Firm Overview. The firm includes 25 professionals, including 19 lawyers and 6 patent agents and technical specialists, of whom 10 hold Ph.D. degrees.

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Maria Watts
5 years ago
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1 Firm Overview At Lahive, our thinking expands yours. Our lawyers and technical specialists practice at the cutting edge of intellectual property, with special expertise in biotechnology, chemistry, high technology, patent litigation, and licensing. We represent clients ranging from major pharmaceutical and biotechnology companies such as Novartis and Biogen to small start-ups, and work extensively with venture capitalists in connection with acquisitions and other financial transactions in the areas of biotechnology and high technology. Our attorneys also create and manage extensive patent portfolios for clients including Honda, The MathWorks, and Sun Microsystems. The firm includes 25 professionals, including 19 lawyers and 6 patent agents and technical specialists, of whom 10 hold Ph.D. degrees. Recent Recognitions and Awards: Ranked as one of the best intellectual property law firms in Massachusetts and named Giulio A. DeConti a Leading Lawyer in the field. Chambers USA: America s Leading Lawyers for Business, 2010, 2009 and 2008 Editions Go-to Law Firm in Intellectual Property. National Law Journal, and Corporate Counsel, 2009, 2008, 2006 and 2005 Recognized as a primary Patent Counsel for companies in the Fortune 250. Only 121 firms were named by the general counsel and IP chiefs who were asked to name their leading outside counsel. IP Law & Business, November 2006 Ranked in the top 5 Boston IP law firms in patents filed and patents obtained. Boston Business Journal, 2009, 2008, 2007, 2006 and 2005 Massachusetts Super Lawyers List 2009: 9 Super Lawyers 2008: 7 Super Lawyers 2007: 7 Super Lawyers 2006: 4 Super Lawyers 2005: 5 Super Lawyers Law & Politics and Boston Magazine Massachusetts Rising Stars List 2009: 4 Rising Stars 2008: 8 Rising Stars 2007: 8 Rising Stars 2006: 4 Rising Stars Law & Politics and Boston Magazine

2 Lahive has been named a Go-To Law Firm in intellectual property law by the National Law Journal and Corporate Counsel, been ranked A Power Prosecutor by Patent Ratings LLC and had its client work referred to as high-octane by the National Law Journal. While we are proud of these accolades, we believe our work speaks for itself. Some of our notable client successes include the following: Clean Technology Working with a clean technology company developing cellulos ethanol to develop and expand their patent portfolio. Developing a patent strategy and portfolio for a client that specializes in environmentally friendly techniques for converting biomass into components that can be used for fuel and industrial production. Representing a start-up company that develops hydro-power generation technology. Assisting the manufacturer of custom-designed semiconductor structures in developing a patent portfolio and leveraging its expertise in heterojunction chip technology to enter the thin-film solar cell market. Assisting a major automotive company with the intellectual property directed to components of one of the company s market-leading automobiles. Developing worldwide patent portfolios for multiple companies that create fuel cell technologies for hybrid power systems and automobiles. Representing multiple start-up companies (in technologies ranging from wind turbine power to biomass production) in developing and implementing patent strategies, including obtaining patent protection and negotiating licensing arrangements. High Technology Rendering over 30 IP legal opinions to a major automotive company and were involved in a redesign of one of the company s market-leading automobiles. Successfully obtaining the underlying IP for and representing a software company specializing in linking knowledge bases operated by multiple information providers, in the acquisition of its assets by a consortium that provides online computer library linkage. Representing a global provider of network management software in IP matters in its acquisition by one of the world s largest IT management software providers. Obtaining an Australian patent for a private client and subsequently negotiating a license for the patent to an Australian telecommunications carrier.

3 Developing the patent portfolio and assisting a manufacturer of custom-designed semiconductor structures to leverage its expertise in heterojunction chip technology to enter the thin film solar cell market. Conducting a comprehensive infringement and invalidity analysis of a large patent estate owned by a third party on behalf of a major automotive company. Medical Devices Representing medical device start-up companies in investment transactions from Series A through Initial Public Offering. Conducting IP due diligence related to ownership or distribution of products for clients partnering with Big Pharma. Winning an opposition in the European Patent Office brought by an international medical device developer and manufacturer against our client, an international healthcare technology company. Assembling a legal team of biologists, chemical engineers and an electrical engineer with industry experience in control systems to assist a biologics preparation and instrumentation client with IP matters. Working closely with a start-up medical device company to identify design modifications that would better enable drafting of patentable claims for their product. Life Sciences Representing a monoclonal antibody company in IP matters in its $400M acquisition by a major pharmaceutical company. Our client University of Massachusetts Medical School holds several patents and patent applications in the field of RNA interference (RNAi) including Dr. Craig Mello's seminal patents relating to the discovery of RNAi for which he and Dr. Andrew Fire recently received the Nobel Prize in Medicine. We represent the University's interests in this exciting technological field. Providing strategic advice to a Swiss biotech company throughout the sale of its ophthalmology unit and guiding the company through IP due diligence activities in a deal worth up to $500M. Representing a biopharmaceutical company in its exclusive worldwide licensing agreement with a global pharmaceutical company for the development and co-commercialization of a first-inclass, fully human monoclonal antibody in a deal worth up to $530M. Representing a leading Boston venture capital firm in IP due diligence for its $40M investment in a European biotech company. Representing a Canadian biotechnology company in IP matters in connection with a private placement financing and its IPO. Representing a start-up biotech company in a significant venture financing by a leading N.J. venture capital firm. Representing an antibiotics company in IP matters in the establishment of a $127M collaboration with a major pharmaceutical company. Representing an emerging biotech company in IP matters in connection with a $40M financing. 2

4 Writing a patent application covering a leading European biotechnology company s antibody which constituted the IP for a $2 billion deal with a large pharmaceutical company. Representing a biotech drug discovery company in IP matters in connection with its $55M acquisition by a pharmaceutical company. Developing an extensive international patent portfolio covering a first of its kind human monoclonal antibody drug marketed by a large pharmaceutical company. Litigation Serving as lead counsel for a multi-national drug manufacturer in obtaining a favorable settlement in a Paragraph IV ANDA litigation involving megestrol acetate. Representing a leading global drug manufacturer in achieving a favorable ruling on a dispositive motion in a Paragraph IV ANDA litigation involving hydrocodone and ibuprofen. Managing extensive pre-trial discovery and depositions on behalf of a leading global drug manufacturer in a Paragraph IV ANDA litigation involving ondansetron. Successfully representing a start-up drug discovery biotechnology company accused of patent infringement during IPO. Asserted patent held invalid for obviousness. Representing a technology design firm in multiple cases involving its intellectual property rights to certain wired and wireless telecommunication systems for portable access to Internet and phone service. Successfully representing a defendant in a patent infringement case involving indoor positioning systems that use radio frequency signals to track and locate critical, portable devices and personnel in large health care facilities. Case resolved without business interruption or payment of any royalty after pre-trial motion for summary judgment. Successful appeal to the Federal Circuit that a directed verdict against our client should be vacated based on the trial court s refusal to submit separately to the jury the issues of obviousness and anticipation of prior art. Successfully representing a defendant in a patent infringement action related to viscometer used in high performance liquid chromatography analytical system. Jury verdict of non-infringement upheld on appeal. Successfully representing a plaintiff in a case involving misappropriation of trade secrets and unfair competition in the sale of high speed liquid chromatography systems. Case resolved prior to trial when defendant agreed to permanently refrain from utilizing our client s proprietary information. Trademarks & Copyrights Conducting a cost/benefit analysis to determine a global trademark registration strategy for a consumer product company. Then, using our foreign associate network, executing the strategy with filings under the European Union and Madrid Protocol and other countries. Policing at TTAB and regularly monitoring and challenging trademark applications for retail and consumer product companies. Assessing the relative strengths of the potentially competing trademark claims and obtaining cease and desist agreements. 3

5 Assisting trademark and service mark clients in resolving domain name disputes under the Internet Corporation for Assigned Names and Numbers s (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP). Transactions Participating in the due diligence, documentation, and integration phases of a $325 million acquisition of an antibody company by a multinational pharmaceutical company. Representing a clinical functional genomics company with respect to an agreement with the Genome Institute of Singapore and the Agency for Science, Technology & Research to build a DNA and tissue sample repository for the Government of Singapore. Representing a polymer-based drug delivery company in a licensing agreement (including manufacturing/distribution components) with a multinational pharmaceutical company, granting North American rights to develop and market an OTC product. Preparing a sponsorship and intellectual property agreement between a research and development biotechnology company focused on tissue engineering and a university. Representing a leader in radiology and medical image and information management software solutions (which provide a complete, end-to-end solution for imaging centers, ambulatory care facilities, and radiology practices) with respect to its customer and enterprise licensing activities until the company was acquired for $55 million. 4

Trademarks. Fortune 500 companies and organizations of all sizes trust Lathrop Gage to help establish, guard, maintain and enforce trademarks.

Trademarks. Fortune 500 companies and organizations of all sizes trust Lathrop Gage to help establish, guard, maintain and enforce trademarks. Trademarks What's in a name? As much as 85 percent of the market capitalization of today's Fortune 500 now lies in intellectual property rather than tangible assets, and Forbes reports that trademarks