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PATENT PROSECUTION

Our IP practice includes patent attorneys with advanced degrees and practical experience in most technical disciplines, including electrical, mechanical and chemical engineering, biotech, software and business methods, with experience levels to match any task.

We conduct patentability searches and analyses; prepare, file, prosecute and maintain U.S., PCT and foreign national patent applications; conduct infringement, validity and enforceability studies; provide expert witness advice and testimony; and handle complex infringement litigation. A complement of highly experienced support staff and state-of-the-art research and docketing technology enable us to provide cost-effective solutions for our clients.

The firm represented the defendant in a matter which involved numerous claims including patent, copyright and Digital Millennium Copyright Act (DMCA) infringement. The technology at issue involved complex computer data storage equipment. In this “bet the company” case, our attorneys handled numerous dispositive motions, including Markman arguments, as well as a preliminary injunction hearing and its appeal. An appeal resulted in two landmark decisions from the Federal Circuit Court of Appeals. These opinions are the only Court of Appeals decisions interpreting the Computer Maintenance Competition Assurance Act. These opinions, along with three others, are the leading opinions concerning the DMCA.

Snap-On Technologies, Inc. v. Hunter Engineering Company
A patent infringement action involving numerous patents covering automotive repair equipment. The primary focus of the case was a complex technology known as machine vision. The case settled favorably for our client after we argued the Markman hearing and summary judgment motions.

Crown Poly, Inc. v. Bunzl, USA, Inc.
Thompson Coburn defended Bunzl in a patent infringement case involving three patents relating to produce bags and produce bag dispensers, in which plaintiff sought damages in excess of $30 million. After a Markman hearing, the court entered summary
judgment in favor of our client.

Thompson Coburn represented the defendant in this patent infringement action over toolboxes brought in federal court in Cleveland. The case settled favorably for our client on the eve of trial after the court indicated that it intended to grant our summary judgment motion as to the plaintiff's damage claims because of its failure to mark the product.

We represented the plaintiff in a “bet the company” case against a subsidiary of a large Canadian conglomerate and a subsidiary of a large German conglomerate. The firm filed a complaint seeking a declaration that certain patents were invalid and/or not infringed. Our attorneys then asserted antitrust and Lanham Act claims. Defendants filed a counterclaim seeking damages for patent infringement. Thompson Coburn was involved in all stages of the litigation. The trial lasted six months, with a verdict rendered in favor of our client. The jury also found in favor of our client on the Lanham Act claim and awarded monetary damages. The Federal Circuit affirmed the patent invalidity and non-infringement verdicts.

We became involved in this "bet the company" case after the district court had entered summary judgment against our client, finding its patent invalid. The firm’s motion for reconsideration was granted, and the court then found in our client’s favor on the summary judgment motion, concluding that the patent was valid.

CIMA v. KV Pharmaceutical
We represented KV in this patent infringement case involving the composition of prescription drugs. With approximately $30 million at stake, our attorneys defended the preliminary injunction hearing which involved extensive Markman interpretation. The court entered an order in favor of our client on the motion for preliminary injunction. The decision in favor of our client included a Markman interpretation adopting the firm’s interpretation.

William Toy v. Scottrade, Inc.
Our attorneys represented Scottrade, Inc. in this federal patent infringement suit in which the plaintiff claimed that Scottrade infringed a U.S. patent through its online trade notification and stock alerting features. Our attorneys successfully moved to have the case bifurcated into two phases, the first on liability and invalidity issues, to be followed (if necessary) by damages and willfulness. They then prevailed on a key discovery dispute, resulting in an order from the court compelling the plaintiff to produce a series of documents strongly indicating that the patent was procured through inequitable conduct. Shortly after the plaintiff was forced to produce these key documents, the case settled on very favorable terms for Scottrade.

Datamize, LLC v. Scottrade, Inc., et al.
We represented Scottrade, Inc. in this federal patent infringement action filed in the Eastern District of Texas. Plaintiff alleged infringement of two patents by Scottrade. Scottrade asserted that the patents were invalid, based in part upon certain “prior art” publications or services/products. Our attorneys successfully settled the case shortly before trial.

The firm handled a case alleging patent infringement, tortious interference and antitrust violations and involved a mechanical patent for devices used to fill pill cards. In defense of the patent infringement claim, our attorneys submitted a summary judgment brief with a video comparing the patented invention with the alleged infringing device, showing the substantially different ways that they operated. We retained an expert from the packaging industry with a machine that predated the patent and utilized the inventive elements claimed in the patent. The case was settled for a dismissal of all claims and the plaintiff's payment of our client's sanctions award.

Kawasaki Heavy Indus. Ltd. v. Bombardier Recreational Prods. Inc.
Thompson Coburn represented Kawasaki Heavy industries and its subsidiaries in major patent litigation against Bombardier Recreational Products. Bombardier first filed suit against our client in the Middle District of Florida on several patents and demanded a substantial royalty payment. We successfully petitioned the USPTO to re-examine all of the patents in suit from the Florida litigation, resulting in a Court Order staying that litigation. Simultaneously, Kawasaki filed suit against Bombardier in the Eastern District of Texas on several Kawasaki patents, thus shifting the advantage to Kawasaki. The parties settled on terms favorable to Kawasaki.

Insituform Technologies, Inc. et al. v. Cat Contracting, et al.
We represented Insituform in a patent infringement trial. This case involved lateral linings for municipal sewer systems and ultimately resulted in a multimillion-dollar damage award for our client.

Publications

SCOTUS clarifies damages analysis for design patents, reversing landmark damage award

What U.S. companies need to know about their IP rights post-Brexit

New changes to U.S. design patent law

USPTO publishes new (and largely improved) guidance for subject matter eligibility

Final really does mean final in the Federal Circuit

The AIA: Reviewing the first year of Inter Partes Review

Does the Prometheus decision extend to business and computer method claims?

Supreme Court comments on patentable subject matter in Prometheus decision

TC helps establish precedent on reexamination estoppel

Patent Reform introduces "First-Inventor-to-File" law

America Invents Act – Patent ‘reform’ but possibly not simplification

Divorce and IP: Untying the knot may tie up patent rights

Blog Posts

Boundaries of America Invents Act review procedures still being defined

Case shows ever-changing nature of patent law

EA Sports won’t be beaten at its own game – Escaping potential liability through successful § 101 motion to dismiss

5 ugly truths about patent litigation

So you want to protect your software: Tactics, options, and considerations post-Alice

5 tips for managing your patent assets

5 tips for cutting patent litigation costs

The suddenly offensive claim of patent invalidity

Has the Supreme Court signaled the end of invalidity opinion letters?

Has the war on patent trolls caused collateral damage?

TCLE

Survival Tools to Protect Biotechnological Innovation

How Your Company Can Better Respond to Patent Cease and Desist Letters

IP 101

Building Brand Integrity and Countering Counterfeits

Intellectual Property: IP 101

News

A stitch in time: Thompson Coburn secures trademark protection for iconic Cherry Dress

Intellectual property litigator Brian G. Arnold joins Thompson Coburn

Thompson Coburn leads Missouri Soybean Merchandising Council to $600,000 jury verdict

Mitch Reinis analyzes Marvel patent decision in Bloomberg BNA patent journal

27 Thompson Coburn attorneys recognized in 2015 Chambers USA

Shoko Naruo named to Lawyers of Color’s 2014 ‘Hot List’

Betsy Haanes co-authors article on obviousness-type double patenting

Thompson Coburn sponsors St. Louis ‘Inventor of the Year’ awards celebration

29 Thompson Coburn attorneys recognized in 2014 Chambers USA

Steve Ritchey publishes article on patent basics for American Ceramic Society

Dr. Betsy Haanes joins Thompson Coburn as a partner

Jeff Masson named ‘Influential Appellate Advocate’ for Monsanto Supreme Court win

Matt Braunel wins 2013 Lexology Client Choice Award

Mizzou forums feature Thompson Coburn partners

Steve Garlock quoted in front-page Wall Street Journal story on FURminator’s patent successes

Partner
Washington, D.C.
202 585 6920

Betsy offers 20 years of legal experience and 10 years as a professional researcher to firm clients, especially those in the life sciences industries.

Betsy offers 20 years of legal experience and 10 years as a professional re...

Betsy Haanes, Ph.D.
Partner
St. Louis
314 552 6299

Matt’s practice is focused on the preparation and prosecution of patent applications in a variety of mechanical and electrical arts.

Matt’s practice is focused on the preparation and prosecution of patent app...

Matt Himich
Associate
St. Louis
314 552 6512

Wil has a PhD in cellular and molecular biology and experience as research scientist working for a major biotechnology company.

Wil has a PhD in cellular and molecular biology and experience as research ...

Wil Holtz, Ph.D.
Partner
St. Louis
314 552 6345

Kevin’s practice encompasses all areas of intellectual property law, including patents, trademarks, copyrights, unfair competition, trade secrets and related areas.

Kevin’s practice encompasses all areas of intellectual property law, includ...

Kevin Kercher
Partner
St. Louis
314 552 6284

Alan represents clients in all aspects of intellectual property litigation, with a strong emphasis on patent litigation at both the trial and appellate court levels, and ...

Alan represents clients in all aspects of intellectual property litigation,...

Alan Norman
Partner
Chicago
312 580 2237

Michael counsels clients on patent and trademark issues and represents them in federal courts across the United States.

Michael counsels clients on patent and trademark issues and represents them...

Michael Parks
Partner
St. Louis
314 552 6331

Tom is Co-Chair of the Firm's Intellectual Property Practice Group, and is a member of the Firm's Management Committee.

Tom is Co-Chair of the Firm's Intellectual Property Practice Group, and is ...

Tom Polcyn
Partner
St. Louis
314 552 6232

Steve advises clients on domestic and international patent applications and provides comprehensive counsel on licensing and technology transfer.

Steve advises clients on domestic and international patent applications and...

Steve Ritchey
Senior Patent Agent
St. Louis
314 552 6255

Charley draws on his 14 years of biotech industry experience and doctorate in biochemistry to serve clients in the biotech industry and university sectors.

Charley draws on his 14 years of biotech industry experience and docto...

Charley Romano, Ph.D.
Partner
St. Louis
314 552 6338

Clyde prepares and prosecutes patent applications in mechanical and electromechanical arts.

Clyde prepares and prosecutes patent applications in mechanical and electro...

Clyde Smith
Partner
St. Louis
314 552 6352

Ben brings a background in electrical and computer engineering to his legal practice, which primarily focuses on the preparation and prosecution of patent applications.

Ben brings a background in electrical and computer engineering to his legal...

Ben Volk, Jr.