Patent Prosecution

Knobbe Martens has a reputation of developing and securing vital patent assets for our clients. We don’t just go through the motions of patent prosecution. We actively develop patent portfolios to achieve our clients’ strategic goals, whether they are focused on defensive coverage, licensing revenue, creating barriers to market entry, preparation for litigation, monetizing non-essential patent assets, or building value for a strategic exit. We have extensive experience in leading and defending due diligence, preparing patent opinions, and negotiating high-stakes patent deals. As a leader among IP firms, we participate in Patent Office pilot programs to assist the USPTO in developing new processes and programs that benefit our clients. By thinking outside of the box, we stress creative and proactive approaches to accelerating and improving prosecution results, often meeting face-to-face with U.S. Patent Examiners.

Our attorneys have strong technical and scientific backgrounds that enable us to deeply understand the details of our clients’ technologies, which allow us to craft an individualized patent strategy for each client.  Many of our attorneys have doctoral, medical, or masters degrees, and many have years of industry experience prior to becoming an attorney.

Realizing the dynamic nature of patent law, we have created a number of cross-functional teams where patent prosecution and litigation attorneys work closely with each other, crafting multi-dimensional tactics and strategies that take into account our clients’ business goals. These hybrid teams are able to create stronger patents in the patent office that lead to better litigation results as well as greater insight into defending against patent lawsuits. The hybrid teams also play an essential role in representing our clients in the new post-grant proceedings instituted under the America Invents Act (AIA).  Our teams of litigators and patent prosecutors work synergistically to develop strategies to navigate these quasi-litigation proceedings before the U.S. Patent Office – either to defend a client from an invalidity challenge of its patent or to develop a strategy for challenging a competitor’s patent. 

We strive to understand the business realities surrounding the intellectual property. This holistic view of the legal landscape, our clients’ interests and overall industry trends give us a greater understanding of how inventions are implemented and used, as well as the direction technology itself is headed. 

With the insight gleaned, we are able to quickly develop successful technology protection strategies, identify potential risks to avoid third-party action, conduct diligence associated with acquisitions, and create prosecution portfolio management strategies tailored around individual exit plans.

Representative Exits

Skybox Imaging Acquisition by Google for $500 Million

Knobbe Martens client Skybox Imaging, Inc. has entered into an agreement to be acquired by Google. Skybox Imaging has built and launched the world’s smallest high-resolution imaging satellite, which collects images and video of the Earth each day. Skybox plans to launch a constellation of 24 imaging satellites that will map the Earth and help keep Google Maps accurate with up-to-date imagery. Over time, Skybox’s technology will be able to help improve Internet access and disaster relief — areas Google has long been interested in. Knobbe Martens has developed Skybox’s patent portfolio for the design of low-earth orbiting imaging satellites and imaging sensors, scheduling image acquisition in a constellation of satellites, and techniques for processing images and video taken by the satellites. 

IDev Technologies Acquired by Abbott Labs for $310 Million

Knobbe Martens Olson and Bear LLP client, IDev Technologies, has entered into an agreement in which Abbott Labs, one of the world’s largest pharmaceutical and healthcare companies, will acquire all outstanding equity of IDev Technologies for $310 million net of cash and debt. IDev Technologies' products include SUPERA Veritas®, a self-expanding nitinol stent system with CE Mark in Europe for treating blockages in blood vessels due to peripheral artery disease. The SUPERA Veritas® is designed based on biomimetic principles – attempting to mimic the body's natural movement – to promote blood flow in the treated area while offering strength and flexibility. These properties are particularly important when considering treatment for blockages in the blood vessels in the knee and thigh.

Knobbe Medical Device Client Ulthera Acquired for $600 Million

Merz and Ulthera, Inc. announced on June 26, 2014 that they have entered a definitive merger agreement pursuant to which Merz will acquire Ulthera, Inc, a global medical device company focused on developing and commercializing technologies for aesthetic and medical applications using its therapeutic ultrasound platform technology. Valued at up to $600 million in upfront cash and milestone payments, the acquisition is the largest in Merz’s history. Founded in 2004, Ulthera is a leader in non-surgical lifting and tightening treatments. Using therapeutic ultrasound technology, the Ulthera® System is the first and only ultrasound platform device to receive FDA clearance for lifting skin on the eyebrow, the neck and under the chin. Ulthera expects sales of more than $100 million in 2014. Orange County Partners, Dr. Salima Merani and Terry Tullis, have represented Ulthera since early 2008. 

EKOS Acquisition by BTG for $180 Million

Knobbe Martens client EKOS Corporation was acquired by BTG (a British pharmaceutical company) for $180 Million and up to $40 million in additional payouts if milestones are met. EKOS is a medical device company that makes ultrasound catheters that use advanced ultrasound excitation to precondition blood clots for rapid clot removal.  Knobbe Martens has been the sole IP counsel for EKOS since 2002.

Visiogen

Start-up and firm client Visiogen, an ophthalmic start-up developing innovative intraocular lenses, was acquired by Abbott Medical Optics for $400 million. In addition to representing Visiogen in acquisition diligence, Knobbe Martens was involved with building the client's patent portfolio.

Successes

AMP Research: Bed Extender

Knobbe Martens was instrumental in securing patent protection for AMP Research's BED X-TENDER, used to increase the effective length of pick-up trucks. To date, Knobbe Martens has worked with AMP to develop and implement a strategy that has resulted in AMP being granted over 17 U.S. patents for key aspects of the BED X-TENDER technology. Knobbe Martens successfully negotiated a license agreement with a major tier one supplier, resulting in AMP receiving millions of dollars in royalties, while being free to continue to sell the BED X-TENDER in the aftermarket.

Avanir Pharmaceuticals

The firm successfully prosecuted a world-wide patent portfolio for Avanir covering Docosanol and related long-chain fatty alcohols and their uses in topical and systemic antiviral therapies. The topical antiviral uses of docosanol received marketing approval from the FDA, under the name Abreva®, for treating cold sores caused by the herpes simplex virus. The firm was further successful in obtaining five years of Patent Term Extension for the key Abreva patent for regulatory delays under 35 U.S.C. 156, and in representing Avanir in negotiating a deal with GlaxoSmithKline for marketing Abreva.

InterMune

The firm developed a large patent portfolio surrounding danoprevir, an HCV protease inhibitor, for our client InterMune, Inc. In addition to obtaining several key patents, the firm filed suit against the U.S. Patent Office on behalf of InterMune to maximize the patent term adjustment awarded to the U.S. patent. After successfully prosecuting the danoprevir portfolio world-wide, the firm handled the intellectual property aspects of the negotiations and ultimate $175 million cash deal with Hoffman-La Roche giving them the development and commercialization rights to danoprevir.

Journée Lighting Inc.

Our client Journée Lighting Inc. designs and manufactures state-of-the-art LED lighting fixtures. Journée Lighting invented a new light bulb that makes LED lights easier to use. The new light bulb, if never turned off, would last for 5.7 years at a fraction of the cost of a standard light bulb. GE Lumination purchased the next-generation LED module technology from Journée Lighting. A team of Knobbe Martens attorneys played an instrumental role in obtaining patent protection for the invention and providing agreement services leading to highly successful negotiations.

Kyoto University

Knobbe Martens worked closely with Professor Yamanaka and his team to obtain U.S. Patent No. 8,048,999, the first patentgranted for the work which led to Professor Yamanaka's Nobel Prize. The patent relates to a nuclear programming factor for the production of these induced pluripotent stem cells from adult cells. It is expected that the production of induced pluripotent stem cells will ultimately lead to treatments that allow the complete regeneration of injured and diseased tissues.

Knobbe Martens continues to represent Kyoto University in connection with its ongoing efforts to obtain patent protection in the United States for Professor Yamanaka's further work. We are greatly honored that Kyoto University entrusted Knobbe Martens to assist it in connection with such groundbreaking work, and we particularly appreciate the opportunity to work with Professor Yamanaka, a scientist of such renowned stature.

Specialized Bicycle: Horst Link Bicycle Suspension

Knobbe Martens was instrumental in securing patent protection on one of mountain biking's most fundamental suspension designs, the Horst Link Four Bar Suspension. After other law firms were unable to convince the U.S. Patent Office as to the patentability of the Horst Link suspension, Knobbe Martens was successful in securing three patents for the technology. The Horst Link patents became one of the cornerstones of Specialized Bicycle’s intellectual property portfolio.

Partner Joseph Mallon was quoted in "SCOTUS Holds in NantKwest that USPTO Cannot Be Reimbursed for Salaries of Legal Personnel," an article published by IP Watchdog Excerpt: The opinion “found it...
Partner Andrew Merickel was quoted in "This Is the First Hemp Strain to Be Awarded a US Patent," an article published by Leafly. Excerpt: As the high-CBD strain that won over skeptics and helped...
Knobbe Martens is pleased to report that 14 partners appear in the 2020 edition of The Best Lawyers in America® . Inclusion is determined entirely through peer review evaluations from other leading...