Key Contacts

Jeffrey L. Costellia, Partner
Deputy Chair, Litigation Department
Leader, Intellectual Property Practice
jcostellia@nixonpeabody.com
202-585-8207

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Rankings & Honors

Legal 500—Nixon Peabody Ranked in Trade Secrets Category
U.S. News/Best Lawyers “Best Law Firms”
IAM Patent 1000
BTI Litigation Outlook 2013
- • “Most Feared Law Firms”—Honor Roll
- • Strong Performance—IP Litigation, Commercial Litigation, Product Liability Litigation
Managing IP Magazine
- • Ranked in the top 15 among all U.S. law firms for securing “the highest-quality patents” for clients across all industries
- • Recognized as a national leader in the patent category for bio life sciences

Intellectual Property

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INTELLECTUAL PROPERTY

There are few assets more valuable to a company or organization than its intellectual property. The innovations behind one’s intellectual property portfolio drive the creations, products, and processes on which profits and reputations are built. In today’s competitive markets, companies cannot afford costly interruptions and disputes over their intellectual property portfolios so ensuring that their innovations are properly protected is critical. The attorneys in Nixon Peabody’s Intellectual Property (IP) practice help clients protect and exploit the full value of their intellectual property.

Our clients include U.S. and overseas companies of every size, from start-up to the Fortune 500; entrepreneurs; leading academic and research institutions; and individual inventors, in both cutting-edge and established technologies. Our success on their behalf has placed us among the nation’s top firms in the areas of litigation, patents, and trademarks.

We offer comprehensive intellectual property services, bringing sharp legal skills, deep knowledge of technology, and excellent business judgment to every matter. Our aim is to offer consistently exceptional service and maximize our clients’ competitive advantages while minimizing their risks. We help our clients create, obtain, and protect, as well as institute strategies to manage, their intellectual property portfolios.

Intellectual property services

Patent, trademark, copyright, unfair competition, and trade secret litigation
Technology commercialization and licensing
Strategic patent portfolio management services
Patent procurement
Patent interference proceedings and new post grant actions before the U.S. Patent and Trademark Office
Comprehensive brand management services, including brand selection, searching, counseling, registration, and enforcement
Infringement avoidance counseling
Intellectual property due diligence
Alternative dispute resolution, including arbitration and mediation.

International IP protection

In addition to the services we provide in the United States, Nixon Peabody’s International Intellectual Property team regularly seeks intellectual property protection in Europe, Asia, and other areas of the world on behalf of our clients. We are assisted by an extensive, well-established network of relationships with foreign law firms and legal experts. Nixon Peabody’s International Intellectual Property team has established personal, longstanding relationships with companies and attorneys throughout the world, particularly Japan, Korea, China, Hong Kong, Singapore, India, Australia, Canada, Brazil, United Kingdom, Germany, Spain, France, The Netherlands, and South Africa that help them understand the different local economic and legal motivations that drive companies from each of these jurisdictions. This understanding allows us to provide more personalized service to fit each company’s legal needs.

Experienced professionals

Our attorneys are active in trade associations serving client industries, and we are recognized legal authorities in many of them. Our patent attorneys and agents have diverse technical backgrounds, and hold degrees in chemical engineering, biotechnology, optical engineering, microelectronics, mechanical engineering, electrical engineering, and computer science. Many members of our group have substantial experience as U.S. patent or trademark examiners or as practicing engineers in the commercial sector.

Thought Leadership/Alerts

Nixon Peabody obtains dismissal of videogame trademark claims based on First Amendment defense
Intellectual Property Alert | May 13, 2013

Supreme Court rules that the "first sale" doctrine applies to the sale in the United States of a work lawfully obtained abroad
Intellectual Property Alert | April 4, 2013

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Nike succeeds in dodging alleged trademark infringer's counterclaim for invalidity
Intellectual Property Alert | January 11, 2013

3D printing: new "disruptive technology" raises serious intellectual property questions
Intellectual Property Alert | December 3, 2012

Victory of OEM product manufacturer in Guangdong courts sheds additional light on OEM trademark infringement litigation
Intellectual Property Alert | November 16, 2012

Recent complaint highlights role of copyright in protecting health care information, protocols, and products
Intellectual Property Alert | November 2, 2012

Personalized Medicine Patent Watch
Intellectual Property Alert | October 31, 2012

President Obama signs bill clarifying applicability of federal registration defense in dilution actions
Intellectual Property Alert | October 11, 2012

Federal circuit holds an assertion of induced infringement does not require proof of underlying direct infringement by a single party
Intellectual Property Alert | September 10, 2012

Although the statute of limitations had not yet run, Ninth Circuit affirms dismissal of Raging Bull copyright case on laches grounds
Intellectual Property Alert | September 6, 2012

Fashion designer Christian Louboutin "wins" and "loses" after the Second Circuit partially reverses trademark ruling
Intellectual Property Alert | September 6, 2012

Ninth Circuit rejects fair use defense in reversing decision in favor of gossip magazine's publication of private celebrity photographs
Intellectual Property Alert | August 15, 2012

Court refuses to enjoin provider of service allowing users to access "live" copyrighted television broadcasts over the internet
Intellectual Property Alert | July 19, 2012

The developing legacy of Prometheus: new interim guidelines for patent eligible subject matter
Intellectual Property Alert | July 16, 2012

How abstract is too abstract for a patent?
Intellectual Property Alert | July 10, 2012

Personalized Medicine Patent Watch Update
Intellectual Property Alert | July 9, 2012

Federal Circuit holds the objective prong of the willful infringement analysis is a question of law to be reviewed de novo
Intellectual Property Alert | June 26, 2012

Webinar Recording: Marketing Your Products and Services Without Losing Your IP
Originally recorded June 14, 2012 | June 19, 2012

South Park creators prevail in copyright infringement action based on fair use defense
Intellectual Property Alert | June 7, 2012

Omega appeals a finding of copyright misuse to the Ninth Circuit
Intellectual Property Alert | June 6, 2012

Former Village People lead singer wins right to terminate copyright grants
Intellectual Property Alert | May 10, 2012

Supreme Court unanimously holds § 145 to allow admission of new evidence and de novo review of BPAI decisions by the District of Columbia
Intellectual Property Alert | April 23, 2012

The U.S. Supreme Court agrees to hear arguments on whether the "first sale" doctrine applies to works manufactured outside of the United States
Intellectual Property Alert | April 20, 2012

Fourth Circuit rejects use of functionality doctrine as a defense to trademark infringement based on alleged infringer's use of the mark
Intellectual Property Alert | April 18, 2012

The Ninth Circuit limits the Computer Fraud and Abuse Act
Intellectual Property Alert | April 17, 2012

Webinar Recording: Trade Secret Protection in the Baseball Analytics Field
Originally recorded April 9, 2012 | April 11, 2012

Webinar Recording: Surviving Mayo v. Prometheus
Originally recorded April 10, 2012 | April 11, 2012

ANYWEAR or ANYWEAR? Trademark Trial and Appeal Board allows registration of mark that would otherwise be confusingly similar to senior user's registered mark due to applicant's prior registration
Intellectual Property Alert | April 10, 2012

Second Circuit construes key language of the Section 512(c) "safe harbor" provision of the Digital Millennium Copyright Act
Intellectual Property Alert | April 9, 2012

Second Circuit affirms award of attorney's fees where a trademark owner elected to recover statutory damages in a counterfeiting case
Intellectual Property Alert | April 2, 2012

Fifth Circuit allows claims asserting abuse of the Anticybersquatting Consumer Protection Act ("ACPA") by a trademark owner
Intellectual Property Alert | March 27, 2012

Divided en banc Federal Circuit: only new or amended claims in reexamination give rise to intervening rights
Intellectual Property Alert | March 19, 2012

Federal Circuit holds res judicata bars new action after reexam, but not infringing actions or device modifications occurring after the previous complaint
Intellectual Property Alert | March 16, 2012

Federal Circuit avoids "murky morass" of Section 101 jurisprudence, proceeds directly to Sections 102 and 103
Intellectual Property Alert | March 7, 2012

Are e-books a "new use" for purposes of pre-digital era publishing contracts?
Intellectual Property Alert | February 29, 2012

Claims to investment tool too "abstract" to be patent eligible under 35 USC § 101
Intellectual Property Alert | February 28, 2012

Crafting personalized medicine IP protection—walking the thin line between patent eligibility and enforcement
Intellectual Property Alert | January 10, 2012

USPTO announces: fast-track patent processing available after the filing of an RCE
Intellectual Property Alert | December 21, 2011

Federal Circuit grants mandamus, transfers patent case against Delaware company out of Delaware
Intellectual Property Alert | December 9, 2011

First true induced pluripotent stem cell (iPSC) patent issued by the USPTO
Intellectual Property Alert | November 2, 2011

Federal Circuit affirms International Trade Commission order in trade secrets case based on misappropriation of trade secrets in China
Trade Secrets Alert | October 14, 2011

Webinar Recording: Trade Secrets: Your Secret Weapon Under Patent Reform
October 13, 2011

New Legislation Introduced to Establish Federal Cause of Action for Trade Secrets Theft
Trade Secrets Alert | October 11, 2011

U.S. Supreme Court to decide important copyright case involving foreign works in the public domain
Intellectual Property Alert | October 5, 2011

Ninth Circuit Affirms Judgment for Apple in Software Copyright Infringement Case; Rejects Defendant's "Copyright Misuse" Defense
Intellectual Property Alert | October 4, 2011

Webinar Recording: Top 5 Things You Need to Know about Patent Reform
September 30, 2011

First Circuit Reverses Order Reducing Damages Award in Music File-sharing Copyright Infringement Case; Avoids Constitutional Questions
Intellectual Property Alert | September 26, 2011

Joint Infringement—Potential Defense Available to Companies Accused of Patent Infringement
Intellectual Property Alert | September 23, 2011

Trade secret assets: prior user rights expanded under the America Invents Act
Trade Secrets Alert | September 15, 2011

Ninth Circuit Gives Partial Victory to Louis Vuitton in Contributory Copyright and Trademark Infringement Case
Intellectual Property Alert | September 15, 2011

Patent Reform Primer: Changes to the Grace Period
Intellectual Property Alert | September 15, 2011

Federal Circuit reduces patentable subject matter for insurance industry patents
Intellectual Property Alert | September 14, 2011

The Ninth Circuit Tries to Clarify the Murky Law of Copyright Preemption
August 26, 2011

Ninth Circuit clarifies jurisdiction rules in intellectual property cases brought against out-of-state companies operating on the Internet
Intellectual Property Alert | August 16, 2011

Seeing red: NY court refuses to enforce single color trademark for shoe design
Intellectual Property Alert | August 15, 2011

Preamble Defines Field of Invention in Foreseeable Alternative Analysis
August 15, 2011

Winning in the Court of Public Opinion: Brand Protection in High Exposure Litigation
August 12, 2011

The export control implications of cloud computing
Export Controls Alert | August 4, 2011

First Induced Pluripotent Stem Cell (iPSC) Patent Approved by the EPO
Intellectual Property Alert | August 2, 2011

Federal Circuit issues opinion in ACLU v. Myriad
Intellectual Property Alert | July 29, 2011

Patent reform primer
Changes to the grace period
Intellectual Property Alert | July 14, 2011

Eeny, Meeny, Miny, MOVE!—Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options
July 1, 2011

Webinar Recording: Hot Topics in IP Law
June 27, 2011

New .XXX domain name tentatively scheduled to launch September 7, 2011 — clients are advised they may be able to block certain domains to prevent future use
Intellectual Property Alert | June 21, 2011

U.S. PTO Restriction Practice: Personalized medicine claims with SNPs
Intellectual Property Alert | June 13, 2011

Employers (particularly universities): check your invention assignment agreements!
Intellectual Property Alert | June 7, 2011

Webinar Recording: 2011: The Stem Cell Odyssey Continues
June 3, 2011

Therasense decision highlights specific intent requirement for inequitable conduct determinations
Intellectual Property Alert | June 1, 2011

Follow-on Biologics legislation has immediate impact on patent holders
Intellectual Property Alert | May 25, 2011

Protecting personalized medicine innovation in China and India: Are diagnostic methods patentable?
Intellectual Property Alert | May 17, 2011

False advertising decision likely to affect scope of injunctions and jury verdict forms
Advertising Law Alert | April 22, 2011

A patent in 12 months? But it will cost you!
Intellectual Property Alert | April 6, 2011

Federal Circuit hears oral argument on Myriad ”gene patents”
Intellectual Property Alert | April 4, 2011

The Federal Circuit holds that the heightened pleading standards of Rule 9(b) apply to false patent marking claims, finding general allegations of “sophistication” and “knowledge” to be insufficient to state a claim under Section 292
Intellectual Property Alert | March 15, 2011

Webinar Recording: Brand Protection 2.0: Guarding Against False or Misleading Advertising Claims
February 14, 2011

Avoiding Threats to Your Brand in the Age of New Media
January 28, 2011

Webinar Recording: Trademark Enforcement 2.0: Policing Your Marks in the Digital Age
November 24, 2010

Restrictions on the beneficial use of software
Intellectual Property Alert | November 16, 2010

The Essentials to Protecting Corporate IP
November 5, 2010

Webinar Recording: Social Media Part II: Best Practices in Protecting Your Brand in the New Media
September 20, 2010

In Stauffer decision, Federal Circuit finds that qui tam relator has standing to pursue false marking claims under Patent Act
Intellectual Property Alert | August 31, 2010

Webinar Recording: Bilski v. Kappos: What Does it Mean for Biotech?
July 22, 2010

According to the Patent Office, the machine-or-transformation test is alive and well
Intellectual Property Alert | July 2, 2010

Supreme Court affirms Federal Circuit’s judgment that risk hedging claims not patent eligible; rejects “machine-or-transformation” test as sole test of patent eligibility of process claims
Intellectual Property Alert | June 28, 2010

In Solo Cup decision, Federal Circuit affirms district court’s ruling on burden of proof for intent to deceive and false marking with expired patents, and confirms the definition of “offenses”
Intellectual Property Alert | June 11, 2010

Executing machine-readable object code does not trigger liability for trade secret misappropriation of the source code as a matter of law
Trade Secrets Alert | June 1, 2010

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Press

Nixon Peabody Obtains Dismissal of Videogame Trademark Claims Based on First Amendment Defense
May 15, 2013

Crain's Chicago Business Names Three Nixon Peabody Clients Among the Most Innovative Companies
May 8, 2013

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Chambers Recognizes Leading Nixon Peabody Attorneys and Practices
March 14, 2013

Nixon Peabody Elects 13 Attorneys to Partnership
January 14, 2013

New Partner Seth Levy and Three Associates Join Los Angeles Office
May 7, 2012

Nixon Peabody Expands Presence in China Forming Strategic Alliance with Hylands Law Firm
March 13, 2012

Intellectual Property Lawyer and Business Leader to Head Nixon Peabody's Chicago Office
January 23, 2012

Nixon Peabody Advises in $20M Med Device Financing
October 21, 2011

Nixon Peabody Litigation Attorneys Receive High Marks
October 18, 2011

Merck Serono Acquires Multiple Sclerosis Drug
October 13, 2011

Nixon Peabody IP Litigator Coauthors Guide on Developing & Critiquing Trademark Surveys
October 6, 2011

Nixon Peabody Partner Joins Personalized Medicine Coalition Policymaking Body
September 27, 2011

IP Team Joins Nixon Peabody, Growing Firm's Intellectual Property, Patent Litigation, and Life Sciences Practices
September 12, 2011

Chambers Gives High Marks to Nixon Peabody LLP; 47 Attorneys Recognized As Leaders
June 20, 2011

Nixon Peabody Welcomes Trademark and Patent Attorney; Counsel Carol Peters Joins Firm’s Boston Office
June 13, 2011

Nixon Peabody Partner Named President of Chicago Intellectual Property Association; Janet Garetto to Lead 2011-2012 New Officers and Board Members
May 20, 2011

Nixon Peabody Expands Intellectual Property Practice on West Coast; New San Francisco Partner Marlene Williams Focuses on Domestic and International Trademark Protection and Enforcement
May 12, 2011

Nixon Peabody Names New Leadership for Media, Entertainment, and Communication Team; Parisian Partner Arnaud de Senilhes Will Lead Group of Attorneys
May 10, 2011

Cleantech Company Launches State-Of-The-Art System; Nixon Peabody Serves as R3 Fusion’s Legal Counsel
March 31, 2011

Nixon Peabody Taps New Intellectual Property Leaders; Experienced IP Partners to Lead Litigation and Patents-Focused Practice
March 15, 2011

Court Reaches Favorable Conclusion for Nixon Peabody Client LaserMax in Patent Infringement Litigation
February 7, 2011

Nixon Peabody Elects 12 Attorneys to Partnership; Female Partners Make Up More than 40% of 2011 Class
February 1, 2011

Nixon Peabody Successfully Defends Insurance Company Unitrin Direct In Copyright Case; Seventh Circuit Court of Appeals Upholds District Court Ruling
January 24, 2011

Intellectual Property Association Taps Nixon Peabody Partner for Leadership Role; Attorney R. Mark Halligan Assumes Vice President Role
November 15, 2010

Nixon Peabody Partner Russ Genet to Co-Lead Firm’s Patents Practice
August 30, 2010

Nixon Peabody Announces Leadership of Trademark Prosecution Practice; Washington, DC, Partner David May to Lead Group
August 25, 2010

Nixon Peabody Advises in Exclusive Cancer Drug Licensing Agreement
June 28, 2010

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Media Clips

Attorneys, Tech Transfer Pros Offer Their Take on How to Address New Rules under AIA
Technology Transfer Tactics | March 1, 2013
Boston partner and Patents practice co-leader Ron Eisenstein discusses new key provisions of the America Invents Act (AIA).
Lawyers See IP Protection Help in U.S. Trade-Secrets Focus
Reuters | February 22, 2013
Chicago Intellectual Property Litigation partner Mark Halligan discusses efforts to combat trade-secret theft.
Former Kodak Trademark Counsel Stimson Joins Nixon Peabody
Rochester Business Journal | January 16, 2013
This article highlights the arrival of Rochester Brands & Creations counsel David Stimson, former chief trademark counsel of the Eastman Kodak Company.

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On the Move
Daily Record | January 15, 2013
This coverage notes that Rochester Brands & Creations attorney Kristen Mollnow Walsh has been elected to the firm’s partnership.
Top 40 Angelenos to Know in Intellectual Property Law
Los Angeles Business Journal | October 29, 2012
Los Angeles Patents partner Seth Levy is profiled in this special section highlighting “Who’s Who” in intellectual property in the region.
EXTRA! EXTRA! En Banc Federal Circuit Overrules Its Precedent on Induced Infringement
IP Today | October 16, 2012
Authored by Chicago intellectual property partner Paul Kitch and Chicago intellectual property litigation associate Jason Kunze, this article discusses the law concerning induced infringement of patented methods. Click here to download the article.
Sobering Times in IP Law
Boston Business Journal | September 28, 2012
Boston partner and leader of the firm’s Brands & Creations practice Jason Kravitz provides third-party commentary in this article discussing Massachusetts’ food and beverage industry’s efforts to manage the complexities of intellectual property law.
IP Protection May Promote Additional Franchise Growth In Africa
Franchising Business & Law Alert | September 1, 2012
This article, authored by Washington, DC, partner Kendal Tyre, discusses the necessary developments in the protection of an investor’s intellectual property that are vital for continued foreign investment in Africa.
Federal Circuit Again Upholds Myriad's BRCA Gene Claims
BioWorld Today | August 17, 2012
Washington, DC, Patents counsel Mary Webster provides commentary in this article focused on the decision by the U.S. Court of Appeals for the Federal Circuit regarding the validity of Myriad Genetics Inc.’s claims for its BRACAnalysis breast cancer gene test.
Washington Roundup: Federal Circuit Broadens Hatch-Waxman Safe Harbor
BioWorld Today | August 7, 2012
This article recaps a recent U.S. Court of Appeals decision expanding the safe harbor for generic drug makers. Washington, DC, patents counsel Mary Webster is quoted discussing how expanding the safe harbor will affect patent claims.
Lake Tahoe May Prepare Winter Olympic Bid for 2026
San Francisco Business Times | August 6, 2012
This article focuses on Lake Tahoe’s potential bid for the 2026 Winter Olympic Games. San Francisco brands and creations partner Rob Weikert is mentioned as a board member of the Lake Tahoe Winter Games Exploratory Committee.
Seventh Circuit Ruling Clears Website of Infringement
Chicago Daily Law Bulletin | August 3, 2012
This article focuses on a ruling from the 7th U.S. Circuit Court of Appeals indicating that a website that provides copyrighted videos without consent does not contribute to copyright infringement. Chicago intellectual property partner Mark Halligan provides third party commentary.
Expert Witness: Lawyers Put Their Legal Skills to Use in Creative Way
Chicago Lawyer | August 1, 2012
Chicago intellectual property litigation partner Mark Halligan discusses how attorneys and law professors serve as consultants to strengthen cases before trial and as experts to do reports, give depositions, and provide testimony if a case goes to trial.
Federal Circuit Revisits Myriad Breast Cancer Gene Claims
BioWorld Today | July 23, 2012
This article focuses on the Association for Molecular Pathology v. Myriad Genetics Inc. case and arguments in the Federal Circuit about the patentability of isolated DNA. Washington, DC, Patents counsel Mary Webster provides commentary.
Protecting Intellectual Property Allows Growth
Long Island Business News | July 13, 2012
Long Island partner Allan Cohen provides commentary in this special “Growth Strategies” section addressing important factors for businesses to consider as they look to grow.
Sabermetrics Sees Recent Scrutiny
Chicago Daily Law Bulletin | May 30, 2012
This contributed article, authored by Chicago Intellectual Property Litigation partner Mark Halligan and San Francisco Labor & Employment associate Matt Frankel, discusses trade secrets in baseball—specifically “sabermetrics,” the advanced statistical analysis for evaluating players.
Business of Law: Nixon Peabody Expands IP Practice in L.A. with Davis Wright Team
Bloomberg News | May 8, 2012
This article highlights the arrival of Los Angeles Patents and Life Sciences partner Seth Levy and his team.
Guest Article: Good Brands Die Hard
Mergers & Acquisitions | April 13, 2012
San Francisco Brands & Creations partner Rob Weikert authored this column on how and why companies must be vigilant and deliberative when they decide to discontinue use of trademarks.
Nixon Peabody LLP Meets KenJiva’s IP Challenge
The Law Project | April 12, 2012
Chicago Patents counsel Wayne Tang is featured in this story discussing an intellectual property matter faced by the CEO of KenJiva Energy Systems, a startup energy management firm. Wayne provided legal counsel pro bono through the organization the Law Project.
Spotlight: Expanding Nixon Peabody’s Chicago office
Crain’s Chicago Business | March 26, 2012
This column profiles Chicago office managing partner Janet Garetto. Ms. Garetto’s and the firm’s plans for the office are highlighted.
Fallout from Court Decision to Have Long-Term Impact
BioWorld Today | March 21, 2012
This article focuses on the Supreme Court ruling determining that Prometheus Laboratories Inc.’s process claims were not patent eligible. Boston partner and co-leader of the firm’s Patents practice group Ron Eisenstein provides third-party commentary about what the ruling means for the biopharma industry and personalized medicine.
Case Study: Fort Properties V. American Master Lease
Law 360 | March 13, 2012
This “Expert Analysis” column, authored by Chicago Intellectual Pproperty Litigation partner David McKone, discusses the Federal Circuit’s decision upholding a district court ruling invalidating process patent claims as being too abstract and what this decision means in the future.
Start-Up Biotechs May Face Rock-Hard Patent Quandary
BioWorld Today | March 12, 2012
This article notes that small biotechs, universities, and other holders of early upstream patents could find themselves caught between the new first-to-file patent system and the ever tougher patent standard being set by the Court of Appeals for the Federal Circuit. Washington, DC, Patents counsel Mary Webster provides commentary.
U.S. Tries Cracking Down on Economic Espionage
Chicago Daily Law Bulletin | March 9, 2012
Chicago Intellectual Property Litigation partner Mark Halligan provides commentary about the recent surge in trade secrets theft cases, especially those involving possible espionage.
Increased Biopharma Patent Valuation Fuels Litigation
BioWorld Insight | January 30, 2012
This article notes that as patents are becoming increasing more important for biopharma organizations, patent litigation is also increasing and raising the patents’ values at the same time. Washington, DC, Patents counsel Mary Webster provides commentary.
Area Lawyers Gear Up For Fight Against Counterfeiters
Boston Business Journal | January 27, 2012
This feature article highlights Boston partner and leader of the firm’s Brands & Creations practice Jason Kravitz for the work he is doing protecting luxury brands, such as Shamballa Jewels, against counterfeiters and knockoffs.
Garetto Plans to Lead Nixon Peabody’s Chicago Office
Chicago Daily Law Bulletin | January 27, 2012
This feature story profiles new Chicago office managing partner Janet Garetto and highlights her vision for the office and outlook on the industry.
Defensive ESI Strategies in Trade Secret Misappropriation Litigation
BNA's Patent, Trademark & Copyright Journal | January 6, 2012
This contributed article, authored by Chicago Intellectual Property Litigation partner Mark Halligan, notes that the battleground for trade secrets litigation now involves electronically stored information. Mr. Halligan offers strategies for preventing and defending such lawsuits.
TTOs Often Walk a Fine Line When Negotiating Rights to Improvements
Technology Transfer Tactics | January 1, 2012
This feature story discusses how technology transfer offices (TTOs) can effectively deal with the rights to intellectual property improvements in license agreements. Boston partner and co-leader of the firm’s Patents practice Ron Eisenstein provides commentary in the piece.
Legal Focus: Trade Secrets and Confidential Information
Lawyer Monthly Magazine | January 1, 2012
This featured Q&A profiles Chicago intellectual property litigation partner Mark Halligan and focuses on the issues surrounding trade secrets and confidential information. For the complete article, please click here.
Personalized Medicine Could Hinge on Supreme Court Ruling
BioWorld Today | December 8, 2011
This story notes that the future of personalized medicine rests in the hands of the U.S. Supreme Court as it mulls arguments in Mayo Collaborative Services v. Prometheus Laboratories Inc. Patents practice co-leader and member of the firm’s Life Sciences practice David Resnick provides third-party commentary.
Could Violators of Internet Agreements be Criminally Liable?
Daily Record | December 7, 2011
The feature story discusses the Department of Justice’s interpretation of the Computer Fraud and Abuse Act. Rochester brands & creations partner Peter Durant provides third-party commentary in the piece.
What TTOs Need to Know about Freedom-to-operate Analyses
Technology Transfer Tactics | December 1, 2011
Boston partner and co-leader of the firm’s Patents practice Ron Eisenstein provides commentary in this article abut what Technology Transfer Office (TTO) managers need to know about freedom to operate investigations.
Federal Bill Pits Creative Industries against the Internet in Piracy Fight
Chicago Daily Law Bulletin | November 29, 2011
This article discusses the Stop Online Piracy Act (SOAP) which is being debated in the U.S. House of Representatives and would give owners of intellectual property the power to quickly shut down "rogue websites" pirating their goods. Chicago intellectual property litigation and trade secrets partner Mark Halligan provides commentary.
Why the U.S. is so Different on Damages?
Managing Intellectual Property | November 1, 2011
This article, published as a sidebar, discusses how patent damages are calculated in the United States and how this compares to European countries. The piece is co-authored by Silicon Valley intellectual property partner Bob Krebs and San Francisco intellectual property partner Ron Lopez.
Search is on for Incentives to Spark Pediatric Drug R&D
BioWorld Financial Watch | October 17, 2011
This article discusses what is needed to increase development of drugs and biologics to treat rare pediatric diseases. Washington, DC, Patents counsel Mary Webster provides commentary.
Developments in Joint Infringement Law
Law 360 | September 28, 2011
This article, co-authored by Chicago patents partner Paul Kitch and Chicago Intellectual Property Litigation associate Jason Kunze, discusses the need for companies to be aware of the potential defenses available if accused of patent infringement.
Patent Bar Split on Impact of New Law
Massachusetts Lawyers Weekly | September 26, 2011
This article discusses the Leahy-Smith America Invents Act signed by President Obama and the reactions among attorneys across the state. Boston Intellectual Property Litigation partner John Gutkoski provides commentary.
Legal Briefs: Nixon Peabody Adds IP Lawyers
Boston Business Journal | September 16, 2011
The coverage highlights the arrival of Boston Intellectual Property Ligation partner John Gutkoski and counsel Michelle Flores, who joined the firm from Foley & Lardner LLP.
Nixon Peabody Expands Boston Team With Foley IP Attys
Law 360 | September 13, 2011
This feature article highlights the arrival of Boston Intellectual Property Litigation partner John Gutkoski and counsel Michelle Flores.
Career Tracker: Lawyers on the Move
Reuters | September 12, 2011
In this column noting legal industry moves and promotions, Boston Intellectual Property Litigation partner John Gutkoski and counsel Michelle Flores are included for their recent arrival at the firm.
Time for Reform: Inventors should get what they invent
Rochester Business Journal | September 1, 2011
This “Viewpoint” column, authored by Rochester intellectual property partner Rich Rochford, discusses the need for inventors to be protected by patent reform.
The Ninth Circuit Tries to Clarify the Murky Law of Copyright Preemption
BNA's Patent, Trademark & Copyright Journal | August 26, 2011
This contributed article, co-authored by San Francisco Intellectual Property partner Rob Weikert and San Francisco Commercial Litigation counsel John Chatowski, discusses a Ninth Circuit ruling on copyright preemption, which suggests that it might expand both the rights of authors and screenwriters and the liability of studies and publishers of copyrighted works.
Defining Jurisdiction—CollegeSource and Mavrix
Law 360 | August 25, 2011
This contributed article, co-authored by San Francisco Intellectual Property partner Rob Weikert and San Francisco Commercial Litigation counsel John Chatowski, discusses a pair of recent Ninth Circuit cases decisions that clarify the circumstances whereby an out-of-state company operating a website may be subject to personal jurisdiction in California intellectual property cases.
Biotech Sizes Up Federal Circuit Ruling in Myriad Case
BioWorld Today | August 2, 2011
This feature article discusses the U.S. Court of Appeals for the Federal Circuit ruling finding that isolated DNA and complementary DNA (cDNA) can be patented, but striking down method claims for a process that compares and analyzes nucleotide sequences because the method did not involve a “transformative” step. Washington, DC, patents counsel Mary Webster provides commentary.
Trademark Holders Eye New Domains
The Recorder | July 22, 2011
This feature article addresses the Internet Corporation for Assigned Names and Numbers’ (ICANN) plans to increase the number of domain name endings. San Francisco Brands & Creations partner Marlene Williams provides commentary.
Supreme Court Decision on Patent for HIV Test Unlikely to Set Major Precedent
Nature Medicine | July 1, 2011
This coverage discusses the U.S. Supreme Court’s decision holding that the Bayh-Dole Act does not automatically vest the ownership of inventions supported by federally funded research in the related institutions and does not trump inventors’ assignment agreements. Boston partner and patents practice co-leader David Resnick provides commentary in the piece.
Eeny, Meeny, Miny, MOVE!—Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options
BNAs Patent, Trademark & Copyright Journal | July 1, 2011
This article discusses the mechanisms available for accelerating examination. The article is coauthored by Chicago patents partner Paul Kitch.
Eeny, Meeny, Miny, MOVE!—Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options
BNAs Patent, Trademark & Copyright Journal | July 1, 2011
This article discusses the mechanisms available for accelerating examination. The article is coauthored by Washington, DC, patents counsel Mary Webster.
Eeny, Meeny, Miny, MOVE!—Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options
BNAs Patent, Trademark & Copyright Journal | July 1, 2011
This article discusses the mechanisms available for accelerating examination. The article is coauthored by Chicago intellectual property associate Jason Kunze.
Eeny, Meeny, Miny, MOVE!—Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options
BNAs Patent, Trademark & Copyright Journal | July 1, 2011
This article discusses the mechanisms available for accelerating examination. The article is coauthored by Silicon Valley intellectual property associate Christopher Ogden.
Human Capital: People on the Move
Boston Business Journal | June 13, 2011
In this column noting executive moves and promotions, Boston Brands & Creations counsel Carol Peters is included for her arrival at the firm.
High Court Limits Universities’ Claims to Intellectual Property
BioWorld Today | June 8, 2011
This feature story discusses the Supreme Court’s decision finding that, under the Bayh-Dole Act, federal funding of research does not automatically void an inventor’s patent rights in favor of the federal contractor. Washington, DC, patents counsel Mary Webster provides commentary.
Northern District Court Tabbed for Patent Pilot Program
Chicago Daily Law Bulletin | June 8, 2011
This feature article discusses the Northern District of Illinois’ plans to take part in a 10-year pilot project aimed at making district judges more proficient at handling patent cases. Chicago Intellectual Property partner Janet Garetto provides commentary.
Court Tightens Standards in Patent Fraud Cases
BioWorld Today | May 31, 2011
This coverage discusses an appellate court ruling on inequitable conduct and its impact on standards in patent fraud cases. Washington, DC, Patents counsel Mary Webster provides commentary.
Following Follow-On Biologics Legislation
Law 360 | May 31, 2011
This contributed article, authored by Boston Patents associate Shayne Huff, discusses the Biologics Price Competition and Innovation Act (BPCIA).
Garetto to Lead Chicago IP Law Association
Chicago Daily Law Bulletin | May 23, 2011
This feature story highlights Chicago Intellectual Property partner Janet Garetto, who has been named president of the Intellectual Property Law Association of Chicago (IPLAC).
Nixon Peabody Snags Knobbe Martens IP Pro
Law 360 | May 17, 2011
This feature story highlights the arrival of San Francisco Brands & Creations partner Marlene Williams.
Auctioning the Cure
Nature Medicine | May 5, 2011
This feature discusses the new model of companies attempting to sell medical patents at live auctions and explores if this model will work. Rochester Intellectual Property partner Peter Durant provides third-party commentary.
Closing Argument: Reflections on a ‘trade secret’ career
Chicago Lawyer | May 1, 2011
This column, authored by Chicago Intellectual Property partner Mark Halligan, discusses the evolution of trade secrets.
Solicitor General Offers Fed Circuit a “Magic Microscope”
BioWorld Today | April 5, 2011
This article discusses the Myriad Genetics, Inc., patent case.Washington, DC, Intellectual Property counsel Mary Webster is quoted in the article discussingwhat thiscould mean for DNA claimsin current patents.
People on the Move
Crain’s Chicago Business | March 24, 2011
In this column noting executive moves and promotions, Chicago partner Russ Genet is included for being named leader of the firm’s Intellectual Property Litigation practice.
Daily People on the Move
Washington Business Journal | March 23, 2011
In this column noting executive moves and promotions, Washington, DC, partner Jeff Costellia is included for being named deputy leader of the firm’s Litigation and Intellectual Property department.
Human Capital: People on the Move
Boston Business Journal | March 16, 2011
This news brief notes that Boston partner Ron Eisenstein has been named co-leader of the firm’s Patents practice.
Moves & Shakers
San Francisco Chronicle | March 13, 2011
In this column noting executive moves and promotions, it is highlighted that San Francisco partner Jennifer Kuenster has been named chair of the firm’s Litigation and Intellectual Property department.
Bill Would ‘Harmonize’ Patent Process with World
The Daily Record | March 9, 2011
This feature story discusses a proposed Senate bill that includes significant changes to the U.S. patent system. Rochester Patents partner Joe Noto provides commentary throughout the piece.
IP Lawyers Help Clients Protect Trade Secrets
Chicago Daily Law Bulletin | February 8, 2011
This feature article discusses the importance of protecting trade secrets in an increasingly information-based society. Chicago Intellectual Property partner Mark Halligan is quoted extensively throughout the piece.
Nixon Peabody Reaches Favorable Conclusion for LaserMax in Patent Infringement Litigation
IP Today | February 7, 2011
This coverage highlights a favorable conclusion of the patent infringement litigation involving LaserMax, a Rochester, NY–based innovator and manufacturer of high-quality laser sight systems. Rochester Intellectual Property partner Rich Rochford, lead counsel for LaserMax, is included in the piece.
Human Capital: People on the Move
Boston Business Journal | February 2, 2011
In this column noting Boston-area moves, promotions, and honors, Patents attorney Mark FitzGerald is included for being elected to the firm’s partnership.
New Council Draws Big Interest with Event
India New England | February 1, 2011
This feature article highlights the India-U.S. Trade & Investment Conference 2011. It discusses the featured panels and highlights the speakers, which included Boston patent specialist Srividya Subramanian.
Patent System Upgrade Efforts Under Debate
Chicago Daily Law Bulletin | January 28, 2011
This feature article discusses the current state of the patent system. Chicago Intellectual Property partner Paul Kitch is among the industry thought-leaders who provide commentary throughout the piece.
Patent System Upgrade Efforts Under Debate
Chicago Daily Law Bulletin | January 28, 2011
This feature article discusses the current state of the patent system. Chicago Intellectual Property partner Paul Kitch is among the industry thought-leaders who provide commentary throughout the piece.
New Standard Set for Damages in Patent Cases
Daily Record | January 20, 2011
The feature story notes that the “25 percent rule”—a method commonly used by the patent bar to calculate damages—has been abolished by the Federal Circuit Court. Rochester Intellectual Property partner Peter Durant is among the third-party sources providing commentary in the piece.
Federal Circuit Court strikes rule used by Rhode Island lawyers and judges to determine patent-case damages.
Massachusetts & Rhode Island Lawyers Weekly | January 17, 2011
The feature story notes that the “25 percent rule”—a method commonly used by the patent bar to calculate damages—has been abolished by the Federal Circuit Court. Boston Intellectual Property partner Maia Harris is among the third-party sources providing commentary in the piece.
In the News
Chicago Daily Law Bulletin | November 18, 2010
This news brief notes that Chicago Intellectual Property partner Mark Halligan has been named vice president of the International Association for the Protection of Intellectual Property group.
Firm Life
Chicago Lawyer | October 1, 2010
This column notes that Chicago Intellectual Property partner Russ Genet has been named co-lead of the firm’s Patents practice.
Brief Advise: Navigating Social Media Minefields
Counsel to Counsel | September 14, 2010
This column features commentary from industry thought-leaders discussing the rise of social media and how to protect the company at the same time. Chicago Intellectual Property partner Janet Garetto discusses intellectual property concerns that should be addressed, including incorporating trademark, copyright, and trade secret protection into social media policies.
How to Keep Intellectual Property Secrets Safe in China
Silicon Valley/San Jose Business Journal | September 3, 2010
This feature article discusses intellectual property law as it relates to U.S. businesses with a presence in China. Silicon Valley Intellectual Property partner Bob Krebs provides third-party commentary in the piece.
Appointments and Promotions
Washington Post | August 30, 2010
In this column highlighting Washington, DC–area executive moves and honors, it is noted that Washington, DC, Intellectual Property partner David May has been named to lead the firm’s Trademark Prosecution team.
In the News
Chicago Daily Law Bulletin | August 30, 2010
This news brief notes that Chicago Intellectual Property partner Russ Genet has been named to co-lead the firm’s patents practice.
Mattel Accused in Bratz Battle of Spying on Rivals
Reuters | August 17, 2010
The feature story discusses allegations against Mattel Inc. for allegedly spying on rival toy companies. Chicago Intellectual Property partner Mark Halligan is quoted in the piece addressing what is needed to prove trade secret theft.
Solo Cup Won’t Put Dent in False Marking Suits: Experts
Law 360 | June 16, 2010
This feature article discusses the Court of Appeals for the Federal Circuit decision in Pequignot v. Solo Cup. Boston Intellectual Property partner Maia Harris provides third-party commentary addressing how the ruling will impact how courts will look at the facts in future cases.
Sanofi, Albany Molecular Win Preliminary Injunction Blocking Dr. Reddy’s Generic Version of Allegra
Am Law Litigation Daily | June 15, 2010
This feature story discusses the recent District Court decision granting Albany Molecular Research Inc. and Sanofi-Aventis US LLC’s request for a preliminary injunction preventing the launch of a generic allergy drug. The article notes that Rochester Intellectual Property partner Andrew Zappia represents AMRI.
Borderline: Practicing across the Illinois line
Chicago Lawyer | June 1, 2010
This feature article discusses the benefits of being licensed to practice outside of Illinois. Chicago Intellectual Property partner Daniel Burnham, who is licensed in both Illinois and Missouri, is quoted in the piece.
Stem Cell Decision Could Rewrite Rules of Patentability
Nature Medicine | June 1, 2010
This feature article discusses an ongoing embryonic stems cells patent matter and a possible decision that could alter what is patentable in the life sciences industry. Boston Life Sciences partner and co-leader of the firm’s Patents practice David Resnick provides commentary in the piece.