Gleason IP Intellectual Property Case Studies

	CASE STUDIES		Commercial Success / Nexus Technology

Valuation

Energy

Manufacturing A

Manufacturing B

Manufacturing C

Commercial Success / Nexus

Life Sciences / Pharmaceutical

Technology

IP Licensing

Life Sciences

Technology

Litigation / Patent Infringement / Preliminary Injunction

Communications

Life Sciences / Pharmaceutical A

Life Sciences / Pharmaceutical B

Manufacturing

Medical Devices

Trademarks / False Advertising

Manufacturing

Retail

A patent application for a specific system component was rejected by the United States Patent and Trademark Office (USPTO) on the grounds of obviousness due to prior art. The owner of the system (including the majority of other components protected by numerous previously issued patents) filed suit against the USPTO for allegedly improper patent application rejection. The patent applicant's expert asserted that the system's commercial success hinged on the specific component. Neither the component nor the system are mutually exclusive and must be used in conjunction to produce the desired results.

Gleason IP Results

The Gleason IP team was engaged by the USPTO and the Office of the Solicitor to perform various financial and economic analyses related to secondary considerations of nonobviousness, specifically the system's commercial success related to the claimed invention of the patent application. First, we analyzed whether the system was commercially successful and then determined if its success (if any) was driven by the claimed features noted in the patent application (i.e., nexus).

Also, we analyzed the patent applicant's competitors, including differences in technology, business and licensing models, incentives offered, and marketing strategies. We examined survey and sales data and marketing spending and reviewed the patent applicant's already existing deep patent portfolio covering the system and its components. Our analyses focused on correlation and causation to determine the primary drivers of the commercial success (if any).

The matter between the patent applicant and the USPTO settled confidentially. Gleason IP valued the opportunity to work with the USPTO and the Office of the Solicitor and gained unique perspective that adds to our practice's well-rounded resume.