Intellectual Property Litigation



We leverage our extensive technical, industry and legal experience to help clients protect their innovations and brands while maintaining their competitive advantage.

Our Approach

In a fiercely competitive marketplace, all aspects of a company’s IP—innovative products and services, logos, social media presence and more—impact its business reputation. The ease of sharing information online has further motivated companies to vigorously safeguard their IP. Meanwhile, court decisions, including TC Heartland, and new procedures, like inter partes reviews (IPRs) and covered business method reviews (CBMs), continue to change the landscape for resolving disputes.

In the world of high-stakes IP litigation, the technology, innovation or brand at issue can be intricate and complex. We build diverse litigation teams that combine trial proficiency with technical know-how derived from advanced degrees and first-hand industry experience to seamlessly communicate complicated concepts of fact and law in a clear and persuasive manner. We devise innovative, cost-effective legal strategies to help clients protect their patents, trademarks, copyrights and trade secrets and further their business interests and competitive advantage.

Moreover, because we understand clients seek inventiveness and flexibility in fee structure and matter financing, we have developed strong relationships with litigation funders and have the experience to guide our clients through this process.

Representative Patent Litigation Experience

  • Successfully persuaded the Patent Trial and Appeal Board to deny the institution of IPRs against two separate patents directed to tampon applicators and owned by Edgewell Personal Care Brands (owner of Schick, Playtex, Hawaiian Tropic and Edge brands) (IPR2017-00694 and IPR2017-00693)
  • Defended Edgewell Personal Care Brands against patent infringement allegations involving private label razors. The case was terminated. The Gillette Co. v. Edgewell Personal Care Co. (S.D.N.Y.)
  • Led team that defended 29 companies, including some of the world’s best known brands, in a case in which 450 defendants were accused of patent infringement by an NPE involving a patent directed at online access to geographically and topically based information. The case was dismissed. GeoTag Inc v. Frontier Communications (E.D. Tex.)
  • Defended Pilgrim Films & Television, a television production company, and other defendants, against patent infringement allegations for a wheelchair-accessible motorcycle, which was based off of an episode of American Choppers where they built a similar vehicle. Tavantzis, et al. v. American Choppers, et al. (M.D. Fla.)
  • Represented Royal Caribbean Cruises, a global cruise company, in patent litigation matter involving propulsion condition management system. The case settled. Condatis LLC v. A.P. Moller-Maersk A/S, et al. (E.D. Tex.)
  • Represented Sierra Wireless, a multinational wireless communications equipment designer and manufacturer, in a patent litigation matter relating to claims arising from OFDM (LTE) and multi-code CDMA technology. The case settled. Wi-Lan v. Sierra Wireless, et al. (E.D. Tex.)
  • Defended Taleo Corporation and Vurv Technology, software companies in the talent management space, against allegations of patent infringement involving online résumé processing technology. The case settled during trial. Kenexa BrassRing Inc. v. Taleo Corp. and Vurv Technology, Inc. (D. Del.)

Representative Trademark Litigation Experience

  • Represented Akeso Health Sciences, a nutritional supplements provider, in a trademark and breach of contract case involving a nutritional supplement for migraines. The jury awarded Akeso Health Sciences. Akeso Health Sciences, LLC v. Quantum, Inc. (D. Or.)
  • Represented Ford Motor Company, an American multinational automaker, in an ex parte seizure order of counterfeit goods resulting in an entry of a stipulated permanent injunction. Ford Motor Company v. O’Brien Parts, Inc., d/b/a Shamrock Parts, and Richard P. O’Brien, Jr. (D. Mass.)
  • Represented Pushpay IP, a company that develops mobile application programs to assist organizations with financial payment transactions, in a trademark infringement involving the mark “Pushpay.” The case was dismissed. Pushpay IP Limited and Pushpay Holdings Limited v. Just Push Pay LLC (W.D.N.C.)
  • Defended TrueX Media, a digital advertising company, against allegations of trademark infringement concerning use of TRUEX MEDIA mark. The case settled. True Media LLC v. Truex Media Inc. et al. (N.D. Ill.)
  • Defended VeriFone, which provides technology for electronic payment transactions and value-added services at the point-of-sale, in an action alleging misappropriation of trade secrets involving pay-at-table software solutions for real-time communication via Wi-Fi networks for credit card terminals and point-of-sale systems. The case settled. Communication Transaction Solutions, Inc. v. VeriFone Holdings, Inc., VeriFone, Inc., et al. (Superior Court of Calif., County of Santa Clara)

Representative Copyright Litigation Experience

  • Represented ASE Technologies, a software development company, 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. The case settled. Nearstar, Inc. v. Waggoner, et al. (E.D. Tex.)
  • Represented Club House Creations, a retail clothing store, in a copyright infringement and unfair competition case brought by Urban Textile. The case was dismissed. Urban Textile, Inc. v. Rue 21 Inc., et al. (C.D. Calif.)
  • Represent Gameloft, a mobile game developer, in a suit alleging copyright infringement, trade secret misappropriation, and other claims relating to the development of digital cars used in mobile video games. Glass Egg Digital Media v. Gameloft, Inc. et al. (N.D. Calif.)
  • Represented Remrylie Licensing, a retailer of clothing, footwear, etc., in a copyright infringement case involving photographs of Tupac Shakur. The case settled. Dana Ruth Lixenburg v. Bioworld Merchandising Inc., et al. (C.D. Calif.)

Fed Circuit deals loss to privateer-backed patent holder

Reuters Legal | March 25, 2020

This article highlights an appeals court victory for Nanya Technology Corp., represented by Los Angeles Intellectual Property partners Peter Wied and Vincent Yip.

Service Providers - Fashion and Retails Lawyers

Women’s Wear Daily | March 25, 2020

This article about the types of matters and questions that fashion and retail attorneys are handling for their clients during the COVID-19 pandemic quotes Los Angeles Intellectual Property partner, Litigation Department vice-chair, and Fashion practice leader Staci Riordan.

Peloton case an example of intellectual property rights of copyright owners

Rochester Business Journal | March 20, 2020

Rochester Corporate partner Jeremy Wolk contributed this column analyzing a copyright dispute between home exercise giant Peloton and the National Music Publishers Association regarding the use of popular music in Peloton video workouts. This column was adapted from an NP alert by Los Angeles Intellectual Property partner Staci Riordan, New York City Complex Commercial Disputes partner Dan Schnapp, and associate Catherine Savio.

Nixon Peabody nabs 2 new Chicago partners

Law360 | March 11, 2020

This feature story highlights two of the newest arrivals to NP’s Chicago office—Complex Commercial Disputes partner Jon Lively and Intellectual Property partner Dan Schwartz. Both attorneys said their prior experience working with NP lawyers was a major factor in their decision to join the firm.

The Impact of Overturning eBay v MercExchange

IPWatchdog | March 02, 2020

Washington, DC, Intellectual Property partner Evan Langdon wrote this contributed article about the possible impact of proposed legislation that would overturn eBay v. MercExchange, an important Supreme Court decision regarding patent litigation.

Universities should consider ITC for IP protection

Tech Transfer Tactics | February 18, 2020

Intellectual Property partners Evan Langdon of Washington, DC, and Shawn Hansen and Seth Levy of Los Angeles co-wrote this article explaining how the U.S. International Trade Commission (ITC) can be a “powerfully effective venue” for patent protection. Evan, Shawn, and Seth are leading the NP team representing the University of California in an investigation pending at the ITC concerning LED lightbulb technology. Read the full article on techtransfercentral.com.

What the University of California case means for retailers and IP in the supply chain

TotalRetail | February 13, 2020

This article analyzes the potential for lasting implications to the global supply chain as a result of the University of California’s (UC) patent enforcement campaign against several retailers selling filament LED lightbulbs. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Central Coast tech firms, UCSB use litigation to protect patents

Pacific Coast Business Times | February 07, 2020

The article mentions Nixon Peabody’s ongoing representation of the Regents of the University of California in UC Santa Barbara’s patent enforcement matter, noting that a recent $1.1 billion verdict for the California Institute of Technology in another matter could bode well for UC Santa Barbara. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Think universities are making lots of money from inventions? Think again

The Hechinger Report | January 17, 2020

In this article about the ways universities succeed or fail in monetizing their intellectual property, Los Angeles Intellectual Property partner Seth Levy talks about NP’s patent enforcement work on behalf of the University of California.

University of California targets General Electric in campaign against patent infringement

Tech Transfer Central | January 08, 2020

This article quotes Los Angeles Intellectual Property partner Seth Levy discussing Nixon Peabody’s representation of the University of California, which has sued General Electric as part of its ongoing campaign to enforce its patents on LED lightbulb technology. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

UCSB adds GE to lawsuit defending LED patents

Pacific Coast Business Times | January 02, 2020

Los Angeles Intellectual Property partner Seth Levy is quoted in this story covering the latest developments in UC Santa Barbara’s patent enforcement campaign to protect its LED lightbulb technology, including the addition of General Electric as a defendant. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

A Year Out and a Supreme Court Case Still Leaves Patent Questions Unanswered

Intellectual Property & Technology Law Journal | December 05, 2019

Intellectual Property associates Sydney Pritchett, Ben Rosborough and Ravi Braich authored this patent alert about remaining questions and uncertainty following the U.S. Supreme Court ‘s ruling in Helsinn Healthcare S.A. v. Teva Pharmaceuticals U.S.

LEDVANCE Reaches Agreement on UC Santa Barbara's Patented LED Technology

Yahoo! Finance | December 02, 2019

This announcement related to UC Santa Barbara's first-of-its-kind patent enforcement campaign shares that LEDVANCE, one of the world’s leading general lighting providers, has entered into a licensing agreement that authorizes the company to manufacture and distribute UC Santa Barbara’s patented filament LED technology. LEDVANCE is the largest manufacturer to date that has signed a licensing agreement. The announcement mentions Nixon Peabody for representing UC Santa Barbara.

'Party and Bulls--t': NY judge rules phrase is fair use in Notorious B.I.G., Rita Ora songs

Billboard | September 05, 2019

This story highlights Intellectual Property partner Staci Riordan and associate Sydney Pritchett and Government Investigations and White Collar Defense associate Neal Gauger, all of Los Angeles, who successfully defended their client, the estate of slain rapper Notorious B.I.G., in a copyright infringement lawsuit.

Law360's Weekly Verdict: Legal Lions & Lambs

Law360 | September 05, 2019

This story highlights Intellectual Property partner Staci Riordan and associate Sydney Pritchett and Government Investigations and White Collar Defense associate Neal Gauger, all of Los Angeles, who successfully defended their client, the estate of slain rapper Notorious B.I.G., in a copyright infringement lawsuit.

2nd Circuit says Biggie's “Party And B*******” is fair use

Law360 | September 04, 2019

This story quotes Los Angeles Intellectual Property partner Staci Riordan discussing the successful defense of the estate of slain rapper Notorious B.I.G. in a copyright infringement lawsuit. Intellectual Property associate Sydney Pritchett and Government Investigations and White Collar Defense associate Neal Gauger, both of Los Angeles, also worked on this matter.

ITC to Probe Amazon, Walmart, Others in LED Patent Case

Law360 | August 29, 2019

This article highlights recent developments in the University of California’s campaign to protect its rights related to filament LED technology developed at UC Santa Barbara. On Wednesday, the U.S. International Trade Commission opened an investigation in response to UC’s complaint, filed in July by the Nixon Peabody team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen.

Ikea, Amazon, and the billion-dollar war over light bulb design

Fast Company | August 02, 2019

This article highlights the University of California’s campaign to protect its rights related to filament LED technology developed at the university. An NP team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen is representing UC in this campaign.

Brunetti case attempts to further determine “unprotected speech”

Rochester Business Journal | July 26, 2019

This column by Rochester Corporate partner Jeremy Wolk analyzes a recent Supreme Court decision on whether individuals have a First Amendment right to register federal trademarks of “obscene” words and phrases. The column is based on an NP Alert written by Intellectual Property partners Jeff Costellia, Jason Kravitz and Deanna Kunze, and associate Anthony Duncan.

Spanish museum can keep Nazi-looted masterpiece, judge rules

Bloomberg | April 30, 2019

In the following media coverage, Los Angeles Complex Commercial Disputes partner Thad Stauber is quoted on Tuesday’s federal court ruling that found the Madrid-based Thyssen-Bornemisza Collection Foundation is the rightful owner of a Camille Pissarro painting.  Thad and Los Angeles partner Sarah André, counsel Aaron Brian, and associate Irene Scholl-Tatevosyan represented the Foundation in this matter.

Patent office issues new guidance on patent applications

Rochester Business Journal | February 22, 2019

Rochester Corporate partner Jeremy Wolk, with the help of Los Angeles Intellectual Property partner Jennifer Hayes and Washington, DC, Intellectual Property associates Anthony Duncan and Emily Sandhaus, authored this column the United States Patent and Trademark Office’s new guidance on software patent applications.

Justices agree that secret sales bar patent protection

Los Angeles/San Francisco Daily Journal | February 04, 2019

Los Angeles Intellectual Property partner Jennifer Hayes and Chicago Intellectual Property associate Ben Rosborough authored this column about the U.S. Supreme Court’s recent decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals U.S. and how it impacts patent protection.

High court to address rift on bankrupt brands' trademarks

Law360 | October 26, 2018

Boston Financial Restructuring and Bankruptcy partner Lee Harrington is quoted in this article about his representation of Tempnology in a trademark licensing case that was just taken up by the Supreme Court.

Thinking about a no-poach agreement

Corporate Counsel | October 26, 2018

Washington DC Complex Commercial Disputes partner Alycia Ziarno is quoted in this article on the Department of Justice’s evolving position on no-poach agreements, in which companies agree not to recruit each other’s employees.

Brand battles

Law360 | September 20, 2018

Nixon Peabody is mentioned in this roundup of new action at the Trademark Trial and Appeal Board for our representation of Alibaba in a trademark dispute with Discovery Inc., owner of the Discovery Channel.

Senate approves legislation to crack down on patent trolls

The Boston Globe | July 27, 2018

Boston Intellectual Property co-practice group leader Jason Kravitz is quoted in this article analyzing legislation approved by the Massachusetts Senate to reduce patent infringement claims made by “patent trolls.”  Jason says such legislation is important in a state with a strong entrepreneurial economy.

Eye drop suit must stay tossed, pharma companies tell 1st Circuit

Law360 | April 18, 2018

Litigation Department Chair Scott O’Connell is mentioned in this article as one of the attorneys for a group of pharmaceutical companies asking the First Circuit Court of Appeals to uphold a U.S. District Court ruling that rejected a lawsuit aimed at forcing a redesign of eye drop bottles.

Power Lawyers: 11 Top Music Attorneys for John Legend, BTS and More

The Hollywood Reporter | April 04, 2018

Los Angeles IP counseling and transactions partner Julian Petty, whose clients include Childish Gambino and the estate of Notorious B.I.G., has been named a Top Music Attorney in the Power Lawyers issue of The Hollywood Reporter.

Company Punished for Dodging Discovery Tied to $75M IP Loss

Law360 | March 29, 2018

Albany commercial litigation partner Bill Reynolds is mentioned in this article for his representation of AngioDynamics Inc., which has spent years trying to collect a $75 million IP judgment from Biolitec AG. The latter company now faces up to $1 million in fines if it does not comply with discovery requests.

DQ Sues W.B. Mason over Use of “Blizzard”

Boston Herald | March 17, 2018

In the following coverage, Boston IP litigation partner Jason Kravitz is mentioned as lead attorney for W.B. Mason in its countersuit against Dairy Queen, about a trademark case over the use of the term “Blizzard.” “We obviously don’t think we’re in the wrong, at all,” Kravitz said. “These are fundamentally different business lines—fundamentally different channels of trade. We don’t think any reasonable person is ever going to confuse a bottle of water with W.B. Mason on the label and a Dairy Queen frozen dessert.”

Office Supplier Fires Back at Dairy Queen in Trademark Spat

Courhouse News Service | March 15, 2018

In the following coverage, Boston IP litigation partner Jason Kravitz is mentioned as lead attorney for W.B. Mason in its countersuit against Dairy Queen, about a trademark case over the use of the term “Blizzard.” “We obviously don’t think we’re in the wrong, at all,” Kravitz said. “These are fundamentally different business lines—fundamentally different channels of trade. We don’t think any reasonable person is ever going to confuse a bottle of water with W.B. Mason on the label and a Dairy Queen frozen dessert.”

WB Mason Strikes Back Against Dairy Queen 'Blizzard' Suit

Law360 | March 14, 2018

In the following coverage, Boston partners Jason Kravitz and Gina McCreadie, senior counsel Deborah Thaxter, and associate Leslie Hartford are mentioned for representing W.B. Mason in a trademark infringement case against Dairy Queen over the use of the word “blizzard.”

Buffett's Dairy Queen sues W.B. Mason over 'Blizzard'

Law360 | March 14, 2018

In the following coverage, Boston partners Jason Kravitz and Gina McCreadie, senior counsel Deborah Thaxter, and associate Leslie Hartford are mentioned for representing W.B. Mason in a trademark infringement case against Dairy Queen over the use of the word “blizzard.”

Daily Dicta: Nixon Peabody’s B.I.G. Win

AmLaw Daily | March 11, 2018

Los Angeles IP counseling and transactions partners Staci Riordan and Julian Petty successfully defended the estate of rapper Notorious B.I.G. in a copyright suit. Riordan is quoted in this article, saying the ruling “is sure to become an influential decision on music copyright infringement cases.”

Copyright Lawsuit Against Rita Ora, Notorious B.I.G. Estate Dismissed

Billboard | March 08, 2018

Los Angeles IP counseling and transactions partners Staci Riordan and Julian Petty are quoted for their representation of the estate of rapper Notorious B.I.G. in the successful defense of a copyright suit filed by a 1960s revolutionary poet.

Notorious B.I.G. Shakes Copyright Row Over 'Party' Song

Law360 | March 08, 2018

Los Angeles IP counseling and transactions partners Staci Riordan and Julian Petty are mentioned in this article on NP’s win representing the estate of rapper Notorious B.I.G. A judge ruled the rapper’s use of a phrase from a 1960s poem was permissible under copyright law because it was “transformative.”

H&M, Unicolors face off on Day 1 of fabric copyright trial

Law360 | December 04, 2017

Los Angeles IP counseling and transactions partner Staci Jennifer Riordan and counsel Aaron Brian are mentioned in this article about a copyright infringement trial in LA for representing clothing retailer H&M.

Here are some of the legal implications of virtual reality in esports

Forbes | October 23, 2017

Los Angles commercial litigation associate Brianna Howard is featured in this Q&A about the legal implications of incorporating virtual reality and other new technologies into the esports industry, specifically intellectual property rights.

What’s in a name? Choosing and protecting your esports brand

Medium.com | October 22, 2017

Rochester IP counseling and transactions associate Colleen Raimond authored this article about how esports players and teams can create and protect their brands.

Drugmaker asks federal judge to invalidate rival company patents

Los Angeles Daily Journal | October 09, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in this article about drug maker Amgen Inc.’s request for a federal judge to invalidate patents claimed by a rival company so it can create a generic, less expensive version of a popular cancer drug.

Building a new brand? IP attorney shares basic exercise to traverse starting a new trademark

FoodNavigator-USA | October 05, 2017

Chicago IP counseling and transactions partner Janet Garetto is featured in this Q&A article about IP protections for food manufacturers.

International due diligence in cross-border franchise transactions

Franchise Law Journal | August 31, 2017

Washington DC M&A and corporate transactions partner Kendal Tyre, public company transactions associate Pierce Han and IP litigation associate Nia Newton authored this article about the due-diligence first steps that franchising systems should take when expanding internationally.

To avoid copyright disaster, the future of game streaming is licensing

VentureBeat | August 22, 2017

Los Angeles commercial litigation associates Brianna Howard and Jessica Walker and Chicago IP litigation associate Jason Kunze contributed this article on how licensing agreements can protect online streaming platforms from copyright infringement in the gaming industry.

Legal experts weigh in on the Gucci vs. Forever 21 stripe trademark battle

Hollywood Reporter | August 13, 2017

Los Angeles IP counseling and transactions partner and fashion practice group leader Staci Riordan is quoted in this article about dueling trademark lawsuits between Gucci and Forever 21.

Most influential IP attorneys

Los Angeles Business Journal | August 13, 2017

Los Angeles IP counseling and transactions partner Julian Petty has been named one of the entertainment industry’s most influential IP attorneys.  This article highlights his work and his clients.

Contacts

Jeffrey L. Costellia

Partner
Co-leader, Intellectual Property

jcostellia@nixonpeabody.com

Phone: 202-585-8207

Jason C. Kravitz

Partner
Co-leader, Intellectual Property

jkravitz@nixonpeabody.com

Phone: 617-345-1318

  • U.S. News/Best Lawyers “Best Law Firms” 2020 ranked as National Tier One in: Appellate Practice, Commercial Litigation, Corporate Law, Employment Law—Management, Energy Law, Franchise Law, Health Care Law, Labor Law—Management, Litigation—Construction, Litigation—Labor & Employment, Litigation—Real Estate, Mass Tort Litigation/Class Actions—Defendants, Patent Law, Public Finance Law, Real Estate Law, Securities Regulation, Tax Law
  • In addition, many Nixon Peabody practices received U.S. News/Best Lawyers Tier 1 rankings at the regional level in the following geographies: Albany, NY; Boston; Buffalo; Chicago; Long Island; Los Angeles; Manchester, NH; New York City; Providence, RI; Rochester, NY; San Francisco; and Washington, DC.
  • 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 for life sciences; recommended as a top U.S. law firm in Massachusetts for trademarks; nine IP attorneys recognized as “IP Stars” (2013–2020)
  • World Trademark Review 1000—Recommended for trademark prosecution and strategy and for trademark litigation and enforcement (2012–2020)
  • Legal 500 United States—Ranked for Trade Secrets (2013–2019)
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent prosecution and litigation, including seven patent lawyers individually listed (2012–2019)
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