dcsimg Intellectual Property

Intellectual Property

In today’s information-intensive business environment, intellectual property assets are a significant component of any company’s overall portfolio. The experienced lawyers of McGuireWoods’ national intellectual property practice help clients develop, protect and exploit commercially valuable ideas and information, including patents, copyrights, trademarks and trade secrets. As the use of social media as a business tool continues to grow, we also advise clients on advertising and sweepstakes, website audits and content review, data privacy, and licensing issues.

Our intellectual property strength is recognized by rating agencies and clients alike. For example, the chair of our intellectual property practice was recently named “Virginia Litigator of the Year” by Benchmark Litigation. In an interview about our practice with Chambers USA, one of our clients said, “They are a first-rate law firm in all respects.” Further, our partners are regularly sought after by leading industry and legal publications and media outlets such as Corporate Counsel, E-Commerce Times and TV5MONDE (a television station dedicated to the French-speaking community worldwide) for their insights on IP-related legislative, regulatory and judicial developments.

Our intellectual property practice marries the talents of the firm’s corporate and litigation lawyers. Working together and with attorneys from the firm’s core practice areas — including healthcare, labor and employment, private equity and tax, among others — we provide comprehensive, sophisticated solutions that help individuals and companies maximize returns from their creative, technological and business endeavors.

We represent clients from virtually every sector of the global economy, including retailers, merchandisers, real estate developers, manufacturers, financial institutions, healthcare providers, insurance companies, telecommunications providers, importers, computer software developers, computer hardware retailers, advertising agencies, artists, and restaurants.

The fast pace of intellectual property development and dissemination increases the likelihood of disputes — and the importance of resolving matters quickly and efficiently, before the window of maximum profitability has closed. We work with clients to identify the most effective means of addressing misappropriation, misuse and theft of IP assets, and employ a broad range of dispute resolution tools, including mediation, arbitration and settlement. When litigation is necessary, we are prepared to bring the full weight of our trial talent and firm resources to bear on behalf of our clients’ interests, whether in pursuit of claims or in defense of unsubstantiated allegations.

CONTACTS

Brian C. Riopelle Partner T: +1 804 775 1084
Janet P. Peyton Partner T: +1 804 775 1166
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RESULTS DEPEND ON A VARIETY OF FACTORS UNIQUE TO EACH CASE. PRIOR RESULTS DO NOT GUARANTEE OR PREDICT A SIMILAR OUTCOME.

Representative Matter

E.I. du Pont de Nemours and Company

E.I. du Pont de Nemours & Co. v. Kolon Industries, Inc., Case No. 3 :09cv58 (E.D. Va.). Represented plaintiff in a trade secrets case against Kolon Industries, a South Korean manufacturing company. After a seven-week trial, the jury found that Kolon illegally obtained information regarding DuPont's Kevlar® aramid fiber from former DuPont employees and awarded DuPont $920 million in damages.
Representative Matter

One of Fortune's most admired companies

McGuireWoods was co-counsel for one of the World's most admired companies in this patent case involving Voice over Internet Protocol technology. A jury in U.S. District Court in Alexandria found that the defendant had infringed on three patents held by our client and awarded them $58 million.
Representative Matter

Mobile network operator

Patent case involving wireless broadband modems asserted against most of the domestic wireless carriers. McGuireWoods was selected by all defense counsel to be lead trial counsel.
Representative Matter

Leading generic and specialty pharmaceutical company

Represented a generic pharmaceutical company in case filed by a leading global health care company where the allegations relate to infringement of a patent involving salts and formulations of fenofibric acid used as lipid and cholesterol lowering agents.
Representative Matter

Wireless device manufacturer

McGuireWoods was co-counsel to a manufacturer of wireless devices, in patent litigation brought by a patent holding company. McGuireWoods was retained to represent our client after the Federal Circuit issued its first opinion on appeal and played a central role in the team that represented the client in the widely-publicized district court remand proceedings.
Representative Matter

A California-based manufacturer

Defended a California-based manufacturer sued over its use of the trademark “Grout Shield” along with its “Miracle Sealants Company” logo on products sold through Home Depot and other distributors. The New York-based plaintiff asserted claims of trademark and trade dress infringement, false designation of origin and unfair competition under federal and New York law. After a full evidentiary hearing with live testimony, the court issued a 30-page memorandum and order denying every aspect of the relief plaintiff sought. The case then settled favorably.
Case Study

McGuireWoods represents Plano Molding in Frabill acquisition

McGuireWoods LLP announced today that it represented Plano Molding Company in its acquisition of Frabill Inc. The transaction, which was announced on Monday, closed on June 15. It brings together under one roof Plano, the worldwide leader in fishing tackle storage systems, and Frabill, the North American leader in live bait storage, landing nets and portable ice fishing shelters and related accessories.

Representative Matter

Private liberal arts and sciences college in Virginia

Represented a private liberal arts and sciences college in Virginia in a trademark dispute with certain disaffected alumnae.
Representative Matter

Manufacturer and seller of sustainable building materials and furnishings

Represented a California-based manufacturer and seller of sustainable building materials and furnishings in a dispute with a Nevada-based host and promoter of trade shows in litigation over use of the mark "Livingreen." A favorable settlement was reached at the beginning of trial of the case.
Representative Matter

E.I. du Pont de Nemours and Company

E.I. du Pont de Nemours & Co. v. Kolon Industries, Inc., Case No. 3 :09cv58 (E.D. Va.). Representation of plaintiff in a trade secrets case against Kolon Industries, a South Korean manufacturing company. After a seven-week trial, the jury found that Kolon illegally obtained information regarding DuPont's Kevlar® aramid fiber from former DuPont employees and awarded DuPont $920 million in damages.
Case Study

Brussels team successfully represents international online gambling operator in trademark infringement case

McGuireWoods recently represented an international online gambling operator in a trademark infringement case brought before the Court of First Instance of Paris by the group Pari Mutuel Urbain (PMU), which until recently had held a monopoly in France on gambling on horse racing.

Case Study

Patent team negotiates settlement for KSD Enterprises LLC

McGuireWoods patent litigators from Tysons Corner recently defended KSD in a make-or-break-the-company case. Shortly after the first depositions and expert reports, we negotiated a settlement agreement. KSD Enterprises, LLC of Clarksburg, W.Va., makes Methane Exhausters, which remove methane from coal mines and landfills. The exhausters can make coal mines safer and landfills cleaner, generate electricity from the methane they’re removing, and even generate revenue from carbon credits. In December 2009, KSD was sued for patent infringement, contributory infringement, and inducement of infringement, as well as breach of contract and conversion of assets.

Case Study

McGuireWoods wins key patent trial for wireless carriers

A Richmond federal jury took less than two hours on Dec. 14, 2009, to rule in favor of McGuireWoods’ client Verizon Wireless, and several other wireless carriers in a massive patent infringement case.  The jury ruled the wireless carriers did not violate a patent by selling wireless aircards, and it declared that the dialing technology patent at the center of the suit – held by DNT – was invalid.
Representative Matter

Autosports legend

Defended autosports legend in a trademark trial and appeal board proceeding filed by a worldwide leader and manufacturer of sports equipment opposing registrations of our client as word mark and signature mark, and reached a favorable settlement.
Representative Matter

Ship maintenance software vendor

Represented a ship maintenance software vendor in claims against ABS Nautical Systems, a subsidiary of the American Bureau of Shipping, in an arbitration for breach of a joint venture agreement, fraud and copyright infringement.
Case Study

Significant ruling secured for world leader in handheld computing

Palm, Inc. secured a significant victory in its patent dispute with NTP, Inc., a Virginia-based patent holding company. On March 23, 2007, a U.S. District Court judge in Richmond, Va., granted Palm's motion to stay NTP's patent infringement lawsuit against Palm, pending the conclusion of patent office reexamination proceedings, and all subsequent appeals. This is the first time a judge in the Eastern District of Virginia's "rocket docket" has completely stayed a patent suit pending reexamination proceedings. McGuireWoods is co-counsel to Palm in the matter.

Case Study

$58 million verdict in patent case for Verizon

McGuireWoods recently represented Verizon Communications, Inc. in a major victory over Internet phone provider Vonage Holdings Corp. On March 8, 2007, an Alexandria U.S. District Court jury found that Vonage had infringed upon three Verizon patents, and awarded Verizon $58 million. Verizon’s motion to permanently enjoin Vonage from using the patented technology was granted March 23. The patents involved technology that allows Voice over Internet Protocol callers to make calls using traditional phones; allows custom calling features such as call forwarding; and supports phone calls on Wi-Fi networks.

Representative Matter

Nonprofit corporation of a public university in Virginia

Defended a nonprofit corporation of a public university in Virginia in breach of contract litigation with a disgruntled research sponsor.
Representative Matter

Private liberal arts university in Virginia

Defended a private liberal arts university in Virginia in trademark litigation with a sports apparel company.
Representative Matter

International financial institution

Representation of international financial institution seeking to halt competitor’s trademark infringement in nationally televised bankcard commercials.
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E. Osborne Ayscue Jr. E. Osborne Ayscue Jr.
Counsel
201 North Tryon Street
Suite 3000
Charlotte, NC 28202-2146

T: +1 704 343 2058
F: +1 704 343 2300
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Mary Dalton Baril Mary Dalton Baril
Partner
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 1169
F: +1 804 698 2009
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George J Barry III George J. Barry III
Partner
Promenade
1230 Peachtree Street, N.E.
Suite 2100
Atlanta, GA 30309-3534

T: +1 404 443 5734
F: +1 404 443 5753
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Marshall Beil Marshall Beil
Partner
1345 Avenue of the Americas
7th Floor
New York, NY 10105-0106

T: +1 212 548 7004
F: +1 212 715 2319
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Micheal L Binns Micheal L. Binns
Associate
Promenade
1230 Peachtree Street, N.E.
Suite 2100
Atlanta, GA 30309-3534

T: +1 404 443 5748
F: +1 404 443 5698
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William J Boddy William J. Boddy
Associate
11 Pilgrim Street
London EC4V 6RN
United Kingdom

T: +44 20 7632 1625
F: +44 20 7632 1638
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Irving M Brenner Irving M. Brenner
Partner
201 North Tryon Street
Suite 3000
Charlotte, NC 28202-2146

T: +1 704 343 2075
F: +1 704 343 2300
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Jonathan Edward Buchan Jonathan Edward Buchan
Partner
201 North Tryon Street
Suite 3000
Charlotte, NC 28202-2146

T: +1 704 343 2063
F: +1 704 444 8714
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Demetria Buncum Demetria A. Buncum
Associate
1750 Tysons Boulevard
Suite 1800
Tysons Corner, VA 22102-4215

T: +1 703 712 5069
F: +1 703 712 5245
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Kristen M Calleja Kristen M. Calleja
Counsel
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 1374
F: +1 804 698 2264
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Karen L Carroll Karen L. Carroll
Associate
Promenade
1230 Peachtree Street, N.E.
Suite 2100
Atlanta, GA 30309-3534

T: +1 404 443 5620
F: +1 404 443 5757
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Darren Collins Darren W. Collins
Partner

T: +1 214 593 7143
F: +1 214 273 7499
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William J Cook William J. Cook
Partner
77 West Wacker Drive
Suite 4100
Chicago, IL 60601-1818

T: +1 312 750 2750
F: +1 312 698 4536
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Laurie Craig Laurie Craig
Counsel
11 Pilgrim Street
London EC4V 6RN
United Kingdom

T: +44 20 7632 1696
F: +44 20 7632 1638
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Ashley Z Crenshaw Ashley Z. Crenshaw
Associate
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 1150
F: +1 804 440 7725
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Andriana L Shultz Andriana Shultz Daly
Associate
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 7512
F: +1 804 440 7727
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Patrick A Darno Patrick A. Darno
Associate
1750 Tysons Boulevard
Suite 1800
Tysons Corner, VA 22102-4215

T: +1 703 712 5136
F: +1 703 712 5215
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Tracy N. DeMarco
Associate
434 Fayetteville Street
Suite 2600
Raleigh, NC 27601

T: +1 919 755 6682
F: +1 919 755 6596
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William N Federspiel William N. Federspiel
Associate
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 4382
F: +1 804 698 2011
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David E Finkelson David E. Finkelson
Partner
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 1157
F: +1 804 225 5377
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Benedicte Kaare Fjeld Benedicte Kaare Fjeld
Associate
11 Pilgrim Street
London EC4V 6RN
United Kingdom

T: +44 20 7632 1684
F: +44 20 7632 1638
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Robert L Florence Robert L. Florence
Partner
Promenade
1230 Peachtree Street, N.E.
Suite 2100
Atlanta, GA 30309-3534

T: +1 404 443 5726
F: +1 404 443 5777
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A. Brooks Gresham
Partner
1800 Century Park East
8th Floor
Los Angeles, CA 90067-1501

T: +1 310 315 8291
F: +1 310 956 3104
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Matthew Hall Matthew Hall
Partner
rue des Colonies 56 - box 3
1000 Brussels

T: +32 2 629 42 34
F: +32 2 629 42 22
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T. Craig Harmon T. Craig Harmon
Partner
One James Center
901 East Cary Street
Richmond, VA 23219-4030

T: +1 804 775 1097
F: +1 804 698 2074
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Legal and Regulatory Summit on Generic Drugs

July 24-25, 2014
New York, NY
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5th Annual Conference on Biosimilars

June 4-6, 2014
New York, NY
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Institut de la Chambre de Commerce et d'industrie de Paris

Pratique du copyright aux Etats-Unis

April 3-4, 2014
Paris
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BioCentury This Week

Safety v. Competition

February 16, 2014
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2013 CMP Business Outreach Center

November 23, 2013
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Institut de la Chambre de Commerce et d'industrie de Paris

Pratique du copyright aux Etats-Unis

April 3-4, 2013
Paris
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Understanding the Intellectual Property License 2012

PLI Seminar

November 8, 2012
Chicago, IL
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Institut de la Chambre de Commerce et d'industrie de Paris

Pratique du copyright aux Etats Unis

April 4-5, 2012
Paris
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Charlotte ACC

Data Security and Privacy

November 2, 2011
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PLI Understanding the Intellectual Property License 2011

November 3-4, 2011
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ACI 5th Annual Focus on Sweepstakes, Contest and Promotions

September 27, 2011
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Pratique du copyright

June 15-16, 2010
Paris
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UNAIDS Roundtable

Time for Action: Making HIV Medicines Accessible for Patients from Developing Countries

October 29, 2009
Speaking Engagement

4th Annual TCF IT Professional Conference

April 2009
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Article

Sports Technology: Recent Patents and New Innovations

Winthrop Intelligence
January 2, 2014
Article

Induced Infringement: What In-House Counsel Need to Know

CorporateCounsel.com
December 2, 2013
Article

Le régime des créations et inventions des salariés

Cahier du Juriste
fevrier 2012
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A Stronger Protection for Personal Data

January 6, 2012
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Protecting Your Technology in the EU

December 9, 2011
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Les voleurs de «look»

L'Echo
21 septembre 2011
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Patent Reform Expected to Become Law

September 16, 2011
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FINRA and Social Networking Sites

April 2, 2010
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FCC Broadband Plan Submitted to Congress

March 22, 2010
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