All Practice Areas

IP Litigation

Harness Dickey delivers distinct, winning strategies that maximize the bottom line both in and out of court.

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Intellectual property disputes typically rise to the attention of the highest level executives because the stakes usually implicate important products/services and substantial revenue. Protecting IP boundaries that define market share is critical. Yet, the days of whatever it costs to win are an adage of the past.

We deliver both the depth and breadth of IP litigation, trial and appellate experience and talent at a far more competitive price. When selecting trial counsel for important IP disputes, it is imperative to look behind the curtain. There is a difference between “experience” in IP litigation, meaning you have done it for a long time, and actual trial wins, summary judgment grants, Markman successes and appellate affirmances. Our track record is impeccable. We face serious competitors, represented by expensive firms located in larger cities, yet have a track record as good as any firm in the nation. Our results are objective and verifiable. How do we do it?  We hire lawyers with real trial experience, meaning that they have tried and won many cases.

Winning is paramount, yet cost is rarely irrelevant. Because of our Midwest billing rates, we routinely get cases through trial, or to other successful junctures such as Markman and summary judgment, for a fraction of the cost of firms located in larger cities with much higher costs of living. These costs are, of course, passed on to your company. With budgets tightening, firms in the larger cities are routinely staffing cases with lower level associates in an effort to keep costs down.  At Harness Dickey, our clients receive the benefit of the expertise, insight and talent of senior and veteran litigation partners for about the cost of a senior associate and with less than half that experience as our competitors on the coasts. This provides our clients with a significant competitive advantage in these high stakes litigations.

Harness Dickey views every case as unique, and never employs a cookie cutter approach. We work closely with our clients to set creative strategies that have the best possible chance of succeeding. We have stringent standards for controlling costs, and welcome clients that seek alternative billing arrangements or dependable budgets.

Our firm handles the highest of stakes litigation. This experience includes precedent setting cases before the U.S. Supreme Court, such as Octane Fitness, Myriad and CBC. v. Major League Baseball. We handle patent, trademark and other IP disputes in federal courts throughout America, including the defense of nuisance suits by NPEs in the most notorious jurisdictions in the country.

Our record is impeccable in terms of trial wins, summary judgment grants and case ending Markman results. Because every dispute and competitive situation is different, we forge our solutions accordingly by delivering tangible and practical experience in federal court, before the Patent and Trademark Office and the ITC, as well as by devising other hybrid approaches to problem solving. We have also won awards for our federal court litigation and appellate advocacy.

When Congress enacted the AIA, a team of Harness Dickey lawyers mastered the new contested matter proceedings, including IPR and Post-Grant proceedings. We were first in the country to handle a proceeding before the Patent Office, and have since successfully executed many such proceedings.

We are committed to mutually beneficial, long term relationships. We welcome the opportunity to meet and discuss your specific needs at no cost. We will also devote the necessary time it takes to learn your business free of charge.

Patent Litigation

We get results in patent litigation for the world’s most innovative and respected companies. When it comes to patent litigation, we are aggressive advocates, persuasive negotiators and effective trial and appellate attorneys who consistently deliver victories for our clients both inside and outside of the courtroom. Our patent litigation clients include some of the most innovative and respected companies in the world. They come to us when they need the highest level of legal representation at a fair cost, whether it involves the plaintiff or the defense side.

Our litigators have navigated clients beyond even the most precarious and intricate patent disputes. We are known to create advantage when the stakes are at their highest and complicated technologies and seemingly insurmountable obstacles hit one after the next. Not only do we deliver the legal prowess, exceptional advocacy and persuasion skills required to transcend both acrimony and complexity, but we also offer proven trial and appellate teams known for reinforcing that Harness Dickey means business when the case goes to trial.

Our patent litigators are creative, and devise resolution strategies that most law firms could never think of. As an intellectual property boutique, our patent litigators can draw on the support of our world class patent prosecutors. We understand the subtleties of Patent Office procedure and the nuanced technological distinctions of patented inventions from a wide range of complex prior art that sometimes can mean all of the difference in a case.

Our litigation and dispute resolution experience includes trials in Federal District Courts in every major patent jurisdiction in the country and before the International Trade Commission. Our experience also includes appeals before the Federal Circuit and Post-Grant challenges to patents before the Patent Trial and Appeal Board. We have successfully prosecuted and defended a diverse selection of patent disputes in a wide range of technologies across the country and around the world.

Trademark Litigation

Harness Dickey is known for world class trademark litigation. Our litigators are industry leaders in the prosecution and defense of the full spectrum of trademark related claims. We handle all aspects of such disputes, ranging from informal negotiations to trial and appeal — and often with millions of dollars at stake. Our attorneys take a practical, business oriented approach to resolving trademark disputes, ever mindful of the critical balance between cost and result.

We strive to keep our clients out of court and monetizing their marks. However, we do not shy away from a tenacious court battle when our client’s bottom line is at stake. We are known for victory even in the most acrimonious circumstances and arduous court battles. We maintain an impressive record of positive outcomes and published decisions in the areas of trademark and trade dress litigation. Our experience includes the:

  • Negotiation and settlement of disputes before the claim can snowball into expensive litigation
  • Trademark and trade dress litigation, trials and appeals in federal and state courts across the country
  • Pursuit of and defense against requests for temporary restraining orders, preliminary and permanent injunctive relief
  • Prosecution and defense of oppositions and cancellation proceedings both in the U.S. and before the Trademark Trial and Appeal Board, as well as internationally
  • Prosecution and defense of rights of publicity and misappropriation of name and image in advertising
  • Delivery of proactive legal counsel on branding and advertising programs designed to mitigate risk and liability going forward

We offer a significant understanding of the Lanham Act. We know how the Lanham Act overlaps with related state laws pertaining to trademark infringement, unfair competition and dilution. We have also litigated and affirmatively resolved complex trademark claims involving such issues as nominative fair use, use of surnames, reverse confusion and protectability of trade dress.

We are enforcers who leverage our client’s trademark rights in forums worldwide. We strive to achieve consistently positive outcomes in obtaining preliminary injunctions for our clients, a critical way to mitigate damages early in the litigation process. We know how to select and work with expert witnesses in order to properly analyze issues such as secondary meaning, likelihood of confusion and genericness. We are highly skilled in litigating domain name disputes, both pursuant to ICANN proceedings and the Anticybersquatting Consumer Protection Act. We have also achieved major victories in recovering domain names that infringe on another’s trademarks.

Copyright Litigation

Harness Dickey maintains an impressive history of the successful litigation of copyright claims. The Firm is committed to winning even the toughest and most complex copyright cases, demonstrating our absolute commitment to our clients and their rights.

Our experience in copyright litigation ranges from computer software; to architectural plans; to text, scientific, technological and graphic/pictoral works; to sound recordings and audiovisual works; to Internet advertising and piracy. Our litigators are veteran practitioners in all aspects of copyright litigation, including:

  • Evaluating potential infringement cases and devising the right strategy going forward
  • Assessing the validity of copyrights, including chain of title, Copyright Office recordation, and priority of transfers
  • Drafting and responding to cease and desist letters
  • Bringing and defending preliminary injunctions
  • Analyzing potential and appropriate remedies against infringers
  • Preparing and trying cases in courts throughout the country

Our extensive trial experience provides clients with a unique advantage. Having tried several copyright cases over many years of practice, Harness Dickey litigators have the experience and perspective needed to prosecute copyright claims both efficiently and aggressively, as well as to defend all variety of copyright infringement.

When an infringer has misappropriated copyrighted content, we pursue relief for our client both in and out of court. We regularly assist clients to resolve copyright disputes prior to litigation through alternative dispute resolution or informal negotiations. We deliver in-depth copyright experience in all matters pertaining to the application of copyright law to the Internet and other online environments, literal and non-literal copying claims and open source, as well as DMCA safe harbors and anti-circumvention, secondary liability and fair use. We also coordinate and supervise copyright litigation on a global scale.

Our Copyright Litigation team also works closely with clients to plan for, manage and avert the risks associated with both traditional copyright matters, as well as in emerging areas of change and uncertainty.​

Domain Name Disputes

In the last decade, the Internet has intensified the complexity of protecting your brands in the global marketplace. Domain names, especially those that include your company name and trademarks, represent your company on the Internet. Worldwide, there are currently over one billion people online searching for information about companies and the goods and services that they sell. While the Internet offers opportunity to effectively promote your company and its products and services, it has also made it far easier for unscrupulous individuals and entities to use domain names that mimic your company name and trademarks to drive traffic illegally to their websites and away from yours.

There is an exponential increase in instances of cybersquatting. This can result in consumer confusion, loss of sales, brand dilution and lost advertising dollars for your company. Various strategies are employed by cyber predators, the most popular of which includes registering domain names that are confusingly similar to your company name or trademark (cybersquatting) or the deliberate misspelling of your company’s own domain name (typosquatting). These confusingly similar domain names are then used on websites that generate “click-through” fees to the cybersquatter, sometimes from the very company whose corporate name or trademark is being infringed.

While the schemes are seemingly limitless, the result is the same: a company name or valuable trademark is infringed upon and Internet traffic is diverted. Harness Dickey lawyers routinely stop domain name infringements quickly and without spending a lot of money. We have filed hundreds of successful actions to force the transfer of infringing domains. The strategies used include initiating proceedings under the Uniform Domain Dispute Resolution Policy, which are often completed in 60 days or less. Another effective weapon, particularly with regard to foreign owned domain names, is filing suit in court against the domain itself to force its transfer to the company whose name or trademark is being infringed.

Inter Partes Review, Post-Grant Review & Other PTO Proceedings

Harness Dickey delivers the experience, insight and resourcefulness needed to gain the edge when guiding patent owners and challengers through Inter Partes Reviews (IPR), Post Grant Reviews (PGR) and other PTO proceedings. Building upon decades of prosecuting and defending reexaminations, the Firm is a pioneer in designing and executing effective strategies for the new world of post grant patent validity challenges. In fact, Harness Dickey was counsel of record for the Patent Owner in two of the first three Final Written Decisions where one or more claims were upheld by the Patent Trial and Appeal Board.

Since the time that IPRs and PGRs were introduced in 2012, Harness Dickey has become a recognized leader in these proceedings. Harness Dickey publishes a respected and often cited Report on IPR-PGR practice, which includes many of the over 100 statistics we track regarding these proceedings. Our attorneys closely monitor each decision from the Board to identify changes in trends and strategy given the infancy of IPR and PGR.

We draw upon our proven and undeniable strength in patent dispute resolution to effectively navigate our clients through the complex and variable strategic issues involved in balancing IPR and PGR proceedings with co-pending patent litigation. Our strategy is multi-dimensional when it comes to Post-Grant Review (PGR), Inter Partes Review (IPR), Covered Business Method (CBM) and Derivation proceedings.

When we pursue a challenge, we offer far more than just an immediate and aggressive attempt at invalidation. We establish our client’s footing in multiple, on-the-record positions that draw attention to important distinctions or contradictions that highlight our position. We leverage post grant proceedings in support of pending litigation stays, as well as gain all possible advantage through negotiation and potential settlement.

Devising a clear course of action at the onset of a matter allows us to continuously evaluate both litigation and PTO positions. Because we fully understand all aspects of the strategic interplay of IPR and PGR proceedings with Federal Court litigation, as well as all aspects of Patent Office procedure, we are able to identify and capitalize on the weakness and oversights of many of our opponents who are less well-versed in these intricate areas of the law. We are particularly adept at steering clear of pitfalls that might create opportunity for our opponent.

We also recognize that post-grant proceedings are not limited to use as a counter-punch related to co-pending litigation. Our clients have effectively used IPR as part of a patent clearance strategy, to eliminate blocking patents that would otherwise pose as an obstacle to entry into a particular market. Even when litigation has not been threatened, IPR and PGR can and have served as valuable tools to open new markets and generate market share.

Our counsel is honed, focused and useful. IPR, PGR and other PTO proceedings are not the answer to every problem. Harness Dickey understands when these proceedings should or should not be integrated into the overall dispute resolution plan. We work with our clients to balance both the risks and rewards of effectively leveraging these proceedings. We have found that, when employed properly, such proceedings can allow for a more cost-effective and expeditious way to invalidate weak patents and obtain freedom to operate in a particular field.

Appellate

Harness Dickey goes the distance when it comes to delivering effective appellate advocacy. Particularly so for appellate law, the quality of the legal counsel retained is critical to the success of the outcome. A party is only afforded its appeal brief (and a short reply brief if the party is the Appellant) and fifteen minutes of oral argument to convey its case — so, every word counts. Harness Dickey’s Appellate lawyers are highly skilled at making the most of every written and spoken word to persuade the appellate judges in their favor.

Victory on appeal requires lawyers who are disciplined advocates, understand complicated technologies and scientific theories, and are able to distill this information into straight talk that can be understood by judges. This level of persuasion is paramount to the appeals process, and Harness Dickey achieves this end again and again.

Harness Dickey has a proven appellate track record. Our appellate lawyers have served as lead counsel before the Federal Circuit Court of Appeals in over 30 patent case in recent years. Additionally, we have appeared as lead counsel before many regional federal courts of appeal across the country in trademark and trade dress cases. Our track record of success in appellate work is impeccable.

Harness Dickey was the prevailing counsel of record before the Supreme Court of the United States in the landmark case, Octane Fitness LLC v. ICON Health and Fitness, Inc. Our lawyers convinced all nine Supreme Court Justices to overturn the prevailing standard for awarding attorneys’ fees to the prevailing party in a patent case, and where the case was “exceptional.”

We deliver definitive appellate counsel from the very start. Because appeals in patent cases are virtually a given, it is imperative that trial counsel prepare and present a patent case in the federal district court with an eye toward winning a judgment that can be preserved on appeal. Our litigation attorneys have extensive and hands-on experience in both trial court litigation and appellate litigation. As a result, we litigate our cases at the district court level with an intense focus on not only obtaining a favorable judgment, but also a judgment that is rock solid so that it will hold up on appeal.

Trade Secrets & Unfair Competition

Harness Dickey advises on the protection and security of valuable information. Our experience in addressing and overcoming the complex challenges associated with trade secrets, unfair competition and confidentiality is a meaningful aspect of our practice.

Trade secret and unfair competition matters move quickly. It is critical to retain counsel that can jump into action. Harness Dickey can assemble the right team — immediately. We have both asserted and blocked motions for temporary restraining orders and preliminary injunctions on very short notice. We are experienced in initiating investigations and designing a strategy based on our client’s primary objectives. We have experience in the full array of civil cases involving trade secrets, unfair competition, misappropriation, espionage and employee raiding.

Many trade secret disputes involve senior level employee mobility. The stakes are usually high when trade secret litigation ensues. The protection of customer lists, marketing plans, formulas and manufacturing processes can be among a company’s most valuable assets. High ranking professionals are recruited for what they know, regardless of whether or not it is proprietary information. To complicate matters further, information and technology has become so easily portable that the threat of misappropriation of confidential information continues to expand at an alarming pace.

We help design comprehensive programs to better protect our client’s trade secrets. We work with our clients to develop internal confidentiality protocols that mitigate the risk of trade secret misappropriation. We create and negotiate confidentiality agreements with employees, partners, suppliers and customers. We also work with our clients on security measures such as premises control, computer and electronic use policies for both employees and visitors, as well as management and marketing practices in order to identify and safeguard valuable information.

In the event a dispute should arise, we vigorously defend our client’s position through litigation or other dispute resolution options. We safeguard our client against unfair methods of competition that range from false advertising and product disparagement to trade dress and trademark infringement, as well as counterfeiting and Lanham Act violations, among others.

Our litigators are highly familiar with the full array of ancillary bad acts claims. We have been involved in asserting claims against parties that pass off their goods as those of our client. We are adept at prosecuting and defending similar packaging or false/misleading advertising claims. Because these types of cases can also involve trade secret misappropriation or intellectual property infringement claims, it is critical to retain counsel who fully understands how to deal with such matters. Harness Dickey litigators have proven time and again that they are the right choice of legal counsel for trade secret and unfair competition matters.