Intellectual Property

Nutter achieved a significant win for its client Intergraph Corporation. Intergraph invented a distinct graphic for the on-screen display of its software product and engaged Tom Tuytschaevers to obtain a “design” patent for the graphic. A design patent is a patent that grants ownership to the ornamental design of a product. The Examiner at the U.S. Patent and Trademark Office (“U.S.P.T.O.”) rejected Intergraph’s application based on the Examiner’s erroneous interpretation of the statute and a U.S.P.T.O. precedential decision. Tom persevered through a multi-year battle with the U.S.P.T.O., including a successful appeal to the U.S.P.T.O.’s Patent Trial and Appeal Board (“Board”). Tom researched the evolution of the U.S.P.T.O.’s standards for design patents, briefed the appeal, and represented Intergraph at oral arguments before the Board, ultimately convincing them to rule in Intergraph’s favor. The Board’s decision clarifies the U.S.P.T.O.’s design patent standards and holds the potential to change the way the U.S.P.T.O. examines design patent applications for computer displays.

Nutter served as legal counsel to ALM Works, Inc., the developer of software products to empower project managers around the world with visibility and control, in connection with its acquisition by Tempo Software, a leading provider in team time management and productivity-enhancing solutions.

Nutter served as legal counsel to Connected Home Care, LLC, a leading home care provider serving Medicaid, dual-eligible, and private pay clients throughout Eastern Massachusetts, in connection with its acquisition by HouseWorks, LLC, one of the nation’s largest independent home care companies.

Nutter served as legal counsel to Ce3, Inc., a full-service CRO focused on providing early phase oncology clinical development services to the biotechnology industry, in connection with its acquisition by Catalyst Clinical Research, a clinical development organization providing highly customizable clinical research solutions to the global biopharmaceutical industry.

Nutter served as legal counsel to Gravyty, a market-defining provider of fundraiser enablement solutions powered by artificial intelligence, in connection with a $21 million investment from K1 Investment Management, a leading investment firm focusing on high-growth enterprise software companies.

Nutter advised Strategic Cyber LLC in connection with its acquisition by HelpSystems, a Minnesota-based IT software company.

Nutter served as legal counsel to Agrify Corporation, a developer of premium indoor grow solutions, in connection with its acquisition of TriGrow Systems, Inc.

Nutter served as legal counsel to Innovation Associates, the market-leading provider of high-volume pharmacy automation technology and software solutions to the retail, hospital, government, and mail order pharmacy markets, in connection with a consortium of investors led by Greg Wasson, the former Walgreens Boots Alliance CEO, acquiring a majority stake to scale the business and enhance its pharmacy automation offerings.

Nutter advised Cali’flour Foods, the developer and manufacturer of low-carb, gluten-free cauliflower products, in a Series A financing round led by Sunrise Strategic Partners, with participation from CircleUp Growth Partners.

Nutter served as sole legal advisor to Fisher International, Inc., a firm supporting the pulp and paper industry with business intelligence and strategy consulting services, in its acquisition by Battery Ventures, a global technology-focused investment firm.

Nutter drafted an amicus brief to the Massachusetts SJC on behalf of a patent law association in a case involving subject matter conflict-of-interest issues in patent prosecution.

Nutter represented defendant American Technical Ceramics, Inc. before the Court of Appeals for the Federal Circuit in an appeal from a 2016 jury trial. The Federal Circuit reversed the jury’s award of lost profits based on the availability of an acceptable non-infringing alternative.

Nutter advised a life sciences company that was accused by a competitor of patent infringement relating to an insertion method for a hemodialysis catheter. After briefing and a hearing, the court disposed of the case on summary judgment, finding the patent-in-suit obvious as a matter of law.

Nutter represented a medical device company in policing a series of trademarks through several cease and desist letters and negotiations, bringing about very favorable results short of filing in court.

Nutter defended Lallemand Specialties, Inc. and its affiliate in 2018 jury trial during which a competitor alleged Lallemand infringed a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

Nutter represented a startup speech recognition technology company defending numerous simultaneous lawsuits in multiple jurisdictions in a momentous patent war with a much larger rival company. Through Nutter’s efforts, the client was able to achieve a global settlement on very favorable terms.

Nutter served as legal advisor to Globe Composite Solutions, LLC (Globe), a navy submarine supplier, in its acquisition by ESCO Technologies Inc. (NYSE: ESE), a global provider of highly engineered products and solutions to diverse and growing end-markets that include the aerospace, space, healthcare, wireless, consumer electronics, electric utility, and renewable energy industries. 

Nutter represented Shawmut Corporation, a developer of high-performance composites, in its joint venture with the automotive headliner and specialty industrial fabrics business of Glen Raven Technical Fabrics LLC, a global provider of innovative technical fabric solutions.

Nutter represented OSRAM, one of the world’s leading lighting manufacturers with headquarters in Munich, Germany, in its acquisition of Digital Lumens Inc., a Boston-based company that specializes in industrial Internet of Things (IoT) solutions.

Nutter represented CIRCOR International, Inc. (NYSE: CIR), a leading provider of valves and other highly engineered products for markets including oil and gas, power generation, and aerospace and defense, in its acquisition of Critical Flow Solutions (CFS) for $210 million.

Nutter represented PrintGuard, Inc., a manufacturer of anti-marking products for printing presses, as the plaintiff in a patent infringement suit. The defendant ultimately agreed to end the case on terms that included the entry of a permanent injunction.

Nutter represented a company in several jurisdictions in related patent and trademark actions concerning the manufacture, sale, and marketing of feminine hygiene products. The client and its competitor resolved the cases globally on terms favorable to our client.

Nutter represented a plaintiff in a patent infringement suit related to an ingestible bait poison for molluscs, including snails and slugs, against manufacturer and seller of organic and biodegradable pesticides. The case was settled just as discovery was about to commence.

Nutter represented a client in the food and beverage industry in a trademark infringement case in federal district court. The case was settled before the filing of an answer on terms favorable to the client.

Nutter represented the defendant in a case brought by a competitor involving rights to the name and use of a market index. The case was settled at mediation.

Nutter developed a strategic patent portfolio for an early stage emerging medical device company focused on minimally invasive wound closure. We defended the company in a due diligence evaluation by prospective investors and asserted patents against a large medical device company, resulting in a successful exit for investors through the sale of company assets to the competitor.

Nutter negotiated an early settlement of a patent infringement suit whereby the client agreed to re-design its product. The case was dismissed with no payment of damages.

Nutter provided strategic advice on the development and management of robust patent portfolios to help medical device companies present a significant entry barrier to competitors. These companies include DePuy Spine, Ethicon Endo-Surgery, and DePuy Mitek, all Johnson & Johnson companies.

Successfully designed and prosecuted large patent portfolio directed to environmentally friendly pesticides.

Develop and implement strategic intellectual property strategy plan for emerging company in the field of tissue ablation.

Nutter analyzed the claims of third party patents and provided strategic counseling and advice to major medical device companies in connection with planned commercial launches. Products include a broad range of surgical devices in various fields, including bariatrics, spinal surgery, soft tissue fixation, neurosurgery, nutritional products, contact lenses, and pharmaceuticals.

Nutter developed strategy and provided litigation support for an herbicide manufacturer that successfully enforced IP rights against two competitors, resulting in early favorable settlements.

Nutter provided IP due diligence counseling for the lead investor syndicate of institutional investors for over $20 million Series B investment in a clinical diagnostic company.

Nutter provided IP due diligence counseling for the lead investor syndicate of investors for over $25 million Series C investment in a neuro stimulation company.

Devised a strategy, and provided strategic counseling and support of successful oppositions of competitor patent applications in Australia and Europe.

Nutter advised Abveris (formally known as AbX Biologics, Inc.), a privately-held in vivo antibody discovery services company, in connection with its acquisition by Twist Bioscience Corporation (NASDAQ: TWST), a leading and rapidly growing synthetic biology and genomics company that has developed a disruptive DNA synthesis platform to industrialize the engineering of biology.

Nutter represented a company that develops AI solutions for a wide range of commercial applications in copyright litigation against a former business partner. The firm prepared a strong non-infringement case based on a deep analysis of the software’s source code. The case settled favorably shortly before trial.

Nutter served as legal counsel to AppwoRx LLC, a Boston-based medical technology manufacturer, in connection with its acquisition by PatientNOW, a private equity-backed computer software company headquartered in Englewood, CO.

Nutter served as legal counsel to Baril Corporation, a leading medical specialty manufacturer of infection prevention, wound care, clinical chemistry, patient monitoring, and medical and surgical consumable products, in its acquisition by TEAM Technologies, Inc., a leading North American healthcare specialty manufacturer focused on oral and dental care and medical end markets. 

Nutter served as legal counsel to Beyonic, Inc., a digital payments management provider of business services for SMEs, fintechs, and social impact entities across Africa, in its acquisition by MFS Africa Limited, Africa’s largest digital payments hub.

Nutter defended a producer of genetically modified organisms used in ethanol production in a jury trial during which a competitor alleged infringement of a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

Nutter served as legal counsel to Copley Equity Partners, a Boston-based private investment firm, in its investment to recapitalize, and facilitate the merger of, Aethon Aerial Solutions and Flight Evolved.

Nutter served as legal counsel to Dragonfly Group Inc., a technology-enabled platform acquiring and scaling standout e-commerce brands, in a significant, proprietary investment from the Flagship Buyout Fund of L Catterton, the largest global consumer-focused private equity firm.

Nutter served as legal counsel to Eastprint Incorporated, a printed electronics solutions provider, in connection with its acquisition by East West Manufacturing, LLC, an integrated design, engineering, manufacturing, and distribution services partner for original equipment manufacturers and distributors throughout North America and Europe.

Nutter advised a German information services company about risk factors associated with making automated use of third-party technical content in databases for purposes of enabling call center support.

Nutter represented a company that designs and sells a GPS-based pet containment and tracking collar in asserting multiple patents against a competitor (who brought counterclaims relating to, among other things, alleged false marketing statements). Litigation spanned district court and PTAB (IPR proceedings). Nutter obtained a favorable claim construction ruling and numerous discovery-related rulings. Nutter’s IP Litigation team completed fact and expert discovery and obtained key concessions from witnesses. Within a few months of trial, the court granted our motion to expand infringement allegations to allow the assertion of infringement under the doctrine of equivalents. Shortly thereafter, the case settled favorably.

Nutter advised Hadron Healthcare Fund in MariMed, Inc.’s (OTCQX: MRMD) $46 million financing.

Nutter served as legal counsel to Invoke Solutions, Inc., a research and content testing platform that serves many of the world's top video streaming services and broadcasters, in connection with its acquisition by MarketCast LLC.

Nutter served as legal counsel to Kalahari Snacks, the #2 biltong brand in the U.S., in its acquisition by Stryve Foods LLC, an emerging healthy snacking platform and the leading air-dried meat snack company in the country.

Nutter represented the NWHL in connection with its preparation of the NWHL 2021 Season in Lake Placid, including securing a broadcast agreement with NBC Sports Network and a venue agreement for the event with the Herb Brooks Arena. Nutter also represented the NWHL in connection with its reorganization to an unincorporated association and new governance model, resulting in the original six NWHL member clubs being subject to the terms of the NWHL Constitution and Bylaws with each of the member clubs being represented on the NWHL Board of Governors.  

Mike Leard, Ben Stern, and Sara Lonks Wong represented Professional Audio Design (PAD) in a successful resolution to a multi-year litigation brought in response to attacks by certain third parties on PAD’s premier brand of recording-studio speaker—Augspurger® Monitors. PAD has manufactured and sold Augspurger® Monitors for decades and its brand is synonymous with high end audio.

Nutter served as legal counsel to OpenClinica, an industry-leading clinical research solutions provider based in Waltham, MA, in connection with a strategic investment with Thompson Street Capital Partners.

Nutter served as legal counsel to REAL Software Systems in connection with its acquisition by Rightsline, the leading rights and finance management platform for the media and entertainment industry.

Nutter drafted a user agreement for a SaaS platform and accompanying mobile application specific to the event planning and hospitality fields, which involved providing privacy/data protection advice and guidance about user-generated content copyright liability risks.

Nutter represented a company that designed and sells reusable smart notebooks in patent litigation against Chinese companies attempting to enter the U.S. market with infringing products by filing a declaratory judgment action of non-infringement. The firm constructed a strong infringement argument and convinced declaratory judgment plaintiffs to dismiss the case before the client had to file an answer or spend significant money. 

Nutter represented a software company that sued a Fortune 100 computer hardware, software, and services company for copyright infringement, breach of license agreement, and breach of contract (among other causes of action) as a result of unauthorized copying and use of the client’s software to design and develop a competing product. Nutter defeated the motion to dismiss. The firm architected and executed a discovery strategy that revealed a weakness in the opposing party’s case. The case settled very favorably shortly thereafter.

Nutter prepared and negotiated a master services agreement and subsidiary agreements for a software developer under which the client both developed software for a multinational company and also retained and licensed certain core software.

Nutter served as legal counsel to Veristat, LLC, a scientifically minded global clinical research organization (CRO), in its acquisition by WindRose Health Investors, LLC, a New York City-based health care private equity firm.

Nutter acts as U.S. counsel for Wayne Gretzky Estates, assisting with protection of their brands as they expand into the U.S. with craft brewing restaurants.