Intellectual Property Litigation

Our litigation attorneys have collectively represented clients in many diverse and complex IP litigation matters throughout the country against some of the largest law firms in the U.S.  In addition to Federal and State Court litigation, our attorneys have handled administrative proceedings before the U.S. Patent and Trademark Office and domain name disputes through the International Corporation of Assigned Names and Numbers (ICANN).

On the plaintiff’s side, we take a business-oriented, entrepreneurial approach to the dispute focusing on the client’s goals, objectives and expectations.  In doing so, we analyze and provide guidance on the potential viability, benefits, and risks associated with litigation from both a legal and business perspective.

On the defense side, we avoid engaging plaintiff’s counsel on issues that are likely to have little or no practical effect on the ultimate issues in the case.  Instead, we aim to provide targeted defense strategies that, through careful case management, focus on the core defenses.  We strive to flesh out innovative business solutions with the opposing party rather than simply drudging forward with litigation for litigation sake.

Representative cases that have been handled by Mr. McKinley include the following:

Trademark/Trade Dress Cases

  • Berkshire Properties v. Berkshire Hathaway et al. — Represented plaintiff in a lawsuit against Berkshire Hathaway and its related companies in Federal Court for reverse trademark infringement, unfair competition, and violation of the New Jersey Consumer Fraud Act.  The Complaint was reported in the national publication Law360 in January 2016. The case was settled in November 2016.
  • Master Group, Inc. v. Li Yuan, Inc. (Master Wok)– Represented Missouri-based restaurant chain, Master Wok, in a trademark infringement action brought by the owner of a federal trademark MASTER WOK for restaurant services.  Leveraging defendant’s superior “common law” rights to the brand, we settled the case in 2016 and secured a 25-mile radius of exclusivity for our client to continue to use and expand its Master Wok brand.
  • The Steak Umm Company v. Steak ‘Em-Up, Inc. Successfully represented the defendant (grocery/sandwich shop chain Steak ‘Em Up) in a multi-count trademark infringement lawsuit brought by the Steak Umm Company (a national seller of frozen steak and hamburger products).  After a bench trial in October 2011, the court found that 9 of the 10 factors relevant to an infringement determination weighed in favor of defendant and that the evidence overwhelmingly supported that conclusion.   See The Steak Umm Company v. Steak ‘Em-Up, Inc., 2012 WL 1231875 (E.D. Pa, April 11, 2012), reported in the Legal Intelligencer, April 17, 2012, and the Philadelphia Daily News, April 24, 2012.    
  • American Airlines, Inc. v. Applied Card Systems, Inc. – Represented respondent, Applied Card Systems in a trademark opposition proceeding brought by American Airlines.  American sought to oppose Applied Card Systems’ federal registration of the trademark APPLIED ADVANTAGE in view of its federal registrations for several AADVANTAGE trademarks.  After three years of litigation, the parties reached a settlement where American Airlines withdrew its opposition and the APPLIED ADVANTAGE mark proceeded to registration.
  • Villanova University v. Villanova Alumni Educational Foundation – Represented Villanova University in a lawsuit against its former booster club in which the University sought a preliminary injunction to prevent the club from using the names “The Wildcat Club” and “Villanova Alumni Educational Foundation” and variations thereon although the club had done so for 25 years without a written license.  Accepting the University’s argument that a licensing agreement should be implied, after a full evidentiary hearing, the court granted the injunction.
  • Dorland Corporation v. Dorland Data Networks - Represented plaintiff in a trademark infringement action in which plaintiff sought a preliminary injunction to prevent defendant from using the marks “DORLAND” or “DHI” for advertising agency services.  After a brief discovery period, the court entered a stipulation requiring the defendant to cease its use of such marks for such services.
  • Chiswick, Inc. and Russell & Miller Inc. v. S. Walter Packaging Corporation - Defense of S. Walter Packaging in a dispute over the domain name “bagsandbows.com.”  Chiswick filed a complaint with the National Arbitration Forum claiming common law rights to the mark “BAGS & BOWS” and requested that the Forum transfer the domain name “bagsandbows.com” from S. Walter Packaging to Chiswick.  In a unanimous decision, the three-member panel denied Chiswick’s request.
  • Planet Hollywood v. Hollywood Casino – Defense of Hollywood Casino in a trade dress infringement case in which Planet Hollywood alleged it suffered $300 million in damages as a result of Hollywood Casino’s use of a Hollywood theme in its casinos in Mississippi, Louisiana and Illinois.  After several days of testimony, the district court denied Planet Hollywood’s claim for relief in its entirety.
  • A&H Sportswear Inc. v. Victoria’s Secret Stores, Inc. - Member of the trial/appeal team for A&H Sportswear in a trademark dispute regarding Victoria’s Secret’s use of the mark MIRACLE BRA for swimsuits and lingerie.  After seven years of litigation, the Court ultimately granted injunctive relief to A&H Sportswear prohibiting Victoria’s Secret from using the mark in connection with swimwear.  Represented A&H Sportswear during the post-decision damages phase of the case along with former Third Circuit Court of Appeals Judge Arlin Adams, after which the parties negotiated a settlement permitting Victoria’s Secret to continue use of the MIRACLE BRA mark on swimwear.
  • Donald C. Wong DBA Master Group, Inc. v. Li Yuan, Inc.– Represent Missouri-based defendant, Li Yaun Inc., in a trademark infringement action brought in a New York District Court related to the mark MASTER WOK for restaurant services.
  • SkinScience Labs, Inc. v. Perfume Emporium, Inc., et al.—Represent defendant Perfume Emporium in a trademark counterfeiting case related to DR. DENESE skin care products.  Settled on terms favorable to the client.

Patent Infringement Cases

  • Nomadix v. Second Rule – Represented defendant Second Rule in a complex patent infringement case in the Southern District of California, involving several patents related to nomadic routers, data packet interception, gateway devices, zero configuration and billing systems related to use of wired and wireless networks.
  • Curlin Medical, Inc. et al. v. ACTA Medical et al.- Represented a defendant in a patent infringement action arising out of the alleged infringement of infusion therapy, peristaltic pump patents.  Secured dismissal of client from the case, with prejudice, pursuant to confidential settlement terms in September 2016.
  • Alladin Knowledge Systems v. Feitian – Advised plaintiff Alladin in a patent infringement case In the Northern District of Illinois involving user-computer interaction methods for user authentication, access control and digital signature verification using a USB plug.
  • Rockwell Automation Inc. v. 3S-Smart Software Solutions, Gmbh – On the defense side, represented third party in connection with three technologically complex patent infringement actions in the Eastern District of Texas and the ITC, involving over 20 Rockwell patents related to industrial controller technology. The case was settled in October 2016 to the parties’ mutual satisfaction.
  • Kason Industries. v. Dent Design Hardware – Represented Kason in a patent infringement action seeking injunctive relief and damages for Dent’s infringement of Kason’s anti-sag hinge patent.  Case settled at the injunction stage, requiring defendant to (1) cease making, having made, using and/or selling the infringing products, (2) recall uninstalled products from its customers, (3) turn over to Kason all unused inventory, and (4) pay a cash settlement.
  • High Quality Printing Inventions, LLC v. Prudent Publishing and Allbusinescards.com – Represented HQPI in the District of New Jersey in connection with two separate cases involving patents related to creating customized business forms. The cases settled in the first quarter of 2016 to the parties’ mutual satisfaction.
  • Mysinski v. Rogers Athletic Co. — represented plaintiff, former NFL lineman, in a design patent infringement case in the Western District of Pennsylvania federal court related to a football training device.  Shortly after the case was filed, the defendants entered into a settlement agreement favorable to Mr. Myslinski.
  • Tritek Technologies, Inc. v. Lockheed Martin Corporation – Representation of Tritek in a multi-million dollar patent infringement case in Eastern District of Pennsylvania against Lockheed Martin related to large-scale mail sorting machines and high speed OCR systems.  The parties reached a confidential settlement after the close of discovery and before trial.
  • CIC Global v. Motorola - Representation of CIC Global (an Exelon Capital Partners and Orion Ltd. Company) in a large patent infringement and trade secret misappropriation case against Motorola in Eastern District of Pennsylvania involving pre-payment electric meter technology.  After the exchange of hundreds of thousands of pages of documents and the depositions of several key Motorola engineers and business people, the case settled.
  • STERIS v. Bioquell - Representation of plaintiff STERIS in a patent infringement case involving hydrogen peroxide gas vaporizers used by pharmaceutical companies and others for bio-decontamination of instruments and rooms.  After two months of discovery, and on the eve of a preliminary injunction hearing, defendant stipulated to an Order prohibiting it from marketing its infringing product.  Because such vaporizers are used to counter the current threat from SARS and bio-terrorism, the victory was a significant one for the client.
  • Novell Laboratories, Inc. v. Shanmugam, KVK Tech Inc. and Amrutham, Inc. – Represented generic pharmaceutical companies, KVK and Amrutham , in a TRO and preliminary injunction proceeding brought by competitor, Novell, alleging trade secret theft by former employee, Shanmugam.  The parties agreed to limited restraints pending a full evidentiary hearing on the request for preliminary injunction.

Copyright Case  

  • CA, Inc. v. ISI Pty Limited – Retained as an Expert on U.S. Copyright Law by an Australian law firm in a software case instituted in the Federal Court of Australia, New South Wales District Registry.  Prepared and submitted expert report used by counsel and filed with the Court.  Client commented that they were “very impressed with the professionalism of the job undertaken within a very tight timeframe.”

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