Area Of Focus

MOVING FORWARD
WITH TECHNOLOGY

Medical Device

Innovative medical technology businesses need advice to protect their cutting edge research and development.

Our Medical Device Practice Group includes dozens of skilled legal practitioners with advanced education and extensive experience in drafting, prosecuting, and formulating strategies for patents, trademarks, and trade secrets involving a wide range of medical technologies, as well as in enforcing and defending those intellectual property rights. 

Representing a wide range of medical device technology companies, including innovators of diagnostic tools for primary care physicians, minimally invasive surgical devices and methods for reducing procedure times and health impact on patients, and implantable devices that add years and quality to patients' lives, we are multi-faceted in our approach to providing customized IP legal solutions.  We look forward to assisting your medical technology business to reach the goal of providing technologies that help patients, physicians, and other caregivers improve the quality and longevity of human lives.

Examples of our litigation experience in the medical device area include:

Draeger Medical Systems, Inc. v. Atom Medical International, Inc. and Philips Electronics North America Corp., 2012 (M.D. Florida, Fort Myers).  Our attorneys represented Atom Medical International in a patent infringement action brought by Draeger Medical Systems concerning infant incubator technology.  Related USPTO inter partes reviews were filed by our attorneys on behalf of the client.  The cases settled on terms favorable to the client.

Trudell Medical Int’l. v. PARI Respiratory Equip., Inc., 2010 (E.D. Virginia, Alexandria).  Our attorneys represented Trudell Medical in a patent infringement action asserting patents on nebulizers for delivering aerosolized fluid to an inhaling patient. The parties settled on terms favorable to the client.

Edwards Lifesciences LLC, and EndoGAD Research Pty Ltd. v. Medtronic, Inc., Medtronic AVE, Inc., Cook Incorporated, and W.L. Gore & Associates, Inc., 2003 - 2009 (N.D. California, San Francisco; Court of Appeals for the Federal Circuit).  Our attorneys represented Cook in this patent infringement action filed by Edwards Lifesciences based on four patents concerning endovascular stent grafts for the treatment of abdominal aortic aneurysms and thoracic aortic aneurysms.  The case was resolved favorably to the client on summary judgment of noninfringement, and appeal was affirmed in all respects.  Decision reported at: 582 F.3d 1322 (Fed. Cir. 2009)

Forward Thinking
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Those who were hoping for a clear standard to emerge as a result of the Federal Circuit’s grant of en banc review on the issue of burdens of proof for motions to amend in post-grant proceedings under the American Invents Act (“AIA”) may be disappointed by Aqua Products, Inc. v. Matal, No. 2015-1177, which issued October 4, 2017...

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In affirming a District Court vacatur of a jury verdict of infringement under the doctrine of equivalents, the Federal Circuit held that patent owner Dr. Jang failed to prove that his equivalents theory did not ensnare the prior art...

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Under 35 U.S.C. § 315(e), a final written decision in an inter partes review (“IPR”) by the Patent Trial and Appeal Board (“PTAB”) results in estoppel of certain actions by the petitioner...

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In Ultratec, the Federal Circuit cited several problems with the Board’s permissive rules of trial proceedings and held the Board abused its discretion in its consideration of supplementary evidence...

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On appeal of the district court’s dismissal of Visual Memory, LLC’s patent infringement complaint against NVIDIA Corporation, the Federal Circuit concluded...

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In late June 2017, Sen. Chris Coons (D-DE), Sen. Tom Cotton (R-AR), Sen. Dick Durbin (D-IL) and Sen. Mazie Hirono (D-HI) co-sponsored and introduced in the U.S. Senate the Support Technology and Research for Our Nation’s Growth and Economic Resilience  Patents Act of 2017...

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On June 23, 2017, the Federal Circuit held that a party appealing a decision from the Patent Trial and Appeal Board (“PTAB”)...

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On June 5, 2017, the Federal Circuit arrived at two different conclusions concerning whether a case is exceptional under 35 U.S.C. § 285, reversing the district court in both cases...

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On May 22, 2017, the Supreme Court of the United States issued a decision in TC Heartland LLC v. Kraft Foods Group Brands LLC (Case No. 16-341) altering the landscape of venue for patent infringement litigation...

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In Helsinn Healthcare S.A., v. Teva Pharm. USA, Inc., the Federal Circuit recently held that, despite changes to the statutory language of § 102 under the Leahy-Smith America Invents Act (“AIA”), the Court’s pre-AIA interpretation of the on-sale bar remains the same with respect to public sales...

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On April 4, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) denied Google’s petition for rehearing en banc.  Unwired Planet, LLC v. Google Inc., ___ F.3d. ___, Case No. 2015-1812 (Fed. Cir. Apr. 4, 2017).  In the petition, Google asked the CAFC to overturn Versata Development Group, inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015) in light of the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016)...

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On Monday, March 27, 2017, the U.S. Supreme Court heard oral arguments in TC Heartland LLC v. Kraft Food Brands Group LLC, (Case No. 16-341)...

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On March 21, 2017, the Supreme Court of the United States held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that laches cannot be used as a defense against damages for patent infringement where the infringement occurred within the six year period prescribed by 35 U.S.C. § 286...

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The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options for software-related inventions, post-filing submission of experimental data for chemical inventions, liberalized amendment practice in post-grant invalidation proceedings, and availability of prosecution documents of Chinese patents and applications...

in the media
On March 10, 2017, the Chicago Daily Law Bulletin mentioned attorneys, Jeff Nichols, David Lindner and E. Brandon Nykiel for their participation as featured speakers at the ACI Advanced Summit on Medical Device Patents. Please click here to read ...
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On February 28-March 1, 2017, Jeff Nichols, Brandon Nykiel and David Lindner will be presenting at the ACI 7th Advanced Summit on Medical Device Patents ...

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Since implementation of the Leahy-Smith America Invents Act, inter partes review (“IPR”) and other post-grant proceedings have been used successfully...

Press Releases

CHICAGO—Brinks Gilson & Lione attorneys Jeff Nichols, David P. Lindner, and E. Brandon Nykiel will be featured ...

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As part of its annual “Special 301” identification and review of countries that deny adequate and...

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In its recent In re: Nuvasive, Inc. decision, the Federal Circuit on November 9, 2016 ...

Press Releases

RESEARCH TRIANGLE PARK—Rashad L. Morgan, a shareholder at intellectual property law firm Brinks Gilson & Lione...

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In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit discussed the non-appealable...

 

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On October 6th, 2016, the Federal Trade Commission (FTC) released a greatly anticipated study, the subject ..

 

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Earlier this month, the Federal Circuit held a software-based patent to be eligible under 35 U.S.C. § 101 in...

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On September 21, Keith Weiss will be moderating a technical session, “Process Innovations in 3-D Printing for Nex-Gen

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In recent months, the Ninth Circuit and Fourth Circuit have issued important rulings about how the Lanham Act, ...

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For nearly a century, U.S. federal courts have struggled with the “metaphysical quandary” involved in determining ...

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On July 25, 2016, the Federal Circuit, in In re Magnum Oil Tools Int’l, reversed the final decision of an inter partes ...

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On July 11, 2016, the United States Patent and Trademark Office (Office) announced a new Post-Prosecution ...  

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On June 23, the United Kingdom (UK) voted to exit the European Union (EU) – a decisive move whimsically known ...

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The U.S. Court of Appeals for the Federal Circuit recently ruled in Amgen Inc. v. Apotex Inc. that a biosimilar-product ...

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The Federal Circuit, in an en banc decision, held that to be “on sale” under pre-AIA § 102(b), a product must be the ...

Press Releases

TAMPA—Alejandro J. Fernandez, a partner and litigator at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, has been named to Florida Legal Elite 2016. The annual listing of legal leaders by Florida Trend magazine names fewer than two percent of active Florida Bar members who practice in the state, and this year includes only 20 attorneys who practice intellectual property law...

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On June 21, 2016, the Federal Circuit, in Immersion Corp. v. HTC Corp., held that a patent application filed as a continuation of an earlier application on the issue date of the earlier application has been “filed before the patenting” of the earlier application, and therefore is entitled to the earlier application’s filing date under 35 U.S.C. § 120...

in the media
On June 17, 2016, IP Frontline published an article entitled, “Never Late is Better: PTAB Denies Petitioners Motion in IPR After Missing Filing Deadline By Minutes” written by Oluwafemi Masha, Kent E. Genin and Jennifer Fox.  Please ...
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On May 23, 2016, the Patent Trial and Appeal Board (PTAB) issued a decision denying motions...

Press Releases
SALT LAKE CITY— Intellectual property law firm Brinks Gilson & Lione announced today that Dr. Jonathan Hartley has joined the firm’s Salt Lake City office as a scientific advisor. Dr. Hartley focuses on nanotechnology, ...
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On May 13, 2016, the Federal Circuit, in Merck & Cie v. Watson Labs., Inc., held that an offer for sale that qualifies as a commercial offer under the law governing contracts...

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The Supreme Court recently granted a petition for writ of certiorari to review the Federal Circuit’s en banc decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC.

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President Obama signed into law yesterday the Defend Trade Secrets Act, establishing for the first time an ostensibly uniform national trade secret protection standard...
 

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On April 25, 2016, the Supreme Court heard oral arguments in a case, Cuozzo Speed Technologies, LLC v. Lee, No. 15-446, that seeks to determine whether the Patent Trial and Appeal Board...

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Suggestions to amend or abolish 35 U.S.C. § 101 of the Patent Act are increasing in light of the number of software and biological patents...

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On Friday, January 15, the U.S. Supreme Court granted certiorari in In re Cuozzo Speed ...

Press Releases

SALT LAKE CITY—Brinks Gilson & Lione, one of the nation’s largest intellectual property law ...

Press Releases

CHICAGO—Danielle Gillen, an attorney at intellectual property law firm Brinks Gilson & Lione, and a team ...

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CHICAGO—Intellectual property law firm Brinks Gilson & Lione announced today that Mark H. Remus has rejoined the firm as a partner in its Chicago office. Remus is a seasoned trial lawyer who has served as lead counsel on numerous patent ...
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ANN ARBOR/DETROIT – Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been recognized by The Legal 500 as one of the top U.S. firms for prosecution of utility and design patents for the seventh year ...
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SALT LAKE CITY—Ryan L. Marshall and Craig Buschmann, attorneys in the Salt Lake City office of Brinks Gilson & Lione, have again been included in the 2015 Super Lawyers Mountain States list, the rating service's annual regional listing ...
in the media
On June 23, 2015 Jeff Nichols was mentioned in Chicago Daily Bulletin regarding his presentation at the IP Strategy Summitt on June 28, 2015. Click here to read more.
in the media
On June 18 and June 22, 2015 James Cleland was mentioned in the Detroit and Washtenaw Legal News article, ' Attorney looks at impact of Alice one year later.' Click here to read the Detroit Legal News article. Click here to read the ...
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On June 12, 2015, the Federal Circuit held certain prenatal diagnostic testing claims invalid under Section 101, concluding that the claims were directed to a natural phenomenon. Ariosa Diagnostics, Inc. v. Sequenom, Inc. (2014-1139). The decision ...
Press Releases
CHICAGO—Intellectual property law firm Brinks Gilson & Lione has been recognized by The Legal 500 as one of the top U.S. firms for prosecution of utility and design patents for the seventh year in a row, based on the firm’s ...
in the media
On June 1, 2015 Laura Beth Miller was mentioned in the Chicago Daily Law Bulletin regarding her May 15, 2015 presentation, 'Case Management of Patent Cases Under the Amended Federal Rules,' at the Dirksen Federal ...
Press Releases
CHICAGO—Nine attorneys at intellectual property law firm Brinks Gilson & Lione have been named IP Stars for 2015 by Managing Intellectual Property magazine. For the second year in a row, the publication also designated Brinks' offices ...
Press Releases
ANN ARBOR – On Tuesday, May 26, 2015, in Commil USA, LLC v. Cisco Systems, Inc. the Supreme Court overruled a prior ruling by the Court of Appeals for the Federal Circuit (CAFC) and held that a defendant’s belief regarding patent ...
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Today, in Commil USA, LLC v. Cisco Systems, Inc., the Supreme Court overruled the Court of Appeals for the Federal Circuit (CAFC) and held that a defendant’s belief regarding patent validity is not a defense to an induced infringement ...
Press Releases
CHICAGO—Chambers USA, an annual guide to the world's best lawyers and law firms, has elevated intellectual property law firm Brinks Gilson & Lione to Band 1 for IP law firms in Illinois, its highest designation. Four individual ...
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CHICAGO—For the twelfth consecutive year, intellectual property law firm Brinks Gilson & Lione, one of the largest IP law firms in the United States, has been ranked in the top 20 patent firms in the country by monthly legal industry ...
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CHICAGO—Laura Beth Miller and Janet A. Pioli, two stand-out intellectual property attorneys and shareholders at Brinks Gilson & Lione, have been named by Leading Lawyers to its list of the Top 10 Women Intellectual Property Lawyers in ...
in the media
On March 18, 2015 Mircea Tipescu and Trevor Copeland were mentioned in Chicago Daily law Bulletin for their participation in the ACI Medical Device Patents conference. Click here to read more.
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In the United States, patent term extension is available under the 1984 Drug Price Competition and Patent Restoration Act, also known as the Hatch-Waxman Act (“The Act”). The Act allows the extension of the term of a patent claiming a ...
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On February 5, 2015 Daniel Parrish and Mircea Tipescu’s article, “3 Cost-Effective Ways to Protect IP When Working With Suppliers,” was published in the blog, Medical Device and Diagnostic Industry. Click here to read more.
Press Releases
SALT LAKE CITY—Attorney Eric D. Babych of Brinks Gilson & Lione, one of the nation's largest intellectual property law firms, has moved to the firm's Salt Lake City office from Chicago. 'We're pleased to welcome Eric to ...
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In Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. __, No. 13-854 (2015), the Supreme Court overturned the Federal Circuit’s long-standing precedent that claim construction is subject to strict de novo review. In a 7-2 decision authored by ...
Press Releases
CHICAGO—Twenty-four attorneys at Brinks Gilson & Lione, one of the nation's largest intellectual property law firms, are named to the 2015 Illinois Super Lawyers list by Super Lawyers, a rating service that lists lawyers from more than ...
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The U.S. Patent and Trademark Office has issued preliminary examination instructions for the Patent Examining Corps to follow when examining claims for compliance with 35 U.S.C. § 101. The instructions are effective as of June 25, 2014, and the ...
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This morning, the U.S. Supreme Court changed the legal test for awarding attorney fees, issuing decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc.  In Octane ...
Press Releases
ANN ARBOR – James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been reappointed for a second, two- year term to serve as a member of the ...
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On January 22, 2014, a unanimous Supreme Court ruled in Medtronic, Inc. v. Mirowski Family Ventures, LLC, No. 12-1128, that a licensor bears the burden of persuasion on the issue of patent claim coverage over products that the licensor asserts fall ...
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In a unanimous decision in Association for Molecular Pathology, et. al. v. Myriad Genetics, Inc. et. al., the U.S. Supreme Court found “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been ...
Press Releases
CHICAGO – Eleven attorneys at intellectual property law firm Brinks Gilson & Lione have been recognized as IP Stars for 2013 by Managing Intellectual Property magazine, for their insights into the intricacies of practicing IP law and their ...
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On January 14, 2013, President Obama signed into law a “technical corrections” bill that amends provisions of the Leahy-Smith America Invents Act (AIA), the recently enacted patent reform legislation. While much of the technical ...
Press Releases
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
Press Releases
CHICAGO – Thirty-eight attorneys from Brinks Gilson & Lione have been named in the 2013 Super Lawyers Illinois Edition, in the categories of Intellectual Property, Intellectual Property Litigation, and Alternate Dispute Resolution ...
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On December 7, 2012, the Supreme Court granted certiorari in Federal Trade Commission v. Watson Pharmaceuticals, et. al. (11th Cir.). This case concerns “reverse payment” settlement agreements, which are not uncommon in the ...
Press Releases
CHICAGO – The 2012 Super Lawyers Business Edition has named 24 attorneys from Brinks Gilson & Lione in the categories of Intellectual Property and Intellectual Property – Litigation respectively. The following Brinks attorneys are ...
Press Releases
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
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On August 16, 2012, the Federal Circuit issued, after remand from the Supreme Court, its opinion in The Association for Molecular Pathology v. Myriad Genetics, Inc., No. 2010-1406, slip opinion (Fed. Cir. August 16, 2012) (“Myriad”). The ...
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On July 30, 2012, the Federal Circuit issued a decision in Caraco Pharmaceuticals, Ltd. v. Novo Nordisk on remand from the Supreme Court. As summarized in an earlier client alert (click here for the previous alert), the Supreme Court held in April ...
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On July 16, 2012, the Third Circuit issued a key ruling in In re K-Dur Antitrust Litigation regarding so-called “reverse payment” settlement agreements, which are not uncommon in the pharmaceutical industry. In these types of agreements, ...
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The U.S. Patent and Trademark Office is set to mark a milestone in its history next week, with the opening of its first regional office. On July 13, 2012, the “Elijah J. McCoy U. S. Patent and Trademark Office” officially opens its doors ...
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Today the U.S. Supreme Court issued its long awaited decision regarding the constitutionality of the 2010 Patient Protection and Affordable Care Act (“ACA”). This Act provides a legal framework for regulatory approval of biosimilar ...
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On February 8, 2012 the The United States Patent and Trademark Office (USPTO) announced the Patents for Humanity pilot program. This 12-month program rewards patent owners for using their patented technology to address humanitarian needs by bring ...
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At the beginning of 2012, Brinks Gilson & Lione welcomed James R. Sobieraj as the firm's new president. Please click here for a personal message from Jim, as well as details on the growth of the firm.
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Jeffry M. Nichols and Andrea Lynn Evensen’s article “Patent Validity Challenges in the Medical Device and Diagnostic Industry” was republished on IP Frontline on Nov. 16, 2011. Read the original article here.  
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Jeffry M. Nichols and Andrea Lynn Evensen’s article “Patent Validity Challenges in the Medical Device and Diagnostic Industry” was republished on Mondaq on Oct. 27, 2011.
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Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 1360 (November-December 2004).
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OVERVIEW The first federal act specifically relating to the theft of trade secrets was enacted into law on October 10, 1996. The Economic Espionage Act is a combination of two proposed bills. One bill, S 1557, was introduced in Congress to cover ...
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