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Practice Highlights

  • Work with a wide array of industries and companies, ranging from emerging growth firms to multinational corporations
  • Understand the essential value IP can provide to a business
  • Possess extensive patent prosecution, litigation and alternative dispute resolution experience 

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Intellectual Property

We understand the essential value intellectual property provides to your business. Our interdisciplinary team regularly advises clients in acquiring, protecting and monetizing intellectual property rights and litigating or alternatively resolving disputes regarding such rights in the U.S. and abroad.

Procurement and Transactions

We provide strategic legal advice to clients ranging from emerging growth firms to established multinational companies in a wide variety of intellectual property procurement, management and transactional matters, including:

  • Patent prosecution before the U.S. Patent and Trademark Office, including new applications, reexaminations, and appeals to the Board of Patent Appeals and Interferences
  • Opinions of counsel regarding patent invalidity and non-infringement
  • Freedom-to-operate analyses and opinions for new products
  • Trademark and copyright procurement and management, including performance of searches, rendering of viability opinions, filing applications for registration, and monitoring and maintaining portfolios
  • Trade secret protection, including crafting corporate confidentiality, security and non-competition programs
  • Licensing and technology transfer transactions, including trademark, copyright, patent, trade secret, Internet domain name and technology licensing, acquisitions and sales
  • Intellectual property due diligence and counseling in acquisitions and financing transactions

Litigation

We have addressed issues involving patent infringement, trademark infringement, copyright infringement, unfair competition, internet domain name disputes, false advertising, false designation of origin, software licensing and product disparagement claims. We have litigated these cases in Pennsylvania, New Jersey, Delaware, Texas, California, New York, Virginia, Kentucky, and before the International Trade Commission, at both the trial and appellate court levels before state and federal courts, as well as in private commercial arbitration and arbitration under the Internet Corporation for Assigned Names and Numbers (ICANN).  Members of the group also practice before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board in trademark cancellation and opposition proceedings.

Representative Matters

  • Won landmark award of attorneys fees against patent troll and its attorneys in a patent infringement case for Gust, Inc. after having litigation transferred from Eastern District of Texas to Southern District of New York
  • Obtained Motion to Transfer from Eastern District of Texas to Southern District of New York in a patent infringement case
  • Represented major technology companies as plaintiffs and defendants in patent infringement litigations in federal district courts and the International Trade Commission
  • Represented technology companies in patent litigations brought by non-practicing entities (NPE's)
  • Acted as chief patent portfolio architect, drafting and prosecuting patent applications for a leading telecommunications services company
  • Represented a security company in a trademark action against a competitor, receiving favorable award and attorneys fees
  • Represented medical device manufacturer in major litigation regarding recently approved treatment for osteoarthritis
  • Represented clients in Hatch-Waxman litigation
  • Formulated university intellectual property policy and assisted in establishing technology transfer group for a leading university
  • Assisted national dental care provider in developing and implementing trademark strategy
  • Represented large commercial television shopping network against claims of false advertising, false designation of origin, and unfair competition under the Lanham Act for sale of a product on the network that allegedly was an unprivileged imitation of a competing product; summary judgment motion was filed on behalf of the network, leading the plaintiff to settle with the network for $10,000 against a damages claim of $640,000
  • Represented advertising agency against claims of copyright infringement arising out of the alleged copying of a copyrighted song in a television commercial
  • Represented a foreign manufacturer of pharmaceutical products and medical devices in the acquisition of worldwide marketing and distribution rights to a line of products
  • Represented a European-based pharmaceutical manufacturing, development and distribution company in the grant of exclusive U.S. distribution rights to a product in development to a large, U.S.-based pharmaceutical company
  • Represented a specialty pharmaceutical firm in obtaining a trademark license from a multi-national pharmaceutical company
  • Represented a clothing manufacturer in obtaining trademark licenses from large, publicly traded automotive manufacturers
  • Represented a privately held medical device development firm in the license of a patent-pending drug delivery instrument from a publicly traded pharmaceutical company
  • Assisted a multi-national client in negotiating a favorable settlement with the Business Software Alliance
  • Represented specialty software developer in license of its software to a national healthcare company
  • Assisted world’s largest creative competitions firm in procuring and maintaining its intellectual property portfolio
  • Represented a product manufacturer against claims of trade dress infringement and unfair competition in violation of the Lanham Act arising out of allegations by a competitor that the client's trade dress for the product was likely to cause consumer confusion due to the alleged similarity in appearance
  • Prosecuted cyber-squatting suit on behalf of a physical therapy service provider in National Arbitration Forum proceeding; obtained award in favor of complainant, including forced transfer of the domain name to complainant and reimbursement of attorney's fees
  • Defended software development company against breach of $1.1 million licensing agreement before a commercial arbitration panel arising out of alleged failure of program to deliver promised functionality; after extensive discovery focusing on technical aspects of both computer programming techniques and insurance underwriting and reporting functions so as to come to an understanding of the contract's use of the term "functionality", and the development of expert comment on these issues, the parties submitted to non-binding mediation; the remaining claims were settled for $350,000
  • Represented insurer in Information Spectrum, Inc. v. The Hartford, 860 A.2d 926 (N.J. 2004) resulting in precedent-setting ruling governing coverage of copyright infringement and reverse passing off claims under the advertising liability provision of commercial general liability policies
  • Represented a mid-size physical therapy services provider defending against trademark infringement claim, successfully defeated temporary restraining order and resolving matter to allow for continued use of a disputed mark in certain geographic locations
  • Acted as local counsel in product disparagement claim arising out of underlying patent infringement allegations, focusing on the applicability of the absolute litigation privilege to cease and desist letters issued by counsel
  • Litigated an international domain dispute with ICANN arbitrators pursuant to the Uniform Domain Name Dispute Resolution Policy

News

Events

  • In-House Counsel Guide to Trade Secrets
    Lawline Webinar
    June 27, 2017
  • How Not To Create an International Incident: U.S. and Canadian Perspectives on Counsel-to-Counsel and Counsel-to-Court Duties in Practicing Entity Litigation and Troll Litigation
    AIPLA 2017 Electronic and Computer Patent Law Summit (Toronto, Ontario, Canada)
    June 21, 2017
  • In-House Counsel Guide to Trademarks
    Lawline Webinar
    June 21, 2017
  • In-House Counsel Guide to Copyright
    Lawline Webinar
    June 20, 2017
  • In-House Counsel's Guide to Patents
    Lawline Webinar
    May 25, 2017
  • Managing Risk in International Contracting and Transactions
    Global Business Conference: Navigating Trade in the New Environment (Atlantic City, NJ)
    April 27, 2017
  • Trademark Selection and Clearance 101
    Lawline Webinar
    February 15, 2017
  • Intellectual Property Transactions in the United States: Considerations and Complications for Chinese Companies
    The 7th China IP International Annual Forum (Beijing, China)
    January 2017
  • Fair Use After Guild v. Google
    Lawline
    October 24, 2016
  • IP Due Diligence Update: 2016
    Lawline
    October 23, 2016
  • Update on the "The Slants" Trademark Case
    New York City Bar Association Entertainment Law Committee
    October 17, 2016
  • Digital Creativity: Culture Reimagined
    Benjamin N Cardozo School of Law (New York, NY)
    April 14, 2016
  • Key US Trademark Trends: Significance and Implications for Chinese Companies & on Recent U.S. Trademark Decisions: Strategies and Considerations for Chinese Companies
    The 6th China IP International Annual Forum (Beijing, China)
    January 22, 2016
  • Anatomy of an IP License
    Clear Law Institute Webinar
    October 29, 2015
  • Negotiating and Drafting License Agreements
    Lawline.com
    June 25, 2015
  • Enforcement of Trademarks and Copyrights for In-House Counsel
    Lawline.com
    July 1, 2014
  • An In-House Counsel's Guide to Trade Secrets
    Lawline.com
    July 1, 2014
  • An In-House Counsel's Guide to Patents
    Lawline.com
    July 1, 2014
  • Roadmap to Patent Litigation in the U.S.: Procedures, Issues and Strategies
    Annual Conference of In-House IP Managers in China (Beijing, China)
    January 11, 2014
  • Strategic Patent Protection and Enforcement in the “New World” After the America Invents Act
    The 8th Annual Corporate Intellectual Property Conference (Beijing, China)
    May 28, 2013
  • U.S./China Intellectual Property Protection
    Ben Franklin Technology Partners of Southeastern PA
    May 22, 2013
  • Safeguarding Your Exports
    Federal Reserve Bank, Philadelphia, PA
    April 30, 2013
  • IP Due Diligence
    Lawline.com
    December 5, 2012
  • Inequitable Conduct: Getting to Therasense and Beyond
    Advanced Practical Seminar on Protecting IP Rights Overseas (Beijing, China)
    October 18, 2012
  • Social Media: Business Issues, Legal Issues and Risk Management Topics and Issues for the CFO and the CIO
    Penn State Great Valley, Malvern, PA
    July 24, 2012
  • Patent Law - Trolls 101
    Pennsylvania Bar Institute (Philadelphia, PA)
    November 10, 2011
  • Recent U.S. Patent Decisions and Their Significance to Chinese Companies
    Electrical & Mechanical Engineering Patent Conference (Shenzhen, China)
    October 19, 2011
  • How Can I Make My Business Worth More?
    BNY Mellon Entrepreneurship Series
    June 27, 2011
  • Negotiating and Drafting License Agreements
    Lawline.com CLE
    June 2011
  • What IP Lawyers Need to Know About the Bratz Verdict
    ExecSense CLE
    June 2011
  • Managing Your Internet Presence for Intellectual Property Attorneys
    ExecuSense CLE
  • China Road Show: Protecting Your Intellectual Property in China and the Global Marketplace
    The United States Patent and Trademark Office Road Show (Philadelphia, PA)
  • The Business of Intellectual Property: Trends and Predictions
    April 6, 2011
  • Contrasting Patent Invalidation in China with Patent Re-Examination in the USA: Alternative Solutions to Litigation When Being Sued
    The 2nd Advanced China IP Counsel Forum (Shanghai, China)
    January 19, 2011
  • The Hard Nut to Crack: How to Successfully Manage Cross-Border Litigation in the World-wide Landscape and Optimizing Your IP Portfolio Management Strategy to Maximize the Protection of Your IP Assets in the U.S.
    The 5th Annual Conference on Corporate Intellectual Property in China (Shanghai, China)
    April 22, 2010
  • So You Are Ready to Sell! Preparing Your Company for Sale in the New Economy
    September 2009
  • Pharmaceutical Patent Protection and Regulation, a Global Perspective
    Beijing International Pharmaceutical & Chemical IP Forum (Beijing, China)
    August 5, 2009
  • KYW Newsradio and White and Williams LLP presented "Your Brand's Bottom Line: What Every Business Owner Needs to Know About Intellectual Property"
    February 3, 2008
  • A Non-Geek’s Guide to Insurance Coverage in Cyberspace: Intellectual Property
    Property Loss Research Bureau (Atlanta, GA)
    March 13, 2001

Publications

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