Intellectual Property
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Client engagement and responsiveness has always been this team's strong point. Their service is incredible.
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Intellectual Property client, Chambers USA
Benesch’s Intellectual Property Practice Group represents clients in protecting their most valuable asset class: their intellectual capital. Whether obtaining intellectual property rights, prosecuting infringement actions, or helping clients exploit their intellectual property rights, Benesch has the legal training and experience to help clients get the most out of their intellectual capital. In addition, Benesch’s Intellectual Property Practice Group is skilled in counseling clients with respect to IP rights of others and in defending clients in IP actions brought against them in courts and administrative agencies throughout the United States and internationally.
Our intellectual property client base is as broad and diverse as the services we provide. Those clients that rely on our services for IP protection and advice include individual entrepreneurs, universities and other research institutions, early stage companies, high technology businesses, middle market companies and large multinational corporations. We have served a vast array of industries and businesses, including: tire and rubber; fluid handling components and systems; paints and coatings; medical devices; plastics and polymers; liquid crystal displays; advanced lighting; adhesives; vehicle suspension systems; combustion systems; refrigeration systems; communications equipment; dispensing systems; material handling equipment; vehicle braking systems; food processing equipment; power tools; fitness equipment and other consumer goods; financial services; insurance services; music and entertainment; and computer software.
The Benesch Intellectual Property team has experience in all facets of intellectual property law and practice, with each member possessing a unique set of qualifications to help advance our clients’ interests. Many of our attorneys have worked as scientists or engineers in industry, and others have taught law or authored publications that serve as important reference materials to the profession.
We have experience with all forms of intellectual property, including patents, copyrights, trademarks, and trade secrets. Services we provide include patent and trademark drafting and prosecution, advising clients on patent and trademark infringement and validity matters, and drafting intellectual property-related agreements. In addition, Benesch’s Intellectual Property Practice Group has experience in complex patent, trade secret, trademark and copyright litigation.
Benesch’s Intellectual Property team has also counseled clients regarding information technology and e-commerce matters. These engagements have included negotiation of myriad software, hardware and services agreements as well as preparing terms and conditions of use for web sites, drafting privacy policies for web sites and evaluating web site content for compliance issues. Additionally, our team has advised clients regarding data security breaches and application of the PCI-DSS/CISP security standards in connection with both on-line and off-line sales. Four of Benesch’s attorneys are CIPP certified.
With the support of Benesch’s Intellectual Property team, our clients are better positioned to preserve and protect new technologies with IP, use and manage their intellectual property thoughtfully, and avoid the IP rights of others to avoid unnecessary risk. For additional information about Benesch’s Intellectual Property practice, please contact a member of our team.
Benesch's Intellectual Property practice is recognized by Chambers® and the firm is ranked nationally in Litigation-Intellectual Property by Best Lawyers® “Best Law Firms.” Additionally, 12 of our attorneys were named to 2024 Best Lawyers® and/or Best Lawyers® Ones to Watch in the areas of Intellectual Property Law, IP, Trademark, Patent Law and Litigation, Information Technology Law, IT Outsourcing Law, Data Security and Privacy Law, and Technology Law.
Experience
- Key member of trial team for a pharmaceutical company in ANDA litigation and on appeal with respect to numerous patents concerning an HIV antiviral.*
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Key member of trial team that secured an invalidity ruling after appeal with respect to a patent in ANDA litigation concerning an ACE inhibitor.*
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Key member of trial team that secured an invalidity ruling with respect to a patent in ANDA litigation concerning a steroid used to treat asthma.*
- Key member of team that secured victory on behalf of pharmaceutical company at the District Court and Federal Circuit levels, not only defeating a preliminary injunction motion but invalidating two patents upon summary judgment relating to a drug used to treat or prevent osteoporosis.*
- Member of team that secured a non-infringement ruling on summary judgment and on appeal with respect to a patent in ANDA litigation concerning a cephalasporin antibiotic.*
- Represented a pharmaceutical company in ANDA litigation involving numerous patents directed to a drug used to treat iron deficiency anemia in patients with chronic kidney disease (CKD).*
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Represented pharmaceutical companies in ANDA litigation involving three polymorph patents relating to a coronary vasodilator used in pharmacologic stress testing.*
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Represented pharmaceutical company in ANDA litigation involving formulation and device patents relating to a bronchodilator.*
- Class Technologies Inc. v. AK Meeting IP LLC (S.D. Fla. 2024); defended a provider of online collaboration services against patent infringement charges filed by a non-practicing entity, resulting in favorable resolution.*
- Jawbone Innovations, LLC v. ZTE Corporation (E.D. Tex. 2024); defended a manufacturer of wireless communication devices in this patent infringement action, which resulted in a favorable resolution.*
- Technology Properties Limited v. ZTE Corporation (Fed. Cir. 2019); represented supplier of communications devices in defending favorable PTAB ruling, resulting in affirmance of summary judgment of non-infringement.*
- ZF Friedrichshafen A.G. and ArvinMeritor, Inc., in this patent infringement action involving automated heavy-duty truck transmission technology; after a two-week trial, the jury returned a unanimous defense verdict on all issues.*
- Certain LTE- and 3G-Compliant Cellular Communications Devices (ITC Inv. No. 337-TA-1138, 2020); defended a supplier of cellular communications devices in this investigation, resulting in a finding of no infringement.*
- ZTE (USA) Inc. v. Evolved Wireless (Fed. Cir. 2019); represented supplier of communications devices in defending favorable PTAB ruling, resulting in affirmance of the cancelation of all challenged claims.*
- ZTE (USA) Inc. v. Evolved Wireless, LLC (PTAB IPR2016-757, -758, -1277, -1280, -1349; 2018); represented supplier of cellular communications devices in this campaign of IPR proceedings, resulting in cancelation of all asserted claims for four of the five asserted patents.*
- Technology Properties Limited v. ZTE (N.D. Cal. 2017); defended a manufacturer of wireless communication devices on remand from the Federal Circuit in this patent infringement action, resulting in summary judgment of non-infringement.*
- InterDigital v. ZTE (D. Del. 2015); led a trial team to a favorable defense jury verdict in this case involving wireless communication technology.*
- ZTE v. InterDigital (PTAB 2015); served as lead counsel in a successful inter partes review proceeding, in which the Patent Trial and Appeal Board cancelled claims that had previously survived a jury validity verdict.*
- Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-868, 2014); represented a manufacturer of wireless devices named as a respondent in this investigation, resulting in a finding of non-infringement.*
- McDavid v. NIKE (N.D. Ill. 2014); represented NIKE and an individual challenging inventorship in this patent infringement litigation involving athletic wear; the case was resolved on the eve of a trial on the inventorship claim.*
- Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-800, 2013); represented a manufacturer of wireless devices named as a respondent in this investigation, resulting in a finding of non-infringement.*
- AOL, Inc. v. Yahoo! Inc. (S.D.N.Y. 2009); represented Yahoo! as a declaratory judgment defendant and asserted patent infringement claims on behalf of Yahoo! against AOL; the dispute was resolved on favorable terms.*
- Lithium Battery Patent Enforcement (W.D. Wis. 2008); represented Energizer Holdings, Inc., and Eveready Battery Co. in this case involving two patents for advanced primary battery technology; the court granted a preliminary injunction to halt sales of the infringing batteries.*
- Eaton Corporation v. ZF Friedrichshafen A.G. and ArvinMeritor, Inc. (E.D. Mich. 2008); represented defendants.*
- INVT SPT LLC v. ITC (Fed. Circ. 2022); represented manufacturer of cellular communications devices in this appeal filed by a non-practicing entity, resulting in affirmance of the ITC’s favorable ruling of non-infringement.*
- TrickleStar Inc. v. AM Conservation Group, Inc. (N.D. Ill. 2021); defendant manufacturer of advanced powerstrips against claims of patent and trademark infringement, resulting in favorable resolution.*
- Evolved Wireless, LLC v. ZTE Corporation (D. Del. 2021); defended supplier of cellular communications devices in this patent infringement case, resulting in favorable resolution after the PTAB canceled all asserted claims from four of the five asserted patents.*
- Certain Semiconductor Devices Having Layered Dummy Fill (ITC Inv. No. 337-TA-1342, 2023); represented a leading manufacturer of imaging sensors as a respondent in this investigation, resulting in favorable resolution and the client paying zero in settlement fees.*
- Werner Co. v. Louisville Ladder, Inc. (W.D. Ky 2023); represented a leading ladder manufacturer accused of infringing a competitor’s patent, resulting in dismissal of the competitor’s patent infringement claim after successfully challenging the asserted patent claims.*
- Louisville Ladder, Inc. v. Werner Co. (Fed. Cir. 2021); represented a leading ladder manufacturer on competitor’s appeal from a PTAB decision canceling all challenged claims, resulting in affirmance of the PTAB’s favorable decision.*
- Werner Co. v. Louisville Ladder, Inc. (PTAB IPR2019-336, 2020); represented a leading ladder manufacturer as petitioner in this IPR proceeding challenging a competitor’s patent, resulting in cancelation of all challenged claims.*
- InterDigital v. US International Trade Commission (Fed. Cir. 2015); represented a named respondent from the underlying ITC investigation, resulting in a decision affirming the ITC’s finding that no valid patent claim was infringed.*
- Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof (ITC Inv. No. 503, 2005); represented respondents ZF Friedrichshafen A.G. and ArvinMeritor, Inc., in this Section 337 patent infringement investigation at the International Trade Commission; in the violation phase of the investigation, the ITC granted respondents’ motion for summary determination with respect to one of the six asserted patents; the ITC also terminated the investigation, at the patent owner’s request, with respect to two other patents and several claims of the remaining three patents; after a ten-day hearing on the merits, the administrative law judge ruled in favor of the respondents on all but one claim of one patent; the respondents designed around the one remaining claim, and Charles helped them work with Customs and Border Protection to ensure continuous importation of the redesigned product; when the patent owner brought an enforcement action, Charles helped ZF and ArvinMeritor become the first respondents ever to defend successfully against such a proceeding at the ITC; as a result of this victory, ZF and ArvinMeritor were able to continue the importation and sale of the redesigned product without interruption.*
- Technology Properties Limited v. ZTE (N.D. Cal. 2015); defended a manufacturer of wireless communication devices in this patent infringement action, which resulted in a favorable claim construction ruling and a stipulation of non-infringement.*
- Certain Cloud-Connected Wood Pellet Grills (ITC Inv. No. 337-TA-1237, 2022); represented a leading manufacturer of wood pellet grills as the complainant in this investigation, resulting in a finding of infringement and issuance of a limited exclusion order.*
- Wakefield v. Blackboard, Inc. (Fed. Cir. 2022); represented a provider of online collaboration services in defending this appeal filed by a non-practicing entity, favorably resulting in affirmance of the district court’s claim constructions and summary finding.*
- CoolTVNetwork.com v. Blackboard Inc. (D. Del. 2021); defended a provider of online collaboration services against in this patent infringement case filed by a non-practicing entity, resulting in favorable claim construction and a summary finding of invalidity as to all asserted claims.*
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Routinely counsels clients (including big apparel and consumer product brands, housing complexes, and large business complexes) on complying with PROs.
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Routinely reviews and counsels clients on music licensing in marketing materials (print, Internet, TV), including offering workarounds based on variable licensing structures.
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Successfully defended several copyright infringement actions brought against technology/social media clients by photographers.
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Successfully negotiates against PROs to resolve alleged infringements and enter client-favorable licensing deals.
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Organize, structure, and create DMCA policies to ensure safe-harbor protection under the U.S. Copyright Act.
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Organize, structure, and create social media creative content policies for big apparel brands.
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Routinely reviews and counsels clients on music licensing on popular social media platforms.
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Prosecute copyrights before the United States Copyright Office.
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Worked at NBC Universal in TV Legal clearing all content (including popular sound recordings and music compositions) in live, reality, and scripted television.
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Enforce copyrights across all industries, on the internet and social media, including DMCA takedown processes.
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Repeated presenter on music-legal industry, music copyright infringement, IP in social media, and AI and IP.
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Created licensing deals for start-up, educational platform utilizing significant creative content.
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Representing well-known brands in several copyright litigation defense actions.
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Led technical team in ITC and district court litigation involving digital image and mobile device technology resulting in asset sale. Kodak v. Apple, HTC, Samsung (W.D.N.Y, ITC).*
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Cross-examined expert witness on short notice in Section 337 patent infringement investigation relating to cellular transmission protocols. In re Certain Wireless Devices with 3G Capabilities (ITC).*
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Won summary judgment of infringement for patents protecting the iconic Aeron chair. Case settled favorably. Herman Miller v. Teknion (N.D. Ill.).*
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Successfully argued claim construction resulting in settlement as trial team head for market-leading hearing instrument manufacturer. Energy Transport Group v. Phonak (D. Del.)).*
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Successfully won specification disclaimer argument in defense of plastics company. Pliant v. Atlantis (N.D. Ill., Fed. Cir.).*
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Achieved complete defensive win resulting in final judgment of noninfringement, invalidity, and unenforceability in patent infringement case asserting rights to cellular telephone technology. Motorola v. Vosi (N.D. Ill.).*
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Complete win as team lead for defendant in a patent infringement action relating to hearing aid technology. University of Iowa Research Foundation v. Phonak (S.D. Iowa).*
- Successful defense of OmniVision patent in inter partes review challenge. Jiangu SmartSens Technology Co., Ltd et al v. OmniVision Technologies, Inc. (PTAB).*
- Lead counsel in complete win against patent assertion entity including final judgment of non-infringement with no payments made to the plaintiff in the United States District Court for the District of Delaware. . ID Image Sensing LLC v. OmniVision Technologies, Inc. (D. Del.).*
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Achieved favorable settlement as lead counsel for defendant in a patent infringement action relating to simulated logs and electronic fireplace assemblies. Dimplex v. Twin-Star (E.D. Mich.).*
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Lead counsel for plaintiffs in a patent infringement action relating to flatwork finishing equipment for commercial laundry applications. Case resolved in a favorable settlement for client. Chicago Dryer Company v. Jensen (N.D. Ill.).*
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Successfully transferred case from the District of Delaware to the Southern District of California and obtained stay pending inter partes review proceedings for cellular phone manufacturer. Content Guard Holdings, Inc. v. ZTE Corp. (S.D. Cal., P.T.A.B.).*
- Lead patent counsel for leading x-ray tube manufacturer asserting infringement of two patents related technology used in CT scanners and trade secret misappropriation. Case resolved favorably for client. Varex Imaging Corporation v. Richardson Electronics, Ltd. (N.D. Ill.).*
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Complete win in trademark infringement, unfair competition, breach of contract, and tortious interference matter brought by hearing instrument manufacturer. Sonova AG v. Hearsite, Inc. (N.D. Ill.).*
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Won patent infringement trial, including willful infringement and double damages, and successful appeal for valve technology. Aero Products v. Intex (N.D. Ill., Fed. Cir.).*
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Complete win in non-practicing entity matter. SportBrain Holdings LLC v. Louis Vuitton North America, Inc. (N.D. Ill.).*
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Prepared successful petition for inter partes review in group defense against Intellectual Ventures relating to hearing aid technology. HIMPP v. Intellectual Ventures (P.T.A.B.).*
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Lead patent counsel in patent litigation asserted against Louis Vuitton Tambour Horizon smartwatch. Semcon IP Inc. v. Louis Vuitton North America, Inc. (E.D. Tex.).*;
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Led trial team on all non-infringement, invalidity, and unenforceability issues for defendant in a patent infringement action relating to Power over Ethernet functionality. Developed and presented key defense strategies in court, including successful summary judgment arguments. Obtained key witness deposition testimony. Drafted petitions for inter partes review and coordinated expert witness strategy. Case settled very favorably close to trial. Chrimar v. AMX (E.D. Tex., P.T.A.B.).*
- Lead counsel in complete win against patent assertion entity in the United States District Court for the Central District of Californa and United States International Trade Commission. Bell Semiconductor, LLC v. OmniVision Technologies, Inc.*
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Completed a $67 million SAP implementation transaction for the entire Canadian business enterprise of an American global manufacturer and marketer of consumer and professional products.
- Handled transactions on behalf of clients with national and international hardware, software, systems and medical device/life sciences companies.
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Represented one of the largest manufacturers in the United States in connection with a $65 million global business process outsourcing transaction involving operations in the United States, Europe, South America, and Asia.
- Ongoing representation of big-tech companies in connection with drafting and negotiating prototype development and professional service agreements that involve complex IP licenses for research and development and commercialization purposes.
- Drafted information technology services agreement templates for a global materials science company, including templates for the procurement of SaaS products, managed services, professional services (including development of hosted solutions), and colocation services, and a data protection addendum.
- Negotiated a significant BPaaS implementation transaction with a major, international healthcare software systems vendor involving the license of significant intellectual property assets and rights (specifically, software) and a substantial systems integration component with major national and international vendors.
- Represented a digital health startup in drafting and negotiating a technology services agreement and related schedules with one of the world’s largest global pharmaceutical companies.
- Provided counseling to an India-based agricultural seeds provider regarding the establishment of an eCommerce platform in the United States, and drafted terms of use, terms and conditions of sale, and a privacy policy.
- Represented a worldwide leader in adhesive technologies, display graphics and packaging materials on a SaaS-based systems implementation and provided counseling with respect to disputes that arose during implementation and testing phases of the project.
- Legal/intellectual property assistance with music festivals.
- Licensing matters, various matters concerning exhibits.
- Stopping trademark infringements, policing domain names, assisting with general intellectual property matters concerning gutter guards.
- We serve as lead outside intellectual property and technology transactions counsel including the management and prosecution of the company’s extensive patent portfolio, and the negotiation and documentation of significant IP development, licensing and commercialization agreements. In connection with this, we recently completed a significant transaction with Flow Pharma, a major US pharmaceutical company located in San Francisco, California.
- Legal assistance with licensing arrangements, data security and privacy issues, employment matters, and software development.
- We serve as lead outside intellectual property and technology transactions counsel. Lead counsel in connection with a multimillion dollar software systems implementation transaction involving one of the largest software vendors and software integration firms in the world. The matter represents one of the largest copyright related licensing and services transactions in the region and displays our expertise in handling extraordinarily sophisticated, complex, high value IP transactions for the largest companies in the United States. We negotiated and documented the transaction, and provided counsel to our client in all facets of the transaction.
- We serve as a lead outside transactional counsel to Infosys in connection with the negotiation and documentation of a variety of IP oriented technology transactions.
- Copyright infringement litigation concerning technology for the e-book industry, representing OverDrive, Inc. as plaintiff
- Negotiation, documentation and completion of a significant ERP software implementation transaction with a major, international healthcare software systems vendor involving the license of significant intellectual property assets and rights (software) and a substantial systems integration component with two of the largest systems integration firms in the world (HealthX and Wipro).
- Representing a major healthcare technology company in several information technology implementation transactions involving transformative systems with major national and international vendors.
- Represented the home health division of this major national health products distributor in several complex, high value information technology implementation transactions involving transformative systems with major national and international vendors.
- Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00095). Subject: U.S. Patent No. 6,483,080. Counsel for Petitioner Atom Medical International, Inc.
- Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00194). Subject: U.S. Patent No. 7,335,157. Counsel for Petitioner Atom Medical International, Inc.
- Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00232). Subject: U.S. Patent No. 6,345,402. Counsel for Petitioner Atom Medical International, Inc.
- Dyson, Inc. v. LG Electronics USA, Inc. (Inter Partes Reexamination No. 95/002,102). Subject: U.S. Patent No. 7,600,292. Counsel for Requester LG Electronics USA, Inc.
- Gramm et al. v. Deere & Company (IPR2015-00898). Subject U.S. Patent No. 6,202,395. Counsel for Petitioner Deere & Company.
- Gramm et al. v. Deere & Company (IPR2015-00899). Subject U.S. Patent No. 6,202,395. Counsel for Petitioner Deere & Company.
- Abbott Laboratories et al. v. Watson Laboratories, Inc.-Florida et al. (D.N.J. 2010). Represented Watson in a Hatch Waxman litigation related to choline fenofibrate sold by Abbott as Trilipix®.
- Alliance v. Altivity (W.D. Wash. 2007). Patent and trade secret case relating to containers for packaging cat litter.
- Alticor Inc., Amway Corp. and Quixtar Inc. v. NCR Corp. (W.D. Mich. 2007). Represented plaintiffs in an action seeking a declaratory judgment of non-infringement and invalidity of seven NCR patents relating to e-commerce.
- AOL, Inc. v. Yahoo! Inc. (S.D.N.Y. 2009). Multi-patent infringement litigation relating to internet advertising technology.
- AstraZeneca LP v. Sandoz Inc. (D.N.J. 2010). Represented Sandoz in a Hatch Waxman litigation related to budesonide sold by AstraZeneca as Pulmicort®.
- Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing the Same, ITC Inv. No. 337-TA-855. Counsel for respondent Skullcandy defending against claims of patent infringement relating to manufacturing processes for magnets.
- Draeger Med. Sys., Inc. v. Atom Med. Int’l, Inc. and Philips Elecs. N. Am. Corp., d/b/a Philips Healthcare, Case No. 2:12-cv-00512-UA-DNF (M.D. Fla. 2012). Represented Atom Medical in patent infringement action relating to infant warmers and incubators.
- Dyson, Inc. v. LG Electronics USA, Inc. (N.D. Ill., 2012). Counsel in patent infringement action pertaining to vacuum cleaners, responsible for formulating noninfringement and invalidity defenses. Case currently stayed pending inter partes reexamination.
- GHJ Holdings LLC v Plasticade Products Corporation (E.D. Tex. 2010). Defended Plasticade against false marketing allegations.
- Gramm v. John Deere and Company, (N.D. Ind. 2014). Represented Deere in patent infringement lawsuit relating to corn crop headers. Responsible for formulating and proving up non-infringement and invalidity defenses.
- Grupo Bimbo, S.A. B. de C.V., et al. v. Snak-King Corp., et al., (C.D. Cal. 2013). Represented Grupo Bimbo in dispute over trademarks, trade dress, patent and unfair business practices.
- ICOR International, Inc. v. DuPont (S.D. Ind. 2010). Brought declaratory judgment action relating to refrigerant compositions.
- In the Matter of Certain Thermal Support Devices, Infant Incubators, Infant Warmers, and Components Thereof, ITC Inv. No. No. 337-TA-896. Counsel for Atom Medical in ITC action relating to infant incubators and warmers.
- Jackson v. Contour, et al. (N.D. Ill. 2007). Co-lead counsel in a pro bono matter relating to an inmate's contraction of tuberculosis.
- King v. Chapman, et al. (N.D. Ill. 2009). Co-lead counsel in a pro bono matter relating to the violation of an inmate's 8th Amendment rights.
- Lennon Image Technologies, LLC v. Skullcandy, Inc. (D. Del. 2012). Represented Skullcandy in patent infringement action pertaining to virtual image interface technology.
- Noven Pharms., Inc. v. Watson Labs., Inc. et al. (D.N.J. 2011). Represented generic client in Hatch-Waxman patent litigation in a first to file (FTF) opportunity related to a methylphenidate transdermal patch sold by Noven as Daytrana®.
- PRE Holding, Inc. v. Monaghan Medical Corp., et al. (E.D. Va. 2009). Represented client in a patent infringement case relating to medical devices.
- S-Line LLC v. Squyres et al., (N.D. Tex. 2014). Represented patentee S-Line in patent infringement action involving bulkheads used for cargo containers. Managing day-to-day activities including discovery and responsible for infringement case.
- Teijin, Inc. et al. v. Alembic Pharms. Ltd. (D. Del. 2013). Representing Alembic as a first to file applicant in Hatch-Waxman litigation involving Uloric® (febuxostat). Responsible for managing day to day activities and primary client contact.
- Yakima Products, Inc. v. Saris Cycling Group, Inc. (D. Or. 2009). Represented Saris Cycling Group, Inc. in a patent litigation relating to bicycle racks.
- Successfully defended clients against claims of trademark infringement and trade secret misappropriation, including related injunction practice.
- Represents a growing computer network monitoring business in connection with its managed services agreements and corporate strategy.
- Represented Bleacher Creatures, LLC in Pope Francis plush doll matter.
- Routinely counsel companies on nominative trademark use.
- Routinely counsel museums and major, top-tier creative content companies on fair use/First Amendment defenses (specific examples intentionally omitted).
- Represented Bleacher Creatures, LLC in a number of content licensing deals with major professional and collegiate leagues.
- Represented Root Candles in endorsement agreement with famous celebrity.
- Issued numerous opinion letters to companies and organization concerning parody and other forms of fair use.
- Represented agency of LeBron James in negotiating Sprite deal with Coca-Cola.
- Represented Vita-Mix Corporation in negotiating deals with Alex Guarnaschelli and other celebrity chefs.
- Represented Signet/Sterling Jewelers in negotiating licensing deal with Sofia Vergara.
- Quarterbacked launch of new King Cool “beer” associated with recording artist Donnie Iris.
- Represented Signet/Sterling Jewelers in negotiating licensing deal with Angel Sanchez.
- Represented Cleveland-San Jose Ballet regarding private equity investment and resolving various copyright issues, public television issues, and Musicians’ Union issues concerning staging of “Blue Suede Shoes”.
- Routinely negotiate publisher agreements, management agreements, record company agreements, producer agreements of all shapes and sizes.
- Represented The Rock and Roll Hall of Fame and Museum in a number of content-related agreements and strategies.
- Represented Sunless, Inc. in worldwide trademark prosecution strategy.
- Assisted licensing Ray Charles Marketing Group in implementing licensing strategies.
- Assisted OverDrive, Inc. in rolling out music offering to all public libraries in network.
- Represented companies of all sizes in copyright prosecution and licensing strategies.
- Represented Elevation Group of Companies in producing a PBS documentary film about Irish music (features performances by six Grammy Award winners, Academy Award and Golden Globe winners, three Rock and Roll Hall of Fame music inductees).
- Represented Internet music streaming consummate merger with a potential competitor.
- Represented Global Tel Link* Corporation in a number of music streaming and technology licensing agreements.
- Represented artists in executing terminations of transfer.
- Represented Alternative Press in negotiating sponsorship agreements with major beverage company.
- Represented Belkin Productions consummate deal with Live Nation.
- Represented Internet music streaming company consummate a private offering memorandum raising $8.5 Million.
- Represented holding company of bakery goods and intellectual property in sale of company.
- Represented companies of all sizes in trademark prosecution strategies.
- Represented Elevation Group of Companies in various concert and personal management agreements (including Red Sun Rising and the Trinity Cathedral Concert series).
- Assisted numerous multi-national companies with trademark clearance strategies.
- Represented Vita-Mix Corporation in domain name and trademark infringement matters.
- Represented Sherwin-Williams in “App” development agreements.
- Represented Arizona arts dealer in copyright infringement litigation.
- Represented Cleveland Public Library in connection with the licensing of software among a consortium of Ohio libraries.
- Represented Vita-Mix Corporation in keyword strategy and various litigations and trademark policing.
- Represented a major production company in licensing music to Electronic Arts for use in Madden VII video game.
- Represented Ideastream (public television and public radio) in American Archives Pilot Project.
- Represented Homax Group in trade dress litigation concerning various consumer products.
- Represented Turning Technologies in a number of licensing matters.
- Negotiated record deals and music publishing deals for several artists, with significant advances.
- Represented major hair clinic in intellectual property litigation.
- Represented investment company in consummating deal with film company.
- Successfully prosecuted several domain name disputes.
- Designed technology evaluation agreements for LCD technologies.
- Represented Cleveland Research Company in a number of copyright and content-related matters.
- Represented Fitness Question in book deal.
- Represented ringtone provider in clearing music rights for catalogue.
- Represented major consumer products companies in trademark licensing agreements.
- Represented logistics software company in a number of licensing deals.
- Represented Abercrombie & Fitch in trademark prosecution strategy.
- Represented Homax Group in false advertising litigation in Northern District of Ohio.
- Represented leading University art historian in dispute over authenticity of Jackson Pollock works.
- Represented estate of major songwriter in assigning copyrights to heirs/successors-in-interest.
- Designed and implemented document retention programs for companies.
- Represented Elevation Group of Companies in consummating exclusive sponsorship agreements for its ORCHESTRA series (Jewel, Counting Crows, etc.).
- Represented Estate of photographer Art Kane (copyright audit, including “A Great Day In Harlem”).
- Successfully represented Entity Production, Inc. in several copyright litigations concerning musical compositions and sound recordings.
- Successfully represented BEMA Music, music publisher of “Play That Funky Music,” in copyright infringement litigation versus major consumer products company.
- Successfully represented Dealer Tire in trademark litigation.
- Glanton v. Sony Records, successfully represented Sony in copyright infringement action related to plaintiff’s copyright infringement allegation (dismissed after case was fully briefed).
- Fitness Quest, Inc. et al. v. Universal Music Publishing Group, successfully represented Fitness Quest in copyright infringement litigation over music-related content.
- Represented major health care provider in authorship dispute over software.
- Prosecuted several copyright infringement actions against several online ringtone companies for infringement of musical compositions.
- Represented Mavea, a division of Brita GmbH, in Northern District of California trademark infringement litigation, and other ancillary matters.
- Represented OverDrive, Inc. in various litigations.
- Represented House of Spices in numerous trademark litigations (obtaining injunctions, consent judgments, and damages).
- Represented Lynyrd Skynyrd in copyright infringement dispute in the Northern District of Ohio.
- Successfully represented Terry’s Tire Town in trademark litigation before the TTAB.
- Represented American Greetings Corporation in AAA dispute over creative content.
- Successfully represented music publisher versus multinational company who used song in a film and DVD without permission.
- Quarterbacked music content licensing program for OverDrive, Inc. and its public library customers.
- Represented an international manufacturer of plastic and rubber products in a patent infringement and contract dispute.
- Represented a therapy system in a patent infringement lawsuit involving medical devices for treating dysphagia.
- Represented a leading metals seals company in a trade secret and antitrust lawsuit involving manufacture of security seals.
- Represented an arc welding company in a patent infringement and antitrust lawsuit involving welding consumables
- Represented an automotive applicant manufacturer in a trade secret lawsuit involving processes for manufacturing fasteners.
- Represented defendants in a patent infringement and contract dispute lawsuit involving bi-fuel engines and generators.
- Represented a high-performance blender manufacturer in a patent infringement lawsuit involving food blenders.
- Represented an electronic company in a patent infringement lawsuit involving circuit board configurations for tablet and smart phone power chargers.
- Served as lead outside counsel to a major international tire and diversified products manufacturer in connection with a multimillion dollar business process outsourcing transaction with Salesforce.com to provide and implement SaaS.
- Served as lead outside counsel to a major international polymer manufacturer in connection with a multimillion dollar business process outsourcing transaction with Sterling Commerce to provide and implement SaaS and IaaS.
- Served as lead outside counsel to a major international steel products company in connection with mobile application licensing on all major platforms (Amazon, Google and Apple).
- Served as lead outside counsel to a major, international, publicly traded manufacturer in connection with a large scale IaaS implementation transaction with Amazon Web Services.
- Served as lead outside counsel to a major, international tire and diversified products company in connection with a $180 million technology services transaction with Verizon for the provision of all network services in the western hemisphere.
- Served as lead outside counsel to a major, international, publicly traded manufacturer in connection with a multimillion dollar business process outsourcing transaction with SuccessFactors to provide IaaS for the storage of worldwide employee data.
- Represented a tier one automobile manufacturer in a declaratory judgment action seeking to invalidate the manufacturer’s patent.
- Represented clients in patent litigation regarding a variety of technologies including medical devices, consumer products, industrial consumables, automotive systems, diesel engines, and power converters.
- Represented a consumer products manufacturer asserting a patent in litigation that resulted in favorable summary judgment on the validity of the patent-in-suit.
- Professional engineering experience includes technical and management positions in the software, biomedical, and polymer science industries, including positions as a program manager with Trilogy Software, Inc.
- Prepared patent applications and obtained patent protection directed to a variety of technologies.
- Provided data breach disclosure compliance for a variety of clients ranging from nationally recognized publically traded companies to local non-profit organizations.
- Represented a media advertising company accused of trademark infringement and unfair competition that resulted in the opposing party voluntarily dismissing all claims.
- Provided advice and counsel regarding global data security and compliance for a publicly traded, international manufacturing company.
- Provided data breach disclosure compliance services to a significant, Ohio based non-profit entity with respect to a data breach event involving customer data on customers residing in the State of Ohio.
- Provided document retention and destruction policy guidance and advice and prepared comprehensive document retention and data security policies for a major, international sports marketing firm.
- Provided document retention and destruction policy guidance and advice and prepared comprehensive document retention and data security policies for a national real estate development company.
- Provided document retention and destruction policy guidance and advice and prepared comprehensive document retention and data security policies for a publicly traded international manufacturing company.
- Served as outside consultant to State Senator Eric Fingerhut with respect to the formulation of the Ohio Digital Signature Act.
- Served as outside counsel to a Cleveland-based VoIP service provider in connection with a major ERP software license transaction.
- Served as outside counsel to a developer of surgical instruments and spinal implants in connection with business issues.
- Served as outside counsel to a national real estate investment trust in connection with a major ERP software license and integration transaction with a major international software vendor.
- Served as outside counsel to national condominium and apartment developers and owners in connection with satellite and cable television, broadband Internet access and VoIP services implementation agreements
- Served as outside counsel to a developer of magnetic resonance imaging equipment.
- Served as outside counsel to a provider of logistics planning services to small and middle market companies in connection with general corporate intellectual property and technology matters.
- Served as outside counsel to an international adhesives manufacturer.
- Served as outside counsel to a major Ohio-based hospital system.
- Served as outside counsel to a provider of onsite and online health care screening programs and related content and services in connection with general corporate intellectual property and technology matters.
- Served as outside counsel to an international polymer and diversified products conglomerate.
- Served as outside counsel to a consortium of major international software developers.
- Served as outside counsel to a national manufacturer of greeting cards and novelty items in connection with intellectual property and technology contracts and issues.
- Served as outside counsel to a Cleveland-based electrical parts distribution company in connection with a major ERP software license transaction with a major international software vendor.
- Successfully represented a multi-media content company in defending copyright infringement action against global transportation company, including obtaining recompense of attorneys’ fees.
- Successfully represented a music publisher in copyright infringement action against multi-national television and film company, obtaining favorable settlement.
- Represented various trademark owners in Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.
- Counseled various clients on legal issues arisng in web site development, safe harbor protections, and domain name protections.
- Counseled clients on licensing and assignment issues.
- Successfully prosecuted and defended many actions involving trademark infringement.
- Represented a concert promotion company in connection with drafting and consummating a multi-million dollar exclusive sponsorship agreement.
- Successfully represented a regional concert promotion company in a sale of substantially all assets to a national concert promotion and radio company.
- Represented a major public library in licensing software system to a consortium of Ohio libraries.
- Represented a client in the sale of its trade show division.
- Represented major energy drink product companies in the negotiated of various sponsorship agreements.
- Provided general business counseling to a variety of streaming media companies and other Internet technology companies.
- Representation of several independent record companies in drafting form recording agreements and in negotiating and consummating recording agreements with both emerging and establishing musical artists.
- Representation of various music production companies in drafting, negotiating, and consummating agreements with musical artists.
- Representation of major consumer products company in negotiating various infomercial music composer agreements.
- Representation of members of major musical artist in internal trademark dispute with other members over use of artist's federally-registered name.
- Represented client as defendant in trademark infringement litigation before the court and as opposer in Opposition proceeding before the Trademark Trial and Appeal Board.
- Successfully prosecuted a copyright infringement action against a major cellular telephone manufacturer for infringement of a musical composition in cellular telephone ring tones.
- Successfully prosecuted a copyright infringement action against a major recording artist and his record label for infringement of a musical composition and sound recording in new sound recordings.
- Successfully registered product design trademarks for multinational consumer products company.
- Representation of music publishing and record company in drafting, negotiating, and consummating Internet download and streaming licenses with major cable company for selling and streaming musical compositions and sound recordings.
- Representation of music publisher in completing intellectual property audit and attending to remedial issues uncovered by same.
- Representation of various Internet music, media, and entertainment companies in drafting streaming and distribution agreements, and in providing general copyright and trademark counseling.
- Representation of investment company in drafting, negotiating, and consummating stock purchase agreement for investment in film production company.
- Represented a production company in consummating deal with a major beverage company concerning use of musical composition and other content in conjunction with theme song for major NBA sports figure.
- Represented a production company in licensing music to Electronic Arts for use in Madden VII video game.
- Representation of major record labels in obtaining judicial approval of minority recording agreements for international recording artists.
- Counseled clients on the selection and adoption of trademarks, service marks and trade names.
- Serving as lead counsel to the Rock & Roll Hall of Fame and Museum.
- Represented architectural firm in copyright infringement dispute concerning building design.
- Representation of orchestras in drafting, negotiating, and consummating orchestral concert performance agreements with contemporary musical artists.
- Successfully stopped infringers and obtained favorable settlements in several product design/trade dress infringement cases.
- Representation of start-up orchestral print company in negotiating licenses from music publishing companies for "motif quoting" in symphonic works.
- Representation of music publishing company/record company in bringing copyright action against major film production company and DVD manufacturer for incorporating musical composition and sound recording in major commercial film without authorization.
- Representation of songwriter in procuring and negotiating worldwide music publishing deal with major music publishing company.
- Successfully obtained judicial approval of contracts with minors for several major labels.
- Represented songwriter in obtaining settlement from international film company and major beverage chain related to unauthorized use of musical composition and recording in motion picture.
- Represented defendant in patent infringement litigation concerning lawn tool; successfully transferred action to local district court; court held for client after Markman hearing.
- Successful representation of music publishing company in lawsuit with major telecommunications company for infringement of musical composition in cellular telephone ring tone.
- Counseled clients regarding selection, use and transfer of domain names.
- Representation of various music and media companies in drafting, negotiating, and consummating Internet web site development agreements.
- Representation of major musical artist in negotiating with symphony orchestra, concert promoter, and concert sponsor, concert performance agreement featuring musical artist and symphony orchestra (and recordings of same).
- Represented plaintiff in unfair competition and trademark infringement litigation; U.S. District Court granted summary judgment in favor of plaintiff.
- Representation of music publishing company in early-stage discussions regarding Broadway production.
- Representation of major musical artist in negotiating product endorsement agreement with major telecommunications company.
- Successfully prosecuted several Uniform Dispute Resolution Policy actions.
- Representation of documentary film production company in negotiating rights and licenses for production of major musical artists' film documentaries, and public television broadcasts of same.
- Represented leading provider of infrastructure for distributing premium digital content to public libraries in acquiring music content from major independent and major record labels.
- Successfully represented a consumer products company in negotiating favorable settlement with multi-national music publishing company.
- Represented domain name holder in dispute over registration of domain name; negotiated favorable settlement for domain name holder.
- Represented a major label in defending a copyright infringement lawsuit.
- Represented leading University art historian and professor in dispute over authenticity of 32 paintings.
- Representation of major organizer, producer, and promoter of multiple live concert events in negotiating and consummating $5 million concert and television sponsorship agreement with corporate sponsor.
- Representation of investment group procuring and evaluating musical assets investment opportunities.
- Representation of musical artist management companies in drafting, negotiating, and personal management agreements with musical artists.
- Representation of ring tone provider in connection with clearing copyrights for use in cellular telephone ring tones and related general business counseling issues.
- Representation of several musical artists in negotiating and consummating recording agreements with independent and major recording labels.
- Representation of major musical artist in negotiating anniversary concert with major concert promoter.
- Representation of angel-financing funded music and media business with proprietary patent technologies in a general counsel capacity.
- Represented a legendary rock artist in copyright infringement litigation and negotiated favorable settlement after summary judgment rulings.
- Representation of leading sports, entertainment, cultural and leisure sponsorship and event management agency in drafting major rock and roll institution anniversary concert.
- Representation of major ballet company regarding obtaining private equity investment and resolving various copyright issues, public television issues, and Musicians' Union issues, concerning successful stage and video production.
- Representation of major music magazine regarding various licensing and co-branding deals with major music publishers and record companies, podcasting issues, freelance agreements, and libel and copyright issues.
- Quarterbacked launch of new beer affiliated with nationally-known rock singer.
- Prosecute trademark and service mark applications before the U.S. Patent and Trademark Office.
- Lynyrd Skynyrd vs. Reed et al
- Defended software company against claims of patent infringement in Delaware District Court. Initiated an Inter Partes review at the Patent Trial & Appeal Board. Following oral argument, the Board invalidated all the claims asserted in the underlying litigation.
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