Intellectual Property Litigation
Strategic. Skilled. Tenacious. Benesch IP Litigation lawyers repeatedly prevail at trial and on appeal in federal and state courts across the nation. Our team regularly and favorably resolves IP-related matters in federal and state courts, at the USPTO and the ITC, and through arbitration, mediation and negotiated settlements.
We recently achieved a full defense verdict in a multimillion-dollar patent infringement jury trial without even presenting evidence on noninfringement.
Our Approach
Our lawyers take a holistic, comprehensive approach in each case. Working closely with our clients, we evaluate the facts and assess the risks and potential for success. We gain a clear understanding of our clients’ business goals and technology. We identify themes, determine the weaknesses in the opposing party’s position and then define and implement a strategy with tactical maneuvering through litigation to minimize our client’s exposure, avoid costly trials, whenever possible, and resolve matters swiftly, favorably and cost-effectively.
At the same time, we are skilled litigators and credible, persuasive and effective client advocates who are well-prepared to take cases to trial and handle any necessary appeals. This fact comes across in the quality of our work product, our creativity and the results we’ve achieved for our clients.
An Experienced Litigation Team
Benesch IP litigators handle intellectual property cases in the U.S., coordinate and oversee the protection and defense of our clients’ innovations worldwide and achieve global resolution of claims. The firm’s IP litigation lawyers excel in winning or defeating injunction requests, summary judgment motions and early case dismissals, trials, appeals and post-grant proceedings at the USPTO, including inter partes reviews (IPRs), post-grant reviews (PGRs) and reexaminations. Our experience spans industries and technologies from pharmaceuticals and medical devices to automotive parts, semiconductors, chemical compositions and power tools.
Efficient, Incisive and Results-Driven
We pride ourselves on offering cost-effective, incisive legal counsel and the highest level of client service. Our team members come from or have prevailed against the largest Am Law firms. Our team consists of registered patent attorneys, patent agents, former USPTO examiners, scientists, researchers and individuals with chemistry, biochemistry and mechanical and electrical engineering backgrounds, as well as a former in-house IP counsel for two global multinational corporations. We combine diverse perspectives, industry insight, business, legal and technology acumen, creativity and know-how—creating a strong and effective team skilled in asserting and defending our clients’ positions and finding a path to favorable resolution in even the most complex and contentious IP matters.
Handling All Types of IP-Related Disputes
We have successfully resolved all types of IP-related disputes including:
- Patent infringement matters for both plaintiffs and defendants
- Trade secret cases for both plaintiffs and defendants
- Trademark litigation including trade dress and Lanham Act claims
- Copyright enforcement and infringement defense
- Interferences, oppositions and cancellation proceedings at the USPTO
- IP licensing and other contract-related disputes
- Section 337 investigations before the ITC
- ICANN proceedings
- Hatch-Waxman/ANDA litigation
- Unfair competition, deceptive trade practices and cases involving other antitrust-related matters
- False advertising and right of publicity claims
- Cybersquatting and UDRP disputes
- Matters before the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB)
We are also experienced in handling cases involving the Internet, e-commerce issues and transaction-related disputes, including ones involving computer-related contracts, franchising agreements, outsourcing agreements, distributorship arrangements and technology-related agreements.
Experience
- Brought Hatch-Waxman claims against four generic drug makers on behalf of the manufacturer of a blockbuster multiple sclerosis drug.*
- Defended a major telecommunications provider in a patent infringement case brought by a European licensing enterprise asserting infringement of a portfolio of standards-essential Wi-Fi and LTE networking patents.*
- Defended refined coal manufacturers in three successive patent infringement cases brought by industry competitors asserting infringement of various patents on abating mercury emissions.*
- Defended two major telecommunications providers in patent infringement cases brought by a non-practicing entity that allegedly held a patent on “Wi-Fi Calling” technology.*
- Defended leading lighting distributor in six-year long litigation brought by a multi-billion dollar Japanese LED lighting company claiming patent infringement and seeking tens of millions of dollars. Following a two-week trial, and after just one hour of jury deliberation, Benesch’s IP litigators secured a unanimous verdict of no liability.
- Represented Hospira, Inc., a subsidiary of Pfizer, Inc., Celltrion, Inc. and Celltrion Healthcare Co., Ltd. adverse to Janssen Biotech, Inc. in litigation in federal court related to a biosimilar version of Janssen’s multi-billion dollar drug Remicade®. The case involved the first biosimilar monoclonal antibody to be approved by the FDA, and is one of the earliest cases filed under the Biologics Price Competition and Innovation Act (BPCIA).*
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Represented a manufacturer and provider of household appliance products in false advertising litigations with a global product design and technology company related carpet cleaning superiority advertising claims and suction performance claims.*
- Represented IMA S.p.A. and Fillshape S.r.l in a trade secret misappropriation and patent infringement case relating to food pouch manufacturing. Obtained dismissal of the claims and a stipulated to transfer of the case to an alternative forum, after which the case was resolved by favorable settlement.*
- Assisted with appeals of two highly publicized motions for summary judgment that invalidated a pharmaceutical company’s patent related to the infliximab antibody. The district court litigation ended with a second win in the form of a judgment of non-infringement related to the second patent asserted in the case.*
- Represented Sandoz Inc. in a patent litigation regarding a biosimilar version of Amgen’s drug Neulasta®. The litigation was successfully terminated when Sandoz obtained an order dismissing Amgen’s related declaratory judgment.*
- Successfully defended clients against claims of trademark infringement and trade secret misappropriation, including related injunction practice.
- Represented Hotwire against allegations of patent infringement under three patents asserted by Niro firm. Convinced Court to stay discovery until certain defenses were litigated. Case ultimately dismissed by Plaintiff.
- Defended Orbitz against claim of patent infringement under one patent relating to universal messaging brought by Acacia subsidiary. Obtained finding of non-infringement and ultimately resolved matter favorably.
- Represented Lighting Science Group against allegations of patent infringement under three optics patents brought by Acacia subsidiary. Argued and won invalidity finding during Markman phase resulting in early dismissal with prejudice of entire case.
- Represented CGB Diversified against multi-million dollar claim for breach of contract, fraud and unfair business practices stemming from crop insurance contracts, premiums and underwriting. Obtained dismissal for CGB Diversified through summary judgment.
- Defended Lear against claims of breach of software agreement and discovery violations. Took matter through trial and post-trial briefing to obtain complete defense judgment.
- Defended Abbott Laboratories, Inc. in a multi-million dollar suit involving complex contract law and collective-bargaining, pension withdrawal liability issues.
- Represented Internet music streaming company consummate a private offering memorandum raising $8.5 Million.
- Represented Arizona arts dealer in copyright infringement litigation.
- Represented Ideastream (public television and public radio) in American Archives Pilot Project.
- Represented Homax Group in trade dress litigation concerning various consumer products.
- Represented major hair clinic in intellectual property litigation.
- 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.
- 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 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.
- Represented client as defendant in trademark infringement litigation before the court and as opposer in Opposition proceeding before the Trademark Trial and Appeal Board.
- Represented defendant in patent infringement litigation concerning lawn tool; successfully transferred action to local district court; court held for client after Markman hearing.
- Represented plaintiff in unfair competition and trademark infringement litigation; U.S. District Court granted summary judgment in favor of plaintiff.
- Represented a legendary rock artist in copyright infringement litigation and negotiated favorable settlement after summary judgment rulings.
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Represented Feit Electric, a global leader in first-to-market lighting innovations against claims of patent infringement by Nichia. The technology relates to the manufacturing process for semiconductor chipsets, known as an LED (Light Emitting Diode) package, used in LED lighting applications.
