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IP Litigation

Overview

IP Litigation
Clients turn to our team to manage their high-stakes IP litigation because Nutter’s IP litigators are equipped with extensive trial experience and industry knowledge. We have a proven track record of successfully resolving complex intellectual property disputes involving patents, trademarks, trade dress, copyrights, and trade secrets. But what sets us apart is our passion for what we do and our commitment to providing value and creative, personalized solutions for each of our clients. We understand our client's business and how our efforts as legal counselors and advocates can help provide optimal results to that business.

Our Team
Our patent and litigation attorneys, as well as our staff, come from a variety of backgrounds and include individuals with advanced technical backgrounds in areas ranging from biophysics to computer science. Consistently recognized for its expertise, Nutter has been named both go-to patent counsel by Johnson & Johnson in a survey conducted by IP Law & Business as well as a top litigation practice by Chambers USA. Our IP litigation lawyers in Boston frequently represent clients in the District of Massachusetts as well as in other active venues for IP disputes, including the District of Delaware and the U.S. Court of Appeals for the Federal Circuit.

What We Do
We seek to partner with our clients through each and every step of the litigation life cycle, which includes pre-litigation counseling, discovery, trial, and appeal.

  • Most importantly, we present legal strategies that are consistent with our clients’ business goals.
  • We employ a team-oriented approach that ensures our clients reap the rewards of each attorney’s expertise, whether that expertise concerns a particular technology, a particular legal theory, or a particular venue.
  • We believe in efficient processes. Nutter staffs its projects leanly, but appropriately. An important aspect of our staffing model is that we commit significant partner level attention to each and every client. Moreover, our partner to associate ratio results in superior associate training and satisfaction, eliminating a revolving door of associates assigned to cases.

Our IP litigation team has represented clients from a variety of industries with respect to all aspects of their intellectual property. We represent clients:

  • In patent litigation before federal district courts across the country as well as before the Federal Circuit and the United States Supreme Court;
  • Before administrative agencies—including the U.S. Patent and Trademark Office—in proceedings that are unique to intellectual property assets, such as patent reexaminations and interferences, inter partes reviews, foreign oppositions, and trademark opposition and cancellation proceedings;
  • In connection with trademark and trade dress disputes, including securing registration of trademarks, enforcing trademarks, responding to cease and desist letters, and district court litigation; and 
  • With regard to federal and state laws that protect intellectual property, such as trade secret, misappropriation of intellectual property, and unfair competition laws.

How We Do It
Nutter endeavors to deliver the best possible results and value to all of our clients. There are several critical factors that drive success, including:

  • Early strategic assessment of the issues, including analyzing risks, worst case scenarios, options that can be pursued, the likelihood of success for each option, and the expected associated costs for those options; 
  • Development of a practical strategy for winning or settling at a reasonable cost; 
  • Ability to predict events and the timeline for those events; 
  • Tenacity; 
  • Mastery of the technology and law of electronic discovery;
  • Anticipating the other party's actions; 
  • Ability to stay within budget; and 
  • Remaining open to unanticipated theories and angles.

View Practice Team

Representative Matters

Representative Matters

  • Nutter Client Professional Audio Design Successfully Defends Its 30-Year Brand

    Mike Leard, Ben Stern, and Sara Lonks Wong represented Professional Audio Design (PAD) in a successful resolution to a multi-year litigation brought in response to attacks by certain third parties on PAD’s premier brand of recording-studio speaker—Augspurger® Monitors. PAD has manufactured and sold Augspurger® Monitors for decades and its brand is synonymous with high end audio.

  • Represented Lallemand in competitor patent case

    Nutter defended Lallemand Specialties, Inc. and its affiliate in 2018 jury trial during which a competitor alleged Lallemand infringed a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

  • Obtained permanent injunction on behalf of PrintGuard

    Nutter represented PrintGuard, Inc., a manufacturer of anti-marking products for printing presses, as the plaintiff in a patent infringement suit. The defendant ultimately agreed to end the case on terms that included the entry of a permanent injunction.

  • Drafted amicus brief to Supreme Judicial Court on patent prosecution conflicts

    Nutter drafted an amicus brief to the Massachusetts SJC on behalf of a patent law association in a case involving subject matter conflict-of-interest issues in patent prosecution.

  • Obtained summary judgment of invalidity for medical device company accused of patent infringement

    Nutter advised a life sciences company that was accused by a competitor of patent infringement relating to an insertion method for a hemodialysis catheter. After briefing and a hearing, the court disposed of the case on summary judgment, finding the patent-in-suit obvious as a matter of law.

  • Represented a medical device company in policing a series of trademarks

    Nutter represented a medical device company in policing a series of trademarks through several cease and desist letters and negotiations, bringing about very favorable results short of filing in court.

  • Secured favorable settlement for client in “bet the company” case

    Nutter represented a startup speech recognition technology company defending numerous simultaneous lawsuits in multiple jurisdictions in a momentous patent war with a much larger rival company. Through Nutter’s efforts, the client was able to achieve a global settlement on very favorable terms.

  • Reached global resolution of patent and trademark cases for consumer products client

    Nutter represented a company in several jurisdictions in related patent and trademark actions concerning the manufacture, sale, and marketing of feminine hygiene products. The client and its competitor resolved the cases globally on terms favorable to our client.

  • Secured settlement in patent case for patentee

    Nutter represented a plaintiff in a patent infringement suit related to an ingestible bait poison for molluscs, including snails and slugs, against manufacturer and seller of organic and biodegradable pesticides. The case was settled just as discovery was about to commence.

  • Defended client against claims of trademark infringement

    Nutter represented a client in the food and beverage industry in a trademark infringement case in federal district court. The case was settled before the filing of an answer on terms favorable to the client.

  • Settled IP misappropriation and trademark case for client

    Nutter represented the defendant in a case brought by a competitor involving rights to the name and use of a market index. The case was settled at mediation.

  • Obtained reversal of lost profits award for American Technical Ceramics

    Nutter represented defendant American Technical Ceramics, Inc. before the Court of Appeals for the Federal Circuit in an appeal from a 2016 jury trial. The Federal Circuit reversed the jury’s award of lost profits based on the availability of an acceptable non-infringing alternative.

  • Defended a biotechnology company against claims of breach of contract

    Defending a biotechnology company against claims of breach of contract and licensing fees relating to the purchase of intellectual property. Settled on the eve of an arbitration hearing on terms favorable to the client.

  • Negotiation of early settlement of a patent infringement suit

    Nutter negotiated an early settlement of a patent infringement suit whereby the client agreed to re-design its product. The case was dismissed with no payment of damages.

  • Obtained favorable settlement on patent infringement claims

    Our client was sued for allegedly infringing a patent pertaining to the method by which our client’s product was packaged. Though the client denied any infringement, the client was able to settle the matter on favorable terms, including an advantageous license arrangement.

  • Obtained favorable settlement for major insurance company in trademark infringement action

    After aggressively litigating trademark infringement action brought on behalf of our client, defendants agreed in a settlement that it shall not directly or indirectly use, advertise, promote or display any name or mark containing our client’s name or mark in Massachusetts, for insurance-related services.

  • AI Company in Copyright Litigation

    Nutter represented a company that develops AI solutions for a wide range of commercial applications in copyright litigation against a former business partner. The firm prepared a strong non-infringement case based on a deep analysis of the software’s source code. The case settled favorably shortly before trial.

  • Biofuels in patent litigation

    Nutter defended a producer of genetically modified organisms used in ethanol production in a jury trial during which a competitor alleged infringement of a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

  • GPS-Based Pet Containment and Tracking Collar Company

    Nutter represented a company that designs and sells a GPS-based pet containment and tracking collar in asserting multiple patents against a competitor (who brought counterclaims relating to, among other things, alleged false marketing statements). Litigation spanned district court and PTAB (IPR proceedings). Nutter obtained a favorable claim construction ruling and numerous discovery-related rulings. Nutter’s IP Litigation team completed fact and expert discovery and obtained key concessions from witnesses. Within a few months of trial, the court granted our motion to expand infringement allegations to allow the assertion of infringement under the doctrine of equivalents. Shortly thereafter, the case settled favorably.

  • Smart notebook company in patent litigation

    Nutter represented a company that designed and sells reusable smart notebooks in patent litigation against Chinese companies attempting to enter the U.S. market with infringing products by filing a declaratory judgment action of non-infringement. The firm constructed a strong infringement argument and convinced declaratory judgment plaintiffs to dismiss the case before the client had to file an answer or spend significant money. 

  • Software company in intellectual property litigation

    Nutter represented a software company that sued a Fortune 100 computer hardware, software, and services company for copyright infringement, breach of license agreement, and breach of contract (among other causes of action) as a result of unauthorized copying and use of the client’s software to design and develop a competing product. Nutter defeated the motion to dismiss. The firm architected and executed a discovery strategy that revealed a weakness in the opposing party’s case. The case settled very favorably shortly thereafter.

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eDiscovery

eDiscovery

Nutter’s eDiscovery team is comprised of knowledgeable and seasoned litigation attorneys working in concert with our litigation technology professionals. Nutter is focused on providing creative, agile, and cost effective eDiscovery solutions to our clients starting from preservation at the initial anticipation of litigation through production, retention, and, ultimately, destruction.

Our Team
Our multidisciplinary team understands the ever-expanding universe of data and the technical, legal, and financial challenges it presents. Nutter has a deep bench of litigation attorneys with extensive experience handling complex eDiscovery matters. Nutter’s litigators draw on the substantial technical expertise from the firm’s technology professionals, including multiple Certified E-Discovery Specialists (CEDS) with the Association of Certified E-Discovery Specialists (ACEDS).

What We Do
Our experienced litigation technology professionals can handle Electronically Stored Information (“ESI”) internally from collection to production through our advanced technology platforms, or work with our vendors and our clients to craft a tailored approached to ESI management. We have extensive experience in managing all aspects of the eDiscovery process, including identification, preservation, collection, review and analysis, and production. Our data hosting infrastructure provides secure access to clients and external parties at a cost significantly below vendor market rates.

The Nutter team, led by Seth Berman, leverages its experience with a wide array of workflows and advanced technology, including technology-assisted review, to maximize efficiency in the document review process with strategies that are defensible in court. We design meticulous quality control procedures when managing a team of expertly trained contract lawyers and advanced forensic data analysis firms, to ensure an effective and efficient process.

Nutter approaches each new eDiscovery challenge with practical and defensible processes to ensure a streamlined and cost-effective outcome.

Experience

  • Nutter Client Professional Audio Design Successfully Defends Its 30-Year Brand

    Mike Leard, Ben Stern, and Sara Lonks Wong represented Professional Audio Design (PAD) in a successful resolution to a multi-year litigation brought in response to attacks by certain third parties on PAD’s premier brand of recording-studio speaker—Augspurger® Monitors. PAD has manufactured and sold Augspurger® Monitors for decades and its brand is synonymous with high end audio.

  • Represented Lallemand in competitor patent case

    Nutter defended Lallemand Specialties, Inc. and its affiliate in 2018 jury trial during which a competitor alleged Lallemand infringed a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

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