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Licensing & Technology Transfer

  • OVERVIEW
  • PROFESSIONALS
We assist clients with negotiating software licenses, software maintenance and support agreements, strategic alliances, joint ventures, research and development agreements, and manufacturing, distribution, dealer, OEM and supply agreements. We also help clients protect their proprietary software through patent, copyright and trade secrets.

Our lawyers have represented vendors and large users of computer systems in all aspects of the procurement and protection of hardware and software systems. We have also represented clients in negotiations with software industry trade groups concerning claimed software infringement.

On behalf of several universities, we have been actively involved in the process of technology acquisition and transfer, including drafting, counseling and negotiating related agreements. Those agreements have included patent and technology license agreements with large pharmaceutical and biotech companies for values in excess of several hundred million dollars. Related agreements include third-party research and associated technology and patent license agreements through which a university may obtain commercial funding for ongoing research and lab support.

Charles H. Fendell

314.552.6528
email

Thomas A. Polcyn

314.552.6331
email

Steven M. Ritchey

314.552.6232
email

Partners
Fendell, Charles H.
Haferkamp, R.
Himich, Matthew J.
Kamensky, Robert N.
Kercher, Kevin M.
Parks, Michael A.
Polcyn, Thomas A.
Ritchey, Steven M.
Schwent, Jason M.
Shah, Kal K.
Shear, Richard H.
Volk Jr., Benjamin L.
Associates
Visintine, Jennifer A.
  • AEI Music Network, Inc.
  • Alco Standard, Inc.
  • American Cyanamid Company
  • American Express Incentive Services
  • Angelica Corporation
  • Angle Press, Inc.
  • Annals Publishing, Inc.
  • Apath, LLC
  • Avant Immunotherapeutics, Inc.
  • Baker Hughes, Inc.
  • Baldor Electric Company
  • Barry-Wehmiller Group, Inc.
  • Bear Foot, Inc.
  • Bio-mecanica, Inc.
  • Booker Associates, Inc.
  • Brava, LLC
  • Cernicon, Inc.
  • Charter Communications, Inc.
  • Chronicle Publishing Co.
  • Continental/AFA Dispensing Company
  • Continental Commercial Products, LLC
  • Court Television
  • Daugherty Systems, Inc.
  • Digital Equipment Corporation
  • Donald Danforth Plant Science Center
  • Edward Jones
  • Empire Comfort Systems, Inc.
  • Enterprise Rent-A-Car Company
  • Ervin Marketing Creative Communications
  • Emerson Electric Company
  • Eveready Battery Company, Inc.
  • Everest Biomedical Instruments
  • Fleetmatters, Inc.
  • FURminator, Inc.
  • Gilbarco, Inc.
  • Golden State Promotions, Inc.
  • Hagemeyer Electronics (N.A.), Inc.
  • Hartman Valve Corporation
  • HPSC, Inc.
  • Hunter Engineering Company
  • Heuris Logic, Inc.
  • ICL Performance Products LP
  • Insituform Technologies, Inc.
  • International.NET Association
  • Introgen Therapeutics, Inc.
  • Jakel, Incorporated
  • Kastaris & Associates
  • Katy Industries, Inc.
  • Kawasaki Motors Corp. USA
  • KMOV-TV, Inc.
  • Koss Electronics
  • Laser Band, LLC
  • Magnet, LLC
  • Maritz Inc.
  • Martin Engineering Company
  • Mediomics, LLC
  • Midwest Motorcycle Supply Distributors Corp.
  • Monsanto Company
  • Nestlé Purina Petcare Company
  • Orion Genomics
  • Ouellette Machinery Systems, Inc.
  • Personalized Books, Inc
  • Pharmacia
  • Pulitzer, Inc.
  • Rug Doctor, LP
  • Saint Louis University
  • Save-A-Lot Food Stores, Inc.
  • Savvis Communications, Inc.
  • Sigma Aldrich Corporation
  • Smith System Manufacturing Company
  • Societe des Produits Nestlé S.A.
  • Southern Illinois University Carbondale
  • Steamatic, Inc.
  • Strata-Tac, Inc.
  • Sukup Manufacturing Company
  • Synergetics, Inc.
  • Tandy Corp.
  • The Boeing Co.
  • The Material Works Ltd.
  • Thermadyne Industries, Inc.
  • Tiger Stripe Products, Inc.
  • Tuff Machine Company
  • Uncommon Conglomerates, Inc.
  • UniGroup, Inc. United Van Lines/Mayflower
  • Unisource Worldwide, Inc.
  • University of Missouri
  • University of Nebraska
  • U.S. Music Corp.
  • Washington University St. Louis

 

  • Storage Technology Corporation v. Custom Hardware Engineering and Consulting, Inc.
    This matter involved numerous claims including patent, copyright and Digital Millennium Copyright Act (DMCA) infringement. The technology at issue involved complex computer data storage equipment. In this “bet the company” case, our attorneys handled numerous dispositive motions, including Markman arguments, as well as a preliminary injunction hearing and its appeal. An appeal resulted in two landmark decisions from the Federal Circuit Court of Appeals. These opinions are the only Court of Appeals decisions interpreting the Computer Maintenance Competition Assurance Act. These opinions, along with three others, are the leading opinions concerning the DMCA.
  • Snap-On Technologies, Inc. v. Hunter Engineering Company
    A patent infringement action involving numerous patents covering automotive repair equipment. The primary focus of the case was a complex technology known as machine vision. The case settled favorably for our client after we argued the Markman hearing and summary judgment motions.
  • Crown Poly, Inc. v. Bunzl, USA, Inc.
    Thompson Coburn defended Bunzl in a patent infringement case involving three patents relating to produce bags and produce bag dispensers, in which plaintiff sought damages in excess of $30 million. After a Markman hearing, the court entered summary judgment in favor of our client.
  • Rubbermaid v. Contico
    Thompson Coburn represented Contico in a patent infringement action over toolboxes brought by Rubbermaid in federal court in Cleveland. The case settled favorably for Contico on the eve of trial after the court indicated that it intended to grant Contico's summary judgment motion as to Rubbermaid's damage claims because of its failure to mark the product.
  • Manildra Milling Corp. v. Ogilvie Mills, Inc.
    We represented Manildra in a “bet the company” case against a subsidiary of Labatt, a large Canadian conglomerate, and a subsidiary of Henkel, a large German conglomerate. The firm filed a complaint seeking a declaration that certain patents were invalid and/or not infringed. Our attorneys then asserted antitrust and Lanham Act claims. Defendants filed a counterclaim seeking damages for patent infringement. The case centered upon the manufacture of large granule wheat starch which is used in the manufacture of carbonless paper. Thompson Coburn was involved in all stages of the litigation. The trial lasted six months, with a verdict rendered in favor of Manildra. The jury also found in favor of Manildra on the Lanham Act claim and awarded monetary damages. The Federal Circuit affirmed the patent invalidity and non-infringement verdicts.
  • International Mulch Company v. DSM Landscape Products
    This was a "bet the company" case involving a patent for rubberized mulch. We became involved after the district court had entered summary judgment against our client, finding its patent invalid. The firm’s motion for reconsideration was granted, and the court then found in our client’s favor on the summary judgment motion, concluding that the patent was valid.
  • CIMA v. KV Pharmaceutical
    We represented KV in this patent infringement case involving the composition of prescription drugs. With approximately $30 million at stake, our attorneys defended the preliminary injunction hearing which involved extensive Markman interpretation. The court entered an order in favor of our client on the motion for preliminary injunction. The decision in favor of our client included a Markman interpretation adopting the firm’s interpretation.
  • William Toy v. Scottrade, Inc.
    Our attorneys represented Scottrade, Inc. in this federal patent infringement suit in which the plaintiff claimed that Scottrade infringed a U.S. patent through its online trade notification and stock alerting features. Our attorneys successfully moved to have the case bifurcated into two phases, the first on liability and invalidity issues, to be followed (if necessary) by damages and willfulness. They then prevailed on a key discovery dispute, resulting in an order from the court compelling the plaintiff to produce a series of documents strongly indicating that the patent was procured through inequitable conduct. Shortly after the plaintiff was forced to produce these key documents, the case settled on very favorable terms for Scottrade.
  • Datamize, LLC v. Scottrade, Inc., et al.
    We represented Scottrade, Inc. in this federal patent infringement action filed in the Eastern District of Texas. Plaintiff alleged infringement of two patents by Scottrade. Scottrade asserted that the patents were invalid, based in part upon certain “prior art” publications or services/products. Our attorneys successfully settled the case shortly before trial.
  • Medical Technology Systems v. RX Systems
    This case alleged patent infringement, tortious interference and antitrust violations and involved a mechanical patent for devices used to fill pill cards. In defense of the patent infringement claim, our attorneys submitted a summary judgment brief with a video comparing the patented invention with the alleged infringing device, showing the substantially different ways that they operated. We retained an expert from the packaging industry with a machine that predated the patent and utilized the inventive elements claimed in the patent. The case was settled for a dismissal of all claims and the plaintiff's payment of our client's sanctions award.
  • American Equity Mortgage v. Vinson
    Injunction issued in favor of firm client American Equity Mortgage on trademark infringement and false association claims following a two-day hearing, including fact and expert witnesses.
  • Brunetti/Pesc-Co, Inc. v. Brunetti Termite Control
    Injunction for trademark infringement issued in favor of our client following a hearing.
  • National Cable Satellite Corporation v. Federer
    Injunction for trademark and copyright infringement issued in favor of our client on a short timetable following a hearing in the closing days of a political campaign.
  • U-Gas, Inc. v. Teutenberg
    Injunction against computer tampering and access issued in favor of our client in a case involving cyber trespass, tampering and shutdown of computer system.
  • Spiritas Corp. v. AALCO Inc.
    Preliminary consent relief obtained on behalf of plaintiff against dissemination of false, misleading and falsely signed communications harmful to our client's business. The case was featured on page 1 of the Wall Street Journal.
  • United Van Lines v. HomeLink
    We obtained permanent consent injunctions against a real estate relocation service and its executives based on their improper claim of affiliation with a firm client.
  • Pope v. Chronicle Publishing Co.
    We employed a strategy of a summary judgment motion on the initial answer date, thus avoiding extensive and costly discovery in this newspaper libel case. Summary judgment was granted on multiple grounds and affirmed on appeal.
  • Lemons v. Chronicle Pub. Co.
    Appellate court held that articles conveying the message that plaintiff was convicted of multiple crimes involving violent armed resistance to store personnel who apprehended him in the act of shoplifting were substantially true, affording defense to libel action, and that the trial court did not err in denying plaintiff's motion for default.
  • Kawasaki Heavy Indus. Ltd. v. Bombardier Recreational Prods., Inc.
    Thompson Coburn represented Kawasaki Heavy Industries and its subsidiaries in major patent litigation against Bombardier Recreational Products. Bombardier first filed suit in the Middle District of Florida on several patents and demanded a substantial royalty payment. We successfully petitioned the USPTO to re-examine all of the patents in the suit from the Florida litigation, resulting in a Court Order staying that litigation. Simultaneously, Kawasaki filed suit against Bombardier in the Eastern District of Texas on several Kawasaki patents, thus shifting the advantage to Kawasaki. The parties settled on terms favorable to Kawasaki.
  • Insituform Technologies, Inc. et al. v. Cat Contracting, et al.
    We represented Insituform in a patent infringement trial. This case involved lateral linings for municipal sewer systems and ultimately resulted in a multimillion-dollar damage award for our client.