Practice Areas & Industries: Dinsmore & Shohl LLP

Practice/Industry Group Overview

Dinsmore & Shohl LLP’s Intellectual Property Practice Group is a full-service team with a diverse range of technical backgrounds and legal experience. We have one of the largest groups of intellectual property attorneys in the region. The group’s continually expanding worldwide practice includes substantial experience in all areas of intellectual property law, including patents, trademarks, trade names, service marks, copyrights, computer software and hardware, business method and Internet-related developments, trade secrets, trade dress, anti-trust, unfair trade practices (including unfair importation and International Trade Commission issues), unfair competition, and franchising matters.

The Group provides counseling, assessment, procurement of protection, ownership transfers, licensing, enforcement and defense procedures, and litigation relating to all aspects of intellectual property. Dinsmore & Shohl LLP utilizes the Intellectual Property Practice Group as an efficient source for technical knowledge for other practice groups.

Our attorneys have training and experience in all major technical disciplines, including chemistry, chemical engineering, electrical engineering, mechanical engineering, civil engineering, biomedical engineering, industrial and systems engineering, physical sciences, aerospace, biotechnology and genetics, electronics and computer programming, and software and hardware technology. Many have previous experience with research, sales, in-house counsel for business, and patent examination in the U.S. Patent and Trademark Office.

Services Available

• Preliminary patent and trademark investigations and clearances
• Selection of trademarks and service marks
• Evaluation of disclosures to determine the applicable form of protection
• Preparation and prosecution of patent, trademark and copyright applications
• International patent and trademark searching, protection, maintenance and enforcement/defense
• Patent validity and infringement studies and opinions
• Patent design-around projects
• Opposition/cancellation proceedings for trademarks or patents
• Monitoring of trademarks (watch services)
• Licensing, development agreements and intellectual property ownership counseling
• Litigation (both enforcement of rights and defense of claims by others)
• Audits and valuations of intellectual property
• Due diligence for acquisition, merger or other potential transfer
• Presentations and training to client management and staff personnel

Because of our experience in the full spectrum of intellectual property practice, we can help you understand how the many opportunities and alternatives of intellectual property law can be used to assist your company in protecting its technology investments while maximizing the value of distinctions to separate you from the competition.

Representative Experience

Multiple Clients
Patent Experience

• Prosecuted over a thousand patent applications in the United States and abroad.
• Negotiated hundreds of patent and technology licenses, including litigating patent portfolios and then licensing the successfully litigated patent portfolios to entire industries.
• Provided numerous opinions regarding patent infringement, validity and enforceability of patents in preparation for enforcing the patents in litigation or defending against the patents in litigation.

Computer Printer and Electronics Company
Patent Prosecution and Opinion Drafting
Patent drafting and prosecution of patent applications 

Beverage Packaging Manufacturer
Patent Infringement Litigation
Patent infringement litigation in a number of venues with amounts at issue in the tens of millions of dollars 

High Technology Glass Manufacturer
Patent Preparation and Prosecution
Patentability preparation; preparation and prosecution of scores of patent applications related to numerous technologies in IP portfolio; IP portfolio studies; clearance studies 

Industrial Machine Manufacturer
Patent Infringement Litigation
Patent infringement litigation in a number of venues with amounts at issue in the tens of millions of dollars 

Sterling Research Group
Metabolic and Atherosclerosis Research Center v. Whitmer, et al.
Defense of suit alleging misappropriation of trade secrets 

JVM Innovation & Design LLC
JVM Innovation & Design LLC v. Spalding & Evenflo Cos., et al.
Represented Plaintiff in patent infringement suit 

Seed Restaurant Group, Inc.
Joint Venture
Joint venture for Seed Restaurant Group, Inc., owner and franchisor of Fazoli's quick-casual Italian restaurant chain, with over 300 company owned and franchised locations in 32 states, with major international fast food franchisor. 

JVM Innovation & Design, LLC
Kohus v. Mariol, et al.
Defense of copyright infringement suit 

Beer Brewing Company
Materials Supplier v. Brewing Company (In receivership)
Assisted client in matter involving right of first refusal and receivership rights 

Eastern Sheet Metal, Inc.
Lindab AB v. Eastern Sheet Metal, Inc.
Defense of patent infringement suit 

Automotive Manufacturer
Patent Preparation and Prosecution; Research and Licensing Agreements
Patentability preparation; preparation and prosecution of scores of patent applications related to numerous technologies in IP portfolio; preparation and negotiation of research agreements with universities 

Multiple Clients
Trademark and Copyright Experience

• Has prosecuted hundreds of U.S. trademark applications, and liaises extensively with foreign counsel for prosecution of trademark applications abroad. Maintains extensive trademark portfolios for large technical and consumer goods corporations, as well registrations for individuals.
• Conducts and analyzes trademark availability searches.
• Has represented numerous clients in appeals and inter-partes proceedings before the Trademark Trial and Appeal Board.
• Has counseled clients extensively on copyright, and routinely registers claim of copyright on behalf of clients.
• Has extensive experience in the construction, assertion and defense of trademark and copyright infringement claims.
• Counsels clients with respect to, and prepares, licenses for all types of intellectual property.

The Standard Register Company
Software Licensing and Use Agreements
Negotiation and preparation of software licensing and use agreements

Automotive Manufacturer
University Research Project Agreements
We represent an automotive manufacturer in completing numerous university project agreements, in which we leveraged a unique combination of Intellectual Property and Corporate transactional experience.

Thor California
Weekend Warrior v. Thor California
Defense of patent infringement suit

Combuster Technology Company
Venture Capital Equity Transaction
We represented the owner of cutting-edge combuster technology in the creation of a new company with client intellectual property and patents combined with private equity contribution. We leveraged our unique venture capital and intellectual property experience to streamline the transaction.

Structural Dynamics Research Corp.
SDRC Corp. v. Khan, et al.
Represented Plaintiff in suit involving claims of misappropriation of trade secrets, breach of non-disclosure agreement and unfair competition 

iHigh.com, Inc., a Delaware corporation (iHigh, Inc.)
Private Placement of Securities
$10,000,000 private offering of securities under Rule 506 of Regulation D for a start up high school youth marketing company located in Lexington, Kentucky, which through its affiliates operates a nationwide Internet community for teenagers 

OmegaPoint Systems
Patent Prosecution
Patent applications and license agreements 

Local Manufacturer
Regional Insurance Company v. Local Manufacturer
Successful representation in suit involving issues of breach of insurance contract and duty to defend relating to underlying case alleging trade dress infringement and patent infringement 

bluesolutions
Sale of Company
Multi-million dollar sale of private software consulting and integration company to French Public Company 

RETCO, Inc.
RETCO, Inc. v. AERO, Inc.
Counsel for Plaintiff in a suit alleging misappropriation of trade secrets 

Cincinnati Sub-Zero Products, Inc.
Irani v. Cincinnati Sub-Zero Products, Inc.
Defense of patent infringement action 

Borden Chemical
Borden Chemical v. Amerine, et al.
Represented Plaintiff in a suit involving claims of missappropriation of trade secrets, breach of non-disclosure and non-compete provisions of employment contract and unfair competition 

Beechglen Development, Inc.
Beechglen Development Inc. v. Weisbrod, et al.
Represented Plaintiffs in a suit involving claims of misappropriation of trade secrets, breach of non-disclosure agreement and unfair competition 

CBS Personnel Services
CBS Personnel Services LLC, et al. v. ARC Staffing, et al.
Represented Plaintiffs in suit alleging breach of non-competition agreements, misappropriation of trade secrets and unfair competition 

Seed Restaurant Group, Inc.
Corporate Reorganization and Asset Purchase
Corporate reorganization and asset sale of Seed Restaurant Group, Inc., owner and franchisor of the Fazoli's quick-casual Italian restaurant chain, with over 300 company owned and franchised locations in 32 states 

Mersive Technologies, Inc.
Corporate Formation; Merger; Issuance and Sale of Preferred Stock in Venture Capital Transaction
Formation and subsequent merger of corporation with limited liability company, and issuance of stock in a venture capital transaction for a technology development firm 

SMARTworks.com
B-2-B, Alliance, OEM, Licensing, Software Development and Hosting Agreements
We represented SMARTworks.com in negotiating numerous B-2-B, alliance, OEM, licensing, software development, hosting and like agreements in the high tech space.  Our firm brought a unique contribution of intellectual property and corporate talent to these transactions.

Host Communications, Inc.
Acquisition via Merger
Approximately $158,000,000 in cash and common stock acquisition via merger for sports and entertainment marketing and association management company. 

Progress Energy, Inc.
Accretion Technologies LLC v. Progress Energy Inc.
Defense of suit alleging misappropriation of trade secrets and anticipated claims of patent infringement 

OPW Fueling Components, Division of Dover Corporation
Asset Purchase
$5,000,000 plus earn-outs asset purchase for diversified fueling components manufacturer 

Cincinnati Sub-Zero Products, Inc.
Augustine Medical Inc. v. Cincinnati Sub-Zero Products, Inc.
Defense of patent infringement suit 

Hunter Manufacturing Group, Inc.
Asset Purchase and Stock Purchase
Asset and stock sale of Hunter Manufacturing Group, Inc., a Lexington, Kentucky based manufacturing company which manufactures and distributes licensed sports merchandise throughout the United States and Canada 

Dee Zee, Inc.
Daws Mfg. Co., Inc. v. Dee Zee, Inc.
Defense patent infringement suit 

Multiple Clients
Intellectual Property Litigation
Representative experience in intellectual property litigation 

Gatan, Inc.
Gatan, Inc. v. E.A. Fischione Instruments, Inc.
Represented Plaintiff in patent infringement suit 

Multiple Clients
Intellectual Property, Trademark, Patent and Know-How Licenses, Cross Licenses and Alliance Agreements
We have represented numerous clients in intellectual property, trademark, patent and know-how licenses, cross licenses and alliance agreements.  Decades of experience enables quick and innovative structures to conclude these often complex arrangements leveraging our nationally-known Corporate and Intellectual Property practice groups.

Startup Software Company
IP Portfolio Development; Patent and Licensing Strategy
Development of IP portfolio strategy; clearance analysis of existing patents in field; development of licensing strategies

SSS Consulting, Inc.
International Joint Venture Formation
Formation of international joint venture for Internet-based employee psychological testing firm

Multiple Clients
Export Control
Our firm has represented numerous technology, e-commerce, engineering and manufacturing clients in the analysis of laws, regulations and classifications to determine Export Control licenses with the U.S. Commerce Department.

Dover Corporation
Dover Corp., OPW Division, v. Draft
Represented Plaintiff in a suit alleging breaches of patent license 

The Standard Register Company
Distribution and Channel Partnering Agreements
Drafting of distribution, channel partnering and end-user license agreements for Digital Pen and Paper System 

Dover Corporation
Dover Corporation v. Catlow, Inc.
Represented Plaintiff in suit alleging patent infringement, unfair competition and unfair trade practices 

Craig Elbe
Elbe v. Adkins, et al.
Represented Plaintiff in copyright infringement suit related to photographs 

Gatan, Inc.
E.A. Fischione Instruments, Inc. v. Gatan, Inc.
Defense patent infringement suit