Legal insights
Analysis from the front lines of IP & technology law.
Our attorneys write about the developments shaping intellectual property—from the PTAB and the Federal Circuit to the practical realities of protecting fast-moving technology.
Preparing Exhibits and Demonstratives for Trial: A Practical Guide
Exhibit preparation is a project with a schedule, and the trials that go smoothly are the ones where the work was done in the right order twelve weeks out. This guide sets out that schedule: building the exhibit database from the case theory backwards, securing certifications under Rules 902(11) through (14) while there is still time to cure objections, and running the stipulation session that eliminates most foundation testimony. It covers writing foundation scripts that a junior lawyer can execute, designing demonstratives that survive objection, managing redactions so that the version admitted matches the version the jury receives, and preparing motions in limine that are worth filing. Later sections address the courtroom technology check, the daily exhibit log, deposition designations, and the jury room set. Worked examples follow a document-heavy commercial trial and a case tried on a compressed schedule.
Preparing and Delivering a Closing Opinion: A Practical Guide
This guide takes a closing opinion from the first request to the file that remains afterward. It starts with scoping—deciding what will be covered, in which jurisdictions, and what will be declined—and with the jurisdictional map that determines how much local counsel is needed. It then works through the diligence that supports each opinion paragraph: organizational documents, authority, the material agreement review, statutory review, and the Article 9 work behind a security interest opinion. The middle sections cover drafting the assumptions, qualifications, and reliance language, and the internal review that firms use to keep opinions consistent. The last sections cover negotiation, delivery mechanics, and the backup file that answers every later question.
Preparing a CFIUS Filing: A Practical Guide
A step-by-step operational guide to preparing and prosecuting a CFIUS filing, written for deal counsel and in-house lawyers who will run the process. It covers the threshold screen at the term sheet stage, the export control classification that determines whether a filing is mandatory, ownership chain mapping, the choice between a declaration and a written notice, assembling the filing, the pre-filing draft period, responding to Committee questions, negotiating mitigation, and the pull-and-refile decision. It includes a worked filing with named parties, a realistic calendar, budgets, staffing, and the mistakes that add months. Deal-document provisions and the non-notified response are covered separately.
Placing and Tendering a D&O or Cyber Claim: A Practical Guide
Insurance works when it is placed carefully and tendered promptly, and fails for procedural reasons far more often than substantive ones. This guide covers both halves. The placement sequence runs from building the exposure picture and preparing the submission through negotiating the terms that matter—dedicated Side A, exclusion triggers, allocation, exhaustion, and cyber sublimits—and harmonizing a tower assembled from several carriers' forms. The claims sequence covers recognizing a claim, giving notice that satisfies every layer, the notice-of-circumstances judgment, managing panel counsel and rate negotiations, responding to a reservation of rights, and documenting a first-party loss so that it can be paid. Later sections address coverage counsel, mediation with multiple carriers, and the renewal conversation after a loss. Worked examples follow a first D&O placement, a claim tendered across a six-carrier tower, and a disputed business interruption claim.
Petitioning for Certiorari or Rehearing En Banc: A Practical Guide
This guide sets out how to build a petition that has a chance, and how to defeat one. It begins with the decision that matters most—whether to file at all, and if so in which case—then the conflict research and vehicle analysis that determine the answer. Drafting sections work through the question presented, the statement, and the reasons for granting, in the order the Court reads them and with the merits argument in its proper subordinate place. Respondent sections cover the waiver decision, the structure of a brief in opposition that leads with vehicle problems, and how to handle a call for a response. Later sections cover amicus coordination, the rehearing en banc petition and its intra-circuit conflict ground, panel rehearing as a narrowing tool, deadline and appendix mechanics, and reading the signals between distribution and disposition.
Patent Licensing Toolkit: Grant Clauses, Royalty Structures, and Exhaustion Analyses
This toolkit provides the drafting language and analytical frameworks that decide the outcome of a patent licence. It opens with a grant clause built as a limitation rather than a covenant, with the field, territory, have-made, and sublicensing provisions that follow from it—including the sublicence survival language that protects a business built beneath a head licence. Royalty materials include a net sales definition with an exhaustive deduction list, a Brulotte-compliant step-down schedule, stacking relief, and a most-favoured-licensee clause that will not detonate later. An audit clause with cost shifting, a marking and verification provision, an improvements framework with a bounded grant-back, and enforcement and joinder language follow. The toolkit closes with an exhaustion analysis worksheet, a covenant-not-to-sue drafting note, and a one-page licence summary template for the people who will actually operate under the agreement.
Patent Licensing and Exhaustion: Field-of-Use Limits, Covenants Not to Sue, and What the First Sale Ends
Patent exhaustion is the doctrine that decides where a patent owner's control over a particular article stops, and after 2017 the answer is blunter than most licensing programmes assume. An authorized sale exhausts the patent rights in the article sold, wherever in the world the sale occurs, and restrictions the seller imposed as a condition of that sale do not survive as patent rights even when they survive as contract rights. This article traces the doctrine from the nineteenth-century cases through Quanta and Impression Products, explains why a field-of-use limitation on a licensee behaves differently from a restriction on a purchaser, and shows what a covenant not to sue actually accomplishes. It examines the drafting choices that preserve a licensor's position—grant scope, have-made rights, sublicensing, and the tiered royalty structures that replace lost downstream control—and the ones that quietly destroy it. It also addresses post-expiration royalties under the Brulotte rule, the licensee's ability to challenge validity, and misuse. Worked examples run through a component supplier, a printer cartridge programme, and a medical device sold under a single-use label.
Patent License Negotiation Checklist
This checklist runs a patent licence negotiation from diligence through signature and into administration. It begins with the ownership and encumbrance verification that determines whether the licensor can grant what it is offering, then the freedom-to-operate work that determines whether the licence is worth taking. The grant section covers the enumerated rights, the field as a limitation rather than a covenant, have-made rights, and sublicensing survival. Money sections address the base, deductions, structure, minimums, milestones, step-downs, and stacking, followed by the reporting and audit provisions that make royalties collectable. Later sections cover improvements, enforcement and standing, representations and indemnity, termination and survival, and the marking obligation that quietly determines recoverable damages. It closes with an exhaustion analysis both parties should run before signing and a post-signature administration list.
Patent Eligibility Under Section 101: The Alice/Mayo Framework and How Courts Apply It
Section 101 is fifty-two words long and it decides more patent cases at the pleading stage than any other provision. This article explains the two-step Alice/Mayo framework, what the Supreme Court actually held in Bilski, Mayo, Myriad, and Alice, and why the same claim can be ineligible in one court and survive in another. It covers the judicial exceptions and their rationale, how step one identifies what a claim is "directed to," what counts as an inventive concept at step two, the factual questions Berkheimer put in front of the fact-finder, and why the USPTO applies a materially different framework than the courts. It closes with what the doctrine means for claim drafting, for a defendant deciding when to move, and for a patentee deciding what to assert.
Patent Eligibility Checklist: A Practical Checklist
A working checklist for patent eligibility, usable by a defendant screening asserted patents, a patentee deciding what to assert, and a prosecutor drafting claims that will survive. It opens with the two-hour screen and the specification read that decides most motions, then works through the step-one characterization, the step-two inventive-concept analysis, the representative-claim and claim-construction questions, and the Berkheimer factual dispute. Separate sections cover the patentee's pleading, the Patent Office framework and how it differs, life sciences claims, drafting rules, and the coordination with Section 103 and PTAB positions. Every item is written so that a "no" tells you what to do next.
Parallel Proceedings Toolkit: Anti-Suit Motions, Comity Analyses, and Coordination Protocols
This toolkit supplies the working documents of a cross-border parallel-proceedings dispute, annotated with the consequence each carries. It provides an anti-suit motion outline built around the thresholds that defeat most applications, a proposed order drafted narrowly enough to be granted and to survive appeal, and a foreign counsel declaration template. It supplies a stay motion for the situations where less is more, a comity analysis memorandum, and the coordination protocol and position paper that prevent two sets of counsel from undermining each other. An evidence conflict matrix, a recognition opinion request, simultaneous settlement mechanics, and preventive dispute resolution clauses complete the set.
Parallel Proceedings and Anti-Suit Checklist
When a foreign proceeding appears, the decisions that determine the outcome are made in the first two weeks, and most of them are checkable. This checklist covers the immediate steps, including the deadlines and the forum clause review that take minutes and determine everything. It then runs the strategic assessment—race, enjoin, stay, or settle—with the judgment recognition analysis that should precede any decision to race and the thresholds that defeat most anti-suit applications. Later sections cover the coordination machinery, the evidence conflicts between compelling and prohibiting jurisdictions, witness and position discipline, preclusion tracking, and the simultaneous settlement mechanics that resolve both proceedings at once.