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 intellectual property litigation attorneys 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

KBA Elects Mandy Wilson Decker and Donovan Gibbs II to Leadership Roles

The Kentucky Bar Association (KBA) recently elected two Stites & Harbison, PLLC attorneys to leadership roles in the Intellectual Property (IP) Law Section. Mandy Wilson Decker was elected Chair of the IP Law Section while Donovan D. Gibbs II was elected Vice Chair of the section. Both attorneys will serve a one-year term.

by Stites & Harbison, PLLC July 16, 2024
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2024 List

LOUISVILLE, Ky. (June 20,—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2024 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC July 02, 2024
Client Alerts

News of the Death of Workers’ Jobs at the Virtual Hands of AI is Greatly Exaggerated

Artificial Intelligence (AI) is being touted as having the potential to save humanity or destroy it. On the saving side there is the possibility for drug discoveries, disease (e.g. cancer) diagnosis for early detection and cure, and energy discovery and efficiency. Stephen Weyer takes a look at the world AI in this Stites & Harbison Client

by Stephen J. Weyer June 27, 2024
Client Alerts

USPTO Updates Guidance Due to Federal Circuit’s Adoption of Same Obviousness Test for Utility and Design Patents

On May 21, 2024, the Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348, eliminating the long-established test for proving design patents invalid for being obvious as "improperly rigid" in favor of a more flexible approach. In doing so, it decided the same test for utility patent obviousness applies to design patents. IP attorney Trevor Graves takes a look at the case in this Stites & Harbison Client Alert.

by Trevor T. Graves May 28, 2024
Press Releases

Junior Achievement of Kentuckiana Appoints Donovan D. Gibbs II to Advisory Board

Junior Achievement of Kentuckiana recently appointed Stites & Harbison, PLLC attorney Donovan D. Gibbs II to its Young Professionals Advisory Board.

by Stites & Harbison, PLLC May 22, 2024
Press Releases

Stites & Harbison Earns 2024 Top 10 Listing in Patent Lawyer Magazine

The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s third year being honored.

by Stites & Harbison, PLLC May 10, 2024
Client Alerts

Sixth Circuit Applies Updated Arbitration Waiver Standard

In a published opinion issued on March 27, 2024, the Sixth Circuit applied for the first time the waiver standard announced in the Supreme Court’s 2022 opinion, Morgan v. Sundance, Inc., 596 U.S. 411 (2022), in affirming the denial of a motion to compel arbitration due to the defendant’s extensive participation in the litigation.

by Robin E. McGuffin and Ashley Owens Hopkins April 04, 2024
Press Releases

Benchmark Litigation Selects Stites & Harbison as 2024 Litigation Firm of the Year for Kentucky

LOUISVILLE, Ky.—Benchmark Litigation recently named Stites & Harbison, PLLC as Litigation Firm of the Year for Kentucky at its 2024 Benchmark US Awards Gala. This is the fourth time Stites & Harbison has received the honor.

by Stites & Harbison, PLLC April 03, 2024
Press Releases

Thad Barnes and Michael Denbow Appointed to Lead Stites & Harbison’s Business Litigation Service Group

LOUISVILLE, Ky.—Stites & Harbison, PLLC is pleased to announce that attorneys Thad M. Barnes and Michael Denbow have been appointed to Co-Chair the firm’s Business Litigation Service Group. Each attorney will continue their diverse legal practices in business litigation.

by Stites & Harbison, PLLC March 25, 2024
Events

Navigating Artificial Intelligence in PR and Communications

Date: 3/21/24
Time: 11:30 a.m. - 1:00 p.m.

Flash Cube Building, 9300 Shelbyville Road, 2nd Floor Community Room, Louisville, KY

The March PRSA Program entitled "Navigating Artificial Intelligence in PR and Communications," is a panel discussion surrounding the utilization of AI in communications and will feature Stites & Harbison IP attorney, Nick Stewart, who is a Registered Patent Attorney.

Gary N. Stewart (Nick) March 08, 2024
Press Releases

2024 WTR 1000 Recognizes Stites & Harbison’s Trademark Practice

LOUISVILLE, Ky.—World Trademark Review (WTR) has recognized Stites & Harbison, PLLC and four attorneys in the 2024 edition of WTR 1000 – The World’s Leading Trademark Professionals.

by Stites & Harbison, PLLC February 16, 2024
Client Alerts

Is That Tattoo Infringing? The Complicated Copyright Questions Surrounding Tattoos

Tattoos have been at the core of several copyright cases over the last few years. One of the earliest well-known examples was a suit by Mike Tyson’s tattoo artist over the use of Tyson’s face tattoo design in the movie The Hangover Part II, which settled out of court in 2011. However, several more recently undecided cases have raised issues tied to tattoos and copyright infringement. TJ Mihill takes a look at this issue in the latest Stites & Harbison Client Alert.

by Thomas J. Mihill (TJ) February 15, 2024
Press Releases

Stites & Harbison Welcomes Donovan D. Gibbs II to the Louisville Office

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Donovan D. Gibbs II to the firm based in the Louisville, Ky., office. He joins the Intellectual Property & Technology Service Group.

by Stites & Harbison, PLLC January 29, 2024
Events

2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)

Date: 1/31/24
Time: 12:00 p.m. - 2:00 p.m.

401 Commerce Street, Suite 800, Nashville, TN 37219

IP attorney Alex MacKay will co-host this roundtable in the firm's Nashville office on January 31, 2024.

Alexandra MacKay January 23, 2024
Client Alerts

USPTO Issues Enablement Guidelines Following Amgen v. Sanofi

On January 10, 2024, the United States Patent and Trademark Office (USPTO) released Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al. The Guidelines are intended to inform U.S. patent examiners and the public about the process to be followed when assessing whether a claim satisfies the enablement requirement under 35 U.S.C. 112(a), after the U.S. Supreme Court’s holding in Amgen v. Sanofi. IP attorney Patrick Torre takes a look at the guidelines in this Stites & Harbison Client Alert.

by Patrick M. Torre January 17, 2024
Client Alerts

Gifts from the USPTO for Prospective Patentees Heading into the New Year

Irrespective of the Naughty and Nice List, the United States Patent and Trademark Office (“USPTO”) has rolled out a series of programs over the course of 2023 that may serve to make the spirits of the inventors in your lives merrier and brighter heading into the new year. IP attorney Nick Stewart takes a look at those programs in this Stites & Harbison Client Alert.

by Gary N. Stewart (Nick) December 27, 2023
Client Alerts

Monetizing Intellectual Property: The Basics and Benefits of Licensing

Owners of intellectual property (“IP”) rights associated with inventions and creative works have discovered that “licensing” is an effective way to monetize their IP. IP attorney Scot Duval takes a look at the ways to do that in this Stites & Harbison Client Alert.

by Scot A. Duvall December 18, 2023
Client Alerts

The Basics of Trademark Law and the Benefits of Federal Registration

A trademark is any word, phrase, symbol, logo, or design – or any combination – used to identify and distinguish the source of the goods or services of one party from those of others. A trademark may be a word or words (APPLE or POLO), logos or designs (the Nike swoosh or Adidas’ three stripes), phrases (IT’S FINGER LICKIN’ GOOD or I’M LOVIN’ IT), shapes of containers or other trade dress (the BLANTON’S bourbon bottle shape), or even a color (HOME DEPOT orange) or sound (NBC chimes). IP attorney Trevor Graves takes a look at the benefits of registration in this Stites & Harbison Client Alert.

by Trevor T. Graves December 14, 2023
Client Alerts

The Evolution of "Hybrid": Post-COVID Collaborative Working

Stephen Weyer takes a look at what the word "hybrid" means in today's world in this Stites & Harbison Client Alert.

by Stephen J. Weyer November 03, 2023
Client Alerts

What 70% of Americans Don’t Understand About Intellectual Property

Mandy Decker takes a look at the different types of intellectual property in this Stites & Harbison Client Alert.

by Mandy Wilson Decker October 26, 2023