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Electrical + Computer Technologies

Electrical and computer technologies is one of the cornerstones of our practice. We have more than 50 attorneys with education and/or practical experience in electronics, computer hardware, and computer software. And more than a dozen earned advanced degrees in these areas. We counsel, render opinions, prepare and prosecute patents, acquire copyright and trade secrets, and litigate before all courts. And we do it for businesses from start-ups to Fortune 500 companies.

Our recent experience covers a swath of disciplines in these fields, including but not limited to:

Microprocessors and integrated circuits
Semiconductors
Software systems
Telecommunications systems, including satellite, video processing, and encryption techniques
Industrial process controls
Parallel processing and supercomputer systems
Automotive and consumer electronics
Computer peripherals

CONTACT US
Please click here to email us for more information about our capabilties in the Electrical + Computer Technologies industries.

Relevant Practices

Appellate Litigation
Copyright
Counseling, Opinions + Licensing
Counterfeit Goods Seizure
Design Patents
Jury Trials
Litigation
Patent Interferences
PTAB Litigation
Patent Prosecution
Section 337/ITC Litigation
Trade Dress
Trade Secrets
Trademarks

Representative Experience

Banner Witcoff Secures Win for Sebia

Banner Witcoff secured a win for client Sebia at the PTAB by convincing the Board to deny institution of Helena Labs’ Petition for Inter Partes Review of Sebia’s patent related

Another Win Secured for Ashworth Brothers, Inc. and Banner Witcoff Litigation Team

On Monday, January 29th, the U.S. District Court for the District of Delaware entered an Order of Dismissal with Prejudice of the patent infringement suit that Laitram, LLC and Intralox,

Banner Witcoff Obtains PTAB Win for Ashworth Brothers, Inc.

On Monday, November 27, the Patent Trial and Appeal Board issued its Final Written Decision on Remand in Ashworth Brothers, Inc. v. Laitram, LLC, IPR 2020-00593, holding that the only remaining patent

Banner Witcoff Files Amicus Brief on behalf of Industrial Designers

On Friday, October 27, a Banner Witcoff team filed an amicus brief on behalf of the Industrial Designers Society of America (IDSA) over the proper application of obviousness in design

Ashworth Bros. Inc. v. Laitram LLC

Represented Ashworth Bros. Inc. in two IPR proceedings against Laitram, LLC, finding that eight (8) of nine (9) asserted claims of the two patents at issue are unpatentable for obviousness

Albany International Corp. v. Kimberly-Clark Worldwide, Inc., PGR2021-00019, Paper 22 (PTAB June 22, 2021)

Represented Kimberly Clark in a post-grant review from Albany International alleging 19 grounds of invalidity and multiple invalidating sales to a competitor.

Ashworth Bros., Inc. Ashworth Bros., Inc. v. Laitram, L.L.C. IPR2020-00593, IPR2020-00594 U.S. Patent and Trial Appeal Board

Represented Ashworth Bros. Inc. in two IPR proceedings against Laitram, LLC, as well as an associated U.S. District Court patent infringement action involving Ashworth Bros. Posi-Drive Spiral™ Conveyor Belt System.

The Greenbrier Companies, Inc. National Steel Car Limited v. The Greenbrier Companies, Inc., 6-19-cv-00721, U.S. District Court for the District of Oregon

Represent The Greenbrier Companies, Inc. in a patent infringement suit brought by National Steel Car over alleged infringement of two patents related to gondola rail cars.

Clear-Vu Lighting Clear-Vu Lighting LLC v. University of Strathclyde, IPR2019-00431, U.S. Patent Trial and Appeal Board

Represented Clear-Vu Lighting as petitioner in an IPR proceeding against University of Strathclyde. Clear-Vu showed that the patent’s claims directed to using blue light to inactivate certain types of bacteria

Mattel Spin Master Ltd. V. Mattel, Inc., IPR2018-01672, IPR2018-01673 and IPR2018-01674, USPTO Patent Trial and Appeal Board

Represented Mattel in three inter partes reviews, as well as in an associated patent infringement case involving Mattel’s Mecard line of transformable toys.

Comcast Cable Communications Comcast Cable Communications, LLC v. Rovi Guides, Inc., et al.; Nos. IPR2017-00217, et al., USPTO Patent Trial and Appeal Board

Represent Comcast in a large number of inter partes review petitions filed to defend our client against a series of ITC and district court attacks by Rovi.

NIKE In Skechers U.S.A., Inc. v. NIKE, Inc., Nos. IPR2017-00607, IPR2017-00608, IPR2017-00617, IPR2017-00619, IPR2017-00620, IPR2017-00621, IPR2017-00623, USPTO Patent Trial and Appeal Board

Represented NIKE against ongoing attempts to invalidate design patents related to its popular FREE midsole and outsole designs.

YETI Coolers, LLC. RTIC Coolers LLC v. YETI Coolers, LLC., Nos. IPR2016-01176, IPR2016-01207, IPR2016-01430, IPR2016-01432 and IPR2017-00468, USPTO Patent Trial and Appeal Board

Represented YETI in five inter partes reviews filed by RTIC Coolers against three of YETI’s patents for technology related to the latching mechanisms contained on its heavy duty premium hard-sided coolers, and the materials and properties of its soft-sided coolers.

In The Matter Of Certain Set-Top Boxes And Components Thereof, USITC Inv. No. 337-TA-454

In The Matter Of Certain Pet Food Treats, USITC Inv. No. 337-TA-511

In The Matter of Certain Weather Stations and Components Thereof, USITC Inv. No. 337-TA-537

In The Matter of Certain Adjustable Keyboard Support Systems and Components Thereof, USITC Inv. No. 337-TA-670

In The Matter of Certain Toner Cartridges and Components Thereof, USITC Inv. No. 337-TA-740

In The Matter of Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same, USITC Inv. No. 337-TA-855

In The Matter of Certain Computers and Computer Peripheral Devices and Components Thereof and Products Containing the Same, USITC Inv. No. 337-TA-841

In the Matter of Certain Footwear Products, USITC Inv. No. 337-TA-936

NIKE In Adidas AG v. NIKE, Inc., Nos. IPR2016-00921, IPR2016-00922, USPTO Patent Trial and Appeal Board

Represented NIKE in inter partes reviews brought by adidas against two NIKE patents related to its FLYKNIT technology.

Mortimer Walters and Florian Karrer Lexington Services Ltd., v. U.S. Patent No. 8019807 Delegate, LLC and Florian Karrer, 2018-0157-TMR, The Delaware Court of Chancery

Represented Mortimer Walters and Florian Karrer, and their company in litigation against Lexington Services Ltd. The actions involved whether our client's designee or Lexington controlled the ‘807 patent.

Apprio, Inc. Zaccari v. Apprio Inc., 1:18-cv-01560, U.S. District Court for the District of Columbia

Represented Apprio, Inc. in litigation filed by a former employee who sought $63 million for the alleged infringement of copyrighted software

Yeti Coolers, LLC Yeti Coolers, LLC v. Wal-Mart Stores, Inc., 1:17-cv-01145, U.S. District Court for the Western District of Texas

Represented YETI Coolers in ongoing litigation alleging Walmart sold, and allowed third parties to sell, counterfeit YETI drinkware on the walmart.com website.

Mattel Spin Master Ltd. V. Mattel, Inc. No. 2:18-cv-03435, U.S. District Court for the Central District of California

Represented Mattel in a patent infringement case involving Mattel's Mecard line of transformable toys, as well as in three associated inter partes reviews.

Buc-ee's Ltd. Buc-ee's Ltd. v. Shepherd Retail, Inc., et al., No. 4:15-cv-03704, U.S. District Court for the Southern District of Texas

Represented Buc-ee's in defending its famous logo in litigation including counts alleging trademark infringement, trademark dilution, unfair competition, and unjust enrichment.

NIKE Asics Am. Corp. v. Akeva L.L.C. v. NIKE, Inc.; Adidas America, Inc.; New Balance Athletic Shoe Inc.; and Puma North America, Inc., No. 19-2249, U.S. District Court for the Middle District of North Carolina

Represented NIKE against Akeva's allegations that NIKE and others infringed 19 patents directed to alleged improvements in rear soles of athletic footwear.

Converse Converse v. ITC, No. 16-2497, U.S. Court of Appeals for the Federal Circuit

Banner Witcoff represented Converse in parallel cases at the U.S. International Trade Commission and in New York federal court against Wal-Mart, Skechers and more than 30 other companies for violating its trade dress rights by selling knockoff versions of the iconic Chuck Taylor All Star sneaker. The case was one of the largest trademark cases in ITC history based on the number of respondents and scope of the investigation.

Chicago Daily Law Bulletin - A Career Milestone Comes Early to One Chicago Lawyer

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Kirk Sigmon Addresses Copyright Registration of Works Created with AI and Machine Learning

Kirk Sigmon created this checklist for LexisNexis Practical Guidance to assess whether work containing AI/ML-generated content qualifies for copyright protection.

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PTAB Highlights

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Trends and Opportunities in Augmented Reality

Attorney Brian Emfinger provides insight on identifying the right applications and protecting your own AR innovations for Manufacturing.net.

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Patent Protection for Artificial Intelligence and Machine Learning

Kirk Sigmon has written an extensive guide on patenting artificial intelligence (AI), machine learning (ML), and related inventions for Lexis Nexis. This guide, intended to be a definitive reference on AI/ML patents for in-house counsel and patent attorneys across the world, provides key strategy tips for claim drafting, patent prosecution, and even explores definitional issues affecting the industry as a whole. The guide is a culmination of Banner Witcoff’s specialization in AI/ML related inventions. For instance, Kirk, an IBM Machine Learning Professional, has written and prosecuted hundreds of different AI/ML patents in recent years.

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Article

USDA and USPTO Announce New Partnership to Beef Up IP Process

Erik Maurer and Alex Bruening analyze the United States Department of Agriculture’s ("USDA") recent report: "More and Better Choices for Farmers: Promoting Fair Competition and Innovation in Seed and other Agricultural Inputs." The duo explores actions the USDA and the USPTO are taking to ensure that the intellectual property system incentivizes innovation in seed and other agricultural inputs without reducing competition.

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Banner Witcoff attorney Kirk Sigmon explores the growing trend of patents directed to video game monetization techniques in an article published in the Georgetown Law Technology Review, Volume 5, Issue 1 (2021).

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PTAB Highlights

PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings

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PTAB Highlights

PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings

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U.S. Supreme Court Hears Oral Arguments in Cuozzo Speed Technologies v. Lee

Banner & Witcoff IP Alert. 04/25/2016

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A Petitioner's Guide to Handling IPRs in the Higher Survival Patent Arena of Biotech & Pharma

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Eight Days Late, and an Exercise of Discretion Short -- PTAB Refuses to Conform to an IPR Settlement

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IP Alert

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Patenting Strategies in the Biodiesel Industry; Biodiesel Magazine. (Spehlmann, Benjamin C.)

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Seeing Red: Recent Developments in the Trademark Functionality Doctrine

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Federal Circuit Reaffirms Patent Eligibility of Isolated DNA Molecules

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Tools to Protect Your Rights And Brands During gTLD Evaluations

Banner & Witcoff Intellectual Property Alert. 05/25/2011.

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The Attack on Patenable Subject Matter Continues: Organic Seed v. Monsanto Pushes Utility to the Lim

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Multi-Location, Multi-Actor Activities: Infringement or Not?

Packaging Digest, December 2008.

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Intellectual Property Advisory: Federal Circuit Hears Arguments in Patent Continuation Rules Appeal

The Non-Practicing Patentee’s Right to a Permanent Injunction Restraining Patent Infringement

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B&W attorneys author Patent Trial Advocacy Casebook

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Invention Records Can Be Protected by the Attorney-Client Privilege

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Markman: Hearings Required, or Not?

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Design Patent + Trademark = Better Protection?

The National Law Journal. May 1, 2000.

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Recent Developments in Copyright Infringment Statutory Damages & Attorney's Fees Case Law

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Developments in Patent Law - 1998

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What Is Your Trademark Worth in Litigation?

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What Are The Odds? -- The Dangers of Handicapping Patent Litigation

(Banner, Mark T.)

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Strategic Decisions for Using Reissue and Reexamination in Patent Litigation

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The Duty of Disclosure and the Exception of "Cumulative" Prior Art

Prepared for the Eighth Annual Continuing Legal Education Program on Intellectual Property Law Practice.

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Summary of Supreme Court Argument in Festo v. SMC

Global Issues Top the Agenda

INTA Daily News.

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Mid-Year 2003 Developments in Patent Law

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Enforcement of Intellectual Property

Prepared for the Practicing law Institue's Conference on "Handling Intellectual Property Issues in Business Transactions 2005.

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e-Commerce Law Report. Vol. 9, No. 1.

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Protect Your Video Game Before It's Finished: Copyright Preregistration is Here

CIPerati. Vol. 4, Issue 1.

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New Patent Legislation Impacts Practitioners

Intellectual Property Today. March 2003, Vol. 16, No.3.

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The Basics of U.S. Patent Litigation

Building & Enforcing IP Value: An International Guide For the Boardroom. 2003 - Global White Page Ltd.

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How Strong is First Inventor Defense

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