- Intellectual Property
In your business, ingenuity is the basis of your intellectual property. In our business, ingenuity, in addition to extensive legal experience and commitment to client service, is the basis of how we help you protect such property.
We partner with you to identify, develop and protect intellectual property and processes that are essential to your business, from patents and trade secrets to copyrights and trademarks. Our attorneys have reinforced their legal experience with scientific and engineering knowledge, which allows them to work with you at every step in the growth of your intellectual property portfolio. Some of our attorneys have substantial in-house intellectual property experience, giving them insight into the complex operational issues faced by technology-oriented companies, as well as an in-house lawyer’s perspective on cost efficiency.
Litigation and transaction support are major parts of our practice. We structure agreements to obtain the full value of large intellectual property portfolios and draw on a powerful and resourceful team of experienced attorneys in litigation matters in state and federal courts, as well as the International Trade Commission. Our attorneys also can help you navigate complicated reexamination and inter partes review proceedings in the U.S. Patent Office.
“As a leading worldwide manufacturer of hard disc drives and digital storage systems, Seagate depends on the highest quality patent services like those provided by the experienced attorneys of Taylor English. The firm’s commitment to quality is just as important as its commitment to efficiency.”
- Ken Massaroni, Executive Vice President, General Counsel and Chief Administrative Officer, Seagate Technology LLC
- 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 ...
- Dismissals of copyright claims and separate state action for international airline client sued over use of architectural plans
Represented major airline in claims brought by former vendor alleging misuse of architectural plans for office space. Won motion to dismiss state-court conversion claims, and in subsequent federal copyright-infringement case based on same underlying facts, conducted discovery and negotiated settlement in which plaintiff dismissed the case with prejudice and with no payments from our 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.
Assist prominent national sports association and rights-holder in renewal of multimillion-dollar license of media and sponsorship rights to NCAA. Issues included availability of talent and executives, coordination with sister organizations on sponsor offerings, exclusivities and carve-outs of existing deals.
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
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 ...
Provided counsel to Bernie Bilski and Rand Warsaw in conjunction with the landmark U.S. Supreme Court case Bilski v. Kappos.
Defended educational products company in lawsuit alleging infringement of copyrights in cards for assistance with speech therapy. The court granted our motion for summary judgment, finding that there was no infringement of any copyright in the selection and arrangement of Plaintiff’s cards as a matter of law. Ristuccia v. Super Duper, 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 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.
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 ...
Represented an individual accused of misappropriating trade secrets and confidential information from a former employer. Engaged in extended negotiations with the plaintiff's counsel and ultimately reached a favorable settlement for our client.
- Defeated TRO and Preliminary Injunction to Keep BattleFrog, LLC from Airing Obstacle-Course Race on ESPN
Taylor English handled the successful defense of a motion for a temporary restraining order and preliminary injunction brought against our client, BattleFrog, LLC, a company that organizes and stages obstacle-course races that are televised on ESPN. The stakes in this case are very high, as plaintiff Modtruss, Inc., sought to prevent the airing of a recent BattleFrog race on ESPN and to enjoin our client from putting on additional races based on claims of alleged ...
Amanda Hyland represents Bankrate, a publisher, aggregator, and distributor of personal finance content on the Internet that provides aggregated financial data and consumer financial news and editorial content to more than 500 national publications. She provides day-to-day outside counsel on matters of media, advertising, and intellectual property to Bankrate and its affiliates, which include creditcards.com, Wallaby, Interest.com ...
Amanda Hyland represented a Denver liquor distillery in trademark and rights of publicity claims arising from a dispute between Jimi Hendrix’s heirs and other family as to the right to use the term “Purple Haze.” Ms. Hyland obtained a full dismissal of claims against the distillery.
Represented international nonprofit ministry in sale of trademark rights to Daystar Television network.
Represented production company in intellectual property matters, including the negotiation of the full transfer to our client of all copyright in screenplays for a television series.
Taylor English is outside intellectual property counsel to ATLA, which hosts the largest dance career convention in the country, bringing together the top choreographers and dancers from around the world.
- 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.
Won a significant jury verdict in the Northern District of Georgia under the Anti-Cybersquatting Consumer Protection Act (ACCPA) for a national provider of industrial and commercial waste and recycling solutions. The jury awarded full statutory damages, and the Court later awarded $185,000 in attorneys' fees to our client. The jury award and the attorney’s fee award were upheld on appeal to the 11th Circuit Court of Appeals.
Serves as outside counsel for all media, merchandising, blogging, copyright, trademark, and social media inquiries for several national conservative non-profit groups, including Tea Party Patriots and Center for Self Governance.
Obtained consent injunctions in cases pending throughout Southeastern United States. Ceased the importation and sales activities of nearly one dozen gray market Yanmar tractor importers.
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.
- Current representation of Mueller Co. in unfair competition and false advertising case involving fire hydrants
Currently representing Mueller Co. in case against competitor pending in Massachusetts. The case involves claims of unfair competition and defamation relating to the sale of fire hydrants.
Represented a national athletic goods manufacturer in case defending the client's trademark registration in the color blue for tennis grip tape. Achieved favorable ruling from bench trial in the Northern District of Georgia in which the court upheld our client's trademark registration.
In a case involving allegations of copyright infringement of interior design portfolio photographs and related defamation claims, we achieved a settlement for our client, Meg Adams Interior Design, Inc.
Defended and achieved settlement in copyright infringement lawsuit brought in the Northern District of Georgia by a former employee of our client, a video production company. The former employee claimed to own the copyright in the commercials produced by our client.
Initiated and resolved trademark litigation for GradSave, a college savings plan company. The lawsuit, filed in the Southern District of Florida, asserted claims for trademark infringement against another web company using the mark “GradSaver.” The matter was settled confidentially.
- Current representation of major coatings company in defense of trademark, trade secret, defamation, and other claims
Currently representing Gulf Synthetics in an action brought by former business partner and his new company claiming trademark infringement, defamation and trade secret misappropriation relating to the deck coatings business.
Achieved successful resolution of lawsuit involving copying of clients' "ABC’s of Life" poem, which was reproduced without permission on posters and plaques.
- Successful defense of copyright and trade secret claims against client accused of improperly accessing software in check processing equipment
Represented Symco Group, Inc., a company that serviced check processing equipment, in a copyright infringement and trade secret action in the Northern District of California. The plaintiff alleged that Symco, as part of its regular servicing process, was improperly accessing the plaintiff’s software and therefore violating its copyrights in the software source code that was embedded in the check processing equipment. Following the court’s dismissal of ...
Achieved favorable settlement for client defending claims of copyright infringement for medical billing software.
- Successfully resolved copyright infringement claims brought by photographer against book publishing client
Defended, and successfully settled, copyright infringement lawsuit brought against book publisher client that had used plaintiff’s photograph in book.
- 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.
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.
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.
Successfully defended non-profit advocacy group against claim that it did not own rights to its name and that it had defamed a former director. Jury found that "Tea Party Patriots" trademark did not belong to former board member and restored all rights to the mark. The defamation claims were dismissed upon motion for directed verdict.
- 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.
Create master agreements covering A&R executives and recording artists for fledgling music label. Advise on royalty structure, buy-out, rights and other matters. Complete buy-out of rights from prior producer in exchange for participation in new recording agreement.
Represented leading carpet manufacturer and a subsidiary in defending a large trade secret case involving a method for manufacturing carpet cores from recycled materials. The parties reached a confidential settlement right before trial.
- 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.
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 client Seagate Technology LLC on IP matters and provided patent prosecution services. Seagate, headquartered in Ireland and one of only a few major manufacturers of hard disc drives and other complex storage products, has an excellent reputation for intellectual property management. We have provided counsel to this client on IP matters and provided patent prosecution services.
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 claims of misappropriation of trade secrets and breach of loyalty in connection with departure of group of employees and establishment of competitive business. The parties reached a confidential settlement. Wells Fargo Foothill, Inc. v. Cratos Capital Partners, LLC.
Represented HD Supply in defending claims of breach of licensing agreement with software provider. Obtained quick dismissal of the case with prejudice. Appsense, Ltd. v. HD Supply Construction Supply, Ltd.
Prevailed on summary judgment (affirmed on appeal by the Eleventh Circuit) on behalf of American Express in major copyright infringement action involving maps of Atlanta in a dining guide. Crownfire Publications v. American Express.
After two-week jury trial in federal court in Atlanta, won a multi million-dollar verdict, including attorneys’ fees, on behalf of plaintiff (a company involved in 3-D imaging technology) for its failed acquisition by defendant. ND3D, B.V. v. Image Technology International, Inc.
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.
- August 5, 2016
- August 1, 2016
- June 17, 2016
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- June 17, 2016
- "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
- September 3, 2015
- July 24, 2015
- June 23, 2015
- May 6, 2014
- Deborah Ausburn and Amanda Hyland Successfully Represent Tea Party Patriots in IP, Trademark Rights CaseNovember 16, 2011
- July 1, 2010
- August 15, 2016
- June 7, 2016
- Five Attorneys Also Recognized as Leaders in Their FieldsMay 27, 2016
- February 25, 2016
- February 3, 2016
- November 2, 2015
- August 17, 2015
- July 16, 2015
- Taylor English's Jeffrey Kuester Named Among Leading Patent Lawyers by Intellectual Asset ManagementIntellectual Asset Management, June 23, 2015
- May 29, 2015
- Taylor English Earns National Recognition for Three Practices, Six Attorneys Recognized as Leaders in Their FieldChambers USA, May 28, 2015
- June 21, 2014
- May 9, 2014
- August 28, 2013
- July 25, 2011
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- August 5, 2016
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- May 27, 2016
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- May 10, 2016
- "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
- "Ninth Circuit Decision Will Prompt More College Athlete Trademark Registrations," Intellectual Property StrategistDecember 11, 2015
- September 3, 2015
- August 14, 2015
- "Georgia’s New Patent Law: Bad Faith Threats of Infringement Create New Liabilities," Georgia Bar JournalDecember 11, 2014
- June 24, 2014
- "Producing a Blockbuster IP Litigation Hit, Act 2: Efficiently Engaging the Adversary," InsideCounselMay 31, 2014
- May 13, 2014
- May 6, 2014
- "Producing a Blockbuster IP Litigation Hit with Small-Budget Funding: Assembling the Cast," Inside CounselApril 15, 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
- "Intellectual Property 101 for the Woodworking Professional/Artist/Inventor: Protecting Your Inventions and Other Creative Works," International Woodworking Fair 2016 Education ConferenceAtlanta, Ga., August 25, 2016
- Atlanta, Ga., May 1, 2016
- "Beware the Death-Defying Design: IP Rights Can Survive Patent Expiration," Daily Report's In-House Counsel CLE SeminarAtlanta, Ga., March 15, 2016
- "What to Do When Your Client (or You) Has an Intellectual Property Question," Cobb County Bar Association Business Law and Litigation Section CLE SeminarMarietta, Ga., February 12, 2016
- Atlanta, Ga., October 22, 2015
- Alpharetta, Ga., September 23, 2015
- Cumming, Ga., June 14, 2015
- "Intellectual Property – Patents, Trademarks, Copyrights and Trade Secrets, Oh My!" Recipes for Restaurant SuccessRecipes for Restaurant Success Hospitality SeriesAtlanta, Ga., November 18, 2014
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