The electronics, computers and software practice of Sutherland’s intellectual property group counsels, prosecutes and litigates for domestic and international companies needing to protect and exploit electronic and computer-related intellectual property rights.
Our intellectual property lawyers understand the complexities of technology and the industry needs of our clients. Many have degrees in electrical engineering and computer engineering and have worked as researchers or engineers in a variety of industries.
The technical knowledge and specific industry experience of our electronics, computers and software attorneys strengthen and deepen our client services.
While counseling, prosecuting and litigating for clients, our lawyers have dealt with sophisticated technology including:
- Computer hardware and software
- Computer networks and related management systems, including network security
- Computer-based business methods
- Optical fiber devices and networks
- Wireless and wireline communications devices and systems
- Display systems
- Image processing
- Integrated circuit design
- Semiconductor devices and fabrication techniques
- Microelectromechanical systems
- Power systems
Specifically, our software experience covers applications for computer operating systems, television and digital broadcast systems, data processing and communications, signature digitizing, interactive electronic programming guides, electronic bill presentment and payment solutions, point-of-sale systems, couponing and incentive solutions, financial services, healthcare information systems and inventory control systems.
Prosecution and Counseling
Our prosecution and counseling attorneys fulfill the intellectual property needs of our clients through a broad range of services. Each client matter receives consideration as to the most efficient and effective course of action.
Our patent-related counseling and representation of clients includes:
- Preparing and filing patent applications and prosecuting patents both in the United States and internationally;
- Advising on alternative methods of protecting patentable, commercially valuable systems, methods and information;
- Analyzing third-party patents to ascertain the risk of infringement, and counseling with clients on how to mitigate the risk of infringement;
- Preparing patentability, noninfringement, validity and clearance opinions; and
- Analyzing and advising with regard to infringement claims of patent holding companies.
In transactional matters, we conduct due diligence reviews in asset purchases, mergers and acquisitions, corporate financing and joint ventures. We analyze intellectual property assets, agreements and licenses, and assess infringement risks. We also regularly draft and negotiate licenses for patents, copyrights and software.
We have handled the special needs of large and small emerging growth companies. We focus on obtaining the broadest protection possible, within defined business goals while emphasizing efficiency. When developing a patent strategy, we regularly map our client’s patents and/or the competitors’ patents to identify areas of strength, weakness and opportunity. We also perform audits to identify intellectual property that is not being protected and to ensure that current protective measures are adequate.
Sutherland’s electronics, computers and software team also has substantial litigation experience and is comfortable explaining cutting-edge technologies to both judges and juries.
When a dispute involves complex technology, you need to be represented by a lawyer who understands it and can explain it to a judge, jury, arbitrator or mediator. Our 25-lawyer intellectual property litigation practice includes experienced trial lawyers who have represented plaintiffs and defendants in over 100 trials and legal proceedings in all forums – state, federal and foreign courts, arbitration and mediation inside and outside the United States, and administrative proceedings before the U.S. International Trade Commission, U.S. Patent and Trademark Office and international Patent Offices. Appeals from these cases have ended up in state and federal appellate courts, including the U.S. Court of Appeals for the Federal Circuit, where we have won important rulings both affirming and reversing lower court decisions. Additionally, several of our attorneys have served as Special Masters in patent litigation matters before U.S. district courts.
We believe that technology businesses need great trial lawyers who are also great technology lawyers. Where patents are involved, you need a team that can spot all the potential invalidity and infringement scenarios. That requires intimate familiarity with the patent prosecution rules, and with the industrial applications of the technology at issue. Our patent prosecutors and litigators work as a team to provide efficient and thorough analysis and advocacy. In particular, we have experience analyzing and advising clients with regard to infringement claims made by patent holding companies.
In most technology litigation, the stakes are extremely high for both sides. We regularly handle multi-patent, multi-district disputes between industry competitors, so we understand that litigation is an important part of an overall competitive strategy. In one well-known example, we were lead counsel in one of the largest patent infringement disputes in U.S. history, coordinating the efforts of dozens of lawyers handling 18 separate cases involving dozens of patents. When settlements are warranted, we have structured cross-licenses and other arrangements to serve the client’s overall business goals.
E-commerce and Branding Disputes
Domain name disputes, trademark infringement and copyright infringement are all threats to high-tech businesses. Our lawyers have protected trademark and copyright owners in the business software, financial services, medical software, payments processing, electrical cable, e-commerce and consumer products industries.
Trade Secrets Misappropriation and Unfair Competition
Tight markets in high-tech industries frequently result in unfair competition. Our litigators have obtained emergency relief against former employee contacts with the client’s current employees and suppliers, and permanent injunctions against competitors and former employees. We know how to use forensic computer techniques to obtain “smoking gun” evidence quickly and efficiently, where the threats call for prompt action. We also have asserted and defended anti-trust claims in technology disputes.
© 2013 Sutherland Asbill & Brennan LLP