Intellectual Property Litigation

Parr Waddoups handles intellectual property matters for local, national and international clients in the areas of trademark and copyright infringement, consultation and litigation, patent prosecution and litigation, distribution and licensing agreements, publishing law and Internet domain name disputes.

Depending on the case, we pursue legal options that offer clients the most efficient and economically fair resolution. In many cases where clients have been accused of infringement, we have researched the situations and responded with letters articulating the clients' positions. Often, based on the strength of such letters, no further action is required. When appropriate, we employ alternative dispute resolution strategies consistent with the client's objectives, but are equally qualified and staffed to pursue complex litigation strategies under the most adversarial of conditions.

The firm has conducted IP representation for companies in an array of industries including software, computers, marketing, manufacturing, entertainment, mining, the Internet, consulting, telecommunications, cleaning supplies and recreation.

Representative Cases

Parr Waddoups' Intellectual Property achievements have included:

• Successfully defending a Japanese client involved in a patent infringement lawsuit where the plaintiff sought in excess of $60 million and an injunction. Parr Waddoups settled the case for $1.5 million--the equivalent of a licensing agreement fee--with no injunction.

• Winning a summary judgment on $30 million in claims for a medical device manufacturer accused of infringement.

• Obtaining a settlement for more than 10 times the attorneys' fees accumulated during the suit.

• Successfully reversing a trial court decision on appeal with the Federal Circuit as well as having an injunction thrown out and obtaining a new construction of the patent from the appellate court favorable to the client.

• Obtaining a settlement within six months of filing the complaint where the defendant agreed to stop selling the product and to pay the equivalent of eight times the gross revenues on the sales of the accused product.

• Winning a $23.5 million verdict in a software piracy case.

• Successfully defending Bausch & Lomb in a licensing dispute related to Lasik eye surgery.

The firm is frequently called upon to act as local counsel for national and international firms. It is not unusual for us to be named as lead counsel at some point in the litigation process. For instance, Parr Waddoups was engaged by manufacturer of moving targets in a patent matter pending in the Northern District of California that had been ongoing for several months. We were originally hired to defend non-patent related counter claims brought by the accused infringer in the underlying patent case. After a few months of involvement, the client hired Parr Waddoups as lead counsel, for all purposes, noting that our expertise was equivalent to and our fees more favorable than the original lead counsel, a nationally recognized firm from California. Within months, the counter claims were reduced to an insignificant risk and the underlying patent case prepared for a summary judgment finding of infringement.

In another case, Parr Waddoups served as local counsel for over a year in a matter pending in Utah after lead counsel belatedly brought us in following an adverse Markman ruling. The client, a medical device manufacturer, insisted we assume the lead counsel role and, within two weeks of doing so, the plaintiff proposed a settlement with essentially the same terms the client desired. The proposed settlement followed a motion informing the court of the details of the client's product. In the four years the case had been in progress, the court had not heard this information. The primary reasons the client cited for the change was Parr Waddoups' "national Silicon Valley" level of expertise and higher level of personalized attention at a far more reasonable cost.

Attorneys serving the Intellectual Property Litigation group:

• Hafen, Jonathan O.
• Hale, Stephen E. W.
• Hess, Gregory M.
• Hill, Stephen J.
• Hoppe, Michael T.
• Hunt, Jeffrey J.
• Johansen, Bryan S.
• Lochhead, Robert B.
• Matkin, Justin P.
• Parry, D. Craig
• Reymann, David C.
• Smith, Timothy B.
• Smith, Damian C.
• Snow, John P.
• Waddoups, Clark
• Welch, Terry E.