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Intellectual Property and Information Technology Litigation
The protection of a company's intellectual property is vital to its success. The stakes are therefore often high in intellectual property litigation, particularly in complex patent litigation where a company's key assets may be at risk. The extensive experience of Baker & McKenzie attorneys in intellectual property litigation and our worldwide resources make the firm a compelling choice of counsel when a company is faced with protecting its intellectual property assets or defending infringement or misappropriation claims by others.
Our team of attorneys has broad experience in patent, trademark, copyright and trade secret litigation, as well as in complex business litigation in all areas of technology. Our attorneys have litigated:
- patent cases in numerous industries,
- trademark infringement and unfair competition actions, including "domain name" and "cybersquatting" cases,
- copyright cases, including many cases involving allegedly illegal copying of software, trade secret actions, particularly actions dealing with employees and former employees allegedly taking a company's valuable secrets to other companies, and
- a wide variety of disputes involving technology such as computer software performance, contract, business tort, and unfair trade practices.
Our lawyers have practiced before federal district courts and state courts throughout the United States, as well as before federal and state courts of appeal, including the United States Court of Appeal for the Federal Circuit. Moreover, our attorneys have handled several cases before the United States International Trade Commission and are skilled in the complex procedures of that forum. And, our attorneys regularly appear before the United States Patent and Trademark Office and Copyright Office. Oftentimes cases of this type are resolved through Alternative Dispute Resolution ("ADR") and our attorneys are knowledgeable and experienced in all forms of ADR, including arbitration, conciliation, mediation, licensing, and mini-trials. Baker & McKenzie's intellectual property lawyers are best qualified to represent clients in North America and overseas, and to represent foreign clients when they face intellectual property disputes here. Our integrated network of offices in North America and throughout the world, using state-of-the-art technology, allows us to quickly access the experience, knowledge and resources of our offices throughout the world to serve our clients effectively and efficiently regardless of the complexity or geographic scope of the issues involved in a case.
Given the importance that invariably attaches to intellectual property and complex technology litigation, clients should have a team of experienced intellectual property practitioners and seasoned trial lawyers who understand the challenges of complex litigation, understand the technology involved, and are able to meaningfully communicate to the judge, jury, tribunal, and client. Our approach is to work closely with the client, particularly in-house counsel where appropriate, to discuss and agree on the best strategy for a given case that addresses the client's business and litigation objectives. Should that strategy dictate a prompt disposition our attorneys work to achieve early settlement if possible. However, if that strategy is to litigate the case our experienced trial attorneys are fully prepared and able to do so. Through our extensive trial experience we have developed the skills to communicate with judges, juries, and tribunals, as well as with senior management; coordinate with other counsel; develop, implement and adhere to case budgets; and, to effectively interview witnesses and review and analyze volumes of documents.
Recent Representative Cases:
- A semiconductor equipment manufacturer accused of infringing the patent on a pumping system for use in wafer fabrication. We handled the jury trial and handled the appeal before the Federal Circuit. On appeal the Federal Circuit, in an en banc decision, agreed with our arguments that all aspects of claim interpretation, including issues that may be factual in nature, are for the Court, not a jury, to decide.
- The owner of a patent on an integrated circuit for use in array image sensors in a dispute over the infringement of such patent.
- The manufacturer of semiconductor fabrication equipment in an action involving the alleged infringement of a patent covering a process for vapor deposition.
- A major producer of semiconductor devices in an action in which it is alleged our client's products infringe two patents covering processes for the fabrication of semiconductors.
- A patent holder in an infringement action involving automotive electronics, obtaining a $25 million judgment for our client.
- A major producer of miniature electric motors, in patent infringement claims in the United States, Hong Kong and England.
- A foreign DRAM manufacturer in a § 337 action before the International Trade Commission in which it was claimed our client's products infringed various patents of United States producers of DRAMs.
- The leading producer of services and software used to download multimedia content from the Internet. We successfully defended a trademark infringement action in which the owner of a trademark for use with sound effects CDs tried to seek an injunction against our client contending that our client's use of a certain name for its service infringed and diluted the plaintiff's mark.
- A Taiwanese company that developed and registered an Internet website for use in China and other parts of Asia. One of the largest Internet companies in the world filed an action in Virginia against the client for trademark infringement and dilution, and for violations of the recently enacted federal Anticybersquatting Consumer Protection Act, 15 U.S. C. § 1125(d) (the "ACPA"). We successfully moved to dismiss the case for lack of personal jurisdiction; in one of the first published opinions under the ACPA the Court accepted our arguments that mere registration of a domain name in the United States will not confer personal jurisdiction in United States courts over foreign companies, even under the ACPA.
- A fashion apparel company in a trademark infringement case against an internet-based retailer. We received a $1.2 million judgment on behalf of our client.
- The State of Idaho in connection with its "Grown in Idaho" certification mark for potatoes. We obtained both a temporary restraining order and preliminary injunction and were then successfuly in a contempt motion for violation of the injunction.
- A manufacturer and designer of digital projectors and technologies in a trademark opposition case against a security software provider which resulted in three successfully opposed registrations.
- A biotech company which develops and sells diagnostic test kits in a bench trial over the misappropriation of trade secrets, trademark infringement and unfair competition action against a biotech company which produced and sold competing products and its board of directors. The suit resulted in $12 million dollar judgement and permanent injunction stopping the continued operation of competing business.
- A leading European supplier of vitamins which used a slogan in its website and in various newspaper advertisements. A large health care provider and HMO in California filed an action for trademark infringement and dilution against our client contending that use of two words in the slogan infringed and diluted the registered service mark of the HMO. We moved to dismiss on the grounds that the two words are generic and not subject to trademark protection; the case was voluntarily dismissed by the HMO.
- A leading producer of long distance telephone charge cards. A foreign company misappropriated our client's name and attempted to market counterfeit phone cards in several parts of the United States. We immediately submitted a TRO application and the counterfeiters ceased their activity.
- A leading supplier of personal computer "motherboards". We engaged in one of the first arbitrations under the new ICANN rules established for resolving domain name disputes.
- A major supplier of computer systems. The client had a unique type of copyrighted operating system software which was partially contained on data diskettes. In several cases we successfully obtained TROs, seizures, preliminary injunctions and judgments for copyright infringement against several companies who were copying our client's copyrighted software when they pre-formatted diskettes for use by our client's customers.
- The leading producer of input/output software ("BIOS"). Such software allows non-IBM personal computers to be "PC compatible." In several cases we obtained TROs, seizures, preliminary injunctions and judgments against several companies that had infringed the client's copyright.
- A leading supplier of personal computers. In a trade secret action we successfully persuaded the Court that a choice of law provision in semiconductor distribution agreement applies to non-contractual trade secret claims as well.
- The developer of a business process that allows individuals to sell and purchase used automobiles over the Internet, including the financing of such transactions. We are representing the client in a trade secret litigation in which it is claimed that certain business partners misappropriated the trade secrets of the client.
- A Japanese producer of ultrasound equipment in a major case alleging trade secret violations relating to the software in ultrasound equipment.
- For a company in the pharmaceutical industry we successfully obtained temporary and preliminary injunctive relief in an action against former officers and employees who allegedly misappropriate trade secrets and other proprietary information relating to the manufacture and sale of medical diagnostic testing kits.
- A software company that wrote applications for internet companies. Under theories of trade secrets and unfair competition, we brought a lawsuit against a new company that had been created by a number of our client's employees. Despite the fact that there were no employment agreements or non-compete clauses, we were successful in obtaining a temporary restraining order preventing the defendant from working on its one major assignment.
Several of our cases have led to published opinions, including:
- Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 46 U.S.P.Q.2d 1169 (Fed. Cir. 1998)
- Intellectual Property Development, Inc. v. TCI Cablevision of California Inc., 248 F.3rd 1333, (Fed. Cir. 2001)
- Lampi Corp. v. American Power Prods., 228 F.3d 1365 (Fed. Cir. 2000)
- Scholle Corp. v. Blackhawk Molding Co., 133 F.3d 1469 (Fed. Cir. 1998)
- Reed-Union Corp. v. Turtle Wax, 77 F.3d 909 (7th Cir. Ill. 1996)
- America Online, Inc. v. Huang, 106 F. Supp. 848 (E.D. Va. 2000)
- Pritikin v. Liberation Publications, Inc., 83 F. Supp. 2d 920 (N.D. Ill. 1999)
- Intellectual Property Development Inc. v. UA Columbia Cablevision of Westchester, 1998 U.S. Dist. Lexis 3901 (S.D.N.Y. May 24, 1998)
- Delta Computer Corp. v. Samsung Semiconductor & Telecomm., Inc., 879 F.2d 662 (9th Cir. 1989)
- Advent Electronics, Inc. v. Samsung Semiconductor, Inc., 709 F. Supp. 843 (N.D. Ill. 1989)
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