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Overview

Stoll Keenon Ogden understands the importance of protecting information and intellectual property, especially in today’s world of accelerated electronic information sharing and high-functioning artificial intelligence. Businesses and individuals need to protect their creative ideas and vital information, and we are fully prepared to help clients in the information, technology and media industries on matters that involve copyright, trademark and patent laws.

Our experienced attorneys counsel clients on the complexities of protecting information, ideas and technology. We strive to craft tailored and progressive solutions to meet the client’s present needs as well as prepare for those in the future.

Our scope of service includes matters involving:

  • Copyright registration
  • Drafting, negotiation and review of assignments and licenses of intellectual property
  • Enforcement of patents, trademarks, trade secrets and copyrights
  • Intellectual property due diligence and opinions
  • Non-infringement and freedom to practice opinions
  • Patent prosecution
  • Publishing disputes
  • Technology agreements, including software license and maintenance agreements, consulting agreements, data protection agreements, source code escrow agreements
  • Trademark and service mark prosecution, including federal, state and international registration
  • Website privacy policies and terms of use
  • Company names and domains
  • Business planning

Work Highlights

Patent Infringement, False Advertisement & Antitrust

Static Control Components, Inc., et al. v. Lexmark International, Inc., et al., Case No. 04-84-GFVT (Consolidated with Action No. 02-571) (E.D. Ky) (multiple published decisions)

This multi-party, complex litigation involved Lexmark, a major provider of printing and imaging products and services. Lexmark asserted claims for, among other things, patent infringement and inducement to commit patent infringement. The lead opposing party, Static Control Components, asserted claims against Lexmark for, among other things, antitrust violations under the Sherman Act and Clayton Act and false advertising claims under the Lanham Act. Lexmark obtained dismissal of the Sherman Act and Clayton Act antitrust claims and a favorable ruling upholding Lexmark’s single-use restriction on its printer cartridges under the Uniform Commercial Code. On June 3, 2013 the United States Supreme Court granted Lexmark’s petition for writ of certiorari to resolve a circuit split on the proper test for standing to assert Lanham Act false advertising claims.  Steven argued the case in front of the Supreme Court on December 3, 2013.

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Patent Infringement, False Advertisement & Antitrust

Lexmark International, Inc. v. Impression Products, et al., Case No. 10-564-MRB (S.D. of Ohio)

SKO, along with Sidley Austin LLP and Banner & Witcoff, represented Lexmark in a closely-watched patent case at the Federal Circuit Court of Appeals. In a dispute brought by Lexmark over remanufactured printer cartridges, the Federal Circuit held in Lexmark’s favor on domestic and international patent exhaustion issues.  The case is now pending before the United States Supreme Court and will be argued on March 21, 2017.

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Shareholder Class Action

Margie Elstein v. Lexmark International, Inc., et al., Civil Action No. 16-CI-02380 (Fayette Circuit Court)

SKO represented Lexmark in successfully dismissing a proposed class action lawsuit filed by a shareholder claiming Lexmark’s merger agreement with a consortium of investors was unfair to shareholders. The lawsuit was filed less than a month before Lexmark’s scheduled shareholder vote.  After the lawsuit was filed, the plaintiff sought a temporary injunction enjoining the shareholder vote.  Steven argued that the case should be dismissed because Lexmark’s bylaws require the case be heard in the Delaware Chancery Courts.  A mere three days before the scheduled shareholder vote, the Court dismissed the lawsuit and the shareholder vote occurred as scheduled.

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Related Attorneys: Steven B. Loy, Monica Braun
Related Industries: Manufacturing, Information
Related Practices: Class Action, Business Litigation

Patent Infringement

Lexmark International, Inc., et al. v. Pitney Bowes Inc., et al., Case No. 001-237-JMH (E.D. Ky.)

Successful litigation involving patent infringement claims against Lexmark relating to print quality enhancement technology. Lexmark obtained summary judgment, dramatically limiting the products at issue on the basis of failure to mark or provide actual notice under 35 U.S.C. § 287. The case was settled after the Court’s ruling.

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Related Attorneys: Steven B. Loy
Related Industries: Manufacturing, Information

Patent Infringement

Lexmark International, Inc. v. Laserland, Inc., 304 F.Supp.2d 913 (E.D. Ky. 2004)

Represented Lexmark in a patent infringement lawsuit, and established new personal jurisdiction law in the Sixth Circuit relating to interactive websites; case settled.

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Related Attorneys: Steven B. Loy
Related Industries: Manufacturing, Information

Recapitalization and Restructuring of Financial Services Compliance Firm

Represented financial services compliance firm in all aspects of recapitalization and sale of multiple series of securities to private equity firm and other stockholders.

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Related Practices: Business Services

Federal and State Regulation, Telecommunications

Obtained favorable ruling in interconnection dispute between major telecommunication carriers, prevailing before Sixth Circuit, District Court, and Kentucky Public Service Commission.  BellSouth Telecomms., Inc. v. Goss, 142 Fed. Appx. 886 (6th Cir. 2005).

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Related Industries: Public Utility, Information
Related Practices: Utility & Energy

Antitrust, Telecommunications

Successfully defended telecommunications carrier in Sixth Circuit and District Court against antitrust and related claims in suit brought by prison inmates.  Daleure v. Kentucky, 269 F. 3d 540 (6th Cir. 2001); Daleure v. Kentucky, 119 F. Supp. 2d 683 (U.S.D.C W.D. Ky. 2000).

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Related Industries: Public Utility, Information
Related Practices: Utility & Energy

Information Technology Agreements

Since 1994, SKO has been involved in reviewing and negotiating the agreements relating to many clients’ information technology systems, including providing for data security, privacy protections and incorporating service level agreements.

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Income Tax

Successfully represented taxpayer in refund suit based on unitary income tax filing.

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Related Attorneys: Timothy J. Eifler
Related Industries: Information
Related Practices: Tax

Patent Review & Analysis

SKO regularly represents clients in the artificial turf surfaces industry regarding the review and analysis of patents in that industry. This representation involves performing detailed analyses and providing advice about whether our clients' and their competitors’ products are covered by the claims of various patents in the industry, as well as negotiating agreements with the owners of several of those patents. 
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Venture Capital Investments

Represented a fund that makes convertible debt or preferred equity investments in numerous early-stage Kentucky business entities to facilitate the commercialization of innovative ideas and technologies.

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Class Action, Telecommunications, Public Utility, Taxation & Consumer Protection

SKO represented a class of more than 450,000 members in U.S. District Court challenge to overcharges/tariff violations by regulated telecommunications carrier. We obtained summary judgment on federal overcharge claims for class members and protected class certification by defeating an interlocutory appeal to the U.S. Sixth Circuit Court of Appeals. We also prevailed for class members in a collateral state utility commission proceeding on issues referred by the District Court. Settlement approved by District Court in November 2013 included cash refunds to all class members. Bowers v. Windstream Ky. East, LLC, 2013 U.S. Dist. LEXIS 157242 (W.D. Ky. 2013).
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Class Action, Telecommunications and Consumer Protection

SKO acted as counsel for a 175,000-member plaintiff class in U.S. District Court to challenge sales tax collection on broadband Internet access services provided by incumbent local exchange carrier. The Court approved settlement agreement in August 2007 that provided class members full refunds of overpayments plus interest, totaling $8.2 million. Clark v. BellSouth Telecommunications, Inc., 461 F.Supp.2d 541 (W.D. Ky. 2006).
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Patent Applications for Designs & Inventions

SKO prepared, filed and prosecuted patent applications for clients' inventions and designs in a wide variety of subject matter areas. Examples include exercise apparatus; floor treating machines; electronic monitoring systems; gardening systems; shelving designs; tool designs; and various mechanical, electrical and electromechanical systems, devices and methods.
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Trademark Registration

SKO prepared, filed and prosecuted trademark applications for clients in a variety of industries including manufacturing, healthcare, equine, restaurants and other service-based businesses, and nonprofit organizations.
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Industry Involvement

International Trademark Association
American Intellectual Property Law Association (AIPLA)
American Bar Association, Intellectual Property Section
Louisville Bar Association, Intellectual Property Section

Seminars

Jun. 2014 “Current Issues in Information Privacy Law," Louisville Bar Association Seminar 

 

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