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Intellectual Property

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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