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Scharf Banks Marmor

Intellectual Property

The Firm’s Intellectual Property and Technology attorneys represent companies of all sizes in patents, trademark, copyright and trade secret matters, including protection, enforcement, anti-counterfeiting, litigation and a range of transactional work involving intellectual property rights (IPR) and/or technology. We vigorously defend companies and inventors in litigation and disputes involving IPR, including claims brought by non-practicing entities (“NPEs”).  We represent companies in technology-driven mergers and acquisitions, e-commerce and other technology-related transactions. We are pleased to represent a diverse range of clients from large international corporations to mid-size and small businesses, to individual inventors and researchers, locally and globally.  

Our attorneys have extensive legal and professional training, including advanced degrees, extensive training in engineering, healthcare, veterinary medicine, medical devices, information technology (IT) and several other emerging technologies.  

Our lawyers have worked for major corporations or have been partners in national law firms and IP boutiques. Two of our lawyers are registered patent attorneys admitted to practice before the United States Patent and Trademark Office (USPTO).

Patent Protection, Enforcement and Defense

Our attorneys work with clients in a broad array of industries to develop and secure U.S. and foreign patent protection. Our services include:

  • Evaluating, and either defending or asserting claims of infringement of existing patents
  • Advising as to the patentability of inventions, and on the non-infringement and validity of existing patents. (We also work with affiliated counsel and firms, as needed, to drafting and prosecute patent applications in the United States before the USPTO, and in other countries under the Patent Cooperation Treaty, through an extensive network of local patent counsel).
  • Developing "design around" strategies to avoid infringement of a given competitor's patents
  • Enforcing patent rights and defending against claims of infringement

Trademark and Brand Management

We advise clients on how best to select, launch, protect and enhance trademarks and service marks in addition to the products and services which they symbolize. We strive to provide cost effective strategies that help our clients compete successfully, distinguish their goods and services in the marketplace and maximize the value of their IPR portfolios and their return on investment. 

We perform trademark searches and provide opinions on a cost effective basis, and represent our clients in prosecuting and registering their trademarks, locally and internationally. We provide advice on registration strategies throughout the world. We also review and advise on product packaging and advertisements, fair use and comparative advertising and helps develop private label programs. We also develop cost-effective post-registration maintenance strategies.

IPR Investigation, Enforcement and Litigation

We vigorously represent clients in technology and intellectual property litigation, including patent, trademark, trade dress and copyright infringement actions; cybersquatting and domain name UDRP actions; trade secret and unfair competition litigation; rights of publicity; licensing and other contractual disputes; enforcement of confidentiality and non-competition agreements and trademark opposition and cancellation proceedings. We leverage experts in mechanical and electrical engineering, life sciences, pharmaceutical and healthcare, computer science, mathematics and other arts and disciplines. We appear before federal and state courts, the USPTO and the International Trade Commission, and in alternate dispute resolution forums and administrative.

Trade Dress and Design Patents

Our attorneys possess substantial experience in securing trade dress protection of product packaging look-and-feel, as well as securing trade dress or design patent protection for product configurations where appropriate. We also represent clients in enforcing trade dress and design patent rights, which we use to guide our recommendations for protection.

E-Commerce

We represent companies that use e-commerce and other forms technology to complement or grow their business, from multi-national corporations to emerging technology startups. We counsel clients on complying with laws and regulations affecting the Internet, including intellectual property, privacy and commercial code compliance. We negotiate and draft a wide variety of e-commerce agreements, including website hosting and development, advertising, marketing, fulfillment services and related agreements. We also help clients police the Internet as well as find and prosecute domain name, trademark, copyright and patent infringement matters.

Licensing, Distribution and Technology Transfer

We represent clients in the acquisition, development and exploitation of technology (including software and hardware) and IPR through licensing, distribution, technology transfer and other agreements.

Software Compliance

We leverage our experience representing one of the world’s leading publishers of software to counsel and advise clients in connection with internal investigations of software license compliance and defend them against audits initiated by software publishers, the BSA or other enforcement groups, including any copyright or other litigation.

Acquisitions and Dispositions of IPR and Technology Companies

We represent both acquirers and sellers in company acquisitions and dispositions; whether the transaction be limited to IPR or focused on an entire company or a larger asset class. We are experienced in dealing with the issues key to these transactions, including ownership of technology and IPR; contractual arrangements with key personnel; complex tax and accounting structuring; securities registration and anti-fraud compliance; and regulatory compliance.

IPR-related Antitrust Advice and Litigation

We counsel our clients regarding the antitrust implications of intellectual property and technology matters and litigate claims where antitrust and patent or other IPR issues are involved.

Representative Matters by Lawyers in the Firm

Patent Protection, Enforcement and Defense

  • Successfully defending leading provider of fleet management and GPS tracking services against patent infringement suit in E.D. Texas by Non-Practicing Entity, including negotiating favorable settlement after achieving favorable decision on Magistrate’s Report & Recommendation granting motion to dismiss patent as invalid under Supreme Court’s Alice decision (pending).
  • Successfully defended major global telecommunications manufacture in a multi-patent infringement action in C.D. California relating to fiber optic networking, achieving favorable confidential settlement.
  • Successfully represented Big-3 U.S automaker in declaratory judgment action in E.D. Michigan, seeking judgment of non-infringement and/or invalidity against supplier corporations who accused client of infringing their patent relating to spare tire locking devices, achieving favorable confidential settlement before trial.
  • Successfully defended Big-3 U.S. automaker in patent inventorship, trade secret misappropriation and business tort dispute in C.D. California, relating to hybrid motor technology; obtained favorable confidential settlement on the eve of trial. 
  • Successfully defended leading operator of bowling centers and leading provider of bowling recreation products and services against claims of patent infringement in N.D. Ohio, relating to “glow-in-the-dark” bowling, achieving favorable confidential settlement, without trial.
  • Successfully defended medical device manufacturer in patent infringement and antitrust litigation and through a three-week trial in Boston federal court regarding automated slide staining systems for pathology slides, achieving a jury verdict less than 2.5% of the damages sought by plaintiffs, after taking over case from prior counsel which lost the liability phase of the case.
  • Successfully defended leading manufacturer of audio, entertainment and navigation systems in patent infringement case in Boston federal court brought by a world-renowned University in involving navigation systems and map database technology, achieving a favorable report and recommendation recommending invalidating the patent and, ultimately, achieving a favorable settlement.
  • Successfully defended leading manufacturer of truck and engines in multi-jurisdictional dispute involving patent infringement, patent ownership and inventorship, trade secret misappropriation, and breach of contract claims relating to its hydraulically-actuated, electronically-controlled fuel injection systems, magnetic latching devices, and diesel engine technology, which was finally resolved by favorable settlement after significant litigation victories.  Successful defense included victories on appeal to the Court of Appeals for the Federal Circuit and defeating petitions for review in the U.S. Supreme Court.
  • Successfully defended leading telecommunications/VOIP company in patent infringement case involving telecommunications products and software, including fax-store-and-forward technology, resulting in a favorable confidential settlement.
  • Developed IPR strategy for emerging technology startup and oversaw prosecution of utility patent application for facilitating global payment and funds transfers using gift cards and other money transfer products.
  • Prosecuted patent applications relating to medical reference systems, diabetic health monitoring methods, treatment systems for amblyopia, intraocular lenses, saddletrees, and fuel filters.
  • Counseled major corporation and prepared infringement and validity opinions relating to patents for various technologies, including methods of medical treatment and drug delivery, blood glucose monitors, drugs, chemical enantiomers, beverages, and nutritional supplements.
  • Counseled leading drug testing laboratory on patent portfolio development and protection strategies.

Trademark and Brand Management

  • Managed trademark portfolio for start-up food company and advised on intellectual property rights and protection.
  • Advised major certifying organizations on licensing, enforcement, and liability issues with certification marks.

IPR Investigation, Enforcement and Litigation

  • Defended generic pharmaceutical manufacturers in an abbreviated new drug application ("ANDA") patent infringement action, including cases consolidated by the Multi-District Litigation Panel, achieving favorable settlements.
  • Defended food manufacture in multi-billion-dollar right of publicity suit, achieving dismissal with prejudice, which was affirmed on appeal.
  • Represented manufacturer in action for infringement of copyright on packaging and labeling, achieving favorable settlement.
  • Defended videographer in dispute with former employer over intellectual property ownership rights, achieving favorable settlement.
  • Defending leading international business and technology consulting firm in ongoing AAA arbitration concerning potential subcontractor's allegations that client violated Illinois Trade Secrets Act and Lanham Act when bidding on public contract. (pending)
  • Represented leading international business and technology consulting firm in negotiated dispute with former client over alleged problems with proprietary software and related services, achieving favorable result.
  • Represented former franchisee defendant in non-compete and franchise contract litigation with multistate pizza chain, achieving favorable result.
  • Represented market leading composite photography company in Illinois Trade Secrets Act and tortious interference and non-compete lawsuit brought by competitor in Kane County, Illinois; successfully resolved on the eve of preliminary injunction hearing.
  • Represented growing computer software training company in trademark dispute, achieving favorable result.
  • Represented leading glassware company in copyright dispute, achieving favorable result.
  • Represented various musicians in copyright disputes related to current and former musical groups, licensing, and other infringement, achieving favorable result.
  • Represented digital and web-service providers in DMCA takedown actions, achieving favorable result.
  • Represented filmmaker in copyright dispute related to a documentary film, achieving favorable result.
  • Defended former employees of a computer software and hardware supplies company in a suit alleging trade secret misappropriation, achieving favorable result.

Trade Dress and Design Patent

  • Counseled food manufacturer on international trademark portfolio, international and domestic licensing, trade dress and design rights, copyrights and advertising issues.
  • Counseled Big-3 U.S. automaker regarding claims of trade dress infringement relating to design of a competitor’s new truck/SUV.

E-Commerce and IT Transactions

  • Represented emerging technology startup delivering automated on-demand office cleaning services to leading international startup in taxi/driver services in negotiating national Master Services Agreement.
  • Represented emerging technology startup delivering automated book-keeping and financial analysis services in developing and negotiating master services agreements among, leading provider of investment services based in Chicago.
  • Represented emerging technology startup delivering automated end-of-life account termination services, in developing and negotiating master services agreements among, national funeral home chains and multiple network hospice providers.
  • Represented leading information technology company, successfully negotiating a master services agreements to cover hardware, software and maintenance services for Fortune® 20 medical distribution corporation.
  • Represented leading information technology and consulting organization in negotiations with leading international airline of a master services agreement for hardware, software and creation of custom deliverables for development of new airline reservation system and interface with global airline reservation system, including entitlements to partner airlines and affiliates.
  • Represented technology service provider in negotiation of master procurement agreement with nation's leading department store chain conglomerate, for hardware, software (middleware and customized software) and maintenance services, strategic outsourcing of Retail, Help Desk, Server Services, Alternate Hosting, Communications, and Offshore AMS services.
  • Represented leading IT and consulting services corporation in negotiation of demonstration and evaluation license agreements with international software development boutique and German software distributor, for testing of experimental video surveillance software.
  • Represented leading publisher of software in negotiating license for continued use by divested entity of software previously licensed to parent leading international provider of consumer products, and new licenses of software and middleware to divested entity.
  • Represented PEO (Professional Employer Organization) in drafting and negotiating several BPO agreements for PEO/HR services, including cross-border transactions in EU/UK and China.
  • Negotiated web-based/automated payroll services agreement with emerging payroll services startup.
  • Negotiated payroll and HR outsourcing agreement with leading provider of payroll and web-enabled HR services.
  • Represented parent of international consumer goods corporation, including multi-national consumer goods affiliates in negotiating outsourcing agreement for ethics management services and training services.
  • Represented mid-Atlantic utility company in multiple-tower business process outsourcing of financial, human resources, customer service, collections and payment processing functions to leading provider of business process outsourcing services.
  • Represented Indian parent and related U.S. subsidiaries in negotiating restated master outsourcing services agreement to provide financial, mail and payment processing services for U.S. healthcare and insurance company.
  • Counseled multinational food distributor on novel privacy issues and privacy best practices.
  • Licensing, Distribution and Technology Transfer

  • Counseled musical artists and recording labels as to recording, distribution and licensing agreements, including a licensing agreement for a musical composition which was used in a major television advertising campaign, which launched during the Super Bowl.
  • Represented participants in reality television series negotiations and licensing agreements.
  • Represented leading manufacturer of computing and mobile phone products in connection with its launch of its first mobile phone product, including successful negotiations of various licenses of IPR from standard’s essential contributors relating to 2G, 2.5G and 3G wireless technologies and standards, including CDMA2000, GSM/GPRS/EDGE, UMTS and WCDMA.
  • Represented leading Chicago-based mobile phone and telecommunications manufacturer in connection with its leading role in developing the non-profit shared-source Foundation to hold and license IPR without royalties for purposes of developing an open mobile communication device software platform.

Software Compliance

  • Represented DOD and DOE contractor in defending against several software audits by Microsoft and BSA.
  • Represented leading publisher of software in connection with audit of and resulting settlement and license negotiations of database development and management software with local University.
  • Represented Fortune® 10 information technology company in connection with its audit of and resulting settlement and license negotiations concerning middleware, database and corporate email software products which were over-deployed by major trust and finance company.
  • Represented international software publisher and negotiated successful resolution of software compliance audit and negotiated compliance resolution agreement for middleware and storage products over-deployed by leading hotelier.
  • Represented software publisher and successfully resolved compliance dispute and audit concerning license over-deployment in violation of discount enterprise license agreement (which was result of prior settlement agreement) by leading financial services organization and credit card issuer.

Acquisitions and Dispositions of IPR and Technology Companies

  • Represented private equity partnership in connection with its acquisition of a Texas-based, “Value-Added Reseller” of information technology products and premiere IBM certified business partner.
  • Represented private equity company in connection with its acquisition of NY-based industry leader and developer of ophthalmic and analytic medical instruments and its German subsidiary, involving significant U.S. and foreign patent portfolio and other technology rights acquired through prior asset purchase transactions. 
  • Represented private equity partnership in connection with its acquisition of manufacturer and developer of engineering equipment for welding services, including substantial U.S. and foreign patent portfolio. 
  • Represented sophisticated technology portfolio company in connection with its acquisition of all of the assets of a leading U.S. semiconductor development, design and manufacturing company (including its Belgium subsidiary) who specializes in digital and computed tomography imaging technology for the automotive industry. 
  • Represented established private equity company in connection with its acquisition of a minority equity interest and voting control in the international leading manufacturer and developer of professional and consumer tooth whitening products and dental devices.
  • Represented sophisticated technology portfolio company in connection with its acquisition of substantially all of the assets of the leading international supplier of automotive and digital sensing, protection and power control applications and systems.
  • Represented established private equity company in its bid, negotiations and diligence of potential investment in premier private label retail dental products manufacturer.
  • Represented private equity partnership in connection with its acquisition of financial services and benefits processing company.

IPR-Related Antitrust Advice and Litigation

  • Advised leading manufacturer of computing and mobile phone products regarding IPR and antitrust concerns in connection with its launch of its first mobile phone product, including successful negotiations of various licenses of IPR from its competitor, including standard’s essential patents.
  • Advised leading Chicago-based mobile phone and telecommunications manufacturer in connection regarding antitrust and IPR concerns relating to its leading role in developing the non-profit Foundation which included several of its global competitors, in order to hold and license IPR without royalties for purposes of developing an open mobile communication device software platform.
  • Advised manufacturer of office equipment regarding patent invalidity basis for antitrust claim.
  • Advised consumer products manufacturers and distributor of electronic products regarding extent to which patent licenses provided defense to antitrust claims for restrictive practices.
  • Advised leading manufacturer of food products and consumer goods on ability to agree to industry technical standards and role of standards-essential patents.
  • Advised household products manufacturer on enforceability of anticompetitive field of use restrictions in patent licenses.
  • Advised several food and consumer companies on ability to use price restrictions in patent licenses.