Information Technology, Communications & Telecommunications

Miles & Stockbridge lawyers deliver valued counsel and representation to a spectrum of companies in information technology and telecommunications, including local and long-distance carriers, telecoms, CLECs, internet and internet security companies, and communications and IT software enterprises. Our clients range from Baby Bells to innovative start-ups, from long established NYSE-member giants to companies preparing for their IPO. Our work in this industry is both domestic and international and encompasses a wide range of legal and business matters, including licenses, copyrights, securities transactions, IPOs, mergers and acquisitions, hostile takeovers, bankruptcy, taxation, employment law and ESOPs. In the litigation arena, we won a significant legal victory on behalf of a client, a national telecommunications company, by defeating a Maryland jurisdiction's attempt to impose franchise fees on the telecom company. We won recognition from a bankruptcy court that a secured lender could hold a lien on proceeds from the sale of a FCC license. For a bankrupt internet security firm, we gained court approval to sell assets over the objection of a software vendor.

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A start-up company sought guidance on establishing an online business referral network. The client's needed to protect its primary asset - its website and website content - from duplication by potential competitors. We registered the copyright with the US Copyright Office, publically establishing the client's ownership claims in the event competitors attempt to trade on the client's efforts or duplicate its intellectual property.

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A major telecommunications company sought our advice when AT&T demanded over $100 million in license fees for allegedly using AT&T's patented technology. After analyzing AT&T's patents, their prosecution history and studying AT&T's telephone switching technology, we determined that defenses were available to all of AT&T's patent infringement claims. Review of the client's own portfolio uncovered a patent that AT&T was potentially infringing. As a result, rather than paying AT&T $100 million, we successfully negotiated a $200 million payment by AT&T to the client.

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A Miles & Stockbridge lawyer testified as an expert witness in a patent infringement action involving accusations of inequitable conduct. The inventor was accused of having withheld material information during prosecution of his patent application before the U.S. Patent and Trademark Office. The lawyer's expert testimony successfully established that the accused’s conduct did not violate applicable rules.

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We successfully litigated a patent interference action between two major Japanese corporations involving fundamental protection of magneto-optic disk technology for reading and writing digital data.

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In an interference between two major computer companies we were able to discover and successfully demonstrate that the opponent's attempt to expand and support the specification relied on materials developed after the filing date. These materials thus constituted proscribed new matter resulting in a rejection of the opponent's claim of prior invention.

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The reference to results obtained in previous matters does not imply that the same or similar results can be obtained for other clients in similar matters. Results will depend on the specific factual and legal circumstances of each client's case.

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