Intellectual Property

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 patent attorneys were engineers before they became lawyers, so they understand the intrinsic technical issues beneath the legal issues.

Our Intellectual Property Law 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 team has helped clients successfully resolve a variety of issues as they relate to intellectual property law, including:

• Brand protection and trademark registration
• Copyright litigation
• E-commerce and cyber piracy
• Intellectual property insurance coverage
• Licensing and technology transfers
• Patent analysis and opinions
• Patent litigation
• Patent preparation and prosecution
• Patent reissue and reexamination proceedings
• Trademark and trade dress litigation
• Trademark oppositions/cancellations

Brand Protection and Trademark Registration

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.

Copyright Litigation

The litigation attorneys in our Intellectual Property Practice have extensive experience in copyright infringement litigation, representing both plaintiffs and defendants.

Representative cases include:

Screenplay

On behalf of two Buffalo firefighters, we successfully litigated a copyright infringement action against a major motion picture studio concerning the film Backdraft.

Consulting Services

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.

E-commerce and Cyber Piracy

Phillips Lytle offers web-related intellectual property services to our clients. Our attorneys 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.

Intellectual Property Insurance Coverage

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. These include:

• PCB Piezotronics, Inc. v. Kistler Instrument Corp., No. 96-CV-0512E(F), 1997 U.S. Dist. LEXIS 20783 (W.D.N.Y. Dec. 30, 1997)
• J.A. Brundage Plumbing & Roto-Rooter, Inc. v. Massachusetts Bay Ins. Co., 818 F. Supp 553 (W.D.N.Y. 1993), vacated on other grounds, 153 F.R.D. 36 (W.D.N.Y. 1994)

Licensing and Technology Transfers

Our attorneys have extensive experience in negotiating and drafting technology transfer and related agreements employed in the commercialization of intellectual property. These include research agreements, license agreements, technology transfer agreements, joint venture agreements, confidentiality agreements, consulting agreements, endorsement agreements and production agreements.

Together with our Corporate attorneys, we negotiate complex joint ventures, strategic alliances and licenses in domestic and international arenas on matters such as international licensing arrangements with major research universities and large multinational corporations, as well as smaller, customized arrangements between companies wishing to share research resources and marketing opportunities. The subject matter of these agreements covers all types of intellectual property, including trademarks, patents, trade secrets and copyrights, as well as various categories of technical arts such as genetically modified plants, medical devices, manufacturing processes, information technologies and multimedia works.

Patent Analysis and Opinions

In addition to patent prosecution, our attorneys 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.

Patent Litigation

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. Our Intellectual Property Litigation attorneys have such technical skills.

Artificial Turf

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 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.

Logging/Felling Heads

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.

Dental Products

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.

Industrial Valves

We acted as lead counsel for a Canadian manufacturer of municipal/industrial valves in a patent infringement action relating to energy dissipating valves. Through mediation, we obtained a favorable consent decree from the court for our client.

HVAC Equipment

We acted as lead counsel for the defendant in a patent infringement matter relating to commercial VPAC units in the Western District of Texas. Our attorneys reached a favorable settlement through mediation in Dallas.

Patent Preparation and Prosecution

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. Also, with our in-house AutoCAD capability, our patent attorneys are able to manipulate original documents for patent applications, eliminating the time and cost associated with engaging independent drafting firms.

The following list is just a sample of U.S. patents obtained by our attorneys:

• 6,351,199 Position Sensor for Latching Solenoid Valve
• 6,736,140 Exhalation Evacuator
• 6,884,932 Stringed Instrument Truss Assembly
• 7,158,700 Fiber-Optic Transceiver
• 7,239,776 Fiber-Optic Rotary Joint and Associated Alignment Method
• 7,284,743 Hoist Limiting System
• 6,321,573 Radio and Data Network System
• 7,360,969 Z-Shaped Sheet Piling
• 7,413,705 Rose-Colored Gold Alloy Compositions with Reversible Hardness Characteristics
• 7,451,003 Method and System of Monitoring Sensor Validation and Predictive Fault Analysis
• 7,506,280 Magnetic Winding and Method of Making Same
• D471,409 Ice Cream Scoop
• D544,206 Cap Carrier
• D591,307 On-Screen Keyboard for Electronic Devices

Patent Reissue and Reexamination Proceedings

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 191 international law firms in 79 countries, allowing us to assist clients in obtaining patent protection all over the world.

Trademark and Trade Dress Litigation

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.

Representative cases include:

Repair Services/Motorcycles

We defended a trademark infringement action brought on by Harley Davidson. 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. Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999); Harley-Davidson, Inc. v. Grottanelli, 91 F.Supp.2d 544 (W.D.N.Y. 2000).

Culinary Devices

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.

Apparel

We brought a trademark infringement 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.

Internet Services

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.

Auto Instrumentation

We defended a trade dress infringement action in the Northern District of Illinois. We successfully secured insurance coverage for our client under its commercial general liability policy, and a favorable settlement was reached after significant discovery.

Trademark Oppositions/Cancellations

Our 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, and on appeal to the Federal Circuit.