Patents

Featured Publication:

Post-Abandonment Practice and Avoiding Inequitable Conduct [Alert]

Jeff Gendzwill and Keith Fredlake discuss the latest in patent prosecution and post-abandonment practices after receiving a USPTO rejection.

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Cozen O’Connor represents diverse clients, from global blue chips to family-owned enterprises, in complex patent matters, including federal district court litigation, global patent prosecution, Patent Trial and Appeal Board (PTAB), and International Trade Commission (ITC) litigation.

We do this because patentable IP drives the advancement of human knowledge. We also just really like working with smart and ambitious clients who’ve got IP worth patenting.

Our dedicated team includes IP litigators with decades of first-chair trial experience; licensed patent attorneys with advanced degrees in chemistry, biology, immunology, biophysics, and electrical and mechanical engineering; and former senior research scientists in the telecommunications, software, pharmaceutical, industrial products, and defense industries.

Litigation

Cozen O’Connor represents clients in jury and bench trials in jurisdictions across the country. In many cases, we achieve client goals though practical, business-minded settlements. But when litigation must be pursued, our track record is one of big-dollar plaintiff verdicts and summary judgement defense victories. We handle patent litigation in a wide range of industries:

  • pharmaceuticals, nutraceuticals, life sciences, biomedical, and medical devices
  • computer, internet, telephone, telecom, and wireless network
  • banking and finance
  • defense, chemical, industrial, automotive, energy, manufacturing, and aviation
  • consumer products, food and beverage, sports, and entertainment

Post-Grant Review Proceedings

The PTAB has become a common venue for validity claims and an integral part of a broader litigation strategy. Cozen O’Connor routinely represents clients before the PTAB, either initiating or defending critical inter partes review (IPR), post-grant review, and covered business method review proceedings.

International Trade Commission (ITC)

Cozen O’Connor has attorneys who are admitted to lead infringement hearings before the ITC and adept at obtaining or defending exclusion orders on the importation of goods in this specialized venue.

Appeals

The firm’s patent litigators frequently argue matters before the Federal Circuit Court of Appeals and are often retained as appellate counsel in cases that peer firms lost at trial.

Procurement & Prosecution

Cozen O’Connor’s patent prosecutors obtain U.S. and foreign patent approval to help clients protect inventions and monetize their IP. Our attorneys characterize advancements, structure patent applications, provide design-around advice, manage patent portfolios, and negotiate acquisition, transfer or licensing agreements. The team is adept at winning U.S. protection of foreign-originated work and foreign protection of U.S.-originated work.

Services

  • Assert or defend patents with respect to infringement claims or other disputes
  • Prosecute patent applications in the U.S. Patent and Trademark Office and foreign agencies
  • Develop strategies to maximize patent protection
  • Analyze patentability of inventions not yet protected
  • Assist with searches of prior art and survey competitors’ patent activities
  • Perform freedom-to-operate, clearance, validity, due diligence, and infringement studies
  • Represent clients in reissue, reexamination, inter partes, post-grant, and derivation proceedings
  • Represent clients in federal litigation, arbitrations, and appeals
  • Counsel clients about leveraging domestic and international patent rights
  • Provide transactional advice on acquisitions, joint ventures, transfer, and licensing agreements
  • Lead patent arbitration in the context of licensing disputes

 

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Experience

Publications

Post-Abandonment Practice and Avoiding Inequitable Conduct [Alert]

March 04, 2024

Jeff Gendzwill and Keith Fredlake discuss the latest in patent prosecution and post-abandonment practices after receiving a USPTO rejection.

Canadian Trademarks Opposition Board Reduces Deadlines and Extensions [Alert]

December 04, 2023

From Noelle Engle-Hardy and Any Obando Ospina: CIPO has implemented significantly reduced deadlines and more limited extensions of time in trademark opposition and section 45 proceedings.

OTDP After PTA: What You Need to Know [Alert]

September 15, 2023

Frank Abramonte discusses a Federal Circuit decision, which raises important issues for commonly-owned patents with different expiration dates.

Would Artificial Intelligence Lie to Us? [Daily Business Review]

June 21, 2023

Samuel Lewis authored an article about using generative artificial intelligence systems for the practice of law.

Important Changes to European Patent Practice [Alert]

October 13, 2022

The European Patent Office is replacing the existing regional patent system with a new Unitary Patent system that has enforcement throughout Europe.

IP Maintenance Payments for Russian Rights

May 12, 2022

This May, OFAC issued a new General License authorizing certain transactions related to patents, trademarks, and copyrights otherwise prohibited by sanctions.

Importers Beware! Burden Shifting in Patent Infringement Cases [IPWatchdog]

May 09, 2022

Xing Liu and Aaron Lukas co-authored an article on a recent order in PureCircle USA Inc. v. SweeGen Inc. that highlights the interplay between Sections 271(g) and 295 [of the Patent Act and suggests] some best practices for contract drafting and conducting discovery in cases involving process patents.

Biotechnology at the Supreme Court—Will the U.S. Government Back Amgen’s Petition? [IPWatchdog]

May 04, 2022

Blake Coblentz and Aaron Lukas co-authored an article following up on a previous discussion about two issues that they will be watching closely this year relating to litigation involving small and large molecule therapies.

Two Pharma and Biotech Cases to Watch in 2022 [IPWatchdog]

February 02, 2022

Blake Coblentz and Aaron Lukas co-authored an article about two issues that they will be watching closely this year relating to litigation involving small and large molecule therapies.

Why and When Reexams Can Be a Better Option Than Inter Partes Reviews at the USPTO [IAM]

March 31, 2021

Jeffrey Townes and Hongling Zou co-authored an article about how there are indications that experienced patent litigants are taking a fresh look at the old post-grant friend ex parte reexamination, particularly when other challenges fail.

Hatch-Waxman and BPCIA Cases and Trends to Watch in 2021 [IPWatchdog]

January 25, 2021

Blake Coblentz and Aaron Lukas co-authored an article about two major cases in 2021 that could have long-lasting effects on where and how Hatch-Waxman and Biologics Price Competition and Innovation Act (BPCIA) cases are litigated.

The PTAB Puts Hatch-Waxman Defendants on Notice: File IPRs Early or Risk Fintiv Discretionary Denial [IPWatchdog]

October 29, 2020

Blake Coblentz, Aaron Lukas, and Keri Schaubert wrote about the Patent Trial and Appeal Board (PTAB) denying the institution of Mylan Labs Ltd.’s petition for IPR of U.S. Patent No. 9,439,906 (“the ’906 patent”) in IPR2020-00440.

Section 112 Issues Concerning Disclosure and Claims for AI Technologies [Bloomberg Law]

October 02, 2020

Vadim Braginsky wrote a chapter for Bloomberg Law’s Corporate Practice Portfolio Series on Artificial Intelligence and Machine Learning discussing the many artificial Intelligence (AI) technologies that are algorithmic, and particularly amenable to being described by their functionality.

Patenting Eligibility Issues and Considerations for Artificial Intelligence Technologies [Bloomberg Law]

October 02, 2020

Vadim Braginsky wrote a chapter for Bloomberg Law’s Corporate Practice Portfolio Series on Artificial Intelligence and Machine Learning discussing the field of Artificial Intelligence (AI) is wide-ranging, encompassing a spectrum of technologies.

How PTAB Reviews Examiner Errors For IPR Institution [Law360]

July 23, 2020

Jeffrey Townes and Hongling Zou explore how the Patent Trial and Appeal Board reviews examiner errors, because although the board has recently denied inter partes review based on issues presented during prosecution, petitioners have little guidance on when examiner error merits IPR institution.

Exercising discretion [Intellectual Property Magazine]

July 09, 2020

Keri Schaubert and Aaron Lukas consider a precedential PTAB order outlining six factors in exercising discretion to deny institution of IPR proceedings.

PTAB Settlement Disclosure Timing Crucial After DTN Ruling [Law 360]

July 07, 2020

Aaron Lukas and Keri Schaubert wrote an article on the Patent Trial and Appeal Board decision in DTN LLC v. Farms Technology LLC.

Controlled Substances, CBD and COVID-19 [Alert]

April 10, 2020

Ashley Kessler and Jon Gale discuss recent developments on the state and federal levels that impact the cannabis industry.

Breathing New Life Into The “Tangential” Exception to Prosecution History Estoppel [Alert]

August 26, 2019

Martin B. Pavane and Darren S. Mogil discuss the importance of carefully analyzing the prosecutorial history of a patent to determine the reason for the narrowing amendment. If the reason was only tangential to the equivalent at issue, estoppel will not apply.

The Tangential Exception to the Presumption of Prosecution History Estoppel [Alert]

August 19, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's split decision in Ajinomoto Co., Inc. v. ITC.

Why CBD-infused food and beverages could be ripe for a labelling class action [World Trademark Review]

June 13, 2019

Edward Weisz wrote about the legal landscape for food and beverage manufacturers looking to enter the hemp-based cannabidiol (CBD) market.

Events & Seminars

Past Events

Building Future Leaders in a Changing World

October 12, 2023 - San Francisco, CA

Latest Cross-Border Legal Strategies In The U.S

February 14, 2023 - Osaka, Japan

To patent or to keep secret

May 24, 2022 - New York, NY

In The News

Law360 Names Cozen O’Connor a Pennsylvania Powerhouse

August 23, 2023

Cozen O’Connor was previously named a Pennsylvania Powerhouse in 2022, 2018, and 2014.

Best Lawyers Honors More Than 200 Cozen O'Connor Attorneys to its Best Lawyers in America 2024 Edition

August 17, 2023

Best Lawyers selected 232 Cozen O’Connor lawyers from 24 of the firm’s U.S. offices for inclusion in the 2024 edition of The Best Lawyers in America.

Five Cozen O’Connor Intellectual Property Attorneys Recognized by IAM Patent 1000

August 08, 2023

IAM Patent 1000 has named Frank Abramonte, Thomas Fisher, Keith Fredlake, Jeffrey Gendzwill, and Edward Weisz to their 2023 list.

Supreme Court snub of Apple and Broadcom clarifies IPR estoppel tactics

June 28, 2023

Thomas Fisher was quoted in World Intellectual Property Review discussing SCOTUS’ decision not to hear Apple and Broadcom’s petition for a writ of certiorari of a ruling by the US Court of Appeals for the Federal Circuit.

Eight Cozen O'Connor Attorneys Recognized as IP Stars by Managing Intellectual Property

June 27, 2023

Eight members of Cozen O'Connor’s Intellectual Property Department, Frank Abramonte, Noelle Engle-Hardy, Thomas Fisher, James Gale, Gregory Gulia, Shane Hardy, Hugh Marbury, and Camille Miller, were named IP Stars by Managing Intellectual Property.

As Tech Market Heats Up, More Firms Are Ready For Denver

June 12, 2023

Curtis Vock was quoted in Law360 discussing the growth of tech and life sciences in Denver and Boulder, Colorado.

Cozen O’Connor adds Eight More Intellectual Property Professionals to its Fast-Growing International IP Practice; Will Open New Office in Boulder, Colorado

February 16, 2023

The group consists of IP attorneys Curtis A. Vock, Douglas W. Link, X. Peter Chen, Ph.D., and Steve K. Barton, M.D.; patent agents Brian T. Schwartz, Ph.D., Daniel M. Farkas, Ph.D., and Rebecca "Becky" Rudolph; and tech specialist Perry Youngs.

Cozen O’Connor Recognized as a “Best Law Firm” in 30 Practice Areas Nationwide, 115 Practice Areas Regionally

November 30, 2022

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 30 practice areas nationwide and 115 practice areas regionally.

More Than 200 Cozen O’Connor Attorneys Named Best Lawyers and Ones to Watch

August 22, 2022

210 Cozen O’Connor lawyers from 24 of the firm’s nationwide offices for inclusion in the 2023 edition of The Best Lawyers in America.

Cozen O’Connor Intellectual Property Attorneys Recognized by IAM Patent 1000

July 22, 2022

IAM Patent 1000 has named Frank Abramonte, Thomas Fisher, Keith Fredlake, Jeffrey Gendzwill, and Edward Weisz to their 2022 list.

Seven Cozen O'Connor Attorneys Named IP Stars by Managing Intellectual Property

May 31, 2022

Seven members of Cozen O'Connor’s Intellectual Property Department, Frank Abramonte, Thomas Fisher, James Gale, Gregory Gulia, Shane Hardy, Hugh Marbury, and Camille Miller have all been named IP Stars by Managing Intellectual Property.

Even With Pandemic, Patent Suit Filings Held Steady In 2021

May 18, 2022

Blake Coblentz was quoted in Law 360 discussing the impact the COVID-19 pandemic has had on patent filings.

A To-Do List For New USPTO Director Kathi Vidal

April 06, 2022

Ian Blum was quoted in Law 360 discussing what issues the new director of the U.S. Patent and Trademark Office, Kathi Vidal, is facing.

The Inside BS on Patents and Intellectual Property Law

April 04, 2022

Edward Weisz joined Dave Lorenzo's Inside BS Show to discuss the value of intellectual property to a business as well as many other aspects of intellectual property law.

Q&A: Shouvik Biswas, Aaron Lukas and Blake Coblentz on the America Invents Act

September 16, 2021

Blake Coblentz and Aaron Lukas spoke with World Intellectual Property Review to discuss the 10-year anniversary of the America Invents Act (AIA).

More Than 205 Cozen O’Connor Attorneys Named Best Lawyers and Ones to Watch By The Best Lawyers In America

August 19, 2021

Best Lawyers selected 210 Cozen O’Connor lawyers from 23 of the firm’s nationwide offices for inclusion in the 2022 edition of The Best Lawyers in America.

Cozen O’Connor Recognized as a “Best Law Firm” in 25 Practice Areas Nationwide, 115 Practice Areas Regionally

November 05, 2020

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 25 practice areas nationwide and 115 practice areas regionally.

Cozen O’Connor Bolsters Washington, D.C., Intellectual Property Practice with the Addition of Jeffrey T. Gendzwill and Keith D. Fredlake

October 26, 2020

Both Gendzwill and Fredlake join from Kilpatrick Townsend and will become members of the firm’s growing Intellectual Property practice that comprises nearly 50 attorneys representing national and international corporate clients from startups to multinational companies.

Virus Delays, Few Approvals Dry Up Generic Drug Lawsuits in 2020

September 09, 2020

Keri Schaubert was quoted in Bloomberg Law discussing drug patent lawsuits that took a 21% dive from this time last year, a “perfect storm” that traces back to 2016 when the FDA only approved a handful of new drugs.

Rush for Generic Go-Ahead on Novel Drugs Roils Pharma Industry

June 19, 2020

Blake Coblentz was quoted in Bloomberg Law discussing how generic drugmakers are increasingly lining up to bring competing versions of brand-name products to the market at the earliest possible date.

Four Cozen O'Connor Attorneys Named IP Stars by Managing Intellectual Property

May 14, 2020

Four members of Cozen O'Connor’s Intellectual Property Group, Frank Abramonte, Thomas Fisher, James Gale, and Hugh Marbury, have all been named IP Stars by Managing Intellectual Property.

Cozen O’Connor Recognized As a Best Law Firm in 24 Practice Areas Nationwide, 106 Practice Areas Regionally

November 05, 2019

The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations and peer review from leading attorneys in their field.

Four Cozen O'Connor Attorneys Named Managing Intellectual Property IP Stars

October 15, 2019

Four members of Cozen O'Connor’s Intellectual Property Group, Frank Abramonte, Thomas Fisher, James Gale, and Hugh Marbury, have all been named IP Stars by Managing Intellectual Property.

Cozen O’Connor Patent Attorneys Represent, Pro Bono, Nonprofits Established by Parents of Children with Ultra-rare Genetic Disorder

October 14, 2019

Cozen O’Connor patent attorneys Jeff Townes and Hongling Zou represent, pro bono, three partner nonprofits established by parents of children with the ultrarare, and potentially fatal, alternating hemiplegia of childhood (AHC).

138 Cozen O’Connor Attorneys Named to the Best Lawyers in America

August 28, 2019

Best Lawyers selected 138 Cozen O’Connor lawyers from 21 of the firm’s national offices for inclusion in the 2020 edition of The Best Lawyers in America.

Contacts

Frank Abramonte

Co-Chair, Patent Prosecution

fabramonte@cozen.com

(206) 373-7270

Jeffrey T. Gendzwill

Co-Chair, Patent Prosecution

jgendzwill@cozen.com

(202) 463-2502

Edward M. Weisz

Co-Chair, Patent Prosecution

eweisz@cozen.com

(212) 297-2660

People

Awards

Law360 Names Cozen O’Connor a Pennsylvania Powerhouse

August 23, 2023

Cozen O’Connor was previously named a Pennsylvania Powerhouse in 2022, 2018, and 2014.

Best Lawyers Honors More Than 200 Cozen O'Connor Attorneys to its Best Lawyers in America 2024 Edition

August 17, 2023

Best Lawyers selected 232 Cozen O’Connor lawyers from 24 of the firm’s U.S. offices for inclusion in the 2024 edition of The Best Lawyers in America.

Eight Cozen O'Connor Attorneys Recognized as IP Stars by Managing Intellectual Property

June 27, 2023

Eight members of Cozen O'Connor’s Intellectual Property Department, Frank Abramonte, Noelle Engle-Hardy, Thomas Fisher, James Gale, Gregory Gulia, Shane Hardy, Hugh Marbury, and Camille Miller, were named IP Stars by Managing Intellectual Property.

Cozen O’Connor Recognized as a “Best Law Firm” in 30 Practice Areas Nationwide, 115 Practice Areas Regionally

November 30, 2022

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 30 practice areas nationwide and 115 practice areas regionally.

More Than 205 Cozen O’Connor Attorneys Named Best Lawyers and Ones to Watch By The Best Lawyers In America

August 19, 2021

Best Lawyers selected 210 Cozen O’Connor lawyers from 23 of the firm’s nationwide offices for inclusion in the 2022 edition of The Best Lawyers in America.

Cozen O’Connor Recognized as a “Best Law Firm” in 25 Practice Areas Nationwide, 115 Practice Areas Regionally

November 05, 2020

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 25 practice areas nationwide and 115 practice areas regionally.

Cozen O’Connor Recognized As a Best Law Firm in 24 Practice Areas Nationwide, 106 Practice Areas Regionally

November 05, 2019

The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations and peer review from leading attorneys in their field.

138 Cozen O’Connor Attorneys Named to the Best Lawyers in America

August 28, 2019

Best Lawyers selected 138 Cozen O’Connor lawyers from 21 of the firm’s national offices for inclusion in the 2020 edition of The Best Lawyers in America.

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