Patents

Recent News:

More Than 205 Cozen O’Connor Attorneys Named Best Lawyers and Ones to Watch By The Best Lawyers In America

Best Lawyers selected 210 Cozen O’Connor lawyers from 23 of the firm’s nationwide offices for inclusion in the 2022 edition of The Best Lawyers in America.

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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

 

Experience

Publications

Five Years after Form 18: Post-Iqbal–Twombly Rule 12(b)(6) and 12(c) Motions to Dismiss Patent Infringement Claims [IP Watchdog]

June 03, 2021

Eric Levi authored an article on district courts evaluating whether patent infringement complaints satisfy the plausibility standard under Fed. R. Civ. P. 8 and the Supreme Court’s Iqbal–Twombly standard.

Why and When Reexams Can Be a Better Option Than Inter Partes Reviews at the USPTO [IAM]

March 31, 2021

Jeffrey Townes and Hongling Zou co-authored an article about how there are indications that experienced patent litigants are taking a fresh look at the old post-grant friend ex parte reexamination, particularly when other challenges fail.

The PTAB Puts Hatch-Waxman Defendants on Notice: File IPRs Early or Risk Fintiv Discretionary Denial [IPWatchdog]

October 29, 2020

Blake Coblentz, Aaron Lukas, and Keri Schaubert wrote about the Patent Trial and Appeal Board (PTAB) denying the institution of Mylan Labs Ltd.’s petition for IPR of U.S. Patent No. 9,439,906 (“the ’906 patent”) in IPR2020-00440.

Section 112 Issues Concerning Disclosure and Claims for AI Technologies [Bloomberg Law]

October 02, 2020

Vadim Braginsky wrote a chapter for Bloomberg Law’s Corporate Practice Portfolio Series on Artificial Intelligence and Machine Learning discussing the many artificial Intelligence (AI) technologies that are algorithmic, and particularly amenable to being described by their functionality.

Patenting Eligibility Issues and Considerations for Artificial Intelligence Technologies [Bloomberg Law]

October 02, 2020

Vadim Braginsky wrote a chapter for Bloomberg Law’s Corporate Practice Portfolio Series on Artificial Intelligence and Machine Learning discussing the field of Artificial Intelligence (AI) is wide-ranging, encompassing a spectrum of technologies.

How PTAB Reviews Examiner Errors For IPR Institution [Law360]

July 23, 2020

Jeffrey Townes and Hongling Zou explore how the Patent Trial and Appeal Board reviews examiner errors, because although the board has recently denied inter partes review based on issues presented during prosecution, petitioners have little guidance on when examiner error merits IPR institution.

Exercising discretion [Intellectual Property Magazine]

July 09, 2020

Keri Schaubert and Aaron Lukas consider a precedential PTAB order outlining six factors in exercising discretion to deny institution of IPR proceedings.

PTAB Settlement Disclosure Timing Crucial After DTN Ruling [Law 360]

July 07, 2020

Aaron Lukas and Keri Schaubert wrote an article on the Patent Trial and Appeal Board decision in DTN LLC v. Farms Technology LLC.

Controlled Substances, CBD and COVID-19 [Alert]

April 10, 2020

Ashley Kessler and Jon Gale discuss recent developments on the state and federal levels that impact the cannabis industry.

Breathing New Life Into The “Tangential” Exception to Prosecution History Estoppel [Alert]

August 26, 2019

Martin B. Pavane and Darren S. Mogil discuss the importance of carefully analyzing the prosecutorial history of a patent to determine the reason for the narrowing amendment. If the reason was only tangential to the equivalent at issue, estoppel will not apply.

The Tangential Exception to the Presumption of Prosecution History Estoppel [Alert]

August 19, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's split decision in Ajinomoto Co., Inc. v. ITC.

Why CBD-infused food and beverages could be ripe for a labelling class action [World Trademark Review]

June 13, 2019

Edward Weisz wrote about the legal landscape for food and beverage manufacturers looking to enter the hemp-based cannabidiol (CBD) market.

Medical Diagnostic Patent Ineligible Under Section 101 [Alert]

April 09, 2019

Marilyn Neiman and Martin B. Pavane discuss problems with Section 101 and a possible legislative solution expected by early summer.

Experimental-Use Exception [Alert]

April 02, 2019

Marilyn Neiman and Martin B. Pavane discuss the decision in Barry v. Medtronic, Inc.

Guidance on Enforcing and Defending Intellectual Property Rights on Amazon [New York Law Journal]

March 22, 2019

Edward Weisz and Alanna Miller wrote about Amazon's process for managing infringement and counterfeit allegations.

Inconsistency Between the Patent Term Adjustment Statute and Its Regulations [Alert]

January 30, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's decision in Supernus Pharmaceuticals, Inc. v. Iancu.

USPTO Issues Revised Guidances Concerning 35 U.S.C. §§ 101 and 112 [Alert]

January 28, 2019

Tom Pontani, Ed Weisz, and Darren Mogil review the USPTO's new guidance for patent-eligible subject matter and claims using functional language to claim computer-implemented inventions.

Confidential Sales of an Invention Do Not Avoid the “On Sale” Bar Under the America Invents Act [Alert]

January 23, 2019

Martin B. Pavane and Darren S. Mogil discuss the U.S. Supreme Court decision in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.

PTAB Not Bound by Federal Circuit’s Findings on Appeal From Preliminary Injunction [Alert]

January 10, 2019

Marilyn Neiman and Martin B. Pavane discuss PTAB's denial of Aurobindo’s challenge of the validity U.S. Patent No. 6,866,866. Over six years ago, the Federal Circuit found that a substantial question of invalidity had been raised.

When is a Disclosure Not a Disclosure? [Alert]

November 01, 2018

Martin B. Pavane and Darren S. Mogil discuss the Federal Circuit's decision in FWP IP APS v. Biogen MA, Inc., an appeal from a Patent Trial and Appeal Board decision in an interference between FWP and Biogen.

The Use of IPR Institution Denial Decisions in Litigation [Intellectual Property Alert]

October 24, 2017

Darren Mogil and Marty Pavane discuss the important issue that arises at trial when the PTAB denies institution of an IPR.

Evidence Postdating a Patent’s Priority Date May Be Relevant to Written Description and Enablement [Intellectual Property Alert]

October 19, 2017

Martin Pavane and Darren Mogil discuss the Federal Circuit's decision in Amgen Inc. v. Sanofi.

The Trans-Pacific Partnership and Its Effect On Biosimilars [Inside Counsel]

November 23, 2015

Aaron Lukas and Keri Schaubert, associates of Cozen O’Connor’s IP group, discuss the effect that the Trans-Pacific Partnership will have on the biopharmaceutical and biosimilar industry.

Will the Inventor of the Handheld Cash Register Ever Cash-In? [Inventors Digest]

December 15, 2014

Aaron Lukas, an associate in Cozen O'Connor's Intellectual Property Department, authored an article for Inventors Digest titled ‘Will the Inventor of the Handheld Cash Register Ever Cash-In?’ The article addresses recent rulings in cases involving CardSoft and Teva and changes to how patent validity is decided in patent litigation cases.

Supreme Court: Reverse Payment Settlements Subject to Antitrust Scrutiny [Intellectual Property Alert]

June 25, 2013

On June 17, 2013, the U.S. Supreme Court handed down a decision that addressed a “reverse payment” settlement agreement between a brand-name pharmaceutical company and multiple generic drug companies. The Supreme Court held that a settlement agreement in which a patentee pays an accused infringer not to enter the market – even if the agreement allows market entry before the patent term expires – is not presumptively lawful and is still subject to antitrust scrutiny.

Patent Law and Uneasy Compromises at the U.S. Supreme Court [The Legal Intelligencer]

May 09, 2013

At oral argument in Association for Molecular Pathology v. Myriad Genetics, the U.S. Supreme Court recently grappled with the question of whether human genes are patentable. Justice Stephen Breyer seemed to capture the justices' sentiment in the lively argument session: "The patent law is filled with uneasy compromises." The compromises that the justices choose will affect the future work of the U.S. Patent and Trademark Office (PTO) and shape the path of genetic research in the future.

IP: Obamacare’s Constitutional Impact on Patents [InsideCounsel]

April 30, 2013

A variety of patent issues arise from the act’s Biologics Price Competition and Innovation Act.

IP: Compound Patents Take a Hit in Delaware District Court [Inside Counsel]

March 19, 2013

A recent decision from the Delaware District Court held that the composition of matter patent for the drug Baraclude was invalid as obvious. This opinion has drawn immediate attention because it is the first time that a lead compound obviousness challenge has succeeded in a district court since KSR v. Teleflex issued. What this means for inside counsel depends on which side of the aisle you are on, but regardless this decision may provide the beachhead for obviousness attacks where none existed before.

IP: 5 practice tips from the recent Rambus rulings [Inside Counsel]

February 19, 2013

Four recent decisions shine some light on document retention policies. Case law has not been particularly precise as to when inside counsel should advise clients to begin the tedious—and costly—task of preserving documents for patent litigation. However, the twin 2011 rulings by the Federal Circuit (Micron II and Hynix II) followed by their respective 2013 remand decisions provide a solid primer. Together, these four decisions highlight a proper path for document preservation and the fatal consequences of failing to comply.Inside counsel should take note because document retention (and its converse cousin, spoliation) can negatively impact the enforceability of a company’s intellectual property while establishing a core defense for the accused infringers. This article examines the recent Rambus rulings, particularly the sanctions meted out for document retention violations and spoliation.

Events & Seminars

Upcoming Events

Cannabis Patent Litigation Updates: Recent Developments You Need to Know

November 10, 2021 - Webinar

Jim Gale will be presenting a webinar on the challenges facing cannabis patents.

Past Events

How Can I Protect My Ideas?

March 15, 2019 - Philadelphia, PA

Patent & Trade Secret Bootcamp

March 01, 2019 - Coral Gables, FL

6th Annual Summit on Biosimilars

June 01, 2015 - New York, NY

9th Annual Paragraph IV Disputes Conference

April 27, 2015 - New York, NY

In The News

More Than 205 Cozen O’Connor Attorneys Named Best Lawyers and Ones to Watch By The Best Lawyers In America

August 19, 2021

Best Lawyers selected 210 Cozen O’Connor lawyers from 23 of the firm’s nationwide offices for inclusion in the 2022 edition of The Best Lawyers in America.

Cozen O’Connor Recognized as a “Best Law Firm” in 25 Practice Areas Nationwide, 115 Practice Areas Regionally

November 05, 2020

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 25 practice areas nationwide and 115 practice areas regionally.

Cozen O’Connor Bolsters Washington, D.C., Intellectual Property Practice with the Addition of Jeffrey T. Gendzwill and Keith D. Fredlake

October 26, 2020

Both Gendzwill and Fredlake join from Kilpatrick Townsend and will become members of the firm’s growing Intellectual Property practice that comprises nearly 50 attorneys representing national and international corporate clients from startups to multinational companies.

Virus Delays, Few Approvals Dry Up Generic Drug Lawsuits in 2020

September 09, 2020

Keri Schaubert was quoted in Bloomberg Law discussing drug patent lawsuits that took a 21% dive from this time last year, a “perfect storm” that traces back to 2016 when the FDA only approved a handful of new drugs.

Rush for Generic Go-Ahead on Novel Drugs Roils Pharma Industry

June 19, 2020

Blake Coblentz was quoted in Bloomberg Law discussing how generic drugmakers are increasingly lining up to bring competing versions of brand-name products to the market at the earliest possible date.

Four Cozen O'Connor Attorneys Named IP Stars by Managing Intellectual Property

May 14, 2020

Four members of Cozen O'Connor’s Intellectual Property Group, Frank Abramonte, Thomas Fisher, James Gale, and Hugh Marbury, have all been named IP Stars by Managing Intellectual Property.

Cozen O’Connor Recognized As a Best Law Firm in 24 Practice Areas Nationwide, 106 Practice Areas Regionally

November 05, 2019

The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations and peer review from leading attorneys in their field.

Four Cozen O'Connor Attorneys Named Managing Intellectual Property IP Stars

October 15, 2019

Four members of Cozen O'Connor’s Intellectual Property Group, Frank Abramonte, Thomas Fisher, James Gale, and Hugh Marbury, have all been named IP Stars by Managing Intellectual Property.

Cozen O’Connor Patent Attorneys Represent, Pro Bono, Nonprofits Established by Parents of Children with Ultra-rare Genetic Disorder

October 14, 2019

Cozen O’Connor patent attorneys Jeff Townes and Hongling Zou represent, pro bono, three partner nonprofits established by parents of children with the ultrarare, and potentially fatal, alternating hemiplegia of childhood (AHC).

138 Cozen O’Connor Attorneys Named to the Best Lawyers in America

August 28, 2019

Best Lawyers selected 138 Cozen O’Connor lawyers from 21 of the firm’s national offices for inclusion in the 2020 edition of The Best Lawyers in America.

Outside Counsel: Federal Trademarks Still Difficult to Obtain for Cannabis Companies

February 08, 2019

Edward Weisz discussed with Corporate Counsel how different strains of cannabis can be registered with the U.S. Patent and Trademark Office under the federal patent law which allows for patents to be places on plants.

Cozen O’Connor’s Western Expansion Continues as the Firm Adds Two Attorneys From Seed IP Law Group to its Seattle Office

August 21, 2018

In a move that significantly enhances its Seattle office and expands its IP practice on the west coast, Cozen O’Connor today announced two attorneys from Seed IP Law Group LLP, Frank Abramonte & Lorraine Linford, have joined its fast-growing global IP Practice.

100 Cozen O’Connor Lawyers Named to the Best Lawyers in America

August 23, 2017

Lawyers were selected for inclusion in the 2018 edition based on a rigorous peer-review that has been developed and defined for more than 30 years.

Contacts

Frank Abramonte

Co-Chair, Patent Prosecution Practice

fabramonte@cozen.com

(206) 373-7270

Thomas Langer

Co-Chair, Patent Prosecution Practice

tlanger@cozen.com

(212) 297-2662

Edward M. Weisz

Co-Chair, Patent Prosecution Practice

eweisz@cozen.com

(212) 297-2660

People

Awards

Cozen O’Connor Recognized as a “Best Law Firm” in 25 Practice Areas Nationwide, 115 Practice Areas Regionally

November 05, 2020

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 25 practice areas nationwide and 115 practice areas regionally.

Related Practice Areas

Upcoming Event:

Cannabis Patent Litigation Updates: Recent Developments You Need to Know

Webinar 11/10/2021

Jim Gale will be presenting a webinar on the challenges facing cannabis patents.

Event Details

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