Our attorneys provide intellectual property enforcement strategies that police the marketplace and protect clients against claims of infringement, misappropriation and unfair competition.
Our team approach to litigation leverages sophisticated experts and business professionals with trial and technical/industry experience. We develop creative solutions, which may include obtaining an early injunction, reaching a favorable settlement or aggressively litigating the case. Our lawyers are highly skilled in handling litigation through alternative dispute resolution, such as arbitration and mediation, which results in settling many of our clients’ litigation matters out of court. We have additional experience negotiating cross-licenses and ongoing business arrangements.
We have litigated patent, trademark and copyright infringement suits as well as unfair competition and advertising claims in courts around the nation. We also are experienced in litigating contract and antitrust issues that often accompany intellectual property disputes. Our litigation experience extends to matters in a broad range of industries and technologies, including consumer products such as cameras and mobile phones, electronic components, computer software, e-commerce platforms, medical devices, dental methods, automobile designs, agricultural equipment, ink formulations, in-flight entertainment systems and pharmaceuticals.
When patent disputes arise, our aggressive and experienced patent litigation attorneys successfully pursue actions in federal and foreign courts and before international trade organizations and administrative bodies. The following representative matters showcase our patent litigation experience:
- Won a jury verdict for infringement of an automotive filter patent. The jury awarded the client in excess of $6.5 million, which was increased to $10 million due to a post-trial award of enhanced damages.
- Represented a leading electronics manufacturer in a suit brought by a “non-practicing entity” accusing its automobile navigation systems capable of communicating with MP3 players of patent infringement. Even before an answer was due, we succeeded in persuading plaintiff’s counsel that the accused products could not infringe the patent and they voluntarily withdrew the complaint without any payment.
- Representing a leading manufacturer of mobile phones, we won an early dispositive motion for summary judgment of non-infringement. The court also granted our motion for sanctions against the plaintiff and its counsel for bringing a frivolous lawsuit and awarded our clients their costs and attorneys’ fees.
- Defended a national department store in an action alleging infringement of a patent covering sorting search results for their online store. The case was dismissed with prejudice shortly after we took the deposition of the inventor.
- Negotiated an early, reasonable settlement for several Disney companies in four separate large, multiparty patent suits alleging infringement of three unrelated patents for activities ranging from online video games to photography at Disney amusement parks.
- Represented a major contact lens manufacturer in an action by an individual inventor alleging that it breached a patent license related to multifocal contact lenses (covering six U.S. patents and eight non-U.S. patents). After obtaining a favorable claim construction, we drastically narrowed the scope of all 14 patents, defeated the plaintiff’s motions for summary judgment, began a trial—which was then continued—and obtained a positive settlement on the eve of the new trial date.
- Represented a leading women’s fashion retailer in a suit brought by a competitor who alleged infringement of a patent involving slimming panels in women’s pants. Our team successfully sought inter partes reexamination of the asserted patent in the United States Patent & Trademark Office (USPTO) and secured a stay of the litigation. After the USPTO canceled all of the asserted claims for obviousness, the plaintiff was forced to voluntarily dismiss its patent infringement case with prejudice.
Patent Post Grant Review Proceedings
We have significant experience representing clients in matters before the Patent Trial and Appeal Board (PTAB) of the USPTO which has become one of the most popular forums for patent validity litigation within the United States. Among these are:
- Successfully represented Autel in an inter partes review before the PTAB and concurrent district court patent litigation against German automobile part manufacturer Bosch Automotive Service Solutions.
- Represented the owner of a patent in the chemical field in defending its patent against an attempted inter partes review. By obtaining a denial of the petition for inter partes review, we enabled our client to preserve its patent without the cost of an expert or PTAB trial proceedings.
Trademark and Advertising Litigation
Our lawyers are experienced in litigating trademark and trade dress disputes, allegations of false advertising, counterfeiting, Internet domain names and unfair competition. We have handled such disputes before state and federal courts across the nation, in the National Advertising Division (NAD) and before the Trademark Trial and Appeal Board. The following are representative accomplishments in trademark and advertising cases:
- Represented Wal-Mart successfully before the Trademark Trial and Appeal Board. The proceeding involved a petition to cancel the registration for Wal-Mart’s iconic ROLLBACK mark.
- Defeated a $7.8 billion right of publicity claim on behalf of world’s most prestigious modeling agency, Ford Modeling Agency, Inc. The ruling was affirmed on appeal to the 7th U.S. Circuit Court of Appeals.
- Representing our long-time client Urban Outfitters, Inc., a publicly traded company that operates specialty retail stores, we successfully enforced our client’s trademark FREE PEOPLE against infringement by BCBG’s Max Azria Group’s TRUE PEOPLE mark. We obtained preliminary injunctive relief and, after a trial, permanent injunctive relief, as well as an award of attorney’s fees. We also defeated a counterclaim brought by BCBG. The Court of Appeals affirmed these victories.
- We successfully defended one of the largest commercial bathroom accessories manufacturers in a trade dress action by its primary competitor. During trial, we obtained a ruling that the registered trade dress (which related to a curved front) was functional and invalidated the plaintiff’s incontestable trademark registration. The victory was affirmed by the Court of Appeals.
We litigate copyright disputes, including infringements of original literary creations, audio and visual works, product configurations, databases and computer software. Our representative matters include:
- Won on summary judgment on all counts in a copyright infringement case for Midway Games, a leading developer and publisher of video games.
- We achieved a favorable settlement for Urban Outfitters in a copyright infringement action against a competitive importer of fashion designs.
International Trade Commission (ITC) Litigation
We have experience across the range of intellectual property rights and in representing complainants and respondents. Our team includes a former ITC Senior Investigative Attorney and our successful representative ITC litigations reach back decades. Our experience includes:
- Represented a business in a patent infringement case regarding the style and means of production of retail clothing.
- Tried a patent infringement case regarding products and processes related to polymer geogrids.
- We handled patent infringement litigation for a client with regards to dynamic RAM components and products.
- Handled a patent infringement case regarding antivenom products.
- Represented a client in a patent infringement matter for breathing treatments and components for sleep disorders.
- Handled litigation of patent infringement claims for semiconductor chips.