Ball Metal Beverage Container Corp

Bombardier Recreational Products, Inc.

Bridgestone Americas

Corning

C.R. Bard

Kraft Foods Global, Inc.

LexisNexis

NASCAR

Ohio Willow Wood Company

Toyota

Vantiv

Walmart.com

Intellectual Property Licensing

Intellectual Property Litigation

Technology and Data Protection

Entertainment

575+

Licensing agreements in the past two years

$7.5 Billion
in sales resulting from our product licensing work

200+ litigators

and a robust litigation support staff firm wide

35 trademark matters/15 copyright matters
litigated since 2010

Negotiated hundreds of research agreements
for multiple clients, including cooperative research and development agreements with national laboratories and research agreements with domestic and foreign universities

Technical knowledge
of data privacy issues and export control, combined with skilled litigators

A process-oriented structure
to build efficiency and exceed client expectations.

Many of our attorneys have in-house counsel experience
with major companies, bringing unique business strategy whereby we look to address and manage the full spectrum of risks
 as an interrelated risk portfolio.

A comprehensive internal system
for managing applications and registrations

Bench and experience
to handle any size IP litigation, including contentious disputes before both the Patent and Trademark Trial and Appeal Boards.

Experienced lead and consulting counsel
in numerous post-grant proceedings before the USPTO, including inter partes review proceedings.

Work with companies to analyze privacy policies and rules
for data collection, data management procedures, ecommerce matters and exporting data to foreign countries.

We leverage a thorough knowledge of business and technology
to help clients mitigate risk through a wide variety of licensing agreements, including software license agreements, end user license agreements, SaaS agreements and OEM license agreements.

We are representing the Ohio Willow Wood Company in a number of patent infringement cases throughout the country involving prosthetic liners and sleeves.  In the primary case, prior to our involvement, our client had been found to infringe, damages had been awarded and enhanced for willful infringement, a permanent injunction had been issued and our client found in contempt for sales of a redesigned product, a receiver had been appointed, and our client had been forbidden from selling any other new products without approval of the court.  Alps South, LLC v. The Ohio Willow Wood Co. (MDFL).  We successfully litigated a contested motion to obtain district court permission for our client to market another modified product, prevailed in convincing the court not to enhance damages on infringing sales that occurred after the trial or on the sales of the redesigned product that the district court had found to be in contempt, and obtained an order from the Federal Circuit staying the district court’s contempt order during the appeal, thus eliminating the receiver’s restrictions on the client, the prohibition on the client selling the “contempt” product, and the requirement for approval of any other products. Alps South, LLC v. The Ohio Willow Wood Co. We are also representing the client in several other, related cases in Florida, Ohio, and the Eastern District of Texas.

We defended Reed Elsevier, Inc. against allegations that its Lexis Advance and Lexis Academic products infringed patents relating to data storage, search, and retrieval, which was successfully transferred to the S.D. Ohio and ultimately dismissed based upon our demonstration of non-infringement and lack of potential damages. Cascades Publishing Innovation, LLC v. Reed Elsevier, Inc. (NDIL)

We have represented Toyota for more than a decade in drafting and negotiating hundreds of research and licensing agreements, including Advanced Research Agreements, Consortium Agreements, Nondisclosure Agreements, Material Transfer Agreements, Cooperative Research and Development Agreements, and Consulting Agreements. In this role, we have worked with in-house counsel, as well as Toyota’s outside counsel, to streamline processes, contract language and negotiation tactics. We add value through offering flat fee billing, making routine visits to Toyota, and creating alternative contract templates and processes for unique situations.

We advised Toyota throughout a severe data breach by a former employee, including the immediate filing of a civil suit and temporary restraining order to keep the suspect from leaving the country. We then quickly began working with Toyota to thoroughly investigate the breach and upon completion, turned over our findings to the FBI to help build their criminal case.

We negotiated and drafted a Strategic Partnership Agreement between Maker Studios and Tribeca Enterprises to create the YouTube channel “Picture Show” featuring an original web series and short films. We advise Maker on talent and other production agreements addressing the intellectual property issues at the forefront of the entertainment industry.

We represented National Entertainment Collectibles Association (NECA) in acquiring the intellectual property rights to iconic musician Elvis Presley, and operation of his Graceland Estate (Licensing).

Joseph Saltiel
Partner • (312) 837-4304 • joseph.saltiel@dinsmore.com
IP Opinion and Prosecution