Overview

Intellectual property rights are often key to the success of new water projects, ventures, and transactions. Our Intellectual Property Group has extensive technical knowledge in water treatment and many years of experience supporting water industry clients with patent procurement, licensing and exploitation, portfolio evaluation and analysis, and dispute avoidance and resolution. We have built and managed international water-technology patent portfolios, licensed patent rights in water technology equipment and processes, evaluated water technology and conducted intellectual property audits, provided opinions on patentability, validity, patent scope, infringement, and design-around alternatives, provided state-of-the-art technology surveys and patent mapping, provided IP due diligence in the sale of water technology and water tech companies, and defended water tech clients’ positions in inter-party disputes. Our patent lawyers have technology backgrounds that matter most in water technology - chemistry, bacteriology, chemical engineering, environmental engineering, materials science, mechanical engineering, fluid mechanics, electrical engineering, and computer science, and they work closely with our corporate and regulatory lawyers to help ensure technological integrity in all Water Group projects.

Experience
Representative Experience
  • Advising a New York investment bank on the strength of its international patent portfolio of leading U.S. water equipment manufacturing and distribution companies.
  • Obtaining patents and counseling on use of water sprinkler technology for a Fortune 1000 international fire and loss prevention services provider.
  • Obtaining patents and successfully exploiting an international patent portfolio for a leading U.S.-based international supplier of mobile ultra-pure water treatment services.
  • Counseling a Fortune 500 manufacturer and distributor of leading residential water purification system on the actionable nature of advertising claims made by major competitor.
  • Obtaining patents for an Ohio-based environmental monitoring water instrumentation company and participating in sale of business in a transaction exceeding $300 million.
  • Successfully defending U.S. patents for deoxygenation technology in three patent infringement lawsuits, resulting in injunctive relief and eight-figure damages awards.
  • Providing IP due diligence and valuation support to mobile water treatment company in the $338 million sale of a business to a U.S. water purification equipment manufacturer.
  • Implementing a trade secret program and negotiating nondisclosure agreements for protecting proprietary water purification methodology used at nuclear power plants.
  • Representing a developer of anticorrosive coatings in the acquisition of patents and implementation of trade secret and patent program.
  • Providing opinions on validity and infringement regarding a competitor’s patents claiming method for catalytic removal of organics with activated carbon.
  • Counseling a client in U.S. district court and on appeal in an infringement dispute with W.R. Grace over oxygen scavenger chemicals used in bottle cap liners.
  • Evaluating the validity and scope of portfolio of patents for natural gas recovery for possible acquisition by a venture capital company.
  • Handling patent matters involving water and wastewater treatment, ultra-pure water, catalysis, chemical additives, coatings and alloys, automatic control systems, database management, distillation, filtration, reverse osmosis, instrumentation, manufacturing processes, nanotechnology, power plant chemistry, turbo machinery, stormwater treatment, pumps, valves, fittings, and fluid storage and dispensing.