Goldberg Segalla LLP

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Intellectual Property

Goldberg Segalla’s Intellectual Property Practice Group protects the ideas, innovations, inventions, imagery, and creative compositions that propel successful business ventures and create strong brands.

The GS IP team blends its members’ real-world work in scientific and high-tech disciplines with exceptional business acumen and deep experience handling patents, trade secrets, copyrights, trademarks, and other IP matters. The result is a tech-savvy and efficient team dedicated to helping clients develop practical business strategies that maximize the return on their investments and innovations.

When an idea becomes an invention and needs to be protected, the lawyers at Goldberg Segalla can help the inventors obtain the necessary patent protection anywhere in the world. When intellectual property assets require protection from infringement or proactive measures to mitigate risk, our team brings extensive experience litigating and trying complex patent, trademark, copyright, and commercial cases. Because we have the ability to communicate highly technical concepts effectively to courts, jurors, administrators, opposing counsel, and other parties, we are often able to negotiate creative and more efficient solutions to disputes. When that is not possible, this strengthens our ability to enforce our clients’ rights in litigation and other proceedings.

The Full-Service IP Advantage

Our clients receive the dedicated intellectual property focus and credentials they expect from a specialized intellectual property boutique, plus the strength and capabilities of a dynamic firm acclaimed in several practice areas nationally and internationally.

Led by a highly experienced U.S. patent attorney, our intellectual property team draws from a broad range of Goldberg Segalla’s litigation and transactional practices, resulting in collective experience solving IP problems that involve a vast array of academic disciplines, cutting-edge innovations, and industry sectors.

Goldberg Segalla serves businesses and professionals across a broad spectrum of industries, and our clients include global market leaders as well as startups, entrepreneurs, inventors, and investors. That gives our firm-wide Goldberg Segalla Intellectual Property team an understanding of, and appreciation for, the unique legal, financial, and practical concerns of companies that operate in many different sectors — including consumer electronics, semiconductors, software, internet technology, pharmaceuticals, medical devices and others.

Contact us for:

  • Patents — Our team has several registered patent attorneys with experience litigating patent cases at the district courts and at the International Trade Commission (ITC). In addition to patent infringement litigation, we regularly take part in proceedings at the U.S. Patent and Trademark Office, such as inter partes reviews (IPRs) and reexamination.
  • Trademarks and copyrights — We handle everything from searches and registration to dilution claims, trademark and trade dress infringement litigation, copyright infringement litigation, false advertising claims, Trademark Trial and Appeal Board proceedings, and other disputes.
  • Trade secret identification and protection — We have extensive experience handling trade secret misappropriation litigation and we counsel clients on establishing and protecting their trade secrets, including new developments under the Defend Trade Secrets Act.
  • Unfair competition — Our team brings experience handling complex counterfeiting issues, unfair competition and business practices actions, import matters before the International Trade Commission (ITC), and more.
  • Licensing and portfolio management — We prepare, negotiate, and resolve disputes involving licensing agreements over patents, trademarks, copyrights, and other assets. Our team assists both innovators and investors in monetizing IP portfolios through the sale, acquisition, financing, and transfer of assets. We counsel and guide businesses through all things IP, including on “work-for-hire” doctrine and issues concerning employee inventions and ownership rights.
  • Integrated business services — The GS IP team works collaboratively with experienced transactional attorneys across our footprint who have diverse knowledge and experience with contracts, particularly those containing intellectual property components, and can assist either from the commencement of a case or on an as-needed basis to provide unparalleled guidance on critical transactional elements of both contested and negotiated IP matters.

Pharmaceutical Experience

Generic pharmaceutical manufacturers count on Goldberg Segalla's Hatch-Waxman ANDA Litigation and Counseling team, a cross-disciplinary group of highly accomplished attorneys practicing in both our Intellectual Property and Life Sciences Practice Groups, and dealing exclusively with matters involving the federal Drug Price Competition and Patent Term Restoration Act, or Hatch-Waxman Act and the Biologics Price Competition and Innovation Act (BPCIA). Our litigators have represented both branded and generic pharmaceutical companies in connection with small molecule drugs and biosimilar products. We use our experience and technical knowledge to counsel clients on all aspects of Abbreviated New Drug Applications (ANDAs) filed under the Hatch-Waxman Amendments, and our litigators routinely represent and advise pharmaceutical companies on pre-litigation strategies, FDA approval, prior art analysis and opinions, Paragraph IV certifications, trials, and appeals.

Representative IP Litigation Matters

  • Asserting patents on behalf of an industry leader for peer-to-peer I/O technologies used in smartphones and other mobile devices
  • Representing a maker of enterprise data backup and restoration technologies in patent litigation involving some of the world’s largest software and hardware companies
  • Representing the owner of an activity-monitoring technology patent in district court litigation and in an inter partes review proceeding against a manufacturer of wearable fitness monitors
  • Defending one of the world’s largest auto makers in patent litigation involving vehicle-to-smartphone connectivity technology
  • Handling inter partes review proceedings for a long-established global pharmaceutical leader involving a patent for antifolate combination therapy
  • Handling ITC Section 337 litigation involving electronic devices that have a retractable USB connector
  • Representing a major tobacco company in a trademark infringement case against sellers of counterfeit cigarettes, resulting in the successful seizure of all counterfeit product, recovery of several hundred thousand dollars in statutory damages, and a permanent injunction
  • Defending a modeling agency in a jury trial in the Southern District of New York against copyright infringement and tortious interference claims brought by a photographer seeking over $10 million in damages
  • Defending a mold remediation company and its owner against a copyright infringement action brought by a software developer
  • Defending an apparel distributor against allegations of copyright infringement arising from handbags it sold
  • Defending a warranty administrator against trademark claims based on conduct of its licensee
  • Obtaining a favorable decision in an action in which the plaintiff, claiming exclusive rights in a geographic descriptor, sought to prohibit a restaurant from using its chosen geographically descriptive trade name
  • Defending a regional craft brewery against claims of trademark infringement from a nationally distributing brewery
  • Handling litigation involving antitrust violations and trademark infringement for an international consumer products company in connection with the marketing and sale of popular insoles and footwear inserts
  • Representing a medical supplies wholesaler in a trademark and unfair competition action concerning importation of international grey market goods
  • Defending a middleman distributor against major textbook publishers seeking $5 million in a case involving foreign and domestic distribution, with claims alleging trademark infringement, copyright infringement, unfair competition, and fraud
  • Successfully representing an employer and newly hired employees in litigation concerning restrictive covenants and trade secrets

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  • 5.0/5.0 Review for Michael Rubin by a Partner on 05/28/15 in Civil Litigation

    Mike is an excellent attorney, a strong client advocate and worthy adversary.

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    Mr Brown served as a law clerk at the Appellate Division, Fourth Dept., one of New York's intermediate appellate courts while I was Presiding Justice of that Court. His work was outstanding.

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Diversity

Both within our own firm and across the wider business and legal communities, Goldberg Segalla’s commitment to diversity is strong, sincere, and a critical component of our firm’s mission and culture. Our philosophy has always been that we hire people who are excellent at what they do, and even better human beings. Period. We feel we would be doing a disservice to our firm and to our clients if we didn’t include contributions from every available resource.


We are extremely proud that our commitment has received regional and national recognition for the innovative programs we have developed and the results we have been able to achieve. The following is a sampling of the firm-wide or individual honors we have received for implementing initiatives that make a difference:


  • George B. Vashon Innovator Award, Minority Corporate Counsel Association
  • MCCA Firm Affiliate Network
  • Vault/MCCA Commitment to Diversity
  • Community Service Award, Defense Research Institute
  • Good Works Award, American Bar Association Section of Litigation
  • Outstanding Committee Chair, ABA Section of Litigation
  • Diversity Trailblazer Award, New York State Bar Association
  • Legal Service Award, Minority Bar Association of Western New York
  • Lawyer of the Year, Bar Association of Erie County
  • Legal Community Leader Award, National Federation for Just Communities of Western New York
  • Diversity Excellence Award, Buffalo Niagara Human Resource Association
  • Value Award for Diversity, Leadership Buffalo
  • Western New York Game Changers, Buffalo Spree magazine

What we are most proud of, though, is that our efforts have shown significant results and continue to make a lasting impact on the lives of many.

Leadership and Action

To put our philosophy and commitment into practice, we have a Diversity Task Force, which includes our managing partner, in place to conceptualize and implement diversity-focused programs as well as give diversity a voice in our decision-making at the highest level. The individuals on this task force share the firm’s strong commitment to increasing diversity, and they use their unique experiences and backgrounds to support and advance that goal. The team meets regularly to create programs, schedule events, establish diversity initiatives both inside and outside of the firm, set long-term goals, and develop the strategy to recruit and retain people from diverse backgrounds.


The chair of our Diversity Task Force, Joseph M. Hanna, has spearheaded numerous diversity initiatives in various organizations and outreach programs, serves on several diversity-related committees, and is a frequent author and speaker on diversity. Among other positions, he is co-chair of the American Bar Association (ABA) Young Lawyer Leadership Program, former chair of the association’s Minority Trial Lawyer Committee and its Special Committee on Human Rights, and former editor-in-chief of the ABA’s Minority Trial Lawyer; a 2014 fellow of the Leadership Council on Legal Diversity (LCLD); a past president of the Minority Bar Association of Western New York (MBAWNY) and the MBAWNY Foundation; and the Diversity Liaison for several committees at the 22,000-member DRI.


For more than a decade, Goldberg Segalla has proudly supported the ABA’s Judicial Internship Opportunity Program, which provides racial and ethnic minority law students, along with members of other groups underrepresented in the legal profession, opportunities to serve as an intern with a judge during the summer after their first or second year of law school. Joe Hanna — an alumni of the program himself — acts as a mentor and leader in the program, through which he has conducted more than 100 interviews for students across the country.

In 2017, Goldberg Segalla participated in the Thurgood Marshall Summer Law Internship Program, the New York City Bar Association’s flagship pipeline program for high school students. As a participating legal employer, we hosted high-achieving inner-city students for the summer and collaborate with the NYC Bar to provide them with additional programming before, during, and after the summer designed to help them prepare for a legal career.

Each summer, Goldberg Segalla proudly welcomes interns through a formal Diversity Clerkship Program that was conceived by Joe while he served as president of the MBAWNY. The program was developed in collaboration with the MBAWNY and the SUNY Buffalo Law School to provide opportunities for minority UB Law students to gain firsthand experience in the legal system. Since it was launched in 2011, the program has placed more than 100 students in clerkships in area courts as well as in several area law firms, with more judges and law firms asking to participate every day. It provides participants with an in-depth look at the legal process and the interaction between the bench and the bar that they would not otherwise get. At our firm, a dedicated team of partners monitors the work of these law clerks and ensures they obtain valuable experience to help develop important legal research, writing, case management, and client service skills critical to their long-term success. Our program earned the firm the Minority Corporate Counsel Association’s 2012 George B. Vashon Innovator Award.


We also have sponsored Success in the City, an annual diversity networking and mentoring event developed by Joe that brought together students, legal and business professionals, educators, nonprofits, and political leaders to make lasting partnerships. Many employment, business, and mentoring relationships resulted from this event. Past events have drawn more than 500 political and business leaders, legal professionals, and students. Success in the City has influenced the development of similar programs in Baltimore, Cleveland, Birmingham, Dallas, and elsewhere.


Our firm is committed to spreading the message throughout the broad legal and business communities that embracing diversity contributes to greater overall success. We conduct training sessions for in-house counsel at Fortune 500 corporations on increasing and promoting diversity. Our attorneys have authored articles and delivered presentations on diversity for various legal organizations, including DRI and the ABA, and our efforts and accomplishments in this area have been profiled in publications such as Law360, the New York State Bar Association’s State Bar News, Business First of Buffalo, the Buffalo Law Journal, and others.


In one example of our work to provide inspiration and raise awareness of diversity and women’s issues in the legal community, Caroline Berdzik, chair of our Employer and Labor Practice Group, spoke to Law360 for the publication’s “Female Powerbrokers” series. In the interview, Caroline discussed her career, the challenges of being a woman at a senior level at a law firm, the work-family life balance, and the importance of taking risks. She also offered guidance to female attorneys on moving their careers forward and advice to law firms on both increasing the number of women partners and retaining top female talent. Her longtime advocacy for women (at her previous firm, she served on the Women’s Business Development Committee and was a member of what became the national Women’s Presidents Organization) helped earn her a spot on the 2015 NJBIZ list of New Jersey’s Best 50 Women in Business.


Joe Hanna also was featured by Law360 in its “Minority Powerbrokers” series, in which he shared his perspective on breaking the glass ceiling in the legal industry, the challenges of being a lawyer of color at a senior level, how law firms can increase diversity in their partner ranks, and Goldberg Segalla’s core commitment to diversity.

Partnerships

Goldberg Segalla is proud to be a member of the Minority Corporate Counsel Association Firm Affiliate Network, which was created by the MCCA to assist and acknowledge law firms that are committed to advancing diversity and inclusion in the legal profession.


We are also a member of the Leadership Council on Legal Diversity (LCLD), a national organization of leaders in law firms and corporate legal departments dedicated to creating a truly diverse legal profession. As noted earlier, Joe Hanna was a fellow of the LCLD in 2014. In this position, he played a critical role in organizing the first-ever New York City LCLD Fellows Roundtable event, and he was instrumental in establishing a mentorship program in Hartford for local diverse first-year law students.


We support the diversity efforts of numerous organizations, including:

  • American Bar Association
  • Asian American Bar Association of New York
  • Columbian Lawyers Association
  • Defense Research Institute
  • Federal Bar Association
  • Korean American Association of Greater New York
  • League of First Nations
  • Minority Bar Association of Western New York
  • National Bar Association
  • Native American Rights Fund
  • National Association of Asian American Professionals
  • National Congress of American Indians
  • New York State Bar Association
  • Seneca Free Trade Association
  • SUNY Buffalo Law School
  • Women’s Bar Association of the State of New York

Our outreach efforts led to the creation of a comprehensive database of more than 500 minority law organizations throughout the United States. Contact between these organizations takes place in anticipation of bringing CLE and legal programs together. This group of minority bar associations includes both local and national organizations, such as:

  • National Association of Women Lawyers
  • National Association of Muslim Lawyers
  • Hispanic National Bar Association
  • National Asian Pacific American Bar
  • Black Women Lawyers Association of Los Angeles
  • South Asian Bar Association of Philadelphia
  • Vietnamese American Bar Association of North Carolina

A Talented and Diverse Team

Diversity is further evident within our firm through the many languages and dialects spoken by members of our team, including Albanian, Arabic, Croatian, French, German, Greek, Hebrew, Hindi, Italian, Korean, Malayalam, Mandarin, Marathi, Norwegian, Portuguese, Punjabi, Russian, Spanish, Swedish, Tagalog, Tamil, Thai, and Urdu.


Goldberg Segalla’s culture is one that values team-spiritedness, collegiality, and interpersonal harmony within our working community. We are a firm that believes in diversity in the workplace, and we are proud to offer a professional and positive work environment for each and every member of our team.


On these values, and on our commitment to diversity, we will never waver. We are proud of what we have accomplished thus far, but we also realize that this is a long-term mission. We will continue to innovate and to improve diversity in law and business — both within Goldberg Segalla and across the communities in which we live and work.

Diversity Matters — Join the Conversation

If you have questions regarding any of the firm’s diversity initiatives or would like to discuss ideas regarding increasing diversity in the legal profession, please contact Joe Hanna (716.566.5447; [email protected]) or another member of our Diversity Task Force:

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