IP Litigation - Lucas & Mercanti, LLP

IP Litigation

Intellectual property litigation is a daunting prospect. Intellectual property is the lifeblood of your company, so a loss could significantly harm, or even end your business.

Lucas & Mercanti, LLP has a deep bench that includes litigators with over 30 years of experience litigating for Fortune 100 companies, former heads of corporate litigation groups, and authors of legal treatises. Our command over issues concerning science, technology and law is top notch. We will work with you to understand your business needs, and to craft a strategy to quickly and favorably resolve your dispute.

When bringing and defending claims involving IP assets, our approach is always practical and well-planned. We seek early resolution, explore alternative dispute resolution options, and brief clients on the potential risks and costs of litigation. We work closely with our clients, keeping them informed throughout the process. We work to understand your goals and expectations on key points, and work toward the best solution customized to your legal issues and desired outcome. The result: a cost-effective and efficient strategy that makes good business sense.

Patent Litigation

We regularly litigate cases involving medical devices, wireless devices, semiconductors, GPS devices, consumer electronics, nutritional supplements, pharmaceuticals, consumer goods, chemical products, food and beverage, computer software, e-commerce, pulp and paper, mining, and metallurgy.

Our experience includes successfully representing clients in:

  • Civil state and federal court actions
  • The Patent Trial and Appeal Board (“PTAB”) in patent interferences, ex parte and inter partes reexaminations and derivation proceedings
  • The International Trade Commission
  • Oppositions, invalidation trials and other matters in courts and in patent offices in the U.S., Europe, Japan, India and elsewhere with the help of local counsel

Below is a sampling of representative matters that reflect the breadth and diversity of our patent litigation capabilities:

  • We regularly defend generic pharmaceutical companies in Hatch-Waxman litigation. Most recently, we defended a client against infringement claims involving OxyContin® brand Oxycodone HCl extended release tablets.
  • Represented plaintiff in a design patent case. Defeated motion for summary judgment on non-infringement and obtained favorable settlement. Successfully opposed adversary’s petition for writ of certorari to US Supreme Court.
  • Represented defendant in a consolidated patent infringement action on patents for nutritional supplements. Filed inter partes reexamination requests in US Patent and Trademark Office for two patents and obtained rulings of unpatentability by central reexamination unit and were affirmed by the Patent Trial and Appeal Board.
  • Represented defendant in a patent infringement action on fire door patent. Obtained ruling of non-infringement by summary judgment, resulting in dismissal of case without liability.

Copyright, Trademark, and Trade Secret Litigation

We are equipped to help clients prosecute or defend any type of dispute involving copyrights, trademarks, trade secrets and unfair competition. Our experience includes successfully representing owners and accused infringers in:

  • Civil litigation actions in the federal and state courts
  • Opposition and cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) of the USPTO
  • International Trade Commission
  • Oppositions of preliminary injunction motions in trademark and trade dress actions in the U.S. and world-wide
  • Domain name dispute resolutions

Below is a sampling of representative matters that reflect the breadth and diversity of our litigation capabilities:

  • Represented a defendant in a trademark infringement action. Successfully opposed motion for preliminary injunction, notwithstanding evidence of actual confusion. Case terminated without liability.
  • Represented a defendant in a trademark infringement action. Defeated motion for Temporary Restraining Order and preliminary injunction. Obtained favorable settlement.
  • Represented a defendant in a design patent and trade dress action. Defeated motion for preliminary injunction and obtained favorable settlement.