Intellectual Property

Overview

Transforming an idea into marketplace success requires more than a spark of ingenuity. Capturing, protecting, and commercializing intellectual property requires a legal services partner able to seamlessly integrate IP prosecution, litigation, and transaction capabilities.

Nixon Peabody’s hybrid Intellectual Property practice guides clients through the full IP lifecycle—from mining an organization’s research and development activities to capture and protect intellectual property to supporting the commercialization and branding of those assets, enforcing intellectual property rights, and defending against competitors.

Serving as an extension of your team, our cross-industry and interdisciplinary practice leverages technical experience, which extends beyond the legal sector, to help leaders, inventors, creators, and artists seize market opportunity around the world.

Representative experience

• Alaska Airlines: Won a precedential opinion from the U.S. Court of Appeals for the Federal Circuit in a patent lawsuit regarding non-standard fonts in mobile apps. The ruling leaves intact district court discovery orders upholding Alaska Airlines’ confidentiality designations for its source code and rejecting the opposition’s effort to gain access for its in-house counsel by modifying the District of Utah’s model protective order.
• The Regents of the University of California: Conducted a groundbreaking patent enforcement campaign for the governing board of the state university system to protect its rights in a revolutionary new generation of light bulb technology, known as filament LED, that was invented by a Nobel laureate-led team at UC Santa Barbara
• The Estate of the Notorious B.I.G.: Successfully defended the estate of the late world-renowned rapper in a copyright infringement case that resulted in the first fair use ruling for music lyrics and the first fair use ruling affirmed with a written decision. The U.S. Court of Appeals for the Second Circuit affirmed the district court’s finding of fair use surrounding the dispute over the lyrics of the artist’s song, “Party and Bullsh*t.”
• Alibaba Group: Advise the large Chinese e-commerce company, which provides consumer-to-consumer, business-to-consumer, and business-to-business sales services via web portals, on managing an extensive US trademark portfolio
• Cedars-Sinai Medical Center: Represent the hospital and multi-specialty academic health science center on a range of patent prosecution and tech transfer matters, including licensing and spin-off transactions, equity investments, research and technology development collaborations, and IP enforcement
• St Andrews Links: Represent the oldest and most renowned golf course in the world in trademark infringement matters
• Asklepios BioPharmaceutical, Inc. (AskBio): Provide intellectual property counseling to the AAV gene therapy and manufacturing company regarding research, technology development and collaboration, prosecution, and licensing
• Bandai Namco Entertainment Inc.: Manage the worldwide trademark portfolio of one of America’s top-ten largest video game companies, which created Pac-Man, Tekken, Dragonball, and other familiar titles
• Reuben Klamer: Represented the author of the iconic board game, The Game of Life, on the issue of copyright ownership, which was affirmed unanimously on appeal by the First Circuit. Due to his work on the prototype of the game, the court held unequivocally that he was the author and owner of its copyright

Recognition

• Nixon Peabody has been named a Tier 1 National firm by U.S. News – Best Lawyers® “Best Law Firms” in 2022–2023 for Litigation - Intellectual Property and Patent Law. We also received First Tier metropolitan rankings for Litigation - Intellectual Property, Patent Law, and Trademark Law.
• In addition, many Nixon Peabody IP practices received U.S. News/Best Lawyers rankings at the regional level for 2023 in the following geographies: Boston, Chicago, Los Angeles, New York City, Rochester, and Washington, DC.
• World Trademark Review 1000—Recommended for trademark prosecution and strategy and for trademark litigation and enforcement (2012–2022).
• Managing Intellectual Property—Ranked as a top U.S. law firm for securing “the highest-quality patents”; recognized as a national leader in the patent category; recommended as a top U.S. law firm in Massachusetts for trademarks and patent prosecution; recommended as a top U.S. law firm in Illinois for the patent contentious category; eleven IP attorneys recognized as “IP Stars” (2013–2022).
• IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent prosecution and litigation, including eight patent lawyers individually listed (2012–2022).
• Legal 500 United States—Ranked for Trade Secrets (litigation and non-contentious matters) (2013–2022).