Intellectual Property

OVERVIEW

We understand the essential value intellectual property provides to your business. Our interdisciplinary team regularly advises clients in acquiring, protecting and monetizing intellectual property rights and litigating or alternatively resolving disputes regarding such rights in the U.S. and abroad.

Litigation

We have addressed issues involving patent infringement, trademark infringement, copyright infringement, unfair competition, internet domain name disputes, false advertising, false designation of origin, software licensing and product disparagement claims. We have litigated these cases in Pennsylvania, New Jersey, Delaware, Texas, California, New York, Virginia, Massachusetts, and Kentucky, before the International Trade Commission, at both the trial and appellate court levels before state and federal courts, as well as in private commercial arbitration and arbitration under the Internet Corporation for Assigned Names and Numbers (ICANN). Members of the group also practice before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board in trademark cancellation and opposition proceedings.

Procurement and Transactions

We provide strategic advice to clients ranging from emerging growth firms to established multinational companies in a wide variety of intellectual property procurement, management and transactional matters, including:

Patent prosecution before the U.S. Patent and Trademark Office, including new applications, reexaminations, and appeals to the Board of Patent Appeals and Interferences
Opinions of counsel regarding patent invalidity and non-infringement
Freedom-to-operate analyses and opinions for new products
Trademark and copyright procurement and management, including performance of searches, rendering of viability opinions, filing applications for registration, and monitoring and maintaining portfolios
Trade secret protection, including crafting corporate confidentiality, security and non-competition programs
Licensing and technology transfer transactions, including trademark, copyright, patent, trade secret, Internet domain name and technology licensing, acquisitions and sales
Intellectual property due diligence and counseling in acquisitions and financing transactions

Representative Matters

Won landmark award of attorneys fees against patent troll and its attorneys in a patent infringement case for Gust, Inc. after having litigation transferred from Eastern District of Texas to Southern District of New York
Obtained judgment of patent infringement on behalf of manufacturer client kidsme and subsequently successfully ended the sale of over 150 similar patent-infringing baby feeder products on Amazon.com
Obtained Motion to Transfer from Eastern District of Texas to Southern District of New York in a patent infringement case
Represented major technology companies as plaintiffs and defendants in patent infringement litigations in federal district courts and the International Trade Commission
Represented technology companies in patent litigations brought by non-practicing entities (NPE's)
Acted as chief patent portfolio architect, drafting and prosecuting patent applications for a leading telecommunications services company
Represented a security company in a trademark action against a competitor, receiving favorable award and attorneys fees

Represented medical device manufacturer in major litigation regarding recently approved treatment for osteoarthritis
Represented clients in Hatch-Waxman litigation
Formulated university intellectual property policy and assisted in establishing technology transfer group for a leading university
Assisted national dental care provider in developing and implementing trademark strategy
Represented large commercial television shopping network against claims of false advertising, false designation of origin, and unfair competition under the Lanham Act for sale of a product on the network that allegedly was an unprivileged imitation of a competing product; summary judgment motion was filed on behalf of the network, leading the plaintiff to settle with the network for $10,000 against a damages claim of $640,000
Represented a foreign manufacturer of pharmaceuticals and medical devices in the acquisition of worldwide marketing and distribution rights to a line of products
Represented a European-based pharmaceutical manufacturing, development and distribution company in the grant of exclusive U.S. distribution rights to a product in development to a large, U.S.-based pharmaceutical company
Represented a privately held medical device development firm in the license of a patent-pending drug delivery instrument from a publicly traded pharmaceutical company
Assisted a multi-national client in negotiating a favorable settlement with the Business Software Alliance
Represented specialty software developer in license of its software to a national healthcare company
Assisted world’s largest creative competitions firm in procuring and maintaining its intellectual property portfolio
Represented a product manufacturer against claims of trade dress infringement and unfair competition in violation of the Lanham Act arising out of allegations by a competitor that the client's trade dress for the product was likely to cause consumer confusion due to the alleged similarity in appearance