main content

Harris Beach PLLC Discover True Engagement image

People

About
  • About Harris Beach
  • Offices
  • Inclusion and Diversity
  • Community and Pro Bono
  • Lateral Opportunities
Careers
  • Careers at Harris Beach
  • Lateral Opportunities

Contact Us

Subsidiaries
  • HB Cornerstone
  • HB Solutions
  • Caetra.io
Industries
Legal Practices
Resources
Automotive and Vehicle Dealerships
Blockchain and Digital Assets
Cannabis
Construction and Surety
Education, K-12
EMS and Fire Protection Providers
Energy
Energy Industry Team
Sectors
Residential Electrical Submetering
Renewable Energy
Financial Institutions and Capital Markets
Food and Beverage
Food and Beverage Industry Team
Sectors
Nutritional Supplements
Health Care
Health Care Industry Team
Sectors
Long-Term Care
Higher Education
Industrial and Consumer Manufacturing
Medical and Life Sciences
Medical and Life Sciences Industry Team
Sectors
Long-Term Care
Nutritional Supplements
Pharmacy Law
Municipalities and Local Agencies
Nanotechnology
Photonics
Racing and Gaming
Real Estate Developers
Real Estate Developers Industry Team
Sectors
Retail Real Estate in New York State
Science and Technology
Telecommunications and Media
Unmanned Aircraft Systems – Drones
Veterinary Medicine
  • Alternative Dispute Resolution
  • Appellate
  • Business and Commercial Litigation
  • Collections
  • Commercial Real Estate
  • Corporate
  • Cybersecurity Protection and Response
  • Diversity Compliance
  • E-Discovery (e-infoâ„ )
  • Employee Benefits
  • Environmental
  • Environmental, Social and Governance (ESG)
  • Financial Restructuring, Bankruptcy and Creditors’ Rights
  • Foreclosure
  • Government Compliance and Investigations
  • Immigration
  • Insurance Coverage
  • Intellectual Property
  • International Trade
  • Internet Commerce
  • Labor and Employment
  • Mass Torts and Industry-Wide Litigation
  • Political Law
  • Product Liability and Comprehensive General Liability
  • Public Finance and Economic Development
  • Residential Real Estate
  • Tax
  • Wills, Trusts and Estates
  • Insights
  • News
  • Events
  • Covid-19 Resources

Intellectual Property

Legal Practice

2023 Best Law Firms - Patent Law Rochester
  • U.S. Supreme Court to Decide on Enablement Standard for Biotech Antibody Patents in Amgen v. Sanofi
  • Laura Smalley On Patent Eligibility and the Life Sciences Industry
  • Unitary Patent System Launching in Europe – Patent Holders May Need to Take Action
Profile
Services
Experience
People
Make a Payment

Intellectual property is a key driver of economic growth and often one of an organization’s most important assets. As technological advances accelerate the pace of innovation, organizations are turning to intellectual property laws to protect their investments and maintain their competitive edge. Our clients, ranging from emerging businesses to Fortune 500 corporations, count on our attorneys to protect their knowledge-based investments and their brand integrity.

In addition to being highly-credentialed and respected litigators, our IP attorneys have strong backgrounds and a wealth of knowledge in sophisticated technical fields including physics, computer, electrical engineering, medicine, mechanical engineering, chemistry, biotechnology, optics, environmental engineering, fluid dynamics and civil, structural, and process engineering.

Our IP litigation team has represented organizations with considerable IP assets in a number of significant high-profile patent and trademark infringement cases. Our practice covers the spectrum of IP services from acquisition and management through enforcement and litigation.

International Intellectual Property

IP Litigation and Protection

Litigation of Patents, Trademarks, Copyright and Trade Secrets

  • Litigating high-profile Fortune 500 patent trademark and copyright infringement cases, including unfair competition, counterfeit and illicit trade matters internationally and in the U.S.
  • Appearing before multiple federal courts, state courts (both jury and bench trials), administrative agencies and the U.S. International Trade Commission
  • Handling patent litigation in a wide variety of industries including medical and life sciences, electronics, telecommunications, automotive and heavy machinery and consumer products in a broad spectrum of areas, including optics and photonics, food and beverage products and athletic equipment

IP Management

Brand Development and Maintenance

  • Developing branding strategies
  • Enforcing brands’ underlying trademarks, trade dress, product configurations and advertising efforts
  • Assisting in the search and selection of brand names
  • Aiding the management and maintenance of brand portfolios

Intellectual Property Valuation

  • Advising on strategic investment decisions such as licensing, M&As, financing and dispute resolution

Internet Law and Domain Name Issues

  • Counseling on website development contracts, web privacy law issues, website terms and conditions, joint venture Internet agreements and encryption and technological matters
  • Advising on domain name issues ranging from registrations and transfers to protecting against cybersquatters and other infringers

Patent Infringement and Litigation

Pharmaceuticals, Medical Devices and Life Sciences Intellectual Property Protection

Securing and Registering Intellectual Property

Acquisition of Intellectual Property Rights

  • Filing, prosecuting and obtaining trademark and copyright registrations
  • Establishing procedures for protecting trade secrets, proprietary information and technical data
  • Conducting trademark searches and product clearances
  • Reviewing advertising and other written materials

IP Patent Applications

  • Identifying patentable inventions, proprietary technical information and trade secrets
  • Directing patentability searches and technology audits
  • Preparing, filing and prosecuting patent applications in the U.S. and abroad
  • Managing patent portfolios

Technology Transfer and Licensing

  • Assisting in the purchase, sale or licensing of intellectual assets
  • Obtaining IP secured loans, maximizing the value of IP rights and establishing licensing programs to generate new revenues from untapped assets
  • Conducting technology audits for inventions and other protectable intellectual property
  • Establishing procedures to identify potentially valuable IP during the development process

Trademark Clearance

Trademark Infringement

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators.  Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages.
  • Bradshaw Medical Inc v. MedTorque Inc et al. (U.S. District Court, E.D. Wisc. 2019): Represented manufacturer of orthopedic torque limiting ratchets. Obtained summary judgment of non-infringement.
  • Daneshvar v. NeuroNexus Techs., et al. (E.D. Mich. 2017): Represented developer and manufacturer of maneuverable deep brain stimulation probes. Obtained summary judgment that plaintiff was not an inventor of any patents in portfolio
  • MAXStick v. Iconex. Successful claim construction decision lead to a favorable settlement for the client.
  • Izzo Golf, Inc. v. King Par Golf, Inc. (WDNY 2010): Plaintiff’s counsel in a patent infringement action resulting in a jury verdict and finding of willful infringement ultimately totaling approximately $12 million.
  • Redcom Laboratories v. Cisco Systems: Plaintiff’s counsel in multimillion-dollar settlement of patent infringement claim involving telephone switching equipment
  • John King Chains Limited v. John King USA, Inc.: Represented a United Kingdom company in a trademark dispute, in the Central District of Illinois, with the company’s former U.S. affiliate, resulting in the affiliate agreeing to cease using the disputed trademarks
  • ODU GmbH & Co. v. Circulite, Inc.: Brought Patent Derivation Proceeding before Patent Trial and Appeal Board, resulting in correction of inventorship and favorable settlement
  • Woodbolt Distribution, LLC et al v. Altairia Corporation et al, SDNY, 1:14-cv-03596: Represented plaintiff sports nutrition company in seeking declaratory judgment of trademark non-infringement, trademark non-dilution and for cancellation of U.S. trademark registrations against defendant energy drink company.
  • Lorillard Tobacco Co. v. Zahran; v. Al-Shaikh; v. Shehadeh; (NDNY 2013) Obtained ex parte seizures, favorable settlements and consent judgments against convenience stores selling counterfeit tobacco products.
  • Assisted in representation of dietary supplement client in connection with a Challenge before the National Advertising Division.
  • Assisted in representation of dietary supplement client in connection with trademark infringement claim against competing product.

Practice Leader(s)

James Muldoon

James R. Muldoon

Member

People

Robert Brown

Robert C. Brown

Patent Agent
James Nonkes

James P. Nonkes

Member
Steve Nonkes

Steven P. Nonkes

Member
Brendan Palfreyman

Brendan M. Palfreyman

Member
Marina Plotkin

Marina Plotkin

Member

Joseph W. Schmidt

Senior Counsel
Neal Slifkin

Neal L. Slifkin

Member
Laura Smalley

Laura W. Smalley

Member
All Insights, All Publications, Legal Alert |
 March 21, 2023
Unitary Patent System Launching in Europe – Patent Holders May Need to Take Action
European patent owners may want to take action to opt certain patents out of the new Unitary Patent System. ...read more
All Publications, All Insights, Legal Alert |
 November 22, 2022
U.S. Supreme Court to Decide on Enablement Standard for Biotech Antibody Patents in Amgen v. Sanofi
U.S. Supreme Court to Decide on Enablement Standard for Biotech Antibody Patents in Amgen v. Sanofi...read more
All Insights, All Publications, Legal Alert |
 June 28, 2022
Federal Circuit Imposes Heightened Standard for Written Description Support of Negative Claim Limitations
In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held pat...read more
All Publications, All Insights, Legal Alert |
 June 13, 2022
NFTs as Commodities: Proposed Senate Bill Signals Regulatory Guidelines
In the rapidly moving world of digital assets, specifically non-fungible tokens (NFTs), we begin to gain some clarity on their future. Creat...read more
All Insights, All Publications, Legal Alert |
 April 15, 2022
If the NFT Fits
Given the expanding importance and usage of NFTs (non-fungible tokens), litigation was inevitable. One of the first such cases is Nike, Inc....read more
All Insights |
 February 10, 2022
Intellectual Property Law: Year in Review 2021
Analyzing the major Federal Circuit decisions that have affected patent law over the past year can spark a change in your procedures or deci...read more
All Publications, Legal Alert |
 December 15, 2021
New Procedures for Challenging Trademark Registrations at the U.S. Patent and Trademark Office
On December 18, two new procedures will be available for challenging U.S. trademark registrations....read more
All Publications, Legal Alert |
 December 15, 2021
Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges
The Federal Circuit Court of Appeals affirmed the Patent Trial and Appeal Board's determination that a patent specification did not provide ...read more
All Publications, Legal Alert |
 December 15, 2021
Patent Trial and Appeal Board Determination of “Reasonable Expectation of Success” Must Be Supported by Substantial Evidence
The Federal Circuit Court of Appeals reversed a decision of the U.S. Patent Trial and Appeal Board (“Board”), finding a patent on a method o...read more

Need More Information?

Harris Beach PLLC, Attorneys at Law, Discover True Engagement

Contact us

  • Privacy Policy
  • Legal Disclaimer
  • Site Map

Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2023 Harris Beach PLLC

Twitter Facebook Linkedin Instagram
Make a Payment
MAke a Payment
TRUSTe
Harris Beach PLLC Discover True Engagement image
2023 Best Law Firms - Patent Law Rochester

Intellectual Property

Legal Practice

■ Profile

Intellectual property is a key driver of economic growth and often one of an organization’s most important assets. As technological advances accelerate the pace of innovation, organizations are turning to intellectual property laws to protect their investments and maintain their competitive edge. Our clients, ranging from emerging businesses to Fortune 500 corporations, count on our attorneys to protect their knowledge-based investments and their brand integrity.

In addition to being highly-credentialed and respected litigators, our IP attorneys have strong backgrounds and a wealth of knowledge in sophisticated technical fields including physics, computer, electrical engineering, medicine, mechanical engineering, chemistry, biotechnology, optics, environmental engineering, fluid dynamics and civil, structural, and process engineering.

Our IP litigation team has represented organizations with considerable IP assets in a number of significant high-profile patent and trademark infringement cases. Our practice covers the spectrum of IP services from acquisition and management through enforcement and litigation.

■ Services

International Intellectual Property

IP Litigation and Protection

Litigation of Patents, Trademarks, Copyright and Trade Secrets

  • Litigating high-profile Fortune 500 patent trademark and copyright infringement cases, including unfair competition, counterfeit and illicit trade matters internationally and in the U.S.
  • Appearing before multiple federal courts, state courts (both jury and bench trials), administrative agencies and the U.S. International Trade Commission
  • Handling patent litigation in a wide variety of industries including medical and life sciences, electronics, telecommunications, automotive and heavy machinery and consumer products in a broad spectrum of areas, including optics and photonics, food and beverage products and athletic equipment

IP Management

Brand Development and Maintenance

  • Developing branding strategies
  • Enforcing brands’ underlying trademarks, trade dress, product configurations and advertising efforts
  • Assisting in the search and selection of brand names
  • Aiding the management and maintenance of brand portfolios

Intellectual Property Valuation

  • Advising on strategic investment decisions such as licensing, M&As, financing and dispute resolution

Internet Law and Domain Name Issues

  • Counseling on website development contracts, web privacy law issues, website terms and conditions, joint venture Internet agreements and encryption and technological matters
  • Advising on domain name issues ranging from registrations and transfers to protecting against cybersquatters and other infringers

Patent Infringement and Litigation

Pharmaceuticals, Medical Devices and Life Sciences Intellectual Property Protection

Securing and Registering Intellectual Property

Acquisition of Intellectual Property Rights

  • Filing, prosecuting and obtaining trademark and copyright registrations
  • Establishing procedures for protecting trade secrets, proprietary information and technical data
  • Conducting trademark searches and product clearances
  • Reviewing advertising and other written materials

IP Patent Applications

  • Identifying patentable inventions, proprietary technical information and trade secrets
  • Directing patentability searches and technology audits
  • Preparing, filing and prosecuting patent applications in the U.S. and abroad
  • Managing patent portfolios

Technology Transfer and Licensing

  • Assisting in the purchase, sale or licensing of intellectual assets
  • Obtaining IP secured loans, maximizing the value of IP rights and establishing licensing programs to generate new revenues from untapped assets
  • Conducting technology audits for inventions and other protectable intellectual property
  • Establishing procedures to identify potentially valuable IP during the development process

Trademark Clearance

Trademark Infringement

■ Experience

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators.  Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages.
  • Bradshaw Medical Inc v. MedTorque Inc et al. (U.S. District Court, E.D. Wisc. 2019): Represented manufacturer of orthopedic torque limiting ratchets. Obtained summary judgment of non-infringement.
  • Daneshvar v. NeuroNexus Techs., et al. (E.D. Mich. 2017): Represented developer and manufacturer of maneuverable deep brain stimulation probes. Obtained summary judgment that plaintiff was not an inventor of any patents in portfolio
  • MAXStick v. Iconex. Successful claim construction decision lead to a favorable settlement for the client.
  • Izzo Golf, Inc. v. King Par Golf, Inc. (WDNY 2010): Plaintiff’s counsel in a patent infringement action resulting in a jury verdict and finding of willful infringement ultimately totaling approximately $12 million.
  • Redcom Laboratories v. Cisco Systems: Plaintiff’s counsel in multimillion-dollar settlement of patent infringement claim involving telephone switching equipment
  • John King Chains Limited v. John King USA, Inc.: Represented a United Kingdom company in a trademark dispute, in the Central District of Illinois, with the company’s former U.S. affiliate, resulting in the affiliate agreeing to cease using the disputed trademarks
  • ODU GmbH & Co. v. Circulite, Inc.: Brought Patent Derivation Proceeding before Patent Trial and Appeal Board, resulting in correction of inventorship and favorable settlement
  • Woodbolt Distribution, LLC et al v. Altairia Corporation et al, SDNY, 1:14-cv-03596: Represented plaintiff sports nutrition company in seeking declaratory judgment of trademark non-infringement, trademark non-dilution and for cancellation of U.S. trademark registrations against defendant energy drink company.
  • Lorillard Tobacco Co. v. Zahran; v. Al-Shaikh; v. Shehadeh; (NDNY 2013) Obtained ex parte seizures, favorable settlements and consent judgments against convenience stores selling counterfeit tobacco products.
  • Assisted in representation of dietary supplement client in connection with a Challenge before the National Advertising Division.
  • Assisted in representation of dietary supplement client in connection with trademark infringement claim against competing product.

■ People

Team Leaders

James R. Muldoon

Member
(315) 214-2021
jmuldoon@harrisbeach.com

Team

Robert C. Brown

Patent Agent
(585) 419-8800

James R. Muldoon

Member
(315) 214-2021
jmuldoon@harrisbeach.com

James P. Nonkes

Member
(585) 419-8611
jnonkes@harrisbeach.com

Steven P. Nonkes

Member
(585) 419-8847
snonkes@harrisbeach.com

Brendan M. Palfreyman

Member
(315) 214-2161
bpalfreyman@HarrisBeach.com

Marina Plotkin

Member
(212) 313-5409
mplotkin@harrisbeach.com

Joseph W. Schmidt

Senior Counsel
(516) 880-8386
jschmidt@harrisbeach.com

Neal L. Slifkin

Member
(585) 419-8636
nslifkin@harrisbeach.com

Laura W. Smalley

Member
(585) 419-8736
lsmalley@harrisbeach.com

Harris Beach and its subsidiaries provide a full range of legal and professional services for clients across New York state, as well as nationally and internationally. Harris Beach is among the country’s top law firms as ranked by The National Law Journal and is among the BTI Elite law firms based on in-depth interviews of more than 600 corporate counsel at the world’s largest and most influential companies. Our clients include Fortune 100 corporations, privately-held companies, emerging businesses, public sector entities, not-for-profit organizations and individuals. Principal industries we represent include education, energy, financial, food and beverage, health care, insurance, manufacturing, medical and life sciences, real estate developers, and state and local governments and authorities.

Industry Teams
Automotive and Vehicle Dealerships
Blockchain and Digital Assets 
Cannabis
Construction and Surety
Educational Institutions Higher Ed
Educational Institutions K-12
EMS and Fire Protection Providers
Energy
Financial Institutions and Capital Markets
Food and Beverage
Health Care
Industrial and Consumer Manufacturing
Medical and Life Sciences
Municipalities and Local Agencies
Nanotechnology
Photonics
Racing and Gaming
Real Estate Developers
Science and Technology
Telecommunications and Media
Unmanned Aircraft Systems
USA Collegiate Sports
Veterinary Medicine

Practices
Alternative Dispute Resolution
Appellate
Business and Commercial Litigation
Collection Law
Commercial Real Estate
Corporate
Cybersecurity Protection and Response
Diversity Compliance
E-Discovery (e-infoSM)
Employee Benefits
Employment Litigation
Environmental Law
Environmental, Social and Governance (ESG)
Financial Restructuring, Bankruptcy and Creditors’ Rights
Government Compliance and Investigations
Health Law
Immigration Law
Insurance Coverage
Intellectual Property Law
International Trade Law
Internet Law
Labor and Employment Law
Mass Torts and Industry-Wide Litigation
New Markets Tax Credit
Patent, Trademark and Copyright Law
Product Liability and Comprehensive General Liability
Public Finance and Economic Development
Real Property Valuation Litigation
Residential Real Estate
Tax Law
White Collar Crime
Wills, Trusts and Estates

Consulting Services
HB Solutions LLC
Collegiate Sports Compliance
Data Privacy and Cybersecurity
Economic Development and Public Affairs
Educational Institution Assistance
EMRG® (E-Discovery Management Resources Group)
Energy
Health and Human Services
Human Resources
Information Technology
Marketing and Communication Services
Municipal and Local Agency Assistance

HB Cornerstone LLC
Owner Representation
Design Services
Facilities Consulting
Move Management

Caetra.io
CyMetric (Cybersecurity Regulation Compliance Software)

Offices throughout New York:

Albany
677 Broadway
Albany, NY 12207
518-427-9700

Buffalo
726 Exchange Street
Buffalo, NY 14210
716-200-5050

Ithaca
119 East Seneca Street
Ithaca, NY 14850
607-273-6444

Long Island
333 Earle Ovington Boulevard
Uniondale, NY 11553
516-880-8484

New York City
100 Wall Street
New York, NY 10005
212-687-0100

Rochester
99 Garnsey Road
Pittsford, NY 14534
585-419-8800

Saratoga Springs
513 Broadway
Saratoga Springs, NY 12866
518-587-0551

Syracuse
333 West Washington Street
Syracuse, NY 13202
315-423-7100

White Plains
445 Hamilton Avenue
White Plains, NY 10601
914-683-1200

Offices also in:

New Haven, CT
195 Church Street
New Haven, CT 06510
203-784-3159

Newark, NJ
One Gateway Center
Newark, NJ 07102
973-848-1244

Washington, DC
800-685-1429

Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2022 Harris Beach PLLC

Content current as of March 23, 2023 12:50 pm
Cookies
This website uses cookies as specified in our privacy policy. You consent to the use of cookies by clicking accept or by using our site. We do not sell your personal information.
.
Cookie settingsACCEPT
Manage cookies

Privacy Overview

This website uses cookies to improve your experience while you navigate through the website. Out of these, the cookies that are categorized as necessary are stored on your browser as they are essential for the working of basic functionalities of the website. We also use third-party cookies that help us analyze and understand how you use this website. These cookies will be stored in your browser only with your consent. You also have the option to opt-out of these cookies. But opting out of some of these cookies may affect your browsing experience.
Necessary
Always Enabled
Necessary cookies are absolutely essential for the website to function properly. These cookies ensure basic functionalities and security features of the website, anonymously.
CookieDurationDescription
cookielawinfo-checbox-analytics11 monthsThis cookie is set by GDPR Cookie Consent plugin. The cookie is used to store the user consent for the cookies in the category "Analytics".
cookielawinfo-checbox-functional11 monthsThe cookie is set by GDPR cookie consent to record the user consent for the cookies in the category "Functional".
cookielawinfo-checbox-others11 monthsThis cookie is set by GDPR Cookie Consent plugin. The cookie is used to store the user consent for the cookies in the category "Other.
cookielawinfo-checkbox-necessary11 monthsThis cookie is set by GDPR Cookie Consent plugin. The cookies is used to store the user consent for the cookies in the category "Necessary".
cookielawinfo-checkbox-performance11 monthsThis cookie is set by GDPR Cookie Consent plugin. The cookie is used to store the user consent for the cookies in the category "Performance".
viewed_cookie_policy11 monthsThe cookie is set by the GDPR Cookie Consent plugin and is used to store whether or not user has consented to the use of cookies. It does not store any personal data.
Functional
Functional cookies help to perform certain functionalities like sharing the content of the website on social media platforms, collect feedbacks, and other third-party features.
Performance
Performance cookies are used to understand and analyze the key performance indexes of the website which helps in delivering a better user experience for the visitors.
Analytics
Analytical cookies are used to understand how visitors interact with the website. These cookies help provide information on metrics the number of visitors, bounce rate, traffic source, etc.
Advertisement
Advertisement cookies are used to provide visitors with relevant ads and marketing campaigns. These cookies track visitors across websites and collect information to provide customized ads.
Others
Other uncategorized cookies are those that are being analyzed and have not been classified into a category as yet.
SAVE & ACCEPT