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Intellectual Property Litigation

Related Practices

Rankings & Honors

  • BTI Litigation Outlook 2013
    • “Most Feared Law Firms”—Honor Roll
    • Strong Performance—IP Litigation, Commercial Litigation, Product Liability Litigation
  • Chambers USA/Global
  • Legal 500
  • U.S. News/Best Lawyers “Best Law Firms”
 

INTELLECTUAL PROPERTY LITIGATION

Our IP Litigation team leverages deep technical and legal experience to help clients protect their innovations and maintain their competitive advantage.

Our approach

The number of patent litigation cases continues to rise. There’s been a big increase in recent years in the number of cases filed by non-practicing entities. And, with the rise of social media, companies are increasingly concerned about their ability to protect their trademarks, copyrights, and trade secrets. In light of these trends, companies are more motivated than ever to safeguard their intellectual property.

Our clients operate in a fiercely competitive marketplace. We help them stay two steps ahead of the competition while vigorously protecting their business interests.

In the high stakes world of intellectual property litigation, where the technology at issue can be intricate and complex, we understand that communication with the judge, jury, or other neutral arbiter is critical. Our attorneys excel at communicating complicated concepts of fact and law in a clear and persuasive manner. We’re at the forefront of counseling and litigating cases, and devising innovative legal strategies to help our clients protect their intellectual property and further their competitive advantage.

Who we work with

  • High tech companies
  • Life sciences companies
  • Financial institutions
  • Manufacturers spanning a wide variety of industries
  • Universities

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).

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.

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.

Media Clips

  • Valley Offices Nab IP Laterals
    The Recorder | February 18, 2014
    This coverage highlights the arrivals of Silicon Valley Intellectual Property Litigation partners Shawn Hansen and Jeff Lokey.
  • Valley Offices Nab IP Laterals
    The Recorder | February 18, 2014
    This coverage highlights the arrivals of Silicon Valley intellectual property litigation partners Jeff Lokey and Shawn Hansen.
  • Strong Software Patents Crucial, Michel Tells Justices
    Law360 | January 28, 2014
    Chicago Intellectual Property Litigation partner Mark Halligan is noted in this article for his representation of the International Association for the Protection of Intellectual Property who recently filed an amicus brief with the Supreme Court urging that any ruling that weakens software patents "would be a step backward for the United States."
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  • Restaurant Owner Loses $1M Copyright Claim Over TV Show
    National Law Journal | October 23, 2013
    This coverage notes a California federal judge’s decision to dismiss copyright infringement claims against TV One LLC. TV One’s legal team was led by Los Angeles partners Thad Stauber and Sarah André, Washington, DC, partner Kendal Tyre, Los Angeles associate Michael Azat, and Washington, DC, associate Kenneth Nichols.
  • Maine Law Muddles Liability in Drug Injury Suits
    Law360 | October 11, 2013
    Boston Life Sciences and IP Litigation partner Joe Leghorn provides commentary on a new Maine law, a first of its kind in the U.S., allowing prescription drugs to be purchased from foreign pharmacies.
  • Big Law Social Media Success Strategies
    The American Lawyer | October 1, 2013
    Chicago Intellectual Property Litigation partner Mark Halligan’s use of Twitter is highlighted in this feature story.
  • 'Raging Bull' copyright fight headed for U.S. Supreme Court
    Reuters | October 1, 2013
    San Francisco Commercial Litigation attorney John Chatowski provides commentary in this article noting that the U.S. Supreme Court has agreed to hear the Raging Bull copyright.
  • Martha Stewart Fires Pre-Emptive Shot against Alleged Troll
    National Law Journal | September 27, 2013
    Boston partner and leader of the firm’s Brands & Creations practice Jason Kravitz provides third-party commentary about a patent infringement case involving iPad apps created by Martha Stewart Living Omnimedia, Inc.
  • Trade Secrets Spats Center on Cloud
    The Recorder | September 20, 2013
    San Francisco Brands & Creations partner Rob Weikert comments on how trade secrets matters are being impacted by growing use of online data storage.
  • Case to Watch: A circuit split and 'Raging Bull'
    Reuters Legal | September 13, 2013

    John Chatowski discusses a closely watched lawsuit over rights to the "Raging Bull" film.

  • Protecting U.S. Trade Secret Assets in the 21st Century
    Landslide | September 1, 2013
    Chicago Intellectual Property Litigation partner Mark Halligan wrote this article discussing the need for U.S. companies and the intellectual property bar to place more importance on trade secret asset protection.
  • Patent Troll Lawsuits Rare In Device Industry, But May Increase, Attorneys Say
    The Gray Sheet | June 24, 2013

    Chicago partner and leader of the firm’s Intellectual Property Litigation practice Russ Genet discusses the trend of lawsuits from firms that buy up device patents purely to pursue litigation becoming more commonplace.

  • Lawyers See IP Protection Help in U.S. Trade-Secrets Focus
    Reuters | February 22, 2013

    Chicago Intellectual Property Litigation partner Mark Halligan discusses efforts to combat trade-secret theft.

  • Seventh Circuit Ruling Clears Website of Infringement
    Chicago Daily Law Bulletin | August 3, 2012

    This article focuses on a ruling from the 7th U.S. Circuit Court of Appeals indicating that a website that provides copyrighted videos without consent does not contribute to copyright infringement. Chicago intellectual property partner Mark Halligan provides third party commentary.

  • Expert Witness: Lawyers Put Their Legal Skills to Use in Creative Way
    Chicago Lawyer | August 1, 2012

    Chicago intellectual property litigation partner Mark Halligan discusses how attorneys and law professors serve as consultants to strengthen cases before trial and as experts to do reports, give depositions, and provide testimony if a case goes to trial.

  • Sabermetrics Sees Recent Scrutiny
    Chicago Daily Law Bulletin | May 30, 2012

    This contributed article, authored by Chicago Intellectual Property Litigation partner Mark Halligan and San Francisco Labor & Employment associate Matt Frankel, discusses trade secrets in baseball—specifically “sabermetrics,” the advanced statistical analysis for evaluating players.

  • Case Study: Fort Properties V. American Master Lease
    Law 360 | March 13, 2012

    This “Expert Analysis” column, authored by Chicago Intellectual Pproperty Litigation partner David McKone, discusses the Federal Circuit’s decision upholding a district court ruling invalidating process patent claims as being too abstract and what this decision means in the future.

  • U.S. Tries Cracking Down on Economic Espionage
    Chicago Daily Law Bulletin | March 9, 2012

    Chicago Intellectual Property Litigation partner Mark Halligan provides commentary about the recent surge in trade secrets theft cases, especially those involving possible espionage.

  • Defensive ESI Strategies in Trade Secret Misappropriation Litigation
    BNA's Patent, Trademark & Copyright Journal | January 6, 2012

    This contributed article, authored by Chicago Intellectual Property Litigation partner Mark Halligan, notes that the battleground for trade secrets litigation now involves electronically stored information. Mr. Halligan offers strategies for preventing and defending such lawsuits.

  • Developments in Joint Infringement Law
    Law 360 | September 28, 2011

    This article, co-authored by Chicago patents partner Paul Kitch and Chicago Intellectual Property Litigation associate Jason Kunze, discusses the need for companies to be aware of the potential defenses available if accused of patent infringement.

  • Patent Bar Split on Impact of New Law
    Massachusetts Lawyers Weekly | September 26, 2011

    This article discusses the Leahy-Smith America Invents Act signed by President Obama and the reactions among attorneys across the state. Boston Intellectual Property Litigation partner John Gutkoski provides commentary.

  • Legal Briefs: Nixon Peabody Adds IP Lawyers
    Boston Business Journal | September 16, 2011

    The coverage highlights the arrival of Boston Intellectual Property Ligation partner John Gutkoski and counsel Michelle Flores, who joined the firm from Foley & Lardner LLP.

  • Nixon Peabody Expands Boston Team With Foley IP Attys
    Law 360 | September 13, 2011

    This feature article highlights the arrival of Boston Intellectual Property Litigation partner John Gutkoski and counsel Michelle Flores.

  • Career Tracker: Lawyers on the Move
    Reuters | September 12, 2011

    In this column noting legal industry moves and promotions, Boston Intellectual Property Litigation partner John Gutkoski and counsel Michelle Flores are included for their recent arrival at the firm.

Ideas

Supreme Court hears oral argument in the Aereo copyright dispute
Intellectual Property Alert | April 23, 2014

Even "antiquated" contract may include e-book publishing rights
Intellectual Property Alert | April 2, 2014

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Webinar Recording: Trade Secrets Trends Impacting the Insurance Industry
Originally recorded March 18, 2014 | March 24, 2014

Court dismisses copyright infringement claims over Google Books based on fair use defense
Intellectual Property Alert | November 21, 2013

Nixon Peabody obtains dismissal of videogame trademark claims based on First Amendment defense
Intellectual Property Alert | May 13, 2013

Supreme Court rules that the "first sale" doctrine applies to the sale in the United States of a work lawfully obtained abroad
Intellectual Property Alert | April 4, 2013

Nike succeeds in dodging alleged trademark infringer's counterclaim for invalidity
Intellectual Property Alert | January 11, 2013

Victory of OEM product manufacturer in Guangdong courts sheds additional light on OEM trademark infringement litigation
Intellectual Property Alert | November 16, 2012

Recent complaint highlights role of copyright in protecting health care information, protocols, and products
Intellectual Property Alert | November 2, 2012

Personalized Medicine Patent Watch
Intellectual Property Alert | October 31, 2012

Federal circuit holds an assertion of induced infringement does not require proof of underlying direct infringement by a single party
Intellectual Property Alert | September 10, 2012

Although the statute of limitations had not yet run, Ninth Circuit affirms dismissal of Raging Bull copyright case on laches grounds
Intellectual Property Alert | September 6, 2012

Fashion designer Christian Louboutin "wins" and "loses" after the Second Circuit partially reverses trademark ruling
Intellectual Property Alert | September 6, 2012

Ninth Circuit rejects fair use defense in reversing decision in favor of gossip magazine's publication of private celebrity photographs
Intellectual Property Alert | August 15, 2012

Seventh Circuit holds that non-debtor party to trademark licensing agreement may retain use of IP rights despite rejection of licensing agreement in licensor's bankruptcy
Bankruptcy Law Alert | August 7, 2012

Court refuses to enjoin provider of service allowing users to access "live" copyrighted television broadcasts over the internet
Intellectual Property Alert | July 19, 2012

How abstract is too abstract for a patent?
Intellectual Property Alert | July 10, 2012

Personalized Medicine Patent Watch Update
Intellectual Property Alert | July 9, 2012

Federal Circuit holds the objective prong of the willful infringement analysis is a question of law to be reviewed de novo
Intellectual Property Alert | June 26, 2012

South Park creators prevail in copyright infringement action based on fair use defense
Intellectual Property Alert | June 7, 2012

Omega appeals a finding of copyright misuse to the Ninth Circuit
Intellectual Property Alert | June 6, 2012

Former Village People lead singer wins right to terminate copyright grants
Intellectual Property Alert | May 10, 2012

The U.S. Supreme Court agrees to hear arguments on whether the "first sale" doctrine applies to works manufactured outside of the United States
Intellectual Property Alert | April 20, 2012

Fourth Circuit rejects use of functionality doctrine as a defense to trademark infringement based on alleged infringer's use of the mark
Intellectual Property Alert | April 18, 2012

The Ninth Circuit limits the Computer Fraud and Abuse Act
Intellectual Property Alert | April 17, 2012

ANYWEAR or ANYWEAR? Trademark Trial and Appeal Board allows registration of mark that would otherwise be confusingly similar to senior user's registered mark due to applicant's prior registration
Intellectual Property Alert | April 10, 2012

Second Circuit construes key language of the Section 512(c) "safe harbor" provision of the Digital Millennium Copyright Act
Intellectual Property Alert | April 9, 2012

Second Circuit affirms award of attorney's fees where a trademark owner elected to recover statutory damages in a counterfeiting case
Intellectual Property Alert | April 2, 2012

Fifth Circuit allows claims asserting abuse of the Anticybersquatting Consumer Protection Act ("ACPA") by a trademark owner
Intellectual Property Alert | March 27, 2012

Federal Circuit holds res judicata bars new action after reexam, but not infringing actions or device modifications occurring after the previous complaint
Intellectual Property Alert | March 16, 2012

Federal Circuit avoids "murky morass" of Section 101 jurisprudence, proceeds directly to Sections 102 and 103
Intellectual Property Alert | March 7, 2012

Crafting personalized medicine IP protection—walking the thin line between patent eligibility and enforcement
Intellectual Property Alert | January 10, 2012

Ninth Circuit Affirms Judgment for Apple in Software Copyright Infringement Case; Rejects Defendant's "Copyright Misuse" Defense
Intellectual Property Alert | October 4, 2011

First Circuit Reverses Order Reducing Damages Award in Music File-sharing Copyright Infringement Case; Avoids Constitutional Questions
Intellectual Property Alert | September 26, 2011

Joint Infringement—Potential Defense Available to Companies Accused of Patent Infringement
Intellectual Property Alert | September 23, 2011

Ninth Circuit Gives Partial Victory to Louis Vuitton in Contributory Copyright and Trademark Infringement Case
Intellectual Property Alert | September 15, 2011

Ninth Circuit clarifies jurisdiction rules in intellectual property cases brought against out-of-state companies operating on the Internet
Intellectual Property Alert | August 16, 2011

Seeing red: NY court refuses to enforce single color trademark for shoe design
Intellectual Property Alert | August 15, 2011

First Induced Pluripotent Stem Cell (iPSC) Patent Approved by the EPO
Intellectual Property Alert | August 2, 2011

Federal Circuit issues opinion in ACLU v. Myriad
Intellectual Property Alert | July 29, 2011

Patent reform primer
Changes to the grace period

Intellectual Property Alert | July 14, 2011

New .XXX domain name tentatively scheduled to launch September 7, 2011 — clients are advised they may be able to block certain domains to prevent future use
Intellectual Property Alert | June 21, 2011

U.S. PTO Restriction Practice: Personalized medicine claims with SNPs
Intellectual Property Alert | June 13, 2011

Employers (particularly universities): check your invention assignment agreements!
Intellectual Property Alert | June 7, 2011

Therasense decision highlights specific intent requirement for inequitable conduct determinations
Intellectual Property Alert | June 1, 2011

Follow-on Biologics legislation has immediate impact on patent holders
Intellectual Property Alert | May 25, 2011

Protecting personalized medicine innovation in China and India: Are diagnostic methods patentable?
Intellectual Property Alert | May 17, 2011

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