"Calfee, Halter & Griswold is a top-notch firm for patent litigation."
Calfee client, as reported by U.S. News – Best Lawyers in the “Best Law Firms” report
Overview
Calfee’s Patent Litigation practice includes a bench of patent attorneys with deep experience in all aspects of patent litigation, including discovery, claim construction, summary judgment, trial, and appeals to the Court of Appeals for the Federal Circuit. Calfee’s patent litigators are involved in offensive and defensive client representations in a wide range of technologies including the mechanical, electrical, software, and chemical arts.
Calfee has one of the largest and most accomplished intellectual property dispute teams in the Midwest. Serving a broad spectrum of publicly and privately held companies, our patent litigation lawyers represent plaintiffs and defendants with respect to patents, copyrights, trade secrets trademarks, trade dress, product configurations, unfair competition, and licensing claims. Our patent litigation attorneys focus on all major scientific disciplines including mechanical and electrical engineering, chemistry, biotechnology, computer hardware, software and circuit design, and semiconductors.
The Calfee team consists of experienced first-chair litigators who have handled matters before all manner of federal and state courts, the U.S. Patent and Trademark Office, the U.S. Customs Office, the International Trade Commission, and the Federal Trade Commission.
Calfee combines diligence and attention to detail with a sensitivity to our clients’ economic and strategic goals in working to resolve complex intellectual property disputes – matching the demands of each case with the firm’s resources both efficiently and effectively.
In addition, Calfee’s team includes former law clerks and patent examiners who bring unique insight and experience to disputes that are legally and technically complex.
This focus on efficient dispute resolution puts Calfee at the forefront of the IPR practice since those proceedings were first created in 2012. In the last three years alone, Calfee patent litigation lawyers have been involved with more than 20 IPRs, in cases ranging from medical devices and communication equipment to consumer products and packaging. This experience, combined with a favorable, Ohio-based cost structure, has allowed our clients to succeed in patent disputes faster and less expensively than in traditional litigation.
Our Intellectual Property Litigation Capabilities
The litigators in our Intellectual Property group have gained extensive and valuable intellectual property litigation experience dating back to the 1980s when the group was formed. At any given day, Calfee has a dozen or more attorneys in the group devoting all or substantially all of their time to intellectual property litigation. Calfee’s IP litigators also are supported by and can draw upon the sophisticated case management technology and personnel of Calfee’s extensive general litigation practice if needed.
In addition, our firm has extensive experience in providing opinions and “design around” advice to assist our clients in penetrating new markets and creating new product lines. Virtually every day, Calfee attorneys prepare opinions or provide advice with respect to avoiding patent conflicts while achieving the business goals of entering new markets. As with every aspect of our practice, we take into account a client’s goals and comfort level with respect to any particular product.
Our intellectual property litigators have represented clients in trial courts in many of the 50 states and have briefed and argued cases to the Court of Appeals for the Federal Circuit and other appellate courts. These litigators have successfully represented clients in trademark, trade dress, or unfair competition cases involving a wide range of consumer and industrial products and services. Many of these matters were for clients whose patent or trademark portfolio also is maintained by Calfee.
Additionally, understanding that intellectual property litigation can be very expensive, Calfee often will explore alternatives to one-size-fits-all, “full-blown” litigation, such as alternate dispute resolution, creative staffing, and parallel negotiation/litigation.
In addition to litigation, we offer other patent dispute-oriented services including the following:
Opinions
Calfee’s patent practice is regularly called on to provide a spectrum of opinions, including defensive opinions such as non-infringement and invalidity opinions. Calfee also is called upon to provide Rule 11 analyses and opinions regarding third-party competitors' infringement of our clients' patents.
Calfee is routinely asked to provide second opinions of other firms' patent opinions.
Our opinion work is centered around potential new product launches in mechanical, chemical, or electrical/software arts. In this regard, Calfee has developed various strategies for searching and analyzing a wide range of patent landscapes to meet available client budgets.
We employ a two-attorney review of all opinions to ensure that all reasonable positions have been considered. One of the two attorneys is typically an experienced patent litigator who brings a litigation perspective to the opinion process.
Calfee’s opinions have taken a wide range of forms, including formal written work product (ranging from being more summary to extremely detailed in nature), graphical (e.g., PowerPoint) presentations, and combinations of the foregoing.
Counseling
Along with opinions, Calfee’s patent practice is routinely called upon to provide counseling on a wide range of matters, including competitive patent portfolio analyses and threats, design-around, non-infringement, invalidity positions, as well as due diligence for patent-related mergers and acquisitions.
For new business ventures or new product designs, our patent practice has significant experience analyzing competitor patent portfolios and counseling business unit leaders on associated risks and design-around alternatives. Calfee’s patent practice is relied upon daily by many Fortune 1000 companies.
Noteworthy
Chambers USA Leading Law Firm Rankings
Since 2004, Calfee has been recognized as a Leading Law Firm for Intellectual Property by Chambers USA, most recently in Band 1 in Ohio (2023).
Clients provided feedback to Chambers USA researchers, "Calfee is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. The IP team is highly experienced in the engineering, chemical, and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients. The team is responsive, practical, and extremely knowledgeable."
Clients interviewed by Chambers USA said, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost. Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients. This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with."
Chambers USA researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."
Best Lawyers® “Best Law Firms” Rankings
Calfee was selected for inclusion in the 2024 "Best Law Firms" rankings in the following areas:
- Litigation – Intellectual Property (National Tier 3, Regional Tier 1 Cleveland)
- Patent Law (Regional Tier 1 Cleveland)
Benchmark Litigation Rankings
Calfee was selected for inclusion by Benchmark Litigation 2024 as a Highly Recommended Law Firm in Dispute Resolution in Ohio. Additionally, 14 of Calfee's Litigation partners have been ranked by Benchmark Litigation as "Litigation Stars" in the U.S. (National), Midwest, and Ohio and as “40 & Under" and "Future Stars" Honorees.
Professionals
Professionals
Partner; Associate Director, International Business – Asia
Experience
Experience
Whether a case demands trial and appeal or a well-negotiated settlement, our top priority is finding the right path to defend our clients and achieve their goals in the most economical and efficient way possible.
Recent Representative Matters
- Handling IP matters for a publicly traded, Fortune 1000, global manufacturer, including drafting and prosecuting dozens of patent applications directed to technology of strategic importance to the client. Calfee also represents the company in significant IP litigation matters when they occur. Calfee routinely manages and assists with matters related to patent prosecution and IP strategy, management and strategy of patent and trademark portfolios, and advice on IP strategy and litigation. Calfee also is handling "take-down" disputes related to infringers of the client's patents on the Amazon.com website.
- Serving as primary IP counsel for a publicly traded manufacturer and its operating companies with responsibility for more than 125 active patent and trademark matters for this client. With regard to clearance, we provide right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. Calfee also prepares, files, and prosecutes patent and trademark applications, and we represent the company in IP-related disputes.
- Representing a publicly traded, Fortune Global 500 company on certain sensitive and highly confidential IP and litigation matters important to the client’s business. Calfee also counsels the client on software and IT-related agreements.
- Managing a publicly traded, Fortune 1000 multinational manufacturer's global trademark portfolio, including filing and prosecution, portfolio management, enforcement, and disputes. Calfee advises the client in patent preparation and prosecution matters, including strategy and filings. Calfee advises on patent enforcement matters, which are currently in pre-litigation investigation, including developing infringement analysis to stop infringement in markets with high-revenue product lines. Calfee also assists the client with a variety of other intellectual property counseling matters, including patent opinions, IP-related terms in agreements, cross-border enforcement, IP licensing, IP acquisition (particularly in China), and advising on best practices for protecting and harvesting intellectual property.
- Serving as litigation counsel for a global company serving the healthcare industry, most notably in its recent lawsuits in the Midwest. Calfee IP attorneys have handled significant portions of a multi-million-dollar lawsuit.
- Representing a publicly traded, Fortune 1000 company and its operating entities spanning several continents in its complex intellectual property litigation and transactional matters. These matters range from complex IP deals (purchases, licensing, government contract issues) to infringement and theft of trade secret disputes, including multiple multi-million-dollar patent enforcement matters, an IP Option and Evaluation agreement to acquire a large IP portfolio and to assume government contracts, and an arbitration/litigation matter to resolve trade secret and contract claims relating to military and civilian systems.
- Assisting an Asian manufacturing company with its U.S. patent and trademark filings while overseeing its entire global patent and trademark portfolios. Relatedly, Calfee represented the client in two separate International Trade Commission (ITC) investigations. At stake was whether the ITC would block the importation of several of the company’s products. Calfee obtained successful results for the client in both matters. Calfee also successfully defended the company on patent infringement allegations.
- Serving as global Intellectual Property Lead Counsel for an Asia-based manufacturer, representing the client in district court litigation matters and prosecuting patent applications. The patent work for this client includes patent infringement matters filed in district courts in two states and the Federal Circuit as well as in six inter partes reviews before the Patent Trial and Appeal Board. These actions are being heard in a variety of forums in four countries.
Calfee understands that a “win” does not simply mean victory in the courtroom; it also means achieving the financial goals that make the time and expense of litigation worthwhile. A sample of our successes includes the following:
- Brita Wasser-Filter Systems v. Recovery Eng., et al., Case No. 97 C 3915 (N.D. Ill.). Won summary judgment of non-infringement of water filtration pitcher patent after successful Markman hearing. 41 F.Supp. 2d 818. Won affirmance of the judgment on appeal to the Federal Circuit.
- Joao Bock Transaction Systems v. KeyBank N.A., Case No. 7:14-cv-02883-WWE (S.D.N.Y.). Patent claims for securitization systems for online banking transactions. Moved to dismiss the complaint at the pleadings stage on the basis that the patent-in-suit involved a mere abstract idea, which was not patentable subject matter under recent Supreme Court precedent. A prompt settlement was obtained.
- Citrix Systems, Inc. et al v. 01 Communique Laboratory, Inc., Case No. 2:14-cv-04185 (C.D. CA). Defended a global software company in a patent infringement claim, resulting in a jury verdict of non-infringement.
- Maxim Integrated Products, Patent Litigation, Case No. 2:12-mc-00244 (W.D. Pa.). Defended patent claim to the operability of mobile banking applications when running on smartphones.
- TQP Development, LLC v. KeyCorp, Case No. 2:12-cv-00058-DF (E.D. Tex.). Patent claims for online banking use of secured Internet communications. Negotiated settlement.
- Teva Pharmaceuticals USA Inc. et al v. Forest Laboratories Inc., Case No. 1:13-cv-02002 (D. Del.). Lead counsel for two global pharmaceutical companies as plaintiffs in a patent infringement case involving an Alzheimer’s drug, which resulted in a settlement on the day before trial. Obtained favorable claim constructions and prevailed in several dispositive disputes.
- Integrated Technology Corporation v. Rudolph Technologies, Inc., Case No. 1:06-CV-2182 (D. Az.). $40 million verdict against a public company for years of infringement. Awarded nearly $2 million in attorneys’ fees for defendant’s misconduct. Successfully defeated Supreme Court petition for certiorari.
- MTD v. Toro (multiple cases). Represented MTD in a series of patent enforcement actions against Toro.
- Fortune Brands (multiple cases). Represented multiple Fortune Brands entities, including Moen and Master Lock, in patent enforcement actions and in defense against patent claims across the United States. Results include consent judgments, license payments, and injunctions when on the plaintiff’s side and negotiated settlements when on the defense side.
- Atotech USA Inc. et al. v. Macdermid Inc., Case No. 2-05-cv-05517 (D. N.J.). Patent and trade secret litigation on behalf of a leading chemical maker. Obtained negotiated settlement on behalf of patent owner.
- InterDesign, Inc. v. Merrick Engineering, Inc., Case No. 1:16-cv-02498 (N.D. Ohio). Design patent litigation for consumer products maker. Represented a design company in promptly obtaining stipulation and order to stop sale of defendants infringing products. Successfully enforced patents against competitors.
- United States Endoscopy Group, Inc. v. ConMed Endoscopic Technologies, Inc. et al., Case No. 1:06-cv-01253 (N.D. Ohio). Enforcement of patents against a competitor and defense of antitrust claims. Obtained prompt settlement.
- Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., Case No. 1:17-cv-01794 (N.D. Ohio). Currently representing the world’s second-largest mobile radio maker in first U.S. enforcement action.
- DISH Network. Since 2008, we have represented DISH Network in a very significant Lanham Act unfair competition matter; the case was recently settled.
- MRI Software LLC v. Lynx Systems Inc., Case No. 1:12-cv-01082 (N.D. Ohio). Lead counsel for a global software company in a case involving copyright and trademark infringement and trade secret misappropriation. Promptly obtained entry of preliminary injunction on behalf of the plaintiff. The case was favorably settled.
- LBS Innovations LLC v. BP America Inc., et al., Case No. 2:11-cv-00407-DF (E.D. Tex.). Patent claims to the operability of geo-location functionality on the website. Successfully invoked indemnification.
- Stambler v. Intuit Inc., et al., Case No. 2:10-cv-00181 (E.D. Tex.). Patent claims for online banking use of secured internet communications. Negotiated settlement.
Services
Services
- Patent, trademark, and copyright infringement
- Inter partes reviews, patent interferences, reexaminations, and reissue proceedings before the U.S. Patent and Trademark Office
- Trademark opposition and cancellation proceedings
- Trade secret misappropriation
- Unfair competition violations
- International Trade Commission proceedings
- U.S. Customs conflicts
- Temporary restraining orders, preliminary and permanent injunctions, seize orders
Our attorneys have prosecuted and defended litigation involving subjects as:
- Personal computers and printers
- Packaging and batteries
- Medical devices
- Mobile communications
- Alternative fuels
- Chemical compositions
- Pharmaceuticals
- Business methods/websites
- Firearms
- Tires
- Wheelchairs
- Locks and security devices
- Plumbing fixtures
- Wireless communications device and applications
- Homecare health aids
- Optical analyzers
- Polymer circuit protection devices
- Paint removal products
- Polymers
- Semiconductors
- MPEG video codes
- Computer software
- Consumer products
- Automotive assemblies
- Welders
Client Feedback
Client Feedback
- "Calfee's IP team is responsive, practical, and extremely knowledgeable."– Client quote, Chambers USA 2023
- "The team handles very complex patent work for us and has proven to be very professional and knowledgeable." – Client quote, Chambers USA 2022
- "They manage situations so they can be handled cost-effectively, they're great at communicating and make strong, practical recommendations, rather than just legal assessments." – Client quote, Chambers USA 2022
- "Calfee does phenomenal work and has become our go-to firm for IP services." – Client quote, Chambers USA 2022
- "They have a really good spectrum of talent across sectors and expertise, particularly in the technology space." – Client quote, Chambers USA 2022
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