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

Texas Ethics Opinion Weighs In On Online Investigative Research

Written by Kathryne ("Kate") M. Morris on March 20, 2018

A recent Texas Ethics Opinion, Ethics Opinion 671, holds that lawyers may be subject to discipline for anonymously contacting third-parties for the limited purpose of obtaining identifying or jurisdictional information about that third-party. Ethics Opinion 671 responds to an inquiry which asked the Ethics Committee to answer the following question: Whether an attorney or attorney’s Read More…


SEC Updates Guidance on Cybersecurity Disclosures

Written by Kathryne M. Morris, Charles M. Hosch on February 23, 2018

On Wednesday, February 21, 2018, the Securities and Exchange Commission (SEC) issued updated guidance regarding cybersecurity disclosures, explaining that “[i]n light of the increasing significance of cybersecurity incidents,”  it is “critical” for investors to be timely informed about “material cybersecurity risks and incidents” – even in companies which may not yet have been a target Read More…


Cyber Security Roundtable Features Tips for Keeping Cyber Safe

Written by DKBinnovative on January 24, 2018

Story by DKBinnovative. Dallas businesses wanting to keep computer savvy and cyber safe amid the growing climate of hacks, ransomware and security breaches had the opportunity to learn about the latest tips and technology facing organizations at a Jan. 17, 2018, cyber security roundtable, “Cyber Threats Facing Businesses in 2018.” “It was a wonderful opportunity to sit down Read More…


Providing Conditions May Help Establish Patent Infringement

Written by David Gorski on January 8, 2018

In Travel Sentry, Inc. v. David Tropp (Fed. Cir. 2017), the Federal Circuit clarified two or more parties can commit patent infringement of a method patent if one of the parties is conditioning the other(s). This ruling may open the doors for patent holders to succeed in infringement cases against parties that appeared to be Read More…


FAQ: What Happens To Intellectual Property Rights In Bankruptcy?

Written by Duane Brescia on July 25, 2017

Strasburger & Price partner Duane J. Brescia provides Oil & Gas Investor with a guide to intellectual property rights for oil and gas companies going through bankruptcy. Subscribers can read the full article here.


NEWSLETTER

MEDIA

HONORS

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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