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Our IP practice includes patent attorneys with advanced degrees and practical experience in most technical disciplines, including electrical, mechanical and chemical engineering, biotech, software and business methods, with experience levels to match any task.

We conduct patentability searches and analyses; prepare, file, prosecute and maintain U.S., PCT and foreign national patent applications; conduct infringement, validity and enforceability studies; provide expert witness advice and testimony; and handle complex infringement litigation. A complement of highly experienced support staff and state-of-the-art research and docketing technology enable us to provide cost-effective solutions for our clients.

The firm represented the defendant in a matter which 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.

Thompson Coburn represented the defendant in this patent infringement action over toolboxes brought in federal court in Cleveland. The case settled favorably for our client on the eve of trial after the court indicated that it intended to grant our summary judgment motion as to the plaintiff's damage claims because of its failure to mark the product.

We represented the plaintiff in a “bet the company” case against a subsidiary of a large Canadian conglomerate and a subsidiary of 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. Thompson Coburn was involved in all stages of the litigation. The trial lasted six months, with a verdict rendered in favor of our client. The jury also found in favor of our client on the Lanham Act claim and awarded monetary damages. The Federal Circuit affirmed the patent invalidity and non-infringement verdicts.

We became involved in this "bet the company" case 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.

The firm handled a case alleging 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.

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 against our client 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 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.

Blog Posts

Weeding out cannabis patent infringement claims


USPTO official filing receipts erroneously omit foreign filing licenses

Will there be reform of Alice and Mayo in 2021?

A race between West Texas and Delaware for the patent venue of choice

UAV patent battles wage on

Delivering a false impression: Postmates faces unfair competition allegations

Controlling the airspace: Dogfight begins over defined airspace patents

USPTO announces relief to restore priority or benefit rights for patent applicants

Supreme Court holds that with respect to institution decisions, no review means no review

Patents, trademarks and the COVID-19 stimulus bill

U.S. Patent and Trademark Office’s response to COVID-19

An update on the shifting standard for IPR estoppel

Supreme Court overturns the Federal Circuit, granting more flexibility to biosimilar makers

Laches no longer a defense to patent infringement

The shifting standard for IPR estoppel: Where are we now?

SCOTUS clarifies damages analysis for design patents, reversing landmark damage award

What U.S. companies need to know about their IP rights post-Brexit

EA Sports won’t be beaten at its own game – Escaping potential liability through successful § 101 motion to dismiss

New changes to U.S. design patent law

USPTO publishes new (and largely improved) guidance for subject matter eligibility

Final really does mean final in the Federal Circuit

The AIA: Reviewing the first year of Inter Partes Review

Patent Reform introduces "First-Inventor-to-File" law

America Invents Act – Patent ‘reform’ but possibly not simplification


Talking About Your IP Rights

Intellectual Property Primer for Higher Ed Institutions

IP 101

Building Brand Integrity and Countering Counterfeits

St. Louis

Matt’s practice is focused on the preparation and prosecution of patent applications in a variety of mechanical and electrical arts.

Matt’s practice is focused on the preparation and prosecution of patent app...

Matt Himich
St. Louis

Wil has a PhD in cellular and molecular biology and experience as research scientist working for a major biotechnology company.

Wil has a PhD in cellular and molecular biology and experience as research ...

Wil Holtz, Ph.D.
St. Louis

Alan represents clients in all aspects of intellectual property litigation, with a strong emphasis on patent litigation at both the trial and appellate court levels, and ...

Alan represents clients in all aspects of intellectual property litigation,...

Alan Norman

Michael counsels clients on patent and trademark issues and represents them in federal courts across the United States.

Michael counsels clients on patent and trademark issues and represents them...

Michael Parks
St. Louis

Tom provides strategic intellectual property counseling to some of the world's largest consumer products companies and service providers, with a focus on IP portfolio man...

Tom provides strategic intellectual property counseling to some of the worl...

Tom Polcyn
St. Louis

Steve advises clients on domestic and international patent applications and provides comprehensive counsel on licensing and technology transfer.

Steve advises clients on domestic and international patent applications and...

Steve Ritchey
St. Louis

Ben brings a background in electrical and computer engineering to his legal practice, which primarily focuses on the preparation and prosecution of patent applications.

Ben brings a background in electrical and computer engineering to his legal...

Ben Volk, Jr.