1/27/20 An Introduction to Fish Prepared for: Overview Fish Background Practice Groups Overview Patent Litigation Expertise Patent Prosecution Expertise Post-Grant Expertise Trademark & Copyright Expertise Regulatory and Government Affairs Expertise Selected Attorneys
2 Fish Background 3 Historical Impact Since our founding in 1878, we have been an IP-focused law firm. Our attorneys have represented many of historys leading innovators. 1883-1893 Fish successfully defends Alexander Graham Bell in more than 600 telephone patent cases
1913 Fish helps Wright Brothers prevail over Glenn Curtis in infringement case involving 1906 Flying Machine patent 2015 Adobe Systems turns to Fish to defend it against patent infringement allegations against its renowned Photoshop software. A jury found no liability for Adobe 4
Modern Excellence Repeatedly recognized by industry publications for firm wide and individual attorney excellence. Top Patent Litigation Firm for 12 Consecutive Years by Corporate Counsel Top Ranking in Patent Prosecution by Managing Intellectual Property Named a top
trademark law firm by World Trademark Review Elite Ranking in All IP Disciplines by Best Lawyers and US News & World Report Top Patent Litigation Firm for 10 Consecutive Years by Corporate Counsel 5
Seamless International Capacity 11 Offices Nationwide, 1 European Office 6 400+ Professionals 26 Former Circuit Clerks 213 U.S. 50 Technology Specialists 72 Former Registered 350 Attorneys Circuit Patent Attorneys Clerks
& Agents 87 PhD's with Multiple Areas of Expertise 50 227 U.S. Registered Patent Attorneys 77 & Agents Technology Specialists Ph.D.s 348 Attorneys in Offices Across the U.S. and in Germany 7 Inclusivity. Opportunity. Innovation.
As a firm that serves the worlds greatest visionaries, Fish knows that innovation often results from seeing the world in a different way. We recognize that diverse backgrounds provide unique perspectives that result in new and better solutions. Women and minorities currently make up 35 percent of our attorney population and 47 percent of our professional legal staff. Having a diverse team that reflects the diversity of the public arena enhances the quality of legal services we provide to our clients and helps strengthen our standing as a premier IP law firm. 8 Fishs Diversity Initiatives Affinity Groups A set of internal resource groups for legal staff with common interests and backgrounds, which foster a sense of community and inclusion Asian Legal Staff, Black Legal Staff, GLBT and Hispanic Latino Legal Staff.
EMPOWER Our firmwide initiative that is meant to promote the recruitment, retention, and advancement of the firms female legal staff. 1L Diversity Fellowship Program Provides annual fellowship to diverse first-year law students throughout the country. OnRamp Fellowship Program A unique re-entry program that matches experienced women lawyers returning to the workforce with law firms for a one-year paid position. 9 Recognized Leader in Diversity Top 25 Best Law Firms for Diversity: Diversity for Military Veterans Vault 2016 Top 25 Best Law Firms for Diversity: Diversity for Individuals with Disabilities Vault 2016 Ranked in the Top 20% of Law Firms for Diversity American Lawyer Diversity Scorecard 2015 Ranked #26 on the List of Top 100 Law Firms for Minority
Attorneys and #19 on Top 25 Firms for Asian-American Attorneys Law 360 2015 Awarded the Top Rating of 100% for the Treatment of LGBT Employees in the Workplace Human Rights Campaign Corporate Equality Index 2015 Ranked #33 Out of 233 Law Firms, Placing Us in the Top 15% American Lawyer Diversity Scorecard 2014 Named to the Do Good, Do Well List for Excellence in Both Diversity and Profitability Minority Corporate Counsel Association 2013-2014 10 Patent Litigation Expertise 11 #1 in Patent Litigation Experience
Fish has been named the top patent litigation defense firm in the U.S. in 2015 according to Lex Machinas recent Patent Litigation Year in Review analysis. For 12 straight years, Fish has handled more patent litigation than any other firm, as highlighted in Corporate Counsel magazine. In 2015 Corporate Counsel recognized that Fishs 201 federal district court patent cases the year before meant it handled twice as many cases as our nearest competitor. Having the most experience gives Fish the tools to efficiently handle your patent litigation matters. 12 Recognized Leader Patent Litigation IP Litigation Law Firm of the Year U.S. News & Best Lawyers 2013,
2014, 2016 Tier 1 National Ranking for Patent Litigation in Managing Intellectual Propertys Survey 2011-2016 #1 Patent Litigation Firm Corporate Counsel 2004-2015 Patent Litigation Law Firm of the Year U.S. News & Best Lawyers 2015 Busiest Patent Defense Firm Law360 2015 IP Litigation Powerhouse BTI Consulting Group 2011, 2015 Top Tier 1 National Rankings in Patent Litigation The Legal 500 20122015 Intellectual Property Hot List National Law Journal 2012-2015 Appellate Hot List National Law Journal 2008-2009, 2013-2015 Finalist, Litigation Department of the Year The American Lawyer 2010, 2014 #1 Busiest Patent Litigation Firm Law360 2014 IP Practice Group of the Year Law360 2012-2014 13
Recognized Leader ITC Litigation Top Tier 1 National Rankings in the ITC Managing Intellectual Propertys Survey 20112016 Band 1 National Ranking for ITC practice Chambers USA: Americas Leading Lawyers for Business 2010-2015 Top National Rankings for ITC Practice The Legal 500 2014-2015 #1 Firm at the ITC National Law Journal 2014 14 Representative Litigation Clients
15 Our Approach to Litigation Comprehensive, Solutions-based Approach 16 Alternative Fee Arrangements In addition to offering standard hourly billing rates, Fish is a leader in shaping and modeling alternative fee proposals that provide predictability in the monthly costs incurred for each litigation. Fish has implemented various alternative billing arrangements across its practices and is ready and equipped with many suitable models.
Fixed Fee Contingency Fee Collared Fee Blended Rate Holdback with success bonus Combination of Billing Methods 17 Results-Oriented The most suitable AFA structure depends on the strategic importance
and value of the matter to the client. Fish partners with clients at the outset to understand their business objectives and identify the best model for that matter or group of matters. Thousands of the world's largest and most innovative companies trust Fish for strategic counseling and litigation services to protect and maximize the value of their intellectual property. Let us do the same for you. 18 Patent Prosecution Expertise 19 Recognized Leader Patent Prosecution Consistently Ranked as the #1 Patent Practice in the US
Top Tier 1 IP Ranking in Patent Prosecution Managing Intellectual Property 2011-2016 Named IP Powerhouse BTI Consulting Group 2014-2015 Top Tier 1 Rankings Patent Law, Technology Law, Intellectual Property Litigation, Patent Litigation, and Trademark Law U.S. News-Best Lawyers, Best Law Firms Survey 2012-2015 Recipient of Top 2013 "Band 1" Rankings in Intellectual Property and International Trade Chambers USA 2011-2015 Top Tier 1 National Rankings in Patent Litigation and Patent Prosecution The Legal 500 2014-2015 Patent Prosecution and Patent Litigation Practices Received Top National Rankings IAM Patent 1000: The Worlds Leading Patent Practitioners 2014 IP Practice Group of the Year Law360 2012-2014 Go-To Intellectual Property Law Firm for Top Fortune 500 Companies Corporate Counsel 2012-2013
20 5,000+ US Patents Filed in 2014, 2013 One of the Most Active Patent Prosecution Firms in the World 2014 2013 2012 2011 2010 2009
2008 U.S. Patent Application Filings Utility/Design 3,875 3,990 4,044 3,950
752 668 809 934 Foreign Direct 2,656 2,507 2,650 2,823
2,484 2,673 2,666 Total Filings 8,439 8,284 8,508 8,533
7,502 7,318 8,241 21 Maximizing ROI, Minimizing Costs Strategic Portfolio Management Approach Maximizes the Value of IP Assets, While Keeping Costs Down Identify Crown Jewels and focus spend accordingly Set budgets according to relative importance of patent Litigation avoidance strategies Identify licensing opportunities/alternative revenue streams
Internal efficiencies keep costs down for our clients, reduce number of billable hours FishLink extranet Fully integrated communications across offices 22 Representative Clients 23 Post-Grant Expertise 24 Post-Grant Experience CBM 49 Matters
IPR 336 Matters Patent Owner; 31.03% Patent Owner; 44.44% Petitioner; 55.56% Petitioner; 68.97% * As of 2/29/16 25 Busiest PTAB Law Firm in the U.S. for 2014 Fish was involved in more PTAB proceedings in 2014 than any other firm, and ranked as a tier 1 firm for PTAB litigation by Managing
Intellectual Property Number of PTAB cases for petitioner Number of overall PTAB proceedings Rank Firm 94 1
Fish & Richardson 154 Sidley Austin 82 2 Sterne Kessler 150 3 Wilmer Cutler Pickering Hale
and Dorr 73 3 Law Offices of Gregory J Gonsalves 140 4 Oblon Spivak 72
92 Rank Firm 1 Fish & Richardson 2 * Data from Managing Intellectual Property, 2015 26
Why Choose Fish for Post-Grant? The Most Active Post-Grant Practice in the World Majority of post-grant matters handled are co-pending with litigation Built on foundation of unmatched patent reexamination practice, and European opposition practice based in our Munich office Co-chaired by both patent and litigation principals
Experience in patent prosecution almost 5,000 US patents filed in 2014 allows us to capitalize on detailed knowledge and understanding of USPTO Extensive patent litigation experience ranked the most active patent litigation firm for 10 consecutive years positions us to maximize the use of litigation tools made available through post-grant proceedings Closely aligned with, and frequently speak alongside, members of the Patent Trial and
Appeal Board (PTAB) and USPTO including Director of the Central Reexamination Unit (CRU) Frequently updated resources available at fishpostgrant.com 27 Why Choose Fish for Post-Grant? Thought-Leadership Closely aligned with, and frequently speak alongside, members of the Patent Trial and Appeal Board (PTAB) and USPTO including Director of the Central Reexamination Unit (CRU)
Co-chairs of post-grant practice invited by USPTO to participate as speakers during PTAB AIA Trial Roundtables in 2014, speaking in both Detroit and Chicago. Dedicated website, fishpostgrant.com, contains up-todate alerts/news, webinars, proceeding descriptions, stays First firm to offer in-depth, post-grant content via mobile device 28 Trial Proceedings 29
Trademark & Copyright Expertise 30 Recognized Leader Trademark Named a top trademark law firm by World Trademark Review (WTR) 1000 (2011-2016) a heavyweight reputation as a critical competitor with a national reach across the market In a league of its own, Fish & Richardson impresses for its keen awareness of the commercial issues at play in trademark disputes They understand more than the law; they consider all the implications for the business and take the issues to heart; they really feel like part of our company. Clients confide this is the firm we always go to and
recommend and couldnt ask for better trademark counsel. Tier 1 firm for National Trademark Law U.S. News & Best Lawyers Best Law Firms (2011-2016) 31 Recognized Leader Trademark Top 10 IP Cases In Re Bose One of the Top 10 Cases of the Year, Managing Intellectual Property, In re Bose (2009) Federal Circuit Court of Appeals overturned the Trademark Trial and Appeal Board's (TTAB) controversial Medinol decision and reversed an order by the TTAB canceling the registration of
the famous Bose WAVE trademark, setting a new standard for proving fraud US Trademark Case of the Year (2010 Managing Intellectual Property North American Awards) 32 Trusted Trademark Counsel Counseling: selection, clearance, adoption and development of marks, and proper trademark use Prosecution: prosecution, maintenance and management of domestic and international portfolios
Litigation and Dispute Resolution Advertising and content review Domain name disputes Transactions: licensing, acquisitions, due diligence Protection and enforcement: trademark watch programs, trademark use investigations, cease & desist letters Trademark Trial and Appeal Board (TTAB)
proceedings 33 Active Trademark Practice 1,700+ US and foreign trademark applications filed in 2015 22,000+ Active US and foreign trademark applications on our docket 115+
US Opposition and Cancellation matters filed in last 5 years (Trademark Trial and Appeal Board) 135+ UDRP cases won, with 95% overall success rate 34 Trusted Trademark Counsel 35 Trusted Copyright Counsel 36
Representative Trademark & Copyright Clients 37 Regulatory and Government Affairs Expertise 38 Regulatory and Government Affairs Based in Washington, DC Technology-based regulatory practice Federal, state, and international regulatory expertise Integration with Intellectual Property and Litigation practices 39
Regulatory Practice Areas Advertising & Marketing Communications & Spectrum Drugs & Medical Devices Export Control, Foreign Policy & National Security Issues Satellites & Space Systems 40 Regulatory Agency Experience Federal Communications Commission (FCC) Department of Commerce/National Telecommunications and Information Administration (NTIA) Food and Drug Administration (FDA) Department of State/Directorate of Defense Trade Controls (DDTC) Department of Commerce/Bureau of Industry and Security (BIS)
Department of Treasury/Office of Foreign Assets Control (OFAC) Federal Aviation Administration (FAA) National Aeronautics and Space Administration (NASA) National Oceanic and Atmospheric Administration (NOAA) Department of Defense (DOD) Department of Homeland Security (DHS)/US Customs an Border Protection (CBP) Federal Trade Commission (FTC) Consumer Product Safety Commission (CPSC) Department of Labor/Occupational, Safety and Health Administration (OSHA) 41 Communications & Spectrum Equipment authorization and compliance License management Foreign radio regulations and international standards Spectrum leasing and broadband technologies E-Rate procurement
Spectrum allocation Enforcement matters 42 Technology Standards Expertise Domestic EMC (FCC) Electrical Safety (NFPA, NEC and federal and state OSHA) Radiation Safety (FCC and FDA) Medical Safety (FDA) International Various EU Directives (EMC, LV, RTTE, Medical Implants, Medical Devices, RoHS and WEEE) IEC/CISPR, ISO and ITU Standards Foreign National Standards Work in 70 Countries
Quality System Regulations TCB Accreditation and Laboratory Compliance 43 Export Controls Licensing and compliance issues International Traffic in Arms Regulations (ITAR) Commerce Departments Export Administration Regulations (EAR) Foreign assets and transactions control regulations administered by the Treasury Departments Office of Foreign Assets Control (OFAC) Technical assistance agreements Encryption controls Training and audits Nonproliferation controls Deemed exports
Distribution agreements 44 Drug and Medical Device Hatch-Waxman expertise Interrelationship between patent and drug laws to protect patent exclusivity for products worldwide Advise and counsel clients on the 271(e)(1) safe harbor Orange Book practice and patent litigation under 271(e)(2) Marketing exclusivities for pioneers and generics Patent term extensions Medical device approvals Marketing authorization from FDA (510(k) marketing applications) Medical device labeling Quality system compliance
Imports and exports Recall and other corrective actions 45 Crisis Management Quick Resolution to Enforcement Actions and other Risk Events Negotiated with FCC to prevent recall of 3+ million client devices while resolving compliance issues Within 2 weeks of being retained, negotiated with FDA to lift ban on importation & sale of clients electronics 46 Selected Attorneys 47
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