Intellectual Property Litigation
Jackson Walker’s Intellectual Property Litigation group is a powerful and experienced team of IP attorneys and trial lawyers who combine proven successful trial strategies, skillful advocacy, and appropriate staffing. We approach every case with the recognition that it may very well be tried before a jury, and we prepare accordingly. We are no strangers to, and in fact relish, the courtroom.
We have enforced and defended all types of intellectual property matters in federal and state courts across the United States, from California to Delaware, and from Illinois to Texas. Among other jurisdictions, we have significant patent litigation experience in federal civil courts of the Eastern District of Texas, one of the country’s premier forums for patent disputes. We have successfully represented numerous clients, including Fortune 500 companies, in litigation:
- involving patents, trademarks, copyrights, trade dress, trade secrets, and domain names
- in arbitrations and alternative dispute forums
- in proceedings before the International Trade Commission, the 5th Circuit Court of Appeals, the Federal Circuit Court of Appeals, the Trademark Trial & Appeal Board, and the U.S. Supreme Court
- in proceedings conducted pursuant to ICANN’s Uniform Dispute Resolution Policy
Clients confronted with disputes involving their patents, trademarks, service marks, trade dress, trade secrets, copyrights, or other intellectual property assets can rely on our experienced litigators to aggressively represent their interests in matters extending from infringement claims to unfair competition to disputes over commercial licensing agreements. We assist our clients in all stages of intellectual property conflicts and resolution of the conflict, from pre-litigation analysis and communications through final verdict and, if necessary, appeal.
We regularly represent Fortune 500 companies in infringement lawsuits involving intellectual property. Our experience includes successful appeals to the Fifth 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 and the Patent Trial and Appeal Board.
We actively monitor the use of our clients’ intellectual property, and we can act quickly to enforce these various rights against infringers through the effective use of temporary restraining orders and preliminary injunctions. With vast experience in both prosecuting and defending litigation cases involving patents, trademarks, and copyrights, we succeed in recovering damages and quickly obtaining injunctions for our clients. Often times, our commercial litigation experience allows us to resolve licensing and contract disputes quickly and efficiently.
Representative Matters Include:
- In the Matter of Certain Noise Cancelling Headphones, U.S. Int’l Trade Comm’n (2008). Represented Phitek Systems, Ltd., Creative Labs, Logitech, and GN US in this investigation initiated by Bose against six different companies alleging that the respondents infringed two Bose patents dealing with headphone acoustic design for noise-canceling headphones.
- 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] (2007). Defended HSBC North America Holdings Inc. and HSBC USA Inc. in a patent infringement case related to online chat help and online credit card applications.
- James Martinez v. Samuel Timothy McGraw, et al., S.D. Tex. (2007-08). Represented the defendants, singer Tim McGraw, his record label, producers, and writers of the song “Everywhere,” in this action alleging copyright infringement. The suit was filed in Corpus Christi federal court. Following extensive briefing on Jackson Walker’s motion to transfer, the Court ordered the plaintiff’s lawsuit transferred to the federal court in Nashville.
- Anheuser-Busch v. Pabst Brewing Company, TTAB (2007-pending). Jackson Walker was hired to prosecute a Pabst trademark application for “Pure Texan Beer.” After overcoming an examiner’s rejection that the mark is merely descriptive, the application was published for opposition. Anheuser-Busch has filed an opposition on the grounds that the words are only descriptive and that Anheuser-Busch wants to maintain an option to use the same or similar mark for its beer products. Discovery is ongoing.
- Datatreasury Corp. v. Wells Fargo & Co., et al., E.D. Tex. [Marshall] (2006-pending). Represented defendants HSBC North American Holdings and HSBC Bank USA, N.A. in a patent infringement case related to the electronic imaging and transmission of financial transaction documents.
- Sanitec Industries, Inc. v. Micro-Waste Corp., S.D. Tex. (2004-07), aff’d (Fed. Cir. 2008). In a trial on the merits, Jackson Walker successfully defended Micro-Waste Corporation against willful infringement claims involving a patent related to medical waste disinfection utilizing microwave technology. Plaintiff appealed, and the Federal Circuit affirmed judgment in favor of Jackson Walker’s client.
- The Procter & Gamble Company, et al. v. Amway Corp., et al., SD. Tex. (2004). Defended Amway Corporation in a case involving a rumor about Procter & Gamble, including claims under the Lanham Act. After a two-week jury trial, the Court granted judgment as a matter of law and summary judgment for Amway. Dismissal of Amway was affirmed after two appeals to the Fifth Circuit Court of Appeals. 242 F.3d 539; 376 F.3d 496.
- Comarco Wireless Technologies v. Mobility Electronics, D. Ariz. (2001-03). Represented Mobility Electronics in patent infringement suit. After an evidentiary hearing, the Court gave credence to Mobility’s invalidity defense and denied Comarco’s request for injunctive relief, the lawsuit immediately settled. Denial of injunction allowed Mobility’s flagship product to remain on the market.
April 17, 2023
Don’t Use My Trademarks in Your NFTs! The Hermes v. Rothschild Verdict | The Federalist Society
By Arthur Gollwitzer | On February 8, 2023, a jury in the Southern District of New York returned a verdict in favor of Hermes, finding NFTs linked to digital images depicting Hermes’ famous “Birkin” handbags infringe Hermes’ trademark rights. This appears to be the first trial focused on the interplay between NFTs—or non-fungible tokens—and trademark law.
January 19, 2023
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.
October 7, 2022
Jackson Walker Congratulates 36 Attorneys Named Among the Lawdragon 500 Leading Litigators in America
Jackson Walker announces the selection of 36 attorneys to Lawdragon’s inaugural list of the 500 leading litigators in America.
July 28, 2022
Patent Lawyers: WDTX Waco Order Unfair, Misguided and Hypocritical | The Texas Lawbook
In a Texas Lawbook article discussing an order to “equitably distribute” all future patent cases filed in the Waco Division, Jackson Walker partner Arthur Gollwitzer shared insight as a former federal prosecutor and a current patent litigation attorney.
“Patent owners chose the Waco Division because Judge Albright embraces patent cases, capably manages his docket, has a long history of working in patent law and his standing orders and procedures provided a great deal of predictability for both plaintiffs and defendants,” Art noted.
May 10, 2022
‘Managing IP’ Recognizes Brit Nelson and Wasif Qureshi as IP Stars for Texas
Jackson Walker is pleased to announce that Managing IP has selected Houston partners Brit Nelson and Wasif Qureshi as 2022 Patent Stars in Texas.
March 28, 2022
Emilio Nicolas to Introduce Roundtable Discussion on the Copyright Royalty Board
Emilio B. Nicolas has organized a free, one-hour virtual roundtable discussion hosted by the ABA Intellectual Property Litigation Committee titled “An Overview and Update on Recent Copyright Royalty Board Rate Proceedings.”
March 23, 2022
Arthur Gollwitzer Discusses Current State of Litigation in the Nation’s Busiest Court for Patent Cases
As the Western District of Texas maintains a steady docket for patent infringement lawsuits, Arthur Gollwitzer spoke with The Texas Lawbook about the federal court’s popularity.
September 24, 2021
Arthur Gollwitzer Discusses Federal Circuit Decision in Patent Suit Involving Foreign Company
Following a decision by the Federal Circuit Court of Appeals to deny a mandamus petition by Chinese smartphone manufacturer OnePlus Technology, Law360 spoke with Jackson Walker partner Arthur Gollwitzer about the case.
August 19, 2021
‘The Best Lawyers in America’ Honors 178 Jackson Walker Attorneys in 2022 Edition, Including 8 “Lawyers of the Year” and 31 “Ones to Watch”
The Best Lawyers in America has recognized 178 Jackson Walker attorneys across 6 offices and 67 specialty practice areas in its 2022 edition, including 8 Lawyers of the Year and 31 Ones to Watch. Best Lawyers listings are based on an exhaustive peer review survey of thousands of attorneys who vote on the legal abilities of others in their practice areas.
July 21, 2021
Apple Watch Might Be Banned for Sale in the United States Due to Patent Infringement | Asia IP
Jackson Walker partner Christopher Rourk spoke with Asia IP about a potential ban on the sale of the Apple Watch Series 6 after Masimo, a global medical technology corporation, asserted 10 patents against Apple in a California district court and sought an import ban before the U.S. International Trade Commission. In the article, Chris noted, “It is possible that Masimo might settle at this point on less than favorable terms in order to avoid a decision from the PTAB that invalidates some or all of its challenged patents, but based on its past behavior, it seems more likely that Masimo would be prepared to go to trial before settling. Apple likewise has a history of fighting patent infringement lawsuits, although it is noted that both companies have much at stake in the current dispute, so settlement prior to trial in any of these matters is certainly possible.”
- “IP Litigation Insider—June 2021,” (June 2, 2021)
- “IP Litigation Insider—February 2021” (February 24, 2021)
- “IP Litigation Insider—August 2019” (August 1, 2019)
- “IP Litigation Insider—April 2018” (April 17, 2018)
- “IP Litigation Insider—March 2016” (March 17, 2016)
- “IP Litigation Insider—June 2012” (June 6, 2012)
- “IP Litigation Insider—July 2011” (July 7, 2011)
- “IP Litigation Insider—March 2011” (March 14, 2011)
- “IP Litigation Insider—December 2010” (December 22, 2010)
- “IP Litigation Insider—September 2010” (September 27, 2010)
- “IP Litigation Insider—March 2010” (March 24, 2010)
- “IP Litigation Insider—December 2009” (December 9, 2009)
- “IP Litigation Insider—September 2009” (September 11, 2009)
- “IP Litigation Insider—July 2009” (July 6, 2009)
- “IP Litigation Insider—March 2009” (March 26, 2009)