Practice Areas & Industries: Sutherland Asbill & Brennan LLP


Computers, Software & Electronics Return to Practice Areas & Industries

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Practice/Industry Group Overview

Computer, software and electronics breakthroughs rely on rapid innovation. Sutherland understands how to identify and protect valuable new technology.

When companies seek to protect and assert the intellectual property value of their computer, software and electronics breakthroughs, they need attorneys who understand both the technology and the relevant laws. Sutherland’s Computers, Software and Electronics team brings not only deep knowledge of legal issues, but also significant education, training and work experience in high-tech fields. Some of the country’s largest tech companies, along with start-ups and entrepreneurs, rely on our attorneys to counsel them, protect and defend their proprietary technology, and to prosecute and manage their patent, copyright and trademark portfolios. The technical knowledge and specific industry experience of our attorneys allow us to quickly grasp new technologies and develop strategies to meet our clients’ long-term goals.

Among our nearly 30 attorneys dedicated to IP, a significant number hold advanced technical degrees in areas such as electrical engineering, computer engineering, computer science, and mechanical engineering. Some of our attorneys spent years in the information technology field before joining Sutherland, so we understand the needs of high-tech businesses.

Through decades of counseling, prosecuting and litigating on behalf of our clients, our lawyers have dealt with a wide range of sophisticated technology. Along with IP experience with consumer products and communications technologies, we also manage hundreds of pending business method applications domestically and internationally, most of which are related to digital commerce. To provide the best possible management of this large portfolio, our attorneys frequently participate in training and educational programs focused on software and computer-implemented patent issues and stay abreast of the latest industry news and trends.

Why Sutherland
Broad technology experience.
Our attorneys have advised on numerous technologies, including hardware, software and networks; computer-based business methods; optical fiber devices and networks; wireless and wireline communications devices and systems; consumer products, display systems; image processing; integrated circuit design; semiconductor devices and fabrication techniques; microelectromechanical systems; bioinformatics; and power systems.

Proven trial record. Our attorneys possess substantial litigation experience, and we are comfortable explaining complicated technologies to judges, juries, arbitrators and mediators. We regularly handle multi-patent, multidistrict disputes between industry competitors, so we understand how litigation fits into an overall competitive strategy.

Software savvy. Our attorneys grasp the technical aspects of software developments, and our software experience covers applications for computer operating systems, television and digital broadcast systems, data processing and communications, signature digitizing, interactive electronic programming guides, electronic bill presentment and payment solutions, point-of-sale systems, couponing and incentive solutions, financial services, healthcare information systems and inventory control systems.

IT background. Some on our team possess significant experience working in the information technology industry, including working with telecommunications systems; wireless hardware; wireless network operations and management; interactive voice response systems; and digital commerce transactions relating to order management, purchasing transactions, advertising management, incentive redemptions and logistics.

Internet-based solutions. Many of our clients conduct significant business over the Internet, or rely heavily on the internet in conducting business. The result is many innovations that require a keen understanding of the operation of the Internet, and how business is conducted over the Internet. We have been protecting these software solutions for clients dating back to the early 1990s, and today have a thorough knowledge of server-based solutions, databases, cloud computing, communication protocols, encryption, digital commerce and more in industries as diverse as banking, healthcare, retail, web service and consumer products.

Exceptional patent strength. We are renowned for our patent prosecution practice, and many of our IP attorneys are registered to practice before the U.S. Patent and Trademark Office.

Thought leaders. Our attorneys actively participate in industry groups and national and local bar associations. One of our IP partners is currently the intellectual property editor for the Electronic Banking Law and Commerce Report and is a past member of the Software & Business Methods Committee of the Intellectual Property Owners Association.

Cost-efficient approach. To work as efficiently as possible, we staff our cases leanly, using contract attorneys for certain tasks as needed. We are sensitive to our clients’ needs and preferences and develop teams and strategies to meet their business goals.

Nuts and Bolts
Our IP work in the computer, software and electronic sector includes:

  • Patent, trademark, and copyright counseling, prosecution and registration in the United States and internationally
  • Advising on alternative methods of protecting patentable, commercially valuable systems, methods and information
  • Analyzing third-party patents to ascertain the risk of infringement and counseling clients on how to mitigate that risk
  • Preparing patentability, noninfringement, validity and clearance opinions
  • Analyzing and advising with regard to infringement claims of patent holding companies, also known as non-practicing entities
  • Trademark opposition and cancellation proceedings before the USPTO’s Trademark Trial and Appeal Board
  • Mapping patents and developing patent programs
  • IP due diligence reviews in asset purchases, merger and acquisition transactions, corporate financing and joint ventures
  • IP licensing and transfers
  • Trade secret and technology litigation and counseling
  • Domain name portfolio management, recovery and dispute resolution
  • Section 337 cases before the International Trade Commission
  • Defending against Lanham Act and other false advertising claims

Take Action

In the high-tech sector, technology evolves quickly. Companies need to move fast to identify and protect these invaluable inventions and innovations, and they need attorneys who can match that pace. At Sutherland, our attorneys have the patent prosecution skill needed to protect assets, and our litigators will fight to help companies defend their valuable technology.

Selected Experience
Sutherland advises Fortune 50 healthcare corporation on intellectual property matters.

Sutherland advises a Fortune 50 healthcare corporation on its intellectual property needs. We provide general patent counseling and worldwide patent prosecution, advise on patent portfolio strategies and third-party patent issues. We also advise on its trademarks.

Sutherland provides patent prosecution and counseling services to global leader in wireless communications.
Sutherland provides domestic and international patent prosecution and counseling services to a Fortune 100 multinational semiconductor chip manufacturer.

Sutherland successfully appeals patent infringement case in U.S. Court of Appeals for the Federal Circuit.
Sutherland represented General Protecht Group, an international electronics manufacturer, in its appeal of an ITC exclusion order, which the U.S. Court of Appeals for the Federal Circuit reversed after concluding that the client’s products did not infringe the asserted patents. Sutherland also obtained a U.S. Customs ruling that the client’s new product did not infringe those patents, clearing the product for import while the appeal was pending and while the ITC finally rescinded the exclusion order post-appeal.