Westerman Hattori Daniels & Adrian, LLP

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WHDA is a full service intellectual property law firm. Our patent lawyers have strong technical backgrounds in the mechanical, electrical, optical, chemical, pharmaceutical, metallurgical, and biotechnical arts.  We handle patent and trademark application preparation and prosecution for small, medium, and large clients around the world, including Fortune 500 companies.  For many years, our firm has ranked in the top 25 of Intellectual Property Today’s Top Patent Firms based on the number of issued U.S. patents.  With about 30 patent attorneys and agents, WHDA is ranked fourth in comparison to the approximately 120 patent law firms in the U.S. having 10-35 patent attorneys/agents in these rankings. 

One impressive feature that sets WHDA apart from other U.S. law firms is our streamlined patent and trademark prosecution practice that focuses on quality and cost effectiveness.  Our attorneys and highly trained staff maximize both U.S. Patent and Trademark Office (USPTO) procedures and the latest technologies to monitor, manage, and prosecute applications in our clients’ patent and trademark portfolios.  Our clients also benefit from our representation in interferences, ex parte reexaminations, inter-partes reviews, and post-grant reviews for patent applications, and opposition and cancellation proceedings for trademark applications and registrations. 

In addition to practicing before the USPTO, our experienced litigation practice group routinely represents domestic and international clients in all technologies and all aspects of intellectual property litigation in U.S. federal district courts, the U.S. Court of Appeals for the Federal Circuit, and the U.S. International Trade Commission (ITC).  Our attorneys also regularly prepare licensing agreements, trademark assignments and consent agreements, conduct due diligence title investigations and trademark audits, provide strategic portfolio management and litigation counseling, and render opinions for product clearance, patent validity, and infringement.  We have also assisted clients in building and monetizing IP assets, as well as procuring third party patents to ensure freedom of operation or to improve cross-licensing/counterclaim positions in litigation.  

For one client, we developed a patent portfolio strategy that included one original application leading to numerous continuation and divisional applications, some issuing as patents, while others remaining pending to best capture potential variations from a targeted infringer (a Fortune 500 company).  One pending application in this series was used to provoke an interference with the target infringer.  Although initial licensing offers were ignored and the opposing counsel was one of the top interference attorneys in the US, we successfully secured a sale of the client’s entire patent portfolio in the related technology area, with a license back.  The target infringer may have been impressed with our litigation performance because its chief patent counsel wanted to hire us afterwards.

For another client, through continuous contacts to stay current with the client’s products and new developments, we saw a potential market launch of a new product without sufficient intellectual property protection.  Even though a utility patent application was not needed for the new product, we explained the significance of other forms of intellectual property protection and their applicability to the client’s business strategies and short product cycle in the marketplace.  Our quick assessments resulted in timely filed trademark and design patent applications that created strong intellectual property protections that might otherwise not have existed and/or been possible to obtain after launch. 

WHDA takes its clients’ situation seriously.  When the life of a client company was at stake in a patent infringement action by its main competitor, we successfully defended the client in federal district court and in the ITC, ultimately securing a non-infringement decision from the ITC after a full trial and a favorable settlement before resumption of the parallel district court case.  Our firm’s lead role in expert witness preparation and handling of expert testimony during trial at the ITC was so effective that opposing counsel (from a prestigious patent litigation firm) declined cross-examination of our one and only expert witness.  This unheard-of concession of cross-examination, despite numerous rulings by the Administrative Law Judge that many of the issues raised by the opposing counsel could be addressed in cross-examination, solidified our win in the case.  Another significant aspect of this litigation was the cost control WHDA provided over potentially exorbitant attorney’s fees.   

In another ITC investigation, our client was sued by a much larger competitor for infringing a series of patents.  Our depositions of the competitor’s fact and expert witnesses, both in the United States and in Japan, were so effective in highlighting weaknesses in their case that the competitor withdrew its complaint before the ITC trial was scheduled to begin.

WHDA also represented a Fortune 500 company in patent infringement litigation as a plaintiff in the U.S. for the first time in that company’s history.  We developed and executed a U.S. litigation strategy for a worldwide effort to stop a copycat infringer.  A consent exclusion order was successfully secured from the ITC, and another consent order was successfully secured from federal district court against the infringer’s U.S. distributor.  A unique aspect of this case was the negotiation leverage afforded by the U.S. litigation in pursuing a worldwide settlement of infringement.

In a trademark infringement litigation, instead of the plaintiff securing a monetary victory against our client, we turned the tables and secured a monetary victory for the defendant.  Based upon our cross-examination that effectively discredited the plaintiff’s expert survey witness, the court denied the requested preliminary injunction against our client.  Consequently, we crafted a creative settlement in which the plaintiff literally gave a defined dollar amount (at cost) of its branded products to our client.  Our client was then able to sell the branded products at a higher wholesale price to effectively achieve a monetary compensation from the plaintiff. 

Taking the best strategies in different situations is important.  When appropriate, ex parte reexamination or inter partes review may be used to our client’s advantage.   In several cases, after being threatened with a lawsuit and even after litigation has commenced, reexaminations filed by WHDA have secured cancellation of asserted claims and amendments to asserted claims that precluded infringement. 

We have also been successful in resisting reexamination requests filed against our clients’ patents.  In one case, we took the unusual step of filing a preliminary response to an ex parte reexamination request – causing the USPTO to determine early on that the request had failed to raise a substantial new question of patentability and thus denying it, thereby confirming the validity of our client’s patent claims.  In another case, we first overcame a difficult ex parte prosecution to obtain a patent for our client, and then we successfully defended our client’s patent against extensive prior art assertions by the opponent, without any claim amendments, during an inter partes reexamination.  Our proactive interview with the Examiner and demonstration of the invention during ex parte prosecution, and a well-developed “unexpected benefits” theory in both the ex parte prosecution and the inter partes reexamination overcame close prior art.  From this win, the subject patent is now in an elite class of approximately 12% of patents surviving inter partes reexamination without claim amendments and with all claims confirmed valid.

In our trademark practice, our trademark attorneys routinely counsel our clients in connection with the acquisition of existing trademark rights – both registered and at common law -- conducting due diligence investigations as to the all-important ownership chain of title and, where appropriate, offering solutions to remedy a break in the chain; and conducting trademark audits to insure that all of the company’s trademarks to be assigned are included and/or protected in the acquisition transaction.  We also frequently work with corporate counsel in reviewing the IP component of transactional documents (such as asset purchase agreements and mergers) effecting the sale and/or disposition of trademark and copyright rights.

Our attorneys have also been instrumental in utilizing U.S. Customs and Border Patrol and recording trademark and copyright registrations to block the importation of infringing and/or piratical copies of products, and in some cases to monetize such recorded registrations by licensing them for a paid-up royalty to allow importation on a limited one-time basis.

WHDA understands that various clients have different budget concerns for litigation or special projects that sometimes do not fit the traditional hourly billing system employed by most law firms.   On a number of occasions, WHDA has adopted alternative fee arrangements, such as fixed fee or hybrid fee plans.

Our dedication to client satisfaction continues on a day-to-day basis.  Besides quickly responding to client concerns, we proactively engage our clients through visits, monthly lectures, trainee education, seminars, keeping clients abreast of the latest developments in U.S. intellectual property law, legislation, and USPTO guidelines and pilot programs.  Our attorneys contribute to various blogs and write articles addressing current topics.  WHDA also hosts a bi-annual seminar series that includes a three week intensive course in Washington, DC for the Japan Intellectual Property Association.