Practice Areas & Industries: Buchanan Ingersoll & Rooney PC

Practice/Industry Group Overview

Intellectual property litigation presents a critical challenge to businesses, research centers, investors and entrepreneurs. Whether a party is a plaintiff or a defendant, litigation involving patents, trademarks, copyrights and other forms of intellectual property is complex and challenging. Buchanan Ingersoll & Rooney PC has experience in working with its clients in a broad range of intellectual property litigation strategies and forums.

IP litigation consistently involves complex and scientifically advanced technologies and concepts. Without technical and scientific training and knowledge that is deep, broad and current, a client's intellectual property cannot be fully understood, and the full range of litigation options and strategies available to a client cannot be implemented.

Buchanan has the requisite technical, engineering and scientific knowledge. The firm has many attorneys with advanced scientific, engineering and technical skills and degrees (including a significant number of advanced degrees) in traditional and emerging science and engineering fields:

• Aeronautical, astronautical and aerospace engineering
• Biotechnology and life sciences
• Chemistry, organic chemistry and chemical engineering
• Computer science and software development
• Electrical engineering and electronics
• Materials science and engineering
• Mechanical engineering
• Metallurgical engineering
• Molecular biochemistry, biophysics and genetics
• Nanotechnology
• Pharmaceutical and pharmacology

In addition, Buchanan has been in the forefront of bringing together the business and scientific communities in emerging fields. For example, the firm's nanotechnology attorneys founded both the Atlantic Nano Forum and the MIT-Stanford-UC Berkeley Nanotechnology Forum. They also serve as editors and advisors to the Nanotechnology Law and Business Journal. Several of the firm's attorneys have served as patent examiners for the United States Patent and Trademark Office (PTO).

Effective intellectual property litigation requires four key strengths in litigation counsel:

1. Specific technical and scientific knowledge and experience in IP issues
2. Litigation experience in the IP field
3. Litigation technology support to manage the complexities presented by IP litigation
4. Mobility of litigation counsel to address issues wherever they arise

Buchanan combines all four components to provide clients with efficient and comprehensive IP litigation services.

Integral to its IP comprehensive services, Buchanan protects the diverse interests of clients through IP litigation. This litigation experience spans the full range of intellectual property issues: patents, trademarks, trade dress, tradenames, copyrights, trade secrets, licensing, technology transfer and noncompete/non-disclosure agreements.

Buchanan IP litigators can also draw on the industry knowledge of their approximately 550 colleagues firmwide, whose clients reflect numerous academic, commercial and government enterprises, both domestic and foreign. With these resources, Buchanan is prepared to handle every aspect of IP litigation. The firm's attorneys have represented domestic and multinational clients in IP litigation in federal district courts and, where appropriate, in state courts throughout the United States as well as in appeals to the U.S. Court of Appeals for the Federal Circuit. In addition, Buchanan has represented clients before the International Trade Commission (ITC) and before the PTO.

Buchanan also appreciates and is experienced in the application of alternative dispute resolution options to IP disputes, whether mandated as procedures by a court or sought by a client in the interest of more expeditious or cost-saving approaches. Firm attorneys have effectively represented clients in arbitrations, mediations and negotiations, where appropriate. From a financial perspective, parties involved in IP litigation frequently need counsel with respect to insurance coverage potentially available to them. Buchanan has experienced attorneys capable of assessing coverage and insurer issues that may arise in IP litigation.

Sophisticated In-House Technology for Document Management, Case Organization and Trial Presentations

Because intellectual property often includes products and processes that are complex and highly technical, clear and effective communication with judges and juries is critical to effective presentation. These cases often involve substantial collections of documents ranging from small numbers to millions of hard copies and electronic data compilations reaching multiple gigabytes. This information must be managed, analyzed and stored for immediate retrieval in IP litigation. Buchanan has sophisticated technology resources available to organize and manage these litigation challenges in a cost-effective and efficient manner.

Just as importantly, the firm has attorneys and professional staff knowledgeable and experienced in the use of technology to address such issues. Buchanan internally employs a firmwide software platform (Summation) that is used to record, organize, code, analyze, retrieve and share documents, transcripts, videos and other forms of electronic data. This enables quick access to data by litigators and clients alike, wherever they are located.

Buchanan also uses a firmwide software platform (TrialDirector) for the presentation of evidence at trial, during hearings and in arbitrations or other fact-finding settings. This software permits digitizing of evidence and projection of that evidence in both visual and audio contexts to maximize the advocacy of client positions. Buchanan provides this resource inhouse, permitting the most flexible, cost-effective and individually prepared use of evidence.

Various professional and judicial groups have recognized the firm's use of the latest litigation technology software. In fact, Buchanan litigators are frequently asked to give presentations or provide consultations on the use of case presentation technology.

Mobility for Comprehensive Representation

IP cases often involve questions of jurisdiction and venue that require attorneys to be able to litigate with mobility. Buchanan is well-positioned for this purpose, as it maintains 16 offices in California, Delaware, Florida, New Jersey, New York, Pennsylvania, Virginia and Washington, D.C., covering many of the most active IP litigation jurisdictions, including the PTO in Alexandria, Virginia.

Just as important, Buchanan attorneys have both the experience in nationwide litigation and the technology support to maintain nationwide litigation representation for clients. Attorneys from the firm have litigated in jurisdictions throughout the country and are prepared to take the full range of Buchanan resources to whatever jurisdiction is required to protect our clients' interests.

Buchanan and its IP litigators stand ready to help protect your IP assets. No matter how complex the science, no matter how fierce the opposition, how complicated the claims, or how far and wide the contest ranges, Buchanan will be an unwavering champion in the litigation of our clients' interests in intellectual property disputes.

Litigation Experience that Extends to Major Areas of IP Litigation Today

Buchanan has served clients for many years in the areas of intellectual property litigation that are most often contested. These include: patents, trademarks, tradenames, trade dress, copyrights and non-compete/non-disclosure agreements; interference proceedings before the PTO Board of Patent Appeals and Interferences; and proceedings before the International Trade Commission.

Representative Litigation Experience

• GE Harris v. WABCO, District of Delaware. [Represented the defendant in a patent infringement case concerning a communication system for controlling the locomotives in a distributed power train assembly. A mutual settlement was reached after discovery.]
• IQE (Europe), Ltd. v. Rockwell Technologies, LLC, et al. , Civil Action No. 00-1069-SLR, United States District Court for the District of Delaware. [Representation of a United Kingdom corporation in a declaratory judgment action challenging validity and asserting noninfringement of a United States patent covering a process for manufacturing III/V compound semiconductor epitaxial wafers.]
• Solaia Technology, LLC v. Corn Products International, et al., Case No. 03 C 9295, United States District Court for the Northern District of Illinois. [Defense of a manufacturer of chemical and petroleum products against allegations of infringement of a United States patent covering programmable logic controllers ("PLCs") used to control manufacturing processes.]

Additional Representative Suits

• Prosecuted claims in Pennsylvania state court for a temporary restraining order and preliminary injunction barring the misappropriation of trade secrets on behalf of a pharmaceutical manufacturer.
• Obtained federal injunctions in a series of cases to stop the infringement of trademarks and copyrights via the Internet.
• Represented Kentucky subsidiary of large national bank in an action to protect the company against misappropriation of its trade secrets and unfair competition by a group of seven former employees. Successful resolution of litigation hinged upon forensic recovery of electronic and other evidence of defendants' misappropriation of trade secrets and unfair competition.
• Represented national information technology company in a $100 million trade secret/corporate raiding case in Virginia federal and state courts.
• Successfully took over the defense, as lead trial counsel, and negotiated a favorable settlement on behalf of an Internet service company against which a preliminary injunction was issued for alleged misappropriation of a competitor's trade secrets in Pennsylvania.