We secure your ingenuity and innovation with patent applications, licensing, patent preparation and prosecution and enforcement through the courts or alternative dispute resolution. We advise early on in the invention process, giving you the advice you need to strategically position your product for protection and to avoid disputes. We also can handle reexamination and inter partes review proceedings in the U.S. Patent Office, which have become increasingly significant and strategic components of protecting patent portfolios and defending infringement claims.
Representing Cordelia Lighting, a provider of lighting fixtures and accessories, in defense of a patent infringement action brought by a competitor involving multiple patents relating to recessed, LED lights. Cooper Lighting, LLC v. Cordelia Lighting, Inc.
- Counsel to distillery and bottle designer in defense of action alleging breach of contract and design patent infringement
Led defense of Fusion Glassworks, a custom glass designer, and Private Label Distillery, a provider of distillery services, in litigation brought in California involving alleged design patent infringement. Successfully obtained early dismissal for our clients. Gillespie v. Prestige Royal Liquors, et. al.
Counsel to UBU Sports and Maumee Bay Turf Center, premier providers of synthetic turf systems for use in a variety of sporting events, in patent dispute brought by a competitor. Sprinturf, LLC v. UBU Sports and Maumee Bay.
- Led defense of patent infringement suit brought by patent troll relating to check scanning and processing
Represented VeriCheck, Inc., a leading ACH payment processor, in E.D. Texas litigation against a patent troll. As part of our defensive strategy, we prepared and filed a petition with the USPTO for Covered Business Method review and argued that the asserted patent claims were invalid under Section 101 for being directed to patent ineligible subject matter. The parties reached a confidential settlement shortly after the CBM petition was filed. Lyssa ...
- Defense of international consumer product manufacturer in suit alleging patent and trade dress infringement
Led defense of Georgia-based company in patent and trade dress litigation involving a consumer product. After initial aggressive discovery and a mediation, we achieved a favorable settlement for the client.
Led the defense against an inventor/patentee in a case involving claims of infringement of a patent related to a boat dock ladder. Successfully petitioned the USPTO to reexamine the asserted patents—resulting in cancellation of all claims of one patent and significant narrowing amendments to the remaining patent’s claims. After a favorable claim construction ruling from the Special Master, the case was dismissed with prejudice, with no payments from ...
- Defense of patent infringement claims asserted by patent troll ICH Intellectual Capital Holdings, Inc.
Led defense of Mueller Water Products, Inc. in a case brought by a non-practicing entity, ICH Intellectual Capital Holdings, Inc., for infringement of patents related to automated meter reading technology. The client reached a favorable confidential settlement with the plaintiff and the case has been dismissed. ICH Intellectual Capital Holdings, Inc. v. Badger Meter, Inc., et. al.
- Brought patent infringement action against Datamatic Ltd. for Advanced Metering Infrastructure (AMI) systems
Represented Mueller Water Products, Inc. in action against Datamatic Ltd. alleging patent infringement of Mueller’s patents for technology relating to Advanced Metering Infrastructure (AMI) systems. Negotiated a favorable settlement with defendant. Mueller International, LLC et al v. Datamatic Ltd.
Led the defense of generic pharmaceutical company in a case involving allegations of false advertising and infringement of a patent related to prenatal vitamins and iron supplements. The parties reached a confidential settlement right before trial.
- Represented Mueller Water Products in declaratory judgment actions involving patents and alleged trade secrets
Represented Mueller Water Products, Inc. in suits for declaratory judgments of non-infringement, invalidity and unenforceability of patent held by defendant, non-misappropriation of the defendants’ alleged trade secrets, and validity, inventorship, and ownership of client’s patent. Mueller Systems, LLC et al v. Teti et al.
Represented several outdoor advertising companies in actions brought by a patent troll, T-Rex Property AB, for infringement of patents related to digital advertising technology. The parties reached a confidential settlement.
Currently representing Mueller Water Products, Inc. in a suit for declaratory judgments of non-infringement and invalidity of competitor’s patents relating to pipe couplings. Successfully deferred litigation after filing reexamination requests, which were granted by the USPTO. Mueller Water Products, Inc. et al v. Victaulic Company.
- Successful defense of various distributors in patent infringement actions relating to pipe couplings
Successfully transferred, deferred, or achieved dismissal of numerous patent infringement suits brought against a client’s distributors in favor of declaratory judgment suit filed by the client, the product manufacturer.
Obtained institution of ongoing reexamination proceedings involving patents of a client’s competitor in the field of mechanical pipe couplings.
Resolved several cases in which client, a national gift and home goods manufacturer, asserted trade dress and design patent infringement claims against competitors. The cases involved the popular cylindrical packaging for wine glasses.
Represented Mueller Water Products, Inc. in action against Singer Valve, Inc. and Singer Valve, LLC alleging patent infringement of Mueller’s patent for an apparatus for the enhancement of water quality in a subterranean pressurized water distribution system. Negotiated a favorable settlement with defendants. Mueller Water Products, Inc. v. Singer Valve, Inc. and Singer Valve, LLC.
- Achieved favorable outcome for medical device company defending patent infringement and false marking claims
Represented Byrne Medical in patent infringement and false marking case relating to endoscopic devices. Negotiated favorable confidential settlement.
Defended nation’s leading provider of health care services in patent infringement litigation concerning electronic medical records systems. The case was ultimately dismissed with prejudice, with no payments from the client.
- Counsel to Georgia-based manufacturer of expanded metals for HVAC filters in declaratory judgment action involving competitor’s patent
Represented Expanded Technologies, a leading manufacturer of expanded metals for the HVAC filter industry, in a suit for declaratory judgments of non-infringement, invalidity and unenforceability of patent held by competitor. The litigation resulted in in a favorable confidential settlement. Expanded Technologies, Inc. v. Wallner Tooling/Expac, Inc.
Managed the prosecution of U.S. and foreign patent applications in a large patent portfolio relating to identifying humans using antibody profiling processes.
- Counsel to global telecommunications company in multi-jurisdictional patent dispute against competitor
Represented a global leader in mobile communications in a wide-ranging patent dispute against a competitor over patents relating to computer software, wireless communications, and touchscreen technology. The litigation resulted in a favorable settlement and license agreement.
Led defense of patent infringement case involving claimed method to detect autism by analyzing bodily fluids. After we filed two motions for summary judgment, the parties reached a confidential settlement. Great Plains Laboratory, Inc. v. Metametrix Clinical Laboratory
- Achieved dismissal of patent claim and successful resolution of remaining claims in case involving SEC compliance information
Led defense of case involving allegations of patent infringement and related claims based on a method of mapping SEC compliance information into a usable format. We obtained a dismissal of the patent infringement claim and then reached a confidential settlement on the related claims. NewRiver, Inc. v. Prospectus Central, LLC.
Handling the defense of a case for Comverge, Inc. in which the plaintiff, a non-practicing entity, has claimed that Comverge has infringed certain claims of a patent related to premises-monitoring technology. The case is presently in its early stages. Joao Control & Monitoring Systems v. Comverge, Inc.
Led defense of Mueller Water Products, Inc. in a case brought by a non-practicing entity, Endeavor MeshTech, for infringement of a patent related to premises-monitoring technology. The client reached a favorable confidential settlement with the plaintiff and the case has been dismissed. Endeavor MeshTech, LLC v. Mueller Water Products.
Led the defense of H-E Parts against ESCO Corporation in a case involving allegations of trademark infringement and infringement of a patent related to excavator teeth on heavy equipment. We negotiated a favorable settlement with plaintiff. Esco Corporation v. H-E Parts et al.
Led the defense of Royal Metal against an inventor/patentee in a case involving claims of infringement of a patent related to industrial package assemblies. We negotiated a favorable settlement with plaintiff. Gray v. Royal Metal et al.
Handled two cases for separate defendants, Ascendx Spine and Sintea Plustek, LLC, in the District of Delaware. Both cases were brought by Orthophoenix, LLC, a non-practicing entity, and involved claims of infringement of certain patents involving medical device technology. The parties in both cases reached confidential settlements. Orthophoenix, LLC v. Ascendx Spine; Orthophoenix, LLC v. Sintea Plustek.
Handled the defense of Allure Global in a case brought by a non-practicing entity, Activelight, Inc., involving allegations of infringement of patents related to digital signage. The parties reached a confidential settlement. Activelight, Inc. v. Allure Global, et al.
Led defense of third-party claims for defense and indemnification in patent infringement case involving technology designed to obscure credit card numbers on receipts. The parties reached a confidential settlement. Ware v. Genesco v. Micros Systems, Inc. and Datavantage Corporation.
Provided counsel to one of the largest providers of in-home residential delivery services in the United States on all intellectual property matters. These matters range from prosecuting and maintaining the client’s patent and trademark portfolio, to counseling the client on protecting its trade secrets, to anonymously negotiating and obtaining a licensing agreement with a prolific non-practicing entity with a history of targeting businesses in the ...
- Successful defense of Comverge, Inc. in patent infringement action relating to energy usage management
At the client’s request, we took over the defense of a large and hotly-contested patent infringement case brought by Nxegen LLC and Nxegen Holdings Inc. The patents involved systems and methods for remotely monitoring and adjusting energy usage. Facing a tight discovery schedule, we managed to produce, review and analyze a voluminous number of documents, take and defend approximately 30 depositions in a one-month period, amend the complaint to allege ...
Handled the defense of Expression Beauty Works in a case involving claims of infringement of a patent related to crackle nail polish. Negotiated a favorable settlement with plaintiff. Kirker Enterprises v. Expression Beauty Works.
Provided counsel to Bernie Bilski and Rand Warsaw in conjunction with the landmark U.S. Supreme Court case Bilski v. Kappos.
Prepared and filed a utility patent application for a new fastening technology and a machine and process for implementing the technology in an automobile industry application. The client, a multinational manufacturer of fastener products, developed the technology.
Prepared a utility patent application and two design patent applications for a new consumer product. The product was developed by a local Atlanta resident who developed the product as a side business with the help of local business partners.
Drafted and prosecuted multiple patent applications for new technologies in the packaging industry and industrial valve industry.
Drafted and prosecuted multiple patent applications for new engine technologies for implementation on small passenger aircraft.
- Successfully defended global telecommunications company at patent trial before the International Trade Commission
Represented one of the world’s largest mobile communications companies in a successful defense at trial in an ITC action involving RF circuitry and baseband software in mobile phones.
Led defense of New Hampshire-based company in patent and trade dress litigation involving drop prevention products. Assisted prosecution counsel with successful petition for Inter Partes Review at USPTO and successfully deferred related litigation, resulting in a favorable settlement for the client.
Provided counsel to client Mueller Water Products, Inc. on all patent and trade secret matters. These matters range from prosecuting and maintaining the client’s patent portfolio, to counseling the client on protecting its trade secrets.
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- "Taylor English's Amanda Hyland Recognized Among Up and Coming Lawyers in Georgia," Atlanta Patch, East Cobb Patch, Marietta Patch and Smyrna PatchApril 21, 2016
- "Taylor English's David Hricik Appointed to American Law Institute," East Cobb Patch, Marietta Patch and Smyrna-Vinings PatchFebruary 16, 2016
- June 23, 2015
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- November 2, 2015
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- "What Standard Should the Patent Trial and Appeal Board Apply in Interpreting Patent Claims During Inter Partes Review? Is the Institution of Inter Partes Review Ever Appealable?" ABA Supreme Court PreviewApril 25, 2016
- "Three Years On: What The New Definition of Prior Art Means Today," World Intellectual Property ReviewMarch 18, 2016
- "What is the Proper Standard for Enhancing Patent Damages Under Section 284 of the Patent Act?" ABA PreviewFebruary 22, 2016
- February 9, 2016
- "Georgia’s New Patent Law: Bad Faith Threats of Infringement Create New Liabilities," Georgia Bar JournalDecember 11, 2014
- "The Impact of Recent Supreme Court, Federal Circuit, and PTAB Decisions and Patent Law Reform Efforts on Patent Litigators, In-House General and Patent Counsel and the Judiciary," Federal Bar Association 2016 Annual Meeting and ConventionCleveland, Ohio, September 15, 2016
- "Beware the Death-Defying Design: IP Rights Can Survive Patent Expiration," Daily Report's In-House Counsel CLE SeminarAtlanta, Ga., March 15, 2016
- Alpharetta, Ga., September 23, 2015