Case Studies

Patent Prosecution
A client’s patent application for a procedure to prepare a new polymer was rejected due to obviousness.  The patent examiner cited a Japanese patent application as a previous teaching of the procedure.  The imprecise procedure described in the Japanese application was repeated several times using different sets of reaction conditions.  None of the procedures yielded the client’s polymer.  Dr. Harris participated in a meeting with the patent examiner where he presented the experimental results.  The client’s application was approved.

Patent  Defense
A patent was being asserted against a client’s chemical process.  A client’s scientist convinced management that the firm’s process did not infringe.  To support their defense, the client requested an independent analysis of their process.  After considerable experimentation, it was determined that the process did infringe.  Numerous experiments by the client’s scientist failed to prove otherwise.  The case was settled out of court.

Patent Defense
A patent was being asserted against a client’s chemical process.  As part of the defense, a critical example in the Plaintiff’s patent was repeated over 20 times.  None of the repetitions produced the claimed results.  In fact, a declared critical step was found to be unnecessary.

Patent Assertion
A client was considering asserting a patent against a competitor’s controlled release pharmaceutical product.  To this end, a detailed analysis of one of the critical polymeric components of the competitor’s product was carried out.  Although the polymer was the same as that used by the client, its molecular weight fell outside the client's claims.