Who We Are and What We Do
Our firm is committed to the same principle as our IP clients: innovation. Our work focuses on patent litigation, post-grant review processes before the PTO, trade secrets, trademarks, trade dress and copyrights.
Our engagements often involve managing IP portfolios, beginning with obtaining protection, through building the portfolio and determining freedom to operate, and finally protecting IP assets. Our lawyers have successfully litigated and tried cases involving technical fields such as medical devices, pharmaceuticals and Hatch-Waxman, biotech, consumer products, software, hardware, semiconductors, ecommerce, and mechanical devices. We have developed defense strategies against patent trolls (non-practicing entities) and expedited the process for patent reviews for specious patents.
Outside the patent area, our lawyers have assisted clients in developing registration, policing and enforcement strategies to protect their trademarks, and represented them in litigation involving claims of trademark and trade dress infringement. Our lawyers have also successfully litigated copyright infringement claims on behalf of clients, including a major movie studio.
We regularly represent clients ranging from small start-ups to Fortune 100 companies that manufacture medical devices, chemical compounds, biologics, e-commerce solutions, computer systems and components, and consumer goods. We represent large and small companies, from market leaders to startups, from multi-defendant representations to single-party, arch-competitor, “bet-the-company” matters.
Our intellectual property lawyers are, to a person, intellectually curious, vigorous advocates, and creative problem-solvers. We help our clients address the legal and regulatory challenges they face when trying to protect the products of human creation and intelligence. Through decades of experience, dozens of trials, and scores of representations, our lawyers have met those challenges and exceeded our clients’ expectations.
Our Approach and Results
Delivering value requires us to define the “win” with our clients up front. We start by listening closely and mastering the facts immediately. We then chart the steps to victory, aligning business with legal needs as well as matching personal styles and budgets. We recognize that litigation, though sometimes necessary, is distracting and time consuming. These alignments help to ensure that our work consistently keeps our clients’ needs at the fore. We plan for trial. We are equally conversant on the technical and business issues and we can translate the complex into a linear narrative. This ability has served our clients well in courts around the country as well as before the Patent & Trademark Office (“PTO”). We have broad federal and state court experience, at trial, appellate, and agency levels. We know how to talk to juries. We know how to argue an appeal.
We combine holistic thinking with targeted strategies. We win wars, not just battles.
We deliver value to our clients and align our pricing mechanism with our clients’ business needs and expectations. Our lawyers become fully invested in each matter because effective advocacy is a hands-on venture, and we believe that lean teams can deliver great results in a much more cost-effective way.
Our lawyers have participated in the following matters:
- Successfully represented the plaintiff/patentee in a multiple-patent, rocket-docket case involving healthcare/hand-hygiene technology. The result: an expedited preliminary injunction and Markman proceedings which catalyzed a fast-track license to our client’s patents.
- Secured multiple injunctions, lost-profits reimbursement, and dismissals with orders that a competitor go off-market for client in the medical device market.
- Stepped in as replacement counsel to the plaintiff/patentee in an action asserting e-commerce (online guaranty) patent. Our lawyer argued before Federal Circuit and Virginia courts the cutting-edge issue of whether an invention is too abstract to earn a patent, and in the process, preserved our client’s ability to exploit its core intellectual property for years to come.
- Represented a consumer products company as plaintiff in a series of lawsuits initiated over a three-year period to protect the client’s design patent and trade-dress rights in an industry-leading design that brought a rash of imitators into the market.
- Developed and implemented a trademark policing and enforcement strategy aimed at protecting a consumer product company’s flagship mark, including proceedings in U.S. District Courts, the Trademark Trial and Appeal Board, and foreign courts and trademark offices throughout the world.
- Successfully represented an insurance company against a claim of intellectual property misappropriation.
- Successfully defended claims of trade-secret misappropriation and patent infringement brought against our university client by a joint developer of optical encoders used in bioassays.
- Successfully defended an employer and engineers accused of trade secret misappropriation of high-speed router technology.
- Successfully defended a foreign government from claims of copyright infringement of software used for filtering and monitoring internet activity.
- Successfully defeated an attempt to enjoin the release of a major movie studio’s “tentpole” movie based on a claim that the studio had infringed the plaintiff’s copyright, ultimately leading to a favorable settlement of the claim.
- Obtained summary judgment, a seven-figure damages award and a permanent injunction in favor of a major movie studio on both trademark and copyright infringement claims against a defendant who was purporting to license images of characters from two of the studio’s most iconic films as well as a classic cartoon series.
State of the Arts
We recognize that innovation also occurs in the prosecution and litigation of IP. We summarize key decisions and trends here.
Congress’s Proposed Revisions to Patent Eligibility Leave Critical Questions Unanswered
Senators Chris Coons (D-Del.) and Thom Tillis (R-N.C.), the ranking member and chairman, respectively, of the Senate Judiciary Subcommittee on Intellectual Property, have released a proposed framework for an overhaul of the statutory definition of patent-eligible subject matter. A parallel version has also been released in the House of Representatives by Reps. Doug Collins (R-Ga.), Hank Johnson (D-Ga.), and Steve Strivers (R-Ohio).
Supreme Court Limits Post-Sale Patent Rights
On May 30, 2017, the Supreme Court struck another in a series of blows to patent owners this term and significantly broadened the doctrine of patent “exhaustion,” which bars a patentee from asserting patent rights over an article after an authorized sale of the article. The decision reversed longstanding Federal Circuit precedent permitting patent infringement actions if (1) a sale was subject to clearly communicated, lawful restrictions on post-sale use or resale; or (2) a sale was made overseas. The Supreme Court voided these safe harbors, finding them to be sales that exhausted patent rights, reasoning “patent exhaustion is uniform and automatic.” Slip Op. at 13. The Supreme Court’s decision not only has immediate ramifications for patent licensing and enforcement actions, but also is likely to have a cascading effect on worldwide supply chains, pricing and product availability in some countries.
Are the Days of E.D. Texas Waning?
On March 27, 2017, the Supreme Court heard arguments regarding an issue that has long plagued defendants in patent cases: are the venue rules applied by the Federal Circuit at odds with the patent statute and Supreme Court precedent? TC Heartland LLC v. Kraft Foods Group Brands, LLC, No.16-341.
Federal Circuit Clarifies the Boundaries of the Elusive “Abstract Idea” in Section 101 Challenges
Affinity Labs of Texas, LLC v. DirecTV, LLC et al. (Fed. Cir. 2016)
Supreme Court Abolishes Laches Defense in Patent Cases
SCA Hygiene Products v. First Quality Baby Products, Case No. 15-927 (March 21, 2017)
Federal Circuit Offers Further Ammunition to Section 101