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Practical Lessons from Recent Patent Decisions: Top Patent Drafting Takeaways

(62 reviews)

Produced on November 13, 2020

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$ 89 Legal Research & Writing, Intellectual Property, and Patent In Stock
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Course Information

Time 1h 3m
Difficulty Intermediate

Course Description

Recent patent law decisions provide guidance in drafting patent-related agreements and patent applications. As the case law construing license and settlement agreements demonstrate, one overlooked issue in an otherwise carefully drafted agreement can obstruct a party’s ability to protect its patent rights. In addition, while untold patents have been invalidated as claiming unpatentable subject matter under Section 101, proper drafting and claiming has been shown to overcome patentability objections with respect to some method of treatment and medical device claims.

In addition to offering suggested language for agreements and patent applications to avoid the pitfalls outlined in the cases, the program, presented by Janet B. Linn of Tarter Krinsky & Drogin LLP, will also highlight cases and legislation to watch this year that will likely impact patent protection in these areas.



Learning Objectives:

  1. Review recent patent law decisions for guidance in drafting your own patent-related agreements and patent applications

  2. Gain suggested language for drafting patent-related agreements and patent applications, in order to avoid the pitfalls encountered in recent cases and overcome future patentability objections

  3. Become familiar with the pending cases and legislation most likely to impact patent protection moving forward

Credit Information

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Faculty

Janet B. Linn

Tarter Krinsky & Drogin LLP

Janet Linn is a counsel in the Intellectual Property Group. 

Janet is an intellectual property litigator with more than 25 years of experience trying and litigating patent, trademark, unfair competition, and trade secret cases in a broad range of technologies, including pharmaceuticals, medical devices, consumer products, and mechanical devices.

Janet has extensive experience in pharmaceutical (Hatch-Waxman) patent  litigation and has acted as trial counsel in patent, trade secret, and antitrust actions involving pharmaceuticals with annual  billion-dollar sales. She is also experienced in trademark prosecution, inter partes proceedings, false advertising,  and copyright litigation.

Janet is currently the Vice-Chair of the Food, Drug,  and Cosmetic Section of the New York State Bar Association. From 2010 to 2013, she was the chair of the Patents Committee of the Association of the Bar of the City of New York. On behalf of the Patents Committee, she authored an amicus brief to the Federal Circuit in its en banc consideration of claim construction in Lighting Ballast Control LLC v. Philips Electronics North America Corporation, which was favorably quoted by the four justices in dissent.

Janet’s accomplishments include:

  • Successfully defended the  company against the  charge of patent fraud, leading to the  withdrawal of the claim for inequitable conduct and favorable settlement on the eve of trial.
  • The successful assertion of patents on anti-depressant and ulcer medications with annual multi-billion dollar sales on behalf of the  pharmaceutical clients in Hatch Waxman bench trials, including obtaining a  preliminary injunction to halt generic competition.
  • Coordination of worldwide intellectual property protection with respect to pharmaceutical and consumer product patents.
  • Settled trademark infringement claim allowing the  luxury restaurant to use a third party’s incontestable mark without payment.

Representative Litigation Matters

Patent Litigation

  • A successful defense of fraud claim led to a withdrawal by defendants of inequitable conduct counterclaim and favorable settlement Trinity Industries v. Spig Industry and Selco (E.D.Va.)
  • Lead patent counsel for sheet pile manufacturer asserting patents on sheet steel pile connectors against Arcelor Mittal and its subsidiary Skyline Steel. PilePro LLC v. Skyline Steel LLC and Arcelor Mittal (E.D. Texas)
  • Trial counsel for a  branded company in Hatch-Waxman litigation against generic drug companies regarding anti-depressant. Obtained preliminary injunction against the  generic company after  trialGlaxo Wellcome v. Eon Labs Mfg. Inc. (S.D.N.Y.)
  • Trial counsel for Glaxo in Hatch-Waxman litigation against generic drug company regarding anti-ulcer medication resulting in judgment for patentee that patent was valid and infringed. Glaxo Inc. v. Novopharm Ltd. (E.D.N.Y.)
  • Trial counsel for a  branded company in Hatch-Waxman litigation against the  generic pharmaceutical company regarding antibiotic. Glaxo Wellcome Inc. v. Ranbaxy Labs, Inc. (D.N.J.)
  • Represented branded company in Hatch-Waxman litigation against ANDA filer regarding anti-depressant through appeal and remand. Glaxo Wellcome Inc. v. Andrx Pharm, Inc. (S.D. Fla.)
  • Represented branded pharmaceutical company in Hatch-Waxman litigation regarding anti-depressant. Glaxo Wellcome Inc. v. Watson Labs. Inc. (S.D. Ohio).
  • Represented Ethicon in section 146 action involving sutures on appeal from  patent office. American Cyanamid v. Ethicon Inc. (D.N.J.)

Trademark and Lanham Act Litigation

  • Defense of trademark infringement action against local nightclub seeking to stop United States franchise of top global nightclub brand, preliminary injunction motion withdrawn. Club Space Mgt. Inc. v. Eden Ballroom and Space IBZ Planet SL (S.D.N.Y.)
  • Represented individual plaintiff enforcing trademark in  infringement action against financial services company. Watson v. American Express Travel Related Services (S.D.N.Y.)
  • Defended consumer product company against  claim by  competitor of false advertising under the Lanham Act. Church & Dwight v. Airwick Industries (S.D.N.Y.)

Trade Secret Litigation

  • Defeated attempted misappropriation of PilePro’s trade secrets relating to pricing and purchasing sheet pile retaining wall systems software PilePro v. SP Network LLC (Eighth Judicial District, Clark County, Nevada)
  • Represented former franchisee in unfair competition litigation. Defeated summary judgment on  promissory note and obtained  favorable settlement. Lavazza Premium Coffees v. Oro Co. and EPC Holdings (Supreme Court, New York County).
  • Represented branded pharmaceutical company in action against  generic company for theft of trade secrets. Glaxo Wellcome v. Chelsea Labs. (S.D. Ohio)
  • Defense of gas turbine company against claims of misappropriation of trade secrets. GE Co. v. Schenectady Turbine Service (N.D.N.Y.)

Copyright Litigation

  • Represented  Fisher Price in bench trial defeating  claim of copyright infringement. Ed Kaplan Assoc. v. Fisher Price (S.D.N.Y.)




Reviews

VS
Victoria S.

Very good synopsis.

EB
Earl B.

useful content

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