Patent Litigation

Sometimes innovation begets imitation. An issued patent gives its owner the right to exclude others from making, using, selling, offering for sale or importing the patented invention. Typically, a party wishing to practice a patented invention enters into a license or purchase agreement with the patent owner in order to secure the right to do so.

Occasionally, however, a party wishing to practice the invention does so without the patent owner’s consent, thus infringing the patent. Conversely, a patent owner may overestimate the extent of the limited monopoly granted under an issued patent and allege infringement against a non-infringer. Though we work to resolve issues for our clients without going to court in either instance, in the event patent infringement litigation becomes necessary we represent our clients to the fullest extent.

At every stage of the litigation process, it is important to maintain the proper perspective of the case in relation to the overall objectives and needs of the client. Otherwise, litigation can become exceedingly costly, and in some instances may do more harm than good. McHale | Slavin puts its clients’ interests at the forefront in every litigation, with an aim toward achieving maximum results for both the short and long term, at a reasonable expense.

In the United States, there are several forms of relief available to the patent owner who has successfully proven patent infringement. Such relief can include an injunction, protection from future infringement; compensation for past infringement; certain of the costs of litigation; and, in exceptional cases, attorney’s fees and treble damages.

The basic remedy for past infringement is the award of damages (35 U.S.C. § 284). While the law provides no maximum damages, it does provide a minimum. Damages shall “in no event [be] less than a reasonable royalty for the use made of the invention by the infringer.” Compensatory damages are designed to replace what the inventor has lost. In the case of an inventor who does not have the capacity to manufacture his or her own invention, compensatory damages set at a reasonable royalty might be appropriate. Although indirect damages are generally not recoverable, the “entire market value” rule allows a patent owner to collect damages based on the value of an entire infringing device, even if that device contains multiple features and only one of the features infringes. Prejudgment and post judgment interest on an infringement award can be requested for damages. The court may also increase damages up to three times for the willful, wanton infringement of the patent.

An alternative source of limited relief is available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States. The ITC can exclude from importation products that infringe a valid U.S. patent and cause injury to a domestic business. However, no compensation for past infringement or attorney’s fees is available in an ITC proceeding.

McHale | Slavin has extensive experience in prosecuting and defending patent litigation, while remaining mindful of a client’s overall business objectives. Contact us for additional information or to schedule a consultation.



Trademark Litigation

McHale | Slavin has wide experience and success in handling trademark and trade dress litigation in the federal courts, as well as cancellation and opposition proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. The related field of Internet domain name disputes, both in federal court and before administrative tribunals, and an understanding of the critical nuances which often determine the outcome of such disputes, is an area in which we have deep experience.

In addition to preparing detailed litigation budgets, the practical business needs involved in trademark disputes always remain the firm’s primary focus, and, when appropriate, the expeditious end of litigation, including obtaining the benefits of alternative dispute resolution is a critical aspect of these cases from inception. If the controversy involving results in a civil action 15 U.S.C. § 1117 governs damages, providing:

Profits; damages and costs; attorney fees

When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office is established, the plaintiff shall be entitled to recover: (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.

If the court finds that the amount of the recovery based on profits is either inadequate or excessive it has the discretion to enter judgment for such sum as it shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Treble damages for use of counterfeit mark

In assessing damages, the court shall, unless it finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee, that consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark, in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment interest on such amount at an annual interest rate established under 26 U.S.C. § 6621(a)(2), commencing on the date of the service of the claimant’s pleadings setting forth the claim for such entry and ending on the date such entry is made, or for such shorter time as the court deems appropriate.

Statutory damages for use of counterfeit marks

In a case involving the use of a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under 15 U.S.C. § 1117(a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of – (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.

The importance of protecting a business’s valuable goodwill, existing in its marks, and establishing and protecting trade dress rights in products and product related services cannot be underestimated, and our firm’s ability to protect the value of these rights through necessary litigation is one of our most important services. Contact us for additional information or to schedule a consultation.



Copyright Litigation

McHale & Slavin has extensive knowledge and experience in copyright litigation which, because of its potential complexity and the strength of the remedies provided for infringement, takes on major importance for any litigant in these cases. We have many years of experience successfully representing both plaintiffs and defendants, and bring our valuable understanding and depth to the needs of clients involved in copyright disputes.

In general, an infringer of copyright is liable for either: (1) the copyright owner’s actual damages and any additional profits of the infringer; or (2) statutory damages.

Actual Damages and Profits

The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

Statutory Damages

The copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just.

In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.

Because the protections of copyright law and the remedies for infringement are among the most powerful of any area of the law, our knowledge and understanding in this field allows aggressive and focused representation, including the critical element of financial compensation and when appropriate, preliminary injunctions and enforcement remedies through U.S. Customs and other emergency relief. In defending against infringement allegations, the Copyright Laws’ recognition that the right to fair use is as important as the protection of the author’s rights in creation is often a critical issue. An understanding of the scope of any copyright protection and the actual nature of accused infringement allows us to defend lawful activity in the context of copyright infringement litigation. Contact us for additional information or to schedule a consultation.



Trade Secrets

Trade secret law represents a balance of two primary concerns — the encouragement of innovation and the enforcement of ethics in business. Under the Uniform Trade Secrets Act, which has been adopted by the vast majority of states, a trade secret is information that: derives independent economic value by virtue of not being generally known or readily ascertainable by others; and is the subject of efforts reasonable under the circumstances to maintain its secrecy. In 2016 the U.S. Congress passed the Defend Trade Secrets Act, which allows the owner of a trade secret to sue in federal court when its trade secrets have been misappropriated.  The Act closely aligns with the Uniform Trade Secrets Act.

Trade secret protection focuses on the nature and character of information and the precautions taken to ensure its protection, rather than the form in which it exists. Unlike other forms of intellectual property, virtually any subject matter of information can be a trade secret, as long as it is kept secret according to the general standards required for trade secret protection. Though trade secret owners are required to take affirmative steps to safeguard their proprietary information, the reasonableness of one’s protective measures is considered in light of the particular circumstances. Every trade secret owner should tailor its measures to its needs and abilities.

The benefits of trade secret protection can be seen in a variety of situations. For example, in the workplace a trade secret protection program can ensure that employees past and present uphold their confidentiality obligations rather than sharing information with competitors. In dealing with third parties, protective measures such as confidentiality and non-disclosure agreements serve as deterrents against the theft of developing innovations. Conversely, parties benefit from being mindful of steps they can take to avoid having to defend against such claims. For example, some of the most common trade secret disputes arise where an employer hires a new employee formerly employed by a competitor who then sues, or where negotiations between businesses do not conclude in a new relationship subsequent to the disclosure of confidential information.

McHale | Slavin has extensive experience in advising clients as to the protection of trade secrets both within one’s own business and with third parties. Contact us for additional information or to schedule a consultation.



Unfair Competition

McHale | Slavin represents clients in matters relating to unfair trade practices including federal actions under the Lanham Act and state law causes of action. Unlike other areas of intellectual property law, unfair competition actions are not preempted by federal law and may involve both federal and state causes of action. The law of unfair competition emerged from common law and is designed to protect competition and valuable business information. There are a number of actions that may give rise to claims of unfair competition including: trademark and trade dress infringement; trade secret theft; dilution; and false advertising. Unfair competition law often overlaps with other areas of law including not only patent, trademark and copyright law – but also antitrust, trade secret laws; laws recognizing the right of publicity, computer fraud statutes, employment law, and the Lanham Act.

Our firm’s intellectual property lawyers are experienced in handling these matters both through transactional work and litigation. We are skilled at both protecting clients’ intellectual assets and in defending unjust assertions of unfair competition. Contact us for additional information or to schedule a consultation.

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