Intellectual Property

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Overview

Because Hooper, Lundy & Bookman is dedicated solely to representing clients in the life sciences and health care sectors, our Intellectual Property practice leverages the industry-specific expertise of our team to deliver solutions tailored to our clients’ legal needs. Our IP team is led by lawyers with decades of experience representing companies in patent litigation in the medical device, diagnostics, surgical equipment and pharmaceutical industries. Our broader IP transactional and counseling experience includes representing clients in matters related to software/SaaS licensing agreements, as well as data licensing, privacy and security compliance.

We represent clients at all stages—from start-ups to Fortune 100 companies. HLB’s IP team operates from a deep understanding of our client’s products as well as their regulatory and competitive landscapes, crafting legal strategies to help our clients achieve their business objectives. Our team, led by lawyers with first-chair trial experience in bet-the-company patent litigation, represents clients in patent matters in every forum—whether in district court, the Patent Office, the International Trade Commission (ITC), or at the Federal Circuit. In addition to our patent expertise, we handle matters in state and federal courts related to trade secrets, copyright and trademark litigation. Our IP team also counsels our clients in the health care sector on a full range of technology transactions.

Experience

Representative Matters Handled By HLB’s IP Litigation Team Members:

  • Represented a manufacturer of continuous glucose monitors against allegations it infringed a competitor’s patents. Achieved a victory that invalidated all claims of one of the asserted patents at the Patent Trial and Appeal Board (PTAB).
  • Represented a manufacturer of continuous glucose monitors against allegations it infringed a competitor’s patents. Achieved a favorable settlement and cross-license agreement on behalf of the client with no payment from the client to the plaintiff.
  • Represented a manufacturer of 3D breast imaging systems and equipment in a suit against a competitor before the ITC.
  • Represented a San Diego-based diagnostics company in a patent dispute that involved one bench trial and two jury trials. The jury delivered a defense verdict for client, which the U.S. Court of Appeals for the Federal Circuit later affirmed.
  • Represented a San Diego-based company in a series of patent arbitrations before the International Centre for Dispute Resolution related to its global patent portfolio covering automated molecular diagnostic systems.
  • Represented pharmaceutical client in a two-week patent litigation trial in the District of New Jersey related to an ophthalmic topical formulation of azithromycin.
  • Represented pharmaceutical client in patent litigation in the District of Delaware related to a glycylcycline antibiotic used for the treatment of, among other things, complicated skin infections. The case settled favorably at the pretrial conference after the court permitted client to amend its answer to allege an inequitable conduct defense.
  • Represented pharmaceutical client in patent litigation in the District of Delaware related to chemotherapeutic agent used for the treatment of a variety of cancers. After a successful conclusion to the litigation, client launched its product in the United States in August 2011.
  • Represented San Diego-based diagnostics company in two patent lawsuits in the District of Massachusetts brought by competitor alleging that client’s test kits infringed a total of nine patents. Following client’s defeat of motions for a preliminary injunction, the case settled favorably, with plaintiff agreeing to purchase client.
  • Represented a manufacturer of microfluidic devices (“lab on a chip” technology) in patent litigation filed in the Northern District of California. The matter settled prior to trial following a favorable claim construction ruling for client.
  • Represented a skilled nursing facility support services company in obtaining a temporary restraining order requiring that the electronic health record vendor restore access to a portion of the EHR platform the vendor had severed despite the vendor’s assertions of risk to intellectual property by the vendor.
  • Successfully obtained defense award for leading California academic health system against $50 million breach of contract claim brought by two national EHR vendors following weeklong arbitration. 
  • Represented an international food conglomerate in a 5-year trade secret misappropriation lawsuit, concerning a former employee’s disclosure to an international competitor of the client’s proprietary and groundbreaking retort packaging technology.
  • Represented Cla-Val Corporation in trade dress and copyright case against foreign maker of counterfeit knock-off fire control and suppression equipment, resulting in the entry of preliminary and permanent injunctions, and an award of monetary damages.
  • Represented U.S  HealthWorks, Inc. in multiple pre-suits and lawsuits, alleging theft of customers and practices, all of which resulted in confidential settlements by the defendants, or entry of judgment in favor of our client. 
  • Advise both acute and post-acute healthcare provider associations regarding allegations of patent and copyright infringement

Representative Matters Handled By HLB’s IP Transactional Team Members:

  • Represented Cisco Systems in the establishment and operation of its digital health service programs.
  • Drafted (on behalf of vendors and customers) full range of SaaS, software licensing and related service agreements between health care technology companies and health care providers.
  • Drafted (on behalf of vendors and customers) full range of HIE licensing, participation and data sharing agreements and policies.
  • Advised internet search giant on copyright licensing issues.
  • Drafted Website terms of use/service, privacy and related user documentation. 
  • Counseled health care technology vendor on restrictions surrounding utilization of Artificial Intelligence (AI) solution by health care providers.
  • Represented national telehealth provider in negotiations with prominent commercial payor regarding licensing of proprietary telehealth platform.
For media assistance, please contact Maura Fisher at 202-580-7714.