integral part of management’s corporate stewardship and an area where expert professional advice is invaluable. Protecting IP involves some key stages: identifying, cataloguing, and patenting, copyrighting, or trademarking such assets as appropriate.

A regular review of competitor and market activity for potential infringement, as well as an ongoing understanding of how a company’s IP portfolio mirrors its business, provides the dynamic parameters to keep these assets safe. It is important to remember, however, that in today’s global world, securing a patent in one country does not guarantee similar protections in other jurisdictions. Keeping an overview on an essentially global market for talent and ideas is the third part of the process of securing IP.

Our Partners' Perspectives

What unique issues do companies face when it comes to protecting their IP related to biologics and biosimilars?

The enforcement of patent rights relating to biologics and biosimilars is governed by the Biologics Price Competition and Innovation Act (BPCIA), which sets forth a unique statutory framework compared to those applicable to other products like small-molecule drugs. As part of this framework, the involved parties attempt to negotiate the patents to be litigated through a process known as the “patent dance,” which introduces complex, strategic considerations not present in other areas of patent litigation. Numerous BPCIA provisions have already been hotly contested in litigation; for example, the Supreme Court will soon decide when the 180-day notice required before launching a biosimilar product can be provided to the patent owner.

Eric Dittmann

New York

What is the most critical recent development for companies to keep top of mind when navigating the complex cross-border dispute landscape?

Technology companies are facing increasing pressure to squeeze more profit from their existing business operations and assets. Many are re-assessing the value of their IP portfolios and exploring more ways to monetize them. There are many potential opportunities for tech companies to think innovatively and pursue growth through new revenue streams. However, it is critical that such companies take a proactive, comprehensive approach to such opportunities. Initiatives to design and implement strategies to mine and assess companies’ often massive and complex tech IP assets must be integrated with equally thorough and thoughtful efforts to draw effective blueprints for licensing and enforcement litigation campaigns.

Hiroyuki Hagiwara

Tokyo

How do you see the re-emergence of the U.S. International Trade Commission (ITC) as an important venue for patent litigation impacting how companies can best protect their IP?

Global capitalism is refashioning almost every aspect of domestic and international economic affairs. Companies compete on a global, not local, basis in the world marketplace. In 2016 we witnessed a rapid increase in patent litigation Section 337 filings at the ITC, as more companies saw value in seeking the faster remedy of shutting down importation, as opposed to long, drawn out, and unpredictable district court litigation. Intelligent companies suspecting infringement by a competitor manufacturing parts abroad must consider the ITC as a potential forum for protecting IP rights, as a speedy government inquiry conducted by seasoned administrative law judges offers many advantages—not the least of which is increased predictability—that cannot be provided by federal district court litigation.

Blair Jacobs

Washington, D.C.

What is the No. 1 thing that companies can do to effectively protect their IP portfolios, given the trend toward companies increasingly challenging patents before the Patent Trial and Appeal Board?

IP is now acknowledged as a company’s most valuable resource, and must be treated with as much attention to its security as the firm’s bank balances and other high-profile assets. Companies need to develop and maintain their patent portfolios keeping in mind the ever-present threat of the inter partes review (IPR) and post-grant review (PGR) proceedings that are now available to competitors and patent trolls. For example, for the most important patents/applications, companies should ensure that they have multiple patents with varying claim scope. These techniques are among the tools companies can use to build a strong fence around their IP rights.

Naveen Modi

Washington, D.C.

Highlights of Our Client Successes

OpinionLab wins technology patent infringement dispute

Our lawyers successfully defended OpinionLab Inc. in an appeal brought by Qualtrics LLC before the U.S. Court of Appeals for the Federal Circuit concerning a website analytics patent. Qualtrics appealed a 2015 Patent Trial and Appeal Board (PTAB) decision that rejected Qualtrics’ challenge to the validity of an OpinionLab patent for gathering feedback from website users. Qualtrics argued that the PTAB adopted a legally incorrect approach to analyzing asserted prior art references in upholding OpinionLab’s patent as not obvious in view of the prior art. The Federal Circuit rejected Qualtrics’ arguments and affirmed the PTAB’s ruling, finding no legal error in its analysis and accepting our arguments that the agency properly considered all relevant evidence. This victory for OpinionLab reflects our IP practice’s integrated strengths in successfully litigating cases at the district court, PTAB, and Federal Circuit.

Eli Lilly subsidiary’s vaccine portfolio acquisition

We represented Elanco U.S., Inc., a subsidiary of Eli Lilly and Company, in its acquisition of Boehringer Ingelheim Vetmedica’s U.S. feline, canine, and rabies vaccines portfolio, as well as a fully integrated manufacturing and R&D site, for US$885M. The acquisition also encompasses significant IP licenses and R&D and manufacturing agreements.

Breaking new ground in patent disputes

After guiding Acorda Therapeutics to a first-of-its-kind decision in 2015, convincing the Patent Trial and Appeal Board (PTAB) to deny several requests for inter partes review (IPR) by hedge fund manager Kyle Bass, we continue to lead our client to victory. Mr. Bass made IPR petitions against two patents for Acorda’s MS drug, Ampyra, while shorting the manufacturer’s stock, marking the first time a fund manager used the system in this manner. Through our team’s procedural argument, we were able to get the petition denied at the initial review stage, where no pharmaceutical company had ever defeated a challenge. We were recognized by the FT for our team’s creative approach to this groundbreaking dispute. Unrelenting, Mr. Bass subsequently filed four additional challenges against our client, which we defeated in March 2017. The PTAB board upheld the validity of four Acorda patents and ruled that Acorda’s claims to the aforementioned patents were patentable.

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