World Energy Systems, Inc. – Patent Portfolio Development
Patterson + Sheridan has secured numerous patents for World Energy Systems, Inc., a developer of enhanced oil & gas recovery technologies. During this process, we developed an in-depth knowledge of the company’s key technologies, markets, and competitive landscape and came to understand its business goals, including the company’s long-term plan to secure a major private funding partner.
Then, we proactively worked with World Energy Systems, Inc., to develop a robust patent strategy that includes identifying and developing key technologies, obtaining domestic and international protection of these key technologies, and avoiding third-party patent disputes. The portfolio now comprises numerous patents and pending patent applications in countries throughout the world. World Energy Systems, Inc. has also secured a key business relationship for obtaining potential funding partners.
Patterson + Sheridan Speeds Time to Market for Fortune 100 Client’s New Polymer
During product research, one of our Fortune 100 technology clients created a new polymer with durable qualities. This meant the new polymer would be highly valuable across a wide range of applications. It was critical to protect this new invention. To do so, the USPTO had to classify it as a new molecule.
Deep chemistry and chemical engineering experience came into play as our team worked with the client’s chemists to gather comprehensive information to draft more than 80 patent applications related to this product. By asking the right questions about the client’s researched chemical reactions, performance methods, products and other possible variations, we translated the scientific language into patent applications that were clear and thorough.
Of the more than 80 patent applications we filed for the client, about half were immediately granted without receiving rejections or changes from the patent office. In a rare case, an examiner misunderstood comparison to prior art, and our attorneys quickly and effectively explained the difference and issued the patent.
Our attention to detail and keen understanding of the complex chemical compound empowered the client to go to market faster with a large volume of patent applications, many of which were issued in just eight months.
Defending a Fortune 500 chemical company against multimillion-dollar patent infringement allegations
When an international manufacturer and supplier of chemicals was facing claims of patent infringement, they turned to John Barr, Jay Yates and their team to help navigate the litigation process. The company was being sued by a larger competitor for alleged patent infringement of a chemical method patent in a U.S. District Court. The competitor sought a multimillion-dollar award for past damages in addition to a permanent injunction requiring our client to immediately stop manufacturing a successful specialty chemical product.
Translating complex subject matter into a compelling argument at trial
Effectively addressing complicated technologies to a jury is challenging. At trial, cases are presented through the witnesses and the documentary evidence. Unlike in a classroom, where students can ask questions when learning new and difficult material, juries generally are prohibited from asking any questions.
Effective trial lawyers must:
● Tailor their presentation to the courtroom
● Anticipate the questions that the jurors would ask
● Select the most impactful exhibits
● Anticipate the counter-arguments that will be presented by opposing counsel
Our litigators know how to explain even the most technical subjects to a jury, and we’ve sharpened those skills through decades of handling significant trial matters.
A two-pronged attack on infringement and validity claims
This case was challenging. It involved complicated polymer chemistry and the patents to be presented at trial lacked any drawings to help teach the processes involved.
Our lawyers decided that the best way to present the case to the jury involved a two-pronged attack on infringement and validity that clearly demonstrated that the client’s process both did not infringe because it worked in a different way than the patented method, and that the asserted patent was invalid based on prior patents from well-known competitors.
Overcoming obstacles to secure a litigation victory
While the jury ultimately did not find the asserted patent invalid based on the prior patents, the intense debate of the prior processes and the explanatory trial demonstratives that our team created to illustrate the processes to the jury forced the patent owner to adopt a very narrow position to distinguish its patent from prior technologies. The resulting limited infringement position required to escape invalidity made the infringement claim easier to defeat, which resulted in a victory for the client.
After a five-day trial, the jury found that the client did not infringe the patent and rejected the plaintiffs’ request for damages and an injunction. The verdict was upheld on appeal to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. Today, the company is able to compete in the market and grow its business.