Intellectual Property

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The Intellectual Property practice group protects the ideas, innovations, inventions, imagery, and creative compositions that propel successful business ventures and create strong brands.

Led by a highly experienced U.S. patent attorney, our intellectual property team draws from a broad range of Goldberg Segalla’s litigation and transactional practices, resulting in collective experience solving IP problems that involve a vast array of academic disciplines, cutting-edge innovations, and industry sectors. The GS IP team blends its members’ real-world work in scientific and high-tech disciplines with exceptional business acumen and deep experience handling patents, trade secrets, copyrights, trademarks, and other IP matters. The result is a tech-savvy and efficient team dedicated to helping clients develop practical business strategies that maximize the return on their investments and innovations.

When an idea becomes an invention and needs to be protected, the lawyers at Goldberg Segalla can help the inventors obtain the necessary patent protection anywhere in the world. When intellectual property assets require protection from infringement or proactive measures to mitigate risk, our team brings extensive experience litigating and trying complex patent, trademark, copyright, and commercial cases. Because we have the ability to communicate highly technical concepts effectively to courts, jurors, administrators, opposing counsel, and other parties, we are often able to negotiate creative and more efficient solutions to disputes. When that is not possible, this strengthens our ability to enforce our clients’ rights in litigation and other proceedings.

The Full-Service IP Advantage

Our clients receive the dedicated intellectual property focus and credentials they expect from a specialized intellectual property boutique, plus the strength and capabilities of a dynamic firm acclaimed in several practice areas nationally and internationally.

Goldberg Segalla serves businesses and professionals across a broad spectrum of industries, and our clients include global market leaders as well as startups, entrepreneurs, inventors, and investors. That gives our firm-wide Goldberg Segalla Intellectual Property team an understanding of, and appreciation for, the unique legal, financial, and practical concerns of companies that operate in many different sectors — including consumer electronics, semiconductors, software, internet technology, pharmaceuticals, medical devices and others.

Representative IP Litigation Matters

Asserting patents on behalf of an industry leader for peer-to-peer I/O technologies used in smartphones and other mobile devices
Representing a maker of enterprise data backup and restoration technologies in patent litigation involving some of the world’s largest software and hardware companies
Representing the owner of an activity-monitoring technology patent in district court litigation and in an inter partes review proceeding against a manufacturer of wearable fitness monitors
Defending one of the world’s largest auto makers in patent litigation involving vehicle-to-smartphone connectivity technology
Handling inter partes review proceedings for a long-established global pharmaceutical leader involving a patent for antifolate combination therapy
Handling ITC Section 337 litigation involving electronic devices that have a retractable USB connector
Representing a major tobacco company in a trademark infringement case against sellers of counterfeit cigarettes, resulting in the successful seizure of all counterfeit product, recovery of several hundred thousand dollars in statutory damages, and a permanent injunction
Defending a modeling agency in a jury trial in the Southern District of New York against copyright infringement and tortious interference claims brought by a photographer seeking over $10 million in damages
Defending a mold remediation company and its owner against a copyright infringement action brought by a software developer
Defending an apparel distributor against allegations of copyright infringement arising from handbags it sold
Defending a warranty administrator against trademark claims based on conduct of its licensee
Obtaining a favorable decision in an action in which the plaintiff, claiming exclusive rights in a geographic descriptor, sought to prohibit a restaurant from using its chosen geographically descriptive trade name
Defending a regional craft brewery against claims of trademark infringement from a nationally distributing brewery
Handling litigation involving antitrust violations and trademark infringement for an international consumer products company in connection with the marketing and sale of popular insoles and footwear inserts
Representing a medical supplies wholesaler in a trademark and unfair competition action concerning importation of international grey market goods
Defending a middleman distributor against major textbook publishers seeking $5 million in a case involving foreign and domestic distribution, with claims alleging trademark infringement, copyright infringement, unfair competition, and fraud
Successfully representing an employer and newly hired employees in litigation concerning restrictive covenants and trade secrets

Experience Highlights

When it comes to the successful monetization and protection of their intellectual property, universities and research institutions worldwide trust Goldberg Segalla to partner with them.

Our firm’s diverse and highly skilled team works collaboratively with our clients to uphold the integrity of their inventions through all phases of patent development, licensing, commercialization, and enforcement.

From science to technology, our attorneys possess extensive experience in the expansive array of intellectual property matters that confront universities and research organizations.

We work to ensure our clients capitalize fully on their innovation by assisting them every step of the way during the often-thorny out-licensing process so that not only are costs recouped but maximum revenue is generated.

No matter the proceeding — whether its arbitration, trial in district court, appellate court, USPTO proceedings, or appearing before the International Trade Commission — our firm represents clients in a wide range of areas, including patent, copyright, commercial cases, trade-secret litigation and all matters that pertain to licensing.

Goldberg Segalla also provides university patent counsel at no cost unless there is a successful result on the university’s behalf.

We understand your business, value your interests and are committed to upholding your reputation while working to ensure you maximize return on your innovation.

Our team has several registered patent attorneys with experience litigating patent cases at the district courts and at the International Trade Commission (ITC). In addition to patent infringement litigation, we regularly take part in proceedings at the U.S. Patent and Trademark Office, such as inter partes reviews (IPRs) and reexamination.

We have extensive experience in helping businesses turn intellectual property into profit centers by generating revenue from their patent portfolios. We have secured seven- and eight-figure settlements and licensing deals for our patent-owner clients, which include large corporations, startups, solo inventors, and non-practicing entities. We have first-chaired bench and jury trials in various district courts around the country, obtained injunctive relief at the International Trade Commission (ITC), and argued before several courts of appeals including the Federal Circuit.

Our capabilities include:

Assessing patents for their strengths and weaknesses
Identifying potential infringers and preparing infringement claim charts
Reviewing prior art
Mapping out potential damages
Advising clients in their patent prosecution efforts and expansion of their patent portfolios
Crafting alternative fee and litigation financing arrangements
Developing jurisdiction and licensing/litigation strategies
Negotiating patent-portfolio licensing deals
Litigating cases, to trial if needed, in district courts around the country and before the PTAB and Federal Circuit

Examples of our previous notable representations on the enforcement patent-owner side include:

Represented an Israeli startup against web services and search engine providers in Delaware. The asserted patents related to technology providing previews of search results.
Represented a software development company in litigations in Delaware against more than 15 defendants, including some of the largest software companies in the world. The asserted patents covered technology for backup and restore software.
Represented a software developer against over 30 laptop, router, semiconductor, and handset makers. The asserted patents covered technology that facilitated program-controlled, direct transfer of data along a bus or data pathway between peer input/output devices in a data-processing apparatus or data-processing network.
Represented an electronics component manufacturer in its ITC action against a multinational semiconductor company on patents related to silicon microphone packages. The client was able to obtain a partial limited exclusion order due to this lawsuit.
Represented a hardware design company against a manufacturer of an activity tracking device on patents covering wearables technology.

We handle everything from searches and registration to dilution claims, trademark and trade dress infringement litigation, copyright infringement litigation, false advertising claims, Trademark Trial and Appeal Board proceedings, and other disputes.

We have extensive experience handling trade secret misappropriation litigation and we counsel clients on establishing and protecting their trade secrets, including new developments under the Defend Trade Secrets Act.

We prepare, negotiate, and resolve disputes involving licensing agreements over patents, trademarks, copyrights, and other assets. Our team assists both innovators and investors in monetizing IP portfolios through the sale, acquisition, financing, and transfer of assets. We counsel and guide businesses through all things IP, including on “work-for-hire” doctrine and issues concerning employee inventions and ownership rights.

Generic pharmaceutical manufacturers count on Goldberg Segalla’s Hatch-Waxman ANDA Litigation and Counseling team, a cross-disciplinary group of highly accomplished attorneys practicing in both our Intellectual Property and Life Sciences Practice Groups, and dealing exclusively with matters involving the federal Drug Price Competition and Patent Term Restoration Act, or Hatch-Waxman Act and the Biologics Price Competition and Innovation Act (BPCIA). Our litigators have represented both branded and generic pharmaceutical companies in connection with small molecule drugs and biosimilar products. We use our experience and technical knowledge to counsel clients on all aspects of Abbreviated New Drug Applications (ANDAs) filed under the Hatch-Waxman Amendments, and our litigators routinely represent and advise pharmaceutical companies on pre-litigation strategies, FDA approval, prior art analysis and opinions, Paragraph IV certifications, trials, and appeals.

The GS IP team works collaboratively with experienced transactional attorneys across our footprint who have diverse knowledge and experience with contracts, particularly those containing intellectual property components, and can assist either from the commencement of a case or on an as-needed basis to provide unparalleled guidance on critical transactional elements of both contested and negotiated IP matters.