Intellectual Property Litigation
Practice Leaders: Paul J. Kennedy, Goutam Patnaik and Thomas F. Fitzpatrick
Pepper Hamilton LLP’s Intellectual Property Practice Group is an interdisciplinary team that procures intellectual property rights, and litigates or otherwise resolves intellectual property problems.
Our lawyers are capable and experienced in all intellectual property areas, including patents, copyrights, trademarks, trade secret protection, unfair competition, false advertising, and defamation, publicity and privacy issues. We also handle computer-related transactions and litigation, telecommunications, domestic and international technology transfer, author/publisher relations and U.S. government proprietary rights regulation.
We are particularly strong in patent litigation. We handle patent litigation for a wide range of corporations and private businesses, from Fortune 100 to venture capital-driven and other growth-oriented companies. Because of our trial experience, we have been designated as lead trial counsel in major patent infringement and trade secret cases. We also are experienced in conducting interference proceedings before the U.S. Patent and Trademark Office and in conducting IP audits and due diligence analyses in transactional matters.
Trademarks and Copyrights
- represented the owner of a worldwide portfolio of wireless communications patents in a patent licensing arbitration against a Japanese telecommunications company, resulting in a favorable settlement following a six-day hearing; the settlement included a $53 million cash payment to our client for past-due royalties and a new license agreement covering new technology
- handled litigation involving infringement and validity of patents for high-speed egg-processing machinery; obtained jury verdict of non-infringement for client as to all asserted claims of four patents at issue
- handled patent infringement suit involving uninterruptable power supply products; settled after two days of testimony for $48 million payment to client for a license under patents
- favorably settled patent infringement claims for medical device manufacturer.
We counsel clients on obtaining trademarks and copyrights, perform searches and render viability opinions. We file hundreds of applications to register trademarks and copyrights each year, and monitor thousands of domestic and foreign registered trademarks. We often represent trademark and copyright owners in actions against persons selling pirated, bootleg and counterfeit goods. The group also helps numerous composers, authors, software developers and publishers protect their copyrighted works from unauthorized copying, distribution and performance.
Members of the Intellectual Property Group also practice before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board in cancellation and opposition proceedings. Representative Engagements
Trade Secret Protection
- prevailed in numerous federal court enforcement actions on behalf of members of the American Society of Composers, Authors & Publishers and the Recording Industry Association of America, owners of copyrights in musical compositions and sound recordings
- brought multiple trademark counterfeit seizure actions on behalf of national backpack manufacturer in various federal courts where numerous seizure orders were obtained, resulting in the appropriation of thousands of counterfeit backpacks
- prosecuted and defended numerous successful opposition proceedings before the Trademark Trial & Appeal Board for trademark infringement on behalf of a national clothing manufacturer and sports memorabilia company
- defended several right of publicity cases brought by alleged celebrities seeking protection for their likeness
- for members of the American Society of Composers, Authors and Publishers, successfully prosecuted scores of copyright infringement actions against establishments performing non-dramatic musical works without a license
- on behalf of a rug designer, achieved favorable settlement of copyright infringement and Section 43(a) claim against an importer and major retail catalog company.
We are experienced in preparing domestic and international trade secret licenses and crafting corporate confidentiality, security and non-competition programs. We enforce these protections in many fields, including computer software design, petrochemical product formulae and retail customer list protections. Representative Engagements
Unfair Competition, False Advertising, Deceptive Trade Practices
- successfully litigated several cases involving the right of employers to protect trade secrets and confidential information in the hands of competing former employees
- successfully defended an insurance company in a five-week trial against charges that it stole the plaintiff’s trade secrets
- advised numerous clients regarding restrictive covenants in employment agreements in several jurisdictions
- represented a major pharmaceutical company in prosecuting an action for misappropriation of trade secrets and defending claims of libel, false light and breach of contract.
Part of Pepper's practice focuses on advertising, particularly the problems and concerns of nationally oriented advertisers. Companies in this environment face a patchwork of federal, state and quasi-public regulations that increasingly affect ad campaigns and call for pre-release review of many types of product claims. In addition, we handle private litigation between advertisers over comparative claims, product misdescriptions, palming off and disparagement. Representative Engagements
Defamation, Publicity, Privacy Rights
- settled on favorable terms for a national check printing company a false advertising claim brought by a competitor involving the quality of MICR encoding on personal checks
- favorably settled false advertising and trademark infringement claims made against an orthopedic brace manufacturer.
Pepper is experienced in the intellectual property-related areas of defamatory torts and claims of rights in personality. For example, we successfully defended a scientist's claim of promotional rights in his published research and claim of libel for its use in ways he did not approve. We secured for another client the unfettered right to trade upon the surname of an inventor who had allowed his name to become the generic term for a series of medical instruments. We also conduct pre-publication review of articles and books for several publishers.