Patents

Translate this page Share this page Print this page

RELATED AREAS

ANDA Hatch-Waxman Litigation
Copyright
Corporate Espionage & Competitive Intelligence
E-Discovery
Intellectual Property
Licensing
Trade Secrets & Non-Compete
Trademarks/False Advertising
Overview| People| Matters| News & Insights
Patent Litigation
  • Successfully defended L-3 Communications in a bench trial at the United States Court of Federal Claims against a claim of patent infringement involving a patent for integrating night vision goggles and color displays in aircraft cockpits. Working along with attorneys from the United States Department of Justice representing the government, the firm obtained a judgment that the patent is invalid for obviousness and for lack of an adequate written description.

  • Representing Boehringer Ingelheim in Hatch-Waxman litigation against generic manufacturer involving patents covering oral formulation and related manufacturing process for anti-arthritis drug product.

  • Representing Baxter Healthcare in patent litigation pending in the Eastern District of North Carolina involving patents covering methods for screening plasma for viral contamination.

  • Represented UPS in patent litigation pending in the Eastern District of Texas involving geographic call routing services.

  • Defended L-3 Communications in a patent infringement litigation in the Southern District of New York concerning the chemical heat insulation used in “black box” flight recorders. The firm negotiated a favorable settlement on behalf of the client.

  • The firm represents GlaxoSmithKline in several litigation matters arising in anticipation of ANDA Hatch-Waxman and consumer product litigation, as well as in an active patent interference proceeding.

  • Representing GlaxoSmithKline for infringement of patent protecting its market-leading Breath Right® nasal dilator product line against the ASO Clear Passage products. The defendant agreed to Consent Judgment and to design modifications of their product.

  • Successfully represented Finjan Software Ltd. in a jury trial in the District of Delaware in a patent infringement suit relating to gateway security software. The jury found that the client’s three patents were willfully infringed and that the client’s products did not infringe the two patents asserted by the defendants.

  • Representing Trilliant Networks, Inc. in a multi-patent infringement suit in the Eastern District of Texas relating to mesh networks.

  • Representing patent-holder ZymoGenetics in a patent dispute against Bristol-Myers Squibb Co. involving fusion protein technology. Obtained a favorable settlement of $21 million for ZymoGenetics just prior to trial.

  • Defending Google Inc. in patent litigation brought in the Eastern District of Texas by Aloft Media, a patent holding company, alleging infringement of computer software patent for storing bookmarks of Internet addresses.

  • Defending Google Inc. in two patent infringement cases in the Eastern District of Texas involving browser and online bookmarking technology.

  • Defending Google Inc. in a patent infringement case in the Eastern District of Texas involving the use of avatars in messaging applications.

  • Defending Google Inc. in a patent infringement case in the Eastern District of Texas involving user interfaces for chat systems.

  • Representing Nokia Corporation in a patent litigation matter filed in the District of Delaware for seven patents asserted against a host of defendants but generally relate to user interface functionality for digital camera technology within mobile handsets.

  • Representing Nokia Corporation in a patent litigation matter filed in the Eastern District of Texas related to the transmission of 8 bit data over 7 bit paging networks.

  • The firm has represented Nokia Corporation in a series of patent litigation matters filed in the Eastern District of Texas and Delaware relating to the creation, storage and manipulation of playlists in cellular telephones, the design and use of semiconductor components in mobile phone technology, the use of specific bit pattern encoding for paging networks and the user interface employed with camera phone technology.

  • Representing Nokia Corporation in a patent litigation matter filed in the Eastern District of Texas relating to turbocode decoding technology. The patents-in-suit were placed in reexamination in the U.S. Patent and Trademark Office, and the suit has been stayed pending the outcome of those reexamination proceedings.

  • Representing Nokia Corporation in a patent litigation matter in the Eastern District of Texas relating to simplex transmission of data over wireless networks.

  • Representing Nokia Corporation in a patent dispute in the Eastern District of Texas brought by an individual inventor against multiple defendants relating to the use of Caller ID and Call Waiting features in cellular telephones.

  • Appearing as counsel of record for a major U.S. financial institution in the Eastern District of Texas in patent litigations involving check imaging and online security.

  • Defended The Kroger Co., Kroger Texas L.P., and Healthy Options, Inc. d/b/a Postal Prescription Services in multi-district litigation in California and in the Eastern District of Texas in a patent infringement suit brought by Ronald A. Katz Technology Licensing, L.P. on a large number of patents relating to automated telephone call processing and IVR technologies.

  • Defending a leading track and recessed lighting manufacturer in a patent infringement suit pending in federal district court in Pennsylvania. The three patents-in-suit relate generally to systems for holding certain types of equipment in a ceiling.

  • Represented Spansion, Inc., the world’s largest manufacturer of NOR flash, in actions in the ITC against Samsung, RIM, Apple, Sony, Lenovo and others for an exclusion order prohibiting importation of all Samsung’s current flash semiconductor products and all downstream products containing such flash products based on infringement of four patents. We also represented Spansion in an action against Samsung in the Delaware District Court for infringement of six patents. These cases have been hailed in the pressas one of the largest patent cases ever brought.

  • Defended Mediatrix, a manufacturer of VoIP equipment in an action brought against it under two patents. The Magistrate has recommended dismissal of the action and an award of attorney fees, and we are awaiting the decision of the court confirming that recommendation.

  • Successfully represented Eppendorf AG against Bio-Rad Laboratories Inc. in parallel patent infringement actions in the Eastern District of Texas and the Northern District of California. Cases were favorably settled with monetary award and transfer of Bio-Rad patent-in-suit in E.D. Texas case to Eppendorf AG.

  • Representing Qimonda in Section 337 ITC patent action brought by LSI involving tungsten contacts for semiconductors.

  • The firm continues its defense of Internet Security Systems, Inc. against SRI International, Inc. in a multi-patent infringement suit in Delaware relating to network intrusion detection and prevention technology. One of the four patents-in-suit was held to be invalid on summary judgment, and that portion of the trial court ruling was affirmed on appeal by the Federal Circuit. The trial on the remaining three patents-in-suit is set for September, 2008.

  • Represented Tillotson Corporation in multiple cases involving latex medical examination gloves, and in a separate action tried before the International Trade Commission. The ITC action is reported to be the largest ITC action ever tried.

  • Successfully defended S1 Corporation in a jury trial in the Southern District of New York in a patent infringement suit relating to software for facilitating international trade transactions. The jury found both that the client’s product did not infringe the patent-in-suit and that the patent was invalid.

  • Successfully defended The Coca-Cola Company in a jury trial against a former vendor who sought millions of dollars on his claim that the Company stole his vending machine design. Won post-trial judgment as a matter of law on design patent claims after the court declared a mistrial. Result was unanimously affirmed by the Court of Appeals for the Federal Circuit.

  • Representing Alcatel USA, Inc. in a patent dispute in the Eastern District of Texas brought by an Australian patent owner against multiple defendants relating to packet discard technology in the Asynchronous Transfer Mode (ATM) technology.

  • Representing Bank of America Corporation in patent infringement suit in the Eastern District of Texas relating to computer generated sales presentation systems.

  • Representing Conor Medsystems, Inc., a leading cardiovascular stent manufacturer, in patent infringement and revocation litigation in the United States, the United Kingdom, Australia, Ireland and the Netherlands.

  • Defending Michelin North America, Inc. against a patent infringement action in federal court in the Eastern District of Texas in connection with a patent purportedly directed to RFID technology.

  • Representing The Kroger Co. in a multi-patent infringement suit in the Eastern District of Texas relating to automated telephone call processing and IVR systems.

  • Representing The Coca-Cola Company in a patent infringement action against PepsiCo relating to “bag in box” technology for dispensing fountain syrups for soft drinks.

  • Representing The Home Depot, Inc. in a patent infringement action relating to a method of packaging and selling natural stone. Successfully obtained dismissal of state law unfair competition and trade secret claims.

  • Representing Knowlagent, Inc. in a patent infringement action that Knowlagent is asserting against a quality monitoring company regarding its patents relating to the delivery of e-learning to call center agents.

  • Representing IAC/InterActiveCorp, LendingTree, LLC and ServiceMagic, Inc. in a patent infringement suit in New Jersey relating to computerized quotation systems.

  • Representing LendingTree, LLC, an online financial services provider, in the defense of a patent infringement action in federal court in Missouri relating to a computer system for offering financial cards based on applicant ratings.

  • Represented Glock, Inc. and Glock GmbH in a patent infringement suit relating to accessories for automatic firearms.

  • Representing The Coca-Cola Company in a design patent infringement matter relating to the packaging of beverage products.

  • Representing LendingTree, LLC in two separate patent infringement actions in North Carolina, relating to methods and systems for coordinating loans over the Internet.

  • Successfully represented Banner Pharmacaps Inc. in a patent infringement lawsuit against The Perrigo Company, et al. in the Middle District of North Carolina. Obtained summary judgment of infringement followed by settlement agreement involving monetary award and injunction.

  • Currently representing Banner Pharmacaps Inc. in a Paragraph IV Certification patent infringement litigation lawsuit against Ranbaxy Laboratories involving a gelatin capsule ibuprofen product. The lawsuit is pending in the Middle District of North Carolina.

  • Successfully defended Clean Air America, Inc. in Detroit, Michigan in response to a patent infringement lawsuit brought by Great Lakes Air Systems.
Patent Prosecution and Counseling
  • Representing Cooper Industries in patent portfolio maintenance and trademark disputes.

  • Representing Finjan Software Ltd. in seeking patents for its innovative security software.

  • Representing Altea Therapeutics Corporation, a clinical stage transdermal drug delivery company, as general patent counsel.

  • Representing Aceras Biomedical LLC, a life science-focused venture capital fund, in connection with intellectual property due diligence and licensing matters.

  • Representing Altiris Therapeutics, Inc., an emerging pharmaceutical company developing small molecule therapeutics for stem cell mobilization and other disorders, as general patent counsel.

  • Representing Lantibio, Inc., an emerging biotechnology company focused on discover, development and commercialization of novel treatments for ocular and pulmonary disease, as intellectual property counsel.

  • Representing New Ice, Inc., a developer of biodegradable and compostable food container products, in patent prosecution matters.

  • Representing Advanced Television System Committee in its administration and updating of a patent policy governing the disclosure of essential patent claims within industry standards for advanced television technologies.

  • Representing Total System Services, Inc. in connection with its development of a U.S. and international patent portfolio for innovations in the transaction processing and financial card fields.

  • Representing an international consumer products manufacturer in connection with its evaluation of potential infringement risks arising from U.S. patents held by third parties for a consumer product design.

  • Representing Towers Perrin in pursuing patent protection for business process and computing system innovations in the pension management, employee compensation and benefit and healthcare fields.

  • Representing Norgenix Pharmaceuticals, Inc., a specialty pharmaceutical company, in connection with intellectual property due diligence.

  • Representing a smart grid company in seeking patents for its innovative technology involving software and hardware intended for utility companies.

  • Prepared more than 30 same day domestic and foreign patent filings for energy management client seeking protection for key technology.

  • Representation of MacroGenics, Inc. in obtaining patent protection for therapeutic antibodies.

  • Representation of a natural products pharmaceutical company in obtaining world wide patent protection for a natural product therapeutic currently in clinical trials.

  • Representation of a group of Portuguese biotechnology start ups to develop a patent strategy for their platform technologies.

  • Representing public biopharmaceutical company Genzyme Corporation in the evaluation and world-wide patent protection of certain of its antibody and peptide therapeutic technologies

  • Representing a leading government defense contractor in obtaining United States and foreign patent protection for, inter alia, plasma display technology, vehicle and cargo inspection systems, polymer dispersed liquid crystal technology, chemical and biological agent detection, portable x-ray imaging devices, radar image reconstruction technology, and data ranking technology.

  • Representing a gaming technology company in seeking United States and foreign patent protection for technology related to development and sharing of on-line game content.

  • Representing international biotechnology company Eppendorf AG in the evaluation and patent protection of certain of its molecular biology instrumentation technologies

  • Representing international biotechnology company Qiagen GmbH in the evaluation and patent protection of its thermostable replicase technology and related molecular biology techniques and reagents.

  • Representing clinical-stage biopharmaceutical company Cellerant Therapeutics Inc. in the evaluation and worldwide patent protection of its hematopoietic cell therapies and cancer stem cell programs, and related transactional advice

  • Representing emerging clinical diagnostics company CeMines, Inc. in the evaluation and world-wide patent protection of its transcription factor, splice variant and autoantibody epitope cancer diagnostic platforms, and related transactional advice

  • Representing emerging biopharmaceutical company enGene, Inc. in the evaluation and world-wide patent protection of its nucleic acid polyplex technology and therapeutic programs, and related transactional advice

  • Representing emerging biopharmaceutical company Augurex Life Sciences Corp. as general patent counsel in charge of developing and prosecuting patent coverage for its arthritis diagnostic and treatment platforms

  • Representing emerging biopharmaceutical company MedGenesis Therapeutix, Inc. as general patent counsel in charge of developing and prosecuting world-wide patent coverage for its neurological drug delivery and formulation technologies

  • Representing emerging biopharmaceutical company OMT, Inc. in the evaluation and world-wide patent protection of its meganuclease-implemented transgenic animal technology, and related transactional advice.

  • Representing a leading creator, manufacturer and distributor of social expression products in its evaluation of strategic intellectual property protection initiatives and pursuit of patent protection for innovative approaches to consumer product displays and marketing.

  • Representing an entrepreneur in the successful pursuit of patent protection for advances in recycling glass, copper wire and plastics materials.

  • Represented Radius Ventures in patent due diligence in connection with a potential investment transaction involving a company specializing in the application of robotics technologies in the healthcare field.

  • Performed IP due diligence including confirmation of asset ownership, freedom-to-operate and patentability analysis, review of IP policies and procedures, authoring of representations and warranties, and negotiation of licenses for a multi-stage venture capital firm with $8.4 billion in committed capital in connection with investments totaling over $200 million across technologies including electric vehicle motors, batteries, and mass storage.

  • Representing a global investment banking and financial services firm in seeking patent protection for innovative financial products and services and information technology inventions.

  • Representing a financial services software firm in seeking United States and foreign patent protection for technology related to secure access to financial documents.

  • Representing a global internet search and e-commerce company in seeking United States patent protection for technology related to internet technology.

  • Representing a lighting and electrical parts company in seeking United States and foreign patent protection for technology related to electrical components and communication systems.

  • Representing a financial services software firm in seeking United States and foreign patent protection for technology related to automated trading.

  • Representing a national financial services institution in seeking patents for its financial services innovations and evaluating the scope of patented computing technologies and business processes in the financial services sector.

  • Representing a global investment banking and financial services firm in seeking patent protection for innovative financial products and services and information technology inventions.

  • Representing LendingTree, LLC in seeking business method patents for an online system for matching consumers to potential financial service providers via the Internet.

  • Representing Gilead Sciences, Inc. in connection with patent prosecution in the area of antiviral therapy, and in particular, patents covering FTC, the active component in EMTRIVA® and one of the two active components in TRUVADA®.

  • Represented an international provider of vehicle navigation products and services in the licensing of patented personal navigation device technologies.

  • Representing two major investment banks in due diligence relating to their investment in a Canadian company that is developing a treatment for multiple sclerosis.

  • Represented a leading company in the clinical diagnostics field in support of its patent protection and evaluation initiatives.

  • Representing ChoicePoint Inc. in its pursuit of patent protection for innovations in the field of biometric data processing for identity verification and inventive concepts in other data processing fields.

  • Representing Delta Air Lines, Inc. in seeking patent protection for information technology and business process advances in the air transportation industry.

  • Representing an international manufacturer of fiber optic and cabling products in seeking patent protection for a variety of communication cable product innovations and inventive manufacturing processes.

  • Representing IBM Internet Security Systems, Inc. in seeking patent protection for security programs that complete scans of computer networks, assess vulnerabilities of computer networks to unauthorized intrusions and protect host computers and computer networks from unauthorized intrusions and rogue software programs.

  • Represented Nokia Corporation before the U.S. Patent and Trademark Office in connection with the reexamination of a U.S. patent held by another party.

  • Representing a leading oil and gas producer in freedom to operate evaluations.

  • Representing EMS Technologies, Inc. in seeking patent protection for satellite communication inventions, microwave and radio frequency devices and technological advances in base station antennas for cellular wireless communications systems.

  • Representing AtheroGenics, Inc., a Georgia-based, publicly-owned pharmaceutical company focusing on treatments for cardiovascular and inflammatory diseases, in connection with worldwide patent protection on AGI-1067, a drug in Phase III clinical trials for the treatment of atherosclerosis, and AGI-1096, a drug in clinical trials for the treatment of solid organ transplant rejection. Astra Zeneca entered into a licensing agreement with AtheroGenics in December 2005 for the global development and commercialization of AGI-1067, valued at $1 billion in payments (excluding royalties), making it the largest pharmaceutical licensing deal of 2006.

  • Representing the world’s largest producer of industrial materials as intellectual property counsel responsible for securing patent and trademark protection for its products and managing the company’s extensive U.S. and international patent and trademark portfolio.

  • Representing Drug Royalty Corporation Inc. as intellectual property counsel to conduct due diligence in connection with the acquisition of royalty streams including the royalty stream paid to Nanogen by Applied Biosystems Inc. for sales of oligonucleic acid probe products incorporating minor groove binder technology.

  • Representing Knowlagent, Inc., a provider of computer software for training agents in call centers, in seeking domestic and international patents for the company’s software innovations and in pursuing federal registrations for its trademarks.

  • Representing Noven Pharmaceuticals, Inc., a world leader in transdermal drug delivery located in Miami, Florida, in connection with certain patent matters and due diligence relating to transdermal systems.

  • Representing Key Energy Services, Inc. in preparation, prosecution, licensing and enforcement of patents directed to oilfield equipment and services.

  • Representing Kemira Chemicals, Inc. in seeking domestic and international patent protection for its diverse line of chemical products.

  • Representing the Roskamp Institute Investors LLC, a private research institute located in Sarasota, Florida, in connection with intellectual property in the area of novel treatments for neurodegenerative diseases such as Alzheimer’s disease.

  • Representing Tandberg Television ASA in protecting its innovations for the management and distribution of multimedia assets in the cable television industry.

  • Representing Dornier MedTech Laser GmbH and Dornier MedTech America, Inc. in seeking worldwide patent protection for urological shock wave and laser technology.

  • Representing Helsinn Healthcare, a multinational pioneer drug manufacturer headquartered in Lugano, Switzerland, in strategic patent analysis.

  • Representing an early-stage technology company in its strategic pursuit of U.S. and international patent protection for the company’s foundation technology for evaluating highway traffic patterns based on active monitoring of cellular telephony activity for cell sites located proximate to heavy traffic areas.

  • Represented Igloo Products Corporation in the preparation and prosecution of domestic and international patent applications.

  • Represented Banc of America Securities LLC in patent due diligence in connection with Private Placement Offerings by Lexicon Genetics and Cerus.

  • Representing an individual entrepreneur in seeking business model patents for an innovative process for encouraging consumers to view advertisements presented with broadcast television programs by providing consumers with an incentive to submit responses to the advertisements.
Holmes J Hawkins III 
T: +1 404 572 2443 ATLANTA