Highly regarded around the world for delivering first-class service on intellectual property matters, our team provides strategic counsel to regional, national, and international clients in a diverse array of industries. We draw on our extensive experience, in-depth legal and business knowledge, and scientific backgrounds to advise on issues involving patents, trade secrets, trademarks and trade dress, and copyrights. Our team helps clients with licensing, patent prosecution, compliance, managing exposure, and avoiding litigation or settling disputes expeditiously. But when clients have had their IP rights violated and litigation proves to be the best course of action, we advocate zealously for them. For those who face infringement claims, our lawyers explain the full scope of potential defenses and counterclaims that we can deploy, identify and exploit opponents’ vulnerabilities, and represent them vigorously. We make it our mission to support and protect imagination and invention.
While we often fight headline-making battles in high-stakes disputes, we also stay committed to offering counsel on smaller matters of equal importance to clients. Our lawyers listen closely and help clients resolve issues and get back to managing their businesses and developing products and services that enhance our lives. Our team always stays mindful of the client’s bottom line and their business goals, and we work as efficiently as possible to help them achieve those objectives.
Why Our Experience is the Right Fit
When clients hire us they get a team that collaborates closely and works seamlessly with lawyers who practice in many of the firm’s other areas. For example, because of the inherent interplay between IP and cybersecurity issues, our IP team members counsel clients on cybersecurity and data privacy matters and maintain a strong synergy with, and often work alongside, the firm’s team that focuses on that area. Across the entire partnership we reject myopic or “silo-ed” views of our clients’ problems and embrace tapping the talents and experience of our colleagues. Open and frequent communication and cooperation has long served as a hallmark of our firm’s work environment, and clients benefit greatly from this collegial culture.
Clients say they value our ability to understand sophisticated technology – an attribute gained from our backgrounds and training in such sciences as biology and biotechnology, chemistry, electrical engineering, computer science, and other areas. While we bring to our practice a fluency in technical language, which clients say they appreciate, we also know how to distill complex concepts into common parlance. This enhances our ability to serve clients and especially pays dividends in the courtroom as it gives us the capability to build a bridge connecting our client’s situation and interests with the judge and jury.
Our Innovative Approach
Called in for the Big Fight. Kaneka Corporation retained us to replace an outmatched legal team it had hired to work on patent infringement litigation to protect its novel method of producing a popular and beneficial nutritional supplement. The company selected us as its relief pitchers, so to speak, because of our experience in crafting creative strategies and out bench strength. It also valued our reputation as a well-positioned team in representing foreign plaintiffs and foreign patent holders in multi-jurisdictional litigation and making strategic decisions about how to maximize the chances for overall success. Because this matter was so important to our client, our team knew we needed boots on the ground so three of us traveled to China to personally conduct an inspection of a factory in support our efforts to prove infringement. We also took depositions in Hong Kong.
Advocates for Cutting-Edge Treatment. Freedom to Operate, Inc. hired us to represent it before the U.S. Patent and Trial Appeal Board as it sought legal help to protect the rights of all companies to research and develop psilocybin, the active ingredient in a type of mushroom, as a treatment for many different indications, including depression, migraines, and cluster headaches. The client knew that our lawyers often bring inventive solutions in many different areas. The client came to our team through the firm’s Trusts & Estates department, demonstrating our highly collaborative culture.
Our clients retain and refer us because of the many skills we exhibit in a wide range of IP-related legal services, including:
Patent Litigation and Invalidity Proceedings: In representing clients, our lawyers draw on extensive experience in all aspects of federal court actions at trial, and on appeal to the Federal Circuit, as well as patent invalidity proceedings before the United States Patent and Trademark Office (USPTO). These proceedings include inter partes reviews, post grant reviews, covered business method reviews, and ex parte reexamination proceedings. We have successfully litigated complex issues of infringement, invalidity, damages, and injunctions. Our team analyzes patents and renders opinions on patent validity and potential infringement.
Trademark and Copyright Enforcement and Litigation: We pursue and defend trademark, trade dress, and copyright claims in state and federal courts and before government agencies throughout the United States. Our lawyers handle issues such as likelihood of confusion and reverse confusion, secondary meaning in product configurations, dilution, substantial similarity, first sale, and fair use.
Trade Secret Disputes: We use our technical knowledge and experience in litigating high-stakes, non-competition litigation to craft and execute strategies to prosecute, defend, and avoid trade secret disputes. Our team represents clients in many different industries and closely monitors developments in New York and federal law, including the Defend Trade Secrets Act. We also represent companies and individuals accused of improperly using or disclosing another company’s trade secrets. Clients often turn to us to represent them in alternative dispute resolution matters relating to trade secrets and confidentiality disputes, including in different arbitration forums.
Licensing and Transfer: We help clients sell or license their patents, or obtain financing to do so. Our work extends to advising on all aspects of technology development or research license, including structuring. We transfer and license trademarks for both licensors and licensees in any technological, entertainment or consumer field. Additionally, our lawyers have extensive experience in copyright licensing and software licensing in a wide range of technologies.
Patent Prosecution: We prepare and prosecute patent applications in all technologies before the USPTO, including appeals to its Board of Appeals and to all federal appellate courts. In addition to representing our clients in patent reexamination, reissue, and post-grant review proceedings in the United States, we also coordinate the filing and prosecution of patent applications in virtually every country in the world. We do this in conjunction with our extensive network of trusted foreign associates.
IP Due Diligence: Our lawyers have handled IP due diligence in numerous substantial transactions involving an extensive array of industries.
Trademark Registration: We efficiently perform clearance searches and provide registrability opinions for our clients’ trade identifiers – company names, house brands, product marks, packaging, product and packaging configurations, sounds, and scents. We file and prosecute trademark applications directly in the USPTO and through our trusted international agents, including appeals, and represent our clients in trademark opposition and cancellation proceedings.
Domain Name and Social Media Enforcement: We file and defend Uniform Dispute Resolution Proceedings (UDRPs) to determine domain name ownership, as well as federal anti-cybersquatting and other e-commerce-related actions.
Copyright Registration: Our identifies and registers copyrighted works for clients in a wide variety of areas – computer software, written and other artistic works, character rights, still photography, television, recordings, fashion, financial services, consumer products, and web site design.