Medical Devices

Medical Devices

Intellectual Property Counseling and Prosecution

Medical devices sit firmly at the intersection of technology and healthcare, with the industry at the forefront of developing new technologies that drastically improve quality of life and outcomes for patients. From startups to large public companies, clients in the medical device industry rely on us to provide a complete range of intellectual property services, including portfolio development, risk assessment, strategic advising and litigation.

We work with a broad range of technologies that cover all parts of the body, including ablation devices, IV catheters, stent grafts, pain management systems, surgical tools and more. Because we have more than 100 lawyers with scientific and technical backgrounds, we are able to leverage our deep understanding of the anatomy as well as our experience with new and emerging technologies to develop strategies that protect our clients’ assets.

Our cross-practice teams are also backed by the deep knowledge of the firm’s regulatory and corporate lawyers, allowing us to work with companies at all stages on opportunities or challenges that arise.

Key Contacts

Experience

  • For a publicly traded medical device company, we successfully obtained a patent term extension for a transplant device and have filed requests for patent term extension for two other transplant devices. For the same client, we have served as a key counselor for more than 20 years, including developing a portfolio of more than 100 US patents.
  • Represented a medical device startup in the evaluation and licensing of technology to a large hospital system, including alignment of the technology with the IP portfolio and risk assessment of the product under development.
  • Provide ongoing IP diligence related to potential acquisitions and investments for ZOLL Medical Corporation, a medical device and software company.
  • Offer strategic patent advice to Columbia University and manage the worldwide prosecution for about 2,300 patent applications for Columbia’s Morningside and Medical Center campuses, including prosecuting applications in a wide variety of high-tech, medical device and pharmaceutical areas.
  • Obtained a complete victory for ZOLL Medical Corporation by securing a voluntary dismissal with prejudice of a patent infringement case seeking damages and injunctive relief involving ZOLL’s defibrillators and monitoring devices.
  • Ongoing representation of Medtronic for over 15 years in various litigation, appellate, transactional, and investigative matters, including winning Medtronic, Inc. v. Mirowski Family Ventures in the Supreme Court, obtaining multiple victories before the Federal Circuit, and getting a jury verdict against Globus Medical in the Eastern District of Pennsylvania.
  • Obtained a complete victory for a publicly traded medical technology company when the court granted summary judgment of non-infringement in one of its most important competitor litigations.
  • Prevented institution of three IPRs filed against key patents held by a large medical device company directed to endovascular stent grafts.
  • Successfully represented Becton Dickinson against a key competitor in a global multi-patent litigation, including in the District of Delaware, and in several concurrent IPRs challenging the asserted patents targeting core portfolio products, resulting in a favorable settlement for the client.
  • Obtained a reversal of a Patent Examiner’s rejection in an ex parte appeal to the Patent Trial and Appeal Board (PTAB) for claims directed to core technology for Brixton Biosciences.
  • Represented Smith & Nephew in IPRs challenging patents relating to knee implants and suture anchors, obtaining a favorable final written decision and Smith & Nephew successfully settled a related district court case after the final written decision.

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