IP, Trademark + Patent Litigation

IP, Trademark + Patent Litigation

We represent clients nationally in the defense, prosecution, and enforcement of their various intellectual property rights, including patents, trademarks, copyrights and trade secrets.

Our IP litigation team also provides domestic support in international cases involving intellectual property.

Our team maintains broad experience in inter partes proceedings in front of the United States Patent and Trademark Office (USPTO), the Trademark Trial and Appeal Board (TTAB), the Internet Corporation for Assigned Names and Numbers (ICANN), and has litigation experience in the Federal Circuit Court of Appeals.

Our Services

We represent clients in all areas of IP litigation, including:

  • Patent infringement: enforcing our clients’ patent rights that have been infringed upon; defending against the threat of patent infringement, including those brought by patent trolls
  • Brand protection and investigations
  • Trademark and copyright infringement
  • Inter partes trademark matters: representing clients in trademark opposition proceedings, cancellation proceedings and concurrent use proceedings
  • Misappropriation of trade secrets: both prosecuting and defending against such claims
  • Patent re-examination: initiating re-examination proceedings with respect to patents being enforced against our clients, including a track record of successfully petitioning the USPTO on behalf of our clients in numerous proceedings
  • Domain name disputes: ICANN proceedings; resolving disputes that arise from domain squatting

Our Clients

We represent a wide array of clients, from middle market businesses and publicly traded companies to entrepreneurs and inventors. Our attorneys litigate IP issues domestically and internationally for businesses from a diverse range of industries, including universities, manufacturers, software and IT businesses, retailers, and more.

People

Robert G. Schuler

Director

614-462-5410Email
Jeff Nein

Director + Chair, Intellectual Property Practice

614-462-5418Email
Nicholas S. Bobb

Director + Co-Chair, Litigation Practice

614-462-5414Email
Loriann E. Fuhrer

Director

614-462-5474Email
Jessica Skelly

Associate

614-462-5445Email

Experience

Permanent Injunction Obtained Against Defendants Misappropriating Trade Secrets

Publications + Presentations

Newsletter

The Impact of Brexit on Your IP: Key Considerations + Action Steps

Smart SummaryUK trademark and patent protection for US businesses is set to be significantly disrupted on January 1, 2021.Existing registered EU trademarks will be automatically cloned by the UK, but pending applications will not.Companies should be reviewing IP clauses, auditing their assets, filing new applications, and obtaining physical addresses in the UK to remain protected.On the heels of “Brexit,” the 2016 referendum in which a majority of UK citizens voted to leave the European Union, the UK has been working diligently throughout the past 11 months to facilitate a smooth exit. Although the status of Brexit and the related rules for the transition are constantly evolving, US companies doing business in the UK must prepare themselves for the impact Brexit will undoubtedly have on their strategy and local operations. Among the many impacts Brexit could have on a company’s “crown jewels,” one that could be overlooked is the effect it will have on your IP strategy. So, for companies doing business in the UK, here are five key IP considerations to be aware of in light of Brexit and a list of recommended actions each of those companies should be taking.5 Brexit-Related IP Considerations to Know Beginning on January 1, 2021, all EU-wide trademark and Community design rights obtained under the EU regime will no longer be protected in the UK. Going forward, to protect rights in the UK, trademark rights holders must file an application directly with the United Kingdom Intellectual Property Office (UKIPO), which would be separate and apart from their application filed with European Union Intellectual Property Office (EUIPO).Moreover, under the Madrid Protocol, an international treaty designed to simplify and centralize a singular trademark registration application that would then secure protection in 90 countries (including the US and UK), rights holders must designate the UK as a separate territory from the EU in their applications.On December 31, 2020, whether or not the UK and EU come to an agreement for transition, the UKIPO will automatically place on its records all registered EU trademarks, Community registered designs, and unregistered Community designs. These “cloned” registrations will become a UK-equivalent registration and will be effective as of January 1, 2021. No additional action on behalf of the current rights holders will be necessary, as the registrations will not be re-examined by the UKIPO.Applications that are pending in the EUIPO will not be cloned. Rights holders of pending EUTM applications and EU designations must actively file “clone applications” with the UKIPO for protection within 9 months in order to claim priority based upon the initial EU application date.Brexit would not impact rights of patent holders in the EU. The UK is a part of the European Patent Convention, which is an international convention of members from the EU. However, the UK has vocalized that it will not participate in the Unified Patent Court located in EU member states or the unitary patent system, so the impact of Brexit on a uniformed EU patent regime would need to be closely monitored.Most copyright works are not dependent on the EU and will still be protected in the UK and the EU, whether made before or after January 1, 2021. However, some EU cross-border copyright protection agreements, such as content services and databases, will be the subject of the ongoing negotiations, and will also need to be closely monitored.Recommended Action Plan for US CompaniesRevisit IP clauses. If a rights holder has cross-border agreements that reference IP protection limited to the EU jurisdiction, it should revisit those agreements to ensure that additional protections are included to cover IP rights in the UK, effective, January 1, 2021.Audit your EU/UK IP portfolio. Undertake an audit of all your current EU registrations to ensure that they are adequately and properly cloned by the UKIPO. Our IP team is already well underway toward working with our clients on these audits.File UK applications. If a rights holder is seeking protection in the UK specifically through its pending application before the EUIPO, pursuant to the Madrid Protocol, a separate application needs to be filed in the UK.Re-file for renewal. If the rights holder of an EU registration has already filed for a renewal before the 6-month 2021 due date, the renewed registration will not be cloned by the UKIPO. In these cases, rights holders must file a separate renewal with the UKIPO.Obtain a UK address. Effective January 1, 2021, all new matters before the UKIPO must have an address for service in the UK, though cloned marks that derive comparable UK rights from existing EU registered marks are not required to have an address for service in the UK for 3 years from transition date. As a rights holder, you should consider a strategy that includes obtaining an address for service in UK. Some options could include using your legal counsel’s resources in the UK or, if you already have a presence in UK through a subsidiary or affiliate, that local address could be used for service.A Dedicated Brexit IP Task ForceWith the specter of Brexit carrying such wide-ranging implications for US businesses, our IP team has created a dedicated task force in charge of working with international clients on their UK IP protection strategy, including reviewing IP agreements, leading international IP audits, filing UK applications, re-filing UK renewals, and securing physical addresses to comply with UK regulations. You may contact one of our task force members directly to discuss your strategy.Vinita Mehra, Director + Chair, Global BusinessJeff Nein, Director + Co-Chair, Intellectual Property Jessica Skelly, Associate Sarah Bernheisel, IP Paralegal About our Global IP Protection PracticeOur global IP team regularly works with businesses and individuals to establish, monitor, investigate and prosecute thousands of trademarks, service marks, patents and other brand assets for our clients around the world. We offer unique, efficient and creative cost-effective solutions that guide businesses through the regulatory and legislative hurdles that exist in the ever-evolving global landscape. Our services primarily include global IP portfolio management, franchising and licensing, private investigations of infringement, and trademark and patent litigation.

publication

5 Recommendations for Universities Facing Tuition Refund Class Action Suits

Smart Summary If your college or university sees a class action suit as a result of COVID-19, contract terms, including language of any force majeure clauses, will be critical.In addition to contract-based defenses, colleges + universities may look to procedural defenses and common law defenses like “impossibility” and “frustration of purpose.”Universities will want to think through their refund and future service credit offerings to try to minimize claims and any potential damages. In the wake of colleges and universities across the country turning to distance learning to minimize the spread of COVID-19, it is no surprise that putative class action complaints are now being filed seeking refunds and discounts on tuition and other fees paid by students. By now, you likely already know that cases have been filed against Purdue University, the University of Miami, Drexel University, and the Boards of Regents of both the University of Colorado and the University of Arizona. A number of these suits have been brought by the same law firm, which is attempting to attract new cases through its website “CollegeRefund2020.com.”Some of the suits seek reimbursement of a portion of paid tuition, based on the theory that the students contracted for an on-campus educational experience, which has not been provided. Other suits seek reimbursement of a portion of paid housing, meal plan expenses, and/or other service fees relating to athletic facilities, medical services or other amenities.For in-house counsel at universities across the country who are pondering whether their institution will be the next target of these lawsuits, we’ve outlined five key questions you should be considering if (and even before) your institution is sued.What are the contract terms? The claims being filed are predominantly contract claims, so the specific language of your institution’s contractual relationships with its students will be important. The applicable terms may specifically address refunds, school closures, and emergency circumstances. Is “force majeure” a defense? You and your outside counsel should consider whether there are any contractual force majeure provisions that may relieve performance in the event of some unforeseeable circumstance like a nationwide pandemic. Again, the specific language of your force majeure provision is important.Are there common law defenses? Even if the contractual language at issue does not contain a force majeure provision, certain common law defenses may be available, depending upon the jurisdiction in which any suit is brought and the applicable law. Common law principles of “impossibility” and “frustration of purpose” can, under some circumstances, provide a defense.Are there procedural defenses? In addition to contract-based defenses, procedural defenses may also be available to you. An institution that has been sued will want to consider: whether personal jurisdiction exists in the jurisdiction in which the suit has been brought; whether the named plaintiff is an appropriate representative of the putative class; how the class or classes have been defined; and whether the traditional legal requirements for each claim have been met. Unjust enrichment claims are included in several of the early cases. The law of most states holds that claims for breach of contract and unjust enrichment are mutually exclusive, although many states allow plaintiffs to plead both, subject to later proof and/or choice of remedy.What can be done to minimize claims and potential damages? The relevant facts vary from university to university. Some universities have allowed students to remain in student housing and to continue to receive meals pursuant to their meal plan, while other universities have ceased housing and cafeteria operations entirely. Some universities have offered refunds or partial refunds, while others have not. Ensuring students stay on track to receive course credits toward graduation during periods of necessary distance learning will help to mitigate potential damages. Institutions that think creatively and take steps to introduce new ways of fostering community engagement and mentorship that would otherwise take place in residence halls will also be in a better position to defend tuition claims. For example, if a student took History 101 during the mandated period of distance learning, allowing him or her the option to re-take the class in-person once school resumes may be a productive way to mitigate potential damages. Similar options may exist for meal, athletic and health services. However, similar options may not exist with respect to housing availability. While closure decisions may already have been made, universities will want to think through their refund and future service credit offerings to try to minimize claims and any potential damages.No matter the course of action you choose, college and university counsel should be in close communication with their outside counsel partners, in particular those with substantial class action experience. Discussing these and other potential defense strategies can give your institution a head start on any litigation that may be headed your way.Vinita Mehra is a director and chair of Kegler Brown’s Global Education practice group, and works with college and university clients across the country on their operational and strategic planning issues. She can be reached directly at vmehra@keglerbrown.com or (614) 255-5518.Lori Fuhrer and Robert Cohen are directors and experienced trial lawyers in Kegler Brown’s Class + Collective Action practice, where they defend clients in contract and class action litigation of all kinds.Fuhrer can be reached directly at lfuhrer@keglerbrown.com or (614) 462-5474.Cohen can be reached directly at rcohen@keglerbrown.com or (614) 462-5492. 

publication

Winning at Trial

On November 20, Tom spoke during a one-day trial advocacy seminar featuring several of Ohio’s leading trial lawyers. Attendees were taken through the trial process, gaining insight on tactics and strategies leading up to and during trial. Topics discussed also included approaches to pre-trial discovery, preparing for trial, jury selection, opening statements, direct and cross examinations, and closing arguments. Tom spoke on cross examinations, giving step-by-step guidance on preparing questions and emphasizing the importance of organization. 

OSBA webinar cosponsored by the ACTL
publication

The Art of Witness Preparation

On August 9, 2019, Tom presented to the Legal Aid Society of Columbus on the oft-overlooked topic of teaching witnesses to be witnesses. While most educational programming for lawyers focuses on what they must do in a courtroom, little guidance is provided for preparing witnesses, who are speaking in an alien environment and are often frightened and uncertain. Focusing on a witness’s role in persuading a jury, Tom described to attendees how to work with a witness to tell a story using organized, open-ended questions that allow the witness to comfortably tell their portion of the truth. He discussed preparing for direct and cross-examination, as well as the importance of not over-preparing. 

Legal Aid Society of Columbus
Article

Why the CCPA Matters to You and Your Business

Is your company ready for the CCPA? The California Consumer Privacy Act (CCPA), which becomes effective on January 1, 2020, will require companies to be ready to create greater transparency about the collection, use, and sharing of California consumers’ personal information by: Understanding the consumer data being collected Complying with new disclosure requirements Preparing for customer data requests that include 12 months of data Implementing new systems and processes to ensure ongoing compliance In June 2018, the California legislature adopted, and the governor signed into law, the California Consumer Privacy Act of 2018 (CCPA), which will become effective January 1, 2020. Similar to the EU’s General Data Protection Regulation (GDPR), the CCPA creates greater transparency about the collection, use, and sharing of consumers’ personal information by forcing companies to comply with additional requirements regarding the processing of the data. All residents of California are protected under the CCPA, but not just when they function as consumers. They are also protected as employees 1, patients, tenants, students, parents, children, etc. This legal protection persists as long as the individual can be identified by any unique identifier, even if that individual is out of the state temporarily. The CCPA protects a wide array of data by defining “personal information” more broadly than other sections of the California Civil Code and other state privacy laws. It applies to all information that relates to a specific consumer or household, protecting various types of data such as a person’s name or government identification number, a household’s annual energy consumption, or a device’s IP address. This is similar to the GDPR’s definition of “personal data,” which includes information that is deemed identifiable; however, while the GDPR’s protections include “publicly available information,” the CCPA excludes it. Consumers will also now have the ability to opt out of the sale of their personal information to third parties, and the CCPA restricts a company’s ability to penalize individuals who exercise that right. This is done by not allowing businesses to deny goods or services, charge different prices, or provide a different level of quality to the consumer. However, there is a potentially broad exception that allows businesses to evade the restrictions if their conduct is reasonably related to the value provided to the consumer by the utilization of the consumer’s data. Furthermore, businesses may offer financial incentives, including payments to consumers, for collecting and selling their personal information as long as the action is not unjust, unreasonable, coercive, or usurious in nature. Compliance is required by all companies, not just those located in California, that receive personal information from California consumers while either: (i) exceeding annual gross revenues of $25 million; (ii) annually obtaining personal information of 50,000 or more California consumers, households or devices; or (iii) gaining 50 percent or more of their annual revenue from selling California consumers’ personal information. While these three thresholds seem straight forward on their face, application may not be easy. For example, it is not clear whether the $25 million annual gross revenue figure is limited only to sales in California or expanded to sales globally. Additionally, the scope of information that most companies passively capture by utilizing websites, such as IP addresses, could lead to outsized consequences for small businesses inside and outside California by forcing compliance. Companies worldwide will need to act proactively to comply with these new requirements. Similar to the efforts global companies have undertaken in preparation for the GDPR, it is recommended to prepare data maps, inventories, or other records of all personal information in relation to California consumers, households, and devices. In addition, it is strongly recommended to commence identifying information sources, storage locations, usage and recipients. This will not only help businesses comply with new disclosures required of company privacy policies, but also prepare for user data access, deletion, and portability requests of up to 12 months of data, known as the “look back” requirement. Businesses will also need to secure prior consent for data sharing for parents and minors, and to comply with opt-out requests. Businesses should also consider alternative business models, especially with their web preferences, to address the complex nature of the new law, including exploring a California-only website and charging for formerly free services. Under the CCPA, consumers must have a method, such as a toll-free telephone number, to submit data access requests, and be able to access a clear and conspicuous “Do Not Sell My Personal Information” link that enables them to opt out of the sale of their personal information to third parties. Further, compliance will be aided by adopting new systems and processes that do things such as verify the identity (including the age and authorization) of individuals who make requests for data access, deletion, or portability; respond to these requests within 45 days; avoid requesting opt-in consent of consumers for 12 months after opting out; and update privacy policies. It’s important to note that the scope of the CCPA is subject to amendment, with several proposed amendments pending, until September 13, 2019, which means companies will need to be ready to comply in this fluid situation. If the CCPA is not adhered to, companies may find themselves in a civil action brought by the California Attorney General’s Office and will be required to pay penalties of up to $7,500 per intentional violation, or in the case of unintentional violations $2,500 per violation if the company fails to remedy it within 30 days of notice. Individuals will also be able to bring claims in civil class action law suits, where companies that are victims of data theft or other security breaches can be ordered to pay damages between $100 to $750 per California consumer and incident, or actual damages – whichever is greater – and any other relief deemed proper by the court. The AG will also have the option to prosecute in replacement of a civil suit brought by consumers. The CCPA was the first in a current trend of comprehensive data privacy laws enacted in the United States. While California is still deliberating amendments that will help define the scope and impact upon its effective date, other states, including Maine and Nevada, have taken notice and recently passed legislation, continuing the trend. The complexity of complying with differing privacy laws in different states has elicited rumblings for federal privacy legislation. However, until a federal act passes, we should expect more laws like the CCPA to follow. For further information about the impact of the CCPA on your company’s operations, contact David Wilson (dwilson@keglerbrown.com). This article was prepared with the assistance of summer associate Jordan Boak. [1] Note that employees may be excluded pending an amendment to the CCPA (Bill AB-25 in CA Senate)

Article

Keeping the “Tell” in Intellectual Property

Steve Barsotti appeared in the November 2017 issues of Columbus CEO, interviewed as part of an article on businesses protecting their intellectual property. Its focus was on the need for IP protection when faced with First to File provisions and collaborative cultures. Steve discusses incubators and accelerators, saying they need to agree on rules of engagements from the beginning, and says “There has been a shift in the entrepreneurial culture to one of collaboration and sharing of ideas. That’s definitely a positive, but it also presents a real opportunity to create thorny IP issues.”

Columbus CEO, November 2017
Presentation

Protecting Your Business' Secrets in the Modern Area Presentation

On August 16, 2016 Jeff Nein, Brendan Feheley, and Steve Barsotti presented Protecting Your Business' Secrets in the Modern Era at the office of Kegler Brown Hill + Ritter. The agenda was as follows: 8:30-9:00 a.m. Jeff Nein identified what a trade secret is and methods that companies have done to protect their intellectual property. He also discussed the recently enacted Defend Trade Secrets Act and provided action steps employers can implement to maximize protection under the new Act. 9:00 - 9:30 a.m. Brendan Fehley discussed the importance of contractual language that protects your intellectual property and confidential information, both internally in contracts with employees and externall in contracts with vendors and contractors. 9:30 - 10:00 a.m. Steve Barsotti discussed how effective intellectual property protection fits into any company's broader intellectual property strategy.

Protecting Your Business’ Secrets in the Modern Era Breakfast Briefing
Article

Supreme Court Raises the Stakes in TTAB Proceedings with B&B Hardware Decision

On March 24, 2015, the U.S. Supreme Court issued a 7-2 decision declaring that Trademark Trial and Appeal Board (“TTAB”) rulings should be given preclusive effect when the TTAB’s considerations are “materially the same” as those before a district court, provided the other “ordinary elements” of issue preclusion are established. B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352 (U.S. Mar 24, 2015). The upshot of the Supreme Court’s decision in B&B Hardware is that the stakes are raised in TTAB proceedings, with the outcomes having serious business consequences beyond the fate of the specific trademark registration at issue. The majority opinion, penned by Justice Alito, factors into an 18-year-long dispute between B&B Hardware and Hargis Industries, both manufacturers of metal fasteners. In 1993, B&B registered the mark SEALTIGHT for metal fastener products for use in the aerospace industry. Hargis later attempted to register its SEALTITE mark with the U.S. Patent and Trademark Office in 1996 for metal fasteners use in construction of metal and post-frame buildings. B&B instituted an opposition proceeding with the TTAB, arguing against registration of Hargis’ mark due to a likelihood of confusion with its prior-registered SEALTIGHT mark. The TTAB agreed with B&B and denied registration, citing a likelihood of confusion between the marks. Importantly, Hargis did not appeal the decision. While the opposition proceeding was pending, B&B also filed a claim for trademark infringement against Hargis in federal district court. Prior to the district court’s ruling, the TTAB announced its own ruling on likelihood of confusion. B&B moved for summary judgment arguing that Hargis was estopped from relitigating the issue of likelihood of confusion due to the preclusive effect of the TTAB’s decision. The district court disagreed, stating that the TTAB’s decision did not have preclusive effect. On appeal to the Eighth Circuit, the Court of Appeals also ruled in favor of Hargis, reasoning that issue preclusion was not appropriate since district courts utilize different criteria than the TTAB in evaluating a likelihood of confusion claim. In March, the Supreme Court reversed the decision. Turning to the Restatement (Second) of Judgments for guidance, the Supreme Court announced there is no absolute rule precluding a TTAB decision from being given preclusive effect, noting that “[w]hen an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.” Restatement (Second) of Judgments §27, p. 250 (1980). Thus, even though district courts and the TTAB have minor differences (but not fundamental differences) in the details and procedures associated with determining the likelihood of confusion between two marks, as long as a final decision is reached by the TTAB on the same issue that is before a district court, deference should be given to the TTAB. Historically, resources devoted by parties to TTAB proceedings have been relatively scant (as contrasted with infringement actions), as a TTAB proceeding was often viewed as merely “Round 1” of a larger fight. Following the Supreme Court’s decision, the possibility of a “Round 1” knockout is very real, meaning that parties need to keep their guard up. From a defense perspective, although risk clearly existed prior to the decision, the Court has now removed any doubt that an adverse decision from the TTAB (which cannot award monetary damages) can be used as leverage in an infringement action in federal district court (which can award damages). From a plaintiff’s perspective, the ruling will force a strategic decision regarding forum to be made at the outset of a dispute, with the understanding that there will be no clear “second bite at the apple.” From either perspective, the process of TTAB opposition and cancellation proceedings will likely begin to more closely resemble contentious, more costly litigation, and losing parties at the TTAB will be more likely to appeal.The true impact of B&B Hardware will become clearer as litigants evolve their registration and enforcement strategies, and the courts begin applying the decision to TTAB rulings. Moreover, the TTAB may begin assigning greater weight to evidence of actual uses of a mark in the marketplace, uses which may be different in nature or scope from those listed in a registration, which will further impact litigation strategy.In the meantime, litigants in administrative trademark proceedings and infringement suits will need to carefully craft their strategies on a case-by-case basis, to account for the changing risk landscape. The only certainty is that TTAB proceedings are likely to become more costly fights.

Columbus Bar Lawyers Quarterly

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