"When we need someone to really dig in and fight a good fight, we typically turn to Lerner David." This comment by the in‑house counsel for a Fortune 100 company reflects our firm's attention to detail in litigation and our firm's aim to achieve the business goals which gave rise to litigation in as efficient a manner as possible. We do not believe in fighting litigation battles merely because the battles can be won. Rather, our goal is to achieve victory on the business issue that gave rise to the litigation. In so doing, we relentlessly pursue the facts and the law needed to establish our winning position, free of distraction from issues that do not bear on ultimate victory. This approach, combined with our litigation strategy deeply rooted in our clients' business objections, has often enabled us to achieve our clients’ litigation goals without trial.
Our patent litigation practice under the Hatch‑Waxman Act, involving both Abbreviated New Drug Applications (“ANDAs”) and “paper” NDAs, is varied and complex. Lerner David can help in planning for Hatch‑Waxman challenges, so our clients are ready to deal with such challenges by providing prosecution advice, opinions, notice letters, and integrated litigation strategies employing both district court and Patent and Trademark Office proceedings.
Lerner David couples extensive patent litigation experience with the ability to move swiftly to navigate the complexities in Section 337 investigations at the U.S. International Trade Commission ("ITC"). Bolstered by technical acumen that is second to none, Lerner David has led scores of multinational clients across diverse industries and technologies on patent infringement matters with trade implications at the ITC. Our lawyers have served as lead trial counsel for both complainants and respondents at the ITC and have acted as shadow or monitoring counsel on many other investigations.
Since the enactment of the America Invents Act (“AIA”), contested proceedings before the PTO’s Patent Trial and Appeal Board (“PTAB”) have assumed an integral - and often dispositive - role in patent disputes. Today, the possibilities of such PTAB proceedings must be considered in all patent disputes. Lerner David’s post‑grant practice has always been active. In the early 1980s, we succeeded in ex parte reexaminations involving patents on basic laser technology that dominated an entire industry. Later, when inter partes reexamination became available, we quickly developed expertise in those proceedings as well.
Our patent procurement philosophy is based not simply on obtaining a patent. Rather, utilizing our keen understanding and extensive experience in technology, patent office proceedings and litigation, we craft a patent strategy for our clients to build patent portfolios that have real world business value.
Our firm provides valuable due diligence and negotiation services in connection with the acquisition of companies, products and technology. Our objective is to not only advise our clients on the strengths of the relevant intellectual property and risks with acquired products, but to also provide advice on how the due‑diligence process may be used to obtain concessions and plan for effective post-closing integration.
Our firm is well experienced in drafting all manner of intellectual-property agreements including, by way of example only, license agreements, consulting agreements, confidentiality agreements, stock and asset purchase agreements and employee intellectual-property assignments. In all aspects, we craft our agreements to effect real-world commercial impact.
Obtaining appropriate protection for intellectual property assets is only the first step to maximizing the value of an intellectual property portfolio. We also help our clients manage their portfolio adroitly so that the assets meaningfully enhance the business of our clients.
IP roadblocks can undermine the development or acquisition of a product. Our clearance studies provide an understanding of the IP landscape and how to navigate a potential IP minefield. This work may include the preparation of written opinions and development of potential “design arounds,” which best position our clients to move forward with a given product or acquisition.
Our firm commands a wide breadth of experience representing both plaintiffs and defendants in copyright litigation and procurement. We advise clients on the critical relationship of copyrights to other types of intellectual property; develop strategies to maximize the revenue potential of copyrights; and protect clients' rights in court. We have particular expertise in obtaining copyright registrations for clients on computer software works, and are especially adroit at protecting packaging and other
Our firm has a wealth of experience in assisting clients with the selection, searching, and registration of trademarks around the world. We understand that trademark selection and searching must be integrated synergistically with marketing and the real-life needs of our clients, especially in the areas of advertising, package design, and trade dress.
Lerner David has expanded its footprint in the realm of alternative dispute resolution (ADR). Drawing upon decades of experience litigating (and settling) patent, trademark and trade secret cases on behalf of both plaintiffs and defendants, Lerner David partners have stepped up to serve as arbitrators and mediators in IP cases.