Practice/Industry Group Overview
As technology plays a central role in the world’s economy, disputes of a bet-the-company magnitude relating to the ownership and exploitation of intellectual property have become commonplace. The most valuable asset of many businesses is the right to prevent competitors from using their intellectual property. Conversely, the magnitude of the payoff for a competitor's successful challenge to an IP owner's right to successfully exclude competition attracts frequent challenges to the enforceability of intellectual property rights.
Edwards Wildman, recognized as having a Tier 1 IP Litigation practice by the 2013 US News/Best Lawyers “Best Law Firms,” has broad experience in all types of disputes arising from intellectual property rights. Our clients have successfully challenged the rights of others to exclude them from competing in many business areas. We have similarly assisted our clients in preventing others from infringing their exclusive rights to exploit their intellectual property. We pride ourselves on representing clients in even the most significant litigation with common sense and with diligence.
The IP Litigation Practice Group is a combination of litigation lawyers who focus on intellectual property disputes and IP lawyers who practice in the litigation arena. In addition, we access the vast in-house technical expertise of our IP lawyers and technology specialists covering virtually every area of technology.
When intellectual property disputes affect our many pharmaceutical and biotechnology clients, we work closely with members of our firm’s Life Sciences Practice Group. We have significant experience serving as first-chair trial counsel involving Hatch-Waxman Act/ANDA disputes on behalf of branded pharmaceutical companies.
Enforcing and Challenging Patent Rights
Our lawyers represent clients in actions involving a variety of patent issues, both in enforcing and challenging patent claims. We serve as trial counsel in a wide range of patent actions, including:
- Medical devices
- Silicon chip manufacture
- Data processing devices
- Video and audio digital signal processing devices
- Audio signal timbre and pitch devices
- Electronics equipment used in television production
- Sports equipment
- Printing equipment
- Mechanical sealing and packing devices, and
- Chemical manufacturing processes
We are particularly proud of our victories in Mitsubishi Chem. v. Barr Labs., 718 F. Supp. 2d 382 (S.D.N.Y. 2010), aff'd, 2011 WL 3288394 (Fed. Cir. 2011), where we defeated anticipation and obviousness challenges to our client’s patent on a drug for treatment of heparin-induced thrombocytopenia, and in Takeda v. Mylan, 417 F. Supp. 2d 341 (S.D.N.Y. 2006), aff'd, 492 F.3d 1350 (Fed. Cir. 2007), where we defeated attacks by generic drug manufacturers against the validity and enforceability of our client’s patent on a popular oral antidiabetic agent.
For those clients who are not in traditional technological fields, we provide advice and representation regarding business methods patents. Our lawyers have successfully represented clients in interference actions before the USPTO, in injunction hearings and at trial in federal courts in many states. We are proud of our success record in patent appeals in the US Court of Appeals for the Federal Circuit.
Trademark and Trade Dress Litigation
Trademark, service mark and trade dress issues arise in a variety of contexts, and we have broad experience in resolving those disputes. We have represented pharmaceutical companies, airlines, and manufacturers of surge suppressers, static mixers, clothing, costume jewelry, toys and games, wrist watches, and swim products in trademark, service mark and trade dress disputes, to name a few. This broad experience includes issues of counterfeiting, trademark/service mark infringement, trade dress infringement, infringement based on quality control issues under Adolph Coors, repackaging infringement cases under Prestonettes, and first sale doctrine matters. Recently, we protected the trade names of a well-known modeling agency and a large wholesaler of consumer products.
We are progressive and aggressive in pursuing protection for our clients in cyberspace. We have protected the domain names of our clients and represented them in the often confusing intersection of intellectual property law and cyberspace.
Ranging from computer software and business forms to music, "knock off" jewelry, textiles and a recipe for peanut butter-flavored ice cream, our lawyers have noteworthy copyright experience covering a diverse range of materials. Our lawyers successfully protected ownership and authorship rights in the popular songs, "Girl Watcher" and "Why Do Fools Fall in Love."
Trade Secret and Unfair Competition Disputes
With experience in a wide array of industries including health care, metallurgical processing and engineering, optical fiber, electroplating, wireless and cellular communications, software and computer hardware, we frequently handle trade secret claims and claims based upon non-competition agreements in a variety of contexts. Our clients are both plaintiffs and defendants in trade secret claims involving manufacturing processes, customer databases, equipment design, and financial transactions. We have particular skills in the application of the "inevitable disclosure" doctrine and in business tort cases involving allegations of "diversion" and alleged unlawful "grey market" transactions that often include trademark and copyright allegations in connection with state law unfair competition claim.
Domain names are a significant area of focus for management of brands online. Edwards Wildman has been effective in pursuing protection for our clients and assisting them with issues arising in Cyberspace: helping clients choose, register, and protect Internet domain names; defending trademarks from infringement and misappropriation on the Internet; and addressing infringement accusations by third parties. Edwards Wildman is experienced in providing clients with effective strategic advice on enforcement and defense of rights through a range of methods, from UDRP proceedings to court litigation.