Intellectual Property Litigators on Your Side

Patent Litigators Who Are Patent Practitioners

Ask your patent litigator if they have written a patent. Ask your civil litigation lawyer if he is an engineer.

We write patents; we litigate patents. One informs the other.

At Booth Albanesi Schroeder, PLLC, we do not artificially divide the world into patent draftsmen – qualified only to practice before the United States Patent and Trademark Office – and litigators – qualified only to practice in federal court. We’re qualified to do both skillfully.

In-Depth Knowledge, Experienced Counsel

Most IP litigation cases, whether they involve claims of patent infringement, theft of trade secrets, or trademark or copyright infringement, involve complicated technical issues. We understand the keys to success are the ability to understand the technology and the ability to communicate the concepts to the judge, jury, arbitrator or administrative board.

Our team of trial lawyers combines proven trial strategies and skillful advocacy to present your best legal positions in a clear and convincing manner.

Any Venue, Every Defense

The adversarial landscape can be confusing, especially in patent matters. Several administrations and courts have overlapping jurisdiction.

We have litigated cases for, represented and defended our clients at:

• The International Trade Commission (ITC)
• The Patent Trial and Appeal Board (PTAB)
• The Trademark Trial and Appeal Board (TTAB)
• U.S. District Courts for the Northern, Western and Eastern Districts of Texas
• United States Court of Appeals for the 5th Circuit
• United States Court of Appeals for the Federal Circuit

We have:

• Sued patent infringers
• Sued trademark infringers
• Sued copyright infringers
• Defended against patent infringement assertions
• Sued former employees for trade secret theft
• Defended new employers from trade secret theft allegations
• Invalidated patents at the Patent and Trademark Office
• Handled patent reexaminations, reissues and appeals

Unfair Competition and the Lanham Act, Section 43(a)

We have engaged in substantial litigation, and have provided significant prelitigation preventive and enforcement advice with respect to Section 43(a) of the Lanham Act. We have prosecuted and defended numerous actions under Section 43(a) concerning false advertising involving:

• Consumer products
• Drugs
• Food
• Cosmetics
• Other products

In the course of these cases, we have acquired significant experience in analysis of substantive issues, such as clinical test methodology, as well as the use of survey research with respect to the issue of implied claims. In addition, our litigators have handled cases under Section 43(a) concerning false designation of origin, counterfeiting and false advertising and have worked with survey experts concerning the issues of likelihood of confusion and secondary meaning.

Proceedings Before the International Trade Commission (ITC)

We have litigated on behalf of clients under Section 337 of the Tariff Act of 1930, which enables U.S. industries to obtain relief from unfair acts in importation. These unfair acts can involve:

• Patent, trademark and copyright infringement
• Misappropriation or violation of trade secrets
• Violation of antitrust laws
• Unfair competition claims

Section 337 proceedings before the International Trade Commission are unusual in that they follow their own procedural rules, are tried before administrative judges and ordinarily are completed within one year. Hence, these proceedings require litigation skills and a full-scale commitment of litigation resources.

Common Questions About IP Litigation

Clients often have questions about patent litigation and intellectual property disputes. We’ve answered some of the most common concerns below to help you understand your options and make informed decisions about protecting your innovations:

How does patent prosecution experience help in litigation?

Patent prosecutors write and file applications with the USPTO. Patent litigators take disputes to court. Our attorneys handle both. When you know how a patent came together, you spot weaknesses others miss. We read claims the way they were written because we write them ourselves. Our engineering backgrounds let us break down technical details for judges and juries in ways they understand. This combination strengthens every argument we make and every defense we build.

Can we challenge a patent outside of court?

Yes. The Patent Trial and Appeal Board offers faster, more cost-effective alternatives to federal litigation. You can file an Inter Partes Review or Post-Grant Review with the Patent Trial and Appeal Board to challenge a patent’s validity. We handle these proceedings regularly and know when they make sense for your case. Sometimes we recommend PTAB proceedings alone. Other times we combine them with district court strategies for maximum impact.

What do we do if someone sends us a cease-and-desist letter?

Call us right away. Don’t ignore the letter, but don’t stop your business operations or admit anything either. These situations require quick, strategic decisions. We review the patent claims, examine the infringement allegations and identify your defenses. You may have options beyond simply complying. You can negotiate a license, challenge the patent’s validity, file for declaratory judgment or prepare a strong litigation defense. We evaluate all paths and recommend the one that protects your interests best.

Common Law Unfair Competition

We have experience with common law unfair competition claims. We use these insights to counsel clients in advance of litigation on how to prosecute, as well as defend against, claims of unfair competition. Our firm has creatively used the breadth of the common law unfair competition cause of action to develop claims on behalf of plaintiffs and in counterclaims on behalf of defendants.