Overview | Intellectual Property Litigation

IP: CONNECTED TO EVERYTHING

Taking highly technical and complex issues and clearly explaining it to a judge and jury to obtain the results you want and need, and to promptly address the problem in the marketplace that is impacting your business and profits, is what we do well.

UB Greensfelder’s seasoned trial lawyers focus their practice on complex technology-based or brand-based IP cases. We hold deep experience and knowledge prosecuting and defending IP and technology-related claims and have the trial experience necessary to bring them to successful conclusion. By the time you are considering or are faced with IP litigation there is already a problem in the marketplace that is impacting your business and profits. Most cases these days involve some form of software and technology impacting the work itself, or its distribution and use, adding a layer of complexity to an already nuanced area of law. Our combination of experience matters when your most important core IP, market share, goodwill, and profits are on the line.

Who We Are

UB Greensfelder has a team of career IP trial lawyers whose practices focus on the often nuanced and complex technology-based patent and trade secret cases. For these cases, our clients also benefit internally from our deep meaningful technical experience in the following fields:

electrical, electro-mechanical, mechanical
computer science, systems, software, high-tech electronics and communications technologies, digital components, and circuitry
inorganic and organic chemistry and biochemistry, biological sciences, biotechnology, molecular biology, large molecule and molecular microbiology, and immunology.

UB Greensfelder also has a team of IP trial lawyers and a brand enforcement team focused on substantive and complex trademark, trade dress, copyright, Lanham Act and unfair competition enforcement, trials, litigation, and appeals. There are multiple avenues for strategic pursuit of enforcement of brand violations and encroachment and our team has meaningful experience in each area.

Our team also comprises certified mediators and trial lawyers with deep meaningful arbitration and mediation experience.

Together our trial lawyers have handled matters in Federal District and appellate courts across the country, proceedings before the Patent and Trademark Office, arbitration and mediations, state Courts, administrative proceedings, and before the United States Supreme Court and the International Trade Commission. We resolve industry disputes and vigorously enforce or defend IP rights in disputes when they arise, and more. Nuanced IP issues also often arise in commercial litigation settings and provide leverage for resolution of such disputes when IP claims are interwoven.

How We Help

Our clients range in size from large multi-national institutions to small companies. As they start up, launch, grow, monetize, and sell their products and services, and eventually as they spin off product lines or license IP or sell the business or business divisions they have faced disputes with competitors, vendors, licensees, co-developers, joint ventures, and others looking to take or destroy the client’s goodwill and reputation. We represent both public and private clients in complex IP litigation cases involving:

Patent infringement, ownership, and validity. Patent litigation is highly complex from both a legal and technical perspective. You need a team that knows how to approach the technology or product at issue and craft a winning litigation and trial strategy that is clear and easy for a judge and jury to understand. We have handled matters involving apparatus and method claims, design patent claims, claims for direct and indirect infringement, and a wide range of invalidity defenses and damages issues between competitors in forums across the country and for international clients doing business in the United States. We have successfully handled patent infringement litigation and related issues for medical and surgical devices, dental tools and instruments, medical simulation technology, design patents for automotive aftermarket parts, parts and manufacturing equipment in the hybrid motor industry, internet, computer and software technologies, cell phone technology, packaging and display patents, and printing equipment and devices.
Disputes involving disclosure or theft of trade secrets, or breach of confidentiality agreement. Trade secrets – some of your business’s most valuable competitive assets – are often under siege. We have handled complex technology-based trade secret litigation in federal and state courts involving chemical formulas, software and source code, manufacturing equipment and lines, medical devices, hybrid motor and manufacturing technologies, paint defoamers, and matters involving competitors, issues with joint development agreements, supplier vendor relationships, dissolved and dissolving business arrangements, and various other business deals where trade secret misappropriation arises. We also have handled many disputes on behalf of employers with departing employees, customer lists, and proprietary pricing and customer information. See also, Trade Secret Protection & Enforcement.
Copyrights and claims under the Digital Millenium Copyright act (DMCA). The complexity of copyright and DMCA claims is often overlooked, particularly when the technological aspects of distribution and digitization add nuanced complexity and complicated damages claims. We have represented clients with substantive copyright claims in creative endeavors, including artwork and graphics, computer programs, software and source code, social, mobile and online games, sculptural arts (jewelry and plush toys), musical works (musical composition, musical compilation, sampling claims), literary works (books, educational materials, advertisement and promotional materials), photographs, graphics, artwork, computer games, business forms, and engineering drawings. We also run enforcement programs to combat anti-counterfeiting and grey market goods.
Trademark and trade dress infringement and Lanham Act claims. We represent clients’ interests involving registered and common law trademarks, service marks, trade names, and trade dress issues, including traditional and non-traditional trademark rights. Industries we have represented include automotive, food and beverage, gaming, restaurant/food services, pet, franchise, liquor, computer chip, computer software, motor fuel, health care, consumer goods, medical and dental devices, banking, religious organizations, and others.
Unfair competition and false advertising claims (both federal and state)
Advertising, media and communications disputes
Software and licensing disagreements
ECommerce and internet domain name disputes
Counterfeit and grey market goods, including authorizing seizures and destruction of counterfeit goods.

Why Clients Choose UB Greensfelder

Knowledge. Experience. Communication. Results. We have taken these types of cases to trial and won. We have many successful results before reaching trial. We have experience addressing IP violations in and outside of the courtroom.

We provide valuable counsel to clients as they consider the role intellectual property can play and the leverage it may bring to a business dispute. Our team will assist you with an initial case assessment and strategy, provide a second opinion and review of pending matters, and assist with mock jury and other case theme and theory strategies. We also proactively advise our clients regarding procuring intellectual property rights from both an offensive and a defensive posture.

For clients considering or pursuing litigation funding, our team can also assist with case assessment and strategy, provide a second opinion, and/or assist with presenting matters to litigation funders.

In some cases, mediation or arbitration are a preferred course of action for IP disputes. As skilled negotiators, our IP lawyers walk clients through the alternative dispute resolution (ADR) process and help ensure their interests are represented and their work is protected. We have handled mediations and arbitrations for clients in a variety of forums and have experience in many courts at the district level, as well as at the U.S. Court of Appeals for the Federal Circuit.

Representative Matters

Successfully represented a client in claims against defendants regarding the unlicensed use of artwork and graphics for computer based, online gaming, social and mobile gaming, and CD/DVD home computer channels. The case was the subject of a February 2019 jury trial that resulted in a $20.7 million judgment for the client involving infringement of copyrights for artwork and graphics for video reel casino slot machine games. As part of this judgment, the judge also awarded a $1.7 million statutory damages award under the Digital Millennium Copyright Act (DMCA) and a Permanent Injunction and Order of Destruction. GC2 Inc. v. International Game Technology PLC et al.
Defended a well-known Grammy award-winning music group against wrongful accusations of two 60-million-dollar music copyright infringement claims for musical composition, musical compilation, and sampling, achieving summary judgment for the defense.
Represented an international business in the medical simulation technology industry in its successful defense against a multi-patent patent infringement matter.
Representation of several clients in patent infringement matter for medical, surgical, and dental devices.
Represented a global corporation in software copyright and trade secret litigation.
Represented multiple clients in the plush toy industry in sculptural arts cases, as well as enforcement against counterfeit and grey market goods.
Represented a major national provider and franchisor of vehicle transportation services in a dispute with its largest, multi-unit franchisee for trademark infringement and breach of multiple franchise agreements. Obtained a temporary restraining order prohibiting the franchisee from using our client’s trademarks improperly and then a two-year preliminary injunction upholding the restrictive covenants in the franchise agreements. Auto Driveaway Franchising Systems, LLC v. Corbett et al.
Defended a warranty coverage provider against claims of trademark infringement and unfair competition. TrueNorth Companies, L.L.C. v. TrüNorth Warranty Plans of North America, LLC
Represented multiple clients in commodity music copyright and anti-counterfeiting matters.
Served as lead Ohio counsel representing financial services client against claims alleging misappropriation of trade secrets associated with an annuity product and associated marketing scheme. Following a successful motion to dismiss all claims other than misappropriation of trade secrets under Ohio law, the case culminated in summary judgment in favor of Prudential on the basis that no trade secrets existed, which the Sixth Circuit later affirmed.
Served as lead counsel defending international information and analytics company in defense of multiple cases alleging infringement of patents involving data technology, successfully obtaining transfer of venue that led to beneficial settlement for the client.
Successfully represented a data analytics and legal research company in obtaining a temporary restraining order and preliminary injunction to protect its trade secrets relating to new product development, license relationships, and customer information when an executive left to go to a competing company.
Served as lead counsel in various enforcement actions relating to trade dress and design patent rights for an international online jewelry brand.
Obtained summary judgment of non-infringement on behalf of a mulching equipment manufacturer in case alleging infringement of two utility patents relating to mulching attachments.
Obtained summary judgment for a major adhesive company on claims of false advertising based upon chemical composition of adhesive product and claims of trade dress infringement relating to product packaging.
Defended a commercial roofing and waterproofing company in allegations of misappropriation of trade secrets, resulting in beneficial settlement for client after successful efforts in discovery.
Served as lead counsel in a trade secret dispute relating to software involving automobile rates and residuals data, obtaining summary judgment on all claims on the basis that no trade secrets existed and successfully arguing appeal to the Sixth Circuit that resulted in an affirmance of the district court’s summary judgment decision.
Successfully represented a pediatric orthopedics company in defense of patent infringement and trademark claims relating to rod reducers for spinal surgery, resulting in a beneficial settlement for client while summary judgment motions were pending.