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Federal Circuit Signals Patentees Entitled to Jurisdictional Discovery Before Ruling on Motion to Dismiss

The Federal Circuit signals a new trend in allowing a patentee jurisdictional discovery prior to ruling on a foreign defendant’s motion to dismiss.

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Cozen O’Connor represents diverse clients, from global blue chips to family-owned enterprises, in complex patent matters, including federal district court litigation, global patent prosecution, Patent Trial and Appeal Board (PTAB), and International Trade Commission (ITC) litigation.

We do this because patentable IP drives the advancement of human knowledge. We also just really like working with smart and ambitious clients who’ve got IP worth patenting.

Our dedicated team includes IP litigators with decades of first-chair trial experience; licensed patent attorneys with advanced degrees in chemistry, biology, immunology, biophysics, and electrical and mechanical engineering; and former senior research scientists in the telecommunications, software, pharmaceutical, industrial products, and defense industries.

Litigation

Cozen O’Connor represents clients in jury and bench trials in jurisdictions across the country. In many cases, we achieve client goals though practical, business-minded settlements. But when litigation must be pursued, our track record is one of big-dollar plaintiff verdicts and summary judgement defense victories. We handle patent litigation in a wide range of industries:

• pharmaceuticals, nutraceuticals, life sciences, biomedical, and medical devices
• computer, internet, telephone, telecom, and wireless network
• banking and finance
• defense, chemical, industrial, automotive, energy, manufacturing, and aviation
• consumer products, food and beverage, sports, and entertainment

Post-Grant Review Proceedings

The PTAB has become a common venue for validity claims and an integral part of a broader litigation strategy. Cozen O’Connor routinely represents clients before the PTAB, either initiating or defending critical inter partes review (IPR), post-grant review, and covered business method review proceedings.

International Trade Commission (ITC)

Cozen O’Connor has attorneys who are admitted to lead infringement hearings before the ITC and adept at obtaining or defending exclusion orders on the importation of goods in this specialized venue.

Appeals

The firm’s patent litigators frequently argue matters before the Federal Circuit Court of Appeals and are often retained as appellate counsel in cases that peer firms lost at trial.

Procurement & Prosecution

Cozen O’Connor’s patent prosecutors obtain U.S. and foreign patent approval to help clients protect inventions and monetize their IP. Our attorneys characterize advancements, structure patent applications, provide design-around advice, manage patent portfolios, and negotiate acquisition, transfer or licensing agreements. The team is adept at winning U.S. protection of foreign-originated work and foreign protection of U.S.-originated work.

Services

• Assert or defend patents with respect to infringement claims or other disputes
• Prosecute patent applications in the U.S. Patent and Trademark Office and foreign agencies
• Develop strategies to maximize patent protection
• Analyze patentability of inventions not yet protected
• Assist with searches of prior art and survey competitors’ patent activities
• Perform freedom-to-operate, clearance, validity, due diligence and infringement studies
• Represent clients in reissue, reexamination, inter partes, post-grant, and derivation proceedings
• Represent clients in federal litigation, arbitration and appeals
• Counsel clients about leveraging domestic and international patent rights
• Provide transactional advice on acquisitions, joint ventures, transfer, and licensing agreements
• Lead patent arbitration in the context of licensing disputes