Practice Contact

Keith J. Grady
T. 314.552.6883
Russell S. Jones Jr.
T. 816.374.0532

Related Practice Areas

Intellectual Property and Technology Litigation

No matter the business or industry, protection matters, and Polsinelli Shughart PC has the experience and technical ability to deliver that protection.

Polsinelli Shughart has a national presence in intellectual property enforcement and litigation in virtually every industry that has a need to protect innovation and intellectual property. We have been involved in litigation in the fields of animal health sciences, software and information technology, biosciences, medical devices, electrical and mechanical devices, methods of doing business, and pharmaceuticals. Our team brings experience representing drug companies in patent litigation under the Hatch-Waxman Act.

We have represented public and private companies in patent, trademark, copyright, false advertising, trade dress, trade secrets and unfair competition matters throughout the United States. Combining our patent and IP knowledge with proven trial and litigation experience, we effectively enforce and defend our clients’ rights in the courts and other dispute resolution forums. We serve as trusted advisors to businesses to analyze potential claims, develop creative solutions designed to avoid litigation where possible, and move quickly to enforce their rights when necessary.

We create results for local, regional, national and global companies. Our team includes 31 registered patent attorneys and 8 technical experts in various disciplines as well as a team of experienced IP litigators who have handled all stages of federal and state court litigation, including the preliminary injunction practice common in infringement matters. Our experience includes cases involving:

Patent infringement, enforceability and validity
State and federal trademark and trade dress law in court and at the Trademark Trial and Appeal Board
Internet domain name disputes
Federal copyright law
Unfair competition and unfair trade practices
Misappropriation of commercial ideas, trade secrets, and non-disclosure agreements
False advertising and other misleading marketing practices
Misappropriation of name, likeness and identity
Goods subject to counterfeiting
Licensed assets and territories

We also have substantial trial and litigation experience in cases involving gray market goods, licensing and work-for-hire matters. Each case that we handle is staffed by a combination of attorneys in both the trial and substantive legal disciplines particular to that case. Our clients benefit from such shared knowledge that enables us to formulate and present persuasive arguments to judges and juries.

Notable Experience

Examples of our Intellectual Property and Technology Litigation include:

Trial counsel for a major pharmaceutical company in a number of Hatch-Waxman Paragraph IV litigations involving an array of pharmaceuticals.
Lead counsel for a major pharmaceutical company in asserting Orange Book patents against generic competitors in Hatch-Waxman Paragraph IV litigation involving diabetes drugs.
Successfully defended a patent infringement action pending in the United States District Court for the Northern District of Illinois. The patent involved systems and methods for limiting spending via corporate credit cards and allowance cards. The court invalidated the patent on summary judgment.
Representing nutritional supplement company in declaratory judgment action involving allegations of patent and trademark infringement related to three patents. Obtained favorable claim construction ruling following Markman briefing. Case is currently pending in the United States District Court for the Northern District of Illinois.
Successfully defended importer and distributer of foldable plastic stools accused of design patent infringement at U.S. International Trade Commission. Case was dismissed after discovery revealed evidence of invalidity.
Successfully defended patent infringement claims in New York and Texas federal courts against licensor of software for banking and financial institutions. In the New York case, obtained a jury verdict of invalidity and non-infringement following a two-week trial. One Texas case resulted in all claims against eight bank clients being dismissed without payment. Second Texas case settled for less than the cost of defense; third case transferred out of Eastern District of Texas to Southern District of New York; 5 cases still pending in Eastern District of Texas.
Defended public utility against claims of patent infringement involving electronic billing and payment system. Case dismissed by plaintiff after favorable claim construction decision.
Successfully defended pet grooming tool manufacturer in a patent and trademark infringement matter. At the preliminary injunction phase, client prevailed on issues of claim construction, non-infringement of the asserted patent, and invalidity of the asserted trademark. The U.S. Court of Appeals for the Federal Circuit affirmed the District Court's decision.
Represented bicycle component parts manufacturer in patent litigation concerning its gear shifting technology in the Northern District of California. Following the Markman hearing and an appeal to the U.S. Court of Appeals for the Federal Circuit, client prevailed on its construction of the claim terms in dispute in a published opinion.
Defended a manufacturer of medical equipment in a two-week jury trial and one-day court trial that involved, among other things, a claim for assignment of a number of patents concerning medical devices. The District Court refused to assign the patents in a published opinion.
Defended claims against maker of pet snacks for trademark and trade dress infringement, unfair competition and copyright infringement. Case settled before trial.
Defending patent infringement claims in Texas federal court against electronic stock exchange. Obtained order from Federal Circuit instructing trial court to transfer case. Pending.
Defended trademark infringement counterclaim in Robinson-Patman antitrust action. Jury verdict for client.
Defended maker of vehicle and trailer lights against claims of patent infringement. Favorable settlement just before trial.
Defended patent infringement action involving consumer products. Case settled.
Defended patent infringement action against seller of project management software. Case settled.
Defended ophthalmology group against copyright infringement claims arising out of using photographic images on web site. Case settled.
Obtained preliminary and permanent injunction against Chinese importer of knock-off consumer electronics goods.

News

January 19, 2012	Polsinelli Shughart Received "National" and "Metropolitan" Rankings From U.S. News Media Group and Best Lawyers®
May 31, 2011	Polsinelli Shughart Expands IP Focus in Chicago
May 11, 2011	Entrepreneur Attorney Joins Polsinelli Shughart
July 21, 2010	Polsinelli Shughart and Jack Henry & Associates Prevail in Patent Infringement Case Following Two-Week Trial
July 14, 2010	Polsinelli Shughart Builds Intellectual Property and Science and Technology Practice in Phoenix
July 6, 2010	Polsinelli Shughart Expands Intellectual Property and Technology Litigation Practice With the Addition of Chicago Attorney John A. Leja

Newsletters & E-Alerts

June 28, 2010	A Closer Look: Bilski v. Kappos Decision The U.S. Supreme Court issued its decision in Bilski v. Kappos and eliminated some of the uncertainty that had been caused by the Federal Circuit's bright-line machine-or-transformation test for patentable subject matter of method patents. As a result, there will be continuing patent protection for computer software, computer-based business methods and medical diagnostics.
June 2010	New Trends in Patent Litigation: False Marking Claims The Court ruled that a rebuttable presumption of intent to deceive arises when a manufacturer prints expired patent numbers on its products or packaging with knowledge that the patents are expired, but that this type of evidence creates only a “weak” presumption of intent.
March 2, 2010	New Trend in Patent Litigation: False Marking Lawsuits A recent trend in patent litigation is the so-called "false marking" lawsuit. In fact, lawsuits are being filed daily accusing well-known retailers of violating the false marking statute. Exposure for defendants in these lawsuits goes beyond the cost of defense. If a company violates the false marking statute, courts are authorized to assess significant monetary penalties.