Vinson & Elkins
Firm overview:
Vinson & Elkins is one of the oldest law firms in Houston, where its headquarters are located. A peer names V&E as a go-to firm for patent work, of which it is skilled in all areas. The patent prosecution team works closely with patent litigator colleagues to ensure a multi-faceted approach to protecting clients’ assets. The firm also has a dedicated IP Counseling practice that develops comprehensive protection strategies and advises on licensing and other aspects of maximising clients’ inventions.
V&E has prosecuted patents in a wide range of industries including life sciences, medical devices, food and consumer goods, aerospace, computer software, plastics, scientific instruments, sports, energy and high tech.
The firm’s clients range from small start-ups to multinational industry leaders, universities, and medical centres.
Team overview:
The key contact for patent prosecution work is technology and IP counsel Rajesh Patel who counsels clients in transactional issues regarding IP assets. Patel’s experience includes patent preparation and prosecution, license agreements and the IP aspects of mergers and acquisitions.
On the contentious side, Hilary Preston represented clients in intellectual property litigation and commercial disputes in trial and appellate courts across the country. Preston’s experience includes representing a global leader in solar cell technology in patent infringement litigation regarding innovations in solar panel modules.
Jeffrey Han also focuses on patent litigation, representing clients before numerous federal district courts, the US Court of Appeals for the Federal Circuit, the US International Trade Commission, and the US Patent and Trademark Office. He also has experience in AAA arbitration proceedings.
Key matters:
Non-Contentious:
- Vinson & Elkins advised Gravity Oilfield Services in the sale of its Gravity Water Midstream division to Delek Logistics Partners, LP (NYSE: DKL) for an aggregate $285 million, consisting of cash and DKL common units.
- The V&E team included Rajesh Patel and Haley Titcomb, a senior associate in the corporate department. Titcomb provides IP advice in corporate transactions and has prepared and prosecuted US and international patents.
- V&E has prosecuted patents relating to medical devices, including spinal implants, wound therapy, syringes, catheters, orthodontics, mammography, ocular and nasal drug delivery, and transdermal delivery patches.
Contentious:
- (Fed. Circ. Court of Appeals); (W.D. Tex.) — Maxwell, Plaintiff-Appellant v Amperex Technology, Defendant-Appellee
Maxell owns a patent that describes and claims a rechargeable lithium-ion battery. The claims require a transition metal element M1 “selected from Co, Ni and Mn,” and the claims also require “the content of Co” in M1 is from 30% by mole to 100% by mole.
Amperex asserted the claims are indefinite because the two claim limitations are contradictory. In a claim construction hearing the district court agreed, reasoning the first limitation does not require cobalt (because nickel or manganese suffices) while the second limitation requires cobalt. Maxwell appealed.
The Federal Circuit reversed, concluding “there is no contradiction in the claim language at issue in this case.”
Hilary Preston, Vinson & Elkins, Austin, Texas, argued for the plaintiff-appellant, with Corbin Cessna, Jeffrey Han, Erik Shallman; Eric Klein, Paige Wright, Dallas, Texas.
David Bloch, Greenberg Traurig, San Francisco, argued for the defendant-appellee, with Harold Davis, Yang Liu, East Palo Alto, California.
Clients:
Non-Contentious: Atlas Energy Solutions, ARA Partners, Global Infrastructure Partners, Gravity Oilfield Services; Contentious: Maxwell
