Kendrew H. Colton serves the intellectual property needs of his clients in established and emerging technologies. His primary focus is on chemistry, where his extensive experience in a variety of chemical and biochemical technologies ranges from agrochemicals to zeolites.Ken’s intellectual property litigation experience spans the spectrum of patent infringement, contract (licensing) disputes, copyrights (software), unfair competition, trade secrets, and Environmental Protection Agency contract awards. He has also been on amicus curiae briefs in such precedent-setting cases as Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., A.C. Ackerman Co. v. R.L. Chaides Construction Co., and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.
Clients regularly seek Ken's counsel for securing, protecting, transferring, licensing, and enhancing the value of their intellectual property. In addition, he is frequently called upon to render patentability, validity, and infringement opinions, and he has conducted intellectual property audits.
Ken is well-versed in all phases of patent prosecution. His experience embraces post-grant proceedings, including re-examination proceedings, patent interferences, AIA proceedings (inter partes reviews), and applications to reissue U.S. patents, as well as patent term extensions and related ANDA patent certification procedures. Ken also served as a court-appointed Special Intellectual Property Counsel to the Trustee in a contested bankruptcy matter.
Domestic and foreign clients, industry groups, scientific organizations, universities, and government agencies have invited Ken to lecture on a variety of intellectual property and business strategy topics. In addition, he was an instructor in the Patent Resources Group Advanced Application and Amendment Writing Workshop. Ken is regularly quoted by business and legal publications on patent litigation developments, as well as by chemical trade journals on chemical patent practice. He currently serves on the Advisory Board for the American Chemical Society's Chemical & Engineering News.
Represented U.S. aircraft manufacturer in successfully upholding non-infringement of patent for solid imaging process for alloying two components.
Represented company in patent infringement action in wastewater treatment and related bid protests with the U.S. Government Accountability Office and the U.S. Environmental Protection Agency, leading to a successful settlement.
Represented pharmaceutical company with U.S. freedom to operate (FTO) for its active pharmaceutical ingredient (API), which it Orange Book listed, and synthesis thereof as part of multinational transaction, and in securing Intellectual Property Rights (IPR) position for new synthesis of API.
Represented chemical company in flat lens technology by conducting FTO against extensive third-party U.S. patent portfolio, and developing defenses that contributed to successful settlement of litigation.
Represented specialty chemical company in field of recombinant proteins to develop U.S. FTO while coordinating same with successful EPO opposition against competitor’s patent.
Represented specialty chemical company in field of pharmaceuticals (proteins as disease markers), including overseeing patent procurement in the U.S.
Represented company and Nobel Prize winner in analyzing the patent portfolio of a third-party competitor, ultimately developing and implementing a successful FTO strategy.
Represented chemical company in the field of additives in upholding a patent in a series of post-grant proceedings, including reissue and reexamination, to prevent a third party from evading its royalty obligations.
Represented chemical company in the field of magnets with U.S. FTO and portfolio analyses.
Represented chemical company in developing FTO against diverse third party patents directed to alpha-olefin polymers.
Represented manufacturer in the field of membrane filtration with U.S. FTO against a portfolio of U.S. patents asserted by a third party, coordinating same with successful non-U.S. oppositions, and avoiding U.S. patent litigation.
Represented defense contractor to secure IPR primacy in certain chemical countermeasure technology to enhance its competitive bid position in the U.S.
Represented manufacturer in the field of wave guide technology to secure FTO against a portfolio of patents being asserted by a third party.
Represented automotive supplier in field of electro-optical diagnostic technology in successfully overturning adverse interference decision.
Represented chemical company in a successful post-grant administrative challenge against patent directed to artificial sweeteners.
Represented chemical company in the field of lubricants and oil additives to coordinate U.S. due diligence, while the government proceeded with a criminal investigation of a third party, to maintain our client’s freedom to operate over third party patents.