K&L Gates has a long-standing tradition of leadership in complex commercial litigation in the U.S., U.K. and Asia. Intellectual property litigation involves many of the same considerations which are crucial in any complex litigation, and our intellectual property litigation practice has extensive experience handling complex high stakes cases for some of the largest companies in the world as well as some of the most cutting edge new enterprises. IP litigation also involves the specialized law, language, and strategy of patents, trademarks and copyrights, and the complex technologies and businesses of the 21st Century. Our over 100 lawyer strong team of IP litigators is skilled in understanding our clients' particular IP and business needs, translating their business and technology into the language of courts and juries, and resolving cases through litigation, settlement, and trial.
K&L Gates intellectual property litigation lawyers have the experience and ability to understand or rapidly learn new technologies, and the experience to obtain or respond quickly to claims for preliminary injunctions, to try cases and handle appeals and to resolve cases in ADR proceedings worldwide. Our IP litigators take full advantage of the broad range of substantive technical knowledge and automated litigation support systems within the firm, including their own technology and industry experience, our deep bench of Ph.D.'s and industry experienced lawyers, and our cutting edge DATG electronic evidence and discovery group.
K&L Gates IP litigation team responds quickly and efficiently to early infringement allegations to assist clients in reaching a quick final resolution that ensures their continued operations and allows them to focus on their business objectives. We represent our clients in judicial and non-judicial dispute resolution processes. Our lawyers are skilled in litigating clients' claims, understanding their particular needs, and translating the language of technology into the language of the courts.
Our practice includes:
Patent Litigation
The heightened appreciation of the value of patents as significant assets to be offensively deployed has resulted in an increase in high stakes patent litigation in which K&L Gates' clients have sought to protect or defend the intellectual property that they obtained through enormous investments of time, talent and money.
Litigation of a patent case requires not only knowledge of the patent laws and an understanding of the substantive technical issues embraced by the patent, but also the skill and resources to manage large, complex commercial litigation. K&L Gates patent litigators have broad-based experience in all phases of patent infringement litigation, including the development of overall patent litigation strategy, pursuit and defense of preliminary injunctions and trial and appellate practice. Moreover, our lawyers are experienced in presenting complex technical matters to juries and in using state-of-the-art litigation strategies and techniques in patent trials.
K&L Gates patent lawyers have been involved in cases spanning a broad spectrum of products and technologies, including:
- ion implantation equipment used in the manufacture of semiconductor devices
- metals processing, both basic metal refining and the production of intermediate materials
- magnetic recording media for computer hard drives
- hospital equipment and medical devices, including cold sterilization process equipment and tissue processors for preparing samples to undergo microscopic examinations, introducers, and presbyopia correcting optical equipment
- heavy industrial equipment, notably excavators, cable-laying machines and cross-country pipeline-laying machinery
- power converters used in computers and telecommunications equipment
- chemical processing equipment for the concentration of phosphoric acid, a major component of fertilizer
- mold release agents for use in tire-forming operations
- computer networking equipment
- photography kiosks
- fall protection safety harness designs
- light gauge structural steel support systems
- airflow controls for HVAC systems
- highway safety equipment
- sports equipment and outdoor clothing
- petroleum exploration equipment
- electronic voting machines
- optical vend sensing systems
- food products
- lighting devices
- home and garden decor products
- application development products
- network performance monitoring systems
- wireless network receiver equipment
- electronic document processing
Read about how K&L Gates' Patent Litigation team took on Emergis Corporation and the notorious U.S. Patent No. 6,044,362.
Trademark/Trade Dress Litigation
What is in a name? Or a logo? Or a slogan used to identify a business and its unique qualities to the consuming public? In today's increasingly globalized commercial world, the answers to these questions can have a tremendous impact upon a client's competitive edge. Indeed, the value of trademarks, service marks and trade dress, and the symbols, logos, colors, words and phrases of which they are comprised, is greater than ever before. At K&L Gates, our trademark/trade dress litigation practice is focused on litigating disputes relating to these important assets.
To that end, we routinely prosecute and defend claims involving both registered and unregistered trademarks and service marks, as well as a wide variety of trade dress claims. We do so in all of the typical forums for resolving these types of disputes, including the federal courts, the Trademark Trial and Appeal Board, the state courts and in a variety of alternative dispute resolution settings. With the help of a comprehensive list of counsel with whom we have had prior relationships, we have also pursued and defended trademark and service mark claims in numerous jurisdictions around the world.
Our trademark litigation clients have marks and symbols of importance in almost every type of commercial endeavor and in many nonprofit organizations as well. We have litigated trademark and trade dress disputes for clients in the fields of:
- Entertainment
- Sports and sporting goods
- Marketing and advertising
- Beverages
- Telecommunications
- Financial services
- Technology
- E-commerce
- Publishing
- Health care
- Insurance
- Educational services
- Retail sales
- Not-for-profit organizations
- Construction
- Industrial manufacturing
- Light manufacturing
- Design professionals
- Education
- Electronics
- Hotel and resorts
- Shopping centers
- Food products
Although not every infringement case will involve a request for a preliminary injunction, many of these cases do, because claimed infringements of trademark interests often present the potential for irreparable harm in the absence of prompt relief from a court. At K&L Gates, we know what it takes to pursue and/or to defend against a motion for preliminary injunction. We have extensive experience with motions for preliminary injunctions and temporary restraining orders in the context of a wide variety of trademark, service mark and trade dress matters, including, in particular, cases involving counterfeiting. Indeed, we have brought numerous ex parte seizure actions as part of a well-developed anti-counterfeiting program for one of our entertainment clients.
Copyright Litigation
In this increasingly Internet-linked, digital world, advances in technology enable nearly anyone to instantly make not just one, but thousands of copies of copyrighted works. This presents an enormous challenge to copyright owners and creators of all types. While computer programs, audiovisual works, sound recordings and many similar works can be infringed simply and easily, with great loss to the developers of such creative works, other more traditional works also are at risk without appropriate copyright protection. At K&L Gates, we help clients meet this challenge by applying our litigation skills to protect these important interests and to resolve a host of issues that involve copyrights. These include infringement litigation involving computer programs, literary works, sound recordings, musical compositions, works of art and design, architectural works, luxury goods, and many other protectable works. We also are experienced in litigating the often complex issues surrounding disputes involving authorship, ownership, works for hire, copyrightability, originality and fair use.
In connection with litigating copyright issues that have arisen in the context of the Internet, we have become well versed in the details of the Digital Millennium Copyright Act ("DMCA") in the U.S. and the Copyright Designs and Patents Act ("CDPA") and related legislation in the U.K. and Europe. Although the provisions of the law are detailed and fairly complex, K&L Gates lawyers know the ins and outs of the law and use it to help their clients. For example, K&L Gates frequently uses the take down provisions of the DMCA and the CDPA and the U.K. Electronic Commerce Regulations to circumvent infringers altogether and force Internet Service Providers to remove or block access to infringing material. We have extensive experience in cross border litigation, including parallel importing (gray market) claims.
Trade Secret Litigation
The vast majority of intellectual property assets consist of compilations of confidential information that is not subject to the protections of patent, copyright or trademark laws. Instead, these assets are protected under the body of trade secret law that gives the owners of that compiled information certain rights to prevent its use or disclosure, so long as that owner can demonstrate that the information is in fact a trade secret. In the United States the Economic Espionage Act of 1996, which may criminalize certain aspects of trade secret law, can raise the stakes in trade secret litigation beyond just the parties' economic interests.
K&L Gates lawyers are regularly involved in cases in which the use or disclosure of critical trade secret information is at stake. K&L Gates lawyers have experience in cases in which preliminary injunctive relief has been sought, cases in which the expanding "inevitable disclosure doctrine" (which can prevent employees from working at a new position if it is inevitable they will use or disclose their former employer's trade secret information) has been applied and cases in which significant money damages have been claimed. Those cases have involved trade secrets both of a technical nature (such as computer programs, mill-building technology and computer networking technology used to enable Internet traffic) and of a non-technical nature (such as business, marketing and financial information and customer lists). K&L Gates' experience in this area is invaluable to clients facing the threatened use or disclosure of critical trade secret information or claims that they have engaged in the theft of others' trade secrets. Similarly, we have acted for numerous creative agencies and their clients on issues relating to the misuse of creative ideas presented in confidence, and on format rights claims.
Non-Compete/Employee Mobility Disputes
As employee mobility increases, so has the need for businesses to protect themselves against the loss of valuable trade secrets and goodwill. While certain of a business's intangible assets can be protected through patents and copyrights, a business's trade secrets and goodwill often are protected through the use and enforcement of restrictive covenants such as non-compete and confidentiality agreements. Our lawyers have substantial experience both prosecuting and defending claims involving such agreements on behalf of a wide range of clients. For example:
- After leading an investigation that confirmed a high tech client's suspicions that a former employee had taken with him and disclosed to others highly confidential development and marketing information relating to one of the client's new products, we promptly filed suit and obtained a temporary restraining order within 48 hours of the initial client contact.
- One of our client's top sales managers resigned, opened a nearby competing business and began soliciting his former clients in violation of a non-compete agreement. After an evidentiary hearing, the court granted our request for a preliminary injunction enjoining the former employee from competing.
- A partner with one of our health care clients withdrew and established a competing practice in violation of a non-compete agreement. We moved for a preliminary injunction, and the partner agreed to a consent judgment whereby he disaffiliated himself with the competing practice.
- One of our clients was sued for hiring three key employees of a competitor who were parties to a non-compete agreement. We aggressively defended the case and negotiated a favorable settlement that allowed the three employees to remain with our client and freely compete with their former employer with minimal restrictions.
Even in situations where a former employee is not bound by a confidentiality or non-compete agreement, we have been successful in obtaining injunctive and monetary relief under various other legal theories such as misappropriation of trade secrets, unfair competition, breach of duty of loyalty and the "inevitable disclosure doctrine," which can be used to enjoin a former employee from competing if it is shown that by performing the same or similar duties on behalf of a competitor, the former employee will inevitably use or disclose the former employer's trade secrets.
Internet Safety Practice
K&L Gates Internet Safety practice helps clients protect their online brand, intellectual property, Internet commerce sites, and computer systems from Internet threats and cyber villains. The group also assists clients in locating the source of Internet attacks, tracking and prosecuting online pirates and sellers of counterfeit goods, and identifying Internet scoundrels who attempt to act anonymously. Using unique resources and an extensive staff of trained technical investigators, our lawyers locate and prosecute spammers, phishers, hackers, pharmers, cyber pirates, domain squatters, and purveyors of counterfeit and pirated goods using the Internet or other electronic means.
K&L Gates lawyers have filed hundreds of lawsuits against spammers and have obtained over $1 billion in judgments. The Internet Safety team also filed some of the nation's first lawsuits against phishers — the spammers who seek to steal financial information by mimicking a legitimate company's Web site. With legal sophistication, extensive technical skills, and relationships throughout the industry, K&L Gates lawyers are able to keep pace with new and developing Internet threats. And the team's frequent collaboration with law enforcement agencies provides opportunities to refer the most malicious of Internet villains for prosecution.
The firm acted for the successful claimant in the first case before a U.K. Court regarding the use of trademarks as metatags (RoadTech Computers Systems v. Madata 2002 ). The firm was also the first in the world to file a complaint under ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP") and the first in the U.K. to conduct a contested arbitration under Nomient's Dispute Resolution Service.
Our Internet Safety team is designed to aid clients in establishing and defending their Web presence, and making their data, customers and transactions secure and reliable. In addition, our Internet Safety team often works closely with our trademark litigation practice group; as trademarks have moved online, so too has infringement.
The firm is one of the only law firms in the country to have an established Internet Safety team. This team consists of lawyers and cyber forensics experts equipped with sophisticated forensic tools that allow the online activities of malefactors to be tracked and stopped. They honed their skills as Microsoft's lead outside Internet enforcement arm. K&L Gates is uniquely positioned for enforcement actions due to our cyberforensic ability - our Internet Safety team is particularly adept in finding all types of infringers who use the Internet to advertise or distribute counterfeit goods.
Currently, our Internet Safety team has a global program underway with MS Learning to track and prosecute illegal distributors of Microsoft Certification examinations. In addition, earlier this year a K&L Gates team joined lawyers from around the world to file lawsuits against online distributors of counterfeit Microsoft software. The team filed 15 anti-piracy lawsuits for Microsoft in the Northern District of California and similar suits in Germany, France, the United Kingdom, Korea, Poland and several other countries. These copyright and trademark lawsuits are against defendants who sold counterfeit Microsoft products on Internet auction Web sites.
Additional capabilities include:
- Identification of anonymous e-mailers, spammers and cybersquatters;
- Locating and prosecuting hackers, distributors of spyware and viruses, and initiators of denial-of-service attacks;
- Creation of cease and desist programs for counterfeiting, infringement and cybersquatting victims;
- Online tracking of sellers of counterfeit goods and other copyright infringers;
- Development of test purchase programs through in-person purchases by investigators and online purchases through aliases;
- Profiling of potential offenders and development of cost-effective strategies for initiating litigation;
- Development of informational materials for consumers and retailers;
- Temporary restraining order, preliminary injunctions and asset freeze orders, including analysis and development of evidence necessary for such remedies;
- Coordination with law enforcement and prosecutorial officials on criminal referrals (in the U.S. and abroad), including the FBI, U.S. Customs, U.S. Secret Service, and local law enforcement agencies;
- Support of criminal actions through provision of documentary evidence, witness preparation and damage or loss analysis;
- Development of forms and best practice manuals for use by counsel through the United States to ensure efficient and consistent litigation strategy;
- Use of "DOE" lawsuits to target Internet wrongdoers and follow-up with ISPs and others to obtain identifying information;
- Coordination with press and public relations personnel to publicize efforts.
Technology License Litigation
K&L Gates has a long history of representing clients in IP transactions, including a depth of experience representing technology companies in licensing negotiations and agreement drafting. The firm currently represents the world's largest developer and publisher on personal computer software. This experience has subsequently allowed us to assist clients with disputes that arise from license agreements. In addition, many of our lawyers have technical backgrounds allowing them to look beyond the agreement documentation and examine the technical issues at hand. This technical experience gives K&L Gates lawyers a significant advantage over other firms. Our technology license litigation experience includes:
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Termination of patent/technology licensing programs
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License versus covenant-not-to-sue issues
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License grant backs, sublicensing rights, anti-foundry disputes
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Noncompliance with technical standards
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Open source issues
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Coverage of affiliates
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Patent marking, certification and logo disputes
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Royalty and nonpayment issues
Anti-Counterfeiting
As part of our general trademark and copyright litigation practice, K&L Gates has developed significant expertise in the area of anti-counterfeiting. Our experience is most prominent in representing sports and entertainment clients, but we have also represented clients involved in clothing, motion pictures, chemicals and food and beverages. As a result, we have developed an extensive, cutting-edge federal court practice under the Trademark Counterfeiting Act of 1984 and other portions of the Lanham Act, the Copyright Act and other pertinent federal and state laws in the U.S., and the CDPA, The Trade Marks Act and related legislation in the U.K.
K&L Gates employs the ex parte seizure process, along with standard litigation practice, to protect clients from product and merchandise counterfeiting that pervades many marketplaces. Our lawyers have developed and exploited the process to a considerable, and in some cases unprecedented, degree in defense of valuable intellectual property rights.
From Madison Square Garden to Wembley Stadium to the Los Angeles Coliseum, K&L Gates has served hundreds of counterfeiters at live sporting and entertainment events and seized thousands of counterfeit items and executed raids on factories, warehouses and commercial outlets involved in the manufacture and distribution of counterfeit products. These enforcement actions not only help our clients save vast sums in lost revenues but also enhance the value of their IP assets by averting irreparable reputational damage and consumer confidence erosion. In the process, we help our clients send a message that counterfeiting of their marks and brands simply will not be tolerated.