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.)

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.

Attorneys react to Supreme Court patent venue ruling

Law360 | May 21, 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 21, 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 18, 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 | April 30, 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 20, 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 27, 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 27, 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 21, 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 05, 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 04, 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 30, 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 27, 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.

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

  • Legal 500 United States—Ranked for Trade Secrets (2013–2019)
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent litigation, including seven patent lawyers individually listed (2012–2019)
  • World Trademark Review 1000—Recommended for trademark litigation and enforcement (2012–2019)
  • U.S. News/Best Lawyers—Recognized for Patent Law (2015–2017)
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