For Patent Infringement Claims, Silence After a Cease and Desist Letter May Be Deadly
Grant D. Fairbairn & Chelsea L. Sommers, April 2013
New Rule for Proving Willful Infringement and Why Opinions From Patent Counsel Still Matter After Patent Reform
Timothy M. O’Shea, January 2013
Dean Karau moderated the breakout session titled The Madrid Protocol: Success, Failure or Somewhere in Between? at the 2011 Midwest Intellectual Property Institute on September 22-23, 2011.
Great ideas often fuel great innovations. Over time, those innovations frequently turn into profitable businesses – helping drive overall prosperity and job growth. It is vitally important to protect your company’s confidential information and intellectual property when competitors threaten to misuse it.
At Fredrikson & Byron, our philosophy for protecting intellectual property is simple. Instead of preparing every case as if it will settle, we prepare cases to go to trial. Backed by one of the largest intellectual property practices of any full-service law firm in Minnesota, our attorneys have the resources to help clients manage intellectual property disputes, including patents, trademarks, copyrights, and trade secrets. Our team has a proven track record of litigating complex cases in federal, state, and appellate courts. We have also stopped foreign companies from infringing on the patent rights of our U.S.-based clients. Over the years, we have built long-term relationships with many of our clients, largely because we place a high value on approachability, responsiveness, and superior client service.
Instead of preparing every case as if it will settle, we prepare cases to go to trial.”
Our Intellectual Property Litigation practice group offers a comprehensive range of services, including:
- Patent litigation. We excel at bringing complex concepts to life for judges and juries, often drawing upon the unique skills and technical expertise of our patent practitioners. We have handled patent cases in virtually every industry and business sector and have engaged in all aspects of patent litigation, from pre-litigation counseling through trial and appeal.
- Trademark litigation. Our attorneys have substantial experience in trademark, trade dress, false advertising and domain name disputes. We also handle matters before the Trademark Trial and Appeal Board, opposing or seeking to cancel the registration of trademarks confusingly similar to those of our clients, and defending against similar claims.
- Copyright litigation. Our group’s extensive copyright litigation experience spans publishing, architecture, arts & entertainment, software, and more.
- Trade secret litigation. Our IP litigators work across a variety of industries on cases involving trade and technological secrets, non-competes, formulas and manufacturing, marketing secrets, and other critical business information.
Patents. We currently represent the world’s leading medical products provider in various patent infringement and licensing disputes. In one case, we filed suit against a competitor in the Middle District of Florida. Our team convinced the opponent to stop selling the infringing product at an early stage, before the claim construction hearing.
We are often adverse to 3M in patent litigation. We are currently defending a manufacturer of wireless intercom systems in a patent infringement lawsuit filed by 3M. We have been adverse to 3M eight times in the last five years.
We prevailed in a patent infringement case brought by our client, a concrete block design and licensing company. The defendant was a former licensee who attempted to design around the patents at issue. We successfully obtained a preliminary injunction that was affirmed by the Federal Circuit while the case was proceeding to trial. The jury found both breach of contract and willful patent infringement. The verdict was affirmed by the Federal Circuit.
We handled the defense of patent infringement claims through a multi-jurisdictional proceeding venued simultaneously in the Nebraska District Court and the Board of Patent Interferences and Appeals in Washington, D.C. Our client, a biotech company, was accused of patent infringement for its sale of critical blood controls, products our client believed it was the first to invent. With almost simultaneous judgments from the two proceedings, the Board canceled every claim of the accuser’s five patents, clearing the way for our client to obtain patent protection. These decisions are currently on appeal and in post-trial proceedings.
We brought a patent infringement lawsuit against a foreign competitor and its United States distributor for infringement of a patent covering an agricultural heating device. Our team successfully defended against an attempt to move the case to the distributor’s home state and forced the competitor and distributor to cease selling the accused product.
We represented a manufacturer of pharmaceutical drugs and nutritional supplements in six separate lawsuits for infringement of fourteen different patents. The first case, against a Colombian importer, resulted in a settlement and agreement not to import the product into the United States. The second case, against a Chinese importer, resulted in judgment of patent validity and an injunction against future importation. The third lawsuit against a domestic producer resulted in a settlement and acquisition of trademark rights from the defendant. The fourth lawsuit, against a Brazilian importer, resulted in the defendant stopping importation until patent expiration, and ultimately, settled. The fifth lawsuit, against a Norwegian importer and US subsidiary, settled shortly before trial. The sixth lawsuit, against a domestic producer, settled on the day before the trial was scheduled to start.
Trademark. We represent a well-known restaurant chain in trademark and trade dress enforcement proceedings. In 2012, we obtained a permanent injunction against a competing restaurant chain requiring the competitor to change the restaurant’s logos and color scheme.
We represent the world’s leading medical device provider in trademark enforcement and TTAB proceedings. In one recent case, the opponent changed the infringing advertising materials in response to our preliminary injunction motion.
We achieved a court order to shut down a website misdirecting Internet traffic to a competitor’s website through “typo-squatting.”
We represented a destination resort development in TTAB opposition cases against a hotel chain. We were able to negotiate a very favorable settlement that allowed our client to continue using its name.
We represented a board game company against another toy manufacturer with a similar name. The other company brought an opposition proceeding and we counterclaimed with a cancellation proceeding. After more than three years, we achieved a settlement that allowed the client’s mark to proceed to registration.
Copyright. Our client was threatened with a lawsuit claiming $200 million in damages due to alleged infringement of copyrights relating to back-to-back town homes. We defended the case through trial and appeal. The jury found no infringement and awarded a verdict on behalf of our client. We achieved a favorable settlement after the Court of Appeals remanded the case for a new trial.
Internet issues. While freedom of expression is a hallmark of our nation, free speech has limits. A corporate client found objectionable postings about the company’s stock on an Internet Service Provider (ISP) message board. The anonymous postings disparaged the corporation’s products, defamed corporate executives, and misused corporate trademarks – all of which may have affected the price of the corporation’s stock. We initiated “John Doe” lawsuits, which allowed us to subpoena identifying information from the ISP to track down the authors of the message board material. Once their identities were discovered, we were able to end the objectionable postings.
- Hormel Foods Corporation
- AGA Medical
- Allan Block Corporation
- Buffalo Wild Wings