Litigation

Our goal is to utilize the most effective and efficient measures to fully protect our clients’ intellectual property rights and to defend our clients against assertions of intellectual property rights by others.

At Oliff PLC, we recognize the expense and burden of litigation, and therefore try whenever possible to achieve our clients’ goals without resort to litigation.  We have often succeeded, for example, merely through the use of cease-and-desist letters, pre-litigation negotiations, alternative dispute resolution and licensing.  However, there are times when competitors will not readily stop their infringing activities, or will not readily stop their threats or assertions against our clients’ lawful business activities.  In those instances, litigation often is the best — if not the only — viable solution.  If so, we do not hesitate to recommend litigation, and we have the experience, technology and personnel to handle it ably and cost-effectively.

Substantial Experience

Our litigation practice is long-established and growing in response to client demand.  Since we opened our firm in 1983, we have litigated extensively on behalf of our clients in courts and other tribunals throughout the United States, including:

  • all of the major District Courts;
  • the Court of Appeals for the Federal Circuit;
  • the International Trade Commission;
  • the Court of Federal Claims;
  • the Board of Patent Appeals and Interferences;
  • the Patent Trial and Appeal Board; and
  • the Trademark Trial and Appeal Board.

 map (Use this one)

Blue represents states in which we have litigated.

 Our main office is just across the river from the U.S. Court of Appeals for the Federal Circuit, where all patent appeals and appeals from the Patent and Trademark Office (PTO) are heard.  We are also just up the street from the U.S. District Court for the Eastern District of Virginia (the “Rocket Docket”), where we have been involved in many cases, both as primary counsel and as local resident counsel.  Our office is also very close to the PTO, where we have handled numerous inter partes matters, including patent interferences, inter partes reexaminations and reviews, and trademark opposition and cancellation proceedings.

Almost all of our members and senior counsel are experienced litigators.  Jim Oliff has led and tried numerous cases since his initial foray into litigation over 35 years ago as a member of the legal defense team in a 14‑month antitrust jury trial involving photocopiers.  Bill Berridge has been involved with numerous litigation matters over his more than 30-year legal career, and has developed a particular expertise in interference practice.  Kirk Hudson has been intimately involved with litigation and other related complex opinion and counseling activities for his entire 37-year legal career.  Ed Walker has led and tried numerous cases during his 30 years with the firm and his 6 years with the Ohio Attorney General prior to joining the firm.  Bill Utermohlen and John O’Meara have respectively spent over 30 years in litigation practices.  Pete Ewald and Aaron Webb have both spent over 5 years in litigation practice, and Aaron interned at the U.S. International Trade Commission (ITC).  Jesse Collier has developed extensive expertise in the new post-grant review and inter partes review proceedings.  Mario Costantino, Joel Armstrong, Chris Brown, and Gang Luo are primarily involved with patent prosecution, opinion and counseling activities, but each has nonetheless participated in litigation, including complex patent infringement trials, interferences and inter partes reexaminations.

The firm’s members have worked closely together on litigation matters over many years.  Particularly in view of the stakes of litigation, we strongly believe in obtaining several members’ views before making critical litigation strategy decisions, and we regularly do so.

In addition, we have maintained continuity by capitalizing on the litigation experience of retired members Tom Pardini and Paul Tsou in their continuing roles as “of counsel” to the firm.

In view of our ever-increasing litigation activities, we have several senior‑level litigation attorneys in our firm as associates and in-house “of counsel.”  Each of these senior-level attorneys teams with one or more of the members on the firm’s various active litigations, and each brings a unique perspective to the analysis of complex litigation issues.

In addition to our members and senior-level attorneys, many of our younger attorneys assist with litigation in addition to their other responsibilities.  By way of example, many of our associate attorneys are presently or recently have been assisting with various aspects of litigation, such as document productions, written and deposition discovery and motion practice.  We also have a very able and experienced group of paralegals — one or more assigned to each case — who maintain our litigation files, establish and maintain our document databases and litigation technology, and assist our attorneys with the full range of litigation tasks.

Growing Diverse Practice

We have represented plaintiffs and defendants in patent infringement and declaratory judgment actions involving the following technologies, among others:

  • access flooring;
  • aircraft passenger seats;
  • aircraft turbine engines;
  • automatic doors;
  • baking ovens;
  • cable television security;
  • carpet manufacturing equipment;
  • dental radiology equipment;
  • digital calipers;
  • digital high speed audio and video duplication;
  • electrical connectors;
  • facsimile machines;
  • flange facing machines;
  • grooming products;
  • heavy duty scrap shears;
  • industrial furnaces;
  • industrial laundry equipment;
  • loss-in-weight feeding equipment;
  • medical casting and splinting products;
  • meter-based electrical surge suppressors;
  • microlithography;
  • miniature electronic transponders;
  • on-site fabricated buildings;
  • optical cable;
  • optical metrology;
  • personal digital assistants;
  • pharmaceuticals;
  • photocopiers;
  • photo-optics;
  • projectors;
  • rotary calibration devices;
  • semiconductor chip manufacturing;
  • semiconductor chip placement equipment;
  • sporting goods;
  • steelmaking;
  • surgical devices;
  • tank leak detection systems;
  • tape printing machines;
  • touch trigger probes; and
  • video quality control devices.

We have represented plaintiffs and defendants in trademark and trade dress infringement actions involving the following products and services, among others:

  • cookware;
  • gasoline service stations;
  • injection molded products;
  • jewelry;
  • medical devices;
  • musical instruments;
  • oil candles;
  • personal grooming products;
  • restaurant services;
  • shoes;
  • sporting goods;
  • videos and laser discs;
  • vitamins;
  • watches; and
  • writing instruments.

We have also represented clients in litigation matters involving:

  • antitrust violations;
  • breach of license agreements;
  • copyright infringement;
  • fraud and inequitable conduct;
  • interference issues;
  • ownership of intellectual property;
  • trade secret misappropriation;
  • trademark registration; and
  • unfair competition.

From the many cases that we have handled, we have developed expertise in all phases of litigation.  Among our numerous other experiences, we have:

  • counseled our clients on litigation and settlement strategy;
  • coordinated extensive pre-litigation searches and investigations;
  • provided opinions relating to infringement, validity, enforceability, damages and other issues;
  • filed and responded to complaints and counterclaims in state and federal courts and the International Trade Commission;
  • obtained and defended against requests for temporary restraining orders and preliminary injunctions;
  • prepared, served and responded to initial disclosures, interrogatories, admission requests and document requests;
  • produced and received documents and created voluminous document databases;
  • taken and defended fact and expert depositions;
  • located, retained and prepared experts and developed their expert reports;
  • filed and opposed motions, including motions to dismiss and motions for summary judgment;
  • conducted and participated in settlement negotiations in both informal discussions and court-supervised conferences;
  • conducted and participated in alternative dispute resolution procedures;
  • prepared for and tried cases before judges and juries in state and federal courts and the International Trade Commission, including the D.C. “Courtroom of the Future;” and
  • prosecuted and defended appeals of trial court judgments.

Achievements

In the intellectual property field, only a small percentage of cases proceed through trial and appeal.  Most cases are resolved prior to trial, typically after the parties have learned the strengths and weaknesses of the opposing positions through discovery.  Thus, a firm’s litigation success can only be accurately measured by what it has achieved on behalf of its clients.

The results of our litigation efforts for our clients have included:

  • favorable settlements resulting in, for example: consent injunctions and payments of damages by infringers of our clients’ intellectual property rights; and dismissals of allegations against and granting of licenses to our clients accused of infringement;
  • favorable interlocutory and final trial court bench decisions and jury verdicts;
  • favorable appellate decisions of the Courts of Appeals for the Federal and Fifth Circuits;
  • favorable interference and reexamination decisions of the Patent Office; and
  • favorable cancellation and opposition decisions of the Trademark Office.

For Further Information

For biographical information about our attorneys, please refer to our Attorney Profiles section on our firm’s web site.  For more information about our litigation practice, or to discuss your particular litigation need, please contact one of our members.