Marcus R. Chatterton

Patent Infringement (Federal Court & Court of Appeals for the Federal Circuit): Represented a payment processing company accused of infringing a method patent related to its core technology; successfully invalidated the accused patent in district court and affirmed in writing on appeal (2024)

Patent Infringement (Federal Court & PTAB): Represented a beverage company in patent infringement litigation filed by a competitor in a matter involving venue transfer and disqualification of opposing counsel; successfully invalidated each of the competitor’s patents in inter partes review and post-grant review proceedings before the PTAB (2021) 

Patent Infringement (Federal Court & PTAB): Represented a manufacturer in a patent infringement action against a larger competitor that copied a key innovation; successfully avoided the institution of inter partes review after the competitor petitioned the PTAB to invalidate the manufacturer’s patents (PTAB 2020; litigation 2022)

Patent Counseling: Routinely advised clients in the successful avoidance of litigation and/or modification of products to “design around” existing patents.  Examples include: methods for removing heavy metals from industrial wastewater, design of outdoor cooking equipment, precast concrete methods and structures, precision machined parts, remote check deposit technologies, prison door locking systems, and electricity distribution automation systems.

Patent Reexamination: Represented a physician / small-business owner in a petition before the PTAB to successfully invalidate a patent issued to a competitor for core technology that is central to both businesses. (2016)

Patent Infringement / Fraud / Qui Tam: Represented a medical device manufacturer in an action against a competitor, involving infringement of the manufacturer’s patents, fraudulent statements by the competitor, and spurious Qui Tam allegations made by the competitor in retaliation (2024)

Patent Infringement: Represented a regulated utility in the defense of a coordinated attack by a "patent troll" focused on a core industry technology. (2014)

Patent Infringement (Federal Court & PTAB): Defended a financial institution against infringement claims related to automated teller machine technology. (2015)

Patent Infringement (Federal Court): Represented an outdoor cooking manufacturer against claims of infringement relating to multiple product designs, including the claims of utility patents and design patents.

Copyright Infringement: Successfully defended a media company accused of infringing thousands of registered copyrights, in litigation seeking 8-figure damages. (2023)

Copyright Infringement: Successfully represented an artist in filing a series of copyright enforcement actions involving overseas copying and domestic distribution of copyrighted artwork on media ranging from housewares to handbags to decorative glazed tiles. (2014)

Copyright Infringement: Successfully defended a developer accused of stealing a competitor's copyrighted house plans by obtaining a summary judgment declaring that the developer's plans did not infringe the competitor’s copyright. (2013)

Copyright Infringement: Successfully defended a professional theater company against claims of copyright infringement that arose from a licensing dispute between the playwright and a production company. (2012)

Trademark Infringement: Representing Successfully defended a medical weight loss clinic accused of infringing the registered trademark of a competitor (2021)

Trademark Opposition / Cancelation: Represented clients including large and small businesses, restaurants, universities, and industrial entities before the Trademark Trial and Appeal Board to defend and prosecute oppositions to pending applications to register trademarks or to cancel existing trademark registrations.

Trademark Opposition / Registration: Obtained multiple concurrent use trademark registrations through oppositions against mark owners claiming senior rights.

Internet – Defamation: Filed state court “John Doe” litigation on behalf of a restaurant against anonymous message board user publishing defamatory information; successfully identified the defendant, resulting in a confidential settlement. (2019)

Internet – Defamation: Intervened in state court litigation to halt the distribution of “revenge pornography” (2018)

Internet – Defamation: Represented individuals and entities targeted by “brigading,” “doxing,” and other coordinated attacks to their online presence.

Internet – Fraud: Represented companies and individuals by filing or intervening in state court actions related to phishing and bank fraud; advised and represented clients in “takedown” actions on social media other online forums; and successfully  secured the transfer of fraudulently-obtained internet domains through arbitration before the World Intellectual Property Organization (“WIPO”) and other forums authorized under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”)

Product Liability / Counterfeiting: Successfully defended a manufacturer in the exercise industry in a product liability matter where the defense centered on determining, and proving, that the product at issue was a counterfeit reproduction of the client’s product, resulting in a summary judgment that the client was not liable under any theory. (2010)

Trade Secret / Breach of Contract: Successfully brought suit on behalf of a university that developed technology (later patented) for training specialized working dogs that was misappropriated by a contractor, resulting in a stipulated judgment against the contractor on the eve of trial. (2014)

Technology / Qui Tam: Defended a regulated entity against claims under the U.S. False Claims Act relating to a key business technology. (2011)

FDA / USDA: Represented a botanical extract company in a series of cases involving allegations of product contamination, mislabeling, and adulteration in circumstances that required detail chemical testing and analysis and application of federal regulations to the results of that analysis. (2016)

FDA: Represented a supplement manufacturer in responding to FDA warning letters involving allegedly adulterated and mislabeled products, successfully avoiding an FDA enforcement action. (2020)

FDA: Advised clients on compliance with labeling requirements for products ranging from dietary supplements to beverages.

Casualty / Business Technology: Represented a regulated entity in a major wrongful death lawsuit that involved the use of core technology and previously-unavailable electronic data to dispute liability. (2012)

Tort / Technology: Successfully defended a regulated entity in a tort trial in state court that involved testimony by four electrical engineers related to a novel theory of liability and the presentation of aggregated system data to a jury (2023)