Intellectual Property

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Intellectual

Dear Clients, Colleagues and Friends,

Over the past year, Chadbourne’s Intellectual Property Group has achieved numerous successes for our clients in patent copy-right, trademark and trade-secret matters, including a number of patent infringement cases in the Eastern District of Texas, a large trademark infringement case involving gray-market goods, and a number of trade-secret litigation matters involving theft of computer software.

When it comes to IP litigation, Chadbourne stands out among its peers. We combine the deep technical and scientific knowl-edge of our IP Group with the expertise of Chadbourne’s world-renowned trial lawyers, such as Abbe Lowell, who was recently named by the National Law Journal as one of “The Most Influential Lawyers in America.” Working together, we can distill the complicated technical information found in IP cases and shape that information into a coherent narrative that both judges and juries will understand. We don’t hesitate to take a case to trial if necessary—our trial capabilities are second-to-none. But we also take pride in our ability to craft practical business and legal solutions to our clients’ intellectual property issues without resorting to litigation. When our clients come to us with IP issues, we always seek to find a fast and favorable resolution that meets their business objectives.

In addition to litigation work, we were also busy this past year on a number of IP corporate transactional matters that included the diligence of IP and technology assets in connection with M&A financings, licensing of patents, trademarks, copyrights and other IP assets (including SaaS, software and open source licensing) and drafting distribution, supply and other sales-channel agreements.

Our IP Group continuously strives to surpass our clients’ expectations by providing personal attention and efficient solutions that get results. We look forward to continuing that tradition with you. To best meet your needs, we are always willing to explore alternative fee structures including contingency fees, flat fees, or other creative combina tions.

We believe that we can offer our IP services under a fee arrangement that works for you. We would be delighted to introduce ourselves and our practice to you personally and look forward to that opportunity.

Sincerely,

Paul Tanck

CHAIR, INTELLECTUAL PROPERTY

+1 (212) 408–1116 ptanck@chadbourne.com

Today, businesses worldwide recognize that their intellectual property is among their most

valuable assets. Chadbourne’s intellectual property practice offers our clients the highly

spe-cialized legal and technical expertise of an intellectual property “boutique,” combined with

the business and litigation skills of a multinational general-practice law firm.

Chadbourne’s intellectual property group provides innovative solutions to our clients’ most complex IP matters. We offer the legal and technical expertise of a bou-tique IP firm within a full-service, global law firm that has a history of providing excellent client service. This unique platform, which combines our experienced IP lawyers with seasoned corporate, finance and trial lawyers, sets us apart and makes us highly adaptable to any matter, big or small. We provide the very best strategic solutions to challenging IP issues confronting companies today, including those touching patent, trademark, copyright, trade secret, corporate, finance, outsourcing, licensing, regulatory, tax, antitrust and litigation matters.

Chadbourne’s intellectual property practice provides our clients with a full range of services to meet all of their intellectual property needs, including the following:

LITIGATION AND COUNSELING › Patents

› Copyrights

› Trademarks, Trade Dress › Unfair Competition and

False Advertising

› Trade Secret Misappropriation › NDA, Non-Competition,

Former Employee and Confidentiality Agreements

IP CORPORATE TRANSACTIONAL › Emerging Companies and

Venture Capital

› Mergers and Acquisitions › Joint Development and

Strategic Alliance Agreements › Procurement, Management,

and Licensing of IP Assets › Due Diligence Investigations › IP Portfolio Monetization US PATENT & TRADEMARK OFFICE

› Patent Portfolio Development and Prosecution

› Patent Reexamination, Post-Grant Review or IPR

› Trademark Clearance and Prosecution › TTAB and Inter Partes

Proceedings Before the USPTO With offices around the globe, and with Spanish speaking attorneys, Chadbourne’s intellectual property practice is international in scope and provides our clients with solutions for their global issues.

“Over the last several

years we have trusted

Chadbourne with our

most important patent

litigation matters.

We have consistently

received outstanding

representation,

impeccable client service

and impressive results.”

John M. Miller, Vice President and Chief IP Counsel, Rockwell Automation

INTELLECTUAL PROPERTY 3

CAPABILITIES

Litigation and Counseling

Our lawyers have extensive litigation experience in all key practice areas of intel-lectual property, including patents, trademarks, trade dress, trade secrets, false advertising, copyrights, right of publicity, and related antitrust and unfair compe-tition concerns. We have successfully represented our clients in federal trial and ap-pellate courts throughout the United States, as well as in U.S. International Trade Commission proceedings, in arbitrations, and before the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, and the U.S. Customs Office. We offer our clients the advantage of staffing litigations with specialized intellectual property litigators and general litigation lawyers who routinely handle high-stakes litigations. In this manner, we effectively handle all types of intellectual property litigations in a cost-effective manner.

While our litigation capabilities are second-to-none, we also pride ourselves on our ability to reach practical business solutions for our clients’ intellectual property issues without the need to resort to litigation.

PATENT LITIGATION

Chadbourne’s litigators have achieved major victories in patent litigation matters throughout the US and have experience in diverse technological fields including: › Computer Software › Cosmetics › Computer Hardware › Semiconductors › Business Processes › Industrial Control › Biotechnology › Consumer Products › Medical Devices › Circuits › Pharmaceuticals › Optics › Financial Services › Mechanical Devices › E-Commerce › Connectors › Chemical Processes › Manufacturing Processes › Telecommunications › Automotive › Nanotechnology

Chadbourne’s intellectual property practice also includes a strong emphasis on elec-tronics, information technology and financial services. Chadbourne’s lawyers are experienced in litigating software and business-method patents.

Some patent litigation clients we have successfully represented include: JP Morgan Chase, Citibank, Rockwell Automation, Canon USA, Microsemi, Philips Avent, Fujitsu, Avid Technology, Adidas, Johnson Controls and Party City.

CLIENT COUNSELING AND PATENT OPINIONS

We regularly advise clients on patent issues, including validity, enforceability, in-fringement, scope and patentability. We also advise our clients concerning product clearance and designing around existing patents. Our lawyers have extensive experi-ence in a wide array of technologies.

TRADE SECRETS COUNSELING AND LITIGATION

High employee mobility is a reality of today’s highly competitive, global economy, especially in the financial services, high-technology and start-up industries. The risk of an existing or former employee leaking valuable information to a competi-tor, or leaving with your valuable trade secrets, is greater than ever. Companies can no longer afford to overlook business-critical formulas, techniques, processes, data, business strategies, customer/supplier information and other compilations of infor-mation that set them apart from a competitor. Having effective trade-secret/confi-dential information policies and procedures in place is essential.

Employee/Workplace Policies and Practices

Chadbourne deploys a cross-disciplinary team of lawyers—including intellectual property, employment, antitrust, and privacy/data protection attorneys—to assist you in implementing and maintaining effective trade-secret policies and procedures tailored to your particular industry and to the various states in which you operate. This includes:

› Conducting trade secret audits to identify trade secrets requiring protection › Implementing comprehensive, tailored trade secrets policies and procedures to

protect trade secrets

› Drafting employee non-disclosure and invention assignment agreements tailored to each jurisdiction

› Drafting non-competition and non-solicitation provisions tailored to each jurisdiction

› Advising clients with respect to the on-boarding and exiting procedures of large groups of employees

› Training of employees and businesses on the handling/protection of trade secrets and confidential information

› Providing practical advice to individuals/entrepreneurs on how to manage their transition from one company to a new venture/company

› Advising and assisting client in implementing clean room development programs Trade Secret Litigation

Over the past 10 years, Chadbourne attorneys have had a number of successes rep-resenting clients in all stages of trade-secret litigation, including trial, both in the enforcement of our client’s rights and in defense. Our representations have involved:

LAW FIRM OF

THE YEAR IN

COPYRIGHT LAW

U.S. NEWS – BEST LAWYERS

INTELLECTUAL PROPERTY 5

› Enforcement of restrictive covenants: non-competition and non-solicitation agreements

› Misappropriation of trade secret computer software algorithms › Unfair competition between competing semiconductor chip makers › Misuse of client customer lists

› Breach of contract and misappropriation relating to software and website agreements

TRADEMARK, COPYRIGHT AND UNFAIR COMPETITION LITIGATION The identity established by a company’s brand is often the company’s most valuable intellectual property asset. Trademarks represent the time, effort, and expense in-vested in building a company’s reputation and goodwill. If this hard-won identity is not protected, the value of the investment will be lost.

We have broad experience litigating high-stakes cases involving some of the most famous marks in civil litigation in this country and abroad, in administrative pro-ceedings before the USPTO and before foreign trademark offices and in domain-name proceedings.

Chadbourne’s intellectual property lawyers also have extensive experience litigating trade dress, unfair competition, Lanham Act and copyright disputes throughout the US. Our lawyers have experience representing clients in diverse industries, including the motion picture industry, the recording industry, the fashion industry and the food and beverage industry.

U.S. Patent and Trademark Office

PATENT REEXAMINATION, POST-GRANT REVIEW OR IPR PROCEEDINGS BEFORE THE USPTO

Another focus of Chadbourne’s patent practice is reexamination, post grant review and inter partes proceedings in the U.S. Patent and Trademark Office (USPTO). Based on Chadbourne’s strong patent litigation experience, the intellectual property group is well-suited to handle the new quasi-litigation Post-Grant Review and IPR proceedings in the USPTO. These proceedings are a new form of administrative liti-gation for challenging the validity of an issued patent in a 12- to 18-month proceed-ing before a panel of administrative law judges. Our experienced patent litigators will work closely to develop offensive and defensive strategies to achieve success in these administrative examination proceedings.

PATENT PORTFOLIO DEVELOPMENT AND PROSECUTION

Experience in patent prosecution and a thorough understanding of the underlying technology can make the difference between a sound patent claim that deters infringe-ment, and an invitation for future litigation. An investment in patent expertise from the outset is invaluable both for the individual inventor and the multinational corporation.

“Chadbourne is

receptive to creative fee

arrangements and has

been able to provide

realistic forecasts of

fees and expenses for

individual matters.”

Chadbourne is proud to be on the cutting edge of new developments in a wide variety of technologies. We work closely with our clients to translate the in-depth knowledge of their technology and its applications into effective national and world-wide patent strategies. Our intellectual property team includes seasoned patent pros-ecutors with extensive experience in domestic and international patent procurement. Chadbourne’s intellectual property practice includes a particularly strong focus on information technology and financial services. The firm’s attorneys have developed significant patent portfolios in this highly specialized area, including the procure-ment of a number of “pioneering” computer software and business-method patents. PATENT PORTFOLIO DEVELOPMENT AND PROSECUTION

Experience in patent prosecution and a thorough understanding of the underly-ing technology can make the difference between a sound patent claim that deters infringement, and an invitation for future litigation. An investment in patent ex-pertise from the outset is invaluable both for the individual inventor and the mul-tinational corporation.

Chadbourne is proud to be on the cutting edge of new developments in a wide variety of technologies. We work closely with our clients to translate the in-depth knowledge of their technology and its applications into effective national and world-wide patent strategies. Our intellectual property team includes seasoned patent pros-ecutors with extensive experience in domestic and international patent procurement. Chadbourne’s intellectual property practice includes a particularly strong focus on information technology and financial services. The firm’s attorneys have developed significant patent portfolios in this highly specialized area, including the procure-ment of a number of “pioneering” computer software and business-method patents. TRADEMARK PROSECUTION AND COUNSELING SERVICES

Chadbourne’s intellectual property lawyers have extensive experience providing trade-mark services to our clients, including trade-mark searching and trade-mark clearance, US and mul-tinational registrations, development of corporate trademark programs and use policies, and obtaining maximum value through licensing and enforcement as required.

Our intellectual property team includes seasoned trademark lawyers supported by an experienced paralegal team to provide cost-effective trademark prosecution and monitoring services.

We have extensive experience tailoring programs of domain name registration and protection and trademark selection, protection, enforcement and licensing to meet each client’s current needs and future objectives.

Chadbourne is on the cutting edge of trademark issues. Our experience includes resolving domain name issues and disputes, jurisdictional issues and infringe-ment, and the misuse of trademarks on websites. We combine our experience in

INTELLECTUAL PROPERTY 7

entertainment and publishing rights with our know-how in the computer hard-ware and softhard-ware fields to help our clients negotiate important multimedia and online agreements.

IP Corporate and Transactional Work

DUE DILIGENCE INVESTIGATIONS AND CORPORATE SERVICES

Partnering with our colleagues in the corporate group, Chadbourne’s intellectual property lawyers also provide a full range of services and counseling in corporate matters. We evaluate third-party patent and trademark holdings for possible in-fringements or for potential acquisitions; we provide due diligence review of mergers and acquisitions including technical assets; we evaluate corporate patent and techni-cal portfolios, both to assess value for possible acquisition and to advise on implemen-tation of protective measures to secure intellectual property rights in the portfolios. We work with our clients to help them obtain, exploit and protect their intellectual property rights and to avoid or obtain such rights held by others. To this end, we provide opinions on issues of infringement, enforcement and validity. We provide intellectual property audits of our clients’ holdings to provide a full assessment of what measures should be implemented in-house to secure and protect their rights.

LICENSING AND AGREEMENTS

Chadbourne’s intellectual property group also has extensive experience in all forms of licensing involving patents, trademarks, trade secrets, copyrights, software and technical know-how. Our representation ranges from the individual seeking to obtain compensation for an invention to corporations seeking to implement world-wide licensing programs.

We provide extensive counseling, negotiating and drafting services for every form of contract involving intellectual property rights, including web development, employ-ment, confidentiality, licensing, distributorship, option, original equipment manufac-ture, joint venmanufac-ture, outsourcing, assignment, manufacturing and supply agreements. TRADE SECRETS IN BUSINESS TRANSACTIONS

Chadbourne attorneys have significant experience assisting clients in maintaining and extracting value from valuable trade secrets and confidential information in the context of business and corporate transactions. This includes:

› Conducting trade secret due diligence to identify key trade-secret risks › Drafting and negotiating non-disclosure agreements and confidentiality

provisions in business/technology agreements with third parties › Drafting, structuring and negotiating trade secret, know-how and

technology licenses

› Drafting non-competition provisions in corporate agreements › Drafting and negotiating software/technology escrow agreements for

Recent Experience

Eastern District of Texas. Chadbourne’s IP litigators have developed a very successful practice in defending against “Non-Practicing Entity” lawsuits in the District Court for the Eastern District of Texas (E.D. Tex.). Over the past year, Chadbourne has helped numerous clients in obtaining early, favorable dismissals of these lawsuits. Mr Tanck has successfully utilized the threat of Rule 11 sanctions, Inter Partes Review (IPR), Alice Motions (§101), and Motions to Transfer in obtaining dismissals of these actions.

Patent infringement. Successfully represented a Fortune 50 company in a patent liti-gation concerning its building automation systems in the United States District Court for the Eastern District of Texas.

Software Misappropriation. Representing a software provider for the Oil and Gas industry in the alleged misappropriation of computer algorithms.

Trademark Infringement and False Advertising. Representing a global leader in factory automation in assert ing trademark infringement, false advertising, dilution and unfair competition claims in the District Court for the District of New Jersey (D.N.J.) relating to gray market goods importation.

Consumer goods company. Successfully obtained dismissal of patent infringement case filed in the Eastern District of Texas (E.D. Tex.) against a global leader in the manufacture and supply of consumer goods.

Fortune 500 company. Represented Fortune 500 in a patent litigation that con cerned the infringement of more than 10 patents re lating to industrial-automation technol-ogy used in complex manufacturing equip ment.

Energy company. Represented a global leader in the safe processing and disposal of nuclear material, in New York state court in a litigation that involved allegations that the defendants breached their employment agreements and misappropriated the company’s trade secrets.

Media and Technology company. Represented a media and technology company in the assertion of multiple patent infringement lawsuits in the District of Delaware relating to data-storage and video-compression technology.

Telecommunications company. Represented a nationally recognized telecommuni-cations company that specializes in the placement of advertisements in local TV sta-tions across the country, in a trade-secret litigation pending in the Southern District of New York involving allegations that the defendants misappropriated trade secrets and breached relevant contracts.

INTELLECTUAL PROPERTY 9 Fortune 500 company. Represented a Fortune 500 company in defending against a

patent infringement lawsuit in the Northern District of Ohio. Chadbourne ob tained a highly favorable claim construction ruling from the Court which led to a favorable settlement for company in July 2013.

Software company. Represented a software design firm that develops web and mobile applications, in a copyright-infringement litigation in the Southern District of New York concerning the alleged misappropriation of computer source code and the breach of related contracts.

Fortune 500 company. Represented Fortune 500 company in asserting a firewall-security patent in the Eastern District of Michigan in 2012-13.

Aerospace and Defense company. Represented world-renowned aerospace and defense company in purchase and sale of numerous business units, including sale of satellite communications business, involving licensing agreements, purchase and supply agreements, and related intellectual property assets.

Fortune 500 company. Represented Fortune 500 company in a patent-infringement lawsuit involving industrial control technology in the Western District of Wisconsin. Obtained a US$10.1 million jury verdict.

Renewable energy company. Represented renewable energy company in struc-turing, drafting and negotiating technology and intellectual property aspects of various project agreements and in meeting loan guarantee requirements relating to the construction and commissioning of Ivanpah I and II, currently the largest solar-thermal energy projects in the world.

Music and fashion icon. Represented music and fashion icon in numerous trademark proceedings before the Trademark Trial and Appeal Board (TTAB) in 2012.

World Fuel. Represented World Fuel in its US$137 million acquisition of Multi Service Corporate. Conducted technology and intellectual property due diligence; negotiated and structured technology and IP provisions of purchase agreement and related documents.

Debtdomain. Represented Debtdomain, a financial software developer, in a copy-right-infringement lawsuit in the United States District Court for the Southern District of New York involving the “look and feel” of graphical user interfaces (GUIs). The case was settled favorably before trial.

Department of Energy. Represented the Department of Energy in structuring, draft-ing and negotiatdraft-ing technology and intellectual property aspects of project docu-ments relating to the construction and commissioning of Vogtle 3 and 4, the first new nuclear reactor projects in the US since 1979.

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