Intellectual Property

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Competition lies at the very core of intellectual property and technology law.  Businesses count on us to secure, leverage and defend their intellectual property and technology rights.  Our seasoned lawyers have tried some of the most complex patent cases nationwide, fighting to get our clients into different markets and protecting their property rights.

Our clients span from Fortune 500 companies, to mid- and small- cap enterprises, to Internet start-ups.  They include businesses in the pharmaceutical, biotechnology, entertainment, media and broadcasting, manufacturing, merchandizing, franchising, consulting and accounting industries, as well as educational institutions throughout the country.

Proactive Approach to Servicing Business Needs

Intellectual property and technology develop at a fast pace and often require fast action and intimate knowledge of developments in rapidly changing industries.  Our lawyers are proactive in their approach:  we assist businesses to take advantage of the opportunities available to them, and we act quickly and decisively to provide creative solutions and solve any business problems that need to be addressed.

Pharmaceuticals  Pharmaceutical companies seeking to compete at home and abroad turn to us for assistance throughout the entire process of taking a drug product to market.  Lord Bissell & Brook LLP was one of the early leaders and is currently one of the most experienced firms in the United States in the highly specific area of Hatch-Waxman Act litigation and counseling.  We provide early counseling on design-around opportunities, provide opinions of counsel on patent noninfringement and invalidity, assist with the filing of ANDAs, 505(b)(2) applications, patent certifications, and notice letters, and protect our clients’ approval and exclusivity interests before the FDA.  We also act to protect our clients’ own patent rights, by drafting patentability opinions, prosecuting patents before the U.S. Patent and Trademark Office and licensing and enforcing those patent rights in court.

Our lawyers are intimately familiar with the statutory and constantly changing regulatory guidelines set in place by the FDA and the Hatch-Waxman Amendments to the Federal Food, Drug, and Cosmetic Act.  We have significant major case trial experience in Hatch-Waxman Act patent infringement cases, as well as significant experience litigating regulatory actions against the FDA.  We also have significant appellate experience before the United States Court of Appeals for the Federal Circuit.

Among our accomplishments, we have:

  • Successfully represented a major pharmaceutical company in Hatch-Waxman Act litigation involving ranitidine hydrochloride, obtaining a summary judgment ruling that allowed our client early entry into the $5 billion annual market for that product;
  • Successfully represented a pharmaceutical company in Hatch-Waxman Act litigation involving fluoxetine hydrochloride, obtaining a ruling on double patenting grounds on an appeal to the Federal Circuit that allowed our client early entry into the multi-billion dollar annual market for that product;
  • Successfully represented a pharmaceutical company in Hatch-Waxman Act litigation involving gabapentin, obtaining successive summary judgment rulings with respect to each of the two initial patents listed in the Orange Book, and successfully defending an appeal to the Federal Circuit;
  • Successfully tried a Hatch-Waxman Act patent infringement suit involving paroxetine hydrochloride, the world’s best-selling anti-depressant and anti-anxiety medication, before Seventh Circuit Judge Richard Posner, sitting by designation in the Northern District of Illinois, and successfully defending the ultimate final judgment entered by the District Court (through a cross-appeal on invalidity grounds) in the Federal Circuit.  The firm’s trial victory was highlighted in various national legal journals, and allowed our client to be the first generic firm to bring a generic paroxetine hydrochloride product to market; and
  • Successfully challenged FDA regulations delaying the entry of generic drug manufacturers into the market.

Biotechnology  Biotechnology companies turn to us for assistance in structuring transactions, forming strategic alliances, and identifying, securing and protecting IP rights.  Lord Bissell & Brook has decades of experience representing companies in the seed industry and was one of the early leaders in providing highly specific counseling and litigation services to the biotechnology industry.  We provide knowledgeable and practical assistance in all of the relevant disciplines:  procurement of PVP and patent rights, licensing of germplasm, negotiation of joint venture, confidentiality and non-disclosure, material transfer, production and distribution agreements and assistance in obtaining regulatory approvals.

Among our accomplishments, we have:

  • Successfully represented the Plant Variety Protection holder in litigation involving certificates for two cotton varieties in the very first reported decision under the Plant Variety Protection Act of 1970, and successfully defended an appeal of the trial court’s ruling, which was appealed to the Fifth Circuit prior even to the creation of the Federal Circuit.  This decision was the first federal appellate level decision under the PVP Act, and continues to serve as valuable precedent after all these years;
  • Represented a major biotech trait provider in connection with international ring tests involving PCR methods, methods validation and laboratory accreditation agreements, seed testing services agreements, material transfer agreements, methods transfer agreements, licensing and confidentiality agreements;
  • Represented seed companies and seed producers in joint ventures, germplasm pooling and exchange agreements and cooperative research and development agreements;
  • Represented a medical university in agreements with other research institutions to develop and commercialize marine biological compounds as neurological anti-inflammatory agents; and
  • Represented a seed distributor in a recent case involving the applicability of the first sale doctrine and relevant royalty rates.

Other Industries  Intellectual property issues are not limited to pharmaceutical, biotechnology and media companies, and neither is our experience.  We have developed strategies to acquire, secure and defend the intellectual property and technology rights that are critical for companies in all kinds of industries.  In recent years, we have:

  • Successfully represented a copyright holder in obtaining a preliminary injunction and a favorable settlement in a case involving architectural designs and drawings;
  • Successfully tried a patent infringement case on behalf of the accused infringer involving nitrox breathing devices for scuba diving;
  • Successfully represented a leading bicycle manufacturer in patent infringement litigation in Paris, France during the course of the 2002 Tour de France;
  • Successfully represented a leading bicycle manufacturer in implementing auction and on-line sales capabilities on its web site and helped develop the privacy policy for the site;
  • Represented a suburban newspaper publisher in structuring and launching an e-commerce joint venture with a Chicago newspaper publisher and an automobile dealer association to provide new and used automobile information;
  • Represented an Internet software company in developing a licensing program and drafting related agreements with end-users, licensors and other business partners; and
  • Advised a consortium of industry leaders in the automobile, entertainment, telecommunications and computer technology sectors in developing the organizational structure and operating plan for an international, multi-disciplinary research and development center focusing on next generation auto/media interfaces and systems.