Ostrager Chong Flaherty & Broitman P.C.

Intellectual Property Litigation

In today’s fast-moving legal and business environment, litigation can be a complex and high-stakes endeavor, often with critical implications for the litigants. Our clients’ most prized and valuable assets are often at issue - a manufactured product or new technology in a patent case; a company’s name and brand in a trademark dispute; or data, financial information, or a profitable artistic work in copyright matters.

Intellectual property litigation is at the core of our legal services. We are highly experienced in every stage of the trial process – from discovery to motion practice, to the nuances of trial work, settlement negotiations, and alternative dispute resolution. Our attorneys bring a wealth of knowledge and experience in the technical and scientific aspects of intellectual property matters. 

We handle all types of litigations with intellectual property rights that may reside in foreign countries as well as the U.S. A key strength is our ability to assemble a strong legal team and execute a case strategy with open communication channels between partners, Of Counsel, and associates. Scientific, technical, marketing, and other business insights are readily shared and discussed. This allows us to focus on positioning our clients for the highest possible recovery and protection of their rights.

OCFB is also highly experienced in both drafting, and alternatively, responding to “Cease and Desist” letters, which typically assert a claim of infringement of an intellectual property right. We investigate claims of infringement and engage in discourse with claimants to provide counsel to our clients.

Explore some of the OCFB’s representative cases, below:

Patent Cases:

OCFB has decades of experience on both sides of a litigation: both in prosecuting and defending patent infringement actions. The firm has litigated disputes involving electronics and semiconductors, telecommunications, materials science, heavy industrial processes, and biotech / pharmaceuticals.

Client: Israeli Telehealth company
Results: We defended an Israeli telemedicine & telehealth company from patent infringement claims filed in federal court in Texas. We obtained a favorable settlement that our client did not infringe the technology of the accusing company. We were able to obtain this favorable result in a very short time frame, before filing a motion to dismiss the lawsuit.

Client:  Aerotel, Ltd.
Case:  Aerotel, Ltd. v. Radiant Telecom Inc., 569 F. Supp. 2d 387 (S.D.N.Y. 2008)
Results:  OCFB successfully defeated defendant’s motion to dismiss our client’s patent infringement lawsuit, in a case involving patent rights in a foreign country.  Specifically, the defendant had claimed that our client’s patent rights had been divested under Israeli law.

Client:  Aerotel, Ltd.
Case:  Aerotel, Ltd. v. IDT Corp., Aerotel, Ltd. v. Primus Telecommunications Group, Inc., 486 F. Supp. 2d 277 (S.D.N.Y. 2007)
Results:  After filing a patent infringement lawsuit for our client Aerotel’s invention in the telecom field, we successfully defeated the defendant’s motion to stop this action. The defendant had claimed that a similar patent litigation on this invention in Israel needed to be resolved first.

Client:  Aerotel, Ltd.
Case:  Aerotel, Ltd. v. Verizon Communications Inc., 234 F.R.D. 64 (S.D.N.Y. 2005)
Results:  We successfully defeated Verizon’s motion to consolidate our client Aerotel’s breach of contract action with other another ongoing patent infringement lawsuit involving the same patent. This contract case was ultimately settled with Verizon with very favorable terms for our client.

Client:  Aerotel, Ltd.
Case:  Aerotel, Ltd. v. Sprint Corp., 100 F. Supp. 2d 189 (S.D.N.Y. 2000)
Results:  OCFB successfully defeated Sprint Corporation’s motion to dismiss our client’s lawsuit due to it being filed in an improper jurisdiction or venue. The case was ultimately settled upon very favorable terms for our client.

Client:  Chinese Food Manufacturer
Case:  Pfizer Inc. v. Anhui Hefei Flavour Factory et al., 853 F. Supp. 104 (S.D.N.Y. 1994)
Applicable Law:  35 U.S.C. 271(g) – prohibiting patent infringement by a foreign manufacturer.
Results:  We represented a manufacturer located and doing business in China, who manufactured a flavor enhancer known as “maltol.” After a lawsuit by U.S giant Pfizer claiming this was infringement of its patent, OCFB asked the court to dismiss, due to there being insufficient grounds for a lawsuit. The court agreed with us, and found that for the statute 35 U.S.C. 271(g) to apply, a foreign manufacturer such as our client must import the allegedly infringing product into the U.S.

Client: Heritage Safe Co.
Case: Provo Steel & Supply Co. v. Heritage Safe Co.(District of Utah, Central Division)
Results:  OCFB asserted a claim for infringement of our client’s patent for a mechanical invention of a gun safe.  The case was settled with favorable terms for our client, which terms included the infringing company’s agreement to stop selling their product.

Client:  Colt Manufacturing Company
Case: Saeilo, Inc. d/b/a Kahr Arms v. Colt’s Manufacturing Co., Inc., 26 Fed. Appx. 966 (Fed. Cir. 2002)
Results:  We successfully defended our client Colt Manufacturing Company in this patent infringement action involving an invention related to low profile handguns. After the lower, District Court ruled in our favor that there was no patent infringement, on appeal, the Federal Circuit court affirmed.

Copyright & Misappropriation Cases:
The advent of the digital age, software, and e-commerce has greatly expanded the range of copyright protection. At the same time, it has made it much easier to copy and distribute a copyright owner’s protected works or materials, in violation of the owner’s rights. OCFB is well-versed in all aspects of copyright litigation. We’ve litigated the infringement of copyrighted artistic works, including photographs and print and online written works. We’re also highly experienced in actions to enforce our clients’ rights vis-à-vis the Digital Millennium Copyright Act (the DMCA), a seminal legislation passed at the start of the 2000’s allowing content creators an opportunity to notify online providers about potential copyright infringement.

Client: Theflyonthewall.com
Case Name: Barclays Capital Inc. v. Theflyonthewall.com, Inc., 650 F.2d 876 (2d Cir. 2011)
Applicable Law: “Hot News” misappropriation
Results: Our client, Theflyonthewall.com, is an online financial news publisher that reports, among other news, stock recommendations by Wall Street investment firms, including Barclays Capital, Merrill Lynch, and Morgan Stanley (the “Banks”). The Banks commenced an action in U.S. District Court seeking to stop our client’s publication based on the doctrine of “Hot News” misappropriation.
The case garnered substantial interest because the case had implications for the entire financial news media, including news aggregators in general. Google, the Associated Press, and many other interested parties, submitted briefs asserting their positions.
The District Court restricted our client’s news activities, the Court of Appeals overturned, and unanimously ruled in favor of our client. Our client continues to publish its financial news feed.

Client: Famous Author & Poet
Applicable Law: Digital Millennium Copyright Act (DMCA)
Results: On behalf of our client, a well-known 80-year-old poet, we successfully filed take-down notices under the Digital Millennium Copyright Act against major online retailers that hosted sellers of goods with unauthorized and infringing copies of our client’s famous poem.
We also successfully brought copyright infringement claims against Amazon in District Court for infringing our client’s copyrights and ignoring our demand letters, which resulted in a settlement favorable to our client.

Client: Electromagnetic Device Manufacturer
Applicable Law: Digital Millennium Copyright Act (DMCA)

Results: On behalf our client, an electromagnetic therapy device manufacturer, we submitted take-down notices to Amazon under the Digital Millennium Copyright Act.

We also brought an action for trademark infringement to remove seller pages that used our client’s trademark and photographs from its website without authorization. Both actions resolved the dispute in favor of our client.

Client: Real Estate Company
Results: We defended a commercial real estate website from claims for copyright infringement of a photograph brought by a party who sent a demand letter to our client and threatened litigation. This party did not commence a lawsuit after our response to the demand letter.

Client: Schwartz (photographer)
Case Name: Schwartz v. Edelman Shoe, Inc. (SDNY)
Results: We initiated a copyright infringement litigation against a defendant for use of our client’s photographs in an advertising campaign. We obtained a favorable settlement for our client.

Trademark & Unfair Competition:

Our firm is also highly experienced in litigation and trial work in defending the trademark rights and related actions such as trade dress, unfair competition, and false advertising. We have litigated in both state and federal court and represented our clients’ trademark rights before the Trademark Trial and Appeal board, in disputes involving registration and ownership. OCFB is highly experienced in the related area of unfair competition, under the Lanham Act, 15 U.S.C. 1051 et seq. – including Section 43, which covers the provisions against false advertising.

Client: W.S. Foster & Son Ltd.
Case Name: Brooks Brothers Group, Inc. v. WS Foster & Son Limited (SDNY)
Results: An action was brought by a large, nationwide retailor for trademark infringement, trademark counterfeiting, false designation of origin and unfair competition against our client, a London based bespoke shoe manufacturer and retailer, for use of its historic logo. We obtained a favorable settlement permitting our client to continue using the logo.

Client: Generation X Int’l Corp. (apparel importer & retailer)
Case Name: Generation X Int’l Corp. v. No Excuses Sportswear, Ltd., 1998 U.S. Dist. LEXIS 4693 (S.D.N.Y. 1998)
Applicable Law: Trademark infringement, false designation of origin, unfair competition and dilution under the Lanham Act, 15 U.S.C. §§ 1051 et seq., and trademark infringement, unfair competition, injury to reputation and dilution arising under the statutory and common law of New York State.

Results: OCFB successfully obtained a preliminary injunction against a clothing manufacturer, preventing it from manufacturing or importing into the United States any jeans bearing “NO X” logo, the “GX” logos, which are confusingly similar to our client’s brands.

Client: Rugby League
Results: We asserted trademark infringement claims on behalf of a start-up rugby league against another league, based on the claim that we had the rights to a certain trademark due to prior use.

We also defended our client’s U.S. trademark application in an “Opposition Proceeding” before the Trademark Trial and Appeal Board, which allows for review of the decisions of the U.S. Patent and Trademark Office. After depositions and a proposed motion for summary judgment, the case was settled favorably for our client.

Client: Chiropractor
Results: We represented a chiropractor in registering a trademark for a back stretching device. We defended that trademark in an infringement action and other proceeding before the U.S. Patent and Trademark Office to cancel, the actions brought by a yoga instructor who claimed to have previously used this trademark.

The case was settled favorably with our client continuing to use his trademark.

Client: Real Estate & Investment Management Co.
Results: We defended a Maryland-based real estate and investment management company against trademark infringement claims made by a private equity firm in Chicago. The claims were settled with our client having the right to continue using the disputed trademark.

Client: Magic Touch GmbH (German image transfer paper supplier)
Case Name: TMT North America, Inc. v. Magic Touch GmbH, 124 F.3d 876 (7th Cir. 1997)
Results: This was a dispute for the ownership of the trademark THE MAGIC TOUCH between a German company that developed an image transfer paper product and its U.S. distributor concerning ownership of its trademark THE MAGIC TOUCH. The United States Court of Appeals for the Seventh Circuit issued a ruling in our client’s favor.

Client: Central Venture, Inc.
Case Name: Yamaha Int’l Corp. v. Central Venture, Inc. d/b/a/ East 33rd Typewriter and Electronics et al., 1995 U.S. Dist. LEXIS 12404 (S.D.N.Y. 1995)
Applicable Law: Lanham Act § 32(a), unfair competition under the Lanham Act § 42(a), and violation of the Tariff Act § 526, unfair competition, dilution of property rights, deceptive trade practices, and tortious interference with contract.

Results: We successfully obtained a favorable court judgment for our client who was sued under a number of different grounds for unfair competition, interference with contracts, and deceptive trade practices.

Client: Diamond Polisher & Distributor
Results: We brought claims on behalf of a diamond polisher and distributor against a diamond planning and grading company in New York Supreme Court for breach of contract and professional negligence that resulted in a broken diamond. The claims were settled favorably for our client.