Intellectual Property

Diamond McCarthy’s clients seek support with their most challenging IP litigation, from startups and mid-sized companies facing existential threats from infringing competitors to industry-leaders seeking to protect the product markets that they have pioneered. Our attorneys are experienced in litigating patent infringement, trade secret misappropriation, copyright infringement, trademark infringement, as well as related unfair competition litigation. With offices in New York, Texas, and California, we serve domestic and international clients across the country. The Diamond McCarthy team adapts strategies and tailors its advice to account for unique challenges in the age of ever-changing technological innovation.

Patent Litigation

Patent litigation is a high-stakes endeavor, which requires a unique combination of legal advocacy skills and technological savvy. As part of a national litigation boutique, our intellectual property group is built from the ground up to provide the highest level of patent litigation representation.

Our accomplished patent lawyers have strong technical skills with decades of experience, and are backed by litigators and senior trial attorneys. We thoroughly study clients’ technology and patented subject matter in order to present even the most complex topics to the judge and jury simply and accurately.  Our clients work directly with the entire team from the most-experienced partners to junior associates and paralegals. We have guided clients to positive litigation outcomes across the gamut of cutting-edge technologies and products from chemicals, consumer products, biotech, and software to pharmaceuticals, medical devices, semiconductors, and more.

In addition to helping clients before courts across the country, we also are well versed in petitioner and patent owner strategies contested validity proceedings before the USPTO such as inter parties reviews and post-grant review proceedings.

IP Rights Commercial Disputes

We represent clients in a full range of IP-related commercial disputes. Because of the importance of IP rights to so many businesses, technology companies frequently enter into exclusive and non-exclusive licenses, covenants not to compete, option agreements, joint venture agreements, non-solicitation agreements, and technology supply agreements. Unfortunately, not all of these business relationships turn out as hoped for. Consequently, IP-related disputes are quite common. Diamond McCarthy’s reputation for excellence in IP law enables us to help clients address these disputes through crafting new legal agreements that redefine the parties’ relationship, negotiating resolution of the dispute, or, when necessary, litigating breach of contract, unfair competition and other commercial claims in court.

Trade Secret Litigation

Trade secrets, whether in the form of chemical formulas, product development information, customer lists, pricing information, can represent some of the most valuable corporate assets.  As patent enforcement has become more difficult and more expensive, trade secrets are growing even more important. When those assets are misappropriated, when covenants not to compete or confidentiality agreements are not honored, and when corporations engage in espionage or unfair competition, the very existence of technology companies may be threatened. Diamond McCarthy’s capabilities in trade secret litigation sit at the intersection of a strong knowledge of technology and decades of experience tackling complex business disputes where misappropriation and wrongdoing played a significant role. The enactment of the Defend Trade Secrets Act in 2016 and Uniform Trade Secrets Act (USTA) has created opportunities for national enforcement of these important IP rights. Diamond McCarthy’s trial lawyers have successfully pursued and defended claims on behalf of our trade secret clients, including prevailing in preliminary injunctions. In addition, our attorneys have been brought in for pre-litigation work such as negotiating confidentiality, employment, and non-compete agreements and counseling clients on protecting trade secrets.

Copyright Litigation

Technology continues to make copying and distribution of books, movies, music, software and other copyrightable works easier and less costly, and often raises legal issues of first impression. Thoughtful consideration of complex issues is required, including scope of copyright protection for software, open source agreements, DMCA safe harbors, secondary liability, first sale, copyright misuse, and fair use. Diamond McCarthy has a strong track record in copyright infringement litigation for both plaintiffs and defendants, and also regularly provides pre-litigation counseling to creators and copyright holders in the music, film, visual arts, architecture, and fashion spaces.

Trademark and Trade Dress Litigation

We have extensive experience enforcing and defending clients’ trademark and trade dress rights, ranging from misuse and wrongful advantage, mitigating marketplace confusion, to facing infringement claims. Lanham Act claims for trademark infringement go to the essence of unfair commercial competition. Diamond McCarthy’s business acumen and legal knowledge developed over decades of representing clients enables our IP team to both effectively try the case before a judge/jury or to craft a creative business resolution that properly addresses potential customer confusion and erosion of brand rights.

Strategic Counseling and Corporate Asset Recoveries

Diamond McCarthy provides clients with general IP counseling to manage risk (through validity, infringement studies and freedom to operate opinions), evaluate and resolve competing IP ownership claims, monetize IP without litigation, and provide strategic guidance on IP issues (e.g. when businesses dissolve or restructure). Diamond McCarthy’s IP services also represent one of the cornerstones of the firm’s Corporate Asset Affirmative Recoveries initiative, which focuses on helping legal departments protect their valuable business assets, supply chains, revenue streams and market position, and to manage underperforming business relationships.

Patent Infringement Litigation

Beauty Products – Represented beauty products start-up in a “bet-the-company” patent infringement, trade secret misappropriation, and breach contract case against a fortune 500 consumer products company. The client’s product is a revolutionary hair-care chemical additive. Diamond McCarthy’s work led to a sizable jury trial verdict. Diamond McCarthy also was lead counsel on five post grant review proceeding in the patent office
Gaming Software – The Diamond McCarthy Intellectual Property team represents a multi-billion company in patent infringement litigation against a major software gaming company. The technology is focused on software designed for location-based gaming and augmented reality.
Software – A Diamond McCarthy Intellectual Property team member represented a technology company in asserting patent infringement claims against Fortune 50 computer technology and software companies. The matter was favorably settled.
Laboratory Testing – A Diamond McCarthy Intellectual Property team member represented a large genetic screening lab on a digital PCR patent
Medical Procedures – The Diamond McCarthy Intellectual Property team achieved a favorable outcome for a cardio-thoracic surgery group at NYU University for patent infringement litigation relating to procedures of the heart, lungs, esophagus and other organs.
Clinical Diagnostics – A Diamond McCarthy Intellectual Property team member defended a major provider of research and clinical diagnostic products in the International Trade Commission from patent infringement concerning a genetic screening product.
Medical Testing – The Diamond McCarthy Intellectual Property team represented an international provider of assay technology in a patent infringement claim involving tuberculosis testing.
Semi-conductors – A Diamond McCarthy Intellectual Property team member represented a semi-conductor manufacturer in defending a patent infringement case brought by a competitor in asserting crossclaims for patent infringement and antitrust violations. The dispute involved soundcard technology, and was settled favorably in federal court in San Jose, CA.
Call Center Technology – The Diamond McCarthy Intellectual Property team represented co-defendants in multi-patent infringement action filed in Northern District of California relating to telephone call-center technology. The legal team achieved a favorable claim construction ruling which lead to settlement.
Life Sciences – A Diamond McCarthy Intellectual Property team represented a brand name innovator in a bet-the-company case against six generic producers in litigation directed to a patented drug release platform. The patent was successfully enforced and preserved the innovator’s market opportunity.
Life Sciences – A Diamond McCarthy Intellectual Property team litigated a Hatch Waxman case directed to patent infringement of liquid capsule pain medicine to successfully delay commercial launch of a generic drug.
Water Purification – A Diamond McCarthy Intellectual Property team member counseled a patent-holder in water purification systems against competitor in cross-infringement litigation.
Telecommunications – A Diamond McCarthy Intellectual Property team counseled a telecommunications company accused of infringing patents on cross-polarization interface.

Licensing Disputes

Breach of Pharma License – The Diamond McCarthy Intellectual Property team represents a client in a breach of contract lawsuit against two companies including a global Fortune 500 pharmaceutical company for improper termination of a patent license agreement, unjust enrichment and other commercial litigation claims. The technology relates to the modification of NK92 cell lines, and the legal claims represent sizable damages.
Biotech Patent Licensing Litigation – The Diamond McCarthy Intellectual Property team represents a biotech company in state court for declaratory judgment related to alleged breach of a patent license agreement.
Trademark Licensing and Infringement Litigation – The Diamond McCarthy Intellectual Property team represents a major retailer with annual revenue of $2billion+ in a cross-border licensing and trademark infringement litigation in the (court in TX) and Mexico.
Software Licensing and Breach of Contract Dispute – The Diamond McCarthy Intellectual Property and Commercial Litigation team successfully represented a marketing technology company, in connection with software implementation, licensing, and breach of contract issues in a jury in Texas state court, against a global cosmetics company with annual revenues more than $3 billion.
Breach of Multiple Software Licenses – The Diamond McCarthy Intellectual Property team is currently representing a multi-billion dollar publicly traded global software and information technology company based in Silicon Valley, California in connection with a number of licensing disputes across the United States.
Breach of Cryptocurrency License Agreement – The Diamond McCarthy Intellectual Property team and Commercial Litigation team represent a software company that owns patented search technology and asserted claims for a breach of a license agreement and an agreement to implement a search function for a cryptocurrency trading terminal. Through the AAA in New York, Diamond McCarthy achieved a Multi-million award.
Transfer Licensing Litigation – The Diamond McCarthy Intellectual Property team represented a software game development company in litigation related to the transfer of licenses directed to popular video games.

Trade Secret Misappropriation

Data Storage – The Diamond McCarthy Intellectual Property Team represented a global data storage company with revenues over $10 billion in asserting claims for misappropriation of trade secrets against a competitor with revenues over $16 billion. The dispute centered on a former employee’s non-compete clause and that employee’s knowledge of a next-generational hard-drive technology which dramatically increased storage density.
Semiconductors – The Diamond McCarthy Intellectual Property Team represented a semi-conductor company in asserting claims for misappropriation of trade secrets against a consulting firm. The dispute centered on whether the consulting firm’s newly launched GPS chip misappropriated the client’s chip technology, focusing on the integrated circuit design and the antenna. This case was favorably settled in Superior Court in Orange County, California.
Electronics – The Diamond McCarthy Intellectual Property Team successfully represented a Fortune 50 global electronics company in a defense against competitor’s allegations that the client stole trade secrets and engaged in employee raiding.

Copyright and Trademark Infringement Litigation

Brand Protection Litigation – The Diamond McCarthy Intellectual Property Team represented and achieved favorable recoveries for a fortune 50 multinational information technology company, based in Palo Alto, California in connection with a variety of brand protection litigations directed to grey market goods. The litigations included protection of, among other things, various licenses, trademark and copyrights.
Trademark Infringement Litigation – The Diamond McCarthy Intellectual Property Team represented a famous all female band in a trademark infringement litigation.
Breach of Contract, Trademark, and Licensing Litigation – The Diamond McCarthy Intellectual Property Team represented a national distributor of automotive parts with more than 4,700 stores and 2,500 certified service centers across North America in connection with breach of contract, licensing, and trademark infringement claims against one of the largest global suppliers of industrial and other maintenance products through direct marketing channels.

IP Monetization

In addition to enforcement of patent and other IP rights, the Diamond McCarthy IP team provides strategic advice to clients directed to monetizing their IP, with the objective of extracting as much value as possible. Diamond McCarthy supports companies in bankruptcy that own IP, of the most valuable asset of the company and evaluates the best path to obtain value from their IP assets.