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Intellectual Property

Overview

Intellectual property assets are often the cornerstone to a client’s success—and survival. Nutter’s ability to protect, enhance, leverage, or capitalize on those assets can help clients to change the world, especially in life sciences and technology. It is a big reason why we have a passion for doing what we do. Because of our passion for what we do and our commitment to providing value for the money invested in our services, we work to understand every client’s business and how our efforts as legal counselors and advocates can help that business.

We also deliver value by constantly refining our own processes and maximizing our efficiency, avoiding wasted steps and duplication of efforts. In addition, we staff our projects leanly, often using just one partner and one associate on a task. The partner-to-associate ratio at Nutter enables significant partner level attention on each project and superior associate training and satisfaction. Our firm has ranked highly in those categories in national surveys. We also have low associate turnover, so clients can feel confident that there won’t be a revolving door of lawyers assigned to their projects.

Our Team

Our attorneys and technical specialists are experienced in: 

  • Federal and state laws that protect intellectual property, such as the federal patent, trademark, and copyright statutes, and trade secret and unfair competition laws 
  • Administrative procedures that are unique to intellectual property assets, including patent interferences and trademark oppositions
  • Litigating patent, trademark, and copyright disputes, as well as unfair practices, employment and confidentiality agreements, including non-competition and non-disclosure covenants

Nutter’s Intellectual Property team has received numerous accolades, including has: 

  • Ranked in Best Lawyers in America 2018 for Litigation—Intellectual Property and Patent Law
  • Named as a “Go To” patent counsel in IP Law & Business
  • Named as a “Go To” patent counsel in Corporate Counsel

Who We Represent

  • Global corporations, mid-market and small companies, major universities and research institutions, inventors, investors, and entrepreneurs turn to Nutter’s team for a wide variety of IP matters. We are educated and experienced in a range of industries including: Biotech and pharmaceuticals 
  • Computer hardware and software
  • E-commerce
  • Energy (alternative and traditional)
  • Financial services, including banking, investment banking, and insurance
  • Manufacturing, wholesaling, and retailing
  • Medical devices
  • Optics and laser technology 
  • Specialty chemicals

What We Do

  • Intellectual property due diligence
  • IP litigation
  • International IP rights
  • Patent infringement actions
  • Patent portfolio development and counseling
  • Patent prosecution
  • Trademarks, copyrights and trade secrets
  • Technology licensing

We help clients to unlock the value of their IP, creating revenue streams from licensing and sales. Clients also look to us for assistance in developing IP triage strategies, which can determine which IP assets should be protected, renewed, or bolstered and the ones that should be licensed, sold, or abandoned for optimal return on investment. We also perform IP docketing and management services for clients, ensuring that they do not miss important filing or renewal dates, and we monitor filings with the U.S. Patent and Trademark Office (the “PTO”) for legally objectionable actions by competitors.

View Practice Team

Representative Matters

Representative Matters

  • OSRAM

    Nutter represented OSRAM, one of the world’s leading lighting manufacturers with headquarters in Munich, Germany, in its acquisition of Digital Lumens Inc., a Boston-based company that specializes in industrial Internet of Things (IoT) solutions.

  • Obtained Summary Judgment of Invalidity for Life Science Company Accused of Patent Infringement

    Our client, a life sciences company, was accused by a competitor of patent infringement relating to an insertion method for a medical device. After briefing and a hearing, the Court disposed of the case on summary judgment, finding the patent-in-suit obvious as a matter of law.

  • CIRCOR International, Inc.

    Nutter represented CIRCOR International, Inc. (NYSE: CIR), a leading provider of valves and other highly engineered products for markets including oil & gas, power generation and aerospace & defense, when CIRCOR announced that it has signed a definitive agreement to acquire Critical Flow Solutions (CFS) for $210 million. 

  • Strategic Counseling for Successful Exit

    Developed strategic patent portfolio for early stage emerging medical device company focused on minimally invasive wound closure. Defended company in due diligence evaluation by prospective investors. Asserted patents against large medical device company, resulting in successful exit for investors through sale of company assets to the competitor.

  • Negotiation of early settlement of patent infringement suit

    Negotiation of an early settlement of a patent infringement suit whereby client agreed to re-design its product. Case was dismissed with no payment of damages.

  • Patent Prosecution and Portfolio Development (medical)

    Provided strategic advice on the development and management of robust patent portfolios to help medical device companies present a significant entry barrier to competitors. These companies include DePuy Spine, Ethicon Endo-Surgery, and DePuy Mitek, all Johnson & Johnson companies.

  • Patent Prosecution and Portfolio Development (chemical)

    Successfully designed and prosecuted large patent portfolio directed to environmentally friendly pesticides.

  • IP Strategy

    Develop and implement strategic intellectual property strategy plan for emerging company in the field of tissue ablation.

  • Market Clearance

    Analyzed claims of third party patents, and provided strategic counseling and advice to major medical device companies in connection with planned commercial launches. Products include a broad range of surgical devices in various fields, including bariatrics, spinal surgery, soft tissue fixation, neurosurgery, nutritional products, contact lenses, and pharmaceuticals.

  • Litigation Support and Strategy

    Developed strategy and provided litigation support for a herbicide manufacturer that successfully enforced IP rights against two competitors, resulting in early favorable settlements.

  • IP Due Diligence

    Provided IP due diligence counseling for lead investor syndicate of institutional investors for $20+ million series B investment in a clinical diagnostic company.

  • IP Due Diligence

    Provided IP due diligence counseling for lead investor syndicate of investors for > $25+ million series C investment in a neuro stimulation company.

  • Strategic IP Counseling

    Devised a strategy, and provided strategic counseling and support of successful oppositions of competitor patent applications in Australia and Europe.

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