Intellectual Property

EXPLORE

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Matthew E. Yarbrough
Office Managing Partner
TELEPHONE NUMBER
214-273-4050
EMAIL ADDRESS
myarbrough@mrllp.com

Overview

Intellectual property may well be a company’s most valuable asset, and M&R’s Intellectual Property Practice Group stands ready to protect it in a myriad of ways.

We help clients obtain patents, trademarks and copyrights here in the U.S. and through affiliates overseas. Our IP attorneys also develop IP plans to protect, maintain, maximize and monetize clients’ IP interests. This includes IP portfolio evaluations, opinion work and cross-licensing efforts.

As a testament to our breadth of experience in the field, our lawyers are pioneers in the treatment of data as an emerging asset class and species of IP. We’re also relied upon to handle brand identity and rights protection matters, litigate IP infringement cases in federal courts and in front of the Trademark Trial and Appeal Board (TTAB), and prosecute trademarks before the U.S. Patent and Trademark Office (USPTO).

Countless companies have retained our professionals to address their IP needs, and we even serve as outside general IP counsel for some of them. That’s because when it comes to all things IP, M&R and our IP specialists are second to none.

Areas of Expertise

Copyright Applications
Copyright Licensing
Copyright Monitoring
Copyright Transfers
Design Patents
IP Litigation
Lifetime Patent Prosecution
Patent Continuations
Patent Mining
Patent Procurement and Brokering
Patent Valuation
Patent Licensing
Patent Enforcement
Provisional Patents
Service Agreements
Software Development Agreements
State & Federal Investigations
Technology Transfers
Trademark Applications
Trademark Licensing
Trademark Enforcement
Trademark Monitoring
Trademark Prosecution
Trademark Transfers
Trade Secret Compliance Audits
Trade Secret Maintenance Programs
Trade Secret Protection Plans
Utility Patents

Representative Matters

Represented software developer in infringement action arising from the circumvention of measures that controlled access to copyrighted material. Obtained civil search and seizure order and then a consent judgment of $1 million and permanent injunction.

Prosecuted a copyright infringement action on behalf of a popular game manufacturer against a counterfeiting ring comprised of local and China-based corporate and individual defendants that sold knock-off products here and abroad. Secured a stipulated judgment against all defendants that required payment of the maximum statutory damages allowable under the law for willful copyright infringement. Also obtained a permanent injunction against the future sale of counterfeit products.

Successfully represented a publicly held company in the business of digital rights enforcement on behalf of music publisher and video distribution clients in a widely publicized and nationwide putative class action originally alleging causes of action for (1) violations of the Telephone Consumer Protection Act (47 USC § 227); (2) violations of the Fair Debt Collection Practices Act (15 U.S.C. § 1692, et seq.); (3) violations of the Rosenthal Fair Debt Collection Practices Act (Cal. Civ. Code § 1788 et seq.); and (4) abuse of process arising from an alleged misuse of the Digital Millennium Copyright Act subpoena procedure. We ably demonstrated that the class representative’s claims against our client were tenuous, at best, which initially led class counsel to drop the class representatives and voluntarily dismiss the federal and state fair debt claims. Thereafter, we brought a complex special motion to strike the remaining abuse of process claim under California’s anti-SLAPP statute, which motion was granted in its entirety. Consequently, plaintiff was ordered to pay our client’s attorney’s fees incurred in bringing the anti-SLAPP motion.

Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of a major recording artist. Thereafter, participated in seizure of counterfeit goods.

Represented a major hard rock band that was negotiating a repackage release of recordings in Europe but encountered problems when the distributor identified unauthorized bootleg concert DVDs available on Amazon’s German website. Facilitated the removal of the infringing products from the website, allowing the client to move forward with the planned release, all the while enjoying reduced fallout from unauthorized third-party product sales.

Negotiated on behalf of a major private investment firm and drafted the intellectual property and services clauses in contracts associated with its $2 billion equity and asset purchase of a telecommunications company’s business and manufacturing facilities.

Negotiated and drafted the intellectual property clauses included in a merger agreement governing a global technology provider’s $35 million acquisition of the retail commerce arm of a leading next-generation mobile solutions provider.

Obtained $5 million jury verdict on behalf of client in litigation premised upon false advertising under the Langham Act and claims for misappropriation of business method where defendants’ palmed-off of plaintiff’s IP.

Represented leading wireless networking company in domestic court action against cellular manufacturers involving patents asserted against cellular, WiMAX and Wi-Fi industry standards resulting in multiple licensing agreements.

Represented telecom corporation in review of asserted patents against corporation by strategic competitor involving patents asserted against telecommunications equipment located in telecom switching office.

Represented oil and gas technology development corporation in developing licensing platform for oil and gas fracking patent portfolio.

Conducted review of patent portfolios of clients for possible assertion against industry standards and against particular defendants, including disassembly and examination or reverse engineering of infringing products.

Represented oil and gas upstream technology provider in patent assertion campaign against oil and gas upstream technology competitor.

Represented medical supply firm in domestic court action against peer competitor involving patent asserted against medical supply technology, which included covered business method patent review in front of U.S. Patent and Trademark Office.

Represented web video advertising company in multiple domestic court actions against video marketplace corporations involving video marketplace patents.

Represented image encoding firm in domestic court action against children’s reading device manufacturer and retail defendants involving patent on encoding messages within images.

Represented leading network and wireless technical provider in a patent infringement suit involving wireless patents asserted against Wi-Fi industry standards, which included filing of inter partes requests for reexamination with the U.S. Patent and Trademark Office, resulting in a licensing agreement.

Represented technology company in patent infringement actions for multiple patents involving computer graphics and operating system and video game software. Reviewed over 15,000 video games and related graphics hardware in personal computers and video game consoles, which resulted in multiple licensing agreements.

Represented leading cellular corporations, as both plaintiff and defendant, in global patent litigation in multiple domestic and foreign court actions and two International Trade Commission investigations involving over 60 digital cellular and wireless patents as well as various mobile phone technology patents resulting in a cross-licensing agreement.

Represented wireless networking company in multiple domestic court actions against laptop manufacturers and semiconductor companies involving patents asserted against Wi-Fi industry standards and resulting in multiple licensing agreements.

Represented wireless networking company against router and DSL manufacturers and semiconductor companies involving patents asserted against Wi-Fi and DSL industry standards and resulting in multiple licensing agreements.

Represented technology company against cellular manufacturers and semiconductor companies involving patents asserted against cellular, broadband and Wi-Fi industry standards and resulting in multiple licensing agreements.

Represented leading cellular corporation in global patent litigation in multiple domestic and foreign court actions and simultaneous International Trade Commission investigations involving over 30 digital cellular and wireless patents and resulting in a cross-licensing agreement.

Successfully defended an electronics manufacturer before the World Intellectual Property Organization (WIPO) in the prosecution of its patent portfolio of software algorithms and processes for the identification of products displayed in media programs.

Managed all intellectual property-related aspects of the corporate-wide rebranding of a large entertainment company client.

Managed all trademark and copyright issues for renowned digital film studio.

Obtained favorable settlements and consent decrees on behalf of NFL Properties, LLP and a local NFL franchise in connection with multiple trademark infringement and false designation of origin cases filed against defendants in connection with their unlicensed use of trademarks and the sale of NFL merchandise.

Obtained a seven-figure resolution on behalf of a manufacturer of medical scrubs in a significant trademark infringement case filed against a competing company that produced a collection of scrubs marketed to medical personnel. Throughout the litigation, the defendant failed to abide by the orders of the court, including the requirement to respond to written discovery. Consequently, the magistrate judge issued a massive $250,000 sanction award against the defendant and its attorney followed by terminating sanctions in favor of our client. Thereafter, our motion for default judgment was granted. The defendant then initiated a series of appeals and bankruptcy court proceedings, all of which were unsuccessful, leading to its agreement to compensate our client by way of a structured settlement.

Successfully defended a national credit union against a claim of trademark infringement by credit card company Visa. In the federal court action, Visa claimed that its “PLUS” mark for its network linking automatic teller machines was infringed by the credit union’s “MoneyPlus” mark for the credit union’s debit cards. The Ninth Circuit affirmed the lower court’s decision.

Successfully brought an action to enjoin infringement of a famous trademark belonging to a manufacturer of automotive lighting products. The Ninth Circuit affirmed the injunction granted in favor of the client.

Represented large audio products manufacturer and executed a civil search warrant and seizure of counterfeit goods. Subsequently obtained a permanent injunction and judgment of $1.25 million in trademark infringement case.

Successfully petitioned on behalf of a prominent heavy metal guitarist to have the registration of his mark for coffee beans reissued after his original application was found to include a misspelling of the mark.

Represented a social gaming company in litigation against a large competitor that involved allegations of misappropriation of trade secrets and employee raiding.

Represented software technology developer in copyright and trade secret dispute with competitor software technology developer.

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