Intellectual Property Litigation

Overview

From widespread unauthorized use of a company’s patents and trademarks in international markets to illicit downloads of music and books in our neighbors’ homes, companies are constantly fighting to protect the rights to their intellectual property (“IP”). As technology facilitates the misuse of patented, trademarked, and copyrighted materials, businesses must aggressively find ways to enforce the rights they earned to sell and market their intellectual property. Litigation can be a powerful tool to protect and defend intellectual property assets, whether by asserting rights or protecting our client’s ability to operate with minimal risk and expense.

Blank Rome’s nationally recognized intellectual property practice is a litigation powerhouse with a team of dedicated IP attorneys with substantial first-chair trial experience handling the most complex and challenging patent, trademark, copyright, and trade secret litigation matters. We have a long history of success in resolving high-stakes cases for plaintiffs and defendants.

How We Can Help

  • Work collaboratively with in-house counsel to deploy litigation strategies that achieve current and long-term business objectives
  • Present complex technological issues to judges and juries clearly and persuasively
  • Conduct discovery in alignment with budget needs and business goals
  • Use alternative venues (e.g., United States Patent and Trademark Office (“USPTO”) proceedings, International Trade Commission (“ITC”)) to strategically advance business and litigation positions
  • Manage strategic acquisition of IP rights to resolve or avoid litigation
  • Tailor fee arrangements responsive to our clients’ business goals and case needs

Blank Rome’s attorneys work as a team with our clients, in-house scientists, engineers, and other specialists to create an effective strategy. Our approach to litigation involves seeking opportunities for early resolution to disputes by gaining a solid understanding of our client’s business and business environment, as well as understanding how our client and their opponents define success.

When litigation is necessary, we move quickly to generate a team that includes partner-level decision makers to develop a comprehensive strategy that facilitates trial preparation without compromise.

PATENT LITIGATION

In the past three years, we have represented dozens of clients in more than 300 infringement suits and declaratory judgment actions, on both the patent enforcement and defense sides. We have tried several jury trials to success, including in the hottest patent venue in the world—the Western District of Texas (Waco). We move quickly to develop a comprehensive strategy that facilitates trial preparation without compromise, including aggressive motion practice and carefully crafted discovery and e-discovery strategies.

Our team of seasoned litigators is adept at handling the most complex and challenging patent litigation in U.S. federal district courts and in the U.S. Court of Appeals for the Federal Circuit. With offices in Houston, New York, Philadelphia, Wilmington, and Washington, D.C., we are on-the-ground, local counsel in the most active patent litigation dockets in the country.

INTER PARTES (“IPR”) AND POST-GRANT PROCEEDINGS

IPRs share many similarities with litigation, including the use of technical expert witnesses, opportunities for document discovery, depositions, motion practice, and sanctions. Consequently, effective use of the new proceedings, whether to defend a client’s patents or challenge a competitor’s, requires a sophisticated mix of USPTO and patent litigation experience.

Contested proceedings are held before a Patent Trial and Appeal Board (“PTAB”) of the USPTO, and include IPR, post-grant review, derivation proceedings, and review of covered business method (“CBM”) patents. These proceedings often involve battles of technical experts, with outcomes largely hinging on the insights they share during the exchange of declarations and discovery.

With more than 40 attorneys registered to practice before the USPTO, a key requirement of lead counsel in USPTO contested proceedings, and more than 100 contested proceedings under our belt, Blank Rome is one of the few firms with deep experience in both patent litigation and USPTO procedures.

TRADEMARK LITIGATION

Our trademark litigators bring significant experience serving as lead counsel in major trademark cases related to trademark infringement claims, misappropriation of trade dress, and related acts of unfair competition, such as passing-off and false advertising in the federal district and appellate courts, and in other tribunals. We have served as coordinating counsel managing discovery internationally through our global network of trademark professionals who are well versed in the laws of their respective countries. We also maintain an active practice before the Trademark Trial and Appeal Board (“TTAB”) in inter partes reviews, trademark cancellation, and opposition proceedings.

COPYRIGHT LITIGATION

Blank Rome’s comprehensive intellectual property litigation practice handles the most complex copyright issues, ranging from traditional brick-and-mortar businesses to new concerns from the high-tech world of computers, the Internet, and publishing.

U.S. INTERNATIONAL TRADE COMMISSIONS (“ITC”) SECTION 337 INVESTIGATIONS

Section 337 is a powerful remedy for U.S. intellectual property rights holders who are confronted with infringing imports as well as for companies facing unfair competition involving imported goods. A successful Section 337 action delivers a unique remedy not available in any federal or state court: the U.S. Department of Customs and Border Protection (“CBP”) can exclude infringing goods from importation into the United States. Section 337 is a fearsome problem for foreign manufacturers as they risk losing their ability to sell their products in the United States. It also affects American importers and sellers, whose supply of goods may be curtailed.

Blank Rome’s attorneys have handled some of the most complex and far reaching Section 337 cases ever brought before the ITC. From electronics to manufacturing processes and consumer products, these cases have spanned a wide range of industries and technologies. Blank Rome’s unique combination of international trade advisers and IP litigators have given the firm a distinct advantage in representing its clients in Section 337 cases before the ITC.

HATCH-WAXMAN LITIGATION 

Blank Rome offers its clients access to a multidisciplinary group of attorneys and patent professionals who have a thorough understanding of legal issues affecting brand name and generic drug companies, including patent and market exclusivity issues for both small molecule drugs and biologics (the Hatch-Waxman Act and the Biologics Price Competition and Innovation Act). We represent pharmaceutical and other life science companies in contested matters before the USPTO (including inter partes reviews, post-grant reviews, and derivation proceedings), patent prosecution and counseling, licensing transactions, supply and licensing disputes, and all stages of Abbreviated New Drug Application (“ANDA”) litigation arising under the Hatch-Waxman Act following a Paragraph IV certification.

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