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Intellectual Property

Contact an Intellectual Property Attorney

OVERVIEW

Litigation

Stoll Keenon Ogden’s Intellectual Property litigation practice has a national reach in all forms of intellectual property cases including patent, copyright, trademark, trade dress, trade secret and unfair competition.

SKO understands the critical role that intellectual property rights play in businesses, and we work closely with our clients to determine the best course of action. If litigation is warranted, SKO stands ready to move forward in an aggressive but efficient manner. We also understand the expense of litigation and the financial pressures our clients face, so we often provide alternative fee arrangements.

Transactional & Technology

SKO offers comprehensive transactional services in all areas of intellectual property including patents, trademarks, copyrights, trade secrets and information technology. We counsel clients at every stage in the development, exploitation, protection and enforcement of intellectual property assets. We also regularly draft, review and negotiate information technology agreements, including software licenses, maintenance agreements, consulting agreements, and internet-related documents such as terms of use and privacy policies.

Our transactional services include:

  • 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 prosecution, including federal, state and international registration
  • Website privacy policies and terms of use

Work Highlights

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.  Steven argued the issueof 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.

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 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.

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.

Trademark Infringement

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.

Private Placements

Representation of issuers helping prepare offering documents and aid in compliance with federal and state securities regulations.

Related Practices: Intellectual Property

Trademark Registration

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.

INDUSTRY INVOLVEMENT

International Trademark Association

American Intellectual Property Law association (AIPLA)

American Bar Association, intellectual property section

Louisville Bar Association, intellectual property section

Venture Connectors of Louisville

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