Intellectual Property

Key member of trial team that secured an invalidity ruling with respect to a patent in ANDA litigation concerning a steroid used to treat asthma.*

Key member of team that secured victory on behalf of pharmaceutical company at the District Court and Federal Circuit levels, not only defeating a preliminary injunction motion but invalidating two patents upon summary judgment relating to a drug used to treat or prevent osteoporosis.*

Key member of trial team for a pharmaceutical company in ANDA litigation and on appeal with respect to numerous patents concerning an HIV antiviral.*

Represented a pharmaceutical company in ANDA litigation involving numerous patents directed to a drug used to treat iron deficiency anemia in patients with chronic kidney disease (CKD).*

Represented pharmaceutical company in ANDA litigation involving formulation and device patents relating to a bronchodilator.*

Represented pharmaceutical companies in ANDA litigation involving three polymorph patents relating to a coronary vasodilator used in pharmacologic stress testing.*

Technology Properties Limited v. ZTE Corporation (Fed. Cir. 2019); represented supplier of communications devices in defending favorable PTAB ruling, resulting in affirmance of summary judgment of non-infringement.*

Certain LTE- and 3G-Compliant Cellular Communications Devices (ITC Inv. No. 337-TA-1138, 2020); defended a supplier of cellular communications devices in this investigation, resulting in a finding of no infringement.*

Werner Co. v. Louisville Ladder, Inc. (PTAB IPR2019-336, 2020); represented a leading ladder manufacturer as petitioner in this IPR proceeding challenging a competitor’s patent, resulting in cancelation of all challenged claims.*

Louisville Ladder, Inc. v. Werner Co. (Fed. Cir. 2021); represented a leading ladder manufacturer on competitor’s appeal from a PTAB decision canceling all challenged claims, resulting in affirmance of the PTAB’s favorable decision.*

Evolved Wireless, LLC v. ZTE Corporation (D. Del. 2021); defended supplier of cellular communications devices in this patent infringement case, resulting in favorable resolution after the PTAB canceled all asserted claims from four of the five asserted patents.*

TrickleStar Inc. v. AM Conservation Group, Inc. (N.D. Ill. 2021); defendant manufacturer of advanced powerstrips against claims of patent and trademark infringement, resulting in favorable resolution.*

CoolTVNetwork.com v. Blackboard Inc. (D. Del. 2021); defended a provider of online collaboration services against in this patent infringement case filed by a non-practicing entity, resulting in favorable claim construction and a summary finding of invalidity as to all asserted claims.*

Wakefield v. Blackboard, Inc. (Fed. Cir. 2022); represented a provider of online collaboration services in defending this appeal filed by a non-practicing entity, favorably resulting in affirmance of the district court’s claim constructions and summary finding.*

INVT SPT LLC v. ITC (Fed. Circ. 2022); represented manufacturer of cellular communications devices in this appeal filed by a non-practicing entity, resulting in affirmance of the ITC’s favorable ruling of non-infringement.*

Certain Cloud-Connected Wood Pellet Grills (ITC Inv. No. 337-TA-1237, 2022); represented a leading manufacturer of wood pellet grills as the complainant in this investigation, resulting in a finding of infringement and issuance of a limited exclusion order.*

Werner Co. v. Louisville Ladder, Inc. (W.D. Ky 2023); represented a leading ladder manufacturer accused of infringing a competitor’s patent, resulting in dismissal of the competitor’s patent infringement claim after successfully challenging the asserted patent claims.*

Certain Semiconductor Devices Having Layered Dummy Fill (ITC Inv. No. 337-TA-1342, 2023); represented a leading manufacturer of imaging sensors as a respondent in this investigation, resulting in favorable resolution and the client paying zero in settlement fees.*

Jawbone Innovations, LLC v. ZTE Corporation (E.D. Tex. 2024); defended a manufacturer of wireless communication devices in this patent infringement action, which resulted in a favorable resolution.*

Class Technologies Inc. v. AK Meeting IP LLC (S.D. Fla. 2024); defended a provider of online collaboration services against patent infringement charges filed by a non-practicing entity, resulting in favorable resolution.*

Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof (ITC Inv. No. 503, 2005); represented respondents ZF Friedrichshafen A.G. and ArvinMeritor, Inc., in this Section 337 patent infringement investigation at the International Trade Commission; in the violation phase of the investigation, the ITC granted respondents’ motion for summary determination with respect to one of the six asserted patents; the ITC also terminated the investigation, at the patent owner’s request, with respect to two other patents and several claims of the remaining three patents; after a ten-day hearing on the merits, the administrative law judge ruled in favor of the respondents on all but one claim of one patent; the respondents designed around the one remaining claim, and Charles helped them work with Customs and Border Protection to ensure continuous importation of the redesigned product; when the patent owner brought an enforcement action, Charles helped ZF and ArvinMeritor become the first respondents ever to defend successfully against such a proceeding at the ITC; as a result of this victory, ZF and ArvinMeritor were able to continue the importation and sale of the redesigned product without interruption.*

ZF Friedrichshafen A.G. and ArvinMeritor, Inc., in this patent infringement action involving automated heavy-duty truck transmission technology; after a two-week trial, the jury returned a unanimous defense verdict on all issues.*

Eaton Corporation v. ZF Friedrichshafen A.G. and ArvinMeritor, Inc. (E.D. Mich. 2008); represented defendants.*

Lithium Battery Patent Enforcement (W.D. Wis. 2008); represented Energizer Holdings, Inc., and Eveready Battery Co. in this case involving two patents for advanced primary battery technology; the court granted a preliminary injunction to halt sales of the infringing batteries.*

AOL, Inc. v. Yahoo! Inc. (S.D.N.Y. 2009); represented Yahoo! as a declaratory judgment defendant and asserted patent infringement claims on behalf of Yahoo! against AOL; the dispute was resolved on favorable terms.*

Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-800, 2013); represented a manufacturer of wireless devices named as a respondent in this investigation, resulting in a finding of non-infringement.*

McDavid v. NIKE (N.D. Ill. 2014); represented NIKE and an individual challenging inventorship in this patent infringement litigation involving athletic wear; the case was resolved on the eve of a trial on the inventorship claim.*

Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-868, 2014); represented a manufacturer of wireless devices named as a respondent in this investigation, resulting in a finding of non-infringement.*

InterDigital v. US International Trade Commission (Fed. Cir. 2015); represented a named respondent from the underlying ITC investigation, resulting in a decision affirming the ITC’s finding that no valid patent claim was infringed.*

Technology Properties Limited v. ZTE (N.D. Cal. 2015); defended a manufacturer of wireless communication devices in this patent infringement action, which resulted in a favorable claim construction ruling and a stipulation of non-infringement.*

ZTE v. InterDigital (PTAB 2015); served as lead counsel in a successful inter partes review proceeding, in which the Patent Trial and Appeal Board cancelled claims that had previously survived a jury validity verdict.*

InterDigital v. ZTE (D. Del. 2015); led a trial team to a favorable defense jury verdict in this case involving wireless communication technology.*

Technology Properties Limited v. ZTE (N.D. Cal. 2017); defended a manufacturer of wireless communication devices on remand from the Federal Circuit in this patent infringement action, resulting in summary judgment of non-infringement.*

ZTE (USA) Inc. v. Evolved Wireless, LLC (PTAB IPR2016-757, -758, -1277, -1280, -1349; 2018); represented supplier of cellular communications devices in this campaign of IPR proceedings, resulting in cancelation of all asserted claims for four of the five asserted patents.*

ZTE (USA) Inc. v. Evolved Wireless (Fed. Cir. 2019); represented supplier of communications devices in defending favorable PTAB ruling, resulting in affirmance of the cancelation of all challenged claims.*

Worked at NBC Universal in TV Legal clearing all content (including popular sound recordings and music compositions) in live, reality, and scripted television.

Repeated presenter on music-legal industry, music copyright infringement, IP in social media, and AI and IP.

Enforce copyrights across all industries, on the internet and social media, including DMCA takedown processes.

Created licensing deals for start-up, educational platform utilizing significant creative content.

Organize, structure, and create social media creative content policies for big apparel brands.

Organize, structure, and create DMCA policies to ensure safe-harbor protection under the U.S. Copyright Act.

Prosecute copyrights before the United States Copyright Office.

Representing well-known brands in several copyright litigation defense actions.

Successfully defended several copyright infringement actions brought against technology/social media clients by photographers.

Successfully negotiates against PROs to resolve alleged infringements and enter client-favorable licensing deals.

Routinely reviews and counsels clients on music licensing on popular social media platforms.

Routinely reviews and counsels clients on music licensing in marketing materials (print, Internet, TV), including offering workarounds based on variable licensing structures.

Routinely counsels clients (including big apparel and consumer product brands, housing complexes, and large business complexes) on complying with PROs.

Won patent infringement trial, including willful infringement and double damages, and successful appeal for valve technology. Aero Products v. Intex (N.D. Ill., Fed. Cir.).*

Achieved complete defensive win resulting in final judgment of noninfringement, invalidity, and unenforceability in patent infringement case asserting rights to cellular telephone technology. Motorola v. Vosi (N.D. Ill.).*

Successfully won specification disclaimer argument in defense of plastics company. Pliant v. Atlantis (N.D. Ill., Fed. Cir.).*

Successfully argued claim construction resulting in settlement as trial team head for market-leading hearing instrument manufacturer. Energy Transport Group v. Phonak (D. Del.)).*

Won summary judgment of infringement for patents protecting the iconic Aeron chair. Case settled favorably. Herman Miller v. Teknion (N.D. Ill.).*

Cross-examined expert witness on short notice in Section 337 patent infringement investigation relating to cellular transmission protocols. In re Certain Wireless Devices with 3G Capabilities (ITC).*

Led technical team in ITC and district court litigation involving digital image and mobile device technology resulting in asset sale. Kodak v. Apple, HTC, Samsung (W.D.N.Y, ITC).*

Successfully transferred case from the District of Delaware to the Southern District of California and obtained stay pending inter partes review proceedings for cellular phone manufacturer. Content Guard Holdings, Inc. v. ZTE Corp. (S.D. Cal., P.T.A.B.).*

Lead counsel for plaintiffs in a patent infringement action relating to flatwork finishing equipment for commercial laundry applications. Case resolved in a favorable settlement for client. Chicago Dryer Company v. Jensen (N.D. Ill.).*

Achieved favorable settlement as lead counsel for defendant in a patent infringement action relating to simulated logs and electronic fireplace assemblies. Dimplex v. Twin-Star (E.D. Mich.).*

Led trial team on all non-infringement, invalidity, and unenforceability issues for defendant in a patent infringement action relating to Power over Ethernet functionality. Developed and presented key defense strategies in court, including successful summary judgment arguments. Obtained key witness deposition testimony. Drafted petitions for inter partes review and coordinated expert witness strategy. Case settled very favorably close to trial. Chrimar v. AMX (E.D. Tex., P.T.A.B.).*

Prepared successful petition for inter partes review in group defense against Intellectual Ventures relating to hearing aid technology. HIMPP v. Intellectual Ventures (P.T.A.B.).*

Complete win as team lead for defendant in a patent infringement action relating to hearing aid technology. University of Iowa Research Foundation v. Phonak (S.D. Iowa).*

Complete win in trademark infringement, unfair competition, breach of contract, and tortious interference matter brought by hearing instrument manufacturer. Sonova AG v. Hearsite, Inc. (N.D. Ill.).*

Complete win in non-practicing entity matter. SportBrain Holdings LLC v. Louis Vuitton North America, Inc. (N.D. Ill.).*

Lead patent counsel in patent litigation asserted against Louis Vuitton Tambour Horizon smartwatch. Semcon IP Inc. v. Louis Vuitton North America, Inc. (E.D. Tex.).*;

Successful defense of OmniVision patent in inter partes review challenge. Jiangu SmartSens Technology Co., Ltd et al v. OmniVision Technologies, Inc. (PTAB).*

Lead patent counsel for leading x-ray tube manufacturer asserting infringement of two patents related technology used in CT scanners and trade secret misappropriation. Case resolved favorably for client. Varex Imaging Corporation v. Richardson Electronics, Ltd. (N.D. Ill.).*

Lead counsel in complete win against patent assertion entity including final judgment of non-infringement with no payments made to the plaintiff in the United States District Court for the District of Delaware. . ID Image Sensing LLC v. OmniVision Technologies, Inc. (D. Del.).*

Lead counsel in complete win against patent assertion entity in the United States District Court for the Central District of Californa and United States International Trade Commission. Bell Semiconductor, LLC v. OmniVision Technologies, Inc.*

Represented Sunless, Inc. in worldwide trademark prosecution strategy.

S-Line LLC v. Squyres et al., (N.D. Tex. 2014). Represented patentee S-Line in patent infringement action involving bulkheads used for cargo containers. Managing day-to-day activities including discovery and responsible for infringement case.

Served as outside counsel to a developer of surgical instruments and spinal implants in connection with business issues, financings, sales of product lines and intellectual property and technology contracts and issues.

Served as outside counsel to a national real estate investment trust in connection with a major ERP software license and integration transaction with a major international software vendor.

Served as outside counsel to national condominium and apartment developers and owners in connection with satellite and cable television, broadband Internet access and VoIP services implementation agreements

Served as lead outside counsel to a major international tire and diversified products manufacturer in connection with a multimillion dollar business process outsourcing transaction with Salesforce.com to provide and implement SaaS.

Served as outside consultant to State Senator Eric Fingerhut with respect to the formulation of the Ohio Digital Signature Act – an amendment to the Uniform Commercial Code in Ohio to expressly permit digital signatures, including the formulation of the initial proposal for digital signature legislation for the State of Ohio, the preparation of materials for use in the drafting of a digital signature bill, aiding the Senator to develop broad-based bipartisan support for the measure, and participation in the legislative process.

Routinely counsel companies on nominative trademark use.

Routinely negotiate publisher agreements, management agreements, record company agreements, producer agreements of all shapes and sizes.

Served as outside counsel to a Cleveland-based VoIP service provider in connection with a major ERP software license transaction.

Represented various trademark owners in Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.

Represented Vita-Mix Corporation in negotiating deals with Alex Guarnaschelli and other celebrity chefs.

Represented The Rock and Roll Hall of Fame and Museum in a number of content-related agreements and strategies.

Successfully represented Entity Production, Inc. in several copyright litigations concerning musical compositions and sound recordings.

Successfully represented a multi-media content company in defending copyright infringement action against global transportation company, including obtaining recompense of attorneys’ fees.

Successfully represented a music publisher in copyright infringement action against multi-national television and film company, obtaining favorable settlement.

Represented a therapy system in a patent infringement lawsuit involving medical devices for treating dysphagia.

GHJ Holdings LLC v Plasticade Products Corporation (E.D. Tex. 2010). Defended Plasticade against false marketing allegations.

Jackson v. Contour, et al. (N.D. Ill. 2007). Co-lead counsel in a pro bono matter relating to an inmate’s contraction of tuberculosis.

Successful representation of music publishing company in lawsuit with major telecommunications company for infringement of musical composition in cellular telephone ring tone.

Served as lead outside counsel to a major, international tire and diversified products company in connection with a $180 million technology services transaction with Verizon for the provision of all network services in the western hemisphere.

Served as outside counsel to an international polymer and diversified products conglomerate in connection with intellectual property matters and technology contracts and issues, including data security and privacy and information technology services outsourcing.

Served as outside counsel to a consortium of major international software developers in connection with the analysis of intellectual property and business aspects of software patent portfolios, and the acquisition of software patent portfolios

Served as lead outside counsel to a major, international, publicly traded manufacturer in connection with a multimillion dollar business process outsourcing transaction with SuccessFactors to provide IaaS for the storage of worldwide employee data.

Represented Signet/Sterling Jewelers in negotiating licensing deal with Angel Sanchez.

Represented ringtone provider in clearing music rights for catalogue.

Represented major consumer products companies in trademark licensing agreements.

Represented logistics software company in a number of licensing deals.

Represented leading University art historian and professor in dispute over authenticity of 32 paintings.

Represented an automotive applicant manufacturer in a trade secret lawsuit involving processes for manufacturing fasteners.

Represented a high-performance blender manufacturer in a patent infringement lawsuit involving food blenders.

Represented defendants in a patent infringement and contract dispute lawsuit involving bi-fuel engines and generators.

Represented leading provider of infrastructure for distributing premium digital content to public libraries in acquiring music content from major independent and major record labels.

Represented investment company in consummating deal with film company.

Gramm et al. v. Deere & Company (IPR2015-00899). Subject U.S. Patent No. 6,202,395. Counsel for Petitioner Deere & Company.

We were retained by legendary rock group Lynyrd Skynyrd to defend it in copyright infringement action pending in the U.S. District Court for the Northern District of Ohio.  After early summary judgment briefing, the Court dismissed some of the claims.  The Court is presently setting a schedule to address the remaining claims.

Lennon Image Technologies, LLC v. Skullcandy, Inc. (D. Del. 2012). Represented Skullcandy in patent infringement action pertaining to virtual image interface technology.

Representation of documentary film production company in negotiating rights and licenses for production of major musical artists’ film documentaries, and public television broadcasts of same.

Represented a major production company in licensing music to Electronic Arts for use in Madden VII video game.

Represented an international manufacturer of plastic and rubber products in a patent infringement and contract dispute.

Represented an arc welding company in a patent infringement and antitrust lawsuit involving welding consumables

Represented songwriter in obtaining settlement from international film company and major beverage chain related to unauthorized use of musical composition and recording in motion picture.

Represented major health care provider in authorship dispute over software.

Represented clients in patent litigation regarding a variety of technologies including medical devices, consumer products, industrial consumables, automotive systems, diesel engines, and power converters.

Prosecuted several copyright infringement actions against several online ringtone companies for infringement of musical compositions.

Fitness Quest, Inc. et al. v. Universal Music Publishing Group, successfully represented Fitness Quest in copyright infringement litigation over music-related content.

Represented client as defendant in trademark infringement litigation before the court and as opposer in Opposition proceeding before the Trademark Trial and Appeal Board. Court dismissed opponent’s case with prejudice and the Board refused registration of opponent’s trademark

Glanton v. Sony Records, successfully represented Sony in copyright infringement action related to plaintiff’s copyright infringement allegation (dismissed after case was fully briefed).

Represented Internet music streaming company consummate a private offering memorandum raising $8.5 Million.

Represented Abercrombie & Fitch in trademark prosecution strategy.

Represented a major label in defending a copyright infringement lawsuit.

Designed technology evaluation agreements for LCD technologies.

Counseled clients regarding selection, use and transfer of domain names.

Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing the Same, ITC Inv. No. 337-TA-855. Counsel for respondent Skullcandy defending against claims of patent infringement relating to manufacturing processes for magnets.

Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00232). Subject: U.S. Patent No. 6,345,402. Counsel for Petitioner Atom Medical International, Inc.

Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00095). Subject: U.S. Patent No. 6,483,080. Counsel for Petitioner Atom Medical International, Inc.

Abbott Laboratories et al. v. Watson Laboratories, Inc.-Florida et al. (D.N.J. 2010). Represented Watson in a Hatch Waxman litigation related to choline fenofibrate sold by Abbott as Trilipix®.

Representation of major musical artist in negotiating anniversary concert with major concert promoter and in negotiating related sound recording and music publishing reproduction and distribution licenses from major record company and music publisher for merchandising

Representation of musical artist management companies in drafting, negotiating, and personal management agreements with musical artists.

Representation of several musical artists in negotiating and consummating recording agreements with independent and major recording labels.

Representation of major organizer, producer, and promoter of multiple live concert events in negotiating and consummating $5 million concert and television sponsorship agreement with corporate sponsor.

Representation of ring tone provider in connection with clearing copyrights for use in cellular telephone ring tones and related general business counseling issues.

Representation of investment group procuring and evaluating musical assets investment opportunities.

Representation of angel-financing funded music and media business with proprietary patent technologies in a general counsel capacity.

Represented domain name holder in dispute over registration of domain name; negotiated favorable settlement for domain name holder.

Represented Fitness Question in book deal.

Represented Cleveland Research Company in a number of copyright and content-related matters.

Successfully prosecuted several domain name disputes.

Successfully represented a consumer products company in negotiating favorable settlement with multi-national music publishing company.

Successfully represented music publisher versus multinational company who used song in a film and DVD without permission.

Professional engineering experience includes technical and management positions in the software, biomedical, and polymer science industries, including positions as a program manager with Trilogy Software, Inc., a development engineer at Bard Interventional Products, a research engineer at NASA’s Center for the Commercial Development of Space, and a research scientist at Case Western Reserve University’s Department of Macromolecular Science and Engineering.

Provided document retention and destruction policy guidance and advice and prepared comprehensive document retention and data security policies for a publicly traded international manufacturing company.

Provided document retention and destruction policy guidance and advice and prepared comprehensive document retention and data security policies for a national real estate development company.

Provided document retention and destruction policy guidance and advice and prepared comprehensive document retention and data security policies for a major, international sports marketing firm.

Provided data breach disclosure compliance services to a significant, Ohio based non-profit entity with respect to a data breach event involving customer data on customers residing in the State of Ohio.

Served as outside counsel to a provider of onsite and online health care screening programs and related content and services in connection with general corporate intellectual property and technology matters.

Gramm et al. v. Deere & Company (IPR2015-00898). Subject U.S. Patent No. 6,202,395. Counsel for Petitioner Deere & Company.

Successfully obtained judicial approval of contracts with minors for several major labels.

Representation of songwriter in procuring and negotiating worldwide music publishing deal with major music publishing company.

Teijin, Inc. et al. v. Alembic Pharms. Ltd. (D. Del. 2013). Representing Alembic as a first to file applicant in Hatch-Waxman litigation involving Uloric® (febuxostat). Responsible for managing day to day activities and primary client contact.

AstraZeneca LP v. Sandoz Inc. (D.N.J. 2010). Represented Sandoz in a Hatch Waxman litigation related to budesonide sold by AstraZeneca as Pulmicort®.

Represented Bleacher Creatures, LLC in Pope Francis plush doll matter.

Represented Cleveland-San Jose Ballet regarding private equity investment and resolving various copyright issues, public television issues, and Musicians’ Union issues concerning staging of “Blue Suede Shoes”.

Represented agency of LeBron James in negotiating Sprite deal with Coca-Cola.

Representation of major music magazine regarding various licensing and co-branding deals with major music publishers and record companies, podcasting issues, freelance agreements, and libel and copyright issues.

Representation of leading sports, entertainment, cultural and leisure sponsorship and event management agency in drafting major rock and roll institution anniversary concert.

Representation of major ballet company regarding obtaining private equity investment and resolving various copyright issues, public television issues, and Musicians’ Union issues, concerning successful stage and video production.

Quarterbacked launch of new beer affiliated with nationally-known rock singer.

Prosecute trademark and service mark applications before the U.S. Patent and Trademark Office.

Prepared patent applications and obtained patent protection directed to a variety of technologies including alternative energy systems, medical devices, computer hardware and software, automotive systems, optical sensors, radio frequency identification, and polymer compounds.

ICOR International, Inc. v. DuPont (S.D. Ind. 2010). Brought declaratory judgment action relating to refrigerant compositions.

Grupo Bimbo, S.A. B. de C.V., et al. v. Snak-King Corp., et al., (C.D. Cal. 2013). Represented Grupo Bimbo in dispute over trademarks, trade dress, patent and unfair business practices. Co-lead attorney on patent infringement case and co-manage fact and expert discovery with team of three attorneys.

Represented Estate of photographer Art Kane (copyright audit, including “A Great Day In Harlem”).

Represented estate of major songwriter in assigning copyrights to heirs/successors-in-interest.

Represented Elevation Group of Companies in consummating exclusive sponsorship agreements for its ORCHESTRA series (Jewel, Counting Crows, etc.).

Gramm v. John Deere and Company, (N.D. Ind. 2014). Represented Deere in patent infringement lawsuit relating to corn crop headers. Responsible for formulating and proving up non-infringement and invalidity defenses.

Designed and implemented document retention programs for companies.

Represented Vita-Mix Corporation in keyword strategy and various litigations and trademark policing.

Represented American Greetings Corporation in AAA dispute over creative content.

Served as outside counsel to a national manufacturer of greeting cards and novelty items in connection with intellectual property and technology contracts and issues.

Quarterbacked launch of new King Cool “beer” associated with recording artist Donnie Iris.

Represented an electronic company in a patent infringement lawsuit involving circuit board configurations for tablet and smart phone power chargers.

Represented a leading metals seals company in a trade secret and antitrust lawsuit involving manufacture of security seals.

Serving as lead counsel to the Rock & Roll Hall of Fame and Museum.

Served as outside counsel to a provider of logistics planning services to small and middle market companies in connection with general corporate intellectual property and technology matters.

Served as lead outside counsel to a major international polymer manufacturer in connection with a multimillion dollar business process outsourcing transaction with Sterling Commerce to provide and implement SaaS and IaaS.

Represents a growing computer network monitoring business in connection with its managed services agreements and corporate strategy.

Represented Vita-Mix Corporation in domain name and trademark infringement matters.

Counseled clients on the selection and adoption of trademarks, service marks and trade names.

Assisted numerous multi-national companies with trademark clearance strategies.

Atom Medical International, Inc. v. Draeger Medical System, Inc. (IPR2014-00194). Subject: U.S. Patent No. 7,335,157. Counsel for Petitioner Atom Medical International, Inc.

Alliance v. Altivity (W.D. Wash. 2007). Patent and trade secret case relating to containers for packaging cat litter.

Alticor Inc., Amway Corp. and Quixtar Inc. v. NCR Corp. (W.D. Mich. 2007). Represented plaintiffs in an action seeking a declaratory judgment of non-infringement and invalidity of seven NCR patents relating to e-commerce.

Dyson, Inc. v. LG Electronics USA, Inc. (N.D. Ill., 2012). Counsel in patent infringement action pertaining to vacuum cleaners, responsible for formulating noninfringement and invalidity defenses. Case currently stayed pending inter partes reexamination.

Represented holding company of bakery goods and intellectual property in sale of company.

Represented companies of all sizes in trademark prosecution strategies.

Represented Elevation Group of Companies in various concert and personal management agreements (including Red Sun Rising and the Trinity Cathedral Concert series).

Represented a production company in licensing music to Electronic Arts for use in Madden VII video game.

Represented a production company in consummating deal with a major beverage company concerning use of musical composition and other content in conjunction with theme song for major NBA sports figure.

Represented a media advertising company accused of trademark infringement and unfair competition that resulted in the opposing party voluntarily dismissing all claims.

Representation of music publisher in completing intellectual property audit and attending to remedial issues uncovered by same.

Representation of various Internet music, media, and entertainment companies in drafting streaming and distribution agreements, and in providing general copyright and trademark counseling.

Representation of major record labels in obtaining judicial approval of minority recording agreements for international recording artists.

Representation of music publishing and record company in drafting, negotiating, and consummating Internet download and streaming licenses with major cable company for selling and streaming musical compositions and sound recordings.

Representation of investment company in drafting, negotiating, and consummating stock purchase agreement for investment in film production company.

PRE Holding, Inc. v. Monaghan Medical Corp., et al. (E.D. Va. 2009). Represented client in a patent infringement case relating to medical devices.

King v. Chapman, et al. (N.D. Ill. 2009). Co-lead counsel in a pro bono matter relating to the violation of an inmate’s 8th Amendment rights.

Successfully prosecuted a copyright infringement action against a major cellular telephone manufacturer for infringement of a musical composition in cellular telephone ring tones.

Successfully registered product design trademarks for multinational consumer products company.

Successfully prosecuted a copyright infringement action against a major recording artist and his record label for infringement of a musical composition and sound recording in new sound recordings.

Represented Root Candles in endorsement agreement with famous celebrity.

Represented major energy drink product companies in the negotiated of various sponsorship agreements.

Representation of several independent record companies in drafting form recording agreements and in negotiating and consummating recording agreements with both emerging and establishing musical artists.

Representation of members of major musical artist in internal trademark dispute with other members over use of artist’s federally-registered name.

Representation of various music production companies in drafting, negotiating, and consummating agreements with musical artists.

Representation of major consumer products company in negotiating various infomercial music composer agreements.

Provided advice and counsel regarding global data security and compliance for a publicly traded, international manufacturing company.

Provided general business counseling to a variety of streaming media companies and other Internet technology companies.

In the Matter of Certain Thermal Support Devices, Infant Incubators, Infant Warmers, and Components Thereof, ITC Inv. No. No. 337-TA-896. Counsel for Atom Medical in ITC action relating to infant incubators and warmers.

Draeger Med. Sys., Inc. v. Atom Med. Int’l, Inc. and Philips Elecs. N. Am. Corp., d/b/a Philips Healthcare, Case No. 2:12-cv-00512-UA-DNF (M.D. Fla. 2012). Represented Atom Medical in patent infringement action relating to infant warmers and incubators.

Dyson, Inc. v. LG Electronics USA, Inc. (Inter Partes Reexamination No. 95/002,102). Subject: U.S. Patent No. 7,600,292. Counsel for Requester LG Electronics USA, Inc.

Represented Bleacher Creatures, LLC in a number of content licensing deals with major professional and collegiate leagues.

Represented artists in executing terminations of transfer.

Represented Alternative Press in negotiating sponsorship agreements with major beverage company.

Represented Belkin Productions consummate deal with Live Nation.

Represented a major public library in licensing software system to a consortium of Ohio libraries.

Represented a client in the sale of its trade show division.

Represented a concert promotion company in connection with drafting and consummating a multi-million dollar exclusive sponsorship agreement with a national mortgage company to underwrite a live concert tour and a series of cable television specials featuring marquis musical artists

Successfully represented Dealer Tire in trademark litigation.

Yakima Products, Inc. v. Saris Cycling Group, Inc. (D. Or. 2009). Represented Saris Cycling Group, Inc. in a patent litigation relating to bicycle racks.

Successfully prosecuted and defended many actions involving trademark infringement.

Successfully represented a regional concert promotion company in a sale of substantially all assets to a national concert promotion and radio company.

Successfully represented BEMA Music, music publisher of “Play That Funky Music,” in copyright infringement litigation versus major consumer products company.

Served as outside counsel to a developer of magnetic resonance imaging equipment in connection with intellectual property commercialization and protection issues, and corporate and securities matters, including aspects of $15 million venture capital finance transition.

Routinely counsel museums and major, top-tier creative content companies on fair use/First Amendment defenses (specific examples intentionally omitted).

Represented Internet music streaming consummate merger with a potential competitor.

Represented Elevation Group of Companies in producing a PBS documentary film about Irish music (features performances by six Grammy Award winners, Academy Award and Golden Globe winners, three Rock and Roll Hall of Fame music inductees).

Represented Global Tel Link* Corporation in a number of music streaming and technology licensing agreements.

Represented companies of all sizes in copyright prosecution and licensing strategies.

Provided data breach disclosure compliance for a variety of clients ranging from nationally recognized publically traded companies to local non-profit organizations.

Noven Pharms., Inc. v. Watson Labs., Inc. et al. (D.N.J. 2011). Represented generic client in Hatch-Waxman patent litigation in a first to file (FTF) opportunity related to a methylphenidate transdermal patch sold by Noven as Daytrana®. Obtained partial summary judgment rulings of non-infringement and invalidity due to inadequate written description. The parties’ settlement permits a 2015 launch notwithstanding the 2018 expiration of the patents-in-suit.

Counseled various clients on legal issues arisng in web site development, safe harbor protections, and domain name protections.

Counseled clients on licensing and assignment issues.

Assisted OverDrive, Inc. in rolling out music offering to all public libraries in network.

Assisted licensing Ray Charles Marketing Group in implementing licensing strategies.

Represented the home health division of this major national health products distributor in several complex, high value information technology implementation transactions involving transformative systems with major national and international vendors. Vendors included Cognizant and Deloitte. Representation resulted in the successful negotiation, documentation and completion of transformative information systems integration transactions involving the company’s enterprise operations.

Represented Signet/Sterling Jewelers in negotiating licensing deal with Sofia Vergara.

Represented Homax Group in false advertising litigation in Northern District of Ohio.

Represented leading University art historian in dispute over authenticity of Jackson Pollock works.

Quarterbacked music content licensing program for OverDrive, Inc. and its public library customers.

Represented a legendary rock artist in copyright infringement litigation and negotiated favorable settlement after summary judgment rulings.

Served as outside counsel to a Cleveland-based electrical parts distribution company in connection with a major ERP software license transaction with a major international software vendor.

Served as lead outside counsel to a major, international, publicly traded manufacturer in connection with a large scale IaaS implementation transaction with Amazon Web Services.

Successfully represented Terry’s Tire Town in trademark litigation before the TTAB.

Successfully prosecuted several Uniform Dispute Resolution Policy actions.

Representation of music publishing company/record company in bringing copyright action against major film production company and DVD manufacturer for incorporating musical composition and sound recording in major commercial film without authorization.

Successfully stopped infringers and obtained favorable settlements in several product design/trade dress infringement cases.

Issued numerous opinion letters to companies and organization concerning parody and other forms of fair use.

VitalStim, LLC et al v. eSwallow USA, LLC., 1:12-cv-04169, Northern District of Georgia (Thrash, T.) (representing plaintiff in patent infringement lawsuit involving medical devices for treating dysphagia)

Served as lead outside counsel to a major international steel products company in connection with mobile application licensing on all major platforms (Amazon, Google and Apple).

Represented Arizona arts dealer in copyright infringement litigation.

Represented Cleveland Public Library in connection with the licensing of software among a consortium of Ohio libraries.

Representation of start-up orchestral print company in negotiating licenses from music publishing companies for “motif quoting” in symphonic works.

Represented major hair clinic in intellectual property litigation.

Represented a tier one automobile manufacturer in a declaratory judgment action seeking to invalidate the manufacturer’s patent that resulted in the opposing party ceasing all relevant importation activities and executing a purchase agreement to purchase products from manufacturer.

AOL, Inc. v. Yahoo! Inc. (S.D.N.Y. 2009). Multi-patent infringement litigation relating to internet advertising technology.

Representation of major musical artist in negotiating product endorsement agreement with major telecommunications company.

Representation of music publishing company in early-stage discussions regarding Broadway production.

Represented OverDrive, Inc. in various litigations.

Represented Homax Group in trade dress litigation concerning various consumer products.

Represented Mavea, a division of Brita GmbH, in Northern District of California trademark infringement litigation, and other ancillary matters.

Represented House of Spices in numerous trademark litigations (obtaining injunctions, consent judgments, and damages).

Represented Lynyrd Skynyrd in copyright infringement dispute in the Northern District of Ohio.

Represented Ideastream (public television and public radio) in American Archives Pilot Project.

Represented defendant in patent infringement litigation concerning lawn tool; successfully transferred action to local district court; court held for client after Markman hearing.

Represented plaintiff in unfair competition and trademark infringement litigation; U.S. District Court granted summary judgment in favor of plaintiff.

Represented a consumer products manufacturer asserting a patent in litigation that resulted in favorable summary judgment on the validity of the patent-in-suit.

Represented Sherwin-Williams in “App” development agreements.

Representation of orchestras in drafting, negotiating, and consummating orchestral concert performance agreements with contemporary musical artists.

Negotiated record deals and music publishing deals for several artists, with significant advances.

Represented Turning Technologies in a number of licensing matters.

Served as outside counsel to a major Ohio-based hospital system in connection with information systems, software license agreements and related technology issues, including a system-wide, multi-state VoIP implementation with major national and international equipment and service vendors.

Served as outside counsel to an international adhesives manufacturer in connection with the resolution of a dispute with a national ERP software vendor, the resolution of intellectual property issues in a significant international outsourcing transaction, the negotiation of a major multi-site ERP software license transaction with a major national software vendor, and with intellectual property and technology matters.

Represented architectural firm in copyright infringement dispute concerning building design.

Representation of major musical artist in negotiating with symphony orchestra, concert promoter, and concert sponsor, concert performance agreement featuring musical artist and symphony orchestra (and recordings of same).

Representation of various music and media companies in drafting, negotiating, and consummating Internet web site development agreements.

Defended software company against claims of patent infringement in Delaware District Court. Initiated an Inter Partes review at the Patent Trial & Appeal Board. Following oral argument, the Board invalidated all the claims asserted in the underlying litigation.

Completed a $67 million SAP implementation transaction for the entire Canadian business enterprise of an American global manufacturer and marketer of consumer and professional products.

Handled transactions on behalf of clients with national and international hardware, software, systems and medical device/life sciences companies.

Represented one of the largest manufacturers in the United States in connection with a $65 million global business process outsourcing transaction involving operations in the United States, Europe, South America, and Asia.

Ongoing representation of big-tech companies in connection with drafting and negotiating prototype development and professional service agreements that involve complex IP licenses for research and development and commercialization purposes.

Provided counseling to an India-based agricultural seeds provider regarding the establishment of an eCommerce platform in the United States, and drafted terms of use, terms and conditions of sale, and a privacy policy.

Drafted information technology services agreement templates for a global materials science company, including templates for the procurement of SaaS products, managed services, professional services (including development of hosted solutions), and colocation services, and a data protection addendum.

Represented a digital health startup in drafting and negotiating a technology services agreement and related schedules with one of the world’s largest global pharmaceutical companies.

Represented a worldwide leader in adhesive technologies, display graphics and packaging materials on a SaaS-based systems implementation and provided counseling with respect to disputes that arose during implementation and testing phases of the project. 

Negotiated a significant BPaaS implementation transaction with a major, international healthcare software systems vendor involving the license of significant intellectual property assets and rights (specifically, software) and a substantial systems integration component with major national and international vendors.

We serve as lead outside intellectual property and technology transactions counsel. Lead counsel in connection with a multimillion dollar software systems implementation transaction involving one of the largest software vendors and software integration firms in the world.  The matter represents one of the largest copyright related licensing and services transactions in the region and displays our expertise in handling extraordinarily sophisticated, complex, high value IP transactions for the largest companies in the United States.  We negotiated and documented the transaction, and provided counsel to our client in all facets of the transaction.

Legal/intellectual property assistance with music festivals.

Stopping trademark infringements, policing domain names, assisting with general intellectual property matters concerning gutter guards.

Licensing matters, various matters concerning exhibits.

Legal assistance with licensing arrangements, data security and privacy issues, employment matters, and software development.

We serve as lead outside intellectual property and technology transactions counsel including the management and prosecution of the company’s extensive patent portfolio, and the negotiation and documentation of significant IP development, licensing and commercialization agreements.  In connection with this, we recently completed a significant transaction with Flow Pharma, a major US pharmaceutical company located in San Francisco, California.

We serve as a lead outside transactional counsel to Infosys in connection with the negotiation and documentation of a variety of IP oriented technology transactions.

Copyright infringement litigation concerning technology for the e-book industry, representing OverDrive, Inc. as plaintiff

Negotiation, documentation and completion of a significant ERP software implementation transaction with a major, international healthcare software systems vendor involving the license of significant intellectual property assets and rights (software) and a substantial systems integration component with two of the largest systems integration firms in the world (HealthX and Wipro).

Representing a major healthcare technology company in several information technology implementation transactions involving transformative systems with major national and international vendors.