INTELLECTUAL PROPERTY LITIGATION

In the high stakes world of intellectual property litigation, where the technology at issue can be intricate and complex, communication with the judge, jury, or other neutral arbiter is critical. The lawyers in Nixon Peabody’s IP Litigation practice excel at communicating complicated concepts of fact and law in a clear and persuasive manner so that a client’s position is given the best chance to succeed.

Our highly experienced team of trial lawyers is at the forefront of counseling and litigating cases involving the latest in technological developments. With an established track record in the courtroom and in other dispute resolution forums, we are experienced in all facets of IP litigation, including jurisdiction and venue motions, discovery, use of experts, claim construction (Markman) hearings, dispositive motions, trials, and appeals. We have achieved successful results for our clients in some of the most active jurisdictions in the U.S., including the Eastern District of Texas, Eastern District of Virginia, Southern District of New York, Northern District of California, and Southern District of California.

Nixon Peabody has litigated cases for clients in industries as diverse as software, medical devices, biotechnology, pharmaceuticals, manufacturing, internet services, consumer products, telecommunications, digital imaging, and GPS technology, among many others. As a full-service firm, we have the resources to manage large, complex commercial litigation and can call upon the experience of more than 300 litigators internationally.

Patent litigation

Nixon Peabody has handled patent litigation in federal courts across the country, including some of the most frequently used venues for patent litigation: California, Delaware, Illinois, Massachusetts, New York, Texas, and Virginia. We offer clients an experienced team who knows the ins-and-outs of resolving disputes successfully before these unique courts. Our experience also includes dozens of patent interference matters and new post grant actions before the U.S. Patent and Trademark Office (USPTO) and successful appeals before the Federal Circuit.

Our focus is on cost-effective, market-sensitive solutions to our clients’ issues. We staff cases to bring the best blend of litigation savvy and technical skill to each matter. Our patent litigators know how to win and evaluate every aspect of the matter at hand, analyze the risks, and staff the case appropriately. Because of our long history of working in the Eastern District of Texas and other important venues, we have forged strong relationships with similarly knowledgeable and experienced local counsel who share our dedication to exceptional client service.

Our recent patent litigation docket covers a wide array of technologies, including:

• Medical devices
• Software
• Control systems
• Wireless communication systems
• Telecommunications
• Financial services and insurance
• Business processes
• Consumer products

Representative Patent Litigation Matters

• Kenexa BrassRing Inc. v. Taleo Corp. and Vurv Technology, Inc. (D. Del.) After two days of jury trial in federal court, our team of IP litigators settled a case for recruiting software maker Taleo Corporation in a patent infringement case brought by Kenexa, its main competitor. Because the trial dealt exclusively with invalidity, Taleo was effectively the plaintiff and went first.  The case settled and the confidential terms of the settlement are global, resolving seven different actions between Taleo and Kenexa; we also won an appeal of an inter partes reexamination before the United States Patent and Trademark Office’s Board of Patent Appeals with respect to one of the patents.
• Geotag v. Frontier Communications (E.D. Tex.) Currently representing 29 defendants in this matter in which 450 defendants were accused of patent infringement by a non-practicing entity. Our clients are among the world’s leading consumer brands. IP Law 360 has referred to this case as “the largest current patent troll litigation.”
• Tierra Telecom, Inc. v. Level 3 Communications (W.D.N.Y.) Represented Level 3 Communications, et al in patent infringement case involving VoIP. Successfully transferred case from E.D. Virginia to W.D.N.Y. Settled the case on very favorable terms.
• Cummins-Allison Corp v. Shinwoo Information and Telecommunications Co., Ltd., (U.S. Court of Appeals for the Federal Circuit) Represented the plaintiff in a patent infringement case accusing SBM and Amro of infringing a Cummins-Allison patent.  Successfully proved infringement and Cummins-Allison was awarded $12 million in lost profit damages from the defendant SBM and Amro and an additional $970,000 in prejudgment interest – as well as a permanent injunction preventing future sales, importation, and marketing of the infringing products in the United States.  Cummins cross-appealed a finding of invalidity of one of its patents.  Appellate court upheld lower court's ruling against defendants and reversed one of the lower court’s invalidity rulings, finding instead in favor of Cummins-Allison.
• DNT LLC v. Sprint Spectrum, LP et al. (E.D. Va.) Achieved a complete defense victory for our client Sierra Wireless and its 3G wireless network customer.  Following a ten day trial, the eight jurors returned a unanimous verdict of patent non-infringement and invalidity confirming all of the asserted defenses.
• Represented the plaintiff, a well-known medical device company, in a patent infringement case in the U.S. District Court for the District of Massachusetts. Our client was awarded a sum of $4M for lost profits and a 16% royalty (on sales not included in lost profits).

Trademark litigation

A trademark represents a company’s brand—its identity, its values, its products. When others infringe on that brand, it diminishes its value in the marketplace. We take this seriously and do not hesitate to take appropriate measures. Nixon Peabody enforces some of the world’s most famous trademarks and trade dress in jurisdictions across the country. We serve clients in numerous diverse industries such as media and entertainment, consumer products, insurers, food and beverage, sports, retail, and technology.

In addition to successful litigation of Lanham Act cases through trial, we have achieved success for clients in a number of cases following favorable decisions at the preliminary injunction or summary judgment stages. We proactively pursue mediation and other alternative dispute resolution vehicles when appropriate.

Representative Trademark Litigation Matters

• Fashion Institute of Technology v. FIT Market Corp. (S.D.N.Y.) Obtained favorable settlement in trademark infringement matter on behalf of our client, Fashion Institute of Technology.
• Ford Motor Company v. O’Brien Parts, Inc., d/b/a Shamrock Parts, and Richard P. O’Brien, Jr. (D. Mass.) Obtained an ex parte seizure order of counterfeit goods resulting in an entry of a stipulated permanent injunction on behalf of plaintiff.
• Carefirst of Maryland, Inc. v. First Care, P.C. (E.D. Va.) Obtained summary judgment of non-infringement on behalf of First Care. Successfully represented First Care on appeal affirming district court’s summary judgment decision.
• Ciphertrust, Inc. v. Trusecure (Cybertrust) (E.D. Va.) Represented Cybertrust, one of the world’s largest IT security companies, in trademark action brought by CipherTrust. Obtained judgment of non-infringement following trial.
• CSC Brands, LP and Campbell Soup Company v. National Harvest Food Group LLC (D. Del.) Represented defendants after plaintiffs filed a declaratory judgment action seeking a ruling of non-infringement with respect to their line of FULLY LOADED Campbell Soup products.  In response, we filed a counterclaim for trademark infringement and unfair competition.  Case settled favorably for our client.

Copyright litigation

Nixon Peabody’s copyright litigators resolve disputes efficiently, whether they require fast-paced preliminary injunction hearings, or cost-effective mediation or other alternative dispute resolution proceedings. Our experience runs the gamut of creative works, from books, music, and films to advertising copy, training materials, architectural drawings, survey maps, and software.

Representative Copyright Litigation Matters

• Biscotti, Inc. v. Target Corporation (N.D. Cal.) Represented Biscotti in a copyright infringement suit involving the design on fabric used to make children's swim wear. Case settled.
• Wolk v. Kodak Imaging Network, Inc., et al. (S.D.N.Y.) Achieved a summary judgment victory for our clients, Kodak Imaging Network, Inc. and Eastman Kodak Co. in copyright infringement matter.  Currently representing the defendants on appeal.
• Pinnacle Pizza Co. v. Little Caesar Enterprises (D.S.D.) Obtained summary judgment in favor of pizza franchisor Little Caesar Enterprises, Inc. in a copyright and trademark infringement dispute. Successfully represented Little Caesar Enterprises on appeal affirming the district court's decision.
• Nearstar, Inc. v. Waggoner, et al. (E.D. Tex.) Represented defendant ASE Technologies in a copyright infringement matter involving allegations of trade secret misappropriation, breach of contract, tortious interference, and civil conspiracy related to a document management system. Case settled.