Skip to main content

Dispute Resolution

Because of our experience and insight, we are called upon to defend and attack intellectual property rights in state and federal court litigation in the United States, in negotiation, mediation, and arbitration around the world, as well as in patent office proceedings in the United States and internationally.

Dispute Resolution Services Offered

Inter Partes
Reviews (IPR)

Inter partes reviews are requested by patent challengers and defended by patent owners. The proceeding has been extremely popular with patent challengers, possibly in large part because the procedure statistically has had a pro-challenger bias.   

Kagan Binder teams with trial counsel and with inside counsel to help develop IPR strategies, prepare and revise briefs, prepare evidence including testimony, and to plan, defend, and take depositions.

Oppositions

Outside of the U.S., many countries provide opposition procedures by which a patent challenger can oppose the grant of a patent within a certain period either before (pre-grant opposition) or after (post-grant opposition) the grant of a patent. 

Kagan Binder attorneys have helped clients assert or defend against oppositions, particularly in Europe and Japan.  Kagan Binder teams with opposition counsel to work closely with clients to develop and present opposition strategies, evidence, and briefs.  Even before there might be an opposition, Kagan Binder also helps clients at the very outset to prepare and file patent applications with opposition standards in mind.

Litigation

Kagan Binder helps clients to manage intellectual property litigation, working closely with the inhouse business and legal teams and with outside counsel.   This role is particularly effective for companies without inhouse intellectual property attorneys, where Kagan Binder functions as inhouse counsel to make sure that litigations are planned, staffed by outside counsel, carried out appropriately, and budgeted in an appropriate manner.   Kagan Binder also teams with trial counsel and is part of the trial team, particularly when trial counsel does not have a technical background, in technology-related litigation, particularly patent litigation.   Our attorneys have not only been part of the trial team but also have served as patent experts in litigated matters.

Expert Witness

Kagan Binder’s attorneys have served as patent expert witnesses in several patent litigation cases as well as in other intellectual property disputes.

Strategic Counseling and Opinions

Kagan Binder provides strategic counseling and legal opinions regarding patents, trademarks, copyrights, and other intellectual property services.  Kagan Binder can help you determine if competitors are infringing your intellectual property rights.   Kagan Binder can help you avoid infringing the intellectual property rights of others.

Responding to Subpoenas

Even when you are not a party to a litigation, one or more parties to the litigation can issue a subpoena to you. Responding to the subpoena in a timely manner is mandatory.   One type of subpoena requires that you gather and submit documents in several categories.  Another type of subpoena seeks testimony and requires your personnel to submit to a deposition.  Either type of subpoena can put your trade secret and other technology rights at risk, particularly if the subpoena requests are overbroad.  Responding to a subpoena requires fast action because of tight deadlines relating to objections, motions to quash or modify,  protective orders, protecting attorney-client privileged documents,  protecting attorney work product documents, limiting the scope of subpoena requests, cost shifting, negotiating scope with the issuing party, and the like.  Gathering documents and preparing personnel for depositions also takes time and cannot be left to the last minute.  Kagan Binder has worked with parties to respond to and defend against subpoenas where response to the subpoena puts technology at risk.   If you are served with a subpoena of this type, engage counsel right away.  Engage Kagan Binder.

Our Team

Our team is the champion of your creativity, innovation, and new ideas.

MEET OUR TEAM

Featured Articles

Dispute Resolution, Impacting License Law Practice, Case Law Developments
Is your patent license a ticket into federal court?

Inspired Development Group v. Inspired Products Group, LLC, No. 18-1616 (Fed. Cir. 2019) This case involved an exclusive patent license dispute. The already strained relationship between the licensor and licensee became even worse after a third ...

Read More
Patents, Trademarks and Copyrights, Opinions, IP Due Diligence
Joint Owners who Fight over Ownership and Use of Joint Research.

Joint development research often results in the joint creation of an invention. In the patent world, this makes the creators not just joint inventors, but also joint owners of that invention. The provisions of 35 U.S.C. § 262 expressly state that ...

Read More
Dispute Resolution, Impacting License Law Practice, Case Law Developments
Who wears the boxing gloves?

Alexsam, Inc. v. Mastercard, Inc., No. 1:2015cv02799 (E.D.N.Y. 2019) Litigating parties can be surprisingly creative in creating and defending against causes of action in license disputes. No matter how straightforward the issues appear to be from ...

Read More
Technology Agreements
Covenants not to sue (CN2S)

Covenants not to sue (“CN2S”) are a licensor exit strategy to get out of an unwanted DJ action brought by a licensee. Typically, the licensee secured DJ jurisdiction and is attacking validity/infringement. The licensor files/offers up a CN2S along ...

Read More
Dispute Resolution
Deposition Comparison

IPR cross-examinations v. discovery depositions. Honorable Jimmie V. Reyna Intellectual Property Inn of Court - March 17, 2016.

Read More
Dispute Resolution
Licensing and Litigation Strategies After MedImmune

The 2007 MedImmune decision is significant because the United States Supreme Court in this decision construed and changed the scope of Article III of the United States Constitution. The Court construed Art. III more broadly to make it easier for ...

Read More

Contact Kagan Binder

Contact us with any inquiries related to our services.