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Patent Counseling, Prosecution & Litigation

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Jack S. Barufka
Partner, Northern Virginia
T: +1.703.770.7712
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Recognized by Chambers USA, IAM Patent 1000, U.S. News Best Law Firms and The Legal 500 U.S., Pillsbury’s Patent team is highly regarded in all aspects of patent prosecution, optimization, enforcement and protection.

Pillsbury secures broad patent protection for domestic and international organizations. We file over 3,900 patent applications and obtain nearly 1,600 patents for clients annually, manage thousands of domestic and international patents and help optimize patent value through licensing arrangements. Our team comprises professional engineers, scientists and lawyers with advanced degrees in electrical, mechanical and chemical engineering, biology, chemistry, physics and computer science. We also employ former patent examiners from the USPTO, patent agents and technical consultants, all under the supervision of our lawyers, to create outstanding work product in a cost-effective manner.

With offices in key business centers and an extensive network of handpicked international IP lawyers, we secure worldwide patent protection. Pillsbury utilizes the latest technology, including an advanced online tracking system and customized extranet to provide real-time information and at-a-glance reports to help clients easily manage their patent portfolios. Further, our patent litigators have an impressive record of success in federal and state courts and before the Patent Trial and Appeal Board and the International Trade Commission.

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  • Prosecution
    • Preparing and Prosecuting Patent Applications in the United States and Abroad
    • Arranging for Patentability, State-of-the-Art, Infringement and Invalidity Searches
    • Securing Electrical, Mechanical, Chemical, Pharmaceutical, Biotech and Computer Science Patents
    • Design Patents
    • Utility Patents
    • Reissue Patents
  • Counseling
    • Rendering Legal Opinions on the Strengths and Weaknesses of Patents
    • Advising on Patent Interference Strategies
    • Negotiating License Agreements
    • Merger/Acquisition/Divestiture Counseling
    • Licensing
    • Co-Development and Collaborative Arrangements
    • Providing Creative, Value-Enhancing Worldwide Patent Portfolio Management Advice
    • Joint Ventures and Strategic Alliances
    • Freedom-to-Operate Opinions
    • Patent Investigations
    • Due Diligence
  • Litigation
    • District Court Litigation
    • ITC Investigations and Litigation
    • Post-Grant Proceedings
    • Federal Circuit
    • Court of Federal Claims
    • Hatch-Waxman Litigation

Representative Experience

  • Advised a multinational bank in all IP matters worldwide, including patent, trademark, copyright, licensing, IP diligence, IP agreements, monetization, domain names, and handling patent and trademark litigation and opposition matters.
  • Defended Rigetti Computing against two inter partes reviews (IPRs) brought against one of its foundational patents by IBM, with the PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
  • Achieved favorable arbitration ruling for University of Kansas following years litigating a closely watched battle over inventorship credit on National Institute of Health-owned patents covering cancer drug formulations.

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  • Represented Atlas Copco as the patent challenger in two IPR proceedings, based on two patents involved in eight cases pending in District Court of Delaware. The PTAB issued final written decisions in favor of Atlas Copco, finding all challenged claims unpatentable. Upon the patent holder’s appeal, the Federal Circuit affirmed the PTAB’s decisions, resulting in a complete victory for Atlas Copco.
  • Defended SiTime in a patent infringement suit filed by VTT Technical Research Centre in the Northern District of California involving MEMS resonator device technology, including arguing the case-dispositive term in one of the first virtual Markman Hearings, that led to the Court’s finding the asserted patent invalid and the client prevailing at the conclusion of Markman stage of the proceedings, with the Court on its own entering judgment in favor of SiTime.
  • Defended SweeGen and Blue California in a patent infringement lawsuit brought by PureCircle in the Central District of California involving highly soluble stevia sweeteners in which we prevailed on a Motion to Stay the case in light of a Post Grant Review filed with respect to one of the patents in suit. 
  • Defended ViewRay in a patent infringement lawsuit brought by Varian Medical Systems in the Northern District of California involving radiotherapy technology in which we prevailed following a virtual Markman Hearing wherein the judge’s order found six claims indefinite.
  • Secured an $18 million settlement payment to Toshiba Corp. in a patent infringement action against a Taiwanese competitor over DVD technology, and later won a $13 million arbitration award, confirmed on appeal, for further royalties due under the settlement agreement.
  • Represented petitioner Medtronic in three inter partes review proceedings in which all challenged claims to a “Percutaneous Aortic Valve Replacement” were found unpatentable by the Patent Trial and Appeal Board, a ruling the Federal Circuit affirmed on appeal.
  • Conducted complex patent invalidity, infringement, due diligence and freedom-to-operate studies and analyses for technology and life sciences companies and clients in a wide variety of other industries.
  • Provided guidance to life sciences companies in preparing and prosecuting patent applications, evaluating external patent landscape and competitors’ IP positions, and identifying partners for specific technology development.
  • Successfully defended Stanley Black and Decker in a bench trial against claims that one of its popular products infringed the design patent on a competitor’s similar product.
  • Pursued action for Invitae Corporation to have declared invalid genetic testing patents asserted by Myriad Genetics in a Utah MDL proceeding. Following extensive litigation, Myriad abandoned its patent enforcement efforts.
  • Successfully defended Atlas Copco in a patent infringement jury trial with over $200 million in damages at stake. Prevailed in district court and Federal Circuit appeals, winning a seven-figure attorneys’ fees award.

Practice Area Highlights

  • Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2023) and Texas (2022 – 2023).
  • Recognized nationally for IP Litigation, Patent Litigation, Patent Law, and Trademark Law by U.S. News – Best Lawyers (2024).
  • Ranked by The Legal 500 U.S. in patent prosecution, including reexamination and post-grant proceedings (2022).

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  • Ranked in Washington, DC and Texas as one of the world’s leading IP practices across all aspects of patent law by Intellectual Asset Management’s “IAM Patent 1000,” with six partners recognized individually, including one national ranking (2023).
  • Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property magazine, in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2023).

Resources

2024 MOST FEARED FIRMS

BTI Consulting recognizes Pillsbury as one of the most feared law firms in litigation.

IP Courts & Entities At-a-Glance
Updates (COVID-19)

Factsheet

Customized Client Extranets for Intellectual Property

PTAB Handbook

Factsheet

European IP Practice

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