Practice Strengths

Patents

We draft and prosecute utility and design patent applications and provide patent counseling and litigation services across a full range of technologies and arts. Through our network of international affiliates, patent protection can also be assessed, secured and enforced worldwide.

In addition to prosecuting patent applications, we prepare patentability assessments and opinions; advise on validity and infringement issues; conduct patent due diligence in business combinations; identify patents that can be sold, retired or exploited to secure maximum value; and negotiate and draft all forms of patent-related agreements, such as licenses, joint development agreements and rights transfers.

Baker Hostetler also provides enforcement monitoring services and can provide client-specific and portfolio-specific Internet portals. These portals allow clients to easily and efficiently assess the status and value of their Intellectual Property (IP) portfolio for general commercial purposes and compliance with regulatory requirements such as Sarbanes-Oxley.

Leadership in Action
Patents: Realizing the value of patents
Client: ImagExpo, L.L.C., a subsidiary of SPX Corporation, a multibillion-dollar global provider of technical products and systems, industrial products and services, flow technology and service solutions
Type of Matter: Patent infringement case in the U.S. District Court for the Eastern District of Virginia.
Our Client's Challenge: Patent infringement suit brought by ImagExpo to enforce a patent relating to collaborative software.
The Goal: Obtain damages for past infringement.
Our Strategy: Brought suit in the Eastern District of Virginia, known as the "rocket docket," to bring suit to trial quickly.
Results: Obtained a favorable settlement for ImagExpo/SPX Corporation.


About Our Intellectual Property Team

Our team of dedicated IP lawyers and patent agents has the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).

Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.

Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.

Solution
Baker Hostetler develops client-specific, secure Internet sites or "portals" for fast and efficient matter management and client communication.   Read More

Leadership in Action
Patents: Realizing the value of patents
Client: ImagExpo, L.L.C., a subsidiary of SPX Corporation, a multibillion-dollar global provider of technical products and systems, industrial products and services, flow technology and service solutions
Type of Matter: Patent infringement case in the U.S. District Court for the Eastern District of Virginia.
Our Client's Challenge: Patent infringement suit brought by ImagExpo to enforce a patent relating to collaborative software.
The Goal: Obtain damages for past infringement.
Our Strategy: Brought suit in the Eastern District of Virginia, known as the "rocket docket," to bring suit to trial quickly.
Results: Obtained a favorable settlement for ImagExpo/SPX Corporation.


Intellectual Property—Patents Lawyers
Bukola T. Aina Associate
Washington, DC 202.861.1545
John F. Bennett Associate
Cincinnati 513.929.3485
William C. Bergmann Partner
Washington, DC 202.861.1549
Anthony R. Carlis Staff Attorney
Washington, DC 202.861.1616
Erdal R. Dervis Partner
Washington, DC 202.861.1744
David A. Einhorn Partner
New York 212.589.4644
Stephen S. Fabry Partner
Washington, DC 202.861.1714
Matthew P. Hayden Associate
Cincinnati 513.929.3418
Robert B.G. Horowitz Partner
New York 212.589.4240
Kevin W. Kirsch Partner
Cincinnati 513.929.3499
David E. Kitchen Associate
Cleveland 216.861.7060
Richard M. Knoth Partner
Cleveland 216.861.7412
Annette Kwok Associate
Washington, DC 202.861.1683
Richard M. Lehrer Partner
New York 212.589.4618
Eugene Lieberstein Of Counsel
New York 212.589.4634
Hanna F. Madbak Associate
New York 212.589.4608
David A. Mancino Partner
Cincinnati 513.929.3495
John M. Mings Partner
Houston 713.646.1380
Christina J. Moser Partner
Cleveland 216.861.7818
Phong D. Nguyen Partner
Washington, DC 202.861.1610
Jason S. Oliver Associate
New York 212.589.4649
Louisa T. Ryan Associate
Washington, DC 202.861.1703
A. Neal Seth Partner
Washington, DC 202.861.1775
Kenneth J. Sheehan Partner
Washington, DC 202.861.1682
Thomas H. Shunk Partner
Cleveland 216.861.7592
Victor Siber Partner
New York 212.589.4696
Adam M. Treiber Of Counsel
Washington, DC 202.861.1707
Oren J. Warshavsky Partner
New York 212.589.4624
Intellectual Property—Patents Professionals
David Bright Scientific/Technical Advisor
Washington, DC 202.861.1648
Michael David Graham Patent Agent
Washington, DC 202.861.1629
For more information on our Patents practice:
National Contact

John H. Weber

202.861.1526
Chicago
Ronald S. Okada 312.416.6210

Cincinnati

David G. Holcombe 513.929.3402
Cleveland

Thomas H. Shunk

216.861.7592

Deborah A.Wilcox

216.861.7864

Columbus

Daniel J. Gunsett

614.462.2642
Costa Mesa
George T. Mooradian 714.966.8800    
Denver
Raymond L. Sutton 303.764.4103   
Houston
Lisa H. Pennington 713.646.1303
Los Angeles
C. Dennis Loomis 310.442.8865
New York

Gerald J. Ferguson

212.589.4238
Orlando

James V. Etscorn

407.649.4067
Washington, DC
Kenneth J. Sheehan 202.861.1682

Contact

National Contact
John H. Weber
202.861.1526


Contacts by Office »

Practice Highlights

A team of more than 50 dedicated IP lawyers, patent agents and scientific experts, many with advanced technical degrees in fields such as nuclear engineering, electronics, biotechnology, aerospace controls, chemicals and software and circuit design.

Patent, trademark and copyright clearance opinions, prosecution, counseling and licensing both domestically and worldwide, through our network of associated lawyers and agents.

Patent, trademark, unfair competition, copyright and trade secret litigation within federal courts, the ITC, the TTAB, the FTC, ICANN and other administrative agencies both domestically and worldwide, through our network of associated lawyers and agents.

Transaction and “best practices” counseling that ranges from due diligence, formulation of IP standard operating procedures, employee and contractor agreements, joint development agreements, product and process clearance opinions to infringement/ non-infringement opinions.

Management and monitoring services of large global patent and trademark portfolios for multinational clients.