California

Firm overview

Firm overview

We are an IP Litigation powerhouse for technology, life sciences and health technology in patents, trade secrets and commercial litigation with unparalleled trial success at all levels at each forum and venue. Our approach integrates our practices to provide businesses with comprehensive intellectual property protections. Our litigation expertise and experience also gives us an edge in advising our clients on the likely outcomes of litigation, including in the context of corporate acquisitions and portfolio management. Our approach, which supports “small firm” key partner attention with the “large firm” resources ensures our clients receive effective and efficient representation at every stage of the case. We are committed to helping clients structure the most comprehensive and workable enforcement and defense for all aspects of their intellectual property. 

Bench and Jury Trials at the U.S. District Courts

• We have litigated and counseled on patent and trade secrets issues across a wide range of industries, including software, hardware, electronics, chemical processes, telecommunications, consumer goods, manufacturing, sales, financial services, and pharmaceuticals.
• We are also experts in §101 invalidity challenges with a near-perfect record in district court and the Federal Circuit, pursuing and obtaining attorneys’ fees, and obtaining wins in Federal Circuit appeals.
• We are experts in the nuances of life sciences patent litigation, including Hatch-Waxman Act and biosimilars patent litigation under the Biologics Price Competition and Innovation Act, and the intersecting FDA regulatory regime in which these cases operate. 

PTAB Proceedings

• We have handled over 400 post-grant proceedings before the U.S. Patent Trial and Appeal Board, on behalf of both petitioners and patent owners across a wide range of industries.
• Our attorneys have been hailed as ones who can be “trust[ed] . . . with crown jewels, and have been described as “PTAB mastermind[s],” “PTAB trial guru[s],” knowing the PTAB “like the back of [their] hands,” and “understand[ing] all the rules and subtleties of IPR proceedings better than anyone I’ve ever worked with.”
• Our attorneys worked on the first ever PTAB proceeding on the technology side and also led the first ever successful defense of a pharmaceutical patent.

ITC Section 337 Investigations

• We represent both complainants and respondents, and have been at the forefront of recent cutting-edge decisions at the ITC. 
• We have served as counsel in more than 60 Section 337 Investigations, and have appeared before each of the Presiding Administrative Law Judges (ALJs), including multiple successes before Customs in ensuring our clients’ products are not excluded from the United States. 

International Arbitrations

• We represent clients in all aspects of litigation related to arbitration, including bringing and defending motions to compel arbitration, obtaining and opposing interim and protective measures in aid of arbitration, seeking and opposing recognition of arbitral awards, seeking and opposing the annulment of arbitral awards, and disputes over the taking of evidence in the US in aid of international arbitrations and foreign litigation.
• We regularly draft, advise, and teach courses on the drafting and interpretation of arbitration and forum-selection agreements in circumstances ranging from simple two-party deals to complex commercial transactions involving multiple parties, jurisdictions, and applicable laws. We recognize that each matter is unique and strive to meet our client’s objectives in the most cost-effective manner.

Supreme Court and Appellate Review

• We have top-notch appellate capabilities and can handle an IP litigation matter from start to finish. 
• Our lawyers are skilled in the art of written and oral advocacy, as well as in simplifying technical arguments for generalist Federal Circuit judges.
• We devote our practice to the craft of conceiving and presenting argument on complex, law-intensive issues, bringing to bear our many years of experience in areas of law that cut across traditional legal disciplines, such as constitutional interpretation, damages, procedure, and jurisdiction. 

Firm overview

Sideman & Bancroft is one of the premier brand protection law firms in the United States. Our team includes highly experienced lawyers and former federal prosecutors, and global security and brand protection experts with extensive backgrounds leading anti-counterfeiting, anti-piracy and customs interdiction and investigation programs in both private companies and law enforcement agencies. We provide customized and scalable brand protection solutions designed to enable clients to achieve their goals for trademark protection and worldwide branding in all stages of a brand’s life cycle.

The value of trademarks, service marks and trade dress is greater than ever before. We routinely prosecute and defend infringement, dilution, unfair competition and false advertising claims involving both registered and unregistered trademarks and service marks, in addition to pursuing a wide variety of trade dress claims. Protection of a global brand means understanding risks and concerns regarding enforcement issues in the U.S. as well as in foreign jurisdictions. We obtain ex parte writs of seizure for counterfeit parts and labels in the U.S. and other countries. In collaboration with local counsel, we pursue and defend trademark and service mark claims in jurisdictions around the world.

The firm achieves tremendous results for clients by combining the traditional intellectual property and brand protection practices of counseling, prosecution and enforcement with specialty components such as:

• Criminal intellectual property enforcement
• Criminal and civil gray market investigations and enforcement
• Global investigation management
• Online anti-counterfeit monitoring
• Global customs advice and program development

In particular, the team assists clients in implementing brand protection strategies to halt the importation of counterfeit goods and prevent the sale of counterfeit products. As part of this effort, we help companies target and investigate counterfeit traffickers, and then assemble and analyze evidence to support successful criminal investigations and prosecutions as well as civil litigation resulting in asset freezes and other remedies.

Since 2001, our team has actively worked with the Federal Bureau of Investigation, Homeland Security Investigations, Secret Service and other state and federal law enforcement agencies throughout the U.S. in its representation of victim companies, resulting in dozens of criminal convictions, jail sentences and restitution orders. Relying on our team’s international law enforcement experience, we also actively coordinate investigations and law enforcement referrals in jurisdictions all over the world.

Network Memberships:

• INTA, IACC, AGMA, PCPC, ChIPs, SFIPLA, NAMWOLF:
• The firm is a certified women-owned law firm

Firm overview

Skadden’s Intellectual Property and Technology Transactions and Intellectual Property Litigation Groups offer clients a full range of legal services relating to the acquisition, enforcement and commercialization of IP and technology assets. 

Our services include counseling on engagements involving patents, copyrights, trademarks, outsourcing, privacy and data security. Attorneys in our group also litigate these issues in federal and state courts. Skadden attorneys advise on virtually every type of IP transaction and dispute, negotiating and drafting numerous licenses and alliance agreements and handling a wide variety of matters relating to the creation, use, licensing and transfer of digital technologies, including artificial intelligence, blockchain, cryptocurrencies, digital assets and NFTs. We also provide IP support in conjunction with M&A, IPOs and financings. In addition to understanding IP matters and the science and technology underlying them, our attorneys are familiar with the business models used by our clients to maximize the value of these technologies, and we seek to create or add value to their IP and technology portfolios.

The nationally recognized attorneys in our group also successfully represent clients in all stages of disputes and provide strategic business advice concerning all manner of intellectual property issues, including patents, misappropriation of trade secrets, trademarks and trade dress, license agreements and disputes, copyrights and misappropriation, artificial intelligence, and advertising and consumer claims. Whether it is winning high-profile multimillion-dollar jury verdicts, obtaining swift dismissals at the pleading stage, or providing practical advice about reducing legal risk in everyday operations, we emphasize a holistic, business-driven approach that considers our clients’ needs both inside and outside the courtroom, including arbitrations.

Copyright

We provide copyright advice to a wide range of clients, particularly in the online, publishing, entertainment and communications industries, such as mobile app developers, internet technology providers, social media companies, software developers, broadcast and cable television networks, television and movie producers, recording artists and authors. Our lawyers also have extensive experience representing content creators, including authors and artists.

Trademark

We assist clients in obtaining, protecting and enforcing trademarks in the United States and worldwide, including:

• Conducting and reviewing searches and investigations for trademark clearance.
• Preparing opinion letters.
• Filing and prosecuting trademark applications.
• Handling the prosecution and defense of trademark administrative proceedings.
• Monitoring and policing the use of trademarks by third parties.
• Providing general trademark and domain name counseling.

Patents and Trade Secret Strategy

In connection with transactional matters requiring sophisticated reviews of patent and trade secret assets, we:

• Analyze target and competitor patents and unpatented technology.
• Perform “deep-dives” to review the background, scope, strengths and weaknesses of target and competitor patent portfolios.
• Analyze patent and proprietary-technology protection strategies.
• Advise on intellectual property monetization portfolio practices.
• Structure various agreements with respect to the evaluated technology.

Many of our patent attorneys are registered to practice before the U.S. Patent and Trademark Office and hold technical or scientific degrees. We evaluate patent transactions based on proprietary statistical research and historical patent disputes; complement traditional legal advice with a range of analytics capabilities; and provide data and insights for specific strategy development and market entry, such as “patent troll” investigations and industry/sector-specific exposure analyses.

Life Sciences

We have considerable knowledge in pharmaceutical, biotechnology and medical device licensing and 
collaborations, as well as alternative transactions such as drug royalty purchases. We advise clients on all IP and related aspects of licensing, collaboration, JV and financing agreements and in transactions involving the research, development, manufacture and commercialization of pharmaceutical and biotechnology products and medical devices.

Licensing

We advise across the spectrum of IP and technology licensing arrangements, ranging from traditional license agreements to complex ventures for joint development of products, applications and systems.

Privacy and Cybersecurity

We are well-versed in privacy laws and regulations worldwide and understand the business models and technologies underlying data usage. We also provide clients with the key resources they need to prepare for, and respond to, any type of data security incident.

Artificial Intelligence

We advise clients on various AI-related IP issues, including those regarding AI usage, strategies and deployments. We have advised clients, including leading AI, social media, music, movie and sports entities, on:

• Developing and drafting enterprise-wide AI IP strategies and policies, including with respect to licensing and enforcement issues.
• Advising companies on IP protection and registration for works with AI-generated elements.
• Negotiating agreements to license content, names and images for use in AI models and tools.
• Negotiating enterprise AI agreements.
• Drafting form language for use with in-bound and out-bound AI-related agreements.
• Counseling AI tool developers on IP protection and licensing approaches.
• Advising on transactions involving the acquisition or sale of, and investment in, AI-related companies.

Our attorneys draw on their deep knowledge and experience to empower clients with a complete understanding of the legal issues presented by potential IP disputes and deals. Hallmarks of our practice include:

• Experience Across Industries: We routinely handle matters in various fields such as consumer products and services, biotech, pharmaceuticals, sports, media and entertainment, gaming and gambling, communications, computer technology, video games, esports, food and beverage, consumer products, financial services, ecommerce, social media, semiconductors, medical devices and life sciences.
• Creative Solutions: Favorable jury verdicts and judicial opinions are not the only measures of success. We work with clients to find practical and business-centered resolutions to disputes, as well as provide strategic advice to anticipate and preempt disputes before they occur. When our clients encounter litigation, we regularly dispose of matters quickly and efficiently. For example, in the past decade, our team has secured the dismissal of more than a dozen IP matters before any discovery is conducted. We also like to address matters of first impression (i.e., there is no law, and we are the ones creating the law).
• Multidisciplinary Approach: To ensure the best and most forward-looking outcomes, we work with clients to tailor our approach to each matter, and we seek the insights of our colleagues from a wide range of practices as needed, such as antitrust, regulatory compliance, tax and corporate.
• Thought Leadership: We stay on the cutting edge of IP and related issues and keep our clients informed through client alerts, articles, presentations and seminars, and an exclusive monthly CLE-credit webinar that summarizes the biggest legal developments across all areas of IP law, and provides practical advice to in-house counsel for managing and protecting their IP. We are well-positioned to address the many novel challenges and potential disputes that businesses now face, and our insights and expertise are shared at industry-leading events and conferences.