CONTACTS

Corporate/Transactional

Robert L. Waldman
Chair – Business Division
lhgesner@Venable.com
+1 410.244.7499

Government Affairs/Regulatory

Jeff Knowles
Co-Chair – Government Division
jdknowles@Venable.com
+1 202.344.4860

Larry Norton
Co-Chair – Government Division
lhnorton@Venable.com 
+1 202.344.4541

Litigation

Geoff Garinther
Chair – Litigation Division
grgarinther@Venable.com
+1 202.344.4919
+1 410.494.6212

Intellectual Property

Justin E. Pierce
Chair – Intellectual Property Division

+1 202.344.4442

 

Representative Global Intellectual Property Matters



Multiple Areas of Practice

  • Venable has been instrumental in assisting technology companies such as Gidel Technological in Israel, Algoriddim from Germany, Liechti in Switzerland, and ISONIC Medical in France, with regard to their various technological needs, licensing, contract negotiations and IP protection.

Intellectual Property Litigation

  • Along with co-counsel, Venable represents several Taiwanese semiconductor clients in an investigation involving patents relating to certain small format Ball Grid Array (“BGA”) packages that incorporate Dynamic Random Access Memory (“DRAM”) chips.  The Complainant, a patent-holding company, is claiming infringement of a number of patents relating to a type of enclosure for semiconductor chips.
  • In an International Trade Commission lawsuit involving two patents related to smallpox vaccines, we represented a biotechnology company and reached a favorable federal court decision rejecting a claim of theft of trade secrets and misappropriation, leading to a global resolution of the dispute.
  • At the International Trade Commission, the Administrative Law Judge invalidated the patent held by a plaintiff who sought to use it to stop our client’s business. The ITC found the patent invalid on each of the bases of anticipation: obviousness, inventorship and lack of enablement and written description. The matter involved next-generation smallpox vaccines developed and sold pursuant to the U.S. Government’s BioShield anti-terrorism program.
  • We represented a telecommunications company in a patent suit involving routers, switches and hubs used in telecommunications equipment, and represented an agricultural vehicle manufacturer in an investigation involving alleged trademark infringement by certain agricultural vehicles.
  • For a foreign company that develops and sells dietary supplements, we are defending a patent infringement case, and defending class action lawsuits claiming that labeling statements were false and misleading.
  • We defended a subsidiary of the world’s largest research-based pharmaceutical company regarding an alleged infringement of patents concerning Hepatitis C virus (HCV) technology, brought by a multinational biotechnology firm.

Patent Prosecution and Portfolio Management

  • We have prepared and prosecuted tens of thousands of patents worldwide for U.S. and international clients and we advise clients ranging from emerging technology companies, to universities, to large multinational organizations with complex patent portfolios that span the globe.
  • Venable represents The University of California, Los Angeles (“UCLA”) for a wide variety of patent prosecution matters, including extensive global patent portfolios for UCLA that are licensed to companies for commercialization. We handle hundreds of patent applications for UCLA.  One example is a patent portfolio licensed to a pharmaceutical company in which we recently obtained three U.S. and numerous foreign patents covering a cancer drug in Phase III clinical trials, generating significant milestone payments to UCLA.  Another example is a portfolio licensed to a solar energy company, in which we recently obtained three U.S. patents and foreign patents relating to plastic solar panels useful in windows and other applications.
  • Venable handles all global patent and trademark prosecution and counseling for a multinational pharmaceutical company, along with regulatory advice.  We obtained several U.S. and foreign patents for an improved topical pharmaceutical formulation, managed a diverse global portfolio of patents and trademarks for spill-resistant oral formulations, and handled several patent litigations for the company.

Trademark/Copyright

  • Venable attorneys counsel clients on copyright infringement issues (nationally and internationally), assignment of rights issues, work-for-hire agreements, ownership disputes, branding issues, licensing and IP audits. Venable attorneys have recovered hundreds of domain names around the world through inter partes proceedings.
  • Venable has represented European media organizations such as Agence France Presse, the oldest and one of the largest wire services in the world, and ANSA, Italy’s premiere wire service, in various matters regarding copyright, licensing, infringements, rights of privacy, publicity and First Amendment issues.
  • Venable has been active in representing European artists and artistic entities in licensing and protecting their works from counterfeiting in the United States such as Graphic International in Germany, and the Art Group and Felix Rosenstiel’s Widow and Sons, both in the United Kingdom.
  • We successfully stopped the sale of infringing books by Carlton Books, a large U.K. publisher, resulting in a six-figure settlement and permanent injunction in the United States for American Mensa.
  • Venable, working with local European counsel, won an important appeal for a Europe-based mobile phone manufacturer in its bid to register a rare motion trademark in the European Community.  The nature of our client's mark presented a particular challenge, since the mark is complex and best captured by video. Local rules require motion marks to be represented solely by a single page of freeze frames and a written description, not a video. The trademark office refused to register the mark based on the argument that the precise motion was not clear from these items. Venable, with European counsel, persuaded the board of appeal to overturn this refusal by filing, among other things, a flipbook and key dramatizing the motion's progression. The board adopted our client's position that the trademark office must take reasonable steps to imagine how a motion mark progresses based on the original freeze frames and written description provided, not simply take a clinical view of them.

Technology Transactions

  • For a biotechnology company, we handled international patent licensing, joint development, manufacturing, supply and commercialization agreements for international clinical trials for liver cancer therapies.
  • We represented the world's leading provider of transformational medical technologies in its acquisition, commercialization and global distribution of state-of-the art medical imaging, diagnostics and patient monitoring products, including a strategic alliance to develop and distribute next generation home healthcare products.