Intellectual Property Litigation
Stites & Harbison’s IPT Group has extensive experience litigating intellectual property matters before federal and state courts throughout the nation. This experience also extends to all levels of appeals, including the United States Supreme Court. Our firm's intellectual property litigation attorneys aggressively protect the intellectual property assets of our clients, and defend those who have been wrongfully accused of infringing others’ intellectual property rights. The firm has handled a number of significant and well-known intellectual property disputes and has served as lead counsel in intellectual property litigation in more than 30 states. Below are examples of the firm's experience:
Patent Infringement Litigation
- Representing a manufacturer of coolant compounds in a patent infringement litigation against a competitor that resulted in a $40 million royalty payment to our client by the defendant
- Representing a patent holder in the lighting industry in a patent infringement trial that resulted in a multi-million-dollar jury verdict
- Defending a developer of financial software and systems in a patent infringement trial in the U.S. District Court for the Eastern District of Texas, which resulted in a judgment as a matter of law in favor of our client
- Defending a toner cartridge manufacturer in an action brought by one of the world's largest printer manufacturers
- Defending a supplier of accelerometers in suit brought by patent holding company against several large automotive manufacturers
- Defending a national manufacturer of athletic pads in an infringement action brought by a competitor. Litigation was heard by the U.S. Supreme Court and eventually resulted in an award of attorneys' fees to our client.
- Representing a manufacturer of nacho cheese dispensers in multiple actions against infringers of its patents
- Defending a manufacturer of cable reels in an infringement action brought by a competitor
Trademark Infringement/Unfair Competition Litigation
- Defending a local automobile service company against a national oil company's claim of infringement of the INSTANT OIL CHANGE mark
- Defending a financial company offering variable annuities under the MARQUEE mark that was accused of infringing a bank's MARQUIS mark used for mutual funds
- Defending a new pizza franchisor accused by a major national franchisor of trade dress infringement
- Representing a cabinet retailer who owned the SCHEIRICH mark in an infringement action against a homebuilder and its related cabinet company using the SCHIERICH mark with kitchen cabinets
- Defending a local, family-owned auto parts business using the ADVANCE AUTO mark in an action brought by a major regional chain using the same mark
Copyright Infringement Litigation
- Representing Microsoft Corporation in several infringement actions against companies who have loaded pirated software onto computers for resale, and against resellers distributing counterfeit software
- Representing a marketing company in several infringement actions throughout the nation against car dealerships and billboard advertisers who misappropriated a distinctive advertising campaign
- Defending a credit information agency accused of infringement by a former software provider
- Representing a dissolved partnership that created and marketed electronic data interface software
- Representing an architect who was dismissed from a project and whose plans were then misappropriated in creating the final plan for the project
- Representing an electronics training company whose advertising materials were copied by a competitor
- Representing a doctor whose scholarly work was infringed in the creation of a monograph for distribution to surgeons
IP Rights That Go Bump in the Night: Horror Inc. v. Miller
It’s that time of the year. When the wind begins to chill and the nights grow longer, serving as harbingers for the inevitable truth, spooky season is upon us. As you and your neighbors begin to adorn your homes with your favorite ghouls and goblins in celebration of All Hallows’ Eve, I’d like to remind you of another reason to celebrate. For the second consecutive year, the Governor of Kentucky, Andy Beshear, has proclaimed October as Intellectual Property (IP) month in our commonwealth. In honor of this proclamation, I will share a story of IP rights that go bump in the night—the story surrounding the Second Circuit case, Horror Inc. v. Miller, 15 F.4th 232 (2d Cir. 2021). IP attorney Donovan Gibbs takes a look at the case in this Stites & Harbison Client Alert.
October 2024 is Intellectual Property Month in Kentucky
The Governor of Kentucky has officially proclaimed that October 2024 is Intellectual Property Month! This was achieved through efforts of the Kentucky Intellectual Property Association (KYIPA), in partnership with KY Innovation, Kentucky Science and Technology Corporation (KSTC), the Kentucky Bar Association (KBA) Intellectual Property (IP) Law Section, and many other organizations in the Commonwealth. IP attorney Mandy Decker takes a look at what intellectual property is in this Stites & Harbison Client Alert.
Managing IP Honors James Hayne and Nick Stewart on 2024 “Rising Stars” List
Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorneys James Hayne and Nick Stewart to its 2024 “Rising Stars” list. This is Hayne’s third time and Stewart’s second time being honored.
Stites & Harbison Named to 2024 Top 10 Trademark Firms in North America – South List
The Trademark Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Trademark Firms and IP Practices in North America – South list. This is the firm’s second year being honored.
USPTO to Do a Deep Dive on Deepfakes
The United States Patent and Trademark office (“USPTO”) has stated that it will be holding a roundtable on August 5, 2024, to address whether current laws are sufficient to protect individuals from the unauthorized reproductions of their voice, image, or likeness commonly referred to as “deepfakes.” Attorney TJ Mihill takes a look at the what the USPTO is looking for in this Stites & Harbison Client Alert.
Samuel F. Miller Rejoins Stites & Harbison in Nashville
Stites & Harbison, PLLC welcomes attorney Samuel F. Miller back to the firm’s Nashville, Tenn., office where he started his legal career in 2003. He rejoins the firm as a Member (Partner) in the Intellectual Property & Technology Service Group.
KBA Elects Mandy Wilson Decker and Donovan Gibbs II to Leadership Roles
The Kentucky Bar Association (KBA) recently elected two Stites & Harbison, PLLC attorneys to leadership roles in the Intellectual Property (IP) Law Section. Mandy Wilson Decker was elected Chair of the IP Law Section while Donovan D. Gibbs II was elected Vice Chair of the section. Both attorneys will serve a one-year term.
Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2024 List
LOUISVILLE, Ky. (June 20,—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2024 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.
News of the Death of Workers’ Jobs at the Virtual Hands of AI is Greatly Exaggerated
Artificial Intelligence (AI) is being touted as having the potential to save humanity or destroy it. On the saving side there is the possibility for drug discoveries, disease (e.g. cancer) diagnosis for early detection and cure, and energy discovery and efficiency. Stephen Weyer takes a look at the world AI in this Stites & Harbison Client
USPTO Updates Guidance Due to Federal Circuit’s Adoption of Same Obviousness Test for Utility and Design Patents
On May 21, 2024, the Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348, eliminating the long-established test for proving design patents invalid for being obvious as "improperly rigid" in favor of a more flexible approach. In doing so, it decided the same test for utility patent obviousness applies to design patents. IP attorney Trevor Graves takes a look at the case in this Stites & Harbison Client Alert.
Junior Achievement of Kentuckiana Appoints Donovan D. Gibbs II to Advisory Board
Junior Achievement of Kentuckiana recently appointed Stites & Harbison, PLLC attorney Donovan D. Gibbs II to its Young Professionals Advisory Board.
Stites & Harbison Earns 2024 Top 10 Listing in Patent Lawyer Magazine
The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s third year being honored.
Sixth Circuit Applies Updated Arbitration Waiver Standard
In a published opinion issued on March 27, 2024, the Sixth Circuit applied for the first time the waiver standard announced in the Supreme Court’s 2022 opinion, Morgan v. Sundance, Inc., 596 U.S. 411 (2022), in affirming the denial of a motion to compel arbitration due to the defendant’s extensive participation in the litigation.
Benchmark Litigation Selects Stites & Harbison as 2024 Litigation Firm of the Year for Kentucky
LOUISVILLE, Ky.—Benchmark Litigation recently named Stites & Harbison, PLLC as Litigation Firm of the Year for Kentucky at its 2024 Benchmark US Awards Gala. This is the fourth time Stites & Harbison has received the honor.
Thad Barnes and Michael Denbow Appointed to Lead Stites & Harbison’s Business Litigation Service Group
LOUISVILLE, Ky.—Stites & Harbison, PLLC is pleased to announce that attorneys Thad M. Barnes and Michael Denbow have been appointed to Co-Chair the firm’s Business Litigation Service Group. Each attorney will continue their diverse legal practices in business litigation.
Navigating Artificial Intelligence in PR and Communications
Time: 11:30 a.m. - 1:00 p.m.
Flash Cube Building, 9300 Shelbyville Road, 2nd Floor Community Room, Louisville, KY
The March PRSA Program entitled "Navigating Artificial Intelligence in PR and Communications," is a panel discussion surrounding the utilization of AI in communications and will feature Stites & Harbison IP attorney, Nick Stewart, who is a Registered Patent Attorney.
2024 WTR 1000 Recognizes Stites & Harbison’s Trademark Practice
LOUISVILLE, Ky.—World Trademark Review (WTR) has recognized Stites & Harbison, PLLC and four attorneys in the 2024 edition of WTR 1000 – The World’s Leading Trademark Professionals.
Is That Tattoo Infringing? The Complicated Copyright Questions Surrounding Tattoos
Tattoos have been at the core of several copyright cases over the last few years. One of the earliest well-known examples was a suit by Mike Tyson’s tattoo artist over the use of Tyson’s face tattoo design in the movie The Hangover Part II, which settled out of court in 2011. However, several more recently undecided cases have raised issues tied to tattoos and copyright infringement. TJ Mihill takes a look at this issue in the latest Stites & Harbison Client Alert.
Stites & Harbison Welcomes Donovan D. Gibbs II to the Louisville Office
LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Donovan D. Gibbs II to the firm based in the Louisville, Ky., office. He joins the Intellectual Property & Technology Service Group.
2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)
Time: 12:00 p.m. - 2:00 p.m.
401 Commerce Street, Suite 800, Nashville, TN 37219
IP attorney Alex MacKay will co-host this roundtable in the firm's Nashville office on January 31, 2024.