Practice Areas & Industries: Eversheds Sutherland (US) LLP


Intellectual Property Litigation Return to Practice Areas & Industries

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Practice/Industry Group Overview

Sutherland’s IP litigation team works with clients to spot critical issues early and reach strategically sound and cost-effective resolutions.

Sutherland attorneys understand that asserting IP and defending against allegations of infringement are a critical part of an overall competitive strategy—the stakes are high for both sides in a dispute. At Sutherland, our litigators and patent prosecutors work together to identify any potential invalidity or infringement scenarios efficiently and to advocate them effectively. A large number of our IP lawyers hold specialized and advanced degrees in electrical engineering, computer engineering, mechanical engineering, chemical engineering, chemistry, molecular genetics, medicine and other scientific disciplines, providing invaluable background and insight into the technology and issues in dispute.

Sutherland regularly handles multi-patent, multidistrict disputes between industry competitors. We represent both plaintiffs and defendants in patent infringement, patent interference and patent-related antitrust suits; PTAB inter partes reviews, post-grant reviews and covered business method patent reviews; trademark and trade dress infringement suits; trademark opposition and cancellation proceedings; copyright infringement suits; trade secret claims; federal and state unfair competition controversies; and false advertising and other Lanham Act claims.

We represent clients in litigation around the world, including U.S. and overseas courts; arbitration and mediation inside and outside the United States; and administrative proceedings before the U.S. International Trade Commission (ITC), the USPTO and international patent offices. On behalf of our clients, we have won important rulings both affirming and reversing lower court decisions in state and federal appellate courts, including the U.S. Court of Appeals for the Federal Circuit.

Why Sutherland
Sophistication. The majority of our attorneys hold specialized advanced degrees. When a dispute involves complex technology, our attorneys understand the subject matter and can explain it to judges, juries, arbitrators and mediators in easy-to-understand terms.

International experience. We work with foreign counsel to coordinate patent litigation strategy in proceedings pending concurrently in U.S. and foreign venues. We also oversee trademark and copyright litigation matters handled by foreign counsel that we engage all over the world on behalf of our clients.

Cost-effective approaches. We listen to our clients and understand their priorities and preferences for each specific matter. When appropriate, we staff our cases leanly, including using contract attorneys for certain tasks and appointing attorneys with lower rates to perform as much work as possible.

Committed, experienced litigators. While Sutherland is very conscious of costs, our lead trial attorneys take a hands-on approach throughout the case. We believe that lead trial counsel must be involved at every stage in order to have meaningful input into developing strategy and tactics that can best increase the chances of a positive result, through settlement or trial.

Teamwork. Unlike many of our competitors, our litigators work together with patent prosecutors who have relevant advanced technical training in order to spot issues and develop strategies for efficient resolution of contentious matters.

National recognition. Our IP litigation attorneys have been recognized by Chambers USA, Super Lawyers and other organizations.

Nuts and Bolts
Sutherland represents clients in the full range of IP litigation, including:

  • Patent infringement, patent interference and patent-related antitrust suits
  • PTAB inter partes reviews, post-grant reviews and covered business method patent reviews
  • Trademark and trade dress infringement suits
  • Trademark opposition and cancellation proceedings
  • Copyright infringement suits
  • Trade secret claim
  • Federal and state unfair competition controversies
  • False advertising and other Lanham Act claims

Sutherland attorneys have appeared in courts and administrative proceedings across the United States, including:

  • U.S. International Trade Commission
  • U.S. Patent and Trademark Office
  • State and federal appellate courts

We represent clients in mediation and arbitration proceedings in the U.S. and around the world, including:

  • International Chamber of Commerce
  • London Court of International Arbitration
  • Zürich, Stockholm, Paris and Finland Chambers
  • World Intellectual Property Organization

Take Action
It takes a balanced team to advocate effectively for clients in a variety of industries. Sutherland’s Intellectual Property Litigation team adeptly handles all types of disputes involving widely varied technologies across the U.S. and around the world.

Selected Experience
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.

Sutherland represents University of Georgia Research Foundation in pharmaceutical patent litigation.
Sutherland represented this university technology transfer organization in a lawsuit involving a unique combination of disputes involving the ownership, monetization and licensing of pharmaceutical patents. The case settled after Sutherland defeated numerous claims by the patent inventor in summary judgment, including terminating an exclusive field of use license, and dismissing the inventor/licensee’s claims of ownership of the patent and breach of fiduciary duty.

Sutherland successfully defends IT firm against a non-practicing entity.
Sutherland presented invalidating prior art and pleaded in indemnitors as third-party defendants, resulting in the voluntary dismissal with prejudice of a patent infringement suit. The non-practicing entity sought damages for alleged infringement of a portfolio of patents purported to cover networked use of optical scanners to convert paper documents to electronic files. Sutherland continues to advise dozens of targets of this patent assertion entity.

Past Seminar Materials
  6th Annual SpringPosium IP CLE Conference, May 7, 2010
Articles Authored by Lawyers at this office:

Revised 2017 Antitrust Guidelines for IP Licensing; Qualcomm Ensnared in New Antitrust Suits for Licensing Activities
Ann G. Fort,Robert R.L. Kohse, January 20, 2017
On January 12, 2017, the U.S. Department of Justice and the Federal Trade Commission issued updated “Antitrust Guidelines for the Licensing of Intellectual Property” for the first time since 1995. The updated Guidelines are intended to play a fundamental role in the agencies’...

A Smaller Bite for Apple? Supreme Court Limits Damages for Design Patent Infringement
Ann G. Fort,Anna C. Halsey, December 09, 2016
In a case reversing a $399 million damages award to Apple, the U.S. Supreme Court has held unanimously that an “article of manufacture” under the design patent damages statute can be anything from an entire product to a single component of a multi-component product. The decision made...

Going Au Naturel: New York Federal Judge’s Recent Decision Represents the Increasing Class Action Litigation Risks of “Natural” Product Labels
Melissa A. Conrad-Alam,Ann G. Fort,Gregory S. Kaufman,Ronald W. Zdrojeski, October 04, 2016
In today’s competitive food and beverage industry, product labeling plays a significant role in marketing. Labels touting a product’s “natural” ingredients or health benefits allow manufacturers to charge a premium for their product and capture market share. Natural product...

EU Leaders Approve EU-U.S. Privacy Shield
, July 14, 2016
The European Union’s (EU) Article 31 committee, which is made up EU member states, has voted to approve the EU-U.S. Privacy Shield. This Trans-Atlantic Privacy Shield data transfer procedure replaces the safe harbor data transfer arrangement that was struck down by the European Court of...

Brexit Impact on European Patents and Trademarks
Karissa F. Blyth,Peter G. Pappas, June 24, 2016
On June 23, in the popularly-termed “Brexit” referendum, the United Kingdom voted to exit the European Union, a decision which will have wide-ranging effects, including potential effects on intellectual property rights in the UK.

Solidifying Claim Construction in Inter Partes Review - Cuozzo Allows Patent Office to Govern the Inter Partes Review Process
Karissa F. Blyth,Ann G. Fort,Robert R.L. Kohse,Peter G. Pappas, June 23, 2016
On June 20, the U.S. Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 2016 WL 3369425 (June 20, 2016) upheld the Patent Office’s long-held policy of construing a patent claim according to its broadest reasonable construction even in review and also barred judicial...

Righting Copyright Wrongs Remains Elusive - Kirtsaeng Leaves Fee Awards to District Court Discretion
Ann G. Fort,James H. Johnson,Robert R.L. Kohse,Peter G. Pappas,Daniel J. Warren, June 17, 2016
On June 16, the U.S. Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons Inc., No. 15-375, resolved a circuit court split by reaffirming the test district courts should use to determine whether to award attorney’s fees to the prevailing party in copyright litigation. The...

Stay Out of the Weeds: Egregious, Not Garden-Variety, Patent Infringement Is Subject to Enhanced Damages
Ann G. Fort,Walter S. Freitag,Robert R.L. Kohse,Peter G. Pappas,William L. Warren, June 15, 2016
On June 13, the U.S. Supreme Court unanimously rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in patent cases. In two cases decided together, Halo Elecs., Inc. v. Pulse Elecs., Inc., and Stryker Corp. v. Zimmer, Inc., the Court found that the Federal...

Implementing the Whistleblower Immunity Notice Provision under the Recently-Enacted Federal Defend Trade Secrets Act
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, May 20, 2016
The Defend Trade Secrets Act, signed into law on May 11, 2016, includes a whistleblower immunity notice provision. An employer that wants to preserve maximum recoveries for misappropriation against an employee should take action now.

UPDATE: Federal Defend Trade Secrets Act Signed Into Law; Employers May Need to Notify Employees
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, May 13, 2016
After overwhelming passage in both the House and Senate, President Obama signed the Defend Trade Secrets Act into law on April 11, 2016. The Act provides a truly uniform, nationwide set of standards for protecting trade secrets, plus a private right of action to sue in federal court. By creating a...

UPDATE: Federal Defend Trade Secrets Act Clears the House, Passage into Law Expected
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, April 28, 2016
As expected, overwhelming support for the Defend Trade Secrets Act of 2016 led to its passage in the U.S. House of Representatives yesterday by a 410-2 vote. During the floor debate, one Congressman noted that “Congress has the responsibility to give industries the tools they need to protect...

Federal Defend Trade Secrets Act Clears the Senate: Is the Uniform Act on Life Support?
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, April 12, 2016
The U.S. Senate has unanimously approved a bill increasing the protections available to companies for their commercial secrets. The Defend Trade Secrets Act of 2016 (DTSA or the Act) provides for the first time a truly uniform, nationwide set of standards protecting trade secrets, plus a private...

Panama Papers Leak 11.5 Million Documents, Exposing Public Officials
, April 11, 2016
On Sunday, April 3, 11.5 million confidential documents exposing a widespread system of global tax evasion were made public as a result of a hack. The documents, which were records of the Panamanian corporate service provider and law firm Mossack Fonseca, were obtained by an anonymous source,...