Intellectual Property

OVERVIEW

Strasburger’s intellectual property practice unit provides a host of services, including intellectual property management, advertising management, patent application, and trademark registration application, licensing, technology transfer, and trade secret, patent, trademark and copyright infringement litigation.

Our lawyers have experience across a broad range of industries, including automotive, telecommunications, technology and software development, manufacturing, healthcare, energy, agricultural, retail, entertainment, consumer products, transportation, printing and publishing. We represent small start ups and medium-sized companies, as well as multi-national corporations, hospitals and universities.

We have experience with diverse products, including athletic equipment, automotive equipment, business methods, cables and connectors, computer hardware and software, electronics, flow measurement and control equipment, GPS locating systems, lighting systems, manufacturing equipment, measuring equipment, mechanical technologies, medical devices, offshore oil product and transportation systems, oilfield drilling and production equipment, packaging, patient monitoring systems, pharmaceuticals, plant patents, pneumatic assembly and drilling tools, products of genetic engineering, refinery equipment, semiconductor fabrication, and telecommunications systems.

Our lawyers assist clients in maximizing return on their investment in intellectual capital by preparing and prosecuting patent applications, obtaining copyright and trademark registrations, negotiating license agreements, counseling on mergers and acquisitions, and enforcing intellectual property rights against infringers. We work closely with business executives to craft and implement business solutions in markets domestically, as well as in Central and South America, Canada, Asia and Europe. We assist clients in implementing intellectual property management programs so that research and development expenditures which result in important innovations are protected from competitors. In addition to identifying ways to protect intellectual property assets, we advise clients on their exploitation through commercial transactions, including licensing in/licensing out, joint development agreements, outsourcing agreements, joint ventures, and strategic alliances. We also assist clients in negotiating non-competition, confidentiality, employment, consulting, and merger/acquisition agreements.

Protecting our clients’ intellectual property rights from infringement, misappropriation, dilution, and counterfeiting is our top priority. We have lawyers who are trained in technology, as well as lawyers who are experts at explaining complex legal concepts in simple terms understandable by jurors without technical training. Our long standing reputation for the ability and the willingness to try cases enhances our ability to achieve negotiated resolutions. Our lawyers work closely with our clients to develop and execute strategies to obtain business objectives, whether those involve obtaining an injunction against a competitor, obtaining a monetary award, licensing technology, designing around a patent, or obtaining a declaratory judgment that a competitor’s patent is invalid. Where appropriate, we achieve our clients’ objectives through creative use of alternative dispute resolution techniques, such as negotiated settlements, mediations, arbitrations, or tactical summary judgments.

The firm’s practice area leaders are available to answer any questions about Strasburger’s capabilities. To learn more about this practice area, please contact Richard Fladung or John Tang.

EXPERIENCE

PATENTS

  • Crafted and negotiated family of technology transfer agreements for manufacturer expansion into third world countries.
  • Negotiated technology licenses between businesses with large difference in size.
  • Finalized prosecution for patent applications stuck in the U.S. Patent and Trademark Office.
  • Defended fabrication/manufacturing client against allegations of patent infringement and millions of dollars in damages. Formal opinion letters opining non-infringement of five asserted patents convinced patent holder that none of the patents asserted infringed any valid claims.
  • Won summary judgment of noninfringement of patent for adjustable post-op knee brace and court awarded global healthcare client attorneys’ fees. Plaintiff patent holder was forced into bankruptcy.
  • Defended a declaratory judgment suit brought in an attempt to invalidate importer client’s patent on a toy space gun. By counterclaim, toy importer client alleged patent infringement for the gun, unfair competition, copyright and trade dress infringement.
  • Settled a patent infringement case for defendant between competitors relating to patented downhole directional drilling mud motor and related equipment.
  • Settled a patent infringement case regarding electronic parts catalogs and software for preparation of customized product.

TRADEMARKS

  • Managed worldwide portfolio of trademark registrations for one of world’s best known trademarks.
  • Used diplomatic channels to resolve trademark misuse in Arab countries.
  • Devised packaging and trade dress strategy for major hardware retailer.
  • Obtained ex-parte temporary restraining order and seizure order under Lanham Act counterfeit statute and permanent injunction for patent and trade dress infringement.
  • Successfully asserted claims of trademark infringement, trademark dilution and unfair competition both federal and Texas along with trademark counterfeiting action against a domain name owner.
  • Defended national healthcare client against claim of trademark infringement, federal false representation, unfair competition and false advertising obtaining a settlement after a court ordered mediation
  • Successfully defended nationally-known radio station, national chain of auto dealerships, and national manufacturer, in major trademark, false advertising and copyright litigation.

COPYRIGHTS

  • Successfully tried copyright injunction and contract damages cases which the clients could not afford to lose.
  • Organized and conducted anti-counterfeiting investigations and seizures, with coordinated, extraordinary relief from federal courts.
  • Represented defendant contractor in favorable settlement of multiple cases alleging that contractor infringed upon copyright interests in architectural drawings.

ADVERTISING

  • Successfully defended multiple software defendants against causes of action of misappropriation, conversion and advertising injury, copyright infringement, fraud in the inducement, negligent misrepresentation, declaratory judgment, breach of contract, tortious interference and usury and asserted causes of action of breaches of contract, misappropriation, and conversion, breach of express warranty of ownership and breach of agreement (exclusive license) for a computer software system.
  • Obtained ex-parte temporary restraining order and seizure order conducted in Central District of California under Lanham Act counterfeit statute and permanent injunction for patent, trademark and copyright infringement.
  • Resolved major trade secret and false advertising lawsuit on favorable terms, without involving the client’s customers.

BLOG

gimp-phone-in-pocket-30934665

Apple v. Samsung – A Smartphone is More than Just a Pretty Face

Written by David Gorski on December 8, 2016

Since their initial release, smartphones have been a hot commodity with intense competition.  One particularly contentious issue has been their appearance.  During early development, Apple, Inc. (“Apple”) obtained several design patents covering the design of the now iconic appearance of the iPhone®, with its rectangular face, rounded edges, and grid of colorful icons on a Read More…


Formatted programming 28290109

Back from the Brink – Software Can Be Patent Eligible under 101

Written by David Gorski on September 23, 2016

Since the 2014 U.S. Supreme Court ruling on patent eligibility in Alice v. CLS Bank, patent holders and applicants have seen an almost unchecked string of patent ineligibility holdings in U.S. courts and U.S. Patent and Trademark Office decisions related to software-implemented patents. The Alice decision swept aside many inventions as unpatentable because they relied Read More…


Patent

On Sale or Not on Sale, That Is the Patent Question

Written by David Gorski on July 14, 2016

Under U.S. patent law, it is considered improper to market a product and, after realizing the product’s commercial viability, to then receive patent protection under U.S. patent law. A mechanism of U.S. patent law designed to prevent improper commercialization is the “On Sale Bar” found in 35 U.S.C. § 102.  Basically, the On Sale Bar Read More…


39495139 - copyright concept

US Supreme Court Adopts New Approach to Fee Awards in Copyright Lit

Written by Richard D. Fladung on June 17, 2016

Resolving disagreements in the lower courts about how to address attorney’s fees in a copyright case, in Kirtsaeng, DBA Bluechristine99 v. John Wiley & Sons, Inc., the United States Supreme Court held that while a district court should give “substantial weight” to the objective reasonableness of a losing party’s position, the district court “must” take Read More…


man holding the brief case with extra lock

New Defend Trade Secrets Act Is Game Changer

Written by David Gorski on May 26, 2016

On May 11, 2016 President Obama signed the Defend Trade Secrets Act into law, effective immediately.  The Defend Trade Secrets Act is the largest expansion of federal protection of intellectual property in over 70 years. Generally, trade secrets laws protect information that is not publicly known or is not readily available, such that the information Read More…


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Strasburger’s intellectual property practice unit provides a host of services, including intellectual property management, advertising management, patent application, and trademark registration application, licensing, technology transfer, and trade secret, patent, trademark and copyright infringement litigation.

Our lawyers have experience across a broad range of industries, including automotive, telecommunications, technology and software development, manufacturing, healthcare, energy, agricultural, retail, entertainment, consumer products, transportation, printing and publishing. We represent small start ups and medium-sized companies, as well as multi-national corporations, hospitals and universities.

We have experience with diverse products, including athletic equipment, automotive equipment, business methods, cables and connectors, computer hardware and software, electronics, flow measurement and control equipment, GPS locating systems, lighting systems, manufacturing equipment, measuring equipment, mechanical technologies, medical devices, offshore oil product and transportation systems, oilfield drilling and production equipment, packaging, patient monitoring systems, pharmaceuticals, plant patents, pneumatic assembly and drilling tools, products of genetic engineering, refinery equipment, semiconductor fabrication, and telecommunications systems.

Our lawyers assist clients in maximizing return on their investment in intellectual capital by preparing and prosecuting patent applications, obtaining copyright and trademark registrations, negotiating license agreements, counseling on mergers and acquisitions, and enforcing intellectual property rights against infringers. We work closely with business executives to craft and implement business solutions in markets domestically, as well as in Central and South America, Canada, Asia and Europe. We assist clients in implementing intellectual property management programs so that research and development expenditures which result in important innovations are protected from competitors. In addition to identifying ways to protect intellectual property assets, we advise clients on their exploitation through commercial transactions, including licensing in/licensing out, joint development agreements, outsourcing agreements, joint ventures, and strategic alliances. We also assist clients in negotiating non-competition, confidentiality, employment, consulting, and merger/acquisition agreements.

Protecting our clients’ intellectual property rights from infringement, misappropriation, dilution, and counterfeiting is our top priority. We have lawyers who are trained in technology, as well as lawyers who are experts at explaining complex legal concepts in simple terms understandable by jurors without technical training. Our long standing reputation for the ability and the willingness to try cases enhances our ability to achieve negotiated resolutions. Our lawyers work closely with our clients to develop and execute strategies to obtain business objectives, whether those involve obtaining an injunction against a competitor, obtaining a monetary award, licensing technology, designing around a patent, or obtaining a declaratory judgment that a competitor’s patent is invalid. Where appropriate, we achieve our clients’ objectives through creative use of alternative dispute resolution techniques, such as negotiated settlements, mediations, arbitrations, or tactical summary judgments.

The firm’s practice area leaders are available to answer any questions about Strasburger’s capabilities. To learn more about this practice area, please contact Richard Fladung or John Tang.

EXPERIENCE

PATENTS

  • Crafted and negotiated family of technology transfer agreements for manufacturer expansion into third world countries.
  • Negotiated technology licenses between businesses with large difference in size.
  • Finalized prosecution for patent applications stuck in the U.S. Patent and Trademark Office.
  • Defended fabrication/manufacturing client against allegations of patent infringement and millions of dollars in damages. Formal opinion letters opining non-infringement of five asserted patents convinced patent holder that none of the patents asserted infringed any valid claims.
  • Won summary judgment of noninfringement of patent for adjustable post-op knee brace and court awarded global healthcare client attorneys’ fees. Plaintiff patent holder was forced into bankruptcy.
  • Defended a declaratory judgment suit brought in an attempt to invalidate importer client’s patent on a toy space gun. By counterclaim, toy importer client alleged patent infringement for the gun, unfair competition, copyright and trade dress infringement.
  • Settled a patent infringement case for defendant between competitors relating to patented downhole directional drilling mud motor and related equipment.
  • Settled a patent infringement case regarding electronic parts catalogs and software for preparation of customized product.

TRADEMARKS

  • Managed worldwide portfolio of trademark registrations for one of world’s best known trademarks.
  • Used diplomatic channels to resolve trademark misuse in Arab countries.
  • Devised packaging and trade dress strategy for major hardware retailer.
  • Obtained ex-parte temporary restraining order and seizure order under Lanham Act counterfeit statute and permanent injunction for patent and trade dress infringement.
  • Successfully asserted claims of trademark infringement, trademark dilution and unfair competition both federal and Texas along with trademark counterfeiting action against a domain name owner.
  • Defended national healthcare client against claim of trademark infringement, federal false representation, unfair competition and false advertising obtaining a settlement after a court ordered mediation
  • Successfully defended nationally-known radio station, national chain of auto dealerships, and national manufacturer, in major trademark, false advertising and copyright litigation.

COPYRIGHTS

  • Successfully tried copyright injunction and contract damages cases which the clients could not afford to lose.
  • Organized and conducted anti-counterfeiting investigations and seizures, with coordinated, extraordinary relief from federal courts.
  • Represented defendant contractor in favorable settlement of multiple cases alleging that contractor infringed upon copyright interests in architectural drawings.

ADVERTISING

  • Successfully defended multiple software defendants against causes of action of misappropriation, conversion and advertising injury, copyright infringement, fraud in the inducement, negligent misrepresentation, declaratory judgment, breach of contract, tortious interference and usury and asserted causes of action of breaches of contract, misappropriation, and conversion, breach of express warranty of ownership and breach of agreement (exclusive license) for a computer software system.
  • Obtained ex-parte temporary restraining order and seizure order conducted in Central District of California under Lanham Act counterfeit statute and permanent injunction for patent, trademark and copyright infringement.
  • Resolved major trade secret and false advertising lawsuit on favorable terms, without involving the client’s customers.
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