Haug Partners:
Robust Technology Practice

Haug Partners

Mark Chapman, Sheila Mortazavi, Georg Reitboeck, Camille Turner, Jonathan Herstoff

Tailored Strategies and Solutions
to Unique Client Problems

Mark Chapman, Georg Reitboeck
Camille Turner, Sheila Mortazavi, Jonathan Herstoff

Does Haug Partners represent clients in industries other than the life sciences industry?

The Firm represents clients in a variety of other industries, including the automotive, technology, and medical device industries, in patent litigations and related proceedings. This includes patent infringement litigations in U.S. District Courts and the International Trade Commission (ITC), post-grant proceedings in the Patent Trial and Appeal Board (PTAB), and patent appeals in the U.S. Court of Appeals for the Federal Circuit. Clients include Porsche, Volkswagen, Audi, Bentley, and Red Bull Racing (the Formula One team). The firm also represents clients applying for patents in the U.S. Patent and Trademark Office.

What tools does Haug Partners utilize to achieve its success in the courtroom?

We like to say that we have a “deep bench” of top tier intellectual property attorneys and can specially curate the right team of people to represent the specific needs of our clients. Whereas some large general practice firms have smaller IP practice groups where each attorney focuses broadly on all sectors of IP law, our attorneys have the ability to sub-specialize and hone their practice with a more focused approach. This means that for most IP issues that arise, we have attorneys who have favorably resolved very similar problems many times over. Of course, the challenge and the excitement comes from leveraging that experience to develop the right strategy for a particular and unique client issue.

We also routinely collaborate with trusted, industry-leading experts with whom we are very proud to work. Choosing a qualified and credible expert who will defend his or her opinions under cross-examination is critical, and the Firm has extensive experience identifying the right expert for any given case by tapping into our vast network of trusted connections or finding new experts based on top-of-the-line industry and academic credentials.

Does the Firm have experience litigating at the International Trade Commission?

Yes, the Firm has significant experience litigating at the International Trade Commission, or the ITC. The ITC is a federal government agency that can block the importation into the United States of products that the agency determines infringe a valid patent. An ITC litigation is similar in many respects to a patent litigation in a district court because the parties litigate the question of whether the patent is valid and infringed. While the ITC does not award infringement damages, it will block importation of products that infringe a valid patent, and it can be a powerful tool in the arsenal of a patent infringement plaintiff.

Are there benefits to litigating at the ITC compared to the district court?

Often times these litigations take place in parallel. The ITC typically issues its decision more quickly than most courts, which can strengthen the patent owner’s leverage in settlement discussions. Given its jurisdiction, ITC cases are often filed against foreign companies that import products made overseas into the U.S., including consumer electronics and automotive companies.

Does the Firm work with clients involved in international patent litigations?

Because we represent leading global technology companies, this is most often the case. For defendants, patent litigation in the U.S. is typically more expensive, burdensome, uncertain, and unpredictable than patent litigation in other countries, primarily because of several unique features of the U.S. litigation system. We work with international clients to protect their interests while navigating and complying with the sometimes intrusive nature of U.S. discovery processes.

Have there been any recent noteworthy developments in the patent world from an international perspective?

One significant recent development is the new European Unified Patent Court (UPC), which opened its doors on June 1. Before the UPC, patent owners who wanted to sue for infringement in Europe would have to bring a separate litigation in each country. Now they can file one litigation in the UPC and obtain an infringement damages award and an injunction in all 17 member countries, including Germany, France, Italy, and the Netherlands.

The advantages of being able to obtain cross-border remedies across such a large marketplace presumably should induce patent owners to file in the UPC. Moreover, we expect that the UPC will be more willing than U.S. courts to grant injunctions, in particular for patent-assertion entities who typically cannot obtain injunctions in U.S. courts. It will be interesting to see whether patent-assertion entities file more actions in the UPC, including as another front in an international enforcement campaign with a parallel U.S. lawsuit.

How is the patent world dealing with the rapid pace of developments in artificial intelligence?

The patent community is actively considering and debating the role of artificial intelligence (AI) in innovation and obtaining patent protection. The Federal Circuit concluded last year that a patent cannot be obtained if an AI system is listed as the sole inventor. The court reasoned that the patent statute defines an ‘inventor’ who can obtain a patent as limited to a human being, and the Supreme Court recently declined to review the decision.

Overseas, the Federal Court of Australia also concluded that AI could not be an inventor under the Australian patent statute, and the UK Supreme Court is currently considering this issue under the UK statute.

Additionally, the U.S. Patent and Trademark Office has solicited feedback and is actively considering the impact of AI on the patent application process, including the circumstances in which a human inventor can obtain a patent for an invention developed with the assistance of AI. The U.S. Congress is also holding hearings regarding the impact of AI on intellectual property protection.

“We like to say that we have a 'deep bench' of top tier intellectual property attorneys and can specially curate the right team of people to represent the specific needs of our clients.”

Haug Partners

Jon Gordon and Jenny Lee

Proficiency in Patent Prosecution

Jon Gordon and Jenny Lee

What types of prosecution and counseling services does the Firm provide to technology-focused clients?

As a result of its 20+ years of experience in prosecuting patents across widely diverse technologies – spanning data processing to drug development – clients rely on Haug Partners to protect their innovations in the United States and worldwide. The technology prosecution practice emphasizes computers, data networks, and financial technology, building on our professional experience, such as Partner Jon Gordon’s background as a derivatives trader and a software developer. Gordon has deep experience protecting inventions related to blockchains and distributed ledgers. When seeking patent prosecution services, innovators trust the Firm’s multifaceted experience and insight will let us find and protect the value in their inventions.

How does the the life sciences patent prosecution practice support the Firm’s objectives of maximizing the value of its clients’ intellectual property?

We routinely help innovators secure patent protection for their inventions and help navigate intellectual property questions that arise in day-to-day research and development in the pharmaceutical, biologic, and medical device industries. In life science industries, patent rights are critical in helping innovators protect their research and development investments and manage product life cycles. Our attorneys apply their strong abilities to digest complex biologic and chemical technical information to help clients procure worldwide patent rights. We apply that technical understanding to help clients navigate the interplay between patent protection and regulatory exclusivity regimes and provide a business-oriented approach in building and managing patent portfolios. Often, we work closely with both technical and business personnel to develop patent strategies that are aligned with our clients’ business goals, including life cycle management of products. We are also frequently called upon by our clients to provide patent insights in various types of transactions, including evaluating patent portfolios and regulatory exclusivities relating to pharmaceutical, biologic, and medical device products.