Practice/Industry Group Overview
Duane Morris is one of the most-active law firms in the United States in all aspects of intellectual property litigation. National publications like U.S. News and World Report, IP Law360 and others have recognized Duane Morris' intellectual property work, with the firm being ranked among the nation's leading firms for patent, copyright and trademark cases. Corporate Counsel magazine's 2011 review of "Who Represents America's Biggest Companies" listed Duane Morris among the top ten "litigation kings" for intellectual property needs of Fortune 100 companies.
Our intellectual property litigators have been involved in many of the cases that have defined the scope of intellectual property rights. These cases resulted in decisions of the Supreme Court of the United States or of the Court of Appeals for the Federal Circuit, the special appeals court for patent cases. Representative lawsuits include College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., a case that resulted in two Supreme Court decisions defining the limits of applicability of federal patent and trademark laws to state entities; Nobelpharma AB v. Implant Innovations, Inc., a Federal Circuit decision affirming a major award of damages to our client for the plaintiff's antitrust violation in attempting to enforce a patent procured through fraud; and Markman v. Westview Instruments, Inc., which resulted in decisions of the Federal Circuit and the Supreme Court establishing that interpretation of patent claims is a question of law to be decided by a judge rather than by a jury, in what have become known as "Markman" hearings.
In today's legal environment, however, only a small percentage of cases go to trial. Thus, it is crucial that you have counsel who is focused on your business objectives and the most cost-effective means of achieving those objectives. If a creative business resolution is in order, we will litigate the case in a manner that will drive the case toward such a resolution. We also have extensive experience in the use of alternative dispute resolution mechanisms. From the outset of each case, we explore with our clients the potential risks, opportunities and costs associated with various strategies for dispute resolution, including litigation, mediation, arbitration, and negotiated settlements.
With Duane Morris, your legal representation is being provided by attorneys who have handled intellectual property cases of all kinds, including patents, trademarks, trade secrets and copyrights. Our clients include businesses large and small, universities and individuals. We can litigate cases in a cost-effective manner in any venue, whether it be state court, federal district court, the Court of Appeals for the Federal Circuit or the International Trade Commission.
Duane Morris patent litigators have handled disputes in fields such as biotechnology, pharmaceuticals (including ANDA-related litigation), medical devices, semiconductor manufacturing, television set-top boxes, Internet and e-mail related technologies, factory automation, oil drilling, water treatment and purification, electrical components and fiberglass boat manufacturing. Our patent litigators combine mastery in trial advocacy, an in-depth knowledge of patent law, an aptitude for science and technology and a focus on our clients' business objectives. We represent clients in enforcing their patents, defending against claims of patent infringement, and disputes concerning inventorship and ownership of patents, and patent licenses. Duane Morris lawyers provide counsel regarding government contract disputes and procurement claims. The firm's litigators have played a leading role in some of the most important cases in the field of patent law, as well as some of the most complex (including one of the largest patent cases ever tried before the International Trade Commission).
In every patent case, our litigators either have the necessary technical knowledge or work closely with patent specialists who have such technical knowledge. Dozens of our attorneys practice before the United States Patent and Trademark Office (USPTO). Our attorneys hold technical or scientific degrees in fields such as computer science, electrical engineering, mechanical engineering, chemistry, chemical engineering, physics, nuclear engineering, microbiology, molecular biophysics and biochemistry. We have experience in all aspects of patent law, including patent preparation and prosecution, clearance opinions and interference proceedings, and portfolio management. Our approach to patent litigation makes it easier for our clients to transfer complex technical information to our attorneys and enables us to present that information to judges and juries in a simple and persuasive way.
Duane Morris attorneys' combination of extensive trial experience as lead counsel in litigation before state and federal courts, as well as unique trial experience within the U.S. Patent and Trademark Office, can help clients take advantage of, and respond to, inter partes review (IPR). Duane Morris attorneys advise clients on the merits and desirability of instituting parallel proceedings before the USPTO as well as with regard to defending their patents during these proceedings. Duane Morris has represented clients in a wide range of technology and life sciences areas, including Hatch Waxman matters, as IPR remains a viable option for generic drug companies to challenge asserted patent claims.
Trademark, Trade Dress and Unfair Competition Litigation
In trademark litigation, we focus on protecting the goodwill and brand value that our clients have worked to develop through their trademarks and trade dress. Our attorneys handle an array of trademark, trade dress and unfair competition disputes, including those concerning Internet domain names, consumer product trademarks, business names, trademark dilution, trademark counterfeiting, false advertising, and clothing and accessory designs and other forms of trade dress.
Our litigators counsel clients on the most effective strategies for protecting their trademarks, whether registered or protected under common law. We prosecute and defend trademark and unfair competition lawsuits in state and federal courts throughout the country as well as internationally, and we have extensive experience in seeking and defending against preliminary injunctions. We handle proceedings before the United States Patent and Trademark Office, including oppositions to pending trademark applications and petitions to cancel existing registrations. Our attorneys also represent clients in disputes concerning Internet domain names under the Uniform Domain Name Dispute Resolution Policy of ICANN (the Internet Corporation for Assigned Names and Numbers). We also have designed and implemented international brand protection programs, including on behalf of major automobile manufacturers.
Trade Secret Litigation
Our attorneys have handled trade secret litigation concerning a range of diverse technologies. Duane Morris litigators prosecute and defend claims of trade secret misappropriation in both state and federal courts across the country. As in patent litigation, we assemble teams of attorneys with both trial experience and technical knowledge to present complex issues in a comprehensible, persuasive manner.
We assist clients in enforcing copyright claims and defending claims of infringement in a wide variety of areas, including computer software, as well as literary, musical, pictorial, audiovisual, sound recording and other works. Our lawyers have obtained ex parte orders to seize counterfeit goods under both the copyright and trademark laws.
Duane Morris IP Portal
Understanding the constant cost pressures clients face, Duane Morris leverages its significant knowledge of how to cost-effectively manage global IP portfolios by offering its patent and trademark clients Web access to our firmwide case management system, the Duane Morris IP Portal. Duane Morris has implemented the Patricia® system to automate and streamline the many thousands of United States and foreign patent and trademark portfolios owned by our clients. Through the Duane Morris IP Portal, clients can access – at no cost – a wealth of information about their patent and trademark portfolios, useful in litigation preparation as well as renewals and other management activity.