Client Successes

Eliminating Spillover via an Inter Partes Victory

The Firm secured a complete victory for SSW Holding Company, Inc., in an inter partes review proceeding challenging the validity of an SSW patent, making its client one of just a handful to emerge from the newly established inter partes review process with every challenged patent claim fully intact.

Inter partes review (IPR) is a streamlined process for challenging patents created through the Leahy-Smith America Invents Act of 2011 and, to date, has proven favorable to those challenging patents. Of the 78 decisions issued in IPR proceedings through June of 2014, the Patent Trial and Appeal Board cancelled or invalidated nearly 80 percent of the patent claims before it. In only 14 percent of such cases did the board find in favor of the patent owner with respect to all of the patent claims under consideration, as it did in Schott Gemtron Corp. v. SSW Holding Company, Inc. The Patent Trial and Appeal Board’s decision rejected arguments that SSW’s patent—which covers spill-containing refrigerator shelving technology used by major appliance manufacturers—was “obvious” and therefore invalid. Oral argument in the case took place on June 23, 2014.

Protecting Carbon-Capture Technologies

Marshall, Gerstein & Borun LLP obtained a successful result for CO₂ Solutions, Inc., in an Inter Partes Review (IPR) of one of CO₂Solutions’ patents covering its enzyme-based technology for capturing carbon dioxide from exhaust gas. The Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office ruled in favor of CO₂ Solutions on four of the five grounds of review, upholding CO₂Solutions’ commercially significant claims of the challenged patent.

CO₂Solutions’ proprietary carbon-capture technologies, as covered by the upheld patent claims and by other patents in CO₂Solutions’ portfolio, provide environmentally-friendly, efficient, and cost-effective methods for reducing carbon emissions. As stated by Evan Price, President and CEO of CO₂Solutions, “We believe this confirms CO₂Solutions’ possession of the least expensive and most environmentally friendly carbon capture technology available on the market.”

IPR Win for ACCO’s ClickSafe® Locks

Marshall Gerstein successfully represented ACCO Brands Corporation and ACCO Brands USA LLC in Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB), appeal of that decision to the U.S. Court of Appeals for the Federal Circuit, and in related infringement litigation in the Eastern District of New York, in which Think Products accused ACCO’s ClickSafe® line of computer locks of infringing two Think Products patents.

Marshall Gerstein petitioned for IPR of each asserted patent, arguing that the Think Products patents were obvious over combinations of prior-art references, and anticipated by a published video disclosing the accused ClickSafe® product.

In both IPRs, the PTAB ruled in favor of ACCO on all grounds of review, cancelling all challenged claims of the patents, and these decisions were upheld on appeal to the Federal Circuit.

Marshall Gerstein Counsels CureVac through Global Resolution of Patent Litigation with Pfizer/BioNTech

Marshall, Gerstein & Borun LLP represented CureVac, a global biopharmaceutical company developing a new class of transformative medicines based on mRNA, in a high-profile intellectual property infringement lawsuit originally filed in June 2022. The case involved allegations that Pfizer and BioNTech’s COVID-19 variant-adapted vaccines, including those targeting the Omicron and XBB1.5 variants, infringed CureVac’s patents, including European Patent EP4023755 relating to split poly-A tail mRNA vaccines.

In May 2023, CureVac filed counterclaims in the U.S. asserting infringement of nine U.S. patents, later expanded to include a tenth patent (U.S. Patent No. 11,667,910), covering mRNA purification methods — a critical component of the mRNA manufacturing process.

In August 2025, it was announced that BioNTech and CureVac reached a global resolution. Under the terms of the agreements, CureVac and GSK will receive in aggregate a payment of $740 million as well as single-digit royalties on sales of COVID-19 vaccines in the United States going forward. Additionally, CureVac will receive $50 million from GSK for monetizing a portion of U.S. product royalties due under its existing license agreement announced on July 3, 2024.

The resolution resolved all pending U.S. and European litigation, including what would have been the first U.S. trial over COVID-19 vaccine patents. It was one of the most-watched biotechnology patent disputes in recent years.

Partner Mark H. Izraelewicz led CureVac’s U.S. litigation strategy, alongside a team at Marshall Gerstein, which included Kevin M. Flowers, John R. Labbé, Michael R. Weiner, Sandip H. Patel, Michael J. Allikian, Thomas R. Burns, Izabella N.C. Higson, Daniel Gonzalez, and Christopher J. Hall.

For more coverage, see the following articles:

CureVac's Patent Settlement: A Strategic Win for mRNA Innovation and Future Revenue Streams

GSK collects $320M as BioNTech, Pfizer settle mRNA patent spat with CureVac | Fierce Pharma

Michael (Mike) R. Weiner, Partner