Practice Strengths

Intellectual Property

In today's global economy, patents, trademarks, copyrights, trade secrets, domain names and other intellectual property are among the most valuable assets of market leaders and rising businesses. Baker Hostetler lawyers help such companies—as well as universities, start-ups, artists, producers, and authors—to procure, protect and exploit their intellectual property (IP) rights and to avoid the pitfalls posed by third-party assertions of IP rights.

Baker Hostetler's IP team provides guidance in all phases of IP planning—from the formulation of initial strategies and “best practices” to securing IP rights, creating strategies for exploitation (licensing, joint development, etc.), litigation and other forms of dispute resolution. From aerospace technology to antiviral drugs, from software and web content to consumer goods, entertainment, advertising, cartoon character rights and financial services, we have the hands-on knowledge to help our clients secure and use IP assets for maximum competitive advantage. In thousands of proceedings spanning more than 100 countries, we protect that advantage in negotiations, at trial and through other dispute resolution proceedings.

Baker Hostetler also provides enforcement monitoring services and can provide client-specific and portfolio-specific Internet portals. These portals allow clients to easily and efficiently assess the status and value of their IP portfolio for general commercial purposes and compliance with regulatory requirements such as Sarbanes-Oxley.

Leadership in Action
Patents: Realizing the value of patents
Client: ImagExpo, L.L.C., a subsidiary of SPX Corporation, a multibillion-dollar global provider of technical products and systems, industrial products and services, flow technology and service solutions
Type of Matter: Patent infringement case in the U.S. District Court for the Eastern District of Virginia.
Our Client's Challenge: Patent infringement suit brought by ImagExpo to enforce a patent relating to collaborative software.
The Goal: Obtain damages for past infringement.
Our Strategy: Brought suit in the Eastern District of Virginia, known as the "rocket docket," to bring suit to trial quickly.
Results: Obtained a favorable settlement for ImagExpo/SPX Corporation.
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Recognition


  • Named a "Go-to Law Firm" for IP law by in-house counsel at Johnson Controls and Thermo Fisher Scientific, surveyed for Corporate Counsel® magazine's 2009 guide to law departments in the nation's top companies.

About Our Intellectual Property Team

Our dedicated team of IP lawyers and patent agents has the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).

Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.

Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.

Solution
Baker Hostetler develops client-specific, secure Internet sites or "portals" for fast and efficient matter management and client communication.   Read More

Leadership in Action
Due Diligence: IP-related due diligence for several multimillion-dollar acquisitions and a billion-dollar divestiture
Client: A multibillion-dollar global multi-industry company
Type of Matter: Intellectual property due diligence
Our Client's Challenge: Perform intellectual property-related due diligence, negotiate and draft transfer documents associated with several multimillion-dollar acquisitions and billion dollar divestitures in an efficient manner that would enable a seamless closing to occur simultaneously or consecutively in multiple transactions.
The Goal: Complete due diligence, draft related transactional documents and negotiate contentious topics in multiple acquisitions and divestitures and comply with targeted consecutive closing dates. 
Our Strategy: Provide the client with listings of intellectual property assets to be acquired or divested, research and remedy chain of title issues with respect to such assets, review ancillary license and employment agreements, negotiate and draft appropriate representations and warranties for inclusion in the purchase agreements,  negotiate and draft licenses and transition agreements related to such transactions.
Results: Assisted the company in closing a billion-plus dollar divestiture and several multimillion-dollar acquisitions in 2005.

Leadership in Action
International IP: Navigating stringent Mexican trademark laws
Client: A leading United States manufacturing company
Type of Matter: Trademark infringement lawsuit and cancellation action before the Mexican Institute of Industrial Property.
Our Client's Challenge: A former distributor’s unlawful use and registration of the client’s trademark.
The Goal: Stop the use, despite the defendant’s claim to be the rightful trademark owner in Mexico.
Our Strategy: Work with local Mexican counsel to initiate and execute a raid on the former distributor’s facility in Mexico to seize counterfeit product.
Results: Successfully navigated stringent Mexican trademark laws in strategizing future action, gathering acceptable evidence and advising the client, and seized the inventory of counterfeit goods and entered into settlement talks.

Leadership in Action
IP Litigation: Successfully representing one of the largest shirt manufacturers in the world accused of patent infringement
Client: Esquel Enterprises, Ltd. Of Wanchai, Hong Kong, and Esquel Apparel, Inc. of New York, New York
Type of Matter: ITC Section 337 Investigation
Our Client's Challenge: Alleged infringement of claims in five different U.S. patents owned by TAL Apparel Limited of Hong Kong (and related entities).
The Goal: Ensure that client's products are not barred from the U.S. market.
Our Strategy: Rapidly gather evidence and present arguments on all issues.
Results: Successfully secured the withdrawal of all allegations of infringement against the Esquel companies.

Leadership in Action
Patents: Realizing the value of patents
Client: ImagExpo, L.L.C., a subsidiary of SPX Corporation, a multibillion-dollar global provider of technical products and systems, industrial products and services, flow technology and service solutions
Type of Matter: Patent infringement case in the U.S. District Court for the Eastern District of Virginia.
Our Client's Challenge: Patent infringement suit brought by ImagExpo to enforce a patent relating to collaborative software.
The Goal: Obtain damages for past infringement.
Our Strategy: Brought suit in the Eastern District of Virginia, known as the "rocket docket," to bring suit to trial quickly.
Results: Obtained a favorable settlement for ImagExpo/SPX Corporation.

Leadership in Action
Trade Secrets: Going to court to enjoin anonymous posters on Yahoo!'s message boards
Client: Several large industrial companies
Type of Matter: Trade secret infringement and breach of confidentiality agreements in the Cuyahoga County Court of Common Pleas.
Our Client's Challenge: Identify the anonymous posters and informers to stop the unauthorized leak of information.
The Goal: Stop the dissemination of trade secrets over the Internet.
Our Strategy: Obtain a temporary restraining order and subpoena Yahoo! to identify information on the posters; have Yahoo! pull offending messages.
Results: Anonymous posters identified and trade secrets protected.

Leadership in Action
Trademarks: Protecting a sporting association's right to use images of its sport as trademarks
Client: United States Polo Association (USPA)
Type of Matter: Trademark infringement case in the U.S. District Court for the Southern District of New York.
Our Client's Challenge: Polo Ralph Lauren filed a lawsuit which sought an injunction barring USPA from using four logos featuring two men playing polo on horses on licensed goods including clothing, leather goods, watches and sporting equipment.
The Goal: Convince the jury that USPA, as the governing body of the sport, had the right to use images of polo being played in a licensing program despite the fame of the Ralph Lauren polo player.
Our Strategy: Educate the jury to better understand the sport of polo, the people who play it and their legitimate interest in supporting the sport by selling goods bearing images of the sport.
Results: The jury unanimously found that three of the four trademarks adopted by the USPA did not infringe Polo Ralph Lauren's trademark rights.

Leadership in Action
Trademarks: Defending our client's trademark
Client: York International Corporation
Type of Matter: Suit for trademark infringement brought by Carrier Corporation in the U.S. District Court for the Southern District of Indiana.
Our Client's Challenge: Protect its rights in the AFFINITY trademark used with its new HVAC product line.
The Goal: Rebut Carrier’s allegations of trademark infringement, show that York's AFFINITY trademark does not infringe Carrier's INFINITY trademark, and prevent Carrier from obtaining a preliminary injunction from the court.
Our Strategy: Rebut Carrier’s claim that its INFINITY mark had therefore acquired secondary meaning and to rebut Carrier’s allegations of trademark infringement.
Results: The court denied Carrier’s motion for preliminary injunction. Carrier withdrew its complaint with prejudice in exchange for York entering into a consent motion asking the court to vacate a portion of its Order.

Leadership in Action
Transactions: Going to court in the defendant’s home base to protect a distribution agreement
Client: A large Canadian toy company
Type of Matter: Breach of distribution agreement in Federal District Court.
Our Client's Challenge: Our client had secured rights to distribute a famous plush toy in Canada, along with promises from the rights owner to take action against infringements. The toys were delivered late, and unauthorized copies dominated the Canadian market, despite our client's requests to the owner to take action. Our client was not able to sell the anticipated quantities of licensed products once they arrived.
The Goal: Recover lost profits.
Our Strategy: When business negotiations failed, litigation was instituted in the United States for breach of the agreement--late delivery and failure to stop the infringements.
Results: Obtained a jury verdict and damages in favor of our client, and the matter was resolved later privately.


Intellectual Property Lawyers
Bukola T. Aina Associate
Washington, DC 202.861.1545
Bruce O. Baumgartner Partner
Cincinnati 513.929.3417
Robertson D. Beckerlegge Associate
New York 212.589.4209
John F. Bennett Associate
Cincinnati 513.929.3485
William C. Bergmann Partner
Washington, DC 202.861.1549
Fernando A. Bohorquez, Jr. Partner
New York 212.589.4242
Peter Brown Partner
New York 212.589.4660
Brian A. Bulson Associate
Cleveland 216.861.7184
Hilary S. Cairnie Partner
Washington, DC 202.861.1668
Anthony R. Carlis Staff Attorney
Washington, DC 202.861.1616
Lisa I. Carteen Partner
Los Angeles 310.979.8450
Matthew J. Cavanagh Associate
Cleveland 216.861.6488
Melanie S. Corcoran Staff Attorney
Cleveland 216.861.7659
Erdal R. Dervis Partner
Washington, DC 202.861.1744
James A. Dimitrijevs Partner
Cleveland 216.861.7579
Breaden M. Douthett Counsel
Cleveland 216.861.7891
David A. Einhorn Partner
New York 212.589.4644
Stephen S. Fabry Partner
Washington, DC 202.861.1714
Michael K. Farrell Partner
Cleveland 216.861.7694
Gerald J. Ferguson Partner
New York 212.589.4238
James D. Figura Associate
Los Angeles 310.979.8462
Matthew P. Hayden Associate
Cincinnati 513.929.3418
Robert B.G. Horowitz Partner
New York 212.589.4240
Kevin W. Kirsch Partner
Cincinnati 513.929.3499
David E. Kitchen Associate
Cleveland 216.861.7060
Richard M. Knoth Partner
Cleveland 216.861.7412
Annette Kwok Associate
Washington, DC 202.861.1683
Richard M. Lehrer Partner
New York 212.589.4618
Eugene Lieberstein Of Counsel
New York 212.589.4634
C. Dennis Loomis Partner
Los Angeles 310.442.8865
Hanna F. Madbak Associate
New York 212.589.4608
David A. Mancino Partner
Cincinnati 513.929.3495
Heather J. McDonald Partner
New York 212.589.4285
Hayes F. Michel Partner
Los Angeles 310.979.8460
John M. Mings Partner
Houston 713.646.1380
Grant A. Monachino Associate
Cleveland 216.861.7357
Christina J. Moser Partner
Cleveland 216.861.7818
Phong D. Nguyen Partner
Washington, DC 202.861.1610
Jason S. Oliver Associate
New York 212.589.4649
Frank A. Pugliese Partner
New York 212.589.4664
Louisa T. Ryan Associate
Washington, DC 202.861.1703
A. Neal Seth Partner
Washington, DC 202.861.1775
David J. Sheehan Partner
New York 212.589.4616
Kenneth J. Sheehan Partner
Washington, DC 202.861.1682
Thomas H. Shunk Partner
Cleveland 216.861.7592
Victor Siber Partner
New York 212.589.4696
Kelu L. Sullivan Associate
Washington, DC 202.861.1532
Halle F. Terrion Partner
Cleveland 216.861.7371
Mark H. Tidman Partner
Washington, DC 202.861.1670
Donna A. Tobin Partner
New York 212.589.4250
Adam M. Treiber Of Counsel
Washington, DC 202.861.1707
Monica S. Verma Partner
Cleveland 216.861.7370
Oren J. Warshavsky Partner
New York 212.589.4624
John H. Weber Partner
Washington, DC 202.861.1526
W. Breck Weigel Partner
Cincinnati 513.929.3490
Deborah A. Wilcox Partner
Cleveland 216.861.7864
Intellectual Property Professionals
David Bright Scientific/Technical Advisor
Washington, DC 202.861.1648
Michael David Graham Patent Agent
Washington, DC 202.861.1629
Date Intellectual Property News
3/11/2010 2010 "Rising Stars" Announced
3/11/2010 2010 "Super Lawyers" Announced
1/29/2010 Horowitz Featured in "Expert Guide"
1/27/2010 Weber Recognized for Contribution to Vietnam Veterans Memorial Fund
1/22/2010 Law360: Baker Hostetler Boosts IP Practice With Taft Hires
1/19/2010 Court’s Order Dismisses E.W. Scripps From FotoMedia Case with Prejudice
1/15/2010 Cincinnati Office Adds IP Partners David Mancino & Kevin Kirsch
1/8/2010 Etscorn to Lead Baker Hostetler’s Orlando Office
1/5/2010 Baker Hostetler Announces New Partners
12/17/2009 Wilcox Chairs "2009 Intellectual Property Update"
12/10/2009 IP Practice Ranked in Top 30
11/19/2009 Wilcox Addresses PubCon and SMX Conferences
11/19/2009 Pugliese Named Outstanding Healthcare Information Technology Lawyer
11/18/2009 DC Office Adds Government Contracting Partner Hilary Cairnie
11/12/2009 Chicago Office Opens: Another Step Forward in Baker Hostetler Growth
10/5/2009 2009 "Super Lawyers" Announced
9/28/2009 Bohorquez Panelist on eDiscovery at HNBA Annual Convention
9/23/2009 McDonald Addresses AOAIOIP Conference
8/10/2009 "Best Lawyers in America" Recognizes 94 Baker Hostetler Attorneys
7/13/2009 Wilcox Assumes Leadership Positions with CMBA & CIPLA
6/17/2009 2009 "Rising Stars" Announced
6/12/2009 Chambers USA Names 36 "Leading Business Lawyers"
6/1/2009 Inside Business: Northeast Ohio's Young Legal Leaders
5/19/2009 IP Practice Ranked in Top 10 Percent
5/18/2009 Moser Addresses OSBA's Intellectual Property Section
4/23/2009 Bohorquez Appointed to NY Bar Association’s House of Delegates
3/30/2009 Firm Website Receives Accolade for Effective Branding
2/24/2009 Veteran Intellectual Property Lawyer Victor Siber Joins New York Office
2/16/2009 Bohorquez Presents Resolution on Guantánamo Detainees to the ABA
1/12/2009 Baker Hostetler Announces New Partners
1/9/2009 Baker Hostetler Announces New Associates
1/8/2009 George Stamboulidis Named Managing Partner of New York Office
12/8/2008 Baker Hostetler Named a “Go-To Law Firm” For 2009
11/13/2008 Wilcox Addresses WebmasterWorld's Search & Internet Marketing Conference
10/30/2008 Los Angeles Office Expands with Addition of Hayes Michel
9/25/2008 "Best Lawyers in America" Recognizes 77 Baker Hostetler Attorneys
07/15/2008 NY Office Expands with Team of IP Attorneys
7/2/2008 Eight Named to "Who's Who Legal"
06/10/2008 Baker Hostetler Named Top Firm in Cleveland
06/09/2008 Tidman Joins IP Practice & DC Office
05/05/2008 Einhorn & Lieberstein Join NY Office & IP Practice
05/01/2008 Technology Law Pioneer Brown Joins Firm
04/03/2008 Firm Expands IP Practice & NY Office with Addition of Horowitz and Tobin
Date Intellectual Property Articles
3/9/2010 New York Law Journal: Active Inducement in the Post-Grokster World
1/28/2010 Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys
12/28/2009 Intellectual Property Counselor: Intellectual Property Rights in Government Contracting
11/30/2009 National Law Journal: Registering Marks as Top-Level Domain Names
1//17/2009 IPFrontline: Important Issues In TTAB Cancellation Proceedings
11/1/2009 Cleveland Metropolitan Bar Journal: Dealing With Consumer-Generated Content on Social Networking Sites
10/12/2009 Bloomberg IP Law Reports: Environmental Marketing Claims: What to Know Before Waving the “Green” Flag
9/18/2009 BNA's Patent, Trademark & Copyright Journal: Overuse of the Inequitable Conduct Defense
8/12/2009 New York Law Journal: Electronic Health Records: Facing the Issues
7/27/2009 Government Contract Litigation Reporter: Intellectual Property Rights In Government Contracting
7/2/2009 ABA Business Law eNewsletter:Changing Landscape: Introduction to the Third Amendment to the Chinese Patent Law
6/2/2009 Law360: License To Lawsuit: The Path Grows Shorter
6/1/2009 FEDA News & Views: Is Your Business Domain at Risk?
4/21/2009 NAMESMASH.COM: Cybersquatters Use India Courts To Stall Legal Action
2/1/2009 The Licensing Journal: Unauthorized Guidebooks on Character Properties
10/15/2008 Wisconsin Technology Network: Online Tracking and the Privacy Violations of Behavioral Marketing
10/1/2008 The Licensing Journal: Special Terms in Fan Kit Licenses
6/1/2008 The Licensing Journal: Beyond VeRO: Enforcement of Character-Related Auctions on eBay
4/1/2008 The Licensing Journal: Privacy Issues in the Internationalization of Character-Related Websites
Date Intellectual Property Quotes
2/15/2010 AOL News: New York Cracks Down on Knockoff Artists
2/3/2010 New York Times: In Court, Impassioned Challenges of Madoff Trustee’s Plans
1/22/2010 Law360: Songwriter Sampled In 'My Humps' Wins Copyright Feud
1/22/2010 Law360: FotoMedia Drops E.W. Scripps From Photo Patent Suit
1/15/2010 Cincinnati Business Courier: Cleveland Law Firm Takes Two from Taft
1/8/2010 Orlando Business Journal: Baker Hostetler Names New Managing Partner for Orlando Office
1/7/2010 The New Yorker: Number Nine
12/21/2009 BNA's Privacy & Security Law Report: Massachusetts Justices Dismiss Credit Union Claims in BJ's Payment Card Breach Lawsuit
12/15/2009 Harper's Bazaar: Friend or Faux? The Fight Against Fashion Fakes
12/15/2009 Harper's Bazaar: The Fight Against Faux Fragrances
9/27/2009 60 Minutes: The Liquidator
8/23/2009 New York Post/FoxNews.com: Jett in Battle of the Ex-Band
7/20/2009 Law360: Q&A With John Weber
7/20/2009 China Daily (US Edition): The Bag Ladies of Chinatown
7/1/2009 Women's Wear Daily: Judge Sotomayor's Fashionable Past
4/17/2009 Business Courier of Cincinnati: Cincinnati Law Office Lands Another Prominent Player
2/25/2009 IP Law 360: Baker Hostetler Nabs Clifford Chance, IBM IP Vet
1/23/2009 Christian Science Monitor: A Case of Cold Plagiarism?
1/7/2009 Harper's Bazaar: The Fight Against Fakes
12/30/2008 MSNBC.com: Joe Satriani May Have a Case Against Coldplay
12/10/2008 Reuters: Mattel and MGA Better Off Settling on Bratz
12/10/2008 Reuters: Coldplay Denies Plagiarism Accusation
11/10/2008 Bloomberg News: Mattel, Back in Court, Seeks to Seize MGA Bratz Dolls, Ban Them

For more information on our Intellectual Property practice:
National Leader

John H. Weber

202.861.1526
Chicago
Ronald S. Okada 312.416.6210

Cincinnati

David G. Holcombe 513.929.3402
Cleveland

Thomas H. Shunk 

216.861.7592

Deborah A.Wilcox

216.861.7864

Columbus

Daniel J. Gunsett

614.462.2642
Costa Mesa
George T. Mooradian 714.966.8800    
Denver
Raymond L. Sutton 303.764.4103   
Houston
Lisa H. Pennington 713.646.1303
Los Angeles
C. Dennis Loomis 310.442.8865
New York

Gerald J. Ferguson

212.589.4238
Orlando
James V. Etscorn 407.649.4067
Washington, DC
Kenneth J. Sheehan 202.861.1682

Contact

National Leader
John H. Weber
202.861.1526


Contacts by Office »

Practice Highlights

A team of more than 50 dedicated IP lawyers, patent agents and scientific experts, many with advanced technical degrees in fields such as nuclear engineering, electronics, biotechnology, aerospace controls, chemicals and software and circuit design.

Patent, trademark and copyright clearance opinions, prosecution, counseling and licensing both domestically and worldwide, through our network of associated lawyers and agents.

Patent, trademark, unfair competition, copyright and trade secret litigation within federal courts, the ITC, the TTAB, the FTC, ICANN and other administrative agencies both domestically and worldwide, through our network of associated lawyers and agents.

Transaction and “best practices” counseling that ranges from due diligence, formulation of IP standard operating procedures, employee and contractor agreements, joint development agreements, product and process clearance opinions to infringement/non-infringement opinions.

Management and monitoring services of large global patent and trademark portfolios for multinational clients.