Intellectual Property Disputes
Trilogy Healthcare v. Camelot Leasing, LLC, Civil Action No. 3:18-cv-00307-RGJ, 2019 U.S. Dist. LEXIS 144653 (W.D. Ky. Mar. 22, 2019). In a trade name and trade dress infringement action in federal court, successfully established that his client’s unregistered trademarks were protected under the Lanham Act and, after a multi-witness injunction hearing, obtained a preliminary injunction against a competitor in the elder care industry requiring the Defendant to change its name, logo, and signage.
Intellectual Property disputes
As lead counsel in a trade name and trade dress infringement action in federal court, Doug successfully established that his client’s unregistered trademarks were protected under the Lanham Act and, after a multi-witness injunction hearing, obtained a preliminary injunction against a competitor in the elder care industry requiring the Defendant to change its name, logo, and signage. See Trilogy Healthcare v. Camelot Leasing, LLC, Civil Action No. 3:18-cv-00307-RGJ, 2019 U.S. Dist. LEXIS 144653 (W.D. Ky. Mar. 22, 2019).
Lead counsel for plaintiff in injunction action regarding violation of non-compete and theft of trade secrets. After hearing, federal court issued injunction barring former employee from continuing to violate non-compete and enjoining any dissemination of trade secrets.
Successfully represented best-selling author of fiction works in multiple disputes, including arbitration concerning ownership, copyrights, publishing rights and royalty payments. Negotiated confidential settlement favorable to client.
Patent & Trademark Litigation
Represented animal pharmaceutical/biotech company in patent inventorship lawsuit and negotiated a multimillion dollar patent licensing agreement in client’s favor.
Represented major glass-making company in lawsuit involving claims for anti-trust, unfair competition and misrepresentation relating to a patented air pollution control technology developed by a competitor of the client and negotiated a multi-million dollar recovery for the client.
Successfully prosecuted trademark infringement suit on behalf of NAPA Auto Parts and obtained preliminary and permanent injunctive relief (National Automotive Parts Association v. Cox Enterprises LLC d/b/a NAPA Autocare, et al., U.S. District Court, Southern District of Ohio, Case No. 1:14-cv-203).
Represented Lexmark International, Inc., against claims of patent infringement filed in the Central District of California and negotiated license agreement.
Represented Nexxfield, Inc., against claims of patent infringement filed in the Northern District of Illinois and negotiated settlement agreement.
Represented major company in the liquor and spirits industry in a hotly contested trademark infringement suit and negotiated a favorable settlement agreement for the client.
Intellectual Property Protection
Drafted and prosecuted patents in the fields of biotechnology, medical devices, scanning and imaging technology, and artificial turf technology.
Successfully prosecuted applications for U.S. Patent No. 9,784,571 (Method and Apparatus for 3D Imaging Workpiece) and U.S. Patent No. 10,130,717 (LHRH-Platinum Conjugates for Treating Reproductive Cancers).
Drafted and successfully prosecuted copyright applications for literary works, software, photographs, and sound recordings.
Patent Infringement, False Advertisement & Antitrust
Static Control Components, Inc., et al. v. Lexmark International, Inc., et al., Case No. 04-84-GFVT (E.D. Ky) (multiple published decisions)
This multi-party, complex litigation involved claims for, among other things, patent infringement, antitrust violations, and false advertising. SKO argued the issue of standing to assert false advertising claims in front of the Supreme Court on December 3, 2013.
Intellectual Property and Licensing
Currently represent a software services company that provides a suite of management and IT solutions for financial institutions, designed to improve efficiency and compliance with federal regulations in connection with seed round and subsequent financings involving a national private equity fund.
Venture Capital – Technology and Life Science
Currently represent a fund making seed round and early stage investments in companies dedicated to science and technology innovation. The corporation focuses on developing and managing creative initiatives in education, economic competitiveness and scientific research.
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.
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 relating to print quality enhancement technology. 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.
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.
Staxx is Eat BBQ LLC, et al. v. Thomas Walters, Case No. 12-71-GFVT (E.D. Ky.)
Represented Staxx BBQ, a central Kentucky restaurant, in a trademark infringement case against a former employee who alleged an ownership interest in the restaurant and trademarks. SKO obtained a preliminary injunction after a contested evidentiary hearing and the case settled.
Information Technology Agreements
SKO reviews and negotiates agreements relating to clients’ information technology systems, including data security, privacy protections and service level agreements.
Representation of issuers helping prepare offering documents and aid in compliance with federal and state securities regulations.
SKO prepares, files and prosecutes trademark applications for clients in a variety of industries including distilled spirits, manufacturing, healthcare, equine, restaurants, and nonprofit organizations.
Unfair Competition, Negligent & Intentional Misrepresentation
Successfully represented client in claims for unfair competition and intentional and negligent misrepresentation against competitor companies. The claims involved complex issues relating to a patented air pollution control technology and governmental regulations relating to the same. A favorable settlement was reached with each of the defendants resulting in a multi-million dollar recovery for our client.
Sale of California-based Wine Business
Represented a major wine and spirits corporation in the sale of its Hopland, California-based wine brands to another business based in Santiago, Chile. The $238 million transaction was structured as a stock purchase.
Purchase of Vodka Brand
Represented a major wine and spirits corporation and its Polish subsidiary in the purchase of a vodka brand. The purchase included worldwide trademarks for the brand and related transition agreements for production and distribution.
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.
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.
Acquisition of Multi-National Tobacco Supplier
Represented a major corporation in its purchase of the shares of a multi-national tobacco supplier headquartered in Utrecht, the Netherlands. The supplier and its subsidiaries are major suppliers of tobacco to the cigar and smokeless products industry. The transaction involved operations located in Brazil, Cameroon, Columbia, Dominican Republic, Indonesia, Paraguay and The Philippines, with subsidiaries located in those and other jurisdictions.