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Nutter patent attorneys understand the needs and challenges associated with high‐volume patent work. We’ve done extensive patent counseling for clients ranging from large corporations and major research universities to middle-market and emerging growth technology companies, as well as entrepreneurs and inventors. We anticipate and address the challenges our clients face through consistent responsiveness, a personalized approach, and a high caliber of work. What’s more, our proactive approach to prosecution interviews examiners on almost every application, resulting in compact and efficient prosecution that both saves money and improves results. 

Our Practice

The expertise we provide to enforce and protect our clients’ patent rights includes:

  • Developing strategies to identify, establish, protect, preserve, and enforce those patent rights
  • Preparing and prosecuting U.S. and foreign patent applications
  • Issuing freedom to operate opinions pertinent to specific products, devices, or inventions
  • Exploiting patents through licensing, cooperative research and development, or other arrangements
  • Enforcing patents against infringers and defending against assertions of infringement
  • Identifying and managing the tax consequences of patent activities
  • Advising and representing clients regarding infringement actions and other forms of litigation before federal courts and administrative agencies, including the U.S. International Trade Commission and the PTO

The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs, and inventors. We regularly advise and counsel clients regarding both domestic and international intellectual property issues that are critical to their businesses. Our attorneys are particularly active in advising clients with respect to strategies for protecting and exploiting intellectual property rights. This may involve helping clients devise and execute strategies for developing and protecting intellectual property portfolios (including patents, trademarks, copyrights, and trade secrets), licensing intellectual properties, and partnering with third parties.

At times, our assistance takes the form of evaluating third-party patents and counseling clients prior to developing and launching new products. During the critical period of development, and before product launch, it is important that clients are aware of competitors’ patents and that they obtain sophisticated legal advice about how to mitigate the risk of future patent infringement.

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Representative Matters

Representative Matters

  • Intergraph Corporation

    Nutter achieved a significant win for its client Intergraph Corporation. Intergraph invented a distinct graphic for the on-screen display of its software product and engaged Tom Tuytschaevers to obtain a “design” patent for the graphic. A design patent is a patent that grants ownership to the ornamental design of a product. The Examiner at the U.S. Patent and Trademark Office (“U.S.P.T.O.”) rejected Intergraph’s application based on the Examiner’s erroneous interpretation of the statute and a U.S.P.T.O. precedential decision. Tom persevered through a multi-year battle with the U.S.P.T.O., including a successful appeal to the U.S.P.T.O.’s Patent Trial and Appeal Board (“Board”). Tom researched the evolution of the U.S.P.T.O.’s standards for design patents, briefed the appeal, and represented Intergraph at oral arguments before the Board, ultimately convincing them to rule in Intergraph’s favor. The Board’s decision clarifies the U.S.P.T.O.’s design patent standards and holds the potential to change the way the U.S.P.T.O. examines design patent applications for computer displays.

  • 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 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 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.

  • 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.

  • 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.

  • Biofuels in patent litigation

    Nutter defended a producer of genetically modified organisms used in ethanol production in a jury trial during which a competitor alleged infringement of 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.

  • GPS-Based Pet Containment and Tracking Collar Company

    Nutter represented a company that designs and sells a GPS-based pet containment and tracking collar in asserting multiple patents against a competitor (who brought counterclaims relating to, among other things, alleged false marketing statements). Litigation spanned district court and PTAB (IPR proceedings). Nutter obtained a favorable claim construction ruling and numerous discovery-related rulings. Nutter’s IP Litigation team completed fact and expert discovery and obtained key concessions from witnesses. Within a few months of trial, the court granted our motion to expand infringement allegations to allow the assertion of infringement under the doctrine of equivalents. Shortly thereafter, the case settled favorably.

  • Smart notebook company in patent litigation

    Nutter represented a company that designed and sells reusable smart notebooks in patent litigation against Chinese companies attempting to enter the U.S. market with infringing products by filing a declaratory judgment action of non-infringement. The firm constructed a strong infringement argument and convinced declaratory judgment plaintiffs to dismiss the case before the client had to file an answer or spend significant money. 

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