Intellectual Property
Chambers USA Top Ranked Practice
Overview

Our nationally ranked, full-service practice advises clients on all aspects of intellectual property issues, from safeguarding innovations to negotiating strategic agreements and litigating claims. Whether a single transaction or a complex, multiparty agreement, we focus on helping clients create and preserve the value of their intellectual property.

We address IP issues within the context of the client's business strategies and needs. Our lawyers recognize that needs and business objectives vary from client to client and that the IP strategy we employ for a Fortune 500 company may not apply to a startup seeking venture capital. That is why our group places a high premium on well-developed client relationships and the knowledge these relationships deliver.

Recognized as one of the best corporate law firms in the United States, sound business principles drive our IP practice. Our extensive knowledge of patent and trademark law combined with the deep experience of the firm’s civil litigators and business lawyers positions us to offer clients the right mix of legal skill and business acumen to handle all IP matters, regardless the size and complexity of the matter or transaction. We regularly call upon a network of highly skilled associate intellectual property professionals throughout the world to field global client service teams.

Our team advises on the full range of IP issues with particular strength in:

  • IP litigation & dispute resolution
  • Patent opinions
  • Patent prosecution & counseling
  • Trademarks & unfair competition
  • Internet & digital media issues
  • IP licensing & transactions
  • Copyrights

 

Experience
Representative Services
  • Represent clients in trademark selection and protection for word, design and service marks.
  • Represent clients before the U.S. Patent and Trademark Office in patent and trademark prosecution, patent interferences and appeals.
  • Provide programs to assist clients in identifying intellectual property assets and protecting trade secrets.
  • Conduct search and analysis of patents and trademarks.
  • Provide patentability, validity, infringement and right-to-use opinions covering a wide range of technical disciplines.
  • Represent clients in protection for trade dress and product configurations.
  • Procure copyright protection for all works of authorship, including computer software, consumer products, company brochures, catalogs and literature.
  • Represent clients in patent litigation.
  • Participate in a wide variety of significant litigation, including that which involves
    • Trademark infringement and dilution
    • Trade secret theft
    • Copyright infringement
    • Lanham Act claims for false designation and false advertising
    • Violations of state law rights of publicity
    • Infringement actions involving significant patents
  • Negotiate and prepare patent licenses and technology transfer agreements.
  • Counsel clients and negotiate on their behalf on issues involving software licenses including source code escrows and associated maintenance contracts.
  • Secure clients' rights to worldwide intellectual property protection.
  • Assist clients through a step-by-step IP asset management process to identify, package and exploit their IP assets.
  • Conduct a thorough audit of clients' existing IP assets, including both patented and as-yet unpatented discoveries; proprietary software systems; novel business methods; confidential and proprietary technologies, processes and brand assets.
  • Work with clients to help them design meaningful, deployable and profitable licensing strategies.
  • Negotiate and document transactions that implement a clients' asset management program.
Representative Matters
  • Prepared and prosecuted a family of patent applications covering a new class of drugs for a pharmaceutical concern.
  • Provided comprehensive representation in patent and licensing matters for several companies having large patent portfolios.
  • Defended one of the largest manufacturers of wedding albums in a patent infringement action.
  • Defended one of the largest U.S. paper companies in a patent infringement action.
  • Supported the national trial lawyer of an automotive parts manufacturer in a patent infringement action brought by the automotive parts manufacturer involving the design of a custom automobile wheel.
  • Represented a tool and die company in an action for patent infringement against a plastics company.
  • Defended an avionics test equipment manufacturer against claims that its equipment infringed a patent held by the plaintiff.
  • Defended a company in an infringement case that involved a patent on recirculating steam ovens used for the commercial production of a fast food chicken item.
  • Defended a manufacturer of various closures in an infringement and licensing dispute with a chemical manufacturer over oxygen scavenger chemicals used in cap liners for U.S. and foreign beer producers.
  • Defended a company in an infringement claim for machinery to duplicate two-sided keys.
  • Represented a metal stampings company in a dispute over a license of the patent portfolio for cut-resistant yarns used in the production of safety wear.
  • Represented a leading valve manufacturer in a trade dress infringement case.
  • Represented a chemical company and its subsidiary against charges of trademark infringement and unfair competition for use of the color blue on PVC tubing and electric junction boxes.
  • Represented two chemists who were sued by a chemical manufacturer for trade secret misappropriation on the technology for copper additives to diesel fuel.
  • Represented a large bank in a trademark infringement action against a bank in another state.
  • Represented a chemical company against a former employee and another company in a trade secret misappropriation action involving chemical formulas and processing information.
  • Represented a university's research corporation and its licensee in a trade secret case against the licensee's former CEO for illicit transfers abroad of liquid crystal display technology developed at the university.
  • Coordinated with the U.S. Department of Justice on the criminal prosecution of several Taiwanese executives under the Economic Espionage Act.
  • Represented the country's largest vendor of computer equipment and two sales managers in a criminal investigation and private civil litigation over charges of trade secret theft from a competitor's computerized database.

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