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Intellectual Property

Overview

Intellectual property assets are often the cornerstone to a client’s success—and survival. The intellectual property lawyers at Nutter help clients protect, enhance, leverage, or capitalize on those assets 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 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:

  • Biotechnology 
  • 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 
  • Pharmaceuticals, including small molecules and biologics
  • 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

  • Fisher International, Inc.

    Nutter served as sole legal advisor to Fisher International, Inc., a firm supporting the pulp and paper industry with business intelligence and strategy consulting services, in its acquisition by Battery Ventures, a global technology-focused investment firm.

  • Drafted amicus brief to Supreme Judicial Court on patent prosecution conflicts

    Nutter drafted an amicus brief to the Massachusetts SJC on behalf of a patent law association in a case involving subject matter conflict-of-interest issues in patent prosecution.

  • Obtained reversal of lost profits award for American Technical Ceramics

    Nutter represented defendant American Technical Ceramics, Inc. before the Court of Appeals for the Federal Circuit in an appeal from a 2016 jury trial. The Federal Circuit reversed the jury’s award of lost profits based on the availability of an acceptable non-infringing alternative.

  • Obtained summary judgment of invalidity for medical device company accused of patent infringement

    Nutter advised a life sciences company that was accused by a competitor of patent infringement relating to an insertion method for a hemodialysis catheter. 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.

  • Represented a medical device company in policing a series of trademarks

    Nutter represented a medical device company in policing a series of trademarks through several cease and desist letters and negotiations, bringing about very favorable results short of filing in court.

  • Represented Lallemand in competitor patent case

    Nutter defended Lallemand Specialties, Inc. and its affiliate in 2018 jury trial during which a competitor alleged Lallemand infringed a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

  • Secured favorable settlement for client in “bet the company” case

    Nutter represented a startup speech recognition technology company defending numerous simultaneous lawsuits in multiple jurisdictions in a momentous patent war with a much larger rival company. Through Nutter’s efforts, the client was able to achieve a global settlement on very favorable terms.

  • Globe Composite Solutions, LLC

    Nutter served as sole legal advisor to Globe Composite Solutions, LLC (Globe), a navy submarine supplier, in its acquisition by ESCO Technologies Inc. (NYSE: ESE), a global provider of highly engineered products and solutions to diverse and growing end-markets that include the aerospace, space, healthcare, wireless, consumer electronics, electric utility, and renewable energy industries. 

  • Shawmut Corporation

    Nutter represented Shawmut Corporation, a developer of high-performance composites, in its joint venture with the automotive headliner and specialty industrial fabrics business of Glen Raven Technical Fabrics LLC, a global provider of innovative technical fabric solutions.

  • 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.

  • CIRCOR International, Inc.

    Nutter represented CIRCOR International, Inc. (NYSE: CIR), a leading provider of valves and other highly engineered products for markets including oil and gas, power generation, and aerospace and defense, in its acquisition of Critical Flow Solutions (CFS) for $210 million.

  • Obtained permanent injunction on behalf of PrintGuard

    Nutter represented PrintGuard, Inc., a manufacturer of anti-marking products for printing presses, as the plaintiff in a patent infringement suit. The defendant ultimately agreed to end the case on terms that included the entry of a permanent injunction.

  • Reached global resolution of patent and trademark cases for consumer products client

    Nutter represented a company in several jurisdictions in related patent and trademark actions concerning the manufacture, sale, and marketing of feminine hygiene products. The client and its competitor resolved the cases globally on terms favorable to our client.

  • Secured settlement in patent case for patentee

    Nutter represented a plaintiff in a patent infringement suit related to an ingestible bait poison for molluscs, including snails and slugs, against manufacturer and seller of organic and biodegradable pesticides. The case was settled just as discovery was about to commence.

  • Defended client against claims of trademark infringement

    Nutter represented a client in the food and beverage industry in a trademark infringement case in federal district court. The case was settled before the filing of an answer on terms favorable to the client.

  • Settled IP misappropriation and trademark case for client

    Nutter represented the defendant in a case brought by a competitor involving rights to the name and use of a market index. The case was settled at mediation.

  • Strategic counseling for successful exit

    Nutter developed a strategic patent portfolio for an early stage emerging medical device company focused on minimally invasive wound closure. We defended the company in a due diligence evaluation by prospective investors and asserted patents against a large medical device company, resulting in a successful exit for investors through the sale of company assets to the competitor.

  • Negotiation of early settlement of a patent infringement suit

    Nutter negotiated an early settlement of a patent infringement suit whereby the client agreed to re-design its product. The case was dismissed with no payment of damages.

  • Patent prosecution and portfolio development (medical)

    Nutter 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

    Nutter analyzed the 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

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

  • IP due diligence

    Nutter provided IP due diligence counseling for the lead investor syndicate of institutional investors for over $20 million Series B investment in a clinical diagnostic company.

  • IP due diligence

    Nutter provided IP due diligence counseling for the lead investor syndicate of investors for over $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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