Intellectual Property This material may constitute Attorney Advertising in some jurisdictions. Prior results do not guarantee a similar outcome.
Dear Clients, Colleagues and Friends, Over the past year, Chadbourne s Intellectual Property Group has achieved numerous successes for our clients in the patent, copyright and trademark space, including last October, where Chadbourne successfully obtained a temporary restraining order and preliminary injunction preventing a foreign company from selling a product in the United States that infringes on patents held by Chadbourne s client. Chadbourne s work in intellectual property has received recent accolades, including being ranked #1 by US News and World Report as the Law Firm of the Year in Copyright Law. Awards like these are a testament to the many talented and dedicated lawyers in the group. Over the last several years, Chadbourne has been trusted in the development and management of patent and trademark portfolios for numerous world renowned companies, including CBS, Time Warner, Verizon, Credit Suisse, Goldman Sachs, Bad Boy Records, Priceline.com, Monster.com and VISA. These clients choose Chadbourne as trusted counsel because of our team of experienced litigators, prosecutors, and IP counselors, many of whom have advanced degrees and in-house industry experience, including the former Chief Patent Counsel for Credit Suisse. It is this type of experience that gives Chadbourne a distinct advantage in the marketplace when it comes to understanding our clients needs and managing costs from an in-house perspective. When it comes to patent litigation, Chadbourne stands out among its peers. The benchmark of our practice is that we combine our IP Group s deep technical and scientific knowledge with Chadbourne s world renowned trial litigators, such as Abbe Lowell, who was recently named by the National Law Journal as one of The Most Influential Lawyers in America. Working together, Chadbourne s lawyers are able to take the complicated technology regularly found in patent cases and make it clearly understood by both judges and juries. This winning combination has not only proven effective at trial, but has also proven effective in putting together a strategic plan to litigate a case to a fast and favorable resolution. While our litigation capabilities are second to none, we also pride ourselves on our ability to reach practical business solutions for our clients intellectual property issues without the need to resort to litigation. Our IP Group continuously strives to surpass our clients expectations through strategy, results, efficient solutions and personal attention and we look forward to continuing that tradition with you. We look forward to implementing a strategic plan for you that will provide results in the most cost-effective manner. To that end, we will always explore alternative fee structures with our clients, including discounts on standard hourly rates, partial contingency, flat fees, or creative combinations of any of the above in order to meet each of our clients needs. We believe that we can offer our combination of IP services under a fee arrangement that works for you. We would be delighted to introduce ourselves and our practice to you personally and look forward to that opportunity. Sincerely, Paul Tanck CHAIR, INTELLECTUAL PROPERTY +1 (212) 408 1116 ptanck@chadbourne.com
Today, businesses worldwide recognize that their intellectual property is among their most valuable assets. Chadbourne s intellectual property practice offers our clients the highly specialized legal and technical expertise of an intellectual property boutique, combined with the business and litigation skills of a multinational general practice law firm. Over the last several years we have trusted Chadbourne with our most important patent litigation matters. We have consistently received outstanding representation, impeccable client service and impressive results. John M. Miller, Vice President and Chief IP Counsel, Rockwell Automation Chadbourne s intellectual property practice provides our clients with a full range of services to meet all of their intellectual property needs, including the following: COUNSELING AND LITIGATION Patents Copyrights Trademarks, Trade Dress Unfair Competition and False Advertising Trade Secret Misappropriation NDA, Non-Competition, Former Employee and Confidentiality Agreements US PATENT & TRADEMARK OFFICE Patent Portfolio Development and Prosecution Patent Reexamination, Post-Grant Review or IPR IP CORPORATE TRANSACTIONAL Emerging Companies and Venture Capital Mergers and Acquisitions Joint Development and Strategic Alliance Agreements Procurement, Management, and Licensing of IP Assets Due Diligence Investigations IP Portfolio Monetization Trademark Clearance and Prosecution TTAB and InterPartes Proceedings Before the USPTO With offices around the globe, Chadbourne s intellectual property practice is international in scope and provides our clients with solutions for their global issues. Litigation and Counseling Our lawyers have extensive litigation experience in all key practice areas of intellectual property, including patents, trademarks, trade dress, trade secrets, false advertising, copyrights, right of publicity, and related antitrust and unfair competition concerns. We have successfully represented our clients in federal trial and appellate courts throughout the United States, as well as in the US International Trade Commission, in arbitrations, and before the Board of Patent Appeals & Interferences, the Trademark Trial and Appeal Board, and the US Customs Office. We offer our clients the advantage of staffing litigations with specialized intellectual property litigators and general litigation lawyers who routinely handle high-stakes litigations. In this manner, we effectively handle all types of intellectual property litigations in a cost-effective manner. 2 CHADBOURNE
CAPABILITIES While our litigation capabilities are second to none, we also pride ourselves on our ability to reach practical business solutions for our clients intellectual property issues without the need to resort to litigation. PATENT LITIGATION Chadbourne s litigators have achieved major victories in patent litigation matters throughout the US and have experience in diverse technological fields: Computer Software Cosmetics Computer Hardware Semiconductors Business Processes Industrial Control Biotechnology Consumer Products Medical Devices Circuits Pharmaceuticals Optics Financial Services Mechanical Devices E-Commerce Connectors Chemical Processes Manufacturing Processes Telecommunications Automotive Nanotechnology Chadbourne s intellectual property practice also includes a strong emphasis on electronics, information technologies and financial services. Chadbourne s lawyers are experienced in litigating computer software and business process patents. Some patent litigation clients we have successfully represented include: JP Morgan Chase, Citibank, Rockwell Automation, Canon USA, Microsemi, Phillips Avent, Fujitsu, Avid Technology and Adidas. PATENT REEXAMINATION, POST GRANT REVIEW OR IPR PROCEEDINGS BEFORE THE USPTO Another focus of Chadbourne s patent practice is reexamination, post grant review and inter partes proceedings in the US Patent and Trademark Office (USPTO). Based on Chadbourne s strong patent litigation experience, the intellectual property group is well suited to handle the new quasi-litigation Post Grant Review and IPR proceedings in the USPTO. These proceedings are a new form of administrative litigation for challenging the validity of an issued patent in a 12 to 18 month proceeding before a panel of administrative law judges. Our experienced patent litigators will work closely to develop offensive and defensive strategies to achieve success in these administrative examination proceedings. INTELLECTUAL PROPERTY 3
#1 LAW FIRM OF THE YEAR IN COPYRIGHT LAW US NEWS BEST LAWYERS TRADEMARK, TRADE SECRET, COPYRIGHT AND UNFAIR COMPETITION LITIGATION The identity established by a company s brand is often the company s most valuable intellectual property asset. Trademarks represent the time, effort and expense invested in building a company s reputation and goodwill. If this hard-won identity is not protected, the value of the investment will be lost. We have broad experience litigating high-stakes cases involving some of the most famous marks in civil litigation in this country and abroad, in administrative proceedings before the USPTO and before foreign trademark offices and in domain name proceedings. Chadbourne s intellectual property lawyers also have extensive experience litigating trade dress, trade secret, unfair competition, Lanham Act and copyright disputes throughout the US. Our lawyers have experience representing clients in diverse industries, including the motion picture industry, the recording industry, fashion and the food and beverage industry. CLIENT COUNSELING AND PATENT OPINIONS We regularly advise clients with respect to issues concerning the validity, enforceability, infringement, scope and patentability of patents. We also advise our clients concerning product clearance and design around of existing patents. Our lawyers, some of whom hold prestigious science degrees, have extensive experience in a wide array of technologies. PATENT PORTFOLIO DEVELOPMENT AND PROSECUTION Experience in patent prosecution and a thorough understanding of the underlying technology can make the difference between a sound patent claim that deters infringement, and an invitation for future litigation. An investment in patent expertise from the outset is invaluable both for the individual inventor and the multinational corporation. Chadbourne is proud to be on the cutting edge of new developments in a wide variety of technologies. We work closely with our clients to translate the in-depth knowledge of their technology and its applications into effective national and worldwide patent strategies. Our intellectual property team includes seasoned patent prosecutors with extensive experience in domestic and international patent procurement. To provide our clients with cost-effective international patent portfolio development, Chadbourne s intellectual property lawyers are supported by an experienced patent agent and paralegal team, who hold advanced technical degrees. Chadbourne s intellectual property practice includes a particularly strong focus on information technologies and financial services. The firm s attorney and patent agent team have developed significant patent portfolios in this highly specialized area, including the procurement of a number of pioneering computer software and business process patents. 4 CHADBOURNE
Trademark Prosecution and Counseling Services Chadbourne s intellectual property lawyers have extensive experience providing trademark services to our clients, including mark searching and mark clearance, US and multinational registrations, development of corporate trademark programs and use policies, and obtaining maximum value through licensing and enforcement as required. Our intellectual property team includes seasoned trademark lawyers supported by an experienced paralegal team to provide cost-effective trademark prosecution and monitoring services. We have extensive experience tailoring programs of domain name registration and protection and trademark selection, protection, enforcement and licensing to meet each client s current needs and future objectives. Chadbourne is receptive to creative fee arrangements and has been able to provide realistic forecasts of fees and expenses for individual matters. Rockwell Automation Chadbourne is on the cutting edge of trademark issues, such as those relating to the Internet. Our experience includes resolving domain name issues and disputes, jurisdictional issues and infringement, and the misuse of trademarks on websites. We combine our experience in entertainment and publishing rights with our know-how in the computer hardware and software fields to help our clients negotiate important multimedia and online agreements. IP Corporate and Transactional Work DUE DILIGENCE INVESTIGATIONS AND CORPORATE SERVICES Partnering with our colleagues in the corporate group, Chadbourne s intellectual property lawyers also provide a full range of services and counseling in corporate matters. We evaluate third-party patent and trademark holdings for possible infringements or for potential acquisitions; we provide due diligence review of mergers and acquisitions including technical assets; we evaluate corporate patent and technical portfolios, both to assess value for possible acquisition and to advise on implementation of protective measures to secure intellectual property rights in the portfolios. We work with our clients to help them obtain, exploit and protect their intellectual property rights and to avoid or obtain such rights held by others. To this end, we provide opinions on issues of infringement, enforcement and validity. We provide intellectual property audits of our clients holdings, whereby we can provide a full assessment of what measures should be implemented in-house to secure and protect their rights. LICENSING AND AGREEMENTS Chadbourne s intellectual property group also has extensive experience in all forms of licensing involving patents, trademarks, trade secrets, copyrights, software and technical know-how. Our representation ranges from the individual seeking to obtain compensation for an invention to corporations seeking to implement worldwide licensing programs. INTELLECTUAL PROPERTY 5
EXPERIENCE We provide extensive counseling, negotiating and drafting services for every form of contract involving intellectual property rights, including web development, employment, confidentiality, licensing, distributorship, option, original equipment manufacture, joint venture, outsourcing, assignment, manufacturing and supply agreements. Recent Experience Rockwell Automation. Represented Rockwell Automation in a patent litigation that concerned the infringement of over 10 patents held by Rockwell Automation relating to industrial automation technology used in complex manufacturing equipment. Chadbourne filed the lawsuit in the District of Nevada, where Rockwell s competitor planned to display the infringing product at a trade show. As a result of the litigation, the Court ordered that Rockwell s competitor could not sell, import or display its competing product in the US. EnergySolutions. Represented EnergySolutions, a global leader in the safe processing and disposal of nuclear material, in New York state court in a litigation that involved allegations that the defendants breached their employment agreements and misappropriated plaintiffs trade secrets. Avid Technology. Represented Avid Technology in the assertion of multiple patent infringement lawsuits in the District of Delaware relating to data storage and video compression technology. Telecommunications Company. Represented a nationally recognized telecommunications company that specializes in the placement of advertisements in local TV stations across the country, in a trade secret litigation pending in the Southern District of New York involving allegations that the defendants misappropriated trade secrets and breached relevant contracts. Rockwell Automation. Represented Rockwell Automation in defending against a patent infringement lawsuit in the Northern District of Ohio. Chadbourne s attorneys were able to obtain a highly favorable claim construction ruling from the Court which led to a favorable settlement for Rockwell in July 2013. 9mmedia. Represented 9mmedia, a software design firm that develops web and mobile applications, in a copyright infringement litigation in the Southern District of New York concerning the alleged misappropriation of computer source code and the breach of related contracts. Rockwell Automation Technologies. Represented Rockwell Automation Technologies. in asserting a firewall security patent in the Eastern District of Michigan in 2012-13. 6 CHADBOURNE
Aerospace and Defense Company. Represented world renowned aerospace and defense company in purchase and sale of numerous business units, including sale of satellite communications business, involving licensing agreements, purchase and supply agreements, and related intellectual property assets. Rockwell Automation. Represented Rockwell Automation. in a patent infringement lawsuit involving industrial control technology in the Western District of Wisconsin. Obtained a US$10.1 million jury verdict for Rockwell in October 2012. BrightSource. Represented BrightSource in structuring, drafting and negotiating technology and intellectual property aspects of various project agreements and in meeting loan guarantee requirements relating to the construction and commissioning of Ivanpah I and II, currently the largest solar-thermal energy projects in the world. Bad Boy Records. Represented Bad Boy Records (Sean Combs Puff Daddy ) in numerous trademark proceedings before the Trademark Trial and Appeal Board (TTAB) in 2012. World Fuel. Represented World Fuel in its $137MM acquisition of Multi-Service Corporate. Conducted technology and intellectual property due diligence; negotiated and structured technology and IP provisions of purchase agreement and related documents. Debtdomain. Represented Debtdomain, a financial software developer, in a copyright infringement lawsuit in the United States District Court for the Southern District of New York involving the look and feel of graphical user interfaces (GUIs). The case was settled favorably before trial. Department of Energy. Represented the Department of Energy in structuring, drafting and negotiating technology and intellectual property aspects of project documents relating to the construction and commissioning of Vogtle 3 and 4, the first new nuclear reactor projects in the U.S. since 1979. Microsemi Corporation. Represented Microsemi Corporation in asserting breach of contract and misappropriation of trade secrets claims in the United States District Court for the Southern District of New York. The case involved application specific integrated circuits and power-over-ethernet (POE) technology. The case was settled favorably following a bench trial before Judge Shira A. Scheindlin. Rockwell Automation. Represented Rockwell Automation in connection with its acquisition of a provider of industrial automation technology used in complex manufacturing equipment, including patent due diligence. INTELLECTUAL PROPERTY 7
Avent. Represented Avent, an infant care retailer, in a lawsuit in which Avent was accused of infringing two patents directed to valves in non-spill drinking cups for toddlers. Chadbourne s lawyers successfully got the case dismissed on summary judgment that the patent was not infringed and the other patent was invalid. The Federal Circuit affirmed in all respects. Avent. Represented Avent in an appeal before the Federal Circuit in a patent case involving a breast pump. Avent retained Chadbourne s lawyers after Avent had lost based on summary judgment that Avent s patent was not infringed. Chadbourne s lawyers successfully got the Federal Circuit to vacate the judgment of nonenforcement and the case ultimately settled. Colombian Cleaning Services Company. Represented a leading Colombian cleaning services company, in connection with negotiating the terms of an exclusive trademark/franchise agreement against a major U.S. franchisor. Canon USA. Represented Canon USA in a patent infringement action involving a patent directed to software used in scanners. PowerDsine. Represented PowerDsine in litigation with Texas Instruments regarding PowerDsine s copyright and trade secret rights directed to a power-over- Ethernet (POE) protocol. Foundation for International Community Assistance. Represented the Foundation for International Community Assistance (FINCA), a nonprofit organization that sets up microcredit banks worldwide, in a matter involving the alleged cybersquatting of FINCA s domain name. Columbia/HCA Healthcare Corporation. Represented Columbia/HCA Healthcare Corporation in a trademark case involving the mark Columbia. Chadbourne s lawyers defeated a motion for a temporary restraining order and, after full trial, the court found for Columbia/HCA based on no infringement and plaintiff s laches and estoppel. Duracraft. Represented Duracraft in action involving patent directed to HEPA air cleaner; won summary judgment motion on trade dress count; case ultimately settled. Industrial Acoustics Company. Represented Industrial Acoustics Company (IAC) in action involving patent directed to anechoic chambers and components; case settled with payment to IAC. 8 CHADBOURNE
Citibank and Citicorp. Represented Citibank and Citicorp in trademark action against City Bank, et al. Successfully enforced oral settlement argument. SAP America. Defending SAP America, a major producer of sophisticated business software, against an antitrust counterclaim asserted in a lawsuit commenced by SAP to protect its trade secrets from improper misappropriation. Sunstar. Representing Sunstar, a major Japanese consumer products company, in long-running federal court litigation in Chicago concerning the Japanese trademarks for VO5 hair-care products. The case involved novel intertwined issues of Japanese and US trademark law. Arkopharma. Represented Arkopharma in action involving a patent directed to dietary supplement; successful motion to dismiss for lack of standing; upheld by Court of Appeals for the Federal Circuit. Fujitsu. Represented Fujitsu in a patent infringement suit involving the Firewire/ IEEE 1394 standard. Priceline.com. Represented Priceline.com in the assertion of their pioneering patent rights on their business processes and computer architecture against Microsoft and Expedia.com. INTELLECTUAL PROPERTY 9
NEW YORK WASHINGTON, DC LOS ANGELES MEXICO CITY SÃO PAULO LONDON MOSCOW WARSAW ISTANBUL DUBAI BEIJING CHADBOURNE.COM Intellectual Property, October 2014