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
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Articles

Looking Through the Leadership Lens: Trademark Office Leadership in an Evolving Landscape

INTA recently premiered its first webcast in its “Looking Through the Leadership Lens” series, which features industry officials providing unique perspectives on leadership and development topics. INTA News article by Mari-Elise Paul.

by Mari-Elise Paul April 14, 2021
Articles

International Women’s Day: ‘choosing to challenge’ and the fight for gender equality

Leading female attorneys share their thoughts with WIPR about what the campaign theme means to them, the issues affecting women in IP and their efforts to tackle them. Louisville office IP attorney Mari-Elise Paul is included in this article.

by Mari-Elise Paul March 09, 2021
Trademarkology

Is Peloton Spinning Its Wheels? Peloton Petitions to Cancel “SPINNING” Registrations

Peloton Interactive, Inc. cranked up the resistance against Mad Dogg Athletics, Inc.’s tactics of aggressively enforcing its registrations of SPIN and SPINNING. Pressing down on the red button, so-to-speak, Peloton filed petitions to cancel Mad Dogg’s registrations of SPINNING, SPIN, and SPIN PILATES on the ground that “SPINNING” and “SPIN” are generic.

by Mari-Elise Paul February 19, 2021
Press Releases

Morgan Ward Appointed as Chair of Landmarks and Preservation Districts Commission

LOUISVILLE, Ky.—Louisville Mayor Greg Fischer has appointed Stites & Harbison, PLLC attorney Morgan Ward as Chair of Louisville Metro Government’s Historic Landmarks and Preservation Districts Commission.

by Stites & Harbison, PLLC January 25, 2021
Trademarkology

Aspects of the Trademark Modernization Act: Letters of Protest

On December 27, 2020, the Trademark Modernization Act of 2020 (the “Act”) was signed into law. The Act introduces a number of changes to trademark law that may be of interest to brand owners. This post will examine just one, and future posts will examine others.

by Alexandra MacKay January 25, 2021
Press Releases

Legal Aid Society Honors Morgan Ward with Outstanding Volunteer Award for 2020

LOUISVILLE, Ky.—The Legal Aid Society has recognized Stites & Harbison, PLLC attorney Morgan Ward with its Outstanding Volunteer Award for 2020. Ward was one of three individuals honored with the award this year.

by Stites & Harbison, PLLC November 10, 2020
Press Releases

Stites & Harbison Welcomes Abigail Clark

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Abigail E. Clark to the firm’s Louisville, Ky., office.

by Stites & Harbison, PLLC October 21, 2020
Events

Tech Transfer: Methods That Work, IIPCC Fall IP Experts Panel Series

Date: 10/6/20
Time: 12:00 p.m. - 1:00 p.m.

Join Mandy Wilson Decker in the third of this four-session webinar. Mandy will join a panel discussing tech transfer on October 6, 2020.

Mandy Wilson Decker September 22, 2020
Events

Protecting Your Business’s Intellectual Property

Date: 9/24/20
Time: 10:00 a.m. - 11:00 a.m.

WEBINAR

Intellectual Property attorney Nick Stewart leads an in-depth discussion on protecting your IP and business's assets through patents, trademarks, copyrights, and trade secrets in this online event on September 24, 2020.

Gary N. Stewart (Nick) September 15, 2020
Press Releases

Norton Children’s Hospital Foundation Appoints Mari-Elise Paul to its Board of Trustees

LOUISVILLE, Ky.—Norton Children’s Hospital Foundation recently appointed Stites & Harbison, PLLC attorney Mari-Elise Paul to its Board of Trustees. She will serve a three-year term.

by Mari-Elise Paul August 11, 2020
Events

Kentucky Engineering Law

Date: 8/31/20
Time: 8:00 a.m. - 4:00 p.m.

WEBINAR

Intellectual Property attorney Nick Stewart will present at this Webinar for Kentucky Engineering Law on August 31, 2020.

Gary N. Stewart (Nick) July 27, 2020
Client Alerts

Supreme Court Rules That Generic Terms + .com May Be Capable of Federal Trademark Registration

On June 30, 2020, the Supreme Court decided United States Patent and Trademark Office v. Booking.com B.V., Case No. 19-46, 589 U.S. ____ (June 30, 2020) held, with only one dissent, that it is possible for a domain name comprised of a generic term appended by “.com” to qualify for federal trademark registration.

by Mari-Elise Paul and Alexandra MacKay July 16, 2020
Client Alerts

Lucky Brand Gets Lucky Before the Supreme Court

On Wednesday, May 14, 2020, the United States Supreme Court unanimously held that the doctrine of defense preclusion does not apply in a case between two parties when the earlier case between the parties involved different marks and different conduct occurring at different times.

by Alexandra MacKay and Mari-Elise Paul June 01, 2020
Articles

Fed. Circ. Won't Revive Solenis Paper-Making Patent

Law360 (May 26, 2020, 9:34 PM EDT) -- The Federal Circuit on Tuesday upheld a Patent Trial and Appeal Board decision that struck down a Solenis Technologies LP paper-making patent for being obvious, finding that the board properly analyzed the claims and backed its conclusions with "substantial evidence."

by Tiffany Hu May 26, 2020
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2020 List

LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2020 “IP Stars” list. The publication recognizes the most highly regarded intellectual property attorneys in the U.S.

by Joel T. Beres, Mandy Wilson Decker, Alexandra MacKay, Richard S. Myers Jr., David W. Nagle Jr., and B. Aaron Schulman May 06, 2020
Press Releases

Chambers USA 2020 Honors 19 Stites & Harbison Attorneys

LOUISVILLE, Ky.—Chambers USA selected 19 Stites & Harbison, PLLC attorneys in Kentucky and Tennessee for inclusion in their 2020 guide.

by Stites & Harbison, PLLC May 05, 2020
Client Alerts

Supreme Court Rules Proof of Willfulness Not a Precondition to Profits in Trademark Infringement Actions

On April 23, 2020, the United States Supreme Court resolved a circuit split and held that plaintiffs in Lanham Act trademark infringement cases do not need to show the defendant infringed willfully in order to recover the defendant’s profits.

by John W. Scruton and Mari-Elise Paul April 29, 2020
Events

Spring Cleaning for Your Intellectual Property

Date: 4/30/20
Time: 12:00 p.m. - 1:00 p.m.

WEBINAR

Attorneys John Scruton and Nick Stewart will discuss suggestions on how to make your business's IP portfolio even better in 2020.

John W. Scruton and Gary N. Stewart (Nick) April 27, 2020