Intellectual Property: Litigation, Protection, Prosecution, Licensing and Audits
The IP attorneys at Houston Harbaugh, P.C., have extensive courtroom and tribunal experience represented industrial, financial, individual and business clients in IP counseling, infringement litigation and the overall creation and protection of intellectual property rights. From our law office in Pittsburgh, we serve clients in Pennsylvania and other states. We are admitted to practice before the United States Patent and Trademark Office (USPTO) and we apply for and prosecute applications for patents, trademarks and copyrights. IP section chair Henry Sneath, in addition to his litigation practice, is currently serving as a Special Master in the United States District Court for the Western District of Pennsylvania in complex patent litigation by appointment of the court.
Patent, Trademark and Copyright: Audits, Evaluations, Opinions, Application, Prosecution, Protection and Appeal
Our intellectual property lawyers have been retained as lead trial counsel and as local co-trial counsel in all three Pennsylvania Federal Districts and in other select jurisdictions. We have settled or tried to verdict an extensive number of intellectual property cases in patent and trademark infringement, unfair competition, counterfeiting, knock-off and copyright infringement actions and in litigation and counseling involving licensing of IP. We have served as local counsel to some of the largest and most prominent national and international intellectual property firms. As lead counsel, our IP practice area chair Henry Sneath tried to verdict three “one week”, “one issue” patent infringement and invalidity trials in four months in the same case before the same judge and jury, and this was one of of the largest patent infringement cases ever in Western Pennsylvania. We have experience with all aspects of patent, trademark and copyright protection and litigation with specialized training and experience in various science disciplines. We apply for, prosecute and track the maintenance of trademarks with the USPTO and have handled Trademark challenges in the TTAB. With a registered patent attorney before the USPTO, we can draft and obtain patents and trademarks for our clients in varied technical fields.
We are currently representing clients in trademark, counterfeiting and copyright matters and in patent infringement litigation matters pursuant to the Pittsburgh Federal Local Patent Rules promulgated by the Judges of the United States District Court for the Western District of Pennsylvania and in other jurisdictions. These rules are designed to make the Pennsylvania Western District a forum of choice for patent infringement and invalidation actions. We are also prepared to assist out-of-state law firms and their clients as local counsel given the intricacies of these Local Patent Rules which provide a procedural mechanism for accelerated case disposition, and numerous changes to the processes of Federal Rule 26 disclosure, claim construction, use of experts and infringement and invalidation contention disclosure. The chair of our IP group served on the drafting committee for the creation of the USDC WDPA federal local counsel patent rules committee and had a large hand in drafting those rules.
Complex Patent, Trademark and Trade Dress Litigation
In addition to prosecuting patents, trademarks and copyrights, Houston Harbaugh attorneys have decades of experience handling complex patent litigation matters for Fortune 500 and mid-size companies, both as plaintiffs and defendants. We have successfully represented clients with a variety of different technologies in obtaining favorable settlements or jury verdicts and can utilize our in-house technical and patent expertise to provide cost-efficient representation of intellectual property disputes. Our attorneys also provide patent and trademark audits, opinions and evaluations for businesses and individuals and consult with these entities in pre-litigation matters. We have counseled clients and litigated on their behalf matters pursuant to the Federal Lanham Act with claims of unfair competition, false advertising, false designation of origin and the ever increasing number of counterfeiting claims. One of our IP lawyers teaches Trademark and Unfair Competition Law as an adjunct professor at Duquesne University school of Law here in Pittsburgh. Click here to view a simple chart published by the USPTO which describes the process of applying for a patent.
Trade Secrets Protection, Misappropriation and DTSA Claims (See DTSALaw.com for more information)
Trade secrets must be understood by the holder, must be secret, must be commercially valuable, and must be reasonably protected by the holder. Trade secret misappropriation claims and lawsuits are complex business litigation and injunction matters and are sometimes a necessary means for a company to protect its intellectual property and confidential business information. These protections and claims do not require the formal registration of the confidential information or business secret that other intellectual property rights require. However, there are many traps for the unwary that can jeopardize the ability of a company to enforce its rights in court. Our attorneys can assist you in creating the proper procedures to protect your trade secrets and to enforce your rights in court, if necessary.
While usually governed by state law, a relatively new federal trade secret law — the Defend Trade Secrets Act of 2016 (DTSA) — provides an additional federal body of law to protect trade secrets. The DTSA allows trade secret misappropriation lawsuits to be brought under federal jurisdiction and allows for both injunctive and damages relief, including enhanced damages and legal fees. It also enhances the criminal punishment for misappropriation as well by increasing the amount of fines that can be levied. The DTSA is still misunderstood by many practitioners but is a powerful way to enforce protection of rights and the prevention of unfair competition by trade secret theft and dissemination. Our lawyers at Houston Harbaugh are highly experienced in prosecuting and defending trades secret misappropriation claims and one of our counsels teaches Trade Secret law as an Adjunct Professor at Duquesne University school of Law here in Pittsburgh.
Intellectual Property Litigation and Oppositions
The internet has changed the intellectual property landscape. Although traditional business continues to have IP disputes, the battleground is more frequently defined by the worldwide web and the use of Internet communications and technology. Although legislation has been passed by Congress to address certain internet IP concerns, the development of the caselaw remains somewhat behind the growth of internet technology.
High tech companies are registering patents and filing trademarks at an astonishing rate, and the future appears certain to continue to be filled with IP disputes over software and internet applications. We serve as both lead counsel and local counsel for Pennsylvania-based and out-of-state corporations with respect to patent, trademark and copyright litigation and related disputes over licensing, royalties and unfair competition claims under the Lanham Act.
We are business trial lawyers who understand both the need to enforce IP rights and the need to defend against predatory litigation. There are times when the courtroom or the threat of litigation is the only way to resolve a business dispute. Our attorneys also practice before the U.S. Trademark Trial and Appeal Board (TTAB) and can litigate Trademark Opposition proceedings and related matters.
Click here for a link to the USPTO Trademark Section and the TTAB rules and procedures
Intellectual Property Alternative Dispute Resolution
At Houston Harbaugh, P.C., we can also mediate your intellectual property matter through one of several forms of Alternative Dispute Resolution, including arbitration, mediation or early neutral evaluation. We understand the need to set a litigation or ADR budget and to adhere to that budget. Our lawyers serve as certified mediators, arbitrators and Federal Court Special Masters especially in complex business and IP litigation.
Western District of Pennsylvania Patent Representation
The U.S. District Court for the Western District of Pennsylvania is one of a growing number of district courts with Federal Local Patent Rules, and these rules govern all patent litigation filings in Western Pennsylvania. These rules provide for an accelerated case disposition schedule and numerous procedural rules changes relating to Federal Rule 26 disclosures, claim construction, use of expert witnesses and disclosure of infringement or invalidity contentions. The rules are designed to streamline patent litigation and to make Western Pennsylvania a forum of choice for parties filing patent infringement or invalidation actions. Attorneys at the firm have experience in handling matters filed pursuant to these new rules both as principal counsel and as local counsel for out-of-state firms that avail themselves of this jurisdiction or whose clients have been sued in this district. To view the Western District of Pennsylvania Local Patent Rules, please visit the U.S. District Court website.
Protect Your Intellectual Property. Call Us Now.
Our Pittsburgh intellectual property attorneys help clients navigate intellectual property and other business disputes by providing them with the knowledge and information needed to make informed decisions. Contact our intellectual property department chair Henry Sneath at 412-288-4013 or by email to [email protected].
The firm’s experience in Intellectual Property litigation, prosecution and protection includes this small sample of representative matters:
- Representation of Pittsburgh based manufacturer in defending patent infringement litigation out of state and by prosecuting counterclaims for patent invalidity, unfair competition, patent false marking, patent misuse and claims under the federal Lanham Act;
- Representation of battery testing manufacturer in litigation and on appeal;
- Representation of a commercial lighting manufacturer in litigating patent infringement claims;
- Representation of medical and pharmaceutical products manufacturers in patent, unfair competition and false advertising matters;
- Representation of a foreign manufacturer and American distributor defending patent infringement claims and bringing claims for patent invalidity;
- The representation of a metals manufacturer in a trademark dispute over the marking and identification of high alloy metals;
- Advising a small business client regarding copyright and trademark rights and defending her business against attempts to invalidate those rights;
- Defending a moderate sized California company in Pennsylvania against claims by an international conglomerate of Trademark Infringement and by bringing counterclaims to invalidate the plaintiff’s trademarks;
- Defending a natural gas exploration company against a patent invalidation lawsuit and prosecuting a counterclaim for patent infringement;
- The representation of minority members of a green technology limited liability company in a shareholders’ derivative action against the majority member for violations of RICO, fraud, and breach of fiduciary duty;
- The representation of a Fortune 500 telecommunications company against a foreign manufacturer for misappropriation of trade secrets and breach of contract;
- Representation of a telecommunications company in federal litigation brought under Federal Trademark Dilution Act and Digital Millennium Copyright Act by a designer and manufacturer of networked communications systems and related software;
- Representation of a Dutch corporation which owned the exclusive rights and license to the “total image” of one of the world’s foremost tennis superstars in action against defendant corporation for breach of endorsement contracts;
- Representing numerous companies both as plaintiff and defendant in employment actions involving departing or terminated employees who were alleged to have misappropriated trade secrets and confidential business information; proceed through injunction and trial processes;
- Advising a franchise business regarding the need for specialty intellectual property insurance coverage and reviewing several competing proposed insurance policies;
- Providing opinions and opinion letters to individuals and companies on patent and trademark rights, risks and liabilities;
- Representing employers and employees in disputes over intellectual property licensing, royalties and ownership;
- Defending Fortune 500 and mid-sized companies against claims of patent infringement.
- Representation of battery testing manufacturer in litigation and on appeal.
- Representation of a commercial lighting manufacturer in litigating patent infringement claims.
- Representation of medical and pharmaceutical products manufacturers in patent, unfair competition and false advertising matters.
- The representation of a metals manufacturer in a trademark dispute.
- Advising a small business client regarding copyright and trademark rights and defending his business against attempts to invalidate those rights.
- Defending a natural gas exploration company against a patent invalidation lawsuit and prosecuting a counterclaim for patent infringement.
- The representation of minority members of a green technology limited liability company in a shareholders’ derivative action against the majority member for violations of RICO, fraud, and breach of fiduciary duty.
- The representation of a Fortune 500 telecommunications company against a foreign manufacturer for misappropriation of trade secrets and breach of contract.
- Representation of a telecommunications company in federal litigation brought under Federal Trademark Dilution Act and Digital Millennium Copyright Act by a designer and manufacturer of networked communications systems and related software.
- Representation of a Dutch corporation which owned the exclusive rights and license to the “total image” of one of the world’s foremost tennis superstars in action against defendant corporation for breach of endorsement contracts.
- Advising a franchise business regarding the need for specialty intellectual property insurance coverage and reviewing several competing proposed insurance policies.
- Providing opinions and opinion letters to individuals and companies on patent and trademark rights, risks and
- Representing employers and employees in disputes over intellectual property licensing, royalties and ownership.
- Defending Fortune 500 and mid-sized companies against claims of patent infringement.