When it comes to promoting and protecting the value of business-critical intellectual property, some of the world’s most innovative companies turn to Kaye Scholer. Our proactive Intellectual Property Department effectively and efficiently resolves disputes, both in and out of the courtroom, with a broad base of skills and experience and a deep bench of IP counselors and trial lawyers. We advise clients along the life cycle of their most important assets, from advising on trade secrets protection to defending patent litigation, and prosecuting and defending high-stakes trademark, false advertising and copyright lawsuits.
|Michael J. Malecek
In the Market
- Miller to Provide Litigation Perspective on Patent Prosecution at PLI Seminar August 10–11, 2015 • Speaking Engagements
- Miller to Speak at Fundamentals of Patent Prosecution 2015 Conference July 8 • Events
- IP Partner Deborah Fishman in the Media on SCOTUS’ Kimble v. Marvel Decision June 23, 2015 • Media Mentions
- Kaye Scholer Advises Fashion Tech Startup on Major Deal with Macy’s June 23 • Client Successes
- Kaye Scholer Secures Significant PTAB Decision for Olympus June 22 • Client Successes
- IAM Patent 1000 2015 Recognizes Kaye Scholer IP Practice and Leading Practitioners June 19, 2015 • Recognitions
- Kaye Scholer Partners Chosen as “Best of the Best USA” by Expert Guides June 18, 2015 • Recognitions
- Beware Increased Privacy and Data Security Scrutiny in M&A June 16, 2015 • Articles
- Tanenbaum Talks Challenges on the Road to Data Monetization with Dataversity June 11, 2015 • Media Mentions
The Numbers: Our Accomplishments
- 1 in 3 Ratio of top 10 pharma companies that we represent
- 4 IPR victories before the PTO in the last year
- 20+ Number of brand name drugs we ‘ve defended in ANDA litigations against generic manufacturers
- 45 Years of pioneering representation
- 100 Percentage increase in the number of attorneys in our Silicon Valley office (1Q2015)
Capabilities: How We Do It
- Strategic development: We provide advice at the earliest stages to protect a client’s interests if the matter ends up in litigation
- Subject matter experience: Our team has advanced and/or terminal degrees in chemistry, biochemistry, engineering or computer science, which allows us to quickly grasp the most sophisticated scientific concepts and make them understandable to judges and juries.
- Proven track record: We have successfully tried exceptionally complicated patent infringement cases, particularly in the life sciences and technology sectors
- Cutting-edge strategies: We resolve our clients’ most challenging IP and advertising problems, including counterfeiting, grey goods, trademark and copyright infringement on the Internet and in digital media and global trademark prosecution and enforcement
- Innovative adaptation: Our clients are at the forefronts of their respective industries and we stay at the top of our game. We have demonstrated a rapidly growing success rate in the new contested proceedings before the PTO, and we stay ahead of the curve on litigation and public policy issues related to cybersecurity by working closely with our transactional practices and our Global Cybersecurity & Privacy Group.
- Multidisciplinary approach for singular outcomes: We utilize our strong transactional experience, deep understanding of the IT & technology sector, and technical acumen to help companies negotiate and implement best practices and assess and evaluate the value and merit of technologies
Aviation & Aerospace
- Ateliers de la Haute-Garonne [and its fully owned subsidiary F2C2 Systems SAS (AHG)]: Obtained a $15 million verdict in favor of client in a case alleging patent infringement, trade dress infringement, unfair competition and intentional interference with prospective economic advantage against German rival Broetje Automation and its American subsidiary Broetje Automation USA.
- Bristol-Myers Squibb: In Hatch-Waxman action brought in the District of New Jersey relating to the drug Sprycel® for treating chronic myelogenous leukemia. The case settled in September 2013 after a Markman ruling, in which we won on all 15 disputed terms as the Court adopted virtually all of the constructions advocated by BMS.
- Complete Genomics: In a matter named one of the year’s “Top Verdicts” by The Daily Journal, secured a total victory in a patent infringement suit related to sequencing by ligation, thereby successfully settling all outstanding litigations brought by Illumina and allowing our client to focus its vision of revolutionizing medicine through the use of whole genome sequencing.
- Pfizer: Lead counsel in preserving patent exclusivity for its blockbuster drug Viagra®, defeating a challenge by Teva Pharmaceuticals USA Inc., which sought FDA approval to sell a generic version of the drug. After a 12-day bench trial, the US District Court for the Eastern District of Virginia ruled that a Pfizer patent claiming the use of Viagra® to treat erectile dysfunction would be infringed by Teva’s proposed copy. The court rejected Teva’s arguments that the Pfizer patent is invalid and unenforceable. The case is on appeal to the Federal Circuit.
- Avery Dennison: In patent infringement, tortious interference and false advertising actions brought by Continental Datalabel, Inc. relating to the design and sale of Avery’s self-adhesive, EASY PEEL® labels. After more than three years of litigation, the district court granted summary judgment to Avery, dismissing Continental’s claims of tortious interference with business expectation and false advertising under the Lanham Act. In April 2013, the district court entered final judgment in favor of our client.
- Hershey’s: Played significant role in US trademark registration and enforcement work, including with respect to registrations and disputes (both in federal court and at the Trademark Trial and Appeal Board (TTAB)) involving Hershey’s most valuable brands such as the HERSHEY’S®, REESE’S® and KISSES® marks, and related trade dresses such as the orange trade dress of REESE’S products, the conical shape of KISSES’ chocolates, etc.
- Experian: In several infringement actions involving its marks FreeCreditReport.com and Plus Score. Recently obtained seven-figure jury verdict after five-week trial on behalf of Experian subsidiary for cybersquatting and trademark infringement of FreeCreditReport.com® trademark. Obtained complete defense verdict on counterclaims for cancellation based on alleged genericism, fraud on the Patent and Trademark Office, and antitrust violations.
- Nexans Inc.: Secured several wins for client in multifront patent dispute with opponent Belden Inc. In addition to those victories in the District Court, we achieved four inter partes review (IPR) victories before the US Patent Trial and Appeal Board (PTAB) on behalf of Nexans Inc. and Berk-Tek.
- Google and Motorola: Serving as lead counsel on several patent cases asserting infringement with respect to various aspects of Google’s critical core search and advertising functions, as well as cases accusing Android functionality.
- Time Warner Cable: Acted as lead counsel for all defendants in a multidistrict litigation patent infringement suit brought by Rembrandt Technologies on a patent that Rembrandt alleges covers the FCC-mandated standard for digital over-the-air broadcast television. We succeeded in obtaining a favorable claim construction ruling resulting in a stipulation of noninfringement. Kaye Scholer then represented Time Warner Cable in the appeal. In September 2012, the appeals court affirmed the lower court’s finding, scoring a major victory for our client and the dozens of other defendants.