Since our inception, we have litigated on behalf of clients as well as helped clients avoid litigation. We offer skilled and experienced practitioners focused on litigation, licensing negotiations and transactional work for our intellectual property clients.
Practice Group Contacts
Douglas J. Sorocco 405-607-8600
Jordan A. Sigale 405-607-8660
Philosophy and Approach
We believe that litigation should serve the business interests of the client. Our focus is on solving the business problem. We strive never to waste a client’s time, energy or money. We know “when to say when,” and when to go to the ends of the earth. We don’t back down from a trial—and we never want a client to be perceived as “buying off” infringers. We balance our courtroom fierceness with a pragmatic analysis of the likely outcome.
We believe that litigation is a business tool that should support the strategic management of a client’s portfolio and should be used only when goals are discernible, articulated and achievable. Where litigation is the prudent course, we are skilled advocates for our clients.
Our litigators are often involved in the drafting of patent claims and early development of a client’s portfolio—a forward-thinking approach aimed at ensuring the defensibility of claim terminology. Our success in the courtroom is quite clearly tied to our litigation team’s early analysis of the strengths, weaknesses and opportunities in an invention disclosure, patent application and/or intellectual property portfolio.
Budgets and Early Case Assessment: Patent Prosecution and Litigation
We are adept at setting realistic case budgets and skilled in early case assessment. In intellectual property arenas, early case assessment is often called strategic portfolio management or patent mapping and calibration with market forces. The key is the education and collaboration among all third parties and third-party information sources.
Our early case assessment practices are modeled after the DuPont Legal Model for litigation. We conduct case assessments early and often. Our case assessment model uses standardized processes and procedures leveraged against factual and legal input. Early case assessment can create wealth by avoiding pointless adverse entanglements.
Commercial Litigation, Intellectual Property Litigation and Business Torts
Dunlap Codding litigators are seasoned and successful and have tried cases for Fortune 1000 clients as well as budding entrepreneurs in a variety of industries. We have litigated cases throughout the United States involving diverse areas of the law, including breach of contract cases and business torts.
We regularly counsel clients in various aspects of intellectual property including the acquisition and development of intellectual property, licensing, joint ventures, manufacturing and import/export issues.
Our litigation matters have involved diverse areas of the law, including:
- Patent infringement
- Trademark infringement
- Copyright infringement
- Trade secret misappropriation
- Commercial litigation covering a variety of areas, such as breach of contract and business torts
- We enforce the patents of Pictometry International Corporation, the developer of the modern aerial imagery used by Microsoft and governmental entities, against U.S. and foreign-based infringers. Pictometry’s technology encompasses both software and electrical-mechanical equipment for capturing imagery from an aircraft and instantly calculating and assigning accurate geographic coordinates of the points on the ground to each and every pixel within the image. In Pictometry International Corp. v. Aerial Cartographics of America, Inc., et al., Case No. CIV-05-942-HE, filed in the United States District Court for the Western District of Oklahoma, Pictometry’s patent was determined to be valid and enforceable and one of the alleged infringers exited the U.S. market, while the other infringer took a license of our client’s patent. We have also worked with Pictometry to develop a world-wide portfolio of patents that have, to date, been used to keep all significant competitors out of the marketplace.
- Dunlap Codding prosecuted and obtained the infamous “Freeny Patent,” U.S. Patent No. 4,528,643 , broadly covering the transmission of music, software, and digital images over the Internet. The breadth of the Freeny Patent’s claims was upheld by the Court of Appeals for the Federal Circuit and is now the basis for worldwide licensing agreements—agreements with companies including Apple, IBM, and Microsoft. The entirety of the portfolio we obtained for the client has generated revenues, through licensing and damages, in excess of eight figures.
- ON-GOING—Stephen Whitaker v. Pictometry—Connecticut Freedom of Information Act Case. Whitaker sought to obtain Pictometry images and metadata under the Connecticut Freedom of Information Act from state agencies to which such information had been licensed by Pictometry. Following an evidentiary hearing, an examiner for the Freedom of Information Commission denied the request for the metadata, holding that it was a trade secret. Pictometry objected to the production of the imagery on the basis that the images were covered by the federal Copyright Act and thus exempt from production under state FOIA statutes. While upholding Pictometry’s claim that the images were copyrighted, the examiner nevertheless ordered the images to be produced, finding that the Copyright Act did not provide an exemption from production. At a hearing of the full commission, the examiner’s rulings were upheld. Pictometry appealed the commission's ruling to the state superior court, which recently upheld the commission’s decision. Pictometry subsequently appealed (July 2010) the court’s ruling to the Connecticut Supreme Court. This case is significant and may be precedent setting in that it will likely be the first decision determining the extent to which state FOIA laws override federal copyright statutes. Issues of first impression include: (1) does the federal Copyright Act provide an exception against copying or transferring copyrighted material pursuant to state FOIA laws, and (2) is the act of obtaining copies of copyrighted materials through the use of state FOIA procedures constitute permissible “fair use” under the federal Copyright Act.