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Knobbe Martens Attorneys Ranked in 2016 Chambers USA Guide

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Knobbe Martens Olson & Bear, LLP is pleased to announce it has been highly rated in the annual firm rankings released last week by Chambers USA, which has been ranking America’s leading law firms and attorneys since 1990. The firm has once again received excellent regional rankings for intellectual property in the categories of Patent Prosecution and Life Sciences. Chambers USA noted that during the selection process, one client remarked: "The quality of their work is excellent. All they do is IP, so everyone there is highly qualified. They have high-quality attorneys who are very bright and decisive in their advice."

In addition, the 2016 Chambers USA regional rankings include three partners based in Knobbe Martens’ Irvine office: Gerard von Hoffmann, Salima Merani, Ph.D., and Joseph Re, who had previously been ranked by Chambers. Joseph Re was ranked in the Intellectual Property: Patent category and Gerard von Hoffmann and Salima Merani were both ranked in the Life Sciences: IP/Patent Litigation category.

Chambers USA covers  45 different practice areas on a national and regional level. Rankings at state-level are based upon the location in which a firm or lawyer practices regardless of the location of its clients, deals and cases. The publication also focuses on law firms that have a national presence and are also ranked in Chambers’ Nationwide tables. The ranking of lawyers and law firms is conducted by a team of more than 140 researchers located in the UK and depends on several factors and considerations including interviews with clients, peers and assessing the recent work done individually and as a department as a whole.

To view further details on Knobbe Martens’ firm and individual rankings, please visit the Chambers & Partners website here.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Thursday, June 2, 2016

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23 Knobbe Martens Attorneys Named Among “World’s Leading Patent Professionals” by IAM

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Knobbe Martens Olson & Bear, LLP and 23 of its partners have been acknowledged for their expertise in this year’s edition of the IAM 1000 – The World’s Leading Patent Practitioners 2016. The partners include: Adeel Akhtar, Maria Anderson, Brent Babcock, Mark Benedict, John Carson, Jon Gurka, Daniel Hart, Ned Israelsen, John King, Irfan Lateef, Eli Loots, Joseph Mallon, Salima Merani, Ph.D., Kimberly Miller, Joseph Re, Joseph Reisman, Arthur Rose, Ron Schoenbaum, Melanie Seelig, John Sganga, Mauricio Uribe, Karen Vogel Weil, and Bill Zimmerman.

The IAM Patent 1000 guide, from the publishers of Intellectual Asset Management (IAM) magazine, identifies the top patent firms and practitioners, including litigators, licensing advisors, and patent prosecutors in 41 jurisdictions around the globe. Interviewees describe Knobbe Martens as one of the “biggest and best IP boutiques” in the United States, with the largest number of individuals ranked in the IAM Patent 1000 California chapter. Covering all conceivable technical disciplines in prosecution practice, Knobbe Martens “is rated top in the state.”

Knobbe Martens was “recommended” for patent prosecution work nationally. It was once again the only firm to receive a “highly recommended” rating for patent prosecution work in California and Washington. The firm was “recommended” in California for transactions and received a silver band for litigation. In Washington State, the firm was also “recommended” for transactions and also received a silver band for litigation.

IAM was full of praise for Knobbe Martens attorneys in the areas of patent prosecution and transactions:

Adeel Akhtar was extolled as “extremely smart, efficient and careful, and demonstrates perfect judgement in everything he does.” Maria Anderson was described as a “whiz at internet and software matters. Her work is extremely thorough, but she is quick and timely, too.” Mark Benedict was said to have “commercial flair for portfolio development, working up a tantalizing suite of patents for practicing physician Dr. Bruce May.”

John Carson was praised for his diverse and “fantastic client base’ in the European and Asian markets” representing healthcare, software, telecommunications, flat panel display, and battery companies. “Carson knows all the latest case law and how it affects patent practice. His clients are treated to up-to-the-minute advice.” Daniel Hart was described as “deeply embedded in the local biotech and pharma scene”. Ned Israelsen was commended for his “many years of experience.” He is “quick and smart [and] he leads by example, producing five-star work for both start-ups and established enterprises.”

John King was said to be “up to the task across a similar spread of IP disciplines” and have a “deft touch nurturing early-stage companies.” Eli Loots was praised as being able to “traverse the contentious/non-contentious divide with finesse” and as a “go-to guide for biotechnologists seeking tactical inter partes review advice.” Joseph Mallon was commended for his teamwork with Miller in giving ‘indispensable advice’ and “deftly handling patent procurement for Alios BioPharma.”

Salima Merani was extolled as “never making a mistake – she truly is at the top of her game. She is a great strategic advisor with a proven track record of success and innovation. She always makes time for her clients and is incredibly diligent.” Kimberly Miller was noted for her teamwork with Mallon in giving “indispensable advice,” which enabled Alios BioPharma to advance drug candidates for the treatment of viral diseases. Arthur Rose was praised for his negotiation skills and for being “one of the top licensing specialists in the line-up.”

Ron Schoenbaum was recognized as a “versatile performer with enviable procurement, infringement and licensing know-how” in the information and medical technology fields. Melanie Seelig was hailed as “an outstanding project manager” covering “virtually any area of technology with dazzling technical dexterity.” Mauricio Uribe was commended for “excelling at prosecuting applications in the electrical engineering and software spaces, [and going] beyond the drafting and filing brief to proactively develop portfolios and provide strategic direction to patrons.”

Knobbe Martens litigators were also highly praised:

Brent Babcock was recognized as “one of the few interference experts and a captain of the post-grant ship, having participated in more than 60 inter partes and covered business method reviews.” It was noted that Jon Gurka“shouldered significant loads on the recent $466 million jury trial victory for Masimo against Philips in 2014.” Irfan Lateef, who was recognized for litigation, was described as “steeped in prosecution, so he never fails to play a strong technical game.”

Joseph Re, lead trial counsel in client Masimo’s $466 million jury verdict in 2014, was called out as “the set’s best-known litigator.” Joseph Reisman was commended for his prosecution and litigation “aplomb,” which helped him “secure comprehensive, long-term protection for clients’ intangible assets.” John Sganga was described as having a “meticulous eye for detail” in a recent competitor-on-competitor suit. Karen Vogel Weil was praised for her “expertise on the hot-button subject of patent damages.” William Zimmerman, Managing Partner of the firm’s Washington, D.C. office, was described as “simply one of the top patent litigators in the U.S. Everything he does is in the best interests of his clients.”

The IAM Patent 1000 rankings are based on five months of research and more than 1,500 telephone interviews with attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field. The IAM Patent 1000 identifies the leading law firms in the market based on the depth of expertise, market presence and the level of work on which they are typically engaged. For additional information and to view the full guide, visit IAM magazine at www.iam-media.com.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Tuesday, June 7, 2016

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Intellectual Property Law: What Nutraceutical Companies Should Know | Nutraceuticals World

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Partner Rose Thiessen, Ph.D. and attorney Samantha Markley published an article titled "Intellectual Property Law: What Nutraceutical Companies Should Know" in Nutraceuticals World on June 13, 2016. 

In an industry overflowing with new products, new formulations and new ideas, understanding the basics of intellectual property law as it relates to nutraceuticals is essential to business success.

Many products in the nutraceuticals industry fall within two categories: known or natural components for new use; and combinations of known or natural components offering enhanced performance compared to that of the individual components. Your intellectual property related to new products can be protected in different ways to offer a competitive advantage. Typically, trademarks and trade secrets are relied upon for protection; however, in certain circumstances patents may provide the optimal protection for your new product.

Read the full article on the Nutraceuticals World website >>

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Monday, June 13, 2016

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IP Law: What Nutraceutical Companies Should Know

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Three Knobbe Martens Partners Recognized in Lawyer Monthly’s “2016 Women in Law Awards”

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Lawyer Monthly Magazine, a global news website and legal publication, has recognized three Knobbe Martens attorneys in its “2016 Women in Law Awards.” These awards highlight the achievements of outstanding women in the legal profession around the world. Orange County office partner Salima Merani, Ph.D., Seattle office partner Maria Anderson, and Los Angeles office partner Karen Vogel Weil, received the award and was featured in a special May edition of the magazine.

Salima Merani, Ph.D. has over fifteen years of experience building patent portfolios for life sciences companies, including several medtech and biotech companies.  As lead intellectual property counsel for several medical device startups, Dr. Merani has conducted patent due diligence for many venture capital and investment firms.  Additionally, she has wide-ranging experience in U.S. and international patent and trademark portfolio management, licensing, strategic offensive positioning, infringement analysis, IPOs, acquisitions, and managing global patent risk.  Dr. Merani’s focus in medical devices includes strategic guidance in the fields of aesthetics, orthopedics, cardiovascular and neuroscience, including medical implants, denervation and tissue ablation, regenerative technology, antibody technology, hypertension, diabetes, and dermatological conditions. Furthermore, her technical work outside the medical arena includes a deep knowledge in the fields of cosmetic formulations and nutraceuticals.

Maria Anderson’s practice focuses on providing comprehensive, strategic client counseling in all aspects of intellectual property.  For over two decades, she has been active in the prosecution of patent applications in the computer science and e-commerce fields.  In addition to her focus in patent and trademark portfolios and developing patent and trademark assets, Ms. Anderson also has extensive experience in providing patent and trademark clearance analysis and advice for a wide variety of products and services. Throughout her career, she has counseled clients on patentability and infringement matters and developed comprehensive intellectual property programs for pre-litigation and enforcement purposes.

Karen Vogel Weil’s practice focuses on all aspects of intellectual property litigation, including representing plaintiffs and defendants in patent, trademark, copyright and trade secret disputes.  She has both trial and appellate experience.  Ms. Weil is also experienced in the area of patent damages and is called on to spearhead the damages portion of most of the firm’s large litigations.  Most noteworthy is Ms. Weil’s leadership and prominent role in Masimo Corp. v. Philips Electronics North America Corp., which resulted in a jury verdict of $466 million dollars.

In selecting award winners, Lawyer Monthly’s research department took into consideration personal achievement, votes from Lawyer Monthly’s 180,000+ readers, the level of documented activity in 2015 when compared to industry peers, previous legal industry honors, involvement in significant legal cases and legal activity, and dollar value of involvement within transactions, deals and cases. 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Thursday, May 5, 2016

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Eleven Knobbe Martens Attorneys Named 2016 Southern California “Rising Stars”

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Knobbe Martens Olson & Bear LLP, one of the leading intellectual property law firms in the United States, is pleased to announce that eleven attorneys have been selected for inclusion in the 2016 Southern California "Rising Stars" list by Super Lawyers magazine.

Michelle Armond, Jared Bunker, Cheryl Burgess, Brian Claassen, Samantha Hsu, Baraa Kahf,Lauren Keller Katzenellenbogen, Gregory Phillips, Ali Razai, Christopher Ross, and Bryan Wahl were recognized for their work in intellectual property law and/or intellectual property litigation.

Super Lawyers honors outstanding lawyers who have attained a high degree of peer recognition and professional achievement. The “Southern California Rising Stars” list includes the top 2.5 percent of attorneys in Southern California who are age 40 or younger and/or have been in practice for less than ten years. They are nominated by lawyers who have personally observed them in action through co-counsel, opposing counsel or courtroom observation. For additional information on Super Lawyers, visit www.superlawyers.com.

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Monday, June 13, 2016

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Attorneys Named 2016 Southern California "Rising Stars"

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Knobbe Martens Ranks Among the Top 20 Firms in the World for Intellectual Property Law

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Knobbe Martens Olson & Bear LLP has been recognized as one of the top 20 law firms globally for intellectual property in the 2016 “Who’s Who Legal 100.” To compile the list, intended to identify “the law firms of the leading lawyers,” Who’s Who Legal considered firms’ expertise across a broad range of intellectual property matters, from brand management and transactional IP, to high-profile litigation. The publication conducted independent research encompassing surveys and interviews with lawyers and their clients in more than 140 jurisdictions.

Three Knobbe Martens partners were singled out for individual recognition, including Susan Natland, Lynda Zadra-Symes and Jonathan Hyman. As the “Who’s Who Legal 100” announcement stated:

Susan Natland is a “world-class” practitioner, focusing in domestic and international brand protection, as well as unfair competition, copyright, and data privacy and security matters. Her clients “love her swift turn-around and practical approach.”

Lynda Zadra-Symes recently represented Monster Energy Co. in a trademark and copyright infringement lawsuit. She was described as “outstanding” by her peers.

Jonathan Hyman, known for being “very dedicated to his clients and commercially astute”, is also highly ranked among the country’s leading trademark lawyers for strategy and enforcement.

Ms. Natland, Ms. Zadra-Symes and Mr. Hyman were also recognized in “Who’s Who Legal: Trademarks 2016.”

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Tuesday, June 21, 2016

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Ranked Among Top 20 Firms in the World for IP Law

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Intro to IP: Basics of Patents, Trademarks and Trade Secrets

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Description 

What is intellectual property (IP)? Why should your business care about IP? What are the basic legal requirements for the main types of IP? 

These and other introductory IP issues will be explored in a presentation and Q&A by attorneys from the preeminent IP law firm, Knobbe Martens.

Join us at Knobbe Martens' San Diego office for this after-work session, which includes 1 hour of California MCLE credit. The seminar is relevant to any business with a brand, technology or know-how that provides a competitive edge in the marketplace. 

In this seminar, Knobbe Martens attorneys Boris Zelkind and Tom Cowan will discuss the legal basics of patents, trademarks and trade secrets, how IP can enhance your competitive edge, and some recent important trends in these areas of the law. Q&A to follow after a brief presentation. 

Register here >>

Agenda

5:00 p.m. - 6:00 p.m. - Registration/Cocktail Hour

6:00 p.m. – 7:00 p.m. - Seminar and Q&A

Who Should Attend

  • Startup Company Owners
  • Local Business
  • Executives Entrepreneurs
  • In-House Counsel

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Complimentary

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Location 

Knobbe Martens - San Diego
12790 El Camino Real
San Diego, CA 92130
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07/28/2016 - 5:00pm

CLE Credit 

CLE credit available for attorneys

Knobbe Martens Named “Best USA IP Law Firm” at 2016 International Legal Alliance Summit & Awards

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Knobbe Martens Olson & Bear LLP, one of the leading intellectual property law firms in the United States, was recently recognized at the 2016 International Legal Alliance Summit & Awards (ILASA) as the “Best USA IP Law Firm,” receiving the Gold Award for the firm’s excellence in Patent Prosecution Law.

The ILASA awards, produced by the Paris-based independent information provider Leaders League, recognize the most distinguished legal departments, IP departments, law firms, and IP firms in North America, Latin America, Europe and Asia, for their accomplishments over the past year. Winners are selected by specialized jury panels, made up of more than 100 General Counsel from Fortune 500 companies, including Boeing, H&M and Pepsico, among others. For more information about this year’s ILASA Summit and Awards please click here

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Wednesday, June 22, 2016

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Nicholas Gaffney 415-732-7801

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Federal Circuit Review | June 2016

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The PTAB Does Not Have to Consider New Arguments Raised in IPR Reply Briefs

 

In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal No. 2015-1693, the Federal Circuit upheld a PTAB decision finding of non-obviousness in an IPR for lack of motivation to combine references.

IBS petitioned for inter partes review of Illumina’s patent directed to a method of labeling nucleotides in DNA.  The PTAB instituted review on obviousness grounds and ultimately found that IBS failed to prove the claims were obvious because it did not establish a motivation to combine references with a reasonable expectation of success of developing the claimed invention.   In reaching its decision, the PTAB refused to consider IBS’s reply brief and accompanying expert declaration, determining that IBS ran afoul of 37 C.F.R. § 42.23(b) and § 42.6(a)(3) by presenting a new argument in its reply brief. 

The Federal Circuit affirmed the PTAB’s finding of non-obviousness, ruling that although the PTAB improperly conflated the separate concepts of motivation to combine and reasonable expectation of success, it nevertheless made sufficient factual findings to support a judgment that there was no motivation to combine the references.  Further, the Federal Circuit found that the PTAB did not err in refusing the reply brief as improper under § 42.23(b).  Because the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute, IBS could not rely on an entirely new rationale to explain motivation to combine in its reply brief.

 


 

Federal Circuit Finds Software Patent Claims are Patent-Eligible Under § 101

 

In Enfish, LLC v. Microsoft Corp., Appeal No. 2015-1244, the Federal Circuit held that claims directed to computer-database software technology were patent-eligible under § 101.

Enfish brought suit against Microsoft claiming that Microsoft’s ADO.NET product infringed patents directed to a logical model for storing data in a computer database.  The district court granted Microsoft’s motion for summary judgment and found all asserted claims invalid under § 101.  Enfish appealed.

In the first step of its § 101 analysis under Alice, the Federal Circuit found that the claims at issue were not directed to an abstract idea because the claims were “directed to a specific improvement to the way computers operate.” The court stated that where the focus of the claims is on a “specific asserted improvement in computer capabilities” rather than on “a process that qualifies as an ‘abstract idea,’” a claim can be found to not be directed to an abstract idea without proceeding to the second step of the Alice analysis.

 


 

Federal Circuit Upholds Dismissal for Lack of Standing when Plaintiff Lacked Substantial Rights in the Patents

 

In Diamond Coating Techs., LLC v. Federal-Mogul Corp., Appeal Nos. 2015-1844, -1861, the Federal Circuit affirmed the district court’s dismissal for lack of standing because Diamond failed to obtain all substantial rights in the patents-in-suit from the original patentee, Sanyo.

Diamond and Sanyo entered into a Patent Assignment and Transfer Agreement (“PATA”) to transfer certain rights to the patents at issue. Diamond then filed suit, alone, alleging infringement of two patents. The district court held that the PATA did not convey all substantial rights in the patents to Diamond and that Diamond therefore lacked standing.  Diamond appealed.

The Federal Circuit affirmed.  It explained that, under the agreement, Sanyo retained a license to make, use, and sell products covered by the patents and that “the PATA does not even grant Diamond a right to practice the patents-in-suit.”  The Court also noted that the PATA (1) conditioned Diamond’s litigation and enforcement activities on Sanyo’s best interests, (2) limited Diamond’s authority to license the patents-in-suit, and (3) limited Diamond’s discretion to refrain from suing certain companies. The Court therefore held that Diamond did not receive “substantial rights” in the patents-in-suit.

Diamond and Sanyo also executed nunc pro tunc (“having retroactive legal effect”) agreements after the district court’s decision in an attempt to cure Diamond’s standing problem.  Diamond relied on these agreements on appeal, but the Federal Circuit held that such agreements cannot repair standing retroactively.

 


 

Federal Circuit Confirms that, Under PTAB Procedure, Patent Holders in IPR Proceedings Have the Burden of Demonstrating that Amended Claims are Patentable Over the Prior Art

 

In In re Aqua Products, Inc., Appeal No. 2015-1177, the Federal Circuit affirmed the PTAB’s denial of a motion to amend claims in an IPR proceeding because the patent owner did not demonstrate that the amended claims would be patentable over the art of record.

After an IPR was instituted, patentee Aqua filed a motion to amend its claims.  In the motion, Aqua argued only that the new claims were not obvious because the cited combination of references failed to suggest one of the four new limitations added in the new claims.  The PTAB denied Aqua’s motion to amend and Aqua appealed.

On appeal, the Federal Circuit affirmed.  The court declined to revisit its precedent upholding PTAB procedures requiring patent owners to show that proposed amended claims would be patentable over the art of record.

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Wednesday, June 15, 2016

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Federal Circuit Review | June 2016

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Knobbe Martens Receives Top IP Recognition from The Legal 500

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Knobbe Martens Olson & Bear LLP has once again been recognized by The Legal 500, an annually published directory of the top legal service providers worldwide, for its outstanding legal work in four intellectual property categories: Patent Litigation, Patent Portfolio Management and Licensing, Patent Prosecution (including re-examination and post-grant proceedings), and Trademarks: Non-Contentious (including prosecution, portfolio management and licensing).

The rankings are based on in-depth market research by a team of qualified journalists and lawyers, along with feedback from peers and clients. This research is used to assess the firm’s overall visibility and reputation.

For detailed rankings and descriptions of each of the firm’s areas of recognition, click on the category links below:

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Thursday, June 30, 2016

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Top IP Recognition from The Legal 500

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Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets

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Knobbe Martens Attorney Tom Cowan presented "Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets" at a seminar series in our San Diego office. The presentation can be accessed and downloaded below.

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Tuesday, August 2, 2016

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Knobbe Martens Partner Salima Merani, Ph.D. Named to The Recorder’s “Women Leaders in Tech Law” List

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Knobbe Martens Olson & Bear, LLP is pleased to announce that The Recorder has recognized partner Salima Merani, Ph.D. in the 2016 “Women Leaders in Tech Law” list. For the third year, Dr. Merani was among 65 California lawyers selected. Honorees were selected by editors of The Recorder based on their recent accomplishments and their demonstrated ability to lead in major cases and deals within the tech industry.

Dr. Merani has been lead IP counsel in technology deals valued at well over a billion dollars in just the past three years and has been consistently ranked top in the industry for building global patent and trademark portfolios and negotiating high stakes deals for both US and international clients. She is considered one of the “go-to” tech lawyers in the life sciences field, representing both tech start-ups and tech venture capitalists in complex biotechnology and medtech deals. Tech entrepreneurs credit Dr. Merani’s unique combination of an undergraduate genetics degree, neuroscience Ph.D. and Berkeley law degree – and her proactive legal strategy – as a key factor in their companies’ growth and success. 

Dr. Merani is a recipient of numerous awards this year, including being ranked in the 2016 Chambers USA Guide “Life Sciences: IP” category; Lawyer Monthly Magazine’s “2016 Women in Law Awards” as “2016 Life Sciences Lawyer of the Year”; Intellectual Asset Management’s “The World’s Leading Patent Professionals” Guide; the exclusive 2016 winner of the “Client Choice Award” by International Law Office, as well as additional accolades from the National Law Journal, The Daily Journal, Diversity and The Bar, and The Legal 500.  Publications and clients have recognized Dr. Merani as "a great strategic advisor with a proven track record of success and innovation", "a favorite of venture capitalists" and "transactional cognoscenti".

Dr. Merani served as Vice Chair of an American Intellectual Property Law Association committee, including assignment to a special task force on new laws. She is also a founding member of the firm’s USPTO Trials and Post Grant Proceedings Committee, previously the Interference and Derivation Committee. 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Wednesday, August 3, 2016

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Salima Merani Named to The Recorder’s “Women Leaders in Tech Law” List

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Knobbe Martens Ranked Most Recommended IP Law Firm by Our City San Diego Magazine

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Knobbe Martens Olson & Bear, LLP has been ranked as the most recommended law firm for intellectual property by Our City San Diego. The magazine polled 400 top San Diego attorneys for their recommendations in various practice areas, posing the question, “What law firm would you recommend to a friend?” Knobbe Martens came out on top in the intellectual property/patent law category.

San Diego County is home to more than 2,900 law firms and nearly 16,000 active, bar-admitted attorneys. Our City San Diego chose survey participants by employing sources such as Super Lawyers to determine the region’s most respected attorneys. Thirty-five percent of respondents named Knobbe Martens as their top choice for intellectual property or patent law. To read more about their selection, click here.

Knobbe Martens opened its San Diego office in 1980.  Their current location in Del Mar Heights employs over 60 patent attorneys and serves clients in the venture capital, biotech, medical device, health sciences, electronics, and semiconductor industries. The San Diego office provides a full suite of intellectual property services including patent prosecution and litigation, trademark prosecution and litigation, licensing, venture capital due diligence and related client counseling.

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Friday, August 12, 2016

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Most Recommended IP Law Firm by Our City San Diego Magazine

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The Daily Journal Names Five Knobbe Martens Partners Among California’s “Top IP Attorneys for 2016”

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Knobbe Martens, one of the nation’s leading intellectual property law firms, is pleased to announce that partners Brent Babcock, Salima Merani, Ph.D., Susan Natland, Joseph Re, and John Sganga have been selected by the Daily Journal for inclusion in its annual ranking of the “Top IP Attorneys in California.” This year, only 76 IP attorneys statewide were selected for this prestigious honor.

Brent Babcock heads the Knobbe Martens USPTO Trials and Post-Grant Proceedings practice group. He has been involved in more than 35 patent interferences and many reexaminations during the past twenty years, as well as more than 90 recent Inter Partes Review (IPR) and Covered Business Method (CBM) Review proceedings before the Patent Trial and Appeal Board (PTAB).

Salima Merani, Ph.D. has been consistently recognized in the industry for her unique ability to not only build impressive global patent and trademark portfolios, but also to negotiate high stakes deals for her clients.  In just the last three years, she has been lead IP counsel in deals valued at over $1 billion. 

Susan Natland focuses on representing high-profile clients to protect their valuable brand assets.  She has counseled numerous clients on trademark selection, protection, licensing and enforcement, including litigation, and has even personally attended raids of counterfeit goods factories in China.  She also handles copyright and rights of publicity protection and enforcement, as well as emerging data protection and privacy issues related to IP.

Joseph Re is a nationally recognized trial attorney and appellate specialist and recipient of numerous awards for winning high-stakes patent cases before juries throughout the United States. Recently, he served as lead trial counsel in a jury trial resulting in a $466 million jury award for firm client Masimo Corp., the largest IP jury verdict of 2014.

John Sganga has practiced IP litigation for over 30 years, and as Chair of the firm’s Litigation Practice Group, he oversees a wide variety of IP suits.  In 2015, he successfully led a trial team at the United States International Trade Commission (ITC) resulting in an exclusion order under both of his client’s asserted patents, first-chaired a trade secret misappropriation case to a $70 million jury verdict in Boston, and won all three of his Federal Circuit appeals.

The Daily Journal names attorneys to the lists based on a number of criteria including hundreds of nominations and staff selections, along with consideration of each nominee’s major intellectual property successes over the last year. This is the fifth year in a row Dr. Merani has been recognized and the fourth year in a row for Mr. Re.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Friday, August 19, 2016

Contact 

Nicholas Gaffney 415-732-7801

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Five Partners Named by The Daily Journal as “Top IP Attorneys for 2016”

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MIP Highlights Knobbe as Part of the IP Revolution

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Knobbe Martens is featured in Managing Intellectual Property (MIP) magazine's cover story "The Mad Men of IP." 

Excerpt: In the early 1960s, patent practice was quiet and inventors often faced a hostile environment. But then, like now, new technologies were emerging to reshape business and the economy. Across North America, innovative lawyers set up boutique firms that would transform the market, many of which still exist today. Fifty years on, Jakob Schnaidt tells their story.

Read the full story by downloading the PDF >>

Managing Intellectual Property (MIP) Cover Story - The Mad Men of IP

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Associated Industry Group 

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News
Wednesday, August 31, 2016

Attorneys 

Shorter Headline Homepage

MIP Highlights Knobbe as Part of the IP Revolution

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Jay R. Deshmukh

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Telephone 

(202) 640-6400

Office Location(s) 

Professional Profile 

Jay R. Deshmukh is a partner in the firm’s Washington D.C. office.

Mr. Deshmukh has 10 plus years of industry experience in the pharmaceutical area having worked as head lawyer for a top 10 generics company. He is therefore highly experienced in the area of pharmaceutical litigation, as well as the Abbreviated New Drug Application process and the complexities of litigation involving pharmaceuticals under the HatchWaxman Act.

He also has experience in obtaining and licensing pharmaceuticalrelated intellectual property. In his role as head lawyer, Mr.Deshmukh managed and settled complex global patent litigation on behalf of the company obtaining settlements favorable to the consumer and the company. He worked closely with the Office of Chief Counsel of the FDA and all the FTC commissioners.

Having passed (in 1998), the European Qualifying Examination for European Patent Attorneys for practice before the European Patent Office, and with his decade long experience in defending against patent infringement claims in at least 10 EU jurisdictions, Mr. Deshmukh is uniquely qualified to advise clients seeking IP advice in the EU.

Before joining the generics company, Mr. Deshmukh worked as an Intellectual Property Lawyer with 2 large general practice firms in Cincinnati, Ohio. There he obtained significant litigation experience in the Federal Courts including the Federal Circuit. He also worked extensively in the PTO filing and obtaining patents and successfully prosecuting appeals.

Additional Information 

Representative Patents

United States Patent No. 5,413,689 to de Nora and Sekhar

Language Proficiency

Marathi, Hindi

Cases, Articles, Speeches & Seminars 

Speeches and Seminars

  • Panelist, Evaluating the Benefit of Trade Secret Protection Versus Patent Protection: Alternative Ways to Protect Biologic and Biosimilar Technology, Biosimilars Conference, New York, NY (June 2013).
  • Webinar on Hatch Waxman Litigation, IP Law 360 (2009).
  • WIPO IP conference in Geneva (2008 and 2007).

Representative Matters

RANBAXY LABORATORIES LIMITED, et al., Appellees v. Michael O. LEAVITT, Secretary of Health and Human Services, et al., Appellants. No. 065154 (2006). Developed winning strategy and assembled legal team for seminal case regarding patent delisting, requiring FDA to order relisting of patents at issue in the Orange Book thereby ensuring exclusivity for client (won at district court level and in DC court of Appeals)

Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:08cv00164 (2008). Represented defendants in patent infringement action in the District of Delaware on two patents relating to methods of making atorvastatin (the active ingredient in Pfizer’s Lipitor® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:08cv00162 (2008). Represented defendants in patent infringement action in the District of Delaware on two patents relating to methods of making atorvastatin (one of the active ingredients in Pfizer’s Caduet® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Pfizer Inc. et al. v. Ranbaxy Labs. Ltd. et al., 1:07cv00138 (2007). Represented defendants in patent infringement action on method patent relating to the use of atorvastatin calcium/amlodipine besylate (the active ingredients in Pfizer’s Caduet® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Astellas Pharma Inc. et al. v. Ranbaxy Labs. Ltd. et al., 3:05cv02563 (2005). Represented defendants in patent infringement action in the District of New Jersey on patent relating to tamsulosin (the active ingredient in Astellas’ Flomax® product). On appeal, the case settled prior to a decision by the Court of Appeals for the Federal Circuit. Led the negotiations and achieved favorable casedispositive settlement for client.

AstraZeneca AB et al. v. Ranbaxy Labs. Ltd. et al., 3:05cv05553 (2005). Represented defendants in patent infringement action in the District of New Jersey concerning six patents related to esomeprazole magnesium (the active ingredient in AstraZeneca’s Nexium® product). Led the negotiations and achieved favorable casedispositive settlement for client.

Professional Memberships 

American Intellectual Property Law Association (AIPLA)

American Bar Association (ABA), IP Section

Industry Experience 

Jay

Lastname 

Deshmukh

Photo 

Position 

Email 

jay.deshmukh@knobbe.com

Start Date 

Tuesday, September 15, 1992

Suhai Guo

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Attorney User 

Education 

2016
National competiton team member for Environmental Law Moot Court

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Suhai Guo helps clients in the software & IT industry in all stages of development. He provides counsel on offensive and defensive competitive strategies, infringement studies, financings, strategic transactions and patent prosecution for start-up companies, venture capitalists, software & app developers, and publicly held-corporations. 

Suhai was a member of National Environmental Law Moot Court competition team during law school. He worked as a summer associate at the firm in 2015 and joined the firm in 2016.

Suhai

Lastname 

Guo

Photo 

Position 

Email 

suhai.guo@knobbe.com

Start Date 

Wednesday, June 1, 2016

Nathan J. Lee

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Nathan Lee helps clients with U.S. and foreign patent prosecution and patent portfolio management.  

Prior to joining the firm, Nathan attended New York University School of Law where he served as a Staff Editor of the Journal of Intellectual Property & Entertainment Law. In 2010, He received his Bachelor's Degree in Chemistry with a minor in Biology at Cornell University. Nathan also has research experience in Nanomaterials, Biomaterials, and Protein Chemistry.

Nathan worked as a summer associate at the firm in 2015 and joined the firm in 2016.

Nathan J.

Lastname 

Lee

Photo 

Position 

Email 

nathan.lee@knobbe.com

Start Date 

Wednesday, June 1, 2016

Justin E. Culbertson, Ph.D.

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Education 

2016
Saul Lefkowitz Moot Court Competition (2016), Law & Technology Scholars Program

Honors 

cum laude
2013
Dissertation title: Mechanistic Studies of Chorismate-Utilizing Enzymes, PhzE, Inhibition of Salicylate Synthase, and Pyruvate Lyase Activity of Anthranilate Synthase

Telephone 

858-707-4000

Office Location(s) 

Professional Profile 

Justin Culbertson practices intellectual property law, with emphasis on patent prosecution and strategy in the chemical, pharmaceutical, and biotech fields.

Prior to joining Knobbe Martens, Dr. Culbertson completed a J.D. at the University of Illinois College of Law where he participated in an IP clinic to help student inventors gain IP rights. He also participated in a mortgage foreclosure clinic helping families retain their homes in foreclosure. While in law school at the University of Illinois, Dr. Culbertson was a professor at Parkland College teaching organic chemistry.

Prior to law school, Dr. Culbertson earned his Ph.D. in Chemistry from the University of California, Davis. His interdisciplinary graduate research involved the design and mechanistic evaluation of small molecule inhibitors of the chorismate-utilizing enzymes. His studies helped him gain a deep understanding of small molecule synthesis, purification techniques, protein engineering and design, x-ray crystallography, and molecular biology.

Between graduate school and his undergrad, Dr. Culbertson spent a summer working at GlaxoSmithKline synthesizing vaccine adjuvants.

Dr. Culbertson joined the firm as an associate in 2016.

Technical Expertise 

Teaching Experience 

Parkland College - Department of Natural Sciences

Professional Memberships 

American Chemical Society

Quote 

As a scientist and lawyer, I see what others see but think what others have not to protect & defend my client’s IP.
Justin E.

Lastname 

Culbertson

Photo 

Position 

Email 

justin.culbertson@knobbe.com

Start Date 

Wednesday, June 1, 2016
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