IP Litigation

When litigation and other IP enforcement controversies arise, experienced trial lawyers at Hamilton Brook Smith Reynolds are ready to protect and advance the interests of clients, both as plaintiffs and as defendants. Our firm has a proven record in litigation representing clients that range from Fortune 500 companies with hundreds of millions, if not billions, of dollars in dispute to individuals with modest amounts at stake but who can constitute “bet the company” disputes. In addition to representing clients in Massachusetts federal and state courts, our firm's litigators have been lead counsel in cases in New Hampshire, Maine, New York, New Jersey, Delaware, Texas, California, Illinois, and elsewhere around the country.

Our firm's philosophy in litigation and other disputed matters is that success means achieving the client's overall business goal. Sometimes that goal is best achieved by vigorously fought litigation. At other times, negotiation, mediation, or arbitration may be more advantageous. Therefore, we believe that close communication with the client is the key to developing a successful strategy adapted to the client's particular needs. The strategy also must be constantly reevaluated as the matter develops. Attention to costs is a critical component of our communications to ensure that the strategy fits the dispute's practical value as well as the client's current and long-term budget realities.

Our firm's litigators have extensive experience in matters as diverse as patent infringement, trade secret misappropriation, disputes over agreements for employee invention assignment, license disputes, invention ownership disputes arising from joint research and development projects, trademark infringement and counterfeiting, and copyright infringement.

Our IP litigation services include:

  • Pursuing litigation to protect IP rights in federal and state courts across the country
  • Participating in alternative dispute resolution (ADR) activities to reach resolutions at a lower cost
  • Defending against claims accusing clients of infringement or other improper actions
  • Pursuing appeals from errors at trial
  • Providing advice on resolving disputes without engaging in litigation

In addition to their own legal and technical backgrounds, our litigators draw on the full technical expertise of our firm's other lawyers and technical specialists to tailor the staffing of matters to clients’ particular needs.
 

View our litigation brochure!  View our full brochure!

IP Litigation
Overview

When litigation and other IP enforcement controversies arise, experienced trial lawyers at Hamilton Brook Smith Reynolds are ready to protect and advance the interests of clients, both as plaintiffs and as defendants. Our firm has a proven record in litigation representing clients that range from Fortune 500 companies with hundreds of millions, if not billions, of dollars in dispute to individuals with modest amounts at stake but who can constitute “bet the company” disputes. In addition to representing clients in Massachusetts federal and state courts, our firm's litigators have been lead counsel in cases in New Hampshire, Maine, New York, New Jersey, Delaware, Texas, California, Illinois, and elsewhere around the country.

Our firm's philosophy in litigation and other disputed matters is that success means achieving the client's overall business goal. Sometimes that goal is best achieved by vigorously fought litigation. At other times, negotiation, mediation, or arbitration may be more advantageous. Therefore, we believe that close communication with the client is the key to developing a successful strategy adapted to the client's particular needs. The strategy also must be constantly reevaluated as the matter develops. Attention to costs is a critical component of our communications to ensure that the strategy fits the dispute's practical value as well as the client's current and long-term budget realities.

Our firm's litigators have extensive experience in matters as diverse as patent infringement, trade secret misappropriation, disputes over agreements for employee invention assignment, license disputes, invention ownership disputes arising from joint research and development projects, trademark infringement and counterfeiting, and copyright infringement.

Our IP litigation services include:

  • Pursuing litigation to protect IP rights in federal and state courts across the country
  • Participating in alternative dispute resolution (ADR) activities to reach resolutions at a lower cost
  • Defending against claims accusing clients of infringement or other improper actions
  • Pursuing appeals from errors at trial
  • Providing advice on resolving disputes without engaging in litigation

In addition to their own legal and technical backgrounds, our litigators draw on the full technical expertise of our firm's other lawyers and technical specialists to tailor the staffing of matters to clients’ particular needs.
 

View our litigation brochure!  View our full brochure!

Representative Experience
    • Representing a client in a patent infringement matter involving a multi-billion dollar drug.  Our client had valuable “first filer” status and, thus, rights to limited market exclusivity.  Persuaded the brand pharmaceutical company that our client did not infringe its patents. No suit was ever filed and our client was able to go to market with very valuable 180-day exclusivity rights.
    • Represented a computer hardware manufacturer in an action brought in the Northern District of Georgia by a Non-Practicing Entity.
    • Represented a biotechnology company in a dispute with another company regarding ownership of patent rights.  We developed an informal litigation approach in which both sides presented evidence and view points over several months which resulted in a favorable settlement for our client in an amicable context that enabled our client to have continued business relations with the other party.
    • Advised a major electronic goods manufacturer on enforcement and pre-litigation strategy relating to its multi-billion dollar patent portfolio.
    • Defended a major communications company against a patent infringement action brought by a nonpracticing entity. Also defended the same communications company in a separate infringement action brought by a different nonpracticing entity on different patents.
    • Defended a major internet services company in a suit brought by a nonpracticing entity, favorably settling before trial.
    • Represented clients in four separate appeals to the Federal Circuit, relating to such diverse technologies as contact lens chemistry, pharmaceutical technology, automobile user interfaces, and banking systems.
    • Advised a major pharmaceutical company on how to minimize risk in its collaboration with an outside manufacturer.
    • Counseled a major research hospital on a strategy for minimizing potential risks involved in licensing a portfolio of novel drugs.
    • Advised an international consumer goods manufacturer on the protection of its internationally recognized trademark in the U.S. marketplace.
    • Represented two major companies in patent litigation relating to light-emitting diodes (LEDs).
    • Defended a large telecommunications company at the Patent Trial and Appeal Board in an Inter Partes Review (“IPR”) Proceeding.
    • Represented a medical device manufacturer in both offensive and defensive patent litigations against a major rival.
    • Represented a major hospital in ANDA litigation relating to its novel anticancer drug, successfully settling before trial.
    • Successfully represented a major integrated circuit manufacturer in patent litigation against its chief rival.
    • Defended a patent infringement action that involved LED backlight technology and light enhancing films in the U.S. District Court for the District of Delaware. We formulated a defense strategy that included expedited discovery and mediation to achieve a favorable settlement for our client on the eve of our taking the inventor’s deposition.
    • Represented a leading maker of data storage devices against a “Non-Practicing Entity” that involved filing a declaratory judgment action in a favorable jurisdiction and aggressively pursuing non-infringement defenses. The strategy resulted in a very favorable settlement for our client early in the litigation.
    • Represented software developers in an action brought in the Eastern District of Texas and other jurisdictions by a Non-Practicing Entity.
    • Represented an international research and development company in litigation in the U.S. District Court for the Eastern District of New York, as well as a related arbitration, against a licensee of the client’s patents that involved video recorder technology. After a three-week trial, our client received a judgment that exonerated it of all alleged improprieties and vindicated its early termination of the license.
    • Represented a patent owner in an infringement action involving telecommunications technology in the U.S. District Court for the District of New Jersey. We successfully disqualified the defendant’s law firm, a major New York City patent law firm, and the case settled thereafter on terms favorable to our client.
    • Represented a plaintiff in successive patent jury trials in the Northern District of California involving components for printed circuit boards.  The first trial resulted in a finding of validity and infringement in the liability phase and subsequent contempt citations against the defendant for new designs.  The case settled prior to the damage phase with the defendant agreeing not to market any infringing product.  The second trial resulted in the jury finding willful infringement of a redesigned product, with increased damages and attorneys’ fees awarded by the court.
    • Defended a patent infringement action brought by a Fortune 50 consumer products company against a startup. The plaintiff owned several patents on global position system technology to track vehicle locators. The client quickly obtained a favorable resolution of the matter.
    • Represented an academic institution in a patent case against a major technology corporation for infringement of a patent related to speech analysis, compression and transmission. We developed a successful cost-saving strategy of inducing the court to change its usual practice for the timing of Markman hearings, thereby achieving an early summary judgment hearing after only limited discovery.
    • Represented a leading developer of sports and entertainment ticketing technology in a patent infringement action against a larger industry competitor in the U.S. District Court for the District of Delaware. The technology involved an electronic ticketing system.
    • Represented a leader in the entertainment promotion industry and patent owner in various actions against an industry competitor involving a patented promotional method and device in the U.S. District Courts for the Southern District of New York and District of Delaware.
    • Defended a manufacturer of telecommunications hardware in a multi-defendant action filed in the Eastern District of Texas by a “Non-Practicing Entity.” We succeeded in obtaining dismissal with prejudice of our client from the action with no payment to the plaintiff.
    • Represented the defendant in patent infringement litigation regarding networking hardware, such as switches, routers, and IP phones.  The patent was found invalid.
    • (Eastern District of Texas) Network-1 Security Solutions v. Cisco et al. Represented defendant Foundry Networks in patent infringement litigation regarding Power Over Ethernet switches and powered devices. After four days of trial, the case settled favorably.
    • (Central District of California) Represented the plaintiff in enforcing patent claims relating to medical devices against a competitor.
    • (District of Delaware) Cisco Systems, Inc. v. Conversant Intellectual Property Management, Inc. Represented Conversant in enforcing six patents regarding certain networking equipment (e.g., switches, routers, wireless access points, and IP Phones) having Power over Ethernet functionality in the District of Delaware.
    • (U.S. International Trade Commission) In the matter of Certain Equipment for Communications Networks, including Switches, Routers, Gateways, Bridges, Wireless Access Points, Cable Modems, and IP Phones. Enforced six patents regarding networking equipment (e.g., switches, routers, gateways, bridges, wireless access points, cable modems, and IP Phones) having Power over Ethernet functionality in the District of Delaware.
    • Represented a leading maker of data storage devices against a “Non-Practicing Entity” that involved filing a declaratory judgment action in a favorable jurisdiction and aggressively pursuing non-infringement defenses.  The strategy resulted in a very favorable settlement for our client early in the litigation.
    • Represented a large international software company in an action brought in the Eastern District of Texas by a Non-Practicing Entity that resulted in a favorable settlement after a period of focused discovery.
    • Prepared combined software-hardware use license with service agreements for a corporate maker of chemical and bio-tech manufacturing process equipment and components.
    • Counseled a major computer industry corporation on use of open source software components and effects for future software product release, upgrade download and access to supporting libraries/files.
    • Negotiated a settlement of an alleged infringement claim against a medical device manufacturer that resulted in a cross license of limited scope, thereby removing a cloud over our client's entire business.
    • Represented the patent owner in an infringement action involving genetic diagnostic testing procedures which included a contempt motion to enforce an injunction entered against the defendant.  The defendant agreed to an expanded permanent injunction and a substantial payment toward our client’s attorneys’ fees.
    • Defended several different pharmaceutical companies in several different patent infringement actions in the U.S. District Court for the District of New Jersey and elsewhere, involving pharmaceutical formulations.  We were able to negotiate favorable settlements for our client that were each reviewed without objection by Federal Trade Commission.
    • Represented a Fortune 500 company in enforcement litigation of a group of its biotech patents. The case resulted in a settlement payment of more than 60% of the infringer’s gross revenue on its infringing sales, a permanent injunction, and the sending of a joint letter to the infringer’s customers urging them to make their future purchases from our client.
    • Defended an S&P 500 international biosciences company in a multi-party lawsuit alleging infringement of patents directed to molecular cloning and expression of protein coupled receptors. We achieved an early dismissal of our client from the case with prejudice and a favorable license agreement.
    • Represented a biotechnology patent owner in an infringement action involving zebrafish assays resulting in the defendant ceasing all infringing activity. We pursued defendant in subsequent bankruptcy proceeding to achieve successful result for the client.
    • Representing several different branded pharmaceutical companies in litigation “war games” that allowed our clients to foresee possible strategies and tactics that a generic might use to avoid patent portfolios on very valuable brand pharmaceutical products. As a result of each of the war games, our clients were able to develop appropriate strategies under the Hatch-Waxman amendments to the Federal Food Drug Cosmetics Act and tighten their patent estates to thwart likely generic strategies even before litigation was commenced.
    • Represented a biotechnology company in a dispute with another company regarding ownership of patent rights. We developed an informal litigation approach in which both sides presented evidence and view points over several months which resulted in a favorable settlement for our client in an amicable context that enabled our client to have continued business relations with the other party.
    • Defended several different pharmaceutical companies in numerous patent infringement cases arising under the Hatch-Waxman Amendments in actions in the U.S. District Court for the District of New Jersey and elsewhere, involving pharmaceutical formulations and other pharmaceutical technology.  Favorable settlements were each reviewed without objection by the Federal Trade Commission.
    • Represented a generic pharmaceutical company in a patent infringement matter involving a multi-billion dollar drug. Our client had valuable “first filer” status and, thus, rights to limited market exclusivity. We persuaded the brand pharmaceutical company that our client did not infringe its patents. No suit was ever filed and our client was able to go to market with very valuable 180-day exclusivity rights.
    • Represented a biotechnology patent owner in an infringement action involving special assays technology resulting in the defendant ceasing all infringing activity.
    • Counseled a start-up biomedical and diagnostic company in negotiating a license to platform technology.
    • Counseled a start-up biologics company in a licensing agreement with a major university covering a joint research project and associated development of intellectual property rights.
    • Negotiated a long-term business relationship between our client, a major genetic diagnostic company, and a research organization under which our client sponsored a research program by the other party to develop the underlying technology for a major new business segment.  The negotiations centered on creating a structure for allocating ownership and other IP rights in the various developments produced by the research program depending on the development's ultimate commercial value.
    • Defended a patent infringement action involving oil refinery technology in the U.S. District Court for the Southern District of Texas. After summary judgment of patent invalidity was affirmed on appeal, the patent owner paid our client a high six-figure amount toward its litigation defense costs. We also identified insurance policies which led to our client’s receiving a further mid-six figure amount toward its litigation defense costs.
    • Defended a succession of patent infringement claims in the U.S. District Court for the District of Connecticut, as well as in related arbitrations, involving molded plastic chamber technology. The controversy included a counterclaim by our client for infringement of a design patent. In each proceeding, our client either prevailed after a trial on the merits or was able to settle the proceeding on favorable terms.
    • Defended an action in the District of New Hampshire involving alleged infringement of several patents directed to a chemical composition for stripping metal, the action having been brought by the industry leader.  The action successfully concluded with a reformulation of the compounds to avoid any infringement and without any payment by our client to the patent holder.
    • Defended an International Trade Commission action that involved in-line skates. We represented a U.S. based skate importer and successfully concluded the proceeding with a negotiated license at a minimal royalty. The client was able to continue to import with minimal impact on its business.
    • Defended a start-up company in two separate actions filed in the Central District of California based on patents related to hinge and latch designs. The actions were successfully resolved with dismissal of the infringement claims with prejudice and no payments by our client to the patent owner. In addition, our client received royalty-free licenses.
    • Represented a Taiwan-based manufacturing firm against infringement claims under two patents asserted by a multinational company. We succeeded in obtaining summary judgment of non-infringement on one of the patents, which led to successful mediation that resolved the claims under the other patent.
    • Enforced multiple patents on pool cue couplers by prosecuting actions against competitors. Each action resulted in consent judgments in favor of our client.
    • Represented numerous financial institutions and venture capital firms on providing assessment of litigations and likely results. This information was used by our clients to develop strategies for equity and debt trading, or as part of an overall due diligence assessment of “litigation health” of target companies.
    • Represented a manufacturer of medical testing equipment in patent litigation against a competitor.  The client obtained a judgment of infringement and a permanent injunction against the competitor.
    • Defended against allegations of infringement of patents in the semiconductor manufacturing field by taking the offensive to enforce our client’s own patent on related technology. We carried out strategic discovery that resulted in a resolution that was favorable to our client.
    • Represented the owner of patent relating to semiconductor manufacturing in an infringement action in which we were successful in securing a preliminary injunction against the defendant’s continued infringement. Thereafter, we succeeded in having the defendant found in contempt, and were awarded attorneys’ fees even though the injunction was dissolved based on newly discovered prior art.
    • Defended against allegations of infringement of optical instrument patents against a competitor.
    • Represented a manufacturer of medical testing equipment in patent litigation against a competitor.  The client obtained a judgment of infringement and a permanent injunction against the competitor.
    • Defended a company accused of patent infringement and achieved a favorable settlement as a result of an aggressive discovery strategy which questioned the enforceability of the asserted patent.
    • Enforced a patent on gel bean bag positioners against a market place competitor in the District of Massachusetts.
    • Negotiated an expansion of a limited field of use license to enable our client to launch a new product line.
    • Defended a manufacturer of oxygen flow valves in a trade secret, trade dress and unfair competition action in the District of Indiana.  After a two-day evidentiary hearing, the judge refused to enter a preliminary injunction, and as a result, the plaintiff voluntarily dismissed all of its claims, thereby enabling our client to continue business and become the leading company in the field.
    • Represented a Fortune 500 company in an action for misappropriation of trade secrets involving imaging technology that had a value of tens of millions of dollars. We developed evidence of the misappropriation through an analysis of e discovery obtained from the defendant, which resulted in a successful resolution under a confidential settlement agreement.
    • Represented a manufacturer of wave guides in a trade secret dispute. We developed a program that included discovery and other fact finding without any court action ever being filed, thereby providing both parties with a fair assessment of their dispute and a favorable settlement for our client.
    • Represented a technology development consulting firm against one of its clients that is among the world’s largest integrated circuit manufacturers, for misappropriation of our client’s intellectual property rights in certain MEMS technology.  The conflict was resolved by the manufacturer assigning to our client the patent applications that the IC manufacturer had filed on the inventions. In addition, the IC manufacturer paid our client’s legal fees.
    • Represented a client against a software developer for breach of a contract relating to a digital publishing platform.  After we uncovered the defendant’s violation of a preliminary injunction that we had secured, we had the defendant held in contempt of court and were able to settle the matter with a seven-figure payment to our client that included legal fees.
    • Defended a major franchisor in litigation by a competitor who alleged that the client’s new nationwide identity program infringed the competitor’s registered trademark.  After we asserted a counterclaim that the competitor’s own trade name infringed one of our client’s marks, the case was settled on favorable terms that included a concurrent use agreement.
    • Defended a leader in the entertainment promotion industry in an action filed by a competitor in the Southern District of New York for trademark infringement and unfair business practices relating to comparative advertisement. We identified and pursued counterclaims directed to the competitor’s activities that resulted in a prompt and favorable settlement for our client.
    • Defended a computer hardware provider in a trademark opposition brought by a major data processing company.  We were successful in an appeal before the Court of Appeals for the Federal Circuit in upholding the dismissal of the opposition against our client’s application, and our client’s trademark became registered.
    • Represented a developer to enforce copyright in architectural plans against an architectural firm and real estate developer. We successfully resolved the matter with each of the defendants prior to trial, resulting in a recovery for our client based on the defendants’ profits from the sale of infringing units.
    • Represented a trademark owner in an infringement action in the high-end jeans industry.  We forced settlement on the eve of the trial on terms favorable to our client, including change in the defendant company’s identity and transfer of its domain name to our client.
    • Represented trademark owner in infringement action in the medical device industry.  We reached settlement before the defendant answered the complaint, under which the defendant changed its corporate and domain names and stopped it use of our client’s trademark.
    • Represented a Fortune 100 Company in two trademark oppositions. In one, the adverse party agreed to restrict the use of its trademark worldwide and to restrict its future applications to register its mark. In the other, the adverse party agreed to cease using the mark and to withdraw its application to register a confusing mark.
    • Represented a trademark owner in the high fashion industry in a trademark opposition that prevented the registration of a confusingly similar trademark.
    • Represented a nationwide retailer accused of trademark infringement in a state court action. We succeeded in obtaining summary judgment in favor of our client by showing, through the plaintiff’s own testimony, that the channels of trade were not the same.
    • Represented the owner of a service mark in the dermatologic and cosmetic field in an infringement action in the U.S. District Court of Southern California. The action resulted in a favorable outcome with the defendant taking a license under the control of our client, thereby protecting our client’s brand.
    • Represented a trademark owner in an infringement action for electronics products in which we obtained a preliminary injunction that forced a settlement that included a permanent injunction and payment of our client’s attorney fees.
    • Represented a client in an online trademark and copyright infringement action relating to collectible sculptural works. We secured a successful result with the infringers’ ceasing infringing activities on the eBay® website by use of the “take down” procedures.
    • Represented a prominent healthcare company in a trademark dispute against a startup company’s website, resulting in the competitor ceasing its misuse of our client’s trademarks.
    • Represented a renowned research institution in a trademark infringement action against a publisher.  We quickly reached settlement on terms favorable to our client, including a change of the defendant’s corporate and domain names and cessation of its use of our client’s trademark and the entry of a consent judgment against the defendant.
    • Represented a manufacturer of consumer electronics equipment in an unfair competition action in the District of New Hampshire against an unauthorized reseller.  The litigation settled under an arrangement with the defendant ceasing its unauthorized sales.
    • Represented a brand manufacturer of communication and computer peripheral hardware against a new retailer that adopted a similar name.  We developed a strategy to send a cease-and-desist letter at the same time that we filed an infringement action, which led to a quick settlement in which the infringer stopped all use of the infringing name and phased over to a new identity.
    • Represented owner of social networking, media, and thought exchange website in a trademark dispute with an internet forum of similar scope and purpose, and were successful in securing an injunction.  The defendant attempted to dissolve the injunction and to move the case out of Massachusetts.  Against a barrage of motions, we succeeded in keeping the defendant from dismissing the case or moving it.  We were also successful in keeping the injunction in force, resulting in a finding of contempt against the defendant for violating the injunction.  The case ended with the defendant changing its name.
    • Represented the owner of trademarks in social networking space against another company with an infringing domain name and trademark.  The matter ended with the other company changing its name.
    • Represented a registrant in a cancellation proceeding for a service mark for vacation rentals in Italy to the general public and business entities. We were successful in securing termination and dismissal of the cancellation proceeding.
    • Represented major digital marketing company in trademark dispute, sending cease-and-desist letter resulting in infringer ceasing all infringing activity without the expense of a lawsuit.
    • Represented a major digital marketing client in a copyright dispute relating to a marketing information document.  We prepared and sent a cease-and-desist letter resulting in the infringer ceasing all infringing activity without the expense of a lawsuit.
    • Represented a publishing company in Federal Court in a copyright infringement and computer fraud and abuse action against a competing company, and successfully obtained an injunction.
    • Represented plaintiffs in the digital marketing industry in trademark action in district court, resulting in very favorable settlement agreement enjoining defendants from use of mark.
    • Represented the junior party, a startup biotech company, against an international pharmaceutical company in a Patent Office Interference involving a recombinant protein. We established the priority rights of our client and obtained the patent for them despite having the second filing date and the second invention date.
    • Represented the senior party in a patent interference involving encapsulated cells producing viral particles. The opposing party conceded priority of the subject matter of the interference and requested judgment adverse to it.
    • Represented a major research-based pharmaceutical company in an interference involving antibodies and ligands.  Even though our client was the junior party, the opposing party requested judgment adverse to it shortly after the interference was declared.
    • Represented a major research-based pharmaceutical company as the senior party in a patent interference involving a human cytokine.  After the parties filed initial papers and a list of preliminary motions, we achieved a settlement that included a process for determining priority of invention. Upon determining priority, the opposing party requested judgment adverse to it.
    • Represented a major medical diagnostic service provider in connection with a patent application involving a nucleic acid.  We developed a strategy that resulted in the issuance of patents on noninterfering subject matter, without the expense of an interference.
    • Represented a leading international research institution as the junior party in a patent interference involving nucleic acids and proteins. We succeeded in determining priority as to a number of interfering inventions and were successful in requesting that the Patent Office redeclare the interference to add multiple patent applications and counts. As a result, a patent issued to our client.
    • Represented a major research-based pharmaceutical company as the senior party in a patent interference involving an enzyme.  Our client was awarded priority on the interfering subject matter, and the application proceeded to issuance as a patent.
    • Represented a substantial biotechnology company as the junior party in a patent interference involving a cross-linked protein composition. After the interference was declared, we were able to negotiate a favorable settlement under which our client obtained a license with only a nominal royalty.
    • Represented a biotechnology company as the senior party in a patent interference involving a method of treating a disease with an antibody. The opposing party conceded priority of the subject matter of the interference, and requested judgment adverse to it, after two of its noninterfering claims were removed from the interference.
    • Represented a small manufacturer in a patent interference and litigation arising out of a contract dispute over payment for services and ownership of technology involving an induction foil cap sealer. We obtained a settlement that was favorable to our client.
    • Represented a world-renowned cancer research and treatment hospital as the junior party in related patent interferences involving DNA, protein and method claims. Even though we represented the junior party, the opposing party conceded priority as to the most significant claims, resulting in the entry of judgment adverse to the opposing party on those claims.
    • Represented a leading manufacturer of optical products in a patent interference proceeding against a global competitor involving reflective film.  We settled the matter with a favorable patent cross license.
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