Counseling

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The most important service we provide to our clients is advice, along with the skills to implement it. We counsel clients on the management and development of their intellectual property assets, advising clients on issues of patent validity, infringement, and the introduction of new products. Our expertise in business consulting and patent law has been a valuable resource for clients in e-commerce, finance, and other fields.

Our creative, cost-effective strategies are designed to help our clients achieve specific business objectives as well as further long-term business goals. We help establish and maintain effective programs for identifying and patenting key inventions. We also offer strategic advice on the development of patent and trademark portfolios and the exploitation of innovations through licensing. We evaluate potential litigation risks and suggest strategies for avoiding litigation, and we issue opinions regarding the scope, validity, and enforceability of patents and patent portfolios. At MBHB, we also provide advice when assessing the likely outcomes of litigation and in acquisition-related due diligence investigations.

The high-level education and experience earned by our attorneys gives us the skill and industry knowledge we need to help our clients make the decisions that are best for their business, from the beginning.

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Senior Patent Agent
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Partner
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Upcoming Events

February 22, 2017

Past Event

January 19, 2017
MBHB Partners Dr. Michael Borella, Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
January 17, 2017
MBHB Partner Kirsten Thomson Is a Featured Presenter
November 15, 2016
November 8, 2016
MBHB Partner Dr. Kevin Noonan Is a Featured Co-Speaker
November 8, 2016
MBHB Partner Kirsten Thomson Is a Featured Presenter

Publications

Fall 2016 (snippets)
Since the Supreme Court decided Alice Corp. v. CLS Bank Int’l in 2014, patent practitioners and the courts alike have struggled to find clarity in the patent eligibility framework of 35 U.S.C. § 101. For the Federal Circuit in particular, applying the two-step framework set forth in Mayo v. Prometheus and Alice with any consistency has proven difficult, as the lines between abstract and non-abstract ideas, between step one and step two of the framework, and between eligibility (§ 101) and patentability (§§ 102, 103, or 112) have grown fainter.
Fall 2016 (snippets)
In a highly publicized decision of over a year ago, Judge Swain of the U.S. District Court of the Southern District of New York ruled in favor of the luxury retailer Tiffany and Co., deciding that Costco Wholesale Corp. willfully infringed Tiffany’s trademark. Judge Swain’s initial ruling against Costco allowed Tiffany to take Costco before a jury to seek damages, including recovery of Costco’s profits from the sale of the diamond rings, statutory damages, and punitive damages. After several delays, the jury finally met at the end of September for “Phase I” of the trial during which they decided (1) the amount of Costco’s profits and statutory damages under the Federal Lanham Act, and (2) whether Tiffany was entitled to punitive damages.
Fall 2016 (snippets)
September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board created by the America Invents Act (AIA). These new AIA proceedings, particularly covered business method reviews and inter partes reviews, had an almost immediate impact on litigation defense strategies in the financial services and technology fields. The impact in the bio/pharma field was slower at the beginning, but the number of AIA petitions for review of bio/pharma patents has steadily increased over the past four years.
Fall 2016 (snippets)
The Trans-Pacific Partnership was the latest in a series of multination international agreements aimed at reducing trade barriers and promoting global free trade. However, the subject matter scope of this agreement and the secrecy with which it was negotiated have engendered deep suspicions from a variety of groups regarding whether its goal is truly free trade or whether there are more nefarious motivations behind it. And with the election of Donald Trump, these efforts have apparently amounted to nothing.
December 6, 2016 (snippets Alert)
MBHB snippets Alert - December 6, 2016

On December 6, 2016, the Supreme Court ruled unanimously, in an opinion by Justice Sotomayor, that an award of total profits for infringing a design patent need not be calculated based only on the end product sold to an ordinary consumer. More particularly, in the case of a multicomponent product, the damages award may be calculated based on subcomponents of the end product. In Samsung v. Apple, the Supreme Court applied this rule to reverse Apple’s $400 million damages award against Samsung.
Summer 2016 (snippets)
By analyzing USPTO data about the number of requests, the pendency of proceedings, and the frequency of finding a substantial new question of patentability (“SNQP”), this article seeks to identify trends that will help patent owners thoughtfully weigh the risks and rewards of supplemental examination.
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