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Practice/Industry Group Overview
Crowell & Moring LLP offers the full array of intellectual property legal services, from patent to trademark to unfair competition to copyright to trade secret matters in a variety of technological and commercial fields. In this information-technology age, it is no longer enough to procure intellectual property rights. To be successful, companies must be vigilant in procuring, maintaining, and enforcing those rights. We assist our clients in those efforts. Crowell & Moring attorneys offer the combined skills and experience across the full range of intellectual property disciplines. Our intellectual property litigators provide substantial jury and non-jury trial expertise in complex litigation. We design and implement licensing schemes for all types of intellectual property assets. We draft and negotiate complex licenses and technology transfer agreements. We also conduct training regarding intellectual property protection and assist clients in setting up internal policing and enforcement policies. We offer a full range of services in patent prosecution and procurement that puts us among the top 30 United States firms, measured by volume of patents procured. Our Intellectual Property practice employs an integrated approach to intellectual property services that provides value and judgment to the matters we handle. Our litigation teams benefit from the technological expertise and insight of our patent prosecution attorneys, and our prosecution attorneys are well aware of how to prepare and prosecute patent applications that can withstand the attacks that frequently occur during litigation. We also work intimately with other Crowell & Moring attorneys in our litigation, antitrust, transactional, international, communications, labor, health care, corporate and government contract groups to provide full service legal representation to our clients. Intellectual Property Acquisitions Crowell & Moring’s strength lies not only in the talent and experience of each of our many different attorney practice groups, but in the frequent interaction among them. Our practice of combining particularly relevant expertise allows us to offer the comprehensive services our clients need most. Intellectual property is an excellent example of our convergent client-based approach. Not only can our lawyers negotiate a complex invention through the patenting process; we also work together to enhance the value of the patents that are obtained, as well. The services we offer include: obtaining venture capital; devising tax strategies to commercialize an invention; finding and licensing the right partners to exploit the invention effectively, litigating against those who misappropriate the invention; and clearing the invention through other necessary governmental regulatory bodies, such as the Food and Drug Administration and the Federal Trade Commission. Our transactional experience includes: - management of intellectual property rights issues in mergers and acquisitions
- licensing of patents, know-how, trademarks, copyrights, and computer software
- assignments of intellectual property
- technology and know-how transfers
- technical assistance agreements and joint venture agreements
- collaborative research agreements involving private parties, the U.S. Government, universities, and research institutions
In collaboration with our experienced antitrust lawyers both in the United States and Europe, our lawyers also assist clients who require merger or acquisition clearances from U.S. or European regulators. Proper analysis of patent portfolios is a rapidly expanding aspect of this practice. Intellectual Property – Antitrust Crowell & Moring has broad and deep experience in dealing with the complex interface between Intellectual Property (“IP”) and Antitrust law. While a number of law firms practice IP, Antitrust, or both, we believe we are unusual, if not unique, in having a team devoted specially to the interface of these two complex disciplines. IP-Antitrust counseling requires extensive expertise in substantive IP and Antitrust law and hands-on experience with the specific business realities that are affected by IP-Antitrust issues. There has long been a tension and interrelationship between IP and Antitrust laws. The Patent Act, in particular, grants a right of finite duration to exclude others from practicing the claimed invention. Antitrust law, in contrast, promotes competition and frequently condemns exclusionary practices. The Federal Trade Commission and the Antitrust Division of the U.S. Department of Justice have renewed their interest in the interface of these two areas of law. Those agencies have in recent years held extensive hearings of these issues. The FTC has issued a 350 page report recounting what it views as anticompetitive deficiencies in the current IP law. Both agencies have complained that too many invalid patent are being issued and exerting an anticompetitive drag on the U.S. economy. This year, the Wall Street Journal has itself editorialized to this effect. See March 1, 2006, page A14, “Patently Absurd.” Indeed, the Journal claims that “U.S. patent law has been hijacked so that it now operates nearly in reverse, deterring research and penalizing innovation.” At various points throughout history, the United States Supreme Court has weighed the two interests for itself. In 2006, however, the Supreme Court will have looked at 10 cases raising these types of issues – more cases than have been reviewed in nearly half a century. Our team of experienced IP-Antitrust litigators has recently published the definitive analysis of these pending cases, "The Clash Of IP and Antitrust," Global Competition Review, June 2006. The renewed interest by the Supreme Court is no doubt in part influenced by the new industry outcries that questionable patents are acting as a drag on U.S. competitiveness in the world economy. The European Commission is also looking at IP-Antitrust issues. Through our IP-Antitrust team resident in our Brussels office, we constantly monitor those developments as well. Given the current environment, our clients have found IP-Antitrust expertise to be increasingly important. We regularly monitor developments in cases before the United States Court of Appeals for the Federal Circuit and the United States Supreme Court that raise IP-Antitrust concerns. We also regularly hold IP-Antitrust workshops for our clients and friends, so that they can keep informed of changes as they evolve. In addition, on a day-to-day basis we practice both Antitrust and IP litigation in the federal courts, and we counsel clients represent them in court with respect to many of the same issues, including Walker Process fraud on the United States Patent and Trademark Office and sham patent infringement litigation. We are regular outside antitrust counsel for the largest patent pool administrator, and deal with cutting-edge issues of competitor collaborations involving IP. And, we routinely counsel clients involving the interface of IP and Antitrust law with respect to bilateral patent licensing, multi-lateral licensing, standards, and patent pools. If your company is or may become either a plaintiff or defendant in IP litigation, or is considering patent licensing or participation in a patent pool, our IP-Antitrust team can provide you with valuable, up-to-date insights on the complex interrelationship between IP and Antitrust law. Intellectual Property - Copyright Registration and Enforcement Our Intellectual Property attorneys are experienced in copyright maintenance, licensing, and enforcement in the publishing, communications, and software fields. Our experts negotiate content license agreements, software license agreements, collaborative author agreements, agency agreements, publishing agreements, and confidentiality agreements, just to name a few. Our attorneys have written and spoken widely about copyright and the Internet, including internet jurisdiction, contributory and vicarious liability issues, the Digital Millenium Copyright Act, third-party content, website look and feel protection, and joint ownership of content. Our attorneys advise clients and speak about database protection, including new protections being considered by the United States government and the European Union. Some recent and ongoing efforts include: - Representing a coalition of all US commercial television stations in cases involving the annual award and allocation of hundreds of millions of dollars in copyright royalties paid under cable compulsory license, achieving a 100 percent increase in royalty share over the course of the proceedings.
- Representing a coalition of US commercial television stations in separate proceedings to set and distribute copyright royalties under satellite compulsory license provisions.
- Compiled a comprehensive set of Copyright Management Documents on behalf of a client setting up an internal copyright policing and enforcement structure.
- Negotiated software license agreements under Open Source and Free Software Foundation principles.
- Negotiated a complex master services agreement, along with software licenses, hosting, and other services agreements, on behalf of a B2B exchange client with various eBusiness IT services vendors.
Intellectual Property Rights Counseling Crowell & Moring LLP attorneys counsel clients on all aspects of intellectual property including protection, enforcement, and transfer of intellectual property. We frequently conduct mini-seminars and other training programs designed to assist our clients in implementing and managing their intellectual property programs, and to apprise them of significant developments in intellectual property disputes and control the substantial exposure that can result from willful violation of third-party patent and other intellectual property rights (e.g. treble damages and attorneys' fees). Some of the areas in which we frequently counsel our clients include: - Analysis and advice regarding third-party patent and other intellectual property rights, including preparation of opinions on issues of patent validity, enforceability, and infringement
- patentability issues
- intellectual property portfolio management procedures, including invention record-keeping, intercompany invention reporting, patent incentive programs, and patent reviews
- proprietary information protection programs, including employee confidentiality and invention agreements, consulting agreements, trade secret protection practices and policies, employee exit procedures, and clean room design-around procedures
- trademark selection, maintenance, and enforcement, including trademark clearance, evaluation of third-party trademark rights, and trademark usage and maintenance programs
- protection of patent and data rights in connection with government contract procurement and performance
- patent and trademark licensing programs, including development of model licenses and implementation of quality control programs
- copyright maintenance, licensing, and enforcement in the publishing, communications, and software fields, including royalty structures and policing and avoiding copyright infringement
Intellectual Property Litigation Overview Long known as one of Washington’s top trial firms in a variety of practice areas, Crowell & Moring is quickly developing a national reputation as a leader in intellectual property litigation. With a particular emphasis on patent litigation, we have become a go-to firm for many of the world’s leading technology companies in diverse industries including telecommunications, computer hardware and software, consumer electronics, automotive, aerospace, and pharmaceuticals. Our lawyers have substantial jury and bench trial experience in federal courts across the country, with a growing track record of successful results for our clients in IP cases. Patents Excellence in trial and litigation skills and broad technical expertise are the hallmarks of our patent litigation practice. Our patent litigation specialists consider themselves trial lawyers first and foremost, and they pride themselves on the ability to convey even the most technical subject matter in ways that strike a chord with lay jurors and judges. To this end, our litigators are skilled in using multimedia presentation techniques and tools, and they routinely monitor the latest developments in this field to ensure they present their cases in the most compelling manner possible. We never shy away from taking a case all the way to trial, yet we recognize that often it is in a client’s best interest to dispose of disputes more expeditiously. Indeed, since cases are often effectively won or lost at the claim construction stage, our experienced litigators bring the full force of their trial expertise to bear on Markman hearings. In addition to trial work, our attorneys frequently argue appeals before the U.S. Court of Appeals for the Federal Circuit. Many of our patent litigators also have substantial technical expertise garnered both from academic and real-world experiences, enabling them to understand not only the technology at issue in any given case, but just as importantly, how that technology fits into a client’s business objectives. Where additional technical expertise is desirable, our litigators can draw on the diverse talents and experiences of our many patent procurement specialists. Crowell & Moring is ranked among the leading patent procurement firms in the country. This combination of litigation and patent procurement expertise also makes us particularly effective in handling interference proceedings at the U.S. Patent and Trademark Office. Trademarks and Unfair Competition We regularly enforce and defend against trademark infringement actions in federal and state courts across the country. We have litigated cases involving sound marks, comic book characters, and company service marks, obtaining temporary restraining orders and preliminary injunctions to immediately stop infringing activity. We also have filed and defended against administrative oppositions and cancellations in the Patent and Trademark Office in connection with federal trademark applications and registrations. In addition, where trademark rights are implicated, we have prosecuted arbitrations over domain names before World Intellectual Property Organization forums. Copyrights We have wide experience litigating copyright cases across a broad spectrum of content, including computer software, comic books and music. On the civil side, our litigators have been successful in obtaining temporary restraining orders, preliminary and permanent injunctions, and summary judgments. On the criminal side, we have assisted clients in making complaints against content pirates to the Department of Justice, resulting in indictments. We have represented several Fortune 500 companies in copyright cases involving software. To better serve our clients in technology-related cases, several of our copyright litigators have technical and advanced degrees in subjects such as electrical engineering, mathematics and computer science. Our attorneys are on the forefront of developing law where copyright issues interface with trade secrets, right of publicity, privacy, First Amendment, and fair use issues. Our senior litigators have published on topics ranging from the Supreme Court's seminal Grokster decision, to the difficulty of protecting content in a digital environment, to the scope of the Digital Millennium Copyright Act. We also regularly sponsor symposia on cutting edge copyright issues, give speeches, and participate in copyright committees sponsored by national bar associations. Section 337 We have substantial experience trying cases before the U.S. International Trade Commission under Section 337 of the Tariff Act of 1930. In a number of instances, these cases have run in parallel with related patent infringement actions in federal district court, and our lawyers are skilled at handling the strategic and logistical challenges that such concurrent litigation presents. Trade Secrets We have litigated cases involving a wide variety of trade secrets involving computer software, customer lists, and employee compensation, succeeding in obtaining injunctions against misappropriators. We understand the importance of using key technical experts to demonstrate misappropriations. Where necessary, we work closely with the FBI to prevent further disclosures of client secrets, or to arrest hackers. Since many of the cases we handle involve computer-related trade secrets, we are experienced in working with digital forensic experts to find and close technical weaknesses. We have developed a systematic protocol for how an organization should respond to misappropriations of their key trade secrets. Intellectual Property - Patent Prosecution Intellectual property rights have been described as "today's international currency." Protection of intellectual property rights frequently plays an essential role in the success or failure of a business venture, especially where substantial effort and capital investment are devoted to the development of new technology or new ideas. Our attorneys assist the firm's clients in obtaining protection for the inventions and other valuable proprietary rights through the preparation and prosecution of utility and design patent applications. Because innovations often involve aspects of different technology areas, our attorneys are experienced in handling matters outside of their core area of expertise. We recognize that there is little benefit to obtaining a patent that is subsequently found invalid or severely narrowed in litigation. By assisting on litigation matters and preparing Intellectual Property Alerts of recent Federal Circuit cases our attorneys are aware of current issues affecting the scope of patent protection. Because it is no longer sufficient in today's global economy to limit protection to the U.S. domestic market, we also assist our clients in the filing of patent applications in other countries and in obtaining protection under the Patent Cooperation Treaty. For this purpose, we have established working relationships with foreign associate attorneys in numerous countries throughout the world. Intellectual Property - Trademark Protection and Maintenance Crowell & Moring LLP intellectual property attorneys provide full service capabilities in the preparation, prosecution, and maintenance of trademarks. We handle trademark matters on a worldwide basis through an international network of foreign associates. Our legal assistants are specially trained in trademark application preparation and prosecution procedures and state-of-the-art docketing techniques, to facilitate the cost-effective management of our docket. We also work closely with our clients to design and establish in-house programs and procedures to facilitate the cost-effective preparation and prosecution of trademark applications. We also represent clients in opposition and cancellation proceedings. One of our recent successes in a case before the Trademark Trial and Appeal Board resulted in the cancellation of a trademark consisting of the word Internet. We are also expert at licensing and transferring federal and common-law trademarks, including development of model licenses and implementation of quality control programs. Our attorneys also practice in a variety of other trademark-related areas. Some of these areas include: - Trademark law applied to the Internet, namely use of a mark as a domain name, linking, cross-licensing, metatags, and keywords. Our attorneys have lectured and written on the Uniform Dispute Resolution procedures, as well as the Anticybersquatting Act.
- Trademark fair use issues, and unfair competition and advertising.
- Trade secret protection, including drafting of secrecy policies, and confidentiality agreements.
Technology, Media & Telecommunications Crowell & Moring LLP's Technology, Media and Telecommunications ("TMT") practice captures the convergence of legal and technology issues affecting clients providing communications, publishing and e-commerce services to industry and consumers. Our TMT attorneys work with clients on matters arising from: - contracting for information technology equipment and services;
- U.S. and European regulation of the telecommunications and media industries;
- the expanding role of Internet as a place for doing business and eBusiness;
- the development and protection of intellectual property rights in technology to serve telecommunications, publishing and e-commerce;
- antitrust regulation, counseling and litigation;
- the increasingly complex regulation in the United States and Europe of privacy and data collection rights in personal information.
Our TMT practice and European Practice focuses on the regulation, protection, and disposition of rights to technology, information, spectrum, and intellectual property, in the United States and in international trade. Consistent with its focus on these cutting edge issues, we participate in a broad range of legislation, litigation, and corporate transactions that reflect the rapidly changing nature of communications, publishing and commerce in today's society. Our goal is to use our specialized experience and expertise to help our clients shape and reap the advantages of the regulations, policies and commercial environment affecting the way they do business.
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Services Available
Representative Engagements MAN Roland v. Heidelberg Web Systems (D.N.H.): Representing declaratory judgment plaintiff in patent litigation involving high-speed printing press technology. TiVo v. EchoStar Communications et al. (E.D. Tex.): Special counsel in jury trial resulting in $74 million award for infringement of patent on "multi-media time-warping system." Curtiss-Wright v. Velan (W.D. Tex.; Fed. Cir.): Represented patentee in infringement action involving life-saving coke drum de-heading valve used in oil refining industry. MIT v. Abacus Software et al. (E.D. Tex.): Defending software developer in multi-party patent infringement litigation involving color reproduction technology. Hayes v. Penny & Giles et al. (D.N.J.): Defended four aerospace companies in patent infringement suit involving endothermic chemical heat sink used in flight data recorders. PSN Illinois v. Den-Mat et al. (N.D. Ill.; Fed. Cir.): Defending dental supply company in multi-defendant infringement action involving method for making porcelain dental restorations. Symbility v. Xactware (E.D. Mich.): Represented patentee in declaratory judgment action involving patented graphics-based construction estimation software. Linex v. Nortel et al. (S.D. Fla.): Defending telecommunications infrastructure supplier in multi-defendant infringement action involving wireless “mesh network” technology. R.R. Donnelley & Sons v. Kodak et al. (D. Del.): Defended digital imaging company in infringement action involving patents directed to controlling an electronic printing press. Henrob v. BMW (E.D. Mich.): Defending German automaker in case involving patented riveting process. Orion IP v. BMW, Porsche (E.D. Tex.): Defended German automakers in patent infringement action involving electronic proposal generation. Freedom Wireless v. Sprint Nextel (D. Mass.; Fed. Cir.): Defending telecommunications services company in patent case involving prepaid wireless technology. Quickturn Technologies v. Mentorgraphics (D. Or.): Secured dismissal of foreign defendant and transfer of action against domestic defendant in infringement case involving computer chip technology. F&G v. Giga-Byte et al. (S.D. Fla.): Defended Chinese computer equipment manufacturer in case involving computer mouse scrolling technology. Oakley v. BMW (S.D. Cal.): Successfully defended automaker from patent infringement claim directed at automotive accessories. Thomas v. Sprint Nextel et al. (M.D.N.C.; E.D. Tex.): Defended telecommunications company in patent infringement action involving technology for controlling provision of utility services to consumers. Curtiss-Wright v. Zimmermann & Jansen et al. (C.D. Cal.): Represented patentee in infringement action involving automated coke drum de-heading technology. Knorr-Bremse v. Dana (E.D. Va.; Fed. Cir.): Won willful infringement decision and attorneys fees following trial on patent relating to air disc brakes used in commercial vehicles, leading to seminal Federal Circuit decision on willfulness. Mobil Oil v. Inteplast et al. (D. Del.): Won willful infringement verdict at trial on patent directed to tear-resistant plastic bags. TA Instruments v. Perkin-Elmer (D. Del.): Won infringement verdict at trial on patent relating to differential scanning calorimeter technology. Aptar v. Summit (N.D. Ill.): Won willful infringement verdict, and defeated infringement counterclaims, regarding various patents concerning mounting caps and other features of aerosol spray valves. Chameleon v. Brown Shoe (D.N.J.): Represented patentee in infringement action involving intermittent flashing lights on children’s sneakers. Sorin Biomedical v. Cobe Laboratories (S.D. Cal.): Secured dismissal of action seeking declaratory judgment of noninfringement. Pharmaceutical Solutions v. Vitamax RX et al. (D. Mn.): Represented patentee in infringement action involving veterinary pharmaceuticals. Sorensen v. DaimlerChrysler AG (D.N.J.; USITC): Defended automobile manufacturer against claims involving patented method for manufacturing plastic taillight lenses. Fulhorst v. BMW, DaimlerChrysler AG (E.D. Tex.): Defended automobile manufacturers against patent infringement claims relating to car panic alarm. Tampa Electric v. Nortel Networks (M.D. Fla.): Defended indemnification claims against telecommunications equipment supplier arising from alleged infringement of patents on interactive voice response systems. Nextel Communications v. Motorola (TTAB): Successfully represented telecommunications company in trademark opposition relating to aural signal emitted by two-way radios. Network Intensive v. Compute Intensive (Cal.): Obtained temporary restraining order and subsequent preliminary injunction regarding claims for misappropriation of Internet domain name, trade libel and unfair competition. NetZero v. At Home (C.D. Cal.): Represented trademark owner in litigation resulting in defendant voluntarily adopting different mark. Leica Microsystems et al. v. Sherry Krauter (TTAB): Representing trademark owner in cancellation proceeding regarding optical goods and related products. Soka Gakkai International USA v. East West (TTAB): Representing trademark owner in opposition proceeding regarding online and printed publications. Tricor Mortgage Lending v. Tricor Funding (C.D. Cal.): Succeeded in forcing defendant to adopt different trademark. Experian Information Solutions v. Logic Quest Solutions et al. (C.D. Cal.): Secured preliminary injunction and subsequent summary judgment and permanent injunction on claims arising from misappropriation, copying and distribution of computer source code. Quantum Systems Integrators v. Sprint Nextel (E.D. Va.): Defended licensee in copyright infringement action involving right to use upgrades to licensed software. Florida Digital Network v. Nortel Networks (Fla. Cir. Ct.): Defending declaratory judgment action against telecommunications equipment manufacturer relating to proprietary telecommunications software. Filmtown Entertainment v. Image Comics (Cal.): Secured dismissal of action on grounds that 1976 Copyright Act preempted state law claims and Lanham Act “reverse passing off credit-deprivation” claim. Miracles & Marvels v. Image Comics et al. (W.D. Wis.): Obtained pretrial dismissal of copyright and “moral rights” claims. Nortel Networks v. Arbinet (E.D. Va.): Represented telecommunications equipment manufacturer in case relating to copying of proprietary telecommunications software. PCI Video Products v. Video Conferencing Communications (D. Or.): Obtained temporary restraining order and subsequent permanent injunction for copyright infringement relating to video compression and decompression software. Nortel Networks v. Arbinet (E.D. Va.): Represented telecommunications equipment manufacturer in case relating to misappropriation of proprietary telecommunications software. Premier Ambulatory Systems v. Mazoros (Cal.): Obtained temporary restraining order against disloyal executive for misappropriation of trade secrets. Ciena v. Nortel Networks (USITC): Defended telecommunications company in action involving patented optical network technology, securing early dismissal. Johnson v. Heine (BPAI): Won interference proceeding for patent applicant on color-separation technology for video displays. Rossin v. Kanno (BPAI): Representing patent applicant in interference proceeding directed to abatement of perfluorinated compounds. ZymoGenetics v. Ludwig Institute (BPAI): Representing patent applicant in interference directed to fibroblast mitogenesis. Star Scientific v. R.J. Reynolds Tobacco (D. Md.) : Representing patentee in infringement action involving innovative curing method that substantially prevents formation of primary carcinogen in cured tobacco. Nortel Networks v. AIT (M.D. Fla.) : Represented telecommunications equipment manufacturer in copyright and trade secret case relating to proprietary telecommunications software.
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