Practice Areas & Industries: Eversheds Sutherland (US) LLP


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Practice/Industry Group Overview

Eversheds Sutherland’s patent lawyers possess strong scientific and technical backgrounds, enabling us to provide exceptional strategic IP counsel.

Companies invest tremendous resources into developing inventions and innovations, yet losing control of intellectual property can be frighteningly easy. Patents allow companies to protect their valuable intellectual property, and many clients rely on Eversheds Sutherland to leverage and safeguard their portfolios. Our attorneys bring a unique combination of technical knowledge and legal acumen to our patent practice, providing prosecution, counseling and opinion advice that allows clients to develop global strategies and programs. We help clients protect their proprietary technologies. We focus on practical and business aspects geared to our clients’ commercial objectives, so they can maximize protection, build assets, protect markets and develop revenue streams for patentees, their investors, licensees and business partners.

Patent law requires extensive and detailed knowledge of the underlying scientific disciplines that form the base for new inventions and innovations. The broad scientific and technical backgrounds of our patent lawyers enable us to advise clients on a wide range of technologies. Our patent lawyers prepare and prosecute patent applications in many different areas.

Our attorneys protect the IP of many prominent global entities, including some of the world’s largest life sciences research institutions, chemical companies, financial transaction providers and energy production companies. However, our practice is not limited to counseling Fortune 100 companies. Our client roster extends to entrepreneurs and start-ups, and we provide IP counseling on products and processes from inception to marketing. Our group works closely with Eversheds Sutherland’s other practice areas to develop and execute strategies for clients seeking to enforce their rights or who are accused of violating the rights of others.

Why Eversheds Sutherland
Technical knowledge. Many of our professionals have prior experience as scientists and engineers, such as our chemical prosecution team that includes three Ph.D. chemists and six chemical engineers.

Range. Eversheds Sutherland’s IP practice assists companies with all of their domestic and international needs. We counsel clients on patent prosecution, validity analysis, litigation and portfolio management; freedom-to-practice opinions and patent infringement strategic counseling; technology transfer, patent licensing and other cooperative commercialization agreements; re-issue, re-examination, and interference practices; due diligence reviews in connection with mergers and acquisitions; and IP audits and evaluations.

Corporate and regulatory backgrounds. Several of our patent attorneys have worked as in-house counsel at industry-leading companies and as examining attorneys at the U.S. Patent and Trademark Office (USPTO), giving us unique insights into business objectives and regulatory priorities.

Focus. Our IP Practice Group is composed of nearly 30 attorneys, 25 of whom are registered patent attorneys.

Trial experience. Our attorneys are willing and able to litigate on behalf of our clients. Our patent litigation team represents both plaintiffs and defendants involving a variety of technologies in cases involving disputes over infringement, validity, inventorship and ownership of patents.

Serving a wide range of industries. Our clients’ patented goods and services encompass consumer products, computers, software, electronics, basic and specialty chemicals, energy and clean technologies, biomedical devices, biotechnology, and include mechanical inventions as well the emerging area of business methods.

Nuts and Bolts
We provide the full range of patent services, including:

  • Preparing and filing patent applications in all of the technological arts
  • Prosecuting patents in the U.S. and internationally
  • Auditing technology to identify patentable subject matter and develop strategies to protect it
  • Advising on alternative methods to protect patentable, commercially valuable information
  • Mapping client patents and/or competitor patents for strategic analysis
  • Developing and implementing patent programs to grow and manage patent portfolios
  • Performing due diligence reviews and negotiating IP-related provisions in mergers and acquisitions
  • Performing a due diligence validity review of pending or issued patents
  • Preparing non-infringement invalidity and clearance opinions
  • Analyzing and advising with regard to infringement claims of patent-holding companies
  • Drafting, negotiating and advising about technology development and acquisition or licensing
  • Litigating issues of ownership, licensing, validity and infringement

Take Action
Often, the first and most important action attorneys can take is to truly listen to their clients. We always consider how patents fit into a client’s overall business objectives, and listen carefully to identify exactly what the client views as a successful outcome.

Selected Experience

Provides patent prosecution and counseling services to The Coca-Cola Company, including obtaining numerous patents for the Freestyle® dispenser.
Provides general patent counseling and prosecution to The Coca-Cola Company, the world’s largest nonalcoholic beverage company. Among our work for Coke, we represented the company in obtaining a number of patents on the Coca-Cola Freestyle® dispenser, the company’s interactive fountain dispenser.

Advises a Fortune 50 healthcare corporation on intellectual property matters, including counseling, prosecution and portfolio management.

Advises a Fortune 50 healthcare corporation on its intellectual property needs. We provide general patent counseling and worldwide patent prosecution and advise on patent portfolio strategies and third-party patent issues. We also advise and counsel on the selection, adoption and protection of its trademarks.

Provides patent prosecution and counseling services to GE related to power generation technologies.

Provides general patent counseling and prosecution services to GE related to power generation technologies, including gas turbine improvements and smart grid innovations.


Articles Authored by Lawyers at this office:

Revised 2017 Antitrust Guidelines for IP Licensing; Qualcomm Ensnared in New Antitrust Suits for Licensing Activities
Ann G. Fort,Robert R.L. Kohse, January 20, 2017
On January 12, 2017, the U.S. Department of Justice and the Federal Trade Commission issued updated “Antitrust Guidelines for the Licensing of Intellectual Property” for the first time since 1995. The updated Guidelines are intended to play a fundamental role in the agencies’...

A Smaller Bite for Apple? Supreme Court Limits Damages for Design Patent Infringement
Ann G. Fort,Anna C. Halsey, December 09, 2016
In a case reversing a $399 million damages award to Apple, the U.S. Supreme Court has held unanimously that an “article of manufacture” under the design patent damages statute can be anything from an entire product to a single component of a multi-component product. The decision made...

Going Au Naturel: New York Federal Judge’s Recent Decision Represents the Increasing Class Action Litigation Risks of “Natural” Product Labels
Melissa A. Conrad-Alam,Ann G. Fort,Gregory S. Kaufman,Ronald W. Zdrojeski, October 04, 2016
In today’s competitive food and beverage industry, product labeling plays a significant role in marketing. Labels touting a product’s “natural” ingredients or health benefits allow manufacturers to charge a premium for their product and capture market share. Natural product...

EU Leaders Approve EU-U.S. Privacy Shield
, July 14, 2016
The European Union’s (EU) Article 31 committee, which is made up EU member states, has voted to approve the EU-U.S. Privacy Shield. This Trans-Atlantic Privacy Shield data transfer procedure replaces the safe harbor data transfer arrangement that was struck down by the European Court of...

Brexit Impact on European Patents and Trademarks
Karissa F. Blyth,Peter G. Pappas, June 24, 2016
On June 23, in the popularly-termed “Brexit” referendum, the United Kingdom voted to exit the European Union, a decision which will have wide-ranging effects, including potential effects on intellectual property rights in the UK.

Solidifying Claim Construction in Inter Partes Review - Cuozzo Allows Patent Office to Govern the Inter Partes Review Process
Karissa F. Blyth,Ann G. Fort,Robert R.L. Kohse,Peter G. Pappas, June 23, 2016
On June 20, the U.S. Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 2016 WL 3369425 (June 20, 2016) upheld the Patent Office’s long-held policy of construing a patent claim according to its broadest reasonable construction even in review and also barred judicial...

Righting Copyright Wrongs Remains Elusive - Kirtsaeng Leaves Fee Awards to District Court Discretion
Ann G. Fort,James H. Johnson,Robert R.L. Kohse,Peter G. Pappas,Daniel J. Warren, June 17, 2016
On June 16, the U.S. Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons Inc., No. 15-375, resolved a circuit court split by reaffirming the test district courts should use to determine whether to award attorney’s fees to the prevailing party in copyright litigation. The...

Stay Out of the Weeds: Egregious, Not Garden-Variety, Patent Infringement Is Subject to Enhanced Damages
Ann G. Fort,Walter S. Freitag,Robert R.L. Kohse,Peter G. Pappas,William L. Warren, June 15, 2016
On June 13, the U.S. Supreme Court unanimously rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in patent cases. In two cases decided together, Halo Elecs., Inc. v. Pulse Elecs., Inc., and Stryker Corp. v. Zimmer, Inc., the Court found that the Federal...

Implementing the Whistleblower Immunity Notice Provision under the Recently-Enacted Federal Defend Trade Secrets Act
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, May 20, 2016
The Defend Trade Secrets Act, signed into law on May 11, 2016, includes a whistleblower immunity notice provision. An employer that wants to preserve maximum recoveries for misappropriation against an employee should take action now.

UPDATE: Federal Defend Trade Secrets Act Signed Into Law; Employers May Need to Notify Employees
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, May 13, 2016
After overwhelming passage in both the House and Senate, President Obama signed the Defend Trade Secrets Act into law on April 11, 2016. The Act provides a truly uniform, nationwide set of standards for protecting trade secrets, plus a private right of action to sue in federal court. By creating a...

UPDATE: Federal Defend Trade Secrets Act Clears the House, Passage into Law Expected
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, April 28, 2016
As expected, overwhelming support for the Defend Trade Secrets Act of 2016 led to its passage in the U.S. House of Representatives yesterday by a 410-2 vote. During the floor debate, one Congressman noted that “Congress has the responsibility to give industries the tools they need to protect...

Federal Defend Trade Secrets Act Clears the Senate: Is the Uniform Act on Life Support?
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, April 12, 2016
The U.S. Senate has unanimously approved a bill increasing the protections available to companies for their commercial secrets. The Defend Trade Secrets Act of 2016 (DTSA or the Act) provides for the first time a truly uniform, nationwide set of standards protecting trade secrets, plus a private...

Panama Papers Leak 11.5 Million Documents, Exposing Public Officials
, April 11, 2016
On Sunday, April 3, 11.5 million confidential documents exposing a widespread system of global tax evasion were made public as a result of a hack. The documents, which were records of the Panamanian corporate service provider and law firm Mossack Fonseca, were obtained by an anonymous source,...