Intellectual Property

DEFENDING YOUR COMPANY’S MOST VALUABLE ASSETS

Few assets are as important to a company as its intellectual property.  Prince Lobel attorneys have been nationally recognized leaders in this area for decades.  They are drawn from the nation’s largest law firms and companies to bring an experienced and business-oriented perspective in solving intellectual property issues.  Our practice includes building a company’s intellectual property portfolio and enforcing or defending that property in district and appellate courts throughout the country.  Our clients range from inventors and entrepreneurs to large corporations and span a variety of fields including high technology, life sciences, traditional and online media, and insurance.

OUR INTELLECTUAL PROPERTY PRACTICE INCLUDES:

Patent Protection Issues

• Asserting and defending patent infringement claims in district courts throughout the country and the Federal Circuit
• Drafting and prosecuting international patent portfolios
• Building and evaluating patent portfolios for due diligence, licensing, enforcement and defensive purposes
• Drafting and negotiating patent licenses

Trade Secret Protection, Counseling, and Litigation

• Prosecution and defense of trade secret misappropriation claims
• Trade Secret Asset Management initiatives to identify, catalogue, protect, and leverage valuable trade secret assets
• Drafting and implementation of trade secret protection protocols and strategies
• Conducting internal training for personnel concerning the importance of trade secret assets and their protection and implementation of trade secret protection protocols
• Drafting and negotiating nondisclosure, confidentiality, and proprietary information agreements
• Cross-border trade secret protection strategies

Trademark and Brand Protection Issues

• Enforcing and defending trademark claims before the Trademark Trial and Appeal Board and the federal courts
• Prosecuting and managing national and international trademark portfolios
• Brand development, including counseling on brand selection, protectability, and commercial impact
• Representing clients in the registration and protection of internet domain names

Copyright Protection Issues

• Developing comprehensive and practical strategies for registering and otherwise protecting creative assets
• Drafting and negotiating contracts for licensing creative assets
• Ensuring compliance under the Digital Millennium Copyright Act (DMCA) and its safe harbor provisions
• Drafting copyright and fair use opinion letters

The following is a list of representative matters of work performed by Prince Lobel attorneys:

Patent Infringement Litigation

• Won a $388 million verdict in a patent infringement case, then the fifth-largest verdict in patent law history.
• Secured summary judgment of non-infringement and affirmance at the Federal Circuit for client defending against claims of willful patent infringement by competitor.
• Defended venture-backed technology company against patent litigation actions brought by litigious patent assertion entity and obtained highly favorable settlement for our client.
• Obtained highly favorable settlement on behalf of patent-owner in a patent and trade secret litigation.
• Successfully enforced patent portfolios on behalf of multiple patent licensing company clients.
• Enforced patent portfolio on behalf of large telecom equipment manufacturer.
• Defended large printer manufacturer against multiple claims of infringement by various patent owners.  Litigation strategies resulted in favorable settlements.
• Represented medical laser manufacturer against claims of patent infringement; case ended in favorable settlement.
• Mediated settlement of patent infringement and chapter 93A case against Fortune 500 company.

Trademark Infringement Litigation

• Defended a national food manufacturer in connection with claims of trademark infringement, unfair competition, and improper use of a co-founder’s name and likeness.  Pre-trial motions resulted in judgment in favor of client and judgment was affirmed on appeal.
• Represented former member of rock band in trademark infringement, trademark dilution, and unfair competition claims brought by former bandmates.  Pretrial motions disposed of all direct claims against our client.
• Favorably settled trademark infringement claim against prominent television personality.
• Represented a national restaurant chain in multiple trademark oppositions before the United States Patent and Trademark Appeal Board.
• Represented international pharmaceutical company in multiple Uniform Domain Name Dispute Resolution Policy proceedings.  After filing the complaints, the domain names were transferred at no cost to our client.

Copyright Infringement Litigation

• Secured the dismissal of a federal case in Nevada in which our publishing client’s copyrights were challenged.
• Favorably settled a copyright infringement claim against a national publisher arising out of allegedly unauthorized distribution of newsletters.
• Successfully defended computer software maintenance company and its president in federal court against claims for copyright infringement and violation of the Digital Millennium Copyright Act.
• Successfully defended copyright infringement and right of publicity claims against website based on photographs uploaded by users.
• Routinely conduct fair use review for media clients, including authors, websites, and filmmakers.

Theft of Trade Secrets/Computer Fraud and Abuse Act

• Successfully resolved claim against sales team that left employer to start a new company and was accused of misappropriating customer lists.
• Brought claims on behalf of a regional magazine that alleged that a competitor had stolen its confidential advertiser list. Though the settlement terms were confidential, the competitor issued a statement saying that its employees had engaged in misconduct of which it had been unaware.
• Represented large clinical services company in theft of trade secrets litigation against large pharmaceutical manufacturer.  Litigation strategy leveraged favorable business resolution and payment of attorneys’ fees.
• Secured dismissal of claim of interference with business relationships brought by newspaper publisher against competing publication based on alleged misappropriation of customer data.