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), 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.

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. Flor.)
  • 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.)

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

Law360 | April 19, 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 05, 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 30, 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 18, 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 16, 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 15, 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 15, 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 12, 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 09, 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 09, 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 05, 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 24, 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 23, 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 10, 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 06, 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 | September 01, 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 23, 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 14, 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 14, 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.

Attorneys react to Supreme Court patent venue ruling

Law360 | May 22, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in the following articles discussing the Supreme Court’s decision in the patent case TC Heartland LLC v. Kraft Food Brands Group LLC, which limits where plaintiffs can file patent lawsuits.

Supreme Court ruling could hinder ‘patent trolls’

The New York Times | May 22, 2017

Los Angeles IP litigation partner Shawn Hansen is quoted in the following articles discussing the Supreme Court’s decision in the patent case TC Heartland LLC v. Kraft Food Brands Group LLC, which limits where plaintiffs can file patent lawsuits.

Ten legal issues to watch when it comes to eSports

Forbes | May 19, 2017

Associates Irene Scholl-Tatevosyan, Matt Morris, Chris Queenin and Brianna Howard co-authored this article about legal issues the booming eSports industry should consider.

Connections: "Finger Lakin' Good" and trademark law

WXXI News | May 01, 2017

Rochester IP counseling and transactions partner Kristen Mollnow Walsh appeared on this radio segment to discuss a case of alleged “corporate bullying” by Kentucky Fried Chicken.

Supreme Court decides how far patent laws can reach

Rochester Business Journal | April 21, 2017

Rochester private equity and investment funds partner Jeremy Wolk, Washington DC IP counseling and transactions partner Jeff Costellia and Chicago IP counseling and transactions associate Angelo Christopher co-authored this column about a Supreme Court decision regarding the reach of U.S. patent rights for exported products.

Read fine print on learning apps, experts warn

Education Week | March 28, 2017

Chicago IP litigation associate Jason Kunze is quoted in this article about safeguarding student data privacy in online educational apps.

California court denies employer’s request to unmask author of anonymous post

SHRM | March 28, 2017

Providence commercial litigation counsel Steve Richard contributed this article about a company’s efforts to remove a former employee’s anonymous online post which the company believed revealed company trade secrets.

5 keys to high court’s cheerleader uniform ruling

Law360 | March 22, 2017

Los Angeles IP counseling and transactions partner and fashion practice leader Staci Riordan is quoted in this article about the U.S. Supreme Court’s recent 6-2 decision regarding copyright law and decorative elements on cheerleading uniforms.

Breville USA alleges patentable juicer design was used without authority

Northern California Record | December 06, 2016

San Francisco commercial litigation partner Bruce Copeland and associate Shady Joulani are noted as Breville USA Inc.’s counsel in a patent infringement case before the Northern District of California.

ITA Spotlight: Russ Genet

illinoistech.org | December 05, 2016

Russ Genet was featured in a Q&A discussing the firm's IP practice nationally and in the Chicagoland region.

Justices struggle with cheerleader uniform case that holds big implications for fashion

Forbes | October 31, 2016

This story discusses a Supreme Court case about whether design elements on a cheerleader uniform can have intellectual property protection. Los Angeles partner and fashion practice leader Staci Riordan talks about the potential impact of this case on the fashion industry.

Feud in fashion

Los Angeles Business Journal | October 28, 2016

Los Angeles partner and fashion practice leader Staci Riordan is quoted in this article about SCOTUS case Star Athletica v. Varsity Brand, which could have major implications for the Los Angeles region’s fashion industry.

Rainmaker Q&A: Nixon Peabody's Jeffrey Costellia

Law360 | September 07, 2016

This profile features Washington, DC, partner, chair of the Global Strategies Committee and lead of IP Counseling & Transactions, Jeff Costellia. The Q&A showcases his focus on client service and he offers advice to new attorneys building their practices.

The Healing Power of AI

Tech Crunch | August 12, 2016

Silicon Valley IP litigation associate Erik Birkeneder authored this article about how deep learning algorithms can have the potential to improve medical diagnostics and care.

Robotext Class Defendants May Benefit from Multi-District Consolidation Approach

Bloomberg BNA Privacy Law Watch | June 14, 2016

TCPA team co-leader and Boston IP litigation associate Troy Lieberman is quoted in this piece discussing considerations companies should address when facing multiple Telephone Consumer Protection Act class actions.

4 Times To File A Continuation Patent Application

Law360 | March 17, 2016

Silicon Valley IP litigation partner Jennifer Hayes provides third-party commentary throughout this article about when to file a continuation patent application.

#FreeKesha Puts a Legal Battle in a Public Spotlight

NPR | February 23, 2016

Los Angeles partner Julian Petty is quoted in this story discussing the #FreeKesha movement supporting the pop singer as she fights her recording contract with Sony. Throughout the piece, he provides third-party commentary on how public support is playing into the legal battle. Click here to read the full article.

On the Move

The Recorder | February 05, 2016

This coverage notes Silicon Valley IP litigation partner Jennifer Hayes election to the partnership news.

Can an Applicant With a Criminal History Buy a Franchise?

The Legal Intelligencer | January 22, 2016

New York City partner Craig Tractenberg authored this column discussing whether a potential franchisee can purchase a franchise with a criminal history.

Can Discount Prices Get Retailers Into Trouble?

Apparel News | January 21, 2016

Los Angeles partner and Fashion practice group leader Staci Riordan provides third-party commentary in this piece about an increasing number of class-action lawsuits against big-name department stores over markdowns allegedly made on “false” original prices.

Shout-Out: Nixon Peabody Scores Win for Planet Fitness in Transgender Locker Room Suit

American Lawyer Litigation Daily | January 13, 2016

This feature story highlights the firm’s efforts securing a dismissal of transgender locker room policy lawsuit for client Planet Fitness. The Boston team of partner Art Pressman and associate Troy Lieberman are noted as counsel.

Get Ready For EU Unified Patent Court and Unitary Patent

Law360 | January 08, 2016

San Francisco IP litigation partner Ron Lopez and Silicon Valley IP litigation associate Jennifer Hayes co-authored this column on the new single Unified Patent Court with jurisdiction over European patents.

Notorious B.I.G. estate gets copyright infringement lawsuit tossed

Reuters | December 23, 2015

Nixon Peabody is mentioned in this feature article for our representation of Warner Music Group, EMI Music Publishing, Big Poppa Music, Bad Boy Records and the estate of The Notorious BIG. Our team—led by partners Staci Riordan and Julian Petty—won a dismissal of copyright infringement claims involving BIG’s 1994 debut album. Associates Neal Gauger and Seth Berman were part of the legal team. Click here to read the full article.

Warner, Notorious BIG Estate Duck Songwriter's IP Suit

Law360 | December 22, 2015

Partners Staci Riordan and Julian Petty and associates Neal Gauger and Seth Berman are mentioned in this article for their representation of Warner Music Group, EMI Music Publishing, Big Poppa Music, Bad Boy Records and the estate of Notorious BIG in a case focused on alleged copyright claims involving BIG’s 1994 debut album. Staci provides commentary. Click here to read the full article.

Michelle Lee Steers USPTO Through Choppy Waters

Law360 | December 09, 2015

San Francisco IP Litigation partner Ron Lopez is quoted in this profile of U.S. Patent and Trademark Office Director Michelle Lee.

4 Ways to Knock Out a Frivolous Patent Suit in East Texas

Law360 | November 09, 2015

San Francisco IP Litigation partner Ron Lopez provides commentary in this feature story on how to beat a frivolous patent case in the U.S. District Court for the Eastern District of Texas which is known for being a difficult challenge.

New Bill Seeks to Level Playing Field for Franchisees

The Legal Intelligencer | October 23, 2015

New York City IP Litigation partner Craig Tractenberg authored this column discussing a new bill intended to establish “responsible franchise practices” and level the playing field for franchisees.

Protecting attorney-client privilege in asset sales

Chicago Daily Law Bulletin | October 15, 2015

Chicago IP Counseling & Transactions partner Janet Garetto and Chicago IP Litigation partner Russ Genet co-authored this column on protecting the valued attorney-client privilege. Click here to read the full article.

Protect your consumers' privacy from mass telemarketing

Rochester Business Journal | October 09, 2015

This column explains the Telephone Consumer Protection Act (TCPA), the risks to businesses, and how businesses can avoid TCPA liability. Corporate transactions partner Jeff LaBarge, commercial litigation associate Dan Deane and IP litigation associate Troy Lieberman collaborated on the piece.

RevoLaze Drops Lawsuit Against Hennes & Mauritz

California Apparel News | October 08, 2015

Los Angeles partner and leader of our fashion practice Staci Riordan is quoted in this article discussing a dropped legal action against her client, fashion retailer Hennes & Mauritz (H&M). Staci is quoted in the piece expressing H&M’s confidence that the retailer would have won the lawsuit as it did not infringe on RevoLaze’s laser technology used to distress jeans.

Are Patent Trolls Taking Over the Fashion Industry?

Fortune | October 07, 2015

Partner and leader of the firm’s fashion team Staci Riordan provides commentary in this feature story discussing how the fashion industry—especially textile companies—are dealing with copyright infringement lawsuits.

State, Federal Law Differ on Franchisors as Joint Employers

The Legal Intelligencer | September 30, 2015

New York City IP litigation partner Craig Tractenberg authored this column discussing differences in state and federal law related to franchisors as joint employers.

Fashion Week gets down to business with show, expert

Democrat & Chronicle | September 29, 2015

Los Angeles partner and leader of the firm’s Fashion team Staci Riordan is featured in this column on the legal side of the fashion industry.

Planet Fitness asks Beale to dismiss Cormier's suit

Midland Daily News | September 26, 2015

Boston Franchise partner Art Pressman is noted as counsel for Planet Fitness parent company, Pla-Fit Franchise LLC, in its efforts to dismiss a lawsuit involving the gym’s transgender-friendly locker room policy.

Fed. Circ.'s Apple Ruling Makes Patent Injunctions Easier

Law360 | September 17, 2015

Silicon Valley IP Litigation partner Shawn Hansen discusses a federal patent-infringement decision and how it could now be easier for patent owners to secure injunctions in disputes over complicated technology and boost their bargaining power in settlement negotiations.

Think Before You Hit ‘Send'

New Hampshire Business Review | September 04, 2015

Manchester Commercial Litigation associate Dan Deane and Boston IP Litigation associate Troy Lieberman co-authored this column discussing what businesses need to know about the Telephone Consumer Protection Act.

Collecting Fees Still Tough After Octane, Highmark Cases

Law360 | August 28, 2015

Silicon Valley IP Litigation partner Shawn Hansen provides commentary in this article discussing how two Supreme Court rulings have helped accused patent infringers gain leverage to resolve weak cases earlier and get attorneys' fees awarded.

Contacts

Jason C. Kravitz

Partner
Practice Group Leader, IP Litigation

jkravitz@nixonpeabody.com

Phone: 617-345-1318

  • Legal 500 United States—Ranked for Trade Secrets (2013–2017)
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent litigation, including seven patent lawyers individually listed (2012–2018)
  • World Trademark Review 1000—Recommended for trademark litigation and enforcement (2012–2018)
  • U.S. News/Best Lawyers—Recognized for Patent Law (2015–2017)
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