Intellectual Property

While intellectual property, which includes trade secrets, patents, copyrights, and trademarks, has always been an important part of our clients' asset portfolios, those intangible assets have never been more important than they are today. Berliner Cohen attorneys possess the necessary expertise to help its clients protect those assets, both proactively and after someone has misappropriated or misused that property.

For our clients establishing new ventures or developing new products, and even for those clients who have come to understand that the best time to protect intellectual property is before someone has misappropriated it, we provide advice and counsel on how best to protect trade secrets, patents, copyrights, and trademarks. These proactive protection methods can include requiring confidentiality, non-disclosure, invention assignment, and proprietary rights agreements for employees and independent contractors, whether in the hiring process or in the context of a merger or acquisition; registering trademarks and trade names; transferring and maintaining existing patents; licensing intellectual property of all kinds; among other measures.

After our clients' intellectual property rights have been violated, our IP litigators are here to help. With Berliner Cohen's business litigation practice having served our clients well for more than 45 years, our IP litigators pose a "triple threat" that makes us uniquely qualified to address the IP litigation needs of our clients: #1 - We have substantial trial experience that pressures our opponents with the knowledge that we are eager to do battle in the courtroom if necessary. #2 - We have a thorough understanding of the nuances and sometimes-esoteric requirements of IP litigation not present in garden variety commercial disputes, which can be used both as a sword and a shield to our clients' advantage. #3 - Our technical backgrounds help us better understand the technology to which our clients' intellectual property relates.

Sometimes our clients are wrongfully accused of infringing on another person's or entity's intellectual property rights. Our "triple threat" qualifications work as well in a defense posture as they do when prosecuting claims.

The result is that our clients should feel confident in our ability to handle any litigation relating to trade secrets, patents, copyrights, and trademarks.

Trade Secrets
Trade secrets consist of information that derives economic value from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use. But in order to be entitled to protection, the owner of the trade secrets must make reasonable efforts under the circumstances to maintain their secrecy.

We work with clients to help them identify their trade secrets. Based on our trade secrets litigation experience, we are well-positioned to help our clients understand which secrecy efforts are likely to be deemed by a court to be "reasonable under the circumstances."

During trade secrets litigation, our extensive experience helps us to aggressively and successfully represent our clients, whether on the plaintiff's side or on defense.

Patents
More than half of all patents are invalidated when challenged. For this reason, we do not believe that our clients should quickly acquiesce when presented with a patent infringement claim. We have expertise in defeating patent litigation claims before they are ever filed in court. And if a patent infringement claim is filed, our clients find our rates far more affordable than those of many other firms specializing in patent litigation.

For our clients that have a patent portfolio of their own, we can help with licensing and assignment agreements. And we can prosecute patent infringement claims when another entity infringes our clients' patents.

Copyrights
We have been advising clients regarding copyright matters for many years. Some of the types of advice we provide in this context include the availability of copyright protection, who owns a copyright, whether a license is needed for a particular use or whether the contemplated use is fair use, and whether a copyright has been infringed or a license misused. We also advise and assist clients in enforcing their copyrights, and in defending against claims of copyright infringement. We have substantial copyright experience in the software, database, and Internet contexts.

Trademarks
Our attorneys counsel clients regarding the availability and use of trademarks and service marks; prosecute applications for trademark registration before the U.S. Patent and Trademark Office; represent clients in inter partes proceedings before the Trademark Trial Appeals Board; advise clients regarding the use, protection and maintenance of marks; and handle domain name disputes.

Licensing
We advise clients with respect to negotiating and preparing licensing agreements, OEM agreements, distribution agreements, nondisclosure and invention assignment agreements, master services agreements, general terms and conditions, service level agreements, and other IP-related agreements. We have worked with many early-stage and start-up companies in connection with capitalizing the company with IP and other intangibles and drafting appropriate software assignments and other instruments of IP transfer.

Representative Matters and Cases

  • Regional Enterprises v. Allivato, Sixth District Court of Appeal Docket No. H014075
    Won a jury verdict in favor of an employer on its claims against a former employee for misappropriation of trade secrets and on the employee's claims against the employer for wrongful termination; on appeal, successfully defended against the employee's allegations that a non-competition and non-solicitation agreement that she signed was invalid under California law and that she was terminated from her employment in violation of public policy for refusing to sign the invalid agreement
     
  • Successfully defended corporation operating in semiconductor capital equipment space against claim of breach of intellectual property license agreement and copyright infringement. Obtained favorable settlement following settlement conference, resulting in corporation obtaining ownership of intellectual property at issue
     
  • Successfully prosecuted claim of misappropriation of customer list-related trade secret information against scrap metal recycling corporation’s former employees who used the information to set up a new scrap metal recycling venture to compete with corporation. Obtained favorable settlement following mediation
  • Successfully defended multi-national software manufacturer and its CEO against claims of misappropriation of trade secrets contained in Java source code and misappropriation of corporate opportunities. Obtained favorable settlement after aggressive technical discovery and motion practice
     
  • Obtained transfer of venue of high-tech patent dispute on behalf of corporation to district where plaintiff had also filed related breach of contract and trade secrets misappropriation case
     
  • Successfully defended European corporation in arbitration against claim of breach of intellectual property license agreement. Obtained favorable settlement after extensive discovery significantly undermined plaintiff’s claims
     
  • In several instances, successfully deterred non-practicing entities (“patent trolls”) from pursuing patent infringement claims against corporate clients
     
  • Defended and obtained successful resolution of copyright infringement claim and Lanham Act claims involving operating system and related software used in handheld devices
     
  • Successfully defended trade secret claims involving chipset logic designs

For more information, please contact Christian Picone, christian.picone@berliner.com, or Kathy Sherman, kathy.sherman@berliner.com.