Medical Device & Diagnostics

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The Medical Device & Diagnostics Practice Group includes a diverse group of technical professionals, many with advanced degrees in chemistry, biology, mechanical and electrical engineering, and computer science. Our multi-disciplinary team is able to leverage our in-depth knowledge base to provide informed IP-related strategies and technologically-advanced IP protection for a wide range of medical devices and diagnostics. Our clients include start-up companies, venture capital groups, medical device incubators, universities, and established corporations. We provide IP guidance in all stages of development from capital formation to IPO, with an eye toward exit strategies and advanced corporate growth. 

Our services include transactional due diligence, patent landscape and market clearance evaluations, strategic patent prosecution and IP portfolio development, licensing and non-disclosure agreements, copyright and trademark services, trade secret counseling, third party patent evaluations, IP audits and IP litigation.

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Senior Patent Agent
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Partner
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Upcoming Events

May 9-11, 2017
MBHB Partners Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
May 16, 2017
May 17-18, 2017
MBHB Partner Bradley Hulbert Is a Featured Presenter
May 24, 2017
MBHB Partner Kevin Noonan, Ph.D. Is the Featured Speaker

Past Event

April 18, 2017
MBHB Partner Joshua Rich Is the Featured Presenter
March 14, 2017
MBHB Partners Dr. Andrew Williams and James Lovsin Are the Featured Presenters
March 7, 2017
MBHB Partner Dr. Emily Miao is a Featured Presenter
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

Publications

March 21, 2017 (snippets Alert)
As was widely expected from the Justices’ positions at oral arguments, a nearly unanimous Supreme Court today struck down the patent laches doctrine in SCA Hygiene Prods. Aktiebolag, v. First Quality Baby Prods., LLC, 580 U.S. __ (March 21, 2017). In the opinion by Justice Alito, the Supreme Court applied the rationale of its own prior decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), finding that the existence of a six-year statute of limitations in the Patent Act, 35 U.S.C. §286, precluded the application of laches. As such, “laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.”
Winter 2017 (snippets)
Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due.
Winter 2017 (snippets)
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.
Winter 2017 (snippets)
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings to prevent the disclosure of communications between clients and non-attorney patent agents. The second rule would change the duty of disclosure to comport with the standard set forth in the Therasense case. Based on the comments from the public, it appears likely that the Office will adopt the patent-agent privilege rule but go back for another round of changes to the duty of disclosure rule.
February 22, 2017 (snippets Alert)
MBHB snippets Alert - February 22, 2017

In an opinion by Justice Sotomayor, the Supreme Court today reversed the Federal Circuit's decision in Life Tech. Corp. v. Promega Corp. involving the proper scope of infringement under 35 U.S.C. § 271(f)(1). This provision provides infringement for exporting "all or a substantial portion of the components of a patented invention," and the Court's decision involved whether exporting only one component was enough for infringement liability.
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.
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