Intellectual Property Services

Litigation

Litigation

We are a group of seasoned litigators who have successfully handled thousands of intellectual property disputes for a variety of clients from multinational corporations (who want the best advice money can buy) to small, local startups and individuals (who quickly learn that good legal advice is often priceless).  Our victories cover cutting-edge technology, household brand names, and well-known works of creative expression.  We understand that our clients’ IP can represent limitless opportunities for them.  It is why we are so driven to maximize those opportunities by providing the best informed choices and strategic advice available.

We are proud to be a diverse group of men and women with academic degrees and technical backgrounds that range from biochemistry to computer science, engineering to medicine, business to finance.  Our team thrives on the unique challenges conflict can provide and capitalizes on the different perspectives that our diversity supplies.  We temper our practical experience and know-how with industry knowledge and business-savvy to craft comprehensive advice that bridges the gap between legal and practical that most lawyers often overlook.

Our unique approach always starts with understanding our clients’ assets and needs, surveying the internal and external factors driving the conflict, and identifying the various forms that victory can take.  From that vantage, our professionals take a fluid, cost-effective approach to counseling clients on not only how to extract competitive advantage out of IP, but also how to best use that advantage to accomplish their business objectives.  Simply put, understanding how our clients can successfully operate within complex business and legal frameworks is what motivates us.  It is the bedrock upon which we provide efficient, effective, and exceptional advice regarding any given conflict or dispute.

Utility and Design Patent Litigation

We have the science and engineering backgrounds to understand almost any patentable technology on the planet, but patent cases often hinge on not only understanding the technology at issue, but also understanding how to convincingly advocate one’s rights relative to the technology for any given forum.  We have successfully represented patent owners and putative infringers alike in patent infringement and validity litigations in federal courts across the country, securing key wins at every stage of the proceedings, including before the Court of Appeals for the Federal Circuit.  Our patent litigation team also successfully employs post-grant patent review proceedings before the U.S. Patent & Trademark Office.  It is the combination of knowing when, where, and how to best resolve a patent conflict that enables us to obtain favorable results for our clients time after time. Our litigation strategy is so well-respected that our patent litigators are routinely called upon as expert witnesses in other patent cases.

In short, Leason Ellis is uniquely suited to address the complexities and challenges of practically any technology in the courtroom, before the Patent Office, or in the marketplace.

Trademark Litigation

We understand that our clients’ brands are inextricably linked with our own.  Their success in the marketplace is our success.  This simple concept is why we make sure that our clients understand that our best advice to them is never based on our bottom-line, only theirs.  That is why, more often than not, our trademark counseling services are geared toward strategically avoiding disputes or finding viable paths to amicable resolution.  Even so, we realize that even good faith negotiation has its practical limits and some adversaries simply must be beaten  ̶ roundly, soundly, and with enthusiasm  ̶  before they see reason.  Our stable of seasoned trademark litigators are equally adept at making war or peace in furtherance of clients’ needs.  We handle all types of trademark infringement, dilution, and unfair competition cases involving trademarks, service marks, trade names, trade dress, and product configuration. We regularly appear in federal district courts and circuit appellate courts across the country as well as before the USPTO and its Trademark Trial and Appeal Board (TTAB). We are proud to have achieved remarkable results for our clients, including trial victories. We also champion our clients’ trademark interests outside the U.S. and manage international trademark disputes through our counsel network around the world.

Counterfeiting/Gray-Market Goods

Like the answers to many legal questions, the marketplace isn’t always black and white – there is often a lot of gray.  Some channels are legal, but others are unauthorized or unintended. In courts across the U.S., we act swiftly against both manufacturers and distributors to stop the flow of counterfeit and gray market goods and have obtained emergency injunctive relief for our clients. Our attorneys also work with U.S. Customs and Border Protection to detain and seize infringing goods before they enter the stream of commerce.

False Advertising and Unfair Competition

Bragging is one thing. Making false claims is another. Leason Ellis attorneys are up-to-speed and at the starting block when a competitor is making false claims or competing unfairly; we know that time matters. If false statements or deceptive advertising threatens a client’s brand and goodwill then immediate relief is needed. We understand the nuances of false statements, deceptive practices, and consumer confusion, and have achieved swift resolutions for our clients, including through obtaining restraining orders.

Trade Secrets

A key employee leaves your company, gets hired by a competitor, and spills the beans about everything. Senior-level officers and core employees move around a lot, especially in the technology industry, sometimes taking and then using your customer lists, software, and even business agreements. Our practice counsels trade secret owners about those issues. Ideally, we help clients protect their secrets by developing protocols to avoid misappropriating others’ secrets and defend against claims of trade secret misappropriation. In cases where the cat may already be out of the proverbial bag (or on the verge thereof), Leason Ellis has successfully litigated for both plaintiffs and defendants.

Domain Name Litigation and UDRPs

It’s your address. You should be able to live there without squatters. We regularly handle domain name disputes, both in the courts as well as through ICANN’s Uniform Dispute Resolution Policy (UDRP). Cybersquatting and Internet infringement are pervasive, so we recommend to our clients domain name registration strategies to help avoid or minimize more costly enforcement work down the road. Our attorneys also help clients manage and set priorities for enforcement efforts.

Copyright Litigation

Leason Ellis has litigated copyright infringements successfully on behalf of both plaintiffs and defendants in federal district courts across the country.  Copyright cases are often driven by whether the work(s) at issue are covered by a copyright registration prior to copying, in which case, the copyright owner may be entitled to recovery of statutory damages and attorneys’ fees.  We are adept at using the leverage created by the existence of a copyright registration to reach favorable results.  We have also driven the removal of infringing content from websites by submitting take-down notices to internet service providers and through other means.  On behalf of companies accused of copyright infringement, we have also successfully defended against claims by copyright owners who failed to obtain copyright registration prior to filing suit and have obtained dismissals on other grounds and favorable settlements.

Arbitration and Settlement Negotiation

While litigation is an important tool for you to protect or defend your rights, sometimes settlement is the next most important step rather than continuing a fight. In a dispute, you want the most knowledgeable person in your corner—someone you trust to know and represent your best interests. We are your advocates to make sure you receive the most favorable resolution to disputes. When settlement is in your best interest, we work diligently to achieve favorable resolution of patent, trademark and copyright-related disputes. We draw on our depth of experience negotiating and drafting settlement agreements, co-existence agreements, assignments, and licenses to bring disputes to an end so that you can go back to growing your business.

Local Counsel

Leason Ellis operates in a global arena as a full service IP boutique with both an international reputation and hometown familiarity.  We often serve as “local counsel” for other law firms (both larger and smaller) located throughout the United States and abroad in federal cases pending in the United States District Court for the Southern and Eastern Districts of New York.  Indeed, we routinely commence and defend IP lawsuits in Manhattan, Brooklyn, and White Plains on behalf of foreign and domestic clients and have enjoyed great success appearing before the jurists in those forums, including numerous victories on summary judgment, and at trial.

Home Court Familiarity

Almost all of our attorneys worked at large Manhattan-based firms prior to joining Leason Ellis.  When our litigators left Manhattan for Westchester County, they kept in mind the age-old adage that “good lawyers know the law; great lawyers know the judge.”  It is why we are not only meticulous in our litigation of IP cases before the judges assigned to the White Plains Division of the United States District Court for the Southern District of New York (located just a few blocks away from our offices) but equally, if not more, meticulous about monitoring IP cases adjudicated by those judges for litigants we do not represent.  No one can ever know how a judge will apply (or create) precedent for any given case, but our litigation team believes our clients are best served by a home-court familiarity based on a working knowledge of relevant and timely local jurisprudence.