Intellectual Property
Our IP attorneys obtain, protect, and enforce intellectual property rights in the United States and abroad for our clients. We are also extremely well versed at monetizing our clients’ intellectual property assets through various business transactions. Our clients range from Fortune 500 companies to emerging companies to universities to individuals.
Our activities include regularly counseling our clients about patents, trademarks, copyrights, and trade secrets; practicing before government agencies to secure those rights; rendering patentability and patent, trademark, and copyright infringement opinions; litigating to protect intellectual property; handling arbitration, mediation, and other litigation alternatives; and negotiating licenses, joint ventures, divestitures and similar business transactions to maximize the value of our clients’ intellectual property.
In short, if the matter involves intellectual property, we can and will handle it; and will do so with a highly experienced team that takes the time to understand your intellectual property objectives and formulates a plan to achieve them. Many of our IP attorneys hold advanced degrees in engineering or applied science and are licensed to practice before the U.S. Patent and Trademark Office. Moreover, their technical knowledge is balanced with considerable litigation and business experience.
Litigation
Winning an IP case is the product of experience and the execution of a skillful, balanced strategy. Jackson Walker’s team of IP attorneys and trial lawyers have litigated all types of intellectual property matters in federal and state courts across the United States, from California to Virginia, and from Illinois to Texas. We successfully represent numerous corporations, including Fortune 500 companies, in infringement lawsuits involving trademarks, trade dress, trade secrets, patents, and copyrights. Our experience includes successful appeals to the 5th Circuit Court of Appeals, the Federal Circuit Court of Appeals, the Trademark Trial & Appeal Board, and the U.S. Supreme Court. Our IP trial lawyers have also enforced and defended our clients’ intellectual property rights in arbitrations, alternative dispute forums, and proceedings before the International Trade Commission.
Patents
Our patent attorneys work with inventors and companies to file and to prosecute patent applications to protect their inventions, both domestically and abroad. Working closely with attorneys in Jackson Walker’s venture capital and tax disciplines, the IP attorneys also draft and coordinate various transfers of technological assets for commercial development and marketing. This includes negotiations with foreign entities, multiple party transfers of technology, and protection of the assets through patents in various foreign countries. And with their strong technical backgrounds and their experience handling post-grant proceedings before the Patent Office and patent litigation in numerous jurisdictions throughout the country, Jackson Walker’s IP attorneys bring a unique combination of skills, experience, and resources to each matter.
Trademarks
The most valuable assets of a company are often its trademarks. For both established and developing companies, our attorneys evaluate potential trademarks and existing trademark and trade name rights, and procure trademark registrations in the U.S. and abroad. We routinely transfer and license trademark rights, and also enforce trademark rights through U.S. Customs’ registration, negotiation, and litigation. In addition to trademarks, our IP attorneys litigate trade name and unfair competition matters, as well as handle product counterfeiting matters.
Copyrights
We handle all types of copyright matters, including the acquisition of copyright registrations for such items as books, jewelry, musical compositions, recordings, plays, artistic creations, and computer software. We also counsel and assist clients in transferring interests in copyrighted works and represent them in copyright infringement cases, ranging from computer software, to ornamental designs, to architectural works.
Technology Licensing & Transactions
Our IP attorneys work side-by-side with our attorneys in other groups to offer our clients an integrated approach to valuing, protecting, and commercializing intellectual property.
Franchising
We regularly advise and represent both franchisor and franchisees. Our activities include counseling franchisors regarding disclosure requirements, creating disclosure documents, obtaining registrations in states which require them and assisting in the negotiations with prospective franchisees. Our IP attorneys also are highly active in franchise litigation.
Trade Secrets
We work closely with our clients to create programs to identify, protect, and promote trade secret assets. Trade Secret assets have unique issues, particularly in transactions involving licensing and acquisition of these assets. We regularly counsel and develop strategies with our clients for developing programs to identify such information and to police its protection through secrecy programs, confidentiality agreements, and seminars and work closely with our clients on protecting these assets during the negotiation of acquisition agreements and during litigation.
Recent Patent Cases in the Eastern District of Texas
Iovate Health Sciences Inc. v. BSN and Medical Research Institute, 586 F.3d 1376 (Fed. Cir. 2009). JW served as appellate counsel for defendant and appellee Medical Research Institute in an infringement lawsuit involving dietary supplements. The Federal Circuit upheld the summary judgment on invalidity grounds granted in favor of JW’s client by the United States District Court for the Eastern District of Texas. The district court found that patent claims directed to the administration of dietary supplements to enhance recovery from fatigue were anticipated by a prior printed publication.
Orion IP, LLC v. Hyundai Motor America, 605 F.3d 967 (Fed Cir. 2010). Counsel for Hyundai in patent infringement lawsuit alleging that Hyundai’s website infringed business methods patents involving a computer assisted parts sales method and an electronic proposal preparation system. At trial, JW obtained a jury verdict of non-infringement as to the electronic proposal preparation system patent. On appeal, the Federal Circuit ruled that the parts sales method patent was invalid.
Patent Harbor, LLC v. Audiovox Corporation, et al. (E.D. Tex. [Tyler]). Jackson Walker served as lead counsel for Denon Electronics (USA) LLC. During the scheduling portion of the case, JW successfully lobbied the Court to obtain an early claim construction hearing and to defer discovery until after a ruling on claim construction. JW subsequently obtained a claim construction ruling from Magistrate Judge Love that was dispositive as to JW’s client. After Judge Davis affirmed Judge Love’s ruling, the plaintiff accepted a Stipulated Judgment of Non-infringement as to its claims against JW’s client.
Fowler Woods, LLC. v. Accuradio, Inc., et al. (E.D. Tex. [Marshall]). Jackson Walker served as lead counsel for a publicly traded media company defendant in a patent infringement lawsuit concerning the display of advertising on websites. Obtained informal dismissal of the claims against our client prior to the deadline for responding to the Complaint.
Global Sessions LP v. Travelocity.com LP, et al. (E.D. Tex. [Tyler]-pending). Lead counsel for a defendant in a patent infringement lawsuit involving hub patents and session patents. The Hub Patents generally relate to a single system with multiple functional “layers,” which interact to enable the presentation of web pages, content and/or services to users. The Session Patents generally relate to a particular method of maintaining session state on webpages.
Uniloc USA, Inc., et al. v. BCL Technologies, et al. (E.D. Tex. [Tyler]). Jackson Walker Represented a publicly traded software company in a patent infringement lawsuit concerning healthcare software. The plaintiff dismissed its claims against our client following an informal demonstration of our client’s product.
Digital Choice of Texas, LLC v. Best Buy Co., Inc., et al. (E.D. Tex. [Marshall]). JW represented RadioShack, Best Buy, Costco, Sears, Target, Sam’s Club, and Wal-Mart in this patent infringement case, where the plaintiff alleges that parental control features on DVD players infringe its patent. The case settled on favorable terms.
Advanced Encoding Solutions, LLC v. Broadcom Corporation, et al. (E.D. Tex. [Tyler]). Counsel for Ericsson Television Inc. in patent infringement lawsuit involving a patent directed to a moving picture expert group encoder processor for processing split picture video of standard and high definition television. The case settled on favorable terms.
E-Data Corporation v. The New York Times Company, et al. (E.D. Tex. [Sherman]). JW represented The New York Times in a patent action involving systems for reproducing information in material objects at a point-of-sale location. JW obtained an order transferring the case to a more favorable forum.
Mobility Electronics, Inc. v. American Power Conversion Corp. (E.D. Tex. [Texarkana]). JW represented Mobility Electronics, alleging that the defendant’s products infringe seven of its patents. JW also represented Mobility in a related action between the parties pending in the United States District Court of Massachusetts, American Power Conversion Corp. v. Mobility Electronics, Inc. (D. Mass.). The cases settled on favorable terms.
MacroSolve, Inc. v. Various Defendants (E.D. Tex. [Tyler])). Jackson Walker served as lead counsel for a group of four defendants in a patent infringement lawsuit concerning alleged infringement by mobile applications for defendants’ websites. Obtained an early favorable settlement for all our clients.
Joint Marketing International, Inc. and Kun S. Chang v. Walgreen Co., et al. (E.D. Tex. [Tyler]). JW was lead counsel for QVC, Inc. in this patent infringement lawsuit concerning a device that cleans eyeglasses. The matter settled on favorable terms.
Kawasaki Heavy Industries Ltd v. Bombardier Recreational Products, Inc., et al. (E.D. Tex. [Texarkana]). JW represented Bombardier in an alleged patent infringement of three personal watercraft technology patents. JW’s client obtained a favorable settlement.
Cheetah Omni LLC v. Verizon Communications Inc., et al. (E.D. Tex. [Tyler]). JW represented Grande Communications Networks, Inc. in a lawsuit alleging infringement of patents directed to star switching fabric and a switching element for use in an optical processing device. Settled on favorable terms.
Antor Media Corp. v. Metacafe, Inc., et al. (E.D. Tex. [Marshall]-pending). JW represents Discovery Communications, Inc. in this patent infringement action concerning a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data digital telecommunications network. The case has been stayed pending reexamination.
The PACid Group, LLC v. Best Buy Co., Inc., et al. (E.D. Tex. [Tyler]). Counsel for Denon Electronics in a patent infringement lawsuit involving a patent directed to an encryption key generator system and method. Case settled on favorable terms.
Unified Messaging Solutions LLC v. Google Inc., et al. (E.D. Tex. [Tyler]). Lead counsel for a defendant in a patent infringement lawsuit alleging that a company website infringed four patents. The case settled on favorable terms.
Innovative Automation, LLC v. Audio and Video Labs, Inc. (E.D. Tex. [Tyler]-pending). Counsel for Singulus in lawsuit involving alleged infringement of a patent directed to a computer-implemented method of data duplication.
Achates Reference Publishing Inc. v. Symantec Corp., et al. (E.D. Tex. [Tyler]-pending). Counsel for GlobalScape in patent infringement lawsuit involving patents directed to the generation and use of encrypted launch codes.
Datatreasury Corp. v. Austin Bancorp, Inc., et al. (E.D. Tex. [Tyler]-pending). JW represents four defendant banks in a patent infringement case related to the electronic imaging and transmission of financial transaction documents.
Soverain Software LLC v. J.C. Penney Corp., et al. (E.D. Tex. [Tyler]). Counsel for QVC in a patent infringement lawsuit involving patents directed to methods of completing sales over the internet. JW’s clients settled on favorable terms.
Balthaser Online, Inc. v. Network Solutions, LLC, et al. (E.D. Tex. [Marshall] and N.D. Cal.); Balthaser Online, Inc. v. Kimberly-Clark Corporation, et al. (E.D. Tex. [Marshall]). Counsel for six defendants in two lawsuits alleging that various web sites infringe the plaintiff’s patent. Obtained a transfer to the Northern District of California in Network Solutions and negotiated an early, favorable global settlement for all our clients prior to the claim construction hearings in both cases.
Orion v. Xerox Corporation, et al. (E.D. Tex. [Tyler]). JW represented Nordstrom, Inc., Kohl’s Department Stores, Inc. and Walgreen Co. in this patent infringement suit about a computer assisted parts sales method and an electronic proposal preparation system. JW obtained a favorable settlement on behalf of its clients.
Orion v. Costco Wholesale Corporation, et al. (E.D. Tex. [Tyler]). JW represented Costco in this patent infringement action about two business method patents by Costco’s websites. JW obtained a favorable settlement for its client.
Voxpath RS, LLC v. LG Electronics U.S.A., Inc., et al. (E.D. Tex. [Marshall]). Jackson Walker represented Denon Electronics (USA), LLC and D&M Holdings, Inc. in a patent infringement lawsuit concerning optical data reproduction devices. Settled on favorable terms.
Voxpath RS, LLC v. Denon Electronics (USA), LLC, et al. (E.D. Tex. [Marshall]). Jackson Walker represented Denon Electronics (USA), LLC and D&M Holdings, Inc. in a patent infringement lawsuit involving the alleged infringement of a patent directed to optical recording and playback systems. Settled on favorable terms.
Datatreasury Corp. v. Wells Fargo & Co., et al. (E.D. Tex. [Marshall]). JW represented HSBC Bank USA in a patent infringement case related to the electronic imaging and transmission of financial transaction documents. JW obtained a favorable settlement for its clients.
NextCard, LLC v. American Express Company, Discovery Financial Services LLC, HSBC North America Holdings Inc., HSBC USA, Inc., and The PNC Financial Services Group, Inc. (E.D. Tex. [Marshall]). JW served as counsel for Defendants HSBC North America Holdings and HSBC USA Inc. in a patent infringement case related to online chat help and online credit card applications. JW’s clients settled on favorable terms.
Mobility Electronics, Inc. v. Formosa Electronics, et al. (E.D. Tex. [Texarkana]). After initiating suit before the ITC, Mobility Electronics, JW’s client, then brought an infringement and trade secrets misappropriation case against a Taiwanese manufacturer of power supplies for electronic devices. Following a Markman hearing, the court issued a claim construction order construing the vast majority of claims in Mobility’s favor. Mobility settled its claims against all five defendants on favorable terms.
Datatern, Inc. v. Bank of America Corporation, et al. (E.D. Tex. [Texarkana]). JW represented QVC concerning a patent directed to a system for enabling access to a relational database. JW obtained a favorable settlement for its client.
March 23, 2023
Attorney News
Jackson Walker Congratulates Its 2023 Texas Rising Stars
Jackson Walker is pleased to announce the selection of 63 attorneys to Thomson Reuters’ 2023 “Super Lawyers – Rising Stars” list, which recognizes only 5% of Texas attorneys who either are 40 years of age or younger or have been in practice for 10 years or less.
March 15, 2023
Podcast: Future-Ready Business
Next in Fashion: Influencers, IP, and Sustainability
Outside of Jackson Walker, William Nilson runs a bespoke clothing consultancy, and Courtney White reaches the masses through her Courthouse Couture blog and social media. In this episode of FRB, Erin and Art engage in a conversation with William and Courtney about fashion and the intersection of art and business.
January 19, 2023
Mentions
Patents Are for the Weak? | Asia IP Magazine
For Jackson Walker partner Christopher Rourk, patents are, to a certain extent, for the weak. The reason for this is that small firms and individual inventors are inherently weaker than companies that are larger and better-positioned capital-wise.
“Small companies and individual inventors can develop important innovations that can be easily copied by larger, well-capitalized companies and should rely on patents to increase their leverage in the highly-competitive commercial marketplace,” he noted.
November 30, 2022
Newsletters
USA Business Digest: November 2022
The USA Business Digest is a newsletter covering legal insights for European companies and investors in the United States.
This month, we will take a closer look at (1) U.S.-style discovery in international arbitration and (2) the Lanham Act’s foreign reach to recover damages.
November 9, 2022
Attorney News
Emilio Nicolas Joins Austin PBS Board
Emilio B. Nicolas has joined the board of Austin PBS (KLRU-TV), a locally owned and operated nonprofit public media station in Central Texas, and one of the most prolific PBS member stations in the country.
November 3, 2022
Spotlight
Jackson Walker Earns 24 National and 121 Regional “Best Law Firms” Rankings in 2023 Edition
Jackson Walker proudly announces the Firm’s inclusion in the 2023 edition of the U.S. News & World Report and Best Lawyers “Best Law Firms” list. This year, our firm improved in the national rankings, with the rise of Appellate Practice and Corporate Law to Tier 2.
October 25, 2022
Attorney News
‘Austin Monthly’ Lists 14 Jackson Walker Attorneys Among “Austin’s Top Attorneys” of 2022
Jackson Walker congratulates the 14 attorneys recognized among Austin Monthly’s list of “Austin’s Top Attorneys” for 2022. For recognition in the list, Austin attorneys must be nominated by their peers on the basis that they offer experienced counsel in one of 38 categories.
