We have a full service practice with experience in a wide range of areas, including:

Litigation & Enforcement: Patent Litigation; Trademark & Anti-Counterfeiting Litigation; Copyright Litigation; ITC 337 Actions; and Industrial Design Litigation

Counseling & Prosecution: Patent Prosecution & Portfolio Management; Trademark Prosecution & Portfolio Management; and Trade Secret Proection

Transactions: IP Securitizations and Corporate Transactions

Furthermore, we have experience in a broad range of industries, including:

Advertising & Marketing
Biotech & Pharmaceuticals
Chemicals
Communications & Telecommunications
High Tech
Software
Financial Services
Food & Drink
Media, Entertainment & Sports

Advertising & Marketing
Our advertising and marketing experience includes both traditional "clearing" of advertising copy from an IP and regulatory perspective, as well as corporate activity amongst agencies (including MBOs and start-ups). We provide day-to-day counsel to advertising agencies on copy clearance, client contracts, sales promotions (such as prize draws and competitions) and disputes with artists. We also advise clients on extending their Internet-based promotions internationally. In addition, we advise on a variety of advertising, regulatory and sales promotion issues relating to web-based enterprises, including:

• Online gambling regulations

• Rights to exploit images of well known sportsmen and sporting events

• Regulation of online sales and financial services

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Biotech & Pharmaceuticals
We are IP counsel to many of the world’s largest pharmaceutical and biotechnology companies and provide a wide range of services, including:

• Counseling regarding corporate and M&A transactions

• Advising on stand alone arrangements to develop, license and otherwise exploit IP rights

• Advising on the protection of IP rights

• In Hatch-Waxman and other patent litigation, we successfully represent innovator pharmaceutical companies against generic manufacturers and other defendants alleging non-infringement, patent invalidity, inequitable conduct and antitrust violations

Representative Matters

• We represent a leading global pharmaceutical company in multiple matters involving drug patents.

• We represent a leading university in enforcing its patents against a generic drug manufacturer in Hatch-Waxman Act litigation in Delaware Federal District Court.

• We represented a global pharmaceutical company in a Hatch-Waxman case, successfully defending a patented combination of hydrocodone and ibuprofen against a challenge mounted by a generic ANDA applicant.

• We successfully represented a consortium of leading biopharmaceutical companies, in a potential copyright dispute threatened by Identrus, L.L.C., a consortium of leading financial institutions. The matter was resolved without resort to litigation and instead resulted in the parties agreeing to work together to promote the ubiquitous use of digital identity services and digital identity credentials. The unique settlement approach, by means of collaboration between parties previously in dispute, was hailed by both sides as a novel and creative approach to a difficult issue.

• We represented a global medical technology company and successfully resisted a claim that another company was entitled to a patent applied for and registered in the name of our client. The action (the lead action in a series of infringement proceedings relating to a patent covering a scintillation proximity test used in drug assay testing and based on the stimulation of phosphors by radioactively labeled ligands) was exceedingly complicated, covering a range of scientific disciplines including radioactive labeling of compounds, the measurement of ultra-low light levels using sophisticated optical equipment, biochemistry and organic chemistry. Allegations of breach of confidence involving disclosure of this material were successfully resisted.

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Chemicals

Representative Matters

• We represented an agricultural seed company in its sale of 90 percent of the outstanding equity in each of its member companies for approximately $180 million.

• We represented a global chemical and plastics manufacturer in its agreement to acquire, for an undisclosed amount, the acrylates business of a US chemical manufacturer.

• We represented a global chemical and plastics manufacturer in its $11.67 billion stock-for-stock merger with a chemical and polymers company.

• We represented a manufacturer of specialty chemicals and polymer products in its combination with a chemical company. The transaction is valued at $1.8 billion, including approximately $250 million of net debt and minority interest. The combined company will be the third-largest publicly traded US specialty chemicals company and will have a market capitalization of nearly $3.2 billion.

• We represented a Dutch multinational chemical company that owns a key ingredient in body parts and spoilers used in and for Formula One racing cars. The company was able to successfully sue for infringement of its European patent. The entire litigation lasted only 8 months and resulted in a judgment in our client’s favor providing for an injunction, damage claims and an order that the defendant disclose its infringement actions in detail.

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Communications & Telecommunications

Representative Matters

• We represented fifteen mobile telecommunications entities and three of the company's partners in a patent infringement case which had 115 foreign mobile telephone carriers as defendants. We were successful in getting the case against our clients, as well as the other foreign carriers, dismissed.

• We represented a wireless telecommunications research and development company in this case of telecommunications, CDMA transmission and reception methods. Responsible for non-infringement and invalidity analysis, expert reports, Markman briefing and presentation. Case was dismissed with prejudice after Markman ruling showed no possibility of infringement.

• We represent a global mobile communications company in a number of patent matters throughout the country, including cases in the International Trade Commission under section 337 of the Tariff Act (and related matters in the state and federal district courts throughout the country and the Federal Circuit), where parties seek to preclude importation into the United States of products integral to the company's business, such as handsets or chipsets.

• We also represented a global mobile communications company in significant Federal Circuit appeals from patent infringement judgments where the plaintiff had obtained a judgment of $128,000,000 on a novel theory of joint direct patent infringement against the company and four other defendants. On motion by our client and other parties, the Federal Circuit stayed the district court’s injunction, and after briefing by the appellants, the case settled.

• We are representing a global mobile communications company in significant patent litigation matters where the company’s cellular telephone networks have been accused of infringing a digital transducer patent.

• We defended one of the world’s leading telecommunications companies in Opposition action brought by ESPN over a trademark application. Our client claims exclusive use of a family of marks in the use of a unique stylized letter including a world-famous mark.

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High Tech

Representative Matters

• We have represented a global credit card company in numerous bet-the-company litigations. For example, we successfully defended claims alleging, among other things, that our client infringed eight patents related to cryptographic and other techniques to improve the security of smart cards. The estimated value of the claims in the case exceeded $100 million. In another case, we represented the company in defense of allegations that its technologies for contactless payments and the creation of dynamic verification values infringe the claims of a US Patent.

• We represented a global technology company in two copyright infringement and unfair business practices cases concerning improper reverse engineering. In the first case, in denying the opponent’s motion to dismiss, the district court ruled in our client's favor on a novel legal issue concerning the interaction of the first-sale doctrine and computer software licenses. Both cases were resolved on favorable terms.

• We successfully defended a worldwide ophthalmic company and its UK distributor in a patent infringement action relating to laser eye surgery. It was one of a series of technically and legally complicated actions brought in different jurisdictions – and also connected with Federal Trade Commission proceedings in the United States against the plaintiff company. The action in the UK was the “lead” action and decided several important legal issues, including UK privilege in depositions taken in USPTO interference proceedings.

• We act as lead counsel for a leading global electronics company in an ongoing series of cases to enforce the company's intellectual property rights against non-compliant licensees and infringers of its patents. In three separate cases in the past year, we won summary judgment imposing a permanent injunction against infringing DVD manufacturers' future use of our client's DVD patents. These are significant wins, as since the Supreme Court's 2006 eBay decision, permanent injunctions are very rarely granted. Yet, since April 2007, Mayer Brown has won injunctions from three different federal judges.

• We represented a manufacturer of consumer electronics in the negotiation of re-seller agreements with a leading global electronics company, pursuant to which our client will have the right to sell DVD players employing patented technology owned by the three electronics companies. After execution of these agreements, our cleint became the first consumer electronics company to enter into these innovative re-seller agreements for the importation and sale of DVD players from Chinese manufacturing plants.

• We are lead counsel for one of the world’s largest semiconductor manufacturers in a substantial patent licensing dispute with a global storage device company. The case involves complex claims and counterclaims concerning the respective parties’ performance under a license to all of the storage device company's storage patents for the life of those patents.

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Software

Representative Matters

• We represent a gaming products manufacturer in a Federal Circuit appeal in which we seek affirmance of the district court's grant of summary judgement on the ground that the Patent & Trademark Office employed a statutorily impermissible standard in reviving an abandoned patent.

• We represented the world's leading open source technology solutions provider in a suit alleging that its software incorporated font software that infringed copyrights and trademarks owned by the plaintiff company.

• We obtained summary judgment for a global software company on an unwarranted claim under the Digital Millennium Copyright Act, where the plaintiff claimed that by permitting a specific font to be used for filling out forms or annotating a document, our client's software circumvented the embedding bit in violation of the DMCA.

• We represent a wireless phone and accessory manufacturer in a patent litigation adverse to the Board of Regents of a university in the district court and on appeal. The case relates to the use of certain devices incorporating text input software. Summary judgment of noninfringement was entered in our client’s favor and the case is currently on appeal to the United States Court of Appeals for the Federal Circuit.

• We represented a global technology company in two copyright infringement and unfair business practices cases concerning improper reverse engineering. In the first case, in denying the opponent’s motion to dismiss, the district court ruled in our client’s favor on a novel legal issue concerning the interaction of the first-sale doctrine and computer software licenses. Both cases were resolved on favorable terms.

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Financial Services

Representative Matters

• We represent a financial services consulting firm and related defendants in a major copyright infringement litigation and trade secret case in the Southern District of New York.

• We obtained the dismissal of a complaint alleging that two global banks infringed a patent covering a computerized method for selecting securities for an investment portfolio by ranking securities based on each of the price appreciation, return-on-assets ratio and price-to-cashflow ratio, calculating a weighted average for each of the securities using these three criteria and then selecting a final group of securities based on the weighted averaging. The computerized method performs the calculation of the ratios, the calculation of the weighted averages and/or the final selection of the securities. 

• We represented a private investment firm in the intellectual property aspects involved in the EUR 660 million sale of the champagne, wine and sparkling wine businesses.

• We manage a global credit card company’s patent portfolio. This work includes obtaining critical patents to provide a proprietary position for a product or line of products as well as executing the company’s global strategy.

• We represented an insurance company in an emergency TRO and trademark infringement action to stop the launch of a telecommunications company’s multi-million dollar ad campaign during the Super Bowl broadcast. We were successful in negotiating settlement terms that protected our client and its marks from any potential confusion with the other company.

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Food & Drink
We advise a number of food and drink companies on a wide range of issues including trade mark enforcement, transfers and licensing, and advertising, licensing and labeling requirements. We also advise food manufacturers on other issues as diverse as research and development agreements covering food products and the import into the EC of such products.

Representative Matters

• We acted for a global chocolate company and its UK subsidiary to prevent the sale in the UK by the German discount supermarket Aldi of look-alike chocolates in the run-up to Easter. Having filed for an urgent interim injunction in the High Court, we obtained a permanent injunction and resolution of the whole case through negotiations with Aldi and its German supplier the day before the substantive hearing of the injunction, obtaining all the relief sought by our client including the recovery of its legal costs.

• We represented a leading baked goods company in a trademark infringement action that included claims of trade dress infringement for packaging of donuts sold in supermarkets. The case settled favorably for our client.

• We manage the worldwide trademark portfolios and global licensing for a global food manufacturer.

• We represented a chocolate manufacturer in its $2.6 billion purchase of all of the assets of a global food company, including well-known food products.

• We successfully defended a bagel company in an action for trademark infringement relating to perhaps the world’s most famous brand name in the bagel industry. Within only a few short months of case commencement, we were able to successfully dismiss all claims against our client and settle on terms quite favorable to our client.

• We represented an international hotel and restaurant chain in a trade dress infringement action brought by another international restaurant chain. The case settled favorably for our client, after a three-month arbitration resulting in the chain continuing to pursue and develop its concept.

• We represented an international restaurant chain in its acquisition by a New York-based private equity firm. Total consideration was $245 million in cash (including cash that went to the redemption of preferred stock).

• We are representing a German association in a land mark litigation case versus one of the worldwide leading spirit producing companies before the European Court of Justice regarding free movement of goods.

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Media, Entertainment & Sports
Our wide-ranging experience in the entertainment industry includes litigation, financial instruments and securitizations. We were at the forefront of IP securitizations with our work representing the rating agency on the original “Bowie Bonds” – the first securitization of a music performer’s music and publishing catalog. Presently, we defend a leading web search engine and a video-sharing web site against a copyright infringement class action filed by the film, television and music industries, which has been described by Legal 500 as “arguably the most high profile and momentous case in the copyright market.”

Representative Matters

• We represent a leading web search engine and a video-sharing web site in their defense of litigation brought by various media content holders and a number of music publishers. Plaintiffs allege various claims of copyright infringement relating to videos posted by users of the sharing site. Our clients claim that their users’ activity does not constitute copyright infringement and that, in any event, as service providers they are protected by the Digital Millennium Copyright Act (the “DMCA”) which Congress enacted to promote the freedom of expression that service providers foster on the Internet, while balancing the rights of copyright holders. While the matter is still in discovery, we have won a number of significant interim victories, including a decision in which we persuaded the Court – in a decision of tremendous significance in Copyright law – that punitive damages should not be available for claims for copyright infringement.

• We represented a global music publisher in a proceeding before the Copyright Royalty Board to determine the royalty rates to be paid to music publishers for music subject to the Section 115 mechanical license. This includes physical products (such as CDs), permanent downloads (such as iTunes), ringtones and various other uses of music compositions. The CRB recently decided that the rate would remain at 9.1 cents for physical products and permanent downloads, and established for the first time a rate of 24 cents for each ringtone. This result was hailed as a victory for songwriters and music publishers given that the record companies were seeking a significant reduction in these rates.

• We represented a recording artist and record company against claims of copyright infringement. In the case, one of the artist’s former employees claimed that he was joint author of the artist’s hit song and video, and therefore entitled to half the proceeds from the song and video. The court granted our motion to dismiss, ruling that our client's former employee was not a joint author as a matter of law.

• We obtained an important victory on behalf of our record company client, enabling owners of classic sound recordings to obtain protection for pre-1972 works not protected under federal law. The New York State Court of Appeals’ decision has broad significance to the recording industry because it firmly establishes state common-law copyright protection for pre-1972 sound recordings, which are not protected by the federal copyright statute.

• We represent a global music publishing company in connection with the largest-ever IP securitization in the music industry, consisting of the securitization of the music publishing royalty streams due to our client in several jurisdictions around the globe, including, the US, the UK, Germany and Italy. We are structuring this novel and innovative transaction and providing extensive advice on copyright law in both the US and Europe.

• We represented a leading investment banking advisory firm in connection with the securitization by owners of the writers’ share of the proceeds of 311 songs in a well-known record company’s catalogue of songs.

• We successfully represented eight major motion picture studios in claims against the defendants, which were selling videodisc players to hotels and renting copyrighted videodiscs to the hotels’ guests in violation of copyright law. The court's decision provides crucial protection for the enforcement of intellectual property rights.