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.
June 2, 2021
David Folsom Recognized in Chambers USA Guide; Jackson Walker Delivers Complete Defense Jury Verdict for Roku in $228 Million WDTX Patent Trial; Wasif Qureshi and Leisa Talbert Peschel Reflect on Roku’s $228M Patent Trial Victory; Jackson Walker Helps Family Launch Comic Book Brand; Virtual Mediations and Patent Litigation: Lessons Learned and Best Practices; Chris Rouk Comments on Patent Litigation in Texas; Emilio Nicolas Moderates Panel on the New CASE Act and Copyright Claims Board
May 25, 2021
America Seizes Almost US$1 Million Worth of Cartier, Van Cleef & Arpels and Louis Vuitton Knockoffs | Asia IP
In an Asia IP Magazine article discussing a seized shipment of counterfeit jewelry in Cincinnati, Christopher Rourk said, “Although statistics are not readily available, most sales of counterfeit jewelry likely occur online nowadays. However, in-person sales also occur, and the best way to protect your brand against counterfeits is to have an aggressive protection and enforcement strategy that includes monitoring online sales and using certified sales outlets for in-person sales.”
May 20, 2021
During a one-hour virtual roundtable hosted by the ABA Intellectual Property Litigation Committee, Emilio Nicolas moderated a discussion titled “The CASE Act: What You Need to Know About the New Copyright Small Claims Board.”
May 10, 2021
“In the US, patent claims are construed as a matter of law, which means that the construction can be attacked on appeal under a more favourable standard of review for the appellant than an attack on findings of fact, for which the court of appeals will be more deferential to the trial court,” Jackson Walker partner Christopher Rourk told Asia IP. “In particular, an appeal on an issue of law is reviewed ‘de novo,’ which means that no deference is given to decisions made by the trial court.”
April 30, 2021
By Hon. David Folsom & John M. Jackson
Mediation has always been an important part of patent litigation – especially in the Eastern District of Texas. Because of the COVID-19 pandemic, virtual mediations have become an important and successful way to resolve patent disputes.
April 28, 2021
Jackson Walker congratulates the 23 attorneys recognized among D Magazine’s list of the “Best Lawyers in Dallas” for 2021.
April 20, 2021
“In September of 2020, a German court ruled that Lenovo had infringed one of Nokia’s patents, and ordered an injunction and product recall, although that order was stayed by the appeals court,” Christopher Rourk told Asia IP. “It is possible that the injunction factored into the settlement decision, and that the parties might not have settled the litigation if an injunction was not a factor. However, it is not uncommon for such matters to be resolved through a settlement and patent portfolio license prior to a verdict being rendered, with net payments going to the party with the stronger portfolio position.”
April 13, 2021
Houston partner Wasif Qureshi was quoted in this Texas Lawyer article discussing Jackson Walker’s representation of Roku, Inc. in a $228 million patent trial.
- “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)