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Holland & Knight's Software IP Team has significant experience with software related litigation (offensive and defensive), patent prosecution, copyright and trade secrets issues, as well as the Computer Fraud and Abuse Act. Our team includes lawyers who have practical experience developing source code, as well as understanding software platforms, algorithms and related technologies. We intertwine that technical and industry knowledge with a core understanding of the expressive, functional and secrecy issues at play in IP law.

OUR COMPREHENSIVE REPRESENTATION INCLUDES:

WE ADVISE CLIENTS FROM ACROSS THE INDUSTRY: Telecommunications We regularly represent telecommunications clients, such as wireless carriers and providers of wireless devices and wireless infrastructure. We have deep technical knowledge in cellular and other wireless standards, including the standard setting process. Cybersecurity We represent software companies that specialize in protecting critical systems and safeguarding data, such as cybersecurity, data security and privacy.

Web Hosting and Development We have a wealth of experience in handling functionality, relational databases and other ecommerce matters. Retail We assist retail companies with patent infringement matters, contract disputes, trade secrets and matters involving technology surrounding digital coupons, point of sale systems, loyalty cards and shopping carts.

REPRESENTATIVE MATTERS The following lists representative matters that the Software IP Team has handled over the past decade:

 Represented a leading provider of business communication solutions, in copyright infringement, breach of contract and trade secret misappropriation suits against a key industry competitor. The case revolved around alleged copyright infringement, and whether the success of our client's products and services was attributable to the alleged infringement; the parties reached a mutual settlement for all disputes prior to trial.

 Defended a telecommunications infrastructure equipment company in a patent dispute involving 4G LongTerm Evolution (LTE) radio base stations; the case focused upon LTE wireless standards and, in particular, handover procedures. The parties reached a mutual settlement for all disputes prior to trial.

 Defended a smartphone handset manufacturer, against software patents related to uplink data transmissions and handover of mobile connections from one base station to the next. As part of that case, Holland & Knight attorneys not only developed a deep understanding of the LTE standard specifications, but also reviewed baseband chip firmware / software implementing the protocols.

 Represented a leading computer software security company in patent-infringement and trade-secret misappropriation suits against defendants related to dynamic instrumentation and monitoring of compiled software byte code.

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 Defended a leading computer software security company in patent litigation relating to software that built working, virtual web hosting environments using a simple user interface. Holland & Knight attorneys reviewed client source code to develop non-infringement defenses, as well as the lengthy history of machine virtualization to develop invalidity defenses.  Represented a leading toy and game company in a patent dispute regarding a popular children's toy. We defeated the asserted patent as unpatentable software under Section 101 (Alice) in a motion to dismiss, which was upheld by the U.S. Court of Appeals for the Federal Circuit.  Obtained early dismissals for multiple clients in patent disputes related to tracking and monitoring software where the district courts found the asserted patents to be unpatentable subject matter under Section 101 (Alice). Each decision was upheld by the U.S. Court of Appeals for the Federal Circuit.  Obtained early dismissal and appellate victory for gaming client in a patent dispute with a major competitor. Competitor alleged infringement of a patent directed to remotely refereeing remote video games. The district court and the U.S. Court of Appeals for the Federal Circuit found the asserted patent to be unpatentable subject matter under Section 101 (Alice).

 Defended a leading toy and game company against patent claims relating to interactive blocks, capable of communicating with each other through infrared technology transmission bursts. After reviewing the client's firmware, Holland & Knight secured summary judgment of non-infringement.

 Defended an early stage Wi-Fi manufacturer and numerous of its clients in a patent suit based upon a large family of patents asserted against the 802.11x Wi-Fi standards. That case culminated in a rare reasonable and non-discriminatory (RAND) patent damages bench trial and an important decision that continues to be cited favorably by judges across the country.

 Defended a leading web hosting company against a competitor dispute alleging theft of trade secrets and copyright infringement. The technology at-issue involved web scraper applications that access websites and extract useful data. Holland & Knight attorneys reviewed source code and developed defenses that lead to a favorable settlement for our client.

 Defended a leading web hosting company against patent infringement claims relating to web-based website builder software. Holland & Knight reviewed client source code written in a wide range of programming languages on a multitude of different platforms to develop non-infringement and invalidity positions.

 Defended a national energy efficiency services company in $450 million misappropriation of trade secrets and breach of contract claims in Illinois federal court regarding software regarding appointment scheduling.

 Defended an international company regarding allegations of copyright infringement surrounding use of particular fonts in connection with significant advertisements.

 Represented a chain of supermarkets in the Midwestern United States, in a patent litigation lawsuit involving a digital coupon system and a subsequent breach of contract suit with its software provider.

 Represented a global container terminal operator in a lawsuit involving container tracking patents.  Represented a manufacturer of sports training computers against a claim of patent infringement involving three patents generally related to systems and methods related to monitoring a person's activity; two of the three patents were invalidated, which judgments were affirmed on separate appeals to the U.S. Court of Appeals for the Federal Circuit; the case with regard to the third patent was dismissed after a third-party reexamination

CONNECT WITH US Jacob K. Baron Partner | Boston 617.305.2102 jacob.baron@hklaw.com

Copyright © 2021 Holland & Knight LLP All Rights Reserved

R. David Donoghue Partner | Chicago 312.578.6553 david.donoghue@hklaw.com

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Profile for Holland & Knight

Software IP Litigation  

Software IP Litigation  

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