INTELLECTUAL PROPERTY RIGHTS
Ohashi & Horn LLP’s intellectual property practice is the fastest growing segment of the firm. We assist clients in all phases of managing intellectual property assets—from performing IP audits and mining portfolios, to developing licensing programs, to enforcement litigation.
In most cases, our fees for intellectual property matters are based solely on the results we achieve. We believe this is the purest form of lawyering—everything we do and every action we take is directed solely toward winning the case. By contrast, firms that bill by the hour are not paid for the results they achieve—they are paid to generate litigation. Because they are only rewarded if they create conflict rather than solutions, they seek to litigate each and every issue, including issues that could easily be resolved by consent and have nothing to do with the outcome of the case. The combination of this mindset and the many unique procedural aspects of intellectual property litigation such as Markman hearings, bifurcation of damages, requests for reexamination, etc., make it more expensive than any other type of litigation. To firms that bill by the hour, it is literally a license to print money. And the complexity involved typically makes it impossible for clients to determine whether the litigation strategy being promoted by their counsel will actually bring about an efficient business resolution of the case. In the end, the cost of prosecuting the litigation often has more to do with their clients’ decisions regarding settlement than the actual merits of the case.
We reject this business model and refuse to waste our client’s resources on motion practice and discovery games that do not directly affect the outcome of the case. Any lawyer can engage in wasteful motion practice and discovery shenanigans. But truly great lawyers know more than how to fight—they know which battles are not worth fighting.
Many companies focus on patents and overlook the value of other commercial corporate information, including trade secrets. But carefully maintained trade secrets can have as much or more value than patents. Like patents, trade secrets must be vigilantly protected from misuse by competitors, disgruntled employees and business partners.
During the past two years alone, Ohashi & Horn LLP’s attorneys have been involved in the following complex litigation matters involving trade secrets in state and federal court:
When a Dallas-based technology company realized that a strategic partner misappropriated its trade secrets, it turned to Ohashi & Horn LLP. The firm filed suit and obtained a multi-million dollar release payment and a license agreement requiring future royalties, all in less than 60 days.
After a Dallas-based technology holding company that is the owner of several patents related to cellular devices discovered that several competitors misappropriated its trade secrets and produced and sold a competing device, it turned to Ohashi & Horn LLP. The firm filed suit in the District Court of Dallas County, Texas and prosecuted the litigation for nearly a year. In January, 2007, the firm consummated a settlement advantageous to the client.
Ohashi & Horn LLP assisted a Dallas-based technology company in uncovering its Japanese strategic partners' violation of several agreements and theft of trade secrets. The firm filed suit and forced the counterparty back to the negotiating table. Within weeks, Ohashi & Horn LLP's attorneys completed negotiations in Japanese that resulted in the counterparty fully honoring all of its obligations to the client.
When Japanese counterparties refused to continue paying for the use of a Dallas-based technology company's trade secrets, it turned to Ohashi & Horn LLP for advice. The firm’s bilingual attorneys immediately traveled to Japan to ascertain the situation and subsequently filed suit in federal court in Dallas.
License negotiations sometimes fail to solve patent-related disputes. In those instances, Ohashi & Horn LLP’s attorneys enforce their clients’ patent rights in federal court. Over the past two years alone the firm’s attorneys have been involved in the following patent litigation matters:
When a Japanese manufacturer of popular flat panel displays was sued for patent infringement in the United States District Court for the Eastern District of Michigan, it turned to Ohashi & Horn LLP. Shortly after becoming involved, the firm's attorneys negotiated a very favorable license agreement that ended the litigation.
After its patent portfolio related to optical disk drives was infringed, a publicly-traded Japanese computer peripheral and electronics manufacturer turned to Ohashi & Horn LLP. The firm initiated license negotiations with infringers in Taiwan and Japan and filed multiple patent infringement suits. After nearly a year of prosecuting the litigation and crafting a licensing strategy, Ohashi & Horn LLP collected approximately $10 million for past infringement and license agreements that will potentially generate over $30 million in royalties in the future.
When a Dallas-based intellectual property holding company sought to enforce its patents related to cellular phones against industry giants, it turned to Ohashi & Horn LLP. After licensing negotiations failed, the firm initiated multiple patent infringement suits. After a year of difficult litigation, the firm negotiated favorable license agreements with all of the defendants that resulted in the recovery of royalties for the client.
Trademarks, Copyrights, Domain Names, and Corporate Names
Ohashi & Horn LLP assists clients in managing domestic and foreign trademark portfolios, filing and prosecuting trademark applications, developing trademarks, domain and corporate names, and domain name registrations and representation.
Ohashi & Horn LLP advises clients regarding structuring, drafting and negotiating all types of intellectual property agreements, including development agreements, license agreements, research agreements, confidentiality agreements, trade secret and know-how agreements, and employee agreements. The firm also advises clients regarding the intellectual property components of commercial transactions such as mergers, acquisitions, joint ventures, and strategic alliances.