Intellectual Property Litigation
Patterson Belknap attorneys recognize the critical nature of intellectual property.  We understand our clients’ business objectives and formulate strategies and approaches designed to achieve those goals.  Our lawyers are well-rounded, handling litigation as well as transactions; for instance, generalists and registered patent attorneys often work side-by-side litigating the most complex patent matters.  A distinguishing feature of our intellectual property practice is the frequency with which these attorneys take complex cases to trial.

Our attorneys advise our clients in all aspects of intellectual property including patent, false advertising, copyright, trademark and trade secrets and theft of ideas.  Our work in intellectual property is recognized by legal and industry publications both internationally and nationally.  We recently received IP World's 2009 World Leaders International IP Award for Private Practice Trademark Excellence/Litigation (North America/Canada) and were named one of Law360's IP Firms of the Year for 2009.

Patent

Patterson Belknap has litigated “bet-the-company” patent disputes for decades.  We represent clients in some of the most notable patent cases in the country. As described below in 2010, we secured a settlement of $1.725 billion, the largest settlement ever of a patent infringement case in the United States on behalf of a Fortune 50 client. 

We are ranked among the top ten firms in New York for patent litigation by Chambers USA: America’s Leading Lawyers for Business.  The guide notes, “This team of attorneys combines exceptional scientific knowledge with terrific skills.”  Our team “receives the most widespread acknowledgement for its performance in high stakes patent litigation.”

Many of our attorneys have scientific and technical backgrounds and varied industry experience, including such diverse fields as chemistry, biochemistry, biology, biotechnology, statistics, mathematics, and chemical, nuclear and electrical engineering.  This expertise enables the firm to represent clients not only in patent infringement litigation but also in complex reexamination and interference proceedings before the U.S. Patent & Trademark Office.  In addition, we negotiate patent licenses and sales and provide opinions concerning patent validity and infringement.  Our willingness to go to trial (when in the client's interest), and ability to assess realistically the strengths of a case, not only serve our clients in court but also can increase the chances for a favorable outcome.

Below are some recent representative patent matters.
 

• For over a decade we have represented our client, a medical device manufacturer, in a series of “bet-the-company” patent litigations relating to coronary stents. We conducted 14 trials, preliminary injunction hearings and arbitrations involving infringement, enforceability and/or validity issues.  In January 2010, the last of the disputes settled with our client receiving $1.725 billion. In total, this client collected more than $3.5 billion. The cases leading up to this settlement include the following:
  
  
  • As defendant, we won a jury verdict (in 2001) allowing client to continue selling state-of-the-art coronary stent device; 1994 jury victory was cited by The National Law Journal as one of the major defense verdicts of the year;
    
    
  • As plaintiffs we won jury verdicts of $271 million and $324 million (both cited by The National Law Journal as among the major plaintiff's verdicts of the year 2000) and arbitration award of $425 million (in 2003);
    
    
  • In June 2005, we won jury verdicts of infringement on second and third generation infringing products that directly lead to the $1.725 billion settlement;
    
    
  • In September 2008, both jury verdicts were affirmed and the district court entered a judgment of over $1.2 billion including post-verdict damages and prejudgment interest; and
    
    
  • In January 2009, the court of appeals reversed a finding of infringement where the plaintiff was seeking over a billion dollars in damages

 

• The firm obtained an important victory on behalf of a major pharmaceutical company in a patent case against a top competitor.  Our client is the exclusive U.S. marketer of, and exclusive licensee on a patent related to its largest selling drug, with U.S. sales of $3.6 billion in 2006.  Our client’s opponent filed an ANDA application to sell a generic version of the drug.  In response, we sued in federal court, alleging that their proposed generic product would infringe our client’s patent.  The court ruled in our favor, stating that the defendant failed to show that our patent was invalid or that inequitable conduct had been committed.  The court issued a permanent injunction prohibiting the defendant from marketing its generic product until our client's patent expired.
  
  
• Following a four-day bench trial, the U.S. District Court for the District of New Jersey issued a decision in favor of our client, a major pharmaceutical company, ruling that the patent at issue was valid and enforceable.  In an 80-page decision, the court rejected every point raised by the defendants.  The patent at issue covers a drug our client produces which has become their #1 selling product.
  
  
• We obtained a favorable settlement on behalf of our client, a major medical device manufacturer in the District of Delaware in a case where plaintiffs alleged that our client had infringed eight patents involving digital subtraction angiography.
  
  
• Our attorneys secured a favorable settlement for our client, a major medical device manufacturer in the Eastern District of Texas, in a case involving software for resource scheduling.

False Advertising

More than 30 years of trials and appeals have led to Patterson Belknap’s prominence in the field of advertising law.  Our practice is recognized in the top band of firms by Chambers USA.  The publication states:

Noted as “the busiest advertising practice in the city,” the team’s “niche is its strength in litigation.” Initially expanding from the IP practice, it now encompasses litigation for the advertising world, providing “exceptional service” in dealing with libel, false advertising and internal investigations.  Steven Zalesin is a “rock-solid and much sought-after litigator,” who is greatly admired by peers and clients alike for his “impressive organizational skills and great demeanor in front of judges.”

The firm has represented consumer products companies in nearly half of the false advertising cases decided by the Second Circuit in the past decade, and our practice is widely recognized as among the country’s most experienced in this area.  Some of our notable cases include: 

• We defeated a motion for a preliminary injunction in a lawsuit brought by the manufacturer of the world’s top-selling sports drink against its chief competitor.  The court determined that the plaintiff was unlikely to succeed on the merits of its false advertising and trademark infringement claims, could not show a risk of irreparable injury, and had asserted claims that were barred by its own unclean hands.
  
  
• We obtained a preliminary injunction enjoining a major satellite television provider from airing nationally broadcast commercials.  The injunction was affirmed on appeal and, in the process, the Second Circuit redefined several key doctrines in the law of false advertising.
  
  
• We represented the maker of the leading no-calorie sweetener in a series of false advertising cases and in a high-stakes trade dress infringement action.
  
  
  • In the series of false advertising cases, the plaintiff alleged that our client's advertising claims were false and misleading and that its no-calorie sweetener is not a "healthy" product.  After obtaining a ruling excluding our adversaries key piece of evidence, the parties reached a mutually-agreeable settlement.
     
    
  • In the high-stakes trade dress infringement action, the U.S. Court of Appeals for the Third Circuit entered a decision in our client's favor partially reversing the District Court's denial of a preliminary injunction against the sale of "knock-off" products that are confusingly similar in appearance to our clients product.  After the District Court granted our client's renewed motion for preliminary injunction, the parties reached a mutually-agreeable settlement.

• We represented the maker of the leading no-calorie sweetener in more than a dozen false advertising cases filed by competitors and putative classes of consumers.  We secured a series of decisive victories for this client in the consumer cases, defeating attempts to certify national and state-wide classes of consumers in seven different states. The parties reached a mutually-agreeable settlement.
  
  
• We regularly represent the manufacturer of the leading non-prescription pain reliever in false advertising disputes with competitors.  Over the years we have successfully prosecuted and defended numerous trials and appeals, including what was described by the court as “the largest and most complex false advertising case ever tried.” 
  
   
• We regularly represent one of the nation’s leading consumer products companies in litigation concerning advertising claims for various household products such as plastic storage bags, cleaning solvents, water filters and pest control products.

Copyright / Trademark

Patterson Belknap is actively involved in litigating copyright disputes.  Our practice is recognized among the top in New York by Chambers USA.  The firm also counsels clients on copyright issues, handles copyright registrations, and negotiates licensing agreements.  The firm has represented well-known entertainers, composers, authors, publishers, and television/radio networks as both plaintiff and defendant.

Our litigators have long been at the cutting edge of trademark and unfair competition litigation.  The firm has tried many preliminary injunction hearings on short notice, generally taking discovery on an expedited basis.  The lawyers in this area also counsel clients on trademark and trade dress issues and handle trademark filings.

Representative copyright and trademark matters include:

 

• We represented a leading restaurant chain in a suit brought against it by a celebrity rap artist.  The action arose out of a letter the sent to the artist making an offer to participate in a public relations event.  The rap artist claimed that dissemination of the letter to the media violated his right of publicity under New York law and his trademark rights under federal law and sought damages and injunctive relief. Following fact and expert discovery, summary judgment briefing and mediation, the case resolved on mutually satisfactory terms.
  
  
• We are representing a major financial company in strategic IP litigation in both the Illinois courts and the federal courts in New York to defend its franchise in index-based derivatives trading.  This market comprises a wide variety of exchange-traded and structured investment products, such as options and futures, based on well-known indexes.  To date, we have won every decision in these related cases on forum selection, jurisdiction, copyright preemption, and discovery issues.
  
  
• We represented a major game and toy maker against a software development company in a copyright and trademark action related to our client’s world-famous board game. Along with the complaint, we served a DMCA take-down notice on a social networking website which made game available to its users. The social networking site complied by removing the game from its site. A confidential settlement was reached pursuant to which the defendants' games were changed, and the U.S. litigation was therefore dismissed.  We continue to represent our client in a wide variety of IP enforcement work.
  
  
• We successfully represented a major publisher that owns copyrights in world-famous cartoon characters in litigation against unauthorized licensing by a third party of merchandising rights.
  
  
• We represented a media company as the producer of a children’s show in defense of an action alleging copyright infringement, brought by the then-owners of the Beatles songs, “Hey Jude” and “Let It Be.”
  

Trade Secret and Theft of Ideas

Our clients have been involved in claims of misappropriation of trade secrets and ideas in the consumer products, toy, manufacturing and movie industries as both plaintiffs and defendants.  We also have counseled clients on ways to make those types of claims less likely and to protect their secrets and ideas.

Below are some representative matters.

 

• Our attorneys defeated preliminary injunction and protected the launch of a highly anticipated CD for a music production company.The firm defended a major pharmaceutical company, a software publisher and others from claims of theft of trade secrets.
  
  
• We defended an entertainment company and a cable network from claims of misappropriation of ideas.
  
  
• Our attorneys prosecuted a suit for misappropriation of trade secrets while assisting in a parallel, ongoing criminal investigation.
  
  
• We have defended a major toy company and others against various claims by independent inventors for misappropriation of product ideas.
  
  
• We successfully represented a major publisher that owns copyrights in world-famous cartoon characters in litigation against unauthorized licensing by a third party of merchandising rights.
  
  
• We represented a media company as the producer of a children’s show in defense of an action alleging copyright infringement, brought by the then-owners of the Beatles songs, “Hey Jude” and “Let It Be.”
  
  
• We represented the leading information reporting and media company in a federal case against a competitor alleging that the competitor illegally accessed its proprietary software system and used that illegal access to copy aspects of our client’s market-leading product.

For additional information regarding our Intellectual Property Litigation practice area, please contact Jeffrey I.D. Lewis.