Phillips Lytle’s Intellectual Property (IP) attorneys offer a full range of services to secure, defend and enforce our clients’ IP rights, including litigation, prosecution, licensing and technology transfers, and general counseling on intellectual property law.
Our Intellectual Property Team has represented numerous U.S. and Canadian businesses in matters including patent and trademark prosecution, infringement and validity studies, and complex infringement litigation. These matters cover a broad range of technological disciplines, including those related to mechanical, electrical, computing and software fields, as well as those involving business methods and medical devices.
Our work in brand protection and intellectual property spans across multiple industries and professional fields. Examples of the areas where we excel in Intellectual Property includes:
Our Intellectual Property Team has developed trademark and brand protection strategies for some of the country’s most recognized brands. We’ve also coordinated anti-counterfeiting and other enforcement efforts for industry leaders. In addition, we have years of experience counseling clients in selecting and considering the availability of trademarks and service marks for use, as well as managing trademark portfolios worldwide.
Our trademark attorneys file and prosecute domestic and foreign trademark applications all over the world and are well versed in registering trademarks with U.S. Customs and Border Protection to combat counterfeiting. Our customized docketing system is updated frequently to help keep us abreast of ever-changing trademark laws. This positions the firm to offer comprehensive counsel and representation to clients in need of an intellectual property attorney.
The Litigation attorneys on our Intellectual Property Team have extensive experience in copyright infringement litigation, representing both plaintiffs and defendants in intellectual property matters.
Representative cases of providing intellectual property protections in copyright cases include:
On behalf of two Buffalo firefighters, we successfully litigated a copyright infringement action against a major motion picture studio concerning the film Backdraft.
Our attorneys acted as lead counsel in a copyright and trademark action in Seattle where we successfully secured insurance coverage for our client. Following significant discovery, a settlement was reached during mediation.
Phillips Lytle offers web-related intellectual property services to our clients. Our Intellectual Property lawyers resolve disputes that involve domain names and draft website development, hosting and application service provider agreements, as well as terms and conditions of use agreements. We also provide legal advice related to Internet trademark use and licensing, and we have successfully resolved “cybersquatting” issues with minimal cost through domain name arbitration proceedings under the Uniform Domain-Name Dispute-Resolution Policy.
We have represented clients in cases involving insurance coverage for intellectual property claims and successfully obtained insurance defense for many who have been charged with infringement.
Our attorneys have extensive experience in negotiating and drafting technology transfer and related agreements employed in the commercialization of intellectual property. These include license agreements, technology transfer agreements, joint venture agreements, confidentiality agreements, consulting agreements, endorsement agreements, research agreements and production agreements.
Together with our Corporate and Business Law attorneys and Commercial Contracts attorneys, our Intellectual Property Team negotiates complex joint ventures, strategic alliances and licenses in domestic and international arenas. Such matters have included licensing arrangements with major research universities and large multinational corporations, as well as smaller, customized arrangements between companies wishing to share intellectual property, research resources and marketing opportunities. The subject matter of these agreements covers all types of intellectual property, including trademarks, patents, trade secrets and know-how, and copyrights, as well as various categories of technical arts such as genetically modified plants, medical devices, manufacturing processes, information technologies and multimedia works.
In addition to patent prosecution, our Intellectual Property lawyers regularly counsel clients with respect to patent claim scope and associated design issues, render invalidity and non-infringement opinions, and conduct freedom-to-operate studies across a wide range of industries.
The Litigation attorneys in our Intellectual Property Practice have extensive experience in prosecuting and defending actions for patent infringement before U.S. District Courts nationwide, as well as the Federal Circuit Court of Appeals. While patent disputes include some of the same legal issues as traditional business litigation, they also require litigators with more technical proficiency. Litigation attorneys at Phillips Lytle have extensive skill in managing intellectual property law matters as they pertain to patent litigation, protection of trade secrets and other key aspects of intellectual property law.
Our attorneys have acted as lead counsel in multiple patent infringement actions in Chicago, San Francisco, Cleveland and Seattle. The patentee was the worldwide leader in artificial turf systems. And, during the course of the litigation, our client became the second largest turf company in the country.
This litigation involved four separate patents covering artificial turf and was originally focused on high-profile turf projects at the Baltimore Ravens’ NFL stadium and UC Berkeley’s Memorial Stadium. We successfully opposed two separate temporary restraining order (TRO) motions, prevailed on a TRO motion relating to unfair competition, conducted a Markman hearing in Chicago, and conducted numerous fact and expert depositions throughout North America.
Attorneys from our Intellectual Property Team acted as lead counsel for a logging equipment manufacturer in three separate actions against a Fortune 100 industry leader. With venues in New York and Iowa, these actions related to three patents on tree-felling equipment. The lawsuits settled after significant discovery, a motion practice, and a Markman briefing.
We defended a dental restoration manufacturer in a patent infringement action in Connecticut District Court. After an evidentiary hearing, we successfully opposed a preliminary injunction motion, which was upheld on appeal to the Federal Circuit. The case eventually was tried before a jury, where we obtained a verdict in our client’s favor invalidating the subject patents.
We acted as lead counsel for a Canadian manufacturer of municipal/industrial valves in a patent action relating to energy-dissipating valves. Through mediation, we obtained a favorable consent decree from the court for our client.
We acted as lead counsel for the defendant in an infringement matter relating to commercial Vertical Package Air Conditioner (VPAC) units in the Western District of Texas. Our attorneys reached a favorable settlement through mediation in Dallas.
Our attorneys have extensive experience in preparing and prosecuting patent applications in virtually all technical disciplines, including those involving mechanical and electrical fields, medical devices, and computer hardware and software. And we’ve assisted clients small and large alike–from independent inventors to multinational technology companies.
Our patent attorneys make it their mission to meet directly with inventors in order to draft claims interactively, thereby enabling the “generic invention,” as opposed to the “species solution,” to be protected.
Our attorneys have broad experience dealing directly with the examiners at the United States Patent and Trademark Office and, when necessary, with the Patent Trial and Appeal Board on appeals as well as reexamination and reissue proceedings. In addition, we also regularly file and prosecute foreign patent applications under the Patent Cooperation Treaty. We have developed strong working relationships with 95 international law firms in 71 countries, allowing us to assist clients in obtaining patent protection and intellectual property laws all over the world.
The Litigation attorneys in our Intellectual Property Practice have extensive experience prosecuting and defending actions for trademark and trade dress infringement before state and federal U.S. District Courts nationwide.
Cases related to trademark protection include:
We defended a trademark infringement action brought on by Harley Davidson in an attempt to protect intellectual property. The case centered around the right to use the term “hog” and was tried by a jury in the Western District of New York. On appeal to the Second Circuit, we were successful in upholding the trial court’s decision that the term “hog” was generic with respect to motorcycles and, therefore, could not be asserted against our client.
We represented the defendant in a trade dress infringement action relating to the availability of trade dress protection upon expiration of design and utility patents. We successfully secured insurance defense for our client and, after discovery and motion practice, tried the case in the Western District of New York.
We brought trademark violation action against a New York City apparel company for infringement of our client’s trademarks and trade dress. After mediation, we obtained a favorable consent decree for our client.
We acted as lead counsel in a trademark infringement action in Madison, Wisconsin. The plaintiff was a leading supplier of trademark search and brand monitoring services, while our client was a more recent player in the market. After significant discovery, a favorable settlement was reached on the eve of expert/summary judgment deadlines.
We defended a trade dress infringement action in the Northern District of Illinois. Phillips Lytle Intellectual Property attorneys successfully secured insurance coverage for our client under its commercial general liability policy, and a favorable settlement was reached after significant discovery.
Our Intellectual Property attorneys regularly represent clients in right-to-register trademark opposition and cancellation proceedings in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board.
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