Intellectual Property & Technology

Intellectual Property Litigation

Stites & Harbison’s IPT Group has extensive experience litigating intellectual property matters before federal and state courts throughout the nation. This experience also extends to all levels of appeals, including the United States Supreme Court. Our firm's litigators aggressively protect the intellectual property assets of our clients, and defend those who have been wrongfully accused of infringing others’ intellectual property rights. The firm has handled a number of significant and well-known intellectual property disputes and has served as lead counsel in intellectual property litigation in more than 30 states. Below are examples of the firm's experience:

Patent Infringement Litigation

  • Representing a manufacturer of coolant compounds in a patent infringement litigation against a competitor that resulted in a $40 million royalty payment to our client by the defendant
  • Representing a patent holder in the lighting industry in a patent infringement trial that resulted in a multi-million-dollar jury verdict
  • Defending a developer of financial software and systems in a patent infringement trial in the U.S. District Court for the Eastern District of Texas, which resulted in a judgment as a matter of law in favor of our client
  • Defending a toner cartridge manufacturer in an action brought by one of the world's largest printer manufacturers
  • Defending a supplier of accelerometers in suit brought by patent holding company against several large automotive manufacturers
  • Defending a national manufacturer of athletic pads in an infringement action brought by a competitor. Litigation was heard by the U.S. Supreme Court and eventually resulted in an award of attorneys' fees to our client.
  • Representing a manufacturer of nacho cheese dispensers in multiple actions against infringers of its patents
  • Defending a manufacturer of cable reels in an infringement action brought by a competitor

Trademark Infringement/Unfair Competition Litigation

  • Defending a local automobile service company against a national oil company's claim of infringement of the INSTANT OIL CHANGE mark
  • Defending a financial company offering variable annuities under the MARQUEE mark that was accused of infringing a bank's MARQUIS mark used for mutual funds
  • Defending a new pizza franchisor accused by a major national franchisor of trade dress infringement
  • Representing a cabinet retailer who owned the SCHEIRICH mark in an infringement action against a homebuilder and its related cabinet company using the SCHIERICH mark with kitchen cabinets
  • Defending a local, family-owned auto parts business using the ADVANCE AUTO mark in an action brought by a major regional chain using the same mark

Copyright Infringement Litigation

  • Representing Microsoft Corporation in several infringement actions against companies who have loaded pirated software onto computers for resale, and against resellers distributing counterfeit software
  • Representing a marketing company in several infringement actions throughout the nation against car dealerships and billboard advertisers who misappropriated a distinctive advertising campaign
  • Defending a credit information agency accused of infringement by a former software provider
  • Representing a dissolved partnership that created and marketed electronic data interface software
  • Representing an architect who was dismissed from a project and whose plans were then misappropriated in creating the final plan for the project
  • Representing an electronics training company whose advertising materials were copied by a competitor
  • Representing a doctor whose scholarly work was infringed in the creation of a monograph for distribution to surgeons
Main Contacts
See more related to Intellectual Property Litigation
Press Releases

Trevor Graves Selected for Leadership Kentucky's Class of 2022

LEXINGTON, Ky.—Leadership Kentucky has selected Stites & Harbison, PLLC attorney Trevor Graves as a member of the 2022 Leadership Kentucky program. This year’s 51-member class will participate in seven three-day sessions from June through December at locations throughout Kentucky.

by Stites & Harbison, PLLC June 28, 2022
Press Releases

Managing IP Selects Mandy Wilson Decker to 2022 “Top 250 Women in IP” List for Eighth Time

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine recently selected Stites & Harbison, PLLC attorney Mandy Wilson Decker to the 2022 edition of Managing IP’s “Top 250 Women in IP.” This is the eighth time Decker has been honored on this list, and she is the only attorney honored from Kentucky.

by Stites & Harbison, PLLC June 13, 2022
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2022 List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2022 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC June 08, 2022
Press Releases

Virginia Super Lawyers 2022 Honors John Teresinski

ALEXANDRIA, Va.—The 2022 edition of Virginia Super Lawyers recently honored Stites & Harbison, PLLC attorney John Teresinski. He was named to the Rising Stars list.

by Stites & Harbison, PLLC June 03, 2022
Press Releases

Stites & Harbison Named to 2022 Top 10 Patent Firms in North America – South List

LOUISVILLE, Ky.—The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2022 Top 10 Patent Firms and IP Practices in North America – South list.

by Stites & Harbison, PLLC May 16, 2022
Client Alerts

Wait . . . What About Trade Secrets?

When one seeks to protect one’s intellectual property, patents, trademarks and copyrights immediately come to mind. Often given short shrift is the "forgotten stepchild" —trade secrets. Trade secrets may encompass a wide range of business information that (a) has value because it is not generally known in the trade and (b) is subject to reasonable efforts to preserve its confidentiality. When considering trade secrets, “business information” should be given a very broad definition and may include, but is not necessarily limited to, processes, procedures, research projects, nonpublic company documents (relating to, for example, recruiting, accounting, financial information and legal information), drawings, blueprints, laboratory notebooks, test data, training manuals, customer information and supplier information.

by Warren D. Schickli May 02, 2022
Events

2022 Business Litigation and Intellectual Property Litigation Super Conference

Date: 3/21/22 - 3/23/22

Hyatt Regency Houston, 1200 Louisiana Street, Houston, Texas 77002

Atlanta office attorney T.J. Mihill will be a speaker at this conference being held in Houston, Texas, March 21-23, 2022.

Thomas J. Mihill (TJ) March 15, 2022
Client Alerts

Europe Continues Progress Toward Unitary Patent and Unified Patent Court

For decades, inventors have been able to file a single patent application in the European Patent Office (“EPO”) in order to pursue protection across multiple countries in Europe. However, at the end of the examination process, a patent application granted by the EPO still must be validated in each of the countries in which a patent owner wishes to secure enforceable patent rights.

by David W. Nagle Jr. March 09, 2022
Client Alerts

Decoding the Crypto Brand Super Bowl Commercials

Based on commercials that aired during Super Bowl LVI, crypto brands have officially moved from the fringes to the mainstream. But the crypto ads in this prime time space didn’t do much to explain the underlying products and services, especially if the viewers were not already immersed in Web3.

by Mandy Wilson Decker February 18, 2022
Press Releases

Morgan Ward Appointed to Kentucky Personnel Board

LOUISVILLE, Ky.—Governor Andy Beshear has appointed Stites & Harbison, PLLC attorney T. Morgan Ward, Jr. to the Kentucky Personnel Board. Ward’s term will end in January 2026.

by Stites & Harbison, PLLC January 28, 2022
Press Releases

Stites & Harbison Continues Expansion in Atlanta – Lands Commercial Litigation Team of 12 from Copeland, Stair, Kingma & Lovell LLP

ATLANTA—Stites & Harbison, PLLC is pleased to announce that 12 attorneys from Copeland, Stair, Kingma & Lovell, LLP (CSKL), including named Partner Johannes S. Kingma, Managing Partner Shannon M. Sprinkle and General Counsel William D. Newcomb, have joined Stites & Harbison’s Atlanta office.

by Stites & Harbison, PLLC January 24, 2022
Client Alerts

Defendants Caught Red-Handed in Patent Infringement Case Get Five Months of Damages Wiped Out for Patentee’s Failure to Mark Its Products

In early September of 2021, the Court of Appeals for the Federal Circuit clarified the notice requirement of 35 U.S.C. § 287. Patentee’s seeking to recover damages on unmarked goods must ensure their notice to a potential infringer is an actual notice of infringement and not merely notice of a patent.

by Stites & Harbison, PLLC December 09, 2021
Articles

Heavy Meta: Is Rebranding Worth All This?

Article by IP attorney Mari-Elise Paul in the Louisville Bar Association's Bench & Bar discussing rebranding.

by Mari-Elise Paul December 02, 2021
Articles

Intellectually Speaking: As more startups come online in Louisville, the need for advice on intellectual property increases — which is where lawyers enter the picture

Intellectual property attorney, David Nagle, discusses how startups can best manage the intellectual property process when launching a business.

by David W. Nagle Jr. November 29, 2021
Client Alerts

USPTO Issues Final Rule for Implementation of the Trademark Modernization Act of 2020

The United States Patent and Trademark Office (USPTO) recently published a final rule implementing the Trademark Modernization Act of 2020 (TMA). The TMA amends the federal trademark statute (Lanham Act) in several ways, but the most significant aspect for the business community is the establishment of new ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce has not been made.

by Trevor T. Graves November 23, 2021
Press Releases

Stites & Harbison’s Intellectual Property & Technology Service Group Continues Growing with the Addition of Christina I. Ryan

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Christina I. Ryan as Counsel to the firm based in the Louisville, Ky., office. She joins the Intellectual Property & Technology Service Group.

by Stites & Harbison, PLLC November 22, 2021
Press Releases

Stites & Harbison Welcomes Samuel Raque

NASHVILLE, Tenn.—Stites & Harbison, PLLC welcomes attorney Samuel A. Raque to the firm’s Nashville, Tenn., office. He joins the Intellectual Property & Technology Service Group as a Registered Patent Attorney.

by Stites & Harbison, PLLC October 29, 2021
Articles

Trademark Modernization Act Provides Useful tools for Brand Owners of All Sizes

The Trademark Modernization Act of 2020 (TMA) introduced several amendments to federal trademark statutes, known as the Lanham Act, that should prove favorable to brand owners when the TMA becomes effective on December 27th.

by Michael S. Hargis October 04, 2021
Client Alerts

Supreme Court Provides Additional Guidance on Assignor Estoppel in Patent Litigation

Assignor estoppel is an equity-based doctrine that can be invoked during the course of patent litigation to prevent an assignor, after assigning their interests to a patent to another, from later asserting that the patent is actually invalid.

by Gary N. Stewart (Nick) September 28, 2021
Events

AIPLA's Eleventh Annual Trademark Boot Camp

Date: 8/30/21 - 9/2/21

Webinar

IP attorney Joel Beres is set to speak at the AIPLA's 11th Annual Trademark Boot Camp webinar Aug. 30-Sept.2, 2021.

Joel T. Beres August 19, 2021