Experience
Intellectual Property Strategy
Identifies and advises clients with respect to the risks and rewards of IP ownership, prosecution, and protection strategies.
Counseled Leading ULT Freezer Company through Merger
Client: Stirling Ultracold
We counseled our client, Stirling Ultracold, an innovative developer and manufacturer of ultra-low temperature (ULT) freezers for life science and biopharma research, through its merger with BioLife Solutions, Inc., a developer focused on bioproduction devices used in cell and gene therapies. The all-stock mergers was in excess of $230 million.
Stirling’s CEO saw the potential for increased demand for the company’s freezers during the COVID-19 pandemic as the freezers were a direct competitor to dry ice used in storing the COVID-19 vaccine. Merging with BioLife enabled Stirling to execute an aggressive strategic plan marketing and selling its freezers. Dinsmore served as the company’s general counsel since 2019, and our team of attorneys brought experience in mergers and acquisitions, labor, insurance, and life sciences, all of which was necessary to fully understand and address the company’s specialized needs. We counseled our client through the merger while simultaneously defusing challenges. Our team’s collective experience enabled Stirling’s executives to address the company’s short-term needs while also achieving its long-term goal.
“The entire team at Dinsmore was, by far, the best engagement I have had in the 15-plus strategic transactions I have done throughout my career,” said previous Stirling Ultracold CEO Dusty Tenney, now COO and president at BioLife. “Their responsiveness, engagement, availability and deal leadership were extraordinary from LOI to closing.”
Patent Preparation and Prosecution
Our firm works with a large company in the medical device industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio.
Complex Intellectual Property Dispute
Creativity is a differentiator and the driving force behind some of the most iconic products in the marketplace. We represented the author of a Wall Street Journal, USA Today, and Publisher’s Weekly best-selling book and creator of accompanying merchandise in an intellectual property dispute. Our client became aware of a company marketing a competing product utilizing terms and phrases associated with our client’s protected works. The competing company was leveraging unique terminology to direct online traffic to their website at the expense of our client. We protected our client’s interests in a suit that had been filed in the U.S. District Court for the Northern District of Ohio. Ultimately, the dispute was resolved in mediation. We worked with our client and were successful in not only protecting their intellectual property but also safeguarding their ongoing competitive advantage in the marketplace.
New Media Enforcement Actions
Ongoing representation of a financial services provider that created a prepaid debit card from Visa. We have handled a large number of enforcement actions relating to the infringement and unauthorized use of our client’s trademarks, copyrights, and other proprietary information, via the internet through search engine optimization tools, keywords, metadata, and other internet marketing tools. Our actions have included the filing of takedown notices with domain registrars, and sending of cease and desist letters to the infringers. Additionally, we have recently filed two lawsuits within the Southern District of Ohio to combat trademark infringement. We also manage their trademark portfolios and frequently strategize with their in-house counsel regarding the best ways to monitor and address the internet infringement and misuse. Our work enables the client to protect their valuable trademarks, copyrights and proprietary rights from potential infringement and avoid potential financial harm or damage to the goodwill associated with the marks.
Patent Applications
Protecting your organization’s competitive advantage is key to its success in the business world. That’s why one of the world’s leading automobile manufacturers turns to Dinsmore for their patent needs. We have guided the client through a multitude of patent applications for products ranging from automotive electronics to mechanical systems. We guide the client through the entirety of the patent process, from reviewing the invention disclosure documents and determining the patentability of the product to the drafting and filing of the patent application. We also represent our client in dealing with the patent office, filing written responses and initiating examiner investigations to ensure the patent is issued and our client’s business innovations are fully protected.
Patent Experience
- Prosecuted over a thousand patent applications in the United States and abroad.
- Negotiated hundreds of patent and technology licenses, including litigating patent portfolios and then licensing the successfully litigated patent portfolios to entire industries.
- Provided numerous opinions regarding patent infringement, validity and enforceability of patents in preparation for enforcing the patents in litigation or defending against the patents in litigation.
Patent Infringement Litigation
Under Section 337 of the Tariff Act of 1930, the ITC investigates claims of unfair trade practices occurring in import trade. An increasing number of intellectual property lawsuits are tried before the ITC because ITC cases proceed faster than cases litigated in federal district courts, where most IP litigation takes place. The ITC also offers a unique set of remedies to companies engaged in patent disputes. The ITC has become a global forum for high-stakes patent cases brought by both U.S. and foreign companies intent on protecting valuable U.S. based IP rights. Dinsmore & Shohl LLP has a great deal of experience successfully representing parties in 337 investigations. For example, on behalf of our client, a $1 billion industrial machinery manufacturer, we reached successful settlements against multiple respondents importing industrial machinery from China, Germany, Italy and France.
Patent Preparation and Prosecution
Our firm worked with a large company in the high technology industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio.
Patent Preparation and Prosecution
Our firm worked with a large company in the high technology industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio.
Patent Prosecution and Opinion Drafting
Our firm represented a computer printer and electronics company in the drafting of patents and prosecution of patent applications related to consumer electronic products such as printers (laser, ink jet, etc.), scanners and all-in-one units, ink and print head design.
Prosecuted multi-million dollar trademark action and defended counterclaim
We represented the owner of a $400 million business enterprise in prosecuting a trademark action. We contended that the defendant, who previously had claimed to be in a partnership with our client before the court dismissed his theory, was infringing upon our client’s trademarks. We proved that the defendant had no evidence to support his claims that license fee payments he had made were “capital contributions” to our client and their alleged partnership. A federal judge ruled that the defendant had infringed upon our client’s trademark and granted summary judgment to our client. He also entered a permanent injunction to prevent the defendant from using our client’s trademarks.
Protecting New Corporate Identity and Innovative R&D
Protecting the Future
Innovation is the driving force behind the growth and sustainability of any business, especially one within a specialized industry. Growing your brand and reputation, as well as protecting your ideas, is an ongoing challenge that requires a thorough understanding of not only the law, but also the industry and the marketplace.
As a former subsidiary of BP Company North America, Tri-Arrows Aluminum faced plenty of challenges in building and safeguarding their new identity after being purchased by a consortium of five Japanese companies in 2011. Following the sale, they turned to Dinsmore, who assumed responsibility for managing existing patent applications and prosecution through the U.S. Patent Office. We have also teamed with Tri-Arrows to begin trademark efforts, working with the U.S. Trademark Office to establish and protect their name and brand in the marketplace. Our attorneys have worked exhaustively to learn the aluminum industry, including the market, price points and competition, in order to strategically place Tri-Arrows on a path to long-term success.
Beyond patents and trademarks, we also have steered Tri-Arrows through a number of research and development agreements, protecting their exploration into ventures that have the potential to impact the aluminum industry. Tri-Arrows’ forward-thinking mentality, combined with Dinsmore’s support and guidance, has enabled them to focus their R&D efforts on both the materials used and the processes employed as they search for competitive advantages.
Working in an industry where significant steps are sometimes hard to come by, Tri-Arrows has employed an aggressive mindset toward protecting their technology and intellectual property, knowing that any competitive advantage could be the determining factor in their success. Dinsmore has become a true partner of Tri-Arrows in this effort, building a level of trust that has paved the way for their continued growth.
Innovation is the driving force behind the growth and sustainability of any business, especially one within a specialized industry. Growing your brand and reputation, as well as protecting your ideas, is an ongoing challenge that requires a thorough understanding of not only the law, but also the industry and the marketplace.
As a former subsidiary of BP Company North America, Tri-Arrows Aluminum faced plenty of challenges in building and safeguarding their new identity after being purchased by a consortium of five Japanese companies in 2011. Following the sale, they turned to Dinsmore, who assumed responsibility for managing existing patent applications and prosecution through the U.S. Patent Office. We have also teamed with Tri-Arrows to begin trademark efforts, working with the U.S. Trademark Office to establish and protect their name and brand in the marketplace. Our attorneys have worked exhaustively to learn the aluminum industry, including the market, price points and competition, in order to strategically place Tri-Arrows on a path to long-term success.
Beyond patents and trademarks, we also have steered Tri-Arrows through a number of research and development agreements, protecting their exploration into ventures that have the potential to impact the aluminum industry. Tri-Arrows’ forward-thinking mentality, combined with Dinsmore’s support and guidance, has enabled them to focus their R&D efforts on both the materials used and the processes employed as they search for competitive advantages.
Working in an industry where significant steps are sometimes hard to come by, Tri-Arrows has employed an aggressive mindset toward protecting their technology and intellectual property, knowing that any competitive advantage could be the determining factor in their success. Dinsmore has become a true partner of Tri-Arrows in this effort, building a level of trust that has paved the way for their continued growth.
Rebranding of Name
We conducted extensive reviews of potential names for the organization and actively worked with our client to narrow down its options and eventually select its new name. Once selected, we successfully prosecuted an application for the new logo with the US Trademark Office to registration.
Representative IP Litigation Cases
Cascades Publishing Innovation, LLC v. Reed Elsevier, Inc., 3:13-cv-00422-WHR (SD OH 2013)
Cirrex Systems, LLC v. Ocean Optics, Inc., 1:12-cv-1769 (ND GA 2012)
Milacron, LLC, et al. v. Stough Tool Sales, et. al., 1-12-cv-119 (SD OH 2012)
Ball Metal Beverage Container Corp. v. Crown Packaging Technology, Inc., et al., 3:12-cv-0033 (SD OH 2012)
Diba Industries, Inc. v. IDEX Health & Science, LLC, 3:12-cv-01248 (DCT 2012)
AOK Global Products, LTD, et al. v. Ferno-Washington, Inc., 1-12-cv-267 (ED VA 2012)
Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-135 (WD KY 2011)
Ionic Communications Group, Inc v. Ionic Collective, LLC, 1:11-cv-00766 (SD OH 2011)
Chikezie Ottah v. First Mobile Technologies, 1:10-cv-07296 (SD NY 2010)
L.F.P. IP, LLC, et al. v. Hustler Cincinnati, Inc., 1:09-cv-913 (SD OH 2009)
T. Marzetti Company v. Roskam Baking Company, 2:09-cv-584 (SD OH 2009)
The Container Store, Inc. v. Schulte Corporation, et al., 4:08-cv-00410 (ED TX 2008)
Alps South, LLC v. The Ohio Willow Wood Company, 8:08-CV-1893-T-35MAP (MDFL 2008)
Stiefel Laboratories, Inc. v. Pracso, LLC, 07-0781, (SD OH 2007)
Prasco, LLC v. Stiefel Laboratories, Inc., 07-0135, (SD OH 2007)
NCR Corporation v. Abercrombie & Fitch Co., 06-0919, (SD OH 2006)
NCR Corporation v. The ATM Exchange, 05-0383, (SD OH 2005)
Daniel F. Fitzgibbon, Jr. v. Martin County Coal Corporation and Sidney Coal Company, Inc., 05-0036, (ED KY 2005)
Crown Packaging Technology, Inc., et al. v. Ball Metal Beverage Container, Corp., 05-0281, (SD OH 2005)
Pisces by OPW, Inc. v. Advanced Polymer Technology, Inc., 04-0178 (SD OH 2004)
Milacron, Inc. v. Graham Engineering Corporation, 02-2142, (SD OH 2002)
Total Containment, Inc. v. Osborne, et al., No. 96 7241 (ED PA 1997)
PISCES By OPW v. Total Containment, No. C-1-01-0063 (SD OH 2001)
Environ Products v. PISCES By OPW, No. 02-865 (ED PA 2002)
PISCES By OPW v. Environ Products, No. C-1-02-292 (SD OH 2002)
PISCES By OPW v. Total Containment, No. CIV-02-0543 (SD OH 2002)
PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (SD OH 2004)
Cirrex Systems, LLC v. Ocean Optics, Inc., 1:12-cv-1769 (ND GA 2012)
Milacron, LLC, et al. v. Stough Tool Sales, et. al., 1-12-cv-119 (SD OH 2012)
Ball Metal Beverage Container Corp. v. Crown Packaging Technology, Inc., et al., 3:12-cv-0033 (SD OH 2012)
Diba Industries, Inc. v. IDEX Health & Science, LLC, 3:12-cv-01248 (DCT 2012)
AOK Global Products, LTD, et al. v. Ferno-Washington, Inc., 1-12-cv-267 (ED VA 2012)
Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-135 (WD KY 2011)
Ionic Communications Group, Inc v. Ionic Collective, LLC, 1:11-cv-00766 (SD OH 2011)
Chikezie Ottah v. First Mobile Technologies, 1:10-cv-07296 (SD NY 2010)
L.F.P. IP, LLC, et al. v. Hustler Cincinnati, Inc., 1:09-cv-913 (SD OH 2009)
T. Marzetti Company v. Roskam Baking Company, 2:09-cv-584 (SD OH 2009)
The Container Store, Inc. v. Schulte Corporation, et al., 4:08-cv-00410 (ED TX 2008)
Alps South, LLC v. The Ohio Willow Wood Company, 8:08-CV-1893-T-35MAP (MDFL 2008)
Stiefel Laboratories, Inc. v. Pracso, LLC, 07-0781, (SD OH 2007)
Prasco, LLC v. Stiefel Laboratories, Inc., 07-0135, (SD OH 2007)
NCR Corporation v. Abercrombie & Fitch Co., 06-0919, (SD OH 2006)
NCR Corporation v. The ATM Exchange, 05-0383, (SD OH 2005)
Daniel F. Fitzgibbon, Jr. v. Martin County Coal Corporation and Sidney Coal Company, Inc., 05-0036, (ED KY 2005)
Crown Packaging Technology, Inc., et al. v. Ball Metal Beverage Container, Corp., 05-0281, (SD OH 2005)
Pisces by OPW, Inc. v. Advanced Polymer Technology, Inc., 04-0178 (SD OH 2004)
Milacron, Inc. v. Graham Engineering Corporation, 02-2142, (SD OH 2002)
Total Containment, Inc. v. Osborne, et al., No. 96 7241 (ED PA 1997)
PISCES By OPW v. Total Containment, No. C-1-01-0063 (SD OH 2001)
Environ Products v. PISCES By OPW, No. 02-865 (ED PA 2002)
PISCES By OPW v. Environ Products, No. C-1-02-292 (SD OH 2002)
PISCES By OPW v. Total Containment, No. CIV-02-0543 (SD OH 2002)
PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (SD OH 2004)
Research and Licensing Agreements
Our firm represented a large company in the automotive industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio, and in preparing and negotiating research agreements with universities. We assisted in implementing cost-effective procedures for conducting patentability analyses and patent preparation for a stream of invention disclosures.
Tech-Licensing Agreements for “Robot Combat League” Television Series
We provided counsel, analysis and revisions to multiple development agreements between our client, Smart Dog Media, (a production company) and a robotic engineering company which was developing robots and robotic technology for the television series, “The Robot Combat League,” currently televised on the Syfy Channel.
Trademark Infringement Litigation
We represented our client’s organization in a lawsuit filed against his brother and his brother’s company for infringement of a trademark. After successfully defending through trial against a counterclaim that our client’s brother was a partner in our client’s business empire, the Court granted summary judgment in our client’s favor on the trademark claims in October 2011. A permanent injunction was entered against our client’s brother and his organization shortly thereafter.
University Advanced Research Agreements
We represent an automotive manufacturer in negotiating and completing numerous university advanced research agreements and cooperative research and development agreements, in which we leveraged a unique combination of Intellectual Property and Corporate transactional experience.
Worldwide Rebranding
We conducted extensive, worldwide searches and reviews of potential names selected by our client for its rebranding. We then coordinated the filing and prosecution of applications for the new name 15 different countries, including the United States, where we successfully defended the marks against claims of a potential likelihood of confusion with another mark.