Knobbe Martens Olson & Bear LLP > New York, United States > Firm Profile

Knobbe Martens Olson & Bear LLP
1155 Avenue of the Americas, 24th Floor
NY 10036 New York
NEW YORK
United States

Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings) Tier 1

Co-chairs of the firm’s medical device group Sabing Lee and Salima Merani co-head the patent prosecution practice at Knobbe Martens Olson & Bear LLP , which is noted as being ‘beyond stellar’, from its office in Irvine, California. The team is well-versed on the full scope of patent law, from the development and management of portfolios in more transactional matters, to the contested and complex. The team handles patent counseling and prosecution, new product clearance and licensing, post grant proceedings and inter partes reviews, advising clients in industry sectors from technology to media and entertainment, with particular expertise in both life sciences and biotechnology evident across the practice, with high-value IP diligence work frequently completed for the likes of Cala Health. Terry Tullis and the ‘stand out’ Harnik Shukla, both regularly advise on some of the team’s most significant matters. ‘Detail-oriented’ Sabrina Wang specializes in medical device and consumer product IP law.

Practice head(s):

Sabing Lee; Salima Merani

Other key lawyers:

Shannon Lam; Maria Anderson; Jason Jardine; Maria Stout; Sabrina Wang; Ben Everton; Harnik Shukla

Testimonials

‘The team’s legal knowledge and technical expertise is second to none.’

‘I really appreciate the team’s appreciation for business matters  which it integrates into its patent prosecution strategy. Budgets are respected, filings are carefully fitted into an overall strategy with respect to the clients’ business goals and its competitors’ activities; deadlines are also given priority.’

Knobbe’s team does a fantastic job of diving into the technologies underpinning our patent portfolio. They go far beyond the four corners of our disclosures and dedicate significant time to understanding the inventive concepts of each. Knobbe-prepared applications stand out to those prepared by other firms.’

‘The individuals at Knobbe are both social and professional, which puts our inventors at ease when speaking with Knobbe’s associates and encourages appropriately-scoped conversations.’

‘Knobbe has a great depth and breadth of technical expertise. There aren’t many knowledgeable attorneys and drafters equipped to handle patents as complicated, cutting-edge and technology-focused as ours, but Knobbe has managed to create a winning team on these fronts, which is rare and highly appreciated.’

‘The team at Knobbe have been beyond stellar. As a longstanding client I can say that the competency of the firm separates it from the others. I wouldn’t consider leaving quality team because they give my issues such great attention. The team is collaborative, highly skilled in our key areas and always on top of the latest technologies. They have drafted and successfully defended complex patents for us.’

‘I have complete trust in Shannon Lam and Sabrina Wang. I can rely on them at all times. They do not miss any details and they do not cost me additional money. They support me, they are extremely detail-oriented, great communicators and reliable. Over 10 years, I have never had one issue with them. Ben Everton is another great member of the team which is focused on the core strengths of our patents.’

‘Harnik Shukla’s patent prosecution work stands out in terms of constructive and pro-active deeds and advice. He has not only a will to understand the keys to business value in individual patent cases, but also the capacity to transform that understanding into optimized patent strategy and clear advice and actions.’

Key clients

Kestra Medical Technologies

Vensana Capital

Cala Health

Zentalis Pharmaceuticals, Inc.

CathWorks

Brightseed

Lightstone Ventures

LimFlow SA

CranioVation, Inc.

Action Potential Venture Capital (a GSK investment arm)

Amazon.com, Inc.

Truinject Corp.

Venova Medical, Inc.

Illumina, Inc.

Trove Brands LLC d/b/a Blender Bottle

6K, Inc.

Spectrum Solutions LLC

Smith+Nephew

Edwards Lifesciences

Imperative Care

Work highlights

  • Managed the IP strategy for CathWorks, including overseeing all of CathWorks’ patent and trademark matters and serving as lead IP counsel in connection with its $75m financing and up to $585m acquisition option agreement with Medtronic.
  • Managed an extensive global portfolio for treating tremor through non-invasive neurostimulation for Cala Health and led financing IP diligence to secure $77m in venture funding.

Intellectual property > Patents: licensing Tier 3

Knobbe Martens Olson & Bear LLP, a ‘professional’ team with ‘strong cross-functional knowledge’, fields a large team of experts in the licensing and transactional field with frequent involvement acting in high stake transactions on behalf of global clients. The team works across several industries from nanotech and personalized medicine to sports, fashion, and media, with the negotiation of patent licenses, patent assignments, and material transfer agreements all part of the firm’s regular work. Salima Merani is vastly experienced in conducting patent due diligence for investors, while Sabing Lee bolsters the team with her expertise in a wide range of technologies, with particular emphasis on medical devices and procedures and materials science. Jason Gersting concentrates on the biotech and life science industries. The three practice heads are based in the firm’s Irvine office.

Practice head(s):

Salima Merani; Sabing Lee; Jason Gersting

Other key lawyers:

Kimberly Miller; Terry Tullis

Testimonials

‘They have strong cross-functional knowledge in a variety of scientific fields. They give really practical advice and are not afraid to review drawings directly if most efficient. They are hands on!’

‘They have adapted to our working style to serve us better.’

‘Professional outfit with excellent domain knowledge.’

‘Salima Merani and Jason Gersting are stand-out attorneys. Great leaders and great at problem solving. Good communicators and personable.’

‘Kimberly Miller has amazing breadth of experience from licensing to drafting, prosecution, and IP strategy. Extremely happy with all aspects of the service and advice we’ve received.’

‘Salima Merani is amazing at structuring IP licensing agreements for her clients. She was dedicated, patient, and an ardent advocate of our requests. Above all, she found ways around constraints imposed by the other party to make sure we were getting a great long-term licensing agreement. I can’t think of any IP attorney who can compare to Salima.’

Key clients

Personal Genome Diagnostics Inc. (PGDx)

ICU Medical, Inc.

Nkarta, Inc.

Agilent Technologies, Inc.

Illumina, Inc.

Ulthera, Inc.

Vensana Capital Management, LLC

Cala Health, Inc.

CyDex Pharmaceuticals, Inc.

Aligos Therapeutics, Inc.

Work highlights

  • Advised PGDx on IP litigation and strategy.
  • Advised Vensana on IP matters since its formation.

Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) Tier 3

Knobbe Martens Olson & Bear LLP utilizes its national presence to advise household name corporates such as Monster Energy, Fox, Toshiba, and Amazon, on the maintenance and enforcement of their international trademark portfolios. Headed by brand protection expert Susan Natland and Jeff Van Hoosear, who brings extensive experience appearing in proceedings before the Trademark Trial and Appeal Board, the team’s client base spans sectors ranging from e-commerce, entertainment, fashion, and hospitality to life sciences, food and beverages, aviation and consumer products. The group is supported by intellectual proprety authority and managing partner Steven Nataupsky and in Los Angeles by Jessica Sganga, who counsels clients on electronic commerce matters, including data privacy and data security compliance. Jacob Rosenbaum was appointed to partner in January 2023. All lawyers work in the Irvine office unless noted.

Practice head(s):

Susan Natland; Jeff Van Hoosear

Other key lawyers:

Testimonials

‘By specializing in IP, they offer any service you could want with professionals who really understand every facet of IP law.’

‘Very easy to work with. They explain things in a way I can totally understand. They have a good business sense and provide good direction on what is worth doing and what is not worth doing. Their fees end up being quite reasonable – though hourly rates may be high, they only charge for things they bring added value to.’

‘The team at Knobbe is extremely knowledgeable, accessible, approachable, easy to understand, and pricing is fair. They explain complicated matters in ways both in-house lawyers and business teams can understand. Excellent results also.’

‘Susan Natland is outstanding. I can’t say enough about her as a person and a lawyer. She is an expert in her field, and is always available to talk through issues with clients. She is personable and an excellent lawyer.’

Key clients

Qatar Airways

lululemon

Jacuzzi Brands

99 Cents Only Stores

Amazon.com

Toshiba America Electronics Corporation

HireRight

Meyer Natural Foods

Venus Laboratories (ECOS)

Monster Energy Company

Illumina, Inc.

Masimo

Jelly Belly

Fox Corporation

BJ’s Restaurants

Soke Beauty

Edwards Lifesciences

Mazda North America

Kestra Medical

Work highlights

  • Advising Monster Energy on the management of its worldwide trademark portfolio, handling management, protection, and enforcement.
  • Acting as lead outside counsel for international media company Fox Corporation, protecting and enforcing its various brands.

Intellectual property > Patents: litigation (full coverage) Tier 4

The patent litigation team at Knobbe Martens Olson & Bear LLP represents clients in litigation related to life sciences, spanning biotech, medical devices, and pharma, and electrical, semiconductor, and computer technology litigation, with a number of attorneys in the team with computer science or electrical engineering related degrees. Hatch-Waxman litigation is  a particular specialty of the firm, often advising the largest and most successful generic pharmaceutical companies including Fisher & Paykel Healthcare Limited, Fox Chase Cancer Center, Masimo Corporation, and Edwards Lifesciences. Based in Irvine, Sheila Swaroop and Michael Friedland co-head the team, with experience spanning a wide range of industries. Based in Seattle, Carol Pitzel Cruz is another key figure in the team, highly skilled at representing generics in ANDA litigations under the Hatch-Waxman Act.

Practice head(s):

Sheila Swaroop; Michael Friedland

Other key lawyers:

Carol Pitzel Cruz; Joseph Reisman; William Zimmerman; Joseph Re; Ali Razai; William Adams

Testimonials

‘A very good law firm with partners with immense experience. They are always ready to explore new ideas and welcome suggestions, and have a sound knowledge of the technology involved in the pharma litigations, especially to devices.’

‘Very innovative in approach and ready to consider newer ideas. A big shout out specifically to Bill Zimmerman, Joseph Reisman and William Adams. Very supportive partners’

‘Great people, down to earth, can explain complicated concepts to non-lawyers’

‘Sheila Swaroop is a great listener, down to earth, super smart, and calm. She is a delight to work with. It feels like you are in very capable hands, she is a strategic thinker and determined.’

‘The patent litigation team has a tremendous amount of experience with patent enforcement. They communicate well regarding the process, claims, and possible outcomes. They are well-respected, which helps move cases to resolution.’

‘Ali Razai is very experienced and knowledgeable. He zealously represent our company interests, and is particularly valuable when we find ourselves in the middle of an active litigation case.’

Key clients

Fisher & Paykel Healthcare Limited

Fox Chase Cancer Center

Masimo Corporation

Lululemon athletica Canada Inc.

Spectrum Solutions LLC

Pavemetrics System

Edwards Lifesciences

Spinal Elements, Inc.

Truinject Corp.

Cipla Ltd.

Edge Systems LLC

Lupin Limited, Lupin Pharmaceuticals, Inc., and Lupin Inc.

Work highlights

  • Represented Amazon when CustomPlay sued for allegedly infringing 3 patents related to displaying annotations during the playback of a video.
  • Represented Fisher & Paykel Healthcare in enforcing multiple patents in the respiratory care area covering breathing circuits used with ventilators and nasal cannulas used for high-flow oxygen therapy, including for use with COVID-19 patients.
  • Represented Pavemetrics and its use of computer vision to inspect railroad tracks against Tetra Tech’s claims of patent infringement.

Intellectual property > Trademarks: litigation Tier 4

The team at Knobbe Martens Olson & Bear LLP utilizes its national presence to represent major global brands, such as Monster Energy and lululemon, as plaintiffs and defendants involved in high-stakes infringement litigation. The practice is headed in Orange County, CA by Lynda Zadra-Symes, who brings over 31 years of experience to proceedings in federal court and the Trademark Trial and Appeal Board, and Lauren Keller Katzenellenbogen, who applies expertise in sectors ranging from software, medical devices, and consumer products to fashion, beverages, and entertainment. Other key figures include tech sector specialists Brian Horne and Hans Mayer in Los Angeles. At the Orange County office, Ali Razai, who handles complex matters for clients in biotech and pharmaceuticals, is a key name alongside seasoned litigator, Matthew Bellinger.

Practice head(s):

Lynda Zadra-Symes; Lauren Keller Katzenellenbogen

Testimonials

‘High level of expertise, good rapport within the team, very easy to deal with, responsive and commercial in outlook.’

‘Lynda Zadra-Symes is a stand-out TM litigator, knows her stuff and very commercial.’

‘Deep bench, expertise in all areas of IP.’

‘Ali Razai is a strong team leader, and provides clear guidance on our enforcement options, and has the experience needed to assess our claims.’

Key clients

Qatar Airways

lululemon

Jacuzzi Brands

Amazon.com

99 Cents Only Stores

Toshiba America Electronics Corporation

HireRight

Meyer Natural Foods

Venus Laboratories (ECOS)

Monster Energy Company

Illumina, Inc.

Masimo

Jelly Belly

Fox Corporation

BJ Restaurant

Soke Beauty

Edwards Life Sciences

Work highlights

  • Represented Orange Bang, Inc. and Monster Energy Co, who brought claims against Vital Pharmaceuticals, Inc. (VPX) for breach of a prior settlement agreement and for infringement of Orange Bang’s BANG trademarks based upon VPX’s marketing and sale of its BANG energy drinks.
  • Represented lululemon, the apparel company, which was sued for trademark infringement by the owner of a trademark registration for the ALIIGN mark.