Practice Strengths

• Patent Litigation >>  

• Trade Secret Litigation >>

• Trademark Litigation >>

• Anticounterfeiting >>

• Copyright Litigation >>

BakerHostetler’s IP Litigation Team represents clients in all types of IP cases before juries, judges, arbitrators and federal agencies. No matter what forum or dispute resolution process is being used, we are able to translate the issues into readily understandable language. We work with our clients to make sure the most effective team of lawyers is deployed. Our highly experienced patent litigation teams represent clients in every major patent forum in the United States, covering all forms of technology, with stakes involving as much as billions of dollars of alleged infringing sales. Additionally, as a result of our firm’s long history in the fields of trademark and copyright infringement and anticounterfeiting, we have a dedicated team of lawyers and nationwide protocols in place to mobilize and seek ex parte seizures and temporary restraining orders from courts around the nation on short notice.

The complexity of technology systems and the high value of intellectual property often leads to industry disputes. Rather than reflexively pulling a litigation trigger, we offer thoughtful, anticipatory strategies geared toward quick and efficient solutions to further our clients’ business goals. If litigation becomes necessary, we offer skilled and tested advocacy in courts across the United States and in private mediations or arbitrations. In all situations, we never lose sight of our client’s business goals. We pride ourselves in understanding our clients’ current and future business objectives and, to the extent necessary, utilize that larger framework for working with our clients to map each potential and actual IP litigation to keep the nature, tone and cost of the litigation within the context of those objectives. This requires us to maintain a constant flow of communication regarding any available litigation options and to manage cost expectations.

Our experience includes effective representation of clients in specialized proceedings, such as the United States Patent and Trademark Office (USPTO) trademark oppositions and cancellation actions, Section 337 proceedings at the International Trade Commission (ITC), Abbreviated New Drug Applications (ANDA) with Paragraph IV certifications, border control through the U.S. Customs Service proceedings, domain name Uniform Dispute Resolution Proceedings (UDRPs), Court of Federal Claims proceedings, proceedings at the Federal Trade Commission (FTC) and appeals before the Court of Appeals for the Federal Circuit (CAFC)—the exclusive appellate panel for adjudicating the appeals of patent infringement cases. Our worldwide capabilities extend to non-U.S. courts and agencies through our IP Group’s network of affiliates and affiliated offices. We have carefully vetted the firms in this network so that we are able to seamlessly provide the same level of quality to clients through their use.

Our IP Litigation Team has drafted thousands of cease and desist letters and take-down notices to online auction and social media sites over the years, tailored to address the needs of the patent, trademark and copyright holder and the nature and severity of the infringing activity. Our Team takes pride in its ability to convey the proper tone in every cease and desist letter we send, recognizing that the initial approach used can dictate the result. A well-written cease and desist letter can save an enormous amount of money in the long run. We also are experienced in responding to demand letters, including taking steps in filing Declaratory Judgment actions where appropriate.

Patent Litigation

BakerHostetler has highly experienced patent trial attorneys to initiate and defend patent litigation and administrative proceedings in any forum throughout the United States. Our Team has protected client patents against some of manufacturing’s and high tech’s most notable names. Although the composition of lawyers is formed on a case-by-case basis, our IP Litigation Team is often joined by seasoned commercial jury trial lawyers. Combining jury trial lawyers and patent lawyers with relevant scientific and technical backgrounds has proven to be a winning combination time and time again. Our patent litigators are leading practitioners with decades of experience litigating patent disputes covering a myriad of technologies, including life sciences, computer hardware, software, micro-electronic mirrors, computer networks, telecommunications devices, novelty devices, mechanical devices, computer forensics, printing, food containers, semiconductor, alignment systems, DVD, CD Roms, BD Rom, aircraft components, financial services products, Internet-related business methods, computer control and medical devices, among others. We have litigated cases before federal district courts, state courts, the United States Court of Appeals for the Federal Circuit, the U.S. Court of Federal Claims, the Board of Patent Appeal and Interferences (BPAI), the ITC and the USPTO (interference, ex-parte/inter-parte re-examination).

Our Prosecution and Portfolio Management Team is dedicated to keeping our clients out of litigation. However our IP Litigation Team is very skilled in piloting clients through all stages of litigation.

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Trade Secret Litigation

Protection of trade secrets is a running process—not an event or single project. Because threats to trade secrets usually come from within an organization rather than from hackers or other outsiders, our lawyers work with clients to develop effective non-disclosure and employment agreement protocols to defend against theft from employees and contractors. To defend from attacks from outside our clients’ operations, we advise on issues related to on-site security, such as sign-in procedures, as well as computer-related security issues revolving around network enumeration, vulnerability and security exploitation.

Trade secret litigation often involves high stakes litigation. When a theft has occurred, our lawyers counsel clients on the steps necessary to reduce the effect of the theft, including emergency relief in the form of temporary restraining orders and preliminary injunctions. We have represented clients in trade secret litigations, both as plaintiffs and defendants, from prefiling investigations through jury trials and appeals.

Depending upon the nature of the trade issue, we draw resources from several teams, including Privacy, Security and Social Media, Information Technology and Transactions and Prosecution and Portfolio Management. Because there is often an employment-related component to trade secret issues, our IP Group also works with our firm’s Noncompete and Trade Secrets Team when appropriate.

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Trademark Litigation

We manage disputes involving trademark and trade dress infringement, unfair competition, dilution and cybersquatting. Very often, a cease and desist letter is issued at the initial stage of a dispute. We advise clients on the use of cease and desist letters, as well as preparing and responding to such letters. Our trademark attorneys prosecute cases related to trademark and trade dress infringement, unfair competition, dilution and cybersquatting before the federal and state court systems, arbitration in domestic and international contexts, the USPTO Trademark Trial and Appeal Board (TTAB), Section 337 proceedings at the International Trade Commission (ITC), border control through the U.S. Customs Service proceedings, proceedings at the Federal Trade Commission (FTC) and domain name Uniform Dispute Resolution Proceedings (UDRPs) arbitrated pursuant to ICANN policies. Our capabilities extend to non-U.S. courts and agencies through our network of associated firms throughout the world.

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Anticounterfeiting

The BakerHostetler Anticounterfeiting Team pioneered anticounterfeiting programs using a combination of civil and criminal seizure actions and border control through Customs authorities in the U.S. and around the globe. Our IP Litigation Team coordinates a nationwide network of investigators, attorneys and government agencies on both the federal and state levels, pursuing individuals and entities trafficking in counterfeit and pirated merchandise.

We have assembled a group of several companies who have joined together to participate in our civil seizure program to combat the widespread sale of counterfeit merchandise. These companies work together to execute seizures in New York City, focusing in the Chinatown area and other areas populated with counterfeiters. During these large-scale operations, a wide variety of items are seized, including jewelry, clothing, watches, handbags, perfumes, scarves, accessories, sunglasses and hats. These joint efforts are cost effective and have a great impact on the vendors, who lose a substantial amount of counterfeit merchandise when these seizure actions occur. We also act as a liaison with the NYPD for various criminal actions against counterfeiters and with the NYPD’s Civil Division for actions brought against property owners under the City’s Nuisance Abatement Law. We often provide documentary evidence and affidavits regarding actions taken at locations.

One additional approach our IP Litigation team takes to attack counterfeiting includes going back to property owners of the locations where the seizures occurred in order to impose any applicable penalties appropriate for landlords who are liable for illegal actions taking place on their premise(s). We also work with clients to develop training programs with local law enforcement that teach basic techniques of identifying counterfeit goods. In addition, we counsel clients to register appropriate trademarks with U.S. Customs, thus giving Customs officials the authority to seize counterfeit goods when discovered upon entry into the United States via any delivery method.

BakerHostetler has experience in identifying product counterfeits and importers through knowledge gleaned from its civil seizure program. We work with numerous trademark owners to identify the source of counterfeit products and coordinate with state and federal agencies regarding importation and distribution of counterfeit goods. The BakerHostetler anticounterfeiting team has an extensive network to support seizures conducted at manufacturing services around the U.S. and worldwide.

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Copyright Litigation

Our Team regularly litigates copyright cases in the federal courts across the country. This includes cases from well-known musical compositions and works of fine art, to jewelry designs to software. We also enforce rights under the Digital Millennium Copyright Act, including issuing “John Doe” subpoenas to learn the identities of anonymous infringers.

Our Team frequently manages copyright matters in a variety of contexts, including variable data printing technologies, Internet advertising, mailbox searching, online (Internet-based) multi-user gaming, operating systems, cryptography, hard disk cache algorithms (replacement algorithms), network administration, optical character recognition, storage systems, avionics, communications, image compression/decompression, image processing and matching algorithms, laser guidance systems, nanotechnology hardware control via software, security and automated payment systems and telephony applications.

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