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Understanding the Intellectual Property License 2002

 
Author(s): Ian N. Feinberg, Marcelo Halpern, Susan Progoff
Practice Area: Intellectual Property
Published: Oct 2002
PLI Item #: 379
CHB Spine #: G722

Ian Feinberg has more than 30 years of experience focused on patent, copyright, trademark and trade secret litigation with deep expertise in licensing, unfair competition and antitrust , primarily focused in the software and semiconductor industries. He has represented such famous companies as Adobe , Monster Cable, Sony, SWIFT, Trident, Visa, and Vodafone in patent litigation, as well as much smaller companies.

Significant Engagements

IpVenture, Inc. v. Sony Corporation., et al., United States District Court – Delaware
Represented Sony Corporation and two other Sony entities in an action alleging infringement of more than 100 claims in four patents involving power and thermal management for notebook computers that allegedly read on all notebook computers using Microsoft Windows operating system. Result: favorable confidential settlement.

Technology Patents LLC v. Deutsche Telekom AG, et al., United States District Court-Maryland
Represented approximately 15 Vodafone entities in a patent infringement action against some 131 defendants alleging infringement of patents on international text and SMS messaging. Result: dismissal on the ground of lack of personal jurisdiction based on oral argument made on behalf of all (115) foreign mobile telephone carriers.

Cryptography Research, Inc. v. Visa International Service Association, United States District Court – San Jose
Represented Visa in an action alleging infringement of more than 100 claims in eight-patents in addition to a Sherman Act Section 1 conspiracy claim and a Sherman Act Section 2 Walker Process monopolization counterclaim involving patents on countermeasures to cryptographic attacks on smart card. Result: favorable confidential settlement.

Agfa Monotype Corporation and International Typeface Corporation v. Adobe Systems Incorporated, United States District Court – Chicago
Represented Adobe in a case asserting that a “circumvention device” in violation of the Digital Millennium Copyright Act. Result: summary judgment for Adobe.

FreecycleSunnyvale v. The Freecycle Network, United States District Court – San Francisco and Ninth Circuit
Obtained declaratory judgment in district court, affirmed by the Ninth Circuit, that “freecycle” and related terms were nakedly licensed to client, FreecycleSunnyvale, by The Freecycle Network and thus abandoned as trademarks. In addition, obtained reversal in the Ninth Circuit of a preliminary injunction issued in a separate case brought by The Freecycle Network enjoining Mr. Oey from “tending to disparage” the validity of  the alleged “freecycle” trademarks and from encouraging others to use the word “freecycle” in its generic sense, on the ground, among others, that the there is no cognizable claim for trademark disparagement under the Lanham Act.


Marcelo Halpern is a partner with the firm's Business group and is co-chair of the firm’s national Technology Transactions & Privacy group.  Marcelo's practice focuses on transactional and strategic matters involving the development, deployment and distribution of technology.  His clients include global "FORTUNE 100" companies, start-up and emerging growth companies, as well as U.S.-based and international governments and non-profits. His experience includes structuring and negotiating technology and intellectual property-oriented strategic alliances and joint ventures; software, data and content licensing; outsourcing and ERP implementation transactions; counseling on digital strategy concerns including open source licensing, data security, data use and privacy issues; hosting, cloud computing and software services agreements; data analytics and contract licensing; research and development transactions; private labeling, co-branding and other marketing and distribution strategies; and intellectual property and technology issues arising in the context of mergers and acquisitions, financing and bankruptcy transactions.

Education

  • Columbia University School of Law, J.D., 1992
  • Columbia University, Graduate School of Business, M.B.A., 1992
  • Wesleyan University, B.A., 1985

Professional Recognition

  • Chambers' USA Guide to Leading Business Lawyers, 2004 - present 
  • The Best Lawyers in America, 2006 - Present(2016 Technology Law "Lawyer of the Year" for Chicago)
  • Illinois Leading Lawyers Network, 2004 - present 
  • Legal 500, Leading Lawyer, 2005 - present

Professional Leadership

  • Practising Law Institute, Understanding the Intellectual Property License program, Chair
  • Illinois Legal Aid Online, Board of Directors, Immediate Past President
  • International Technology Law Association (ITechLaw), Membership Committee, Local Representative 
  • American Bar Association, Science and Technology Section, Member
  • Illinois State Bar Association, Member
  • Chicago Bar Association, Computer Law Committee, Member


SUE HELPS CLIENTS FIND PRAGMATIC, BUSINESS-ORIENTED SOLUTIONS TO CRITICAL TRADEMARK, COPYRIGHT, FALSE ADVERTISING AND UNFAIR COMEPTITION PROBLEMS.

Sue is a nationally recognized expert on all facets of trademark, copyright and related unfair competition law.  She has handled all aspects of these areas of the law, including major litigation and major transactions.

Sue is an experienced litigator who has handled many trademark, trade dress, copyright, false advertising, domain name, keyword and other Internet disputes and unfair competition matters, some of which have made new law.  She has acted as lead counsel in suits for such clients as Carter's, Lever Brothers Company, Snapple Beverage Corp., Toy Manufacturers of America, Inc., The Coca-Cola Company, Ford Motor Company, Burberry Limited, Bell's Brewery, Inc., Purdue Pharma L.P., Huntsman Gay Capital Partners and Half the Sky Foundation. She has also designed and implemented anti-counterfeiting programs for clients in such diverse fields as fashion and accessories, semiconductor chips and automotive parts, and represented clients in a multitude of industries in oppositions and cancellation proceedings in the United States Patent and Trademark Office and in ADR proceedings.

In addition to her extensive experience in contested proceedings, Sue brings a pragmatic approach to trademark clearance, prosecution and enforcement in the United States and internationally.  She applies a litigator’s perspective to helping clients minimize the risk of receiving a third party’s objection to the adoption of new marks, while also creating strategies for building brands that strengthen the client’s ability to enforce its rights against infringers.  She has also handled the trademark and copyright aspects of many complex corporate transactions that have depended on the parties’ intellectual property rights, and advised clients on designing and implementing trademark and copyright licensing programs.

Honors

  • Best Lawyers in America (2011-present)
  • World Trademark Review 1000 Band 1 (non-contentious); Band 2 (contentious) (2011 - present)
  • Expert Guide's Best of the Best (2005 - present), Trademark Law(one of top 30 trademark practitioners in U.S.)
  • Expert’s Guide to the World’s Leading Trademark Lawyers (2005-present)
  • Expert's Guide to the World's Leading Women in Business Law (2010 - present)
  • Euromoney's Guide to the World's Leading Trademark Law Practitioners (2001 - present)

Professional Activities

  • International Trademark Association
  • Copyright Society of the United States
  • American Bar Association
  • Association of the Bar of the City of NewYork
  • New York Intellectual Property Law Association (Board member 2009-2012)