Experience
IP Licensing/Agreement Experience
Our attorneys have drafted a wide variety of agreements for clients to help them protect their intellectual property. Since 2011, we have drafted more than 575 total agreements, which can be broken down as follows:
Development Agreements (70)
- Independent Contractor Agreements (15)
- Talent Agreements (15)
- Presenter Agreements and Content Provider Agreements (10)
- Joint Ownership Agreements (10)
- Production Agreements (10)
- Employee Invention Policy and Agreements (5)
- Joint Development Agreements (5)
Litigation-related/Dispute Agreements (55)
- Pre-Litigation Settlement Agreements (15)
- Trademark Trial & Appeal Board Settlements (15)
- Co-Existence Agreements (10)
- Litigation Settlement Agreements – Patent Disputes (5)
- Litigation Settlement Agreements – Trademark Disputes (5)
- Joint Defense Agreements (5)
License Agreements (155)
- Software License Agreements (35)
- Patent License Agreements (35)
- Trademark License Agreements (20)
- End User License Agreements (15)
- Subscription Agreements (10)
- Software as a Service (SaaS Agreements (10)
- Channel Partner Agreements (10)
- Pilot Agreements (10)
- Copyright License Agreements (5)
- OEM License Agreements (5)
IT-related Agreements (170)
- Terms of Use and Privacy Policy (35)
- Healthcare-related IT Agreements (30)
- Software IT Agreements (25)
- Hardware IT Agreements (25)
- Master Client/Service Agreements (25)
- Support and Maintenance IT Agreements (15)
- Reseller Agreements (15)
Research Agreements (55)
- Advanced Research Agreements (25)
- Materials Transfer (20)
- Cooperative Research and Development Agreements (10)
Misc. Agreements (55)
- Non-Disclosure Agreements (25)
- Participant Agreements (10)
- Exclusive Sales Representation Agreements (5)
- Termination Agreements (5)
- Domain Purchase Agreements (5)
- Domain Escrow Agreements (5)
NPE Experience
We have defended clients in challenges to their patents from a wide variety of NPEs. Several representative examples of patents we have defended are below:
- Cascades Publishing Innovation, LLC: U.S. Patent 8386484
- Data Speed Technology LLC: US Patent 5,867,686 – High speed real-time information storage system
- eTagz: US Patent 7,503,502 – Computer readable hang tag and product
- eTagz: US Patent 7,703,686 – Consumer computer-readable product label apparatus and method
- eTagz: US Patent 6,298,332 – CD-Rom product label apparatus and method
- eWatch: US Patent 6,970,183 – Multimedia surveillance and monitoring system including network configuration
- Helfrich Patent Licensing: Various US Patents related to mobile device technology
- Honeywell International, Inc.: Various US Patents related to bar code and QR code technology
- Infinite Data, LLC: US Patent 5,790,530 – Message passing multiprocessor system)
- Innovatio IP Ventures: Various US Patents related to local area network radio frequencies and multiple channel wireless access
- Lemolson Foundation: Various US Patents relating to bar code technologies
- Lodsys: US Patent 7,222,078 – Interactive applications (smartphone apps)
- Mobile Logistics: Various US Patents related to transportation yard management systems
- MPHJ (formerly Project Paperless): Various US Patents related to computer architecture and document management
- Pragmatus Telecom, LLC: US Patent 6,322,231 – Method and system for coordinating data and voice communications via customer contract channel changing system using voiceover IP)
- Round Rock: Various US Patents related to radio frequency identification
- TPQ Development LLC: US Patent 5,412,730 – Encrypted data transmission system employing means for randomly altering the encryption keys)
- US Ethernet Innovations: Various US Patents related to Ethernet connections and point of sale
- Wireless Media: Various US Patents related to transportation yard management systems
- You Technology, Inc.: Various US Patents related to biometric technology
Breach of Contract and Trademark Infringement Matter
Represented The United States Playing Card Company in a breach of contract and trademark infringement matter. Verdict was rendered for U.S. Playing Card on breach of contract and for defendant Bicycle Club on the trademark infringement matter.
Copyright Infringement Matter
Represented Charles H. Mack & Associates in a copyright infringement matter against Brock International. The case was settled after intensive discovery and numerous depositions.
Debbie K, Inc. v. Jason Gavey, et al.
Represented Debbie K, Inc. and Déjà vu in Debbie K, Inc. v. Jason Garvey, et. al., in the Hamilton County Court of Common Pleas. After Court entered a Temporary Restraining Order in favor of our client, Debbie K, the case was settled pending a preliminary injunction hearing.
Inbound U.S. Intellectual Property and Trademarks Registration and Transactional Advice
We have provided a number of Indian companies with inbound U.S. intellectual property and trademarks registration and transactional advice.
Market Day Corporation v. Steven R. Maas d/b/a/ Northern Prime Meats Seafood and Steak Company
Represented Market Day Corporation in Market Day Corporation v. Steven R. Maas d/b/a Northern Prime Meats Seafood and Steak Company, in the Southern District of Ohio. A judgment was entered in favor of our client, Market Day.
National Equipment Distributing, Inc. v. Kalyn Siebert, Inc.
Represented Kalyn Siebert in National Equipment Distributing, Inc. v. Kalyn Siebert, Inc. in the Southern District of Ohio. The case was originally set for a motion for preliminary injunction. The case was ultimately dismissed by the Plaintiff.
Nationwide Mutual Insurance Company v. Sovereign Bank and Sovereign Bancorp. Inc.
Represented Sovereign Bancorp, Inc. in Nationwide Mutual Insurance Company v. Sovereign Bank and Sovereign Bancorp, Inc., in the Southern District of Ohio. After the Court entered a Temporary Restraining Order against our client, Sovereign, the Court found in favor of Sovereign after the preliminary injunction hearing. The case was settled pending appeal in the Sixth Circuit.
Outdoor Technologies, Inc. v. Vinyl Visions, LLC d/b/a/ Maximum Fence
Represented Outdoor Technologies, Inc. in Outdoor Technologies, Inc. v. Vinyl Visions, LLC d/b/a Maximum Fence, in the Southern District of Ohio. We represented Outdoor Technologies in a false advertising matter and the case was settled.
Personnel Support Systems Inc. v. Steven R. Harrington and Personnel Specialists, Inc.
Represented Steven Harrington in Personnel Support Systems Inc. v. Steven R. Harrington and Personnel Specialists, Inc. in the Southern District of Ohio. The case was scheduled for preliminary injunction and dismissed after initial expedited discovery.
Preliminary Injunction Matter
Represented Check Into Cash in the Northern District of Ohio in a preliminary injunction case. The case was settled approximately two weeks before the preliminary injunction hearing.
The Procter & Gamble Company v. Colgate-Palmolive Company
Represented The Procter & Gamble Company in The Procter & Gamble Company v. Colgate-Palmolive Company in the Southern District of New York on a copyright and trademark case. The case was tried to the Court. Judgment rendered for Colgate-Palmolive.
The United States Playing Card Company v. Harbro, LLC
Represented The United States Playing Card Company in The United States Playing Card Company v. Harbro, LLC, at the United States Trademark Trial and Appeal Board. We represented the United States Playing Card Company opposing the registration of the mark VEGAS as geographically misdescriptive. The Trademark Trial and Appeal Board found in favor of Harbro.
Trademark / Trade Dress Infringement and Unfair Competition
Represented Holloway Company in a trademark/trade dress infringement and unfair competition case. Judgment was rendered for Holloway at the close of plaintiff's case.
Trademark and Trade Dress Matter
Represented The Procter & Gamble Company in a trademark and trade dress matter versus Island Maid. Judgment was rendered for Procter & Gamble.
Trademark Cancellation Action
Represented The Procter & Gamble Company in a trademark cancellation action against The Good Earth. Judgment was rendered for The Procter & Gamble Company after trial.
Trademark Infringement and Declaratory Judgment Actions
Represented The United States Playing Card Company in a trademark infringement action in the Northern District of Georgia and a declaratory judgment action in the Southern District of Ohio. Both cases were settled prior to a preliminary injunction hearing.
Trademark Infringement Matter
Represented Celestion Industries in a trademark infringement matter versus Vernon Llewellyn. Judgment was rendered for Celestion.
Trademark Infringement Matter
Represented Overhead Door Company in a trademark infringement matter versus Service Overhead Door. Judgment was granted for Overhead Door.
Trademark Matter
Represented Guardian Life Insurance in a trademark matter in the Southern District of Ohio. The case was settled before the preliminary injunction hearing.
Trademark Rights Action
Represented The Procter & Gamble Company in a trademark rights action versus Hershey. Judgment was rendered for The Procter & Gamble Company.
Trademark Rights Action
Represented The Procter & Gamble Company in a trademark rights action versus Sentry Chemical. Judgment was rendered for The Procter & Gamble Company.