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Intellectual Property and Technology Litigation

Skadden represents clients in their most important intellectual property disputes, whether in federal or state court, before the International Trade Commission, or in mediation or global arbitration.

Skadden litigators protect clients’ key products and brands both by defending against infringement allegations and enforcing intellectual property rights, including in obtaining multimillion- dollar jury verdicts against competitors. Our trial experience allows us to anticipate and strategically manage every phase of a case, often giving us an edge in terms of resolving our clients’ matters without entering the courtroom. When cases do advance to trial, our clients benefit from the experience of our nationally recognized litigators, who have decades of success in federal and state courts and the ITC.

Companies call on us to resolve disputes relating to advertising, copyright, licensing, patents and trademarks across a broad spectrum of industries, including aerospace, biotechnology, chemicals, communications, computer technology, consumer products, electronics, financial services, life sciences, media and entertainment, medical devices, pharmaceuticals, semiconductors and sports, among other areas. We also provide strategic prelitigation advice in matters relating to infringement issues, trade secret misappropriation and business torts.

We repeatedly have been recognized for our intellectual property litigation capabilities. Skadden was ranked as a nationwide Tier 1 firm for patent litigation and intellectual property litigation by U.S. News — Best Lawyers “Best Law Firms” 2017. We were included in LMG Life Sciences’ 2016 rankings of law firms as a leader in Patent Strategy and Management. Skadden was named as a “powerhouse” in BTI’s IP Litigation category in 2016 and named among Law360’s 2015 Technology Practice Groups of the Year for our courtroom victories in the technology sector. We also were named to The National Law Journal’s 2013 “Intellectual Property Hot List.” Publications such as Chambers USA, the Daily Journal and The Best Lawyers in America have praised our experience before the ITC, our representation of some of the world’s largest technology companies and our track record of success in the courtroom and at the negotiating table. Skadden also was selected by The American Lawyer as a finalist in its 2014 “Litigation Department of the Year” issue, which was based in part on results we earned for clients in intellectual property disputes.

Advertising Litigation and Substantiation

Skadden’s intellectual property attorneys handle truth-in-advertising and claim-substantiation disputes and counseling, primarily for nationally known businesses offering consumer products and services. We have considerable experience prosecuting and defending false/misleading advertising claims brought under Section 43(a) of the Lanham Act, as well as defending Federal Trade Commission and other regulatory investigations. Along with attorneys from other Skadden practices, we also defend consumer class actions relating to allegedly deceptive advertising and consumer marketing practices.

We frequently represent clients in advertising disputes before the National Advertising Division and the Electronic Retailing Self-Regulation Program. Our attorneys, several of whom have science degrees and pharmaceutical industry experience, frequently are called upon to help evaluate claim substantiation, often in the context of cosmetics product and over-the-counter drug advertising.

In dealing with claim support issues, we often review copyright, trademark and right-of-privacy/publicity issues.

Our recent advertising experience includes representing:

  • Anheuser-Busch, Inc. in several NAD investigations involving MillerCoors.
  • Aramis Inc. in a consumer class action lawsuit in federal court in San Diego.
  • Clinique Laboratories, LLC in a consumer class action lawsuit in federal court in Connecticut challenging advertising claims for Repairwear collection antiaging products. The dismissal of the lawsuit was affirmed by the Second Circuit.
  • Estée Lauder Inc. in the successful defense of a consumer class action lawsuit filed in federal court in the Eastern District of New York challenging advertising for Advanced Night Repair. Fresh Del Monte Produce, Inc. in a federal false advertising lawsuit in which our client recovered substantial damages following a two-week jury trial.
  • International Trademark Association in an amicus submission to the U.S. Supreme Court regarding the appropriate standard for establishing standing to assert Lanham Act false advertising claims.
  • Jackson Hewitt in a false advertising lawsuit against H&R Block in federal district court in New York.
  • Origins Natural Resources, Inc. in the successful defense of a consumer class action lawsuit in federal court in Chicago, challenging launch advertising claims for Plantscription Anti-Aging Serum, and in a successful appeal to the NARB from an adverse NAD decision.
  • Pfizer, Inc. in NAD challenges to promotional claims made by Bayer Corp. for nutritional supplements.
  • The Reader’s Digest in its successful defense of state law deceptive trade practices claims challenging subscription practices and advertisements.
  • Red Bull North America, Inc. in consumer class actions in federal court in New York.
  • Sirius XM in successfully defending state and federal consumer class action matters.

Copyright and Trademark Litigation

Skadden’s intellectual property attorneys have extensive experience litigating matters involving copyright, trademark, trade dress and rights of publicity.

Our recent experience includes representing:

Copyright Matters

  • Houghton Mifflin Harcourt Publishing Company and RR Donnelley & Sons Co.in the dismissals of numerous copyright infringement claims.
  • MGA Entertainment in numerous victories in the U.S. District Court for the Central District of California and before the U.S. Court of Appeals for the Second Circuit in connection with trademark, copyright and related claims involving its Bratz dolls.
  • The National Football League in obtaining dismissal of a copyright infringement lawsuit in the U.S. District Court for the Southern District of New York brought by photographers against the NFL, its clubs and others.
  • The National Basketball Association, the National Football League, the National Hockey League and the Office of the Commissioner of Baseball as amici in a copyright infringement lawsuit pending before the U.S. Court of Appeals for the Ninth Circuit arguing that the defendant-appellant FilmOn X LLC and its affiliates engaged in the unauthorized retransmission of copyrighted content in violation of the public performance right under the Copyright Act.

Trademark Matters

  • Carnegie Hall in two cybersquatting proceedings commenced pursuant to the Uniform Domain Name Dispute Resolution Policy.
  • Citigroup Inc. in opposition proceedings before the Trademark Trial and Appeal Board challenging the registration of trademarks confusingly similar to the “Citi” family of marks.
  • Citigroup Inc. in a lawsuit in federal court in New York challenging the use of the mark CITIVEST.
  • Credit Acceptance Corporation in a lawsuit in the U.S. District Court for the Central District of California against DriveTime Automotive Group, Inc. and its affiliated companies seeking cancellation of one of DriveTime’s trademarks and a declaration of non-infringement.
  • Fab.com, Inc. as defendant and counterclaimant in a California state action brought by Just Fabulous Inc. regarding infringement violations, claims under California’s Unfair Competition law, and claims against Fab.com’s entitlement to register on the Principal Register of the United States Patent and Trademark Office.
  • Filmmaker Brett Ratner in a lawsuit in the U.S. District Court for the Central District of California against Heaven Hill Distilleries, Inc. seeking a declaration of non-infringement in connection with the launch of a high-end blended whiskey.
  • Fresh Del Monte Produce, Inc. in a lawsuit in the U.S. District Court for the Central District of California against Del Monte Corporation in connection with the top-level domain <.delmonte>.
  • International Trademark Association in an amicus brief to the U.S. Supreme Court regarding the appropriate standard for establishing trademark tacking.
  • Jade Range, LLC in a lawsuit in the U.S. District Court for the Central District of California and in opposition proceedings before the Trademark Trial and Appeal Board, in connection with the alleged infringement of its FIRE and ICE trademark by a competitor.
  • Marques De L’Etat de Monaco, Société Anonyme Monegasque in an opposition proceeding successfully challenging the registration of the mark MONACO INTELLIGENCE SERVICE.
  • NQ Mobile, Inc. and Eminence States Investments Limited in obtaining the dismissal of a lawsuit in the U.S. District Court for the Southern District of New York brought by Conexus Software, Inc. alleging fraudulent inducement and breach of the covenant of good faith and fair dealing in connection with a domain name transfer agreement.
  • Rosetta Stone in settling its trademark infringement suit against Google. The company’s suit claimed that Google’s AdWords advertising program and conduct infringed Rosetta Stone’s trademarks, resulting in consumer confusion and contributing to software counterfeiting problems.

Patent Litigation

Skadden’s intellectual property attorneys possess both the legal experience and technical training critical to developing creative, forceful strategies for companies embroiled in patent disputes. Many of our patent attorneys are registered to practice before the U.S. Patent and Trademark Office (USPTO) and hold technical or scientific degrees, in areas such as electrical engineering, computer science, biology, chemistry and physics.

Our team has represented or has currently representing:

  • Best Buy Co., Inc. in securing summary judgment in a federal patent infringement dispute brought by Illinois Computer Research, a computer technology patent holder, alleging that certain sound cards sold by Best Buy in its stores and on its website infringed on its patents relating to multichannel sound card technology.
  • BlackBerry Ltd. in five separate federal patent litigations, including a nine-patent infringement case implicating patents for digital rights management technology as well as an industry-wide case concerning camera phone technology, and in securing the dismissal of two additional federal patent litigations.
  • Chicago Mercantile Exchange in patent litigations in the U.S. District Court for the Northern District of Illinois against Technology Research Group and in the U.S. District Court for the District of Delaware against Fifth Market. Credit Acceptance in a patent litigatio
  • n and related CBM proceedings against Westlake Services concerning consumer product financing technology.
  • Endurance Specialty Holdings, Ltd. in securing the dismissal of a federal patent infringement lawsuit brought by SnowCast Solutions LLC alleging infringement of two of its patents and claims for deceptive trade practices.
  • Medtronic Inc. and Medtronic Vascular Inc. in a patent infringement suit against certain of Medtronic’s stent products brought by LifePort Sciences LLC in the District of Delaware, and in a related proceeding before the Patent & Trademark Appeals Board. Skadden is also handling the appeal of the PTAB’s decision, which is currently under review by the U.S. Court of Appeals for the Federal Circuit.
  • SanDisk Corporation in:

    • securing a $32.8 million jury verdict in a long-running patent license dispute against PNY Technologies, wherein jury found that PNY failed to pay royalties owed to SanDisk on PNY’s sales of USB flash memory drives, Solid State Drives and Compact Flash cards; and
    • securing the favorable settlement of a federal intellectual property lawsuit in connection with allegations of patent infringement by Shea Integration Solutions Corp.
  • Sophos Inc. and Cyberoam Inc. in a federal lawsuit brought by Alcatel-Lucent USA Inc. alleging patent infringement related to certain internet security devices. Alkar-RapidPak-MP; Patriot Universal Holdings, LLC; and Tomahawk Manufacturing Inc. in securing the favorable settlement of a federal patent infringement case against food processing manufacturer Formax Inc. and its parent company Provisur Technologies Inc.
  • Brocade Communications Systems as plaintiff in a $112 million jury verdict in a patent, copyright and trade secret case against A10 Networks. Following a three-week trial, a jury in the U.S. District Court for the Northern District of California returned a unanimous verdict in favor of Brocade. The judge subsequently granted an injunction.
  • Endo Health Solutions in a range of pharmaceutical litigation matters, including patent infringement pursuant to the Hatch-Waxman Act, and contractual actions arising out of drug development agreements.
  • Goldman Sachs, J.P. Morgan Chase and Morgan Stanley, as well as several other financial services firms, in claims brought against the defendants by Realtime Data, alleging infringement upon Realtime’s patents for data compression and decompression technology. Skadden secured the case’s transfer to the U.S. District Court for the Southern District of New York and its ultimate resolution on summary judgment, which was affirmed in the U.S. Court of Appeals for the Federal Circuit.
  • Hewlett Packard in several cases, including the successful settlement of a patent dispute with plaintiff WIAV Networks implicating wireless technology being used by the entire industry. The case settled following a number of pre-trial victories and a tentative claim construction order that accepted our arguments on a number of case-dispositive issues.
  • Hexcel Corporation in securing dismissal of a patent infringement suit in the District of Delaware concerning composite fiber materials employed in the manufacture of wind turbine blades. INSIDE Secure S.A. in securing the dismissal of a federal declaratory judgment action brought by chipmaker NXP Semiconductors USA Inc. seeking non-infringement and invalidity claims as to three of INSIDE Secure’s U.S. patents covering “near field communications” technology, the short-range wireless technology used for contactless communication between a smart phone and a terminal in connection with electronic payments and other data transfers.
  • Johnson Matthey in various patent infringement, antitrust and contract actions relating to industrial chemicals, cancer treat- ment materials, active pharmaceutical ingredients and finished drug products.
  • JPMorgan Chase & Co. in securing a Federal Circuit denial to rehear Pi-Net International Inc.’s appeal of a patent infringement lawsuit alleging three patents related to interactive online banking websites. JPMorgan had previously secured a favorable summary judgment at the district court level.
  • Medtronic in several cases, including achieving a complete defense verdict in a patent infringement case brought by W.L. Gore & Associates in the U.S. District Court for the Eastern District of Virginia and securing a jury verdict against AGA Medical for more than $57 million in the U.S. District Court for the Northern District of California.
  • SanDisk Corp. in numerous patent and patent-antitrust victories, including a trial victory in the U.S. District Court of the Western District of Wisconsin against Kingston Technologies. Viewpointe Archive Services in obtaining a complete victory after a jury trial in the U.S. District Court for the Eastern District of Texas in patent litigation brought by DataTreasury Corporation involving remote capture, transmission and storage of check images.
  • Yahoo! Inc. in a six-patent suit involving video categorization and video streaming filed by Preservation Technologies in the U.S. District Court for the Central District of California.

Life Sciences Patent Litigation and PTAB Proceedings

Skadden’s intellectual property attorneys possess both the legal experience and technical training critical to developing creative, forceful strategies for companies embroiled in patent disputes in the life sciences realm. In addition to our vast experience litigating patent cases in federal courts (including Hatch-Waxman and other intra-industry litigation as well as representing clients in cases brought by non-practicing entities), Skadden’s patent and technology litigators also have substantial experience with postgrant proceedings including inter partes review proceedings before the Patent Trial and Appeal Board (PTAB).

Our patent attorneys are registered to practice before the USPTO and hold technical or scientific degrees, in areas such as bioengineering, biomedical engineering, biology, chemistry, biochemistry and physics. Our health care and life sciences clients also routinely call on us to handle patent and technology disputes that arise on issues outside of their core businesses. These matters have included patent litigation concerning the use of RFID tracking technology on shipments of pharmaceuticals, software licensing disputes for health care clients and advice on non-disclosure agreement and employment issues involving the ownership of IP rights.

Our attorneys also perform “deep-dive” intellectual property diligence for clients in the pharmaceuticals, medical device and diagnostics, and biotechnology industries in connection with matters relating to acquisitions, divestitures, financings and investments. Because of our strength in litigation, we are able to help identify both strengths and potential stress points for various IP assets.

Relevant experience includes:

  • Defense of patent infringement claims brought by a non-practicing entity relating to a laser catheter system used in the treatment of prostate ailments;
  • Enforcement of patent rights concerning an ADHD treatment;
  • Multiple patent litigations and inter partes reviews involving arterial stent technology and other medical devices, including achieving a complete defense verdict in a patent infringement case, securing a jury verdict for more than $57 million, and securing the termination of a six-year injunction and defeating a subsequent preliminary injunctive motion;
  • Patent infringement suits pursuant to the Hatch-Waxman Act (and related appeals) concerning opioid analgesics, ADHD treatments, cancer treatment materials, and a method for treatment of Alzheimer’s disease;
  • Securing a global settlement of patent litigation concerning patent rights for a biologic treatment of Fabry’s disease;
  • Patent interference and federal circuit appeal concerning method of manufacturing opioid analgesics; and
  • Defense of patent infringement claims concerning apheresis technology.

Our healthcare and life sciences clients also routinely call on us to handle patent and technology disputes that arise on issues outside of their core businesses. These matters have included patent litigation concerning the use of RFID tracking technology on shipments of pharmaceuticals, software licensing disputes for health care clients and advice on non-disclosure agreement and employment issues involving the ownership of IP rights.

Trade Secret Litigation

Skadden’s intellectual property attorneys also combine their technical know-how and litigation experience to assist clients in protecting trade secrets and defending against misappropriation claims. With increasing employee mobility and the proliferation of available methods for viewing, sharing and storing data, the number of trade secret disputes is on the rise. Trade secret cases can also involve copyright disputes, claims to enforce or invalidate confidentiality agreements, covenants not to compete or other agreements. Skadden’s attorneys have extensive experience handing all aspects of these cases from the initial investigation all the way through appeal.

Our team has represented:

  • Aspen Technology in a trade secret misappropriation and copyright infringement case in connection with claims filed by the company against competitor M3 Technology. Following a three-week trial in the Southern District of Texas, a jury found in favor of AspenTech on all of its claims and awarded the company more than $10 million in actual and punitive damages.
  • Citi Habitats in securing a temporary restraining order against Urban Compass, Inc., which it accuses of gaining unauthorized access to its proprietary password-protected real estate listing software.
  • International Flavors and Fragrances Inc. in an ongoing case involving allegations of trade secret misappropriation and breach of contract related to a spray-drying technology for drying liquids into powders in the District of New Jersey.
  • Rocket Software in the successful defense against a motion for preliminary injunction by a leading global software development firm. The case, which involved trade secret misappropriation and copyright infringement claims, was pending in the Eastern District of New York and was settled favorably before trial.
  • Valeant Pharmaceuticals International in an arbitration with Anacor Pharmaceuticals concerning trade secret and contract claims related to a treatment for onychomycosis.
  • ZeniMax in an ongoing case against Oculus and Facebook pending in the Northern District of Texas pertaining to virtual reality technology. The claims include trade secret misappropriation, copyright and trademark infringement as well as contract and unfair competition claims.

IP Licensing Disputes

Skadden’s intellectual property attorneys also have extensive experience handling disputes arising out of patent licenses, settlements, development agreements, non-disclosure agreements and other patent and technology-related agreements. Adjudicated in federal and state courts as well as in arbitrations, these disputes can require a deep understanding of the technical subject matter underlying the dispute. Skadden’s intellectual property attorneys are well equipped to assist its clients with these complex and often high stakes cases.

Our team has represented:

  • Endo Health Solutions in a contractual action arising out of a drug development agreement.
  • Fresh Del Monte Produce, Inc., the exclusive licensee of the DEL MONTE trademark for fruit, vegetables and produce products, challenging licensor Del Monte Corporation’s use of the DEL MONTE trademark on certain fruit products. Fresh Del Monte prevailed following a two-week jury trial in the Southern District of New York, recovering damages and obtaining injunctive relief.
  • J.P. Morgan Chase in a breach of contract action against DataTreasury Corp. in the Eastern District of Texas.
  • Professional golfer Rory McIlroy in a lawsuit brought by Oakley, Inc. in the Central District of California alleging breach of a product endorsement agreement.
  • Mount Sinai Medical Center in securing a settlement with MedImmune Inc. regarding patent rights for the H1N1 vaccine.
  • The Ohana Companies in an unfair competition matter involving electronic rebate services in the Northern District of Illinois.
  • Viridis Waste Control in a case against St. Clair County, Michigan, CTI and Associates and Accelerated Landfill Technology in the Eastern District of Michigan. The claims, which included unfair competition and Lanham Act claims, stemmed from a dispute concerning the ownership of a patent directed to renewable energy and waste management.