Intellectual Property and Technology
Cohen & Gresser handles a wide range of intellectual property and technology matters. Our litigators have experience in patent, trademark, copyright, trade secret, and unfair competition litigation and advise clients on internet privacy issues, data security, and technology law. Our transactional lawyers protect our clients’ patents, trademarks, service marks, copyrights, and trade secrets; manage trademark portfolios; and negotiate and draft a broad range of licensing and technology-related agreements.
Litigation and Arbitration
The firm handles major cases in federal and state trial and appellate courts, before government agencies, and in a wide variety of domestic and international arbitration settings. Our experience in civil litigation covers a number of substantive areas, including antitrust and unfair competition, bankruptcy litigation and counseling, class action defense, commercial disputes, directors and officers litigation, employment, healthcare litigation, partnership disputes, products liability, real estate litigation, and securities litigation.
Our attorneys have significant experience handling appeals before federal and state appellate courts across the country and regularly represent organizations as amicus curiae in appellate matters presenting legal questions with broad policy implications. The firm has successfully handled appeals in cases where we represented a party in the lower court and in cases where we have specifically been brought in for our appellate proficiency. Our attorneys have clerked for judges on numerous federal district and appellate courts.
With every dispute, in any forum, we offer thoughtful counseling before a decision is made to litigate, and we have substantial experience in negotiating favorable pre-litigation settlements for our clients where appropriate.
If a pre-litigation settlement is not feasible or advisable, we are skilled at using the pretrial process to put our cases in the best posture for disposition by motion, settlement, or trial. Our litigators are first-rate trial lawyers: we have successfully handled hundreds of trials, arbitration hearings, and administrative procedures in state and federal courts across the country and in every major type of arbitration forum. We have an outstanding record in high-stakes, high-profile litigation, including cases involving claimed damages in the hundreds of millions of dollars.
Our trial experience helps us manage the discovery process efficiently and cost-effectively by keeping the focus on the facts that will advance our claims or defenses at trial. And that same focus — along with our intensity, creativity, and negotiating skill — helps us settle cases on excellent terms.
Our litigation and arbitration team has been recognized in leading rankings publications. Legal 500 described the firm’s strong commitment to client service and praised us as “one of the best mid-sized firms.” It also noted that the firm “differentiates itself by the creativity and flexibility it brings to its work, enabling it to handle disputes across an incredibly wide number of subject areas.” Chambers recognized the firm’s strong financial litigation practice, and noted that our attorneys “put themselves in their clients' shoes and use litigation as a tool to advance their clients' causes or solve their problems in a creative, efficient and cost-effective manner.”
Our Chambers and Legal 500-recognized Commercial Litigation group represents clients in a broad range of complex commercial, business, and financial disputes in districts throughout the United States and in the international arena. We represent clients in lawsuits involving contract disputes, derivatives claims, breach of contract, shareholder disputes, fraud, tortious interference complaints, professional malpractice claims, unfair business practices, and private equity transactions. Our clients span multiple industries, including finance, software and technology, hospitality, and real estate.
Our attorneys employ their extensive trial experience to bring a strategic approach to each claim. We offer thoughtful counseling, and we scrupulously research each matter and are prepared to effectively and vigorously defend our clients at trial. We have successfully handled numerous trials, arbitration hearings, and administrative procedures in state and federal courts across the country and in every major type of arbitration forum. We have an outstanding record in high-stakes, high-profile litigation, including cases involving claimed damages in the hundreds of millions of dollars.
Our litigators have successfully asserted and defended patent cases in federal courts throughout the country, including jurisdictions with heavy patent dockets (e.g., California, Delaware, Massachusetts, New Jersey, Pennsylvania, Texas, and Virginia), the Court of Appeals for the Federal Circuit, and before the International Trade Commission. Foremost, we are trial lawyers, and our diverse IP litigation practice enables us to excel across a wide range of technologies. Our approach is to pair lawyers who have strong technical backgrounds in the relevant technology with experienced trial lawyers, thereby giving our clients the best of both worlds: a litigation and trial team which can construct the strongest possible technical arguments in support of our position and can also explain our case to a judge and jury in language which is simple and persuasive.
From individual inventors to Fortune 500 companies, our lawyers have represented a wide range of clients in patent matters and have successfully litigated against some of the largest law firms in the U.S. The firm’s patent practice has been recognized in the Chambers USA guide, and the firm has been ranked as a recommended firm for patent litigation by Managing Intellectual Property magazine’s IP Stars guide. Patent Litigation group members have also been recognized individually by Chambers, as IP stars by Managing Intellectual Property, and as part of IAM’s Patent 1000 list.
Our patent attorneys are also skillful and experienced negotiators, able to assist our clients in maximizing the value of an IP asset sale. We draft infringement and validity opinions, conduct detailed intellectual property due diligence and freedom-to-operate analyses, and counsel clients on monetizing strategies for patent portfolios.
Patent – Post-Grant Proceedings
The U.S. Patent & Trademark Office (“USPTO”) has emerged as both an offensive and defensive tool in mitigating expensive and protracted district court litigation. A number of procedures exist at the USPTO and its adjudicative body, the Patent Trial and Appeal Board (“PTAB”), to challenge or refine issued patents, including inter partes review (“IPR”), covered business method review (“CBM”), post-grant review (“PGR”), ex parte reexamination, supplemental examination, and patent reissue.
Taking full advantage of these options can bolster any offensive or defensive patent strategy. Our IP practice group’s seasoned patent litigators and practitioners work with clients to develop innovative patent strategies that are business-focused and cost effective. Post-grant proceedings can be a tool for patent holders to improve the quality and strength of patent portfolios in advance of business transactions or litigation campaigns. For defendants, these proceedings have emerged as an effective alternative to costly and uncertain patent litigation.
Our team is well versed in patent examination and litigation before the USPTO, federal courts, and the International Trade Commission, providing the foundation and tools to foresee problems and formulate solutions. Team members hold undergraduate and graduate degrees in engineering, computer science, medicine, physical sciences, and life sciences. Moreover, our lawyers have patent experience in a broad range of technologies, from aerospace, telecom, and gaming to pharmaceuticals. This comprehensive technical expertise and strategic foresight enable our attorneys to be effective client advocates in all of the USPTO post-grant proceedings described below.
Patent owners and prospective challengers have a number of post-grant options, including the following:
Inter Partes Review (“IPR”)
IPR is a proceeding conducted before the PTAB to review the patentability of patent claims based only on anticipation and obviousness grounds, and then only on the basis of prior art consisting of patents or printed publications.
Post-Grant Review (“PGR”)
PGR is a proceeding conducted at the PTAB to review the patentability of claims in a patent on broader grounds than an inter partes review, including failure to comply with written description, enablement, or patent eligibility requirements, and can also rely on evidence of public use, on-sale activity, or other public disclosures; however, PGR rules impose a limited filing window (must be filed within nine months of the issuance or reissuance of the patent).
Covered Business Method (“CBM”) Review
CBM review is a proceeding conducted at the PTAB to review the patentability of claims in a covered business method patent, which employs the standards and procedures of a post-grant review, but has notable differences (e.g., there has to be a formal allegation of infringement, and PGR cannot be available).
Ex Parte Reexamination
Ex parte reexamination is a proceeding in which the requester (most often a third party) may re-examine an issued patent based on prior patents and printed publications, at any time during the enforceability of a patent. The requester initially bears the burden of showing that the submitted prior art establishes a substantial new question of patentability, after which the USPTO will commence the reexamination process. From that point on, the ex parte reexamination proceeding will, for the most part, involve only the patent owner and the USPTO.
Supplemental examination is filed by a patent holder and asks the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent,” which is not limited to patents or printed publications. The standard and procedure otherwise substantially mimics that of ex parte reexamination.
Reissue is available as a procedure to correct errors in an issued patent where the error renders the patent wholly or partially inoperable or invalid. Patent reissue can address errors and issues relating to utility, written description, or enablement, whereas patent reexamination only reaches issues of novelty and obviousness. Further, patent reissue may allow for broadening of claim scope for a limited time after issuance.
Privacy and Data Security
As the online marketplace continues to grow, companies throughout the world are facing increasingly strict – and often inconsistent – regulations regarding the acquisition, use, and protection of personal information.
Our global privacy, data protection, and data security attorneys advise clients on a broad range of privacy and data protection matters, including developing and implementing privacy policies and procedures, privacy-related litigation, regulatory investigations, global compliance, cross-border data transfers, website terms and conditions, social media and other new information technologies, cybersecurity and network intrusion issues, and contractual matters involving privacy and security. We also counsel clients on compliance with regulations such as the TCPA, COPPA, HIPAA, GLBA, and Privacy Shield in the United States and the 95/46/CE Directive and GDPR on privacy and data protection and domestic implementation legislation in European countries. We advise companies in the technology, financial services, telecommunications, consumer products, e-commerce, media, professional services, and healthcare sectors, and help clients develop risk management and privacy and data use policies in compliance with state, national, and international regulatory legislation. Our attorneys conduct privacy and data security due diligence on M&A transactions, including those with cross-border components, negotiate technology license agreements, and assist with cybersecurity audits, cyber-insurance evaluations, and employee security training.
Our group includes attorneys who have achieved designation as Certified Information Privacy Professionals, including in both the U.S. and the E.U., and as a Certified Information Privacy Technologist by the International Association of Privacy Professionals as well as those with advanced degrees in computer information science and engineering. Our attorneys are tech-savvy and have an extensive understanding of privacy and data use legislation on a global scale. They are experienced in guiding clients through data breaches and any resulting litigation and internal investigations, helping them mitigate loss and unfavorable public opinion.