We take a multidisciplinary approach to today's emerging issues in the development, protection and exploitation of intellectual property assets. We have a full-service IP practice that is fully integrated with other practices including our leading insurance and reinsurance practice, providing antitrust guidance on transactions and competition disputes and unsurpassed appellate capabilities before the federal courts, the US Supreme Court and international tribunals. Our lawyers select the right options to fit each client’s business sector and strategy, whether they are assessing an IP portfolio, performing due diligence for an acquisition, securing a patent, trademark, trade secret or copyright, or using litigation to resolve business disputes over infringement or misappropriation.
Among many other engagements for insurance industry clients, Mayer Brown partners have advised:
- Morgan Stanley on a patent application for a new insurance product.
- Soros in connection with a global trademark registration for new reinsurance business.
- Goddard Claussen Porter Novelli, a public relations firm, in its defense of copyright and trade dress infringement claims alleged by a health insurers' association.
- AXA/Equitable in assessing the validity and infringement of three patents owned by a competitor that covers variable annuity products providing both liquidity and guaranteed payments for life.
- Blue Shield of California as a plaintiff in a major arbitration proceeding against the Blue Cross Blue Shield Association involving intellectual property licensing and antitrust issues.
- HealthNow, a Blue Cross Blue Shield member in New York, in an arbitration proceeding involving intellectual property and antitrust issues.
- A finite reinsurer broker in connection with a trade secret matter. Our client devised a new finite reinsurance product, and we successfully obtained injunctive relief that barred competitors from using this product.
- Jackson National Life Insurance Company and Mellon Bank in a case involving a "business methods" patent covering strategies for selecting stocks in institutional investment portfolios. We won a dismissal of the plaintiff's complaint (as well as a covenant not to sue) after showing that the client's investment portfolio did not infringe the patent. The plaintiff alleged substantial damages, but did not specify a precise amount. This was a major victory for both Jackson and Mellon because the patented investment strategy allegedly covered Jackson investment funds valued at hundreds of millions of dollars.
- Mellon Bank (Bank of New York), Jackson National Life Insurance and associated investment trust funds in a patent infringement case brought by an institutional investment adviser. The patent covers an investment strategy for selecting stocks for unit trust portfolios based on dividend yields and buyback ratios. The plaintiff voluntarily dismissed the complaint with prejudice after giving us a covenant not to sue. We are currently pursuing counterclaims and attorney's fees.
- Metropolitan Life Insurance Co. in connection with a TRO to stop broadcast of AT&T’s multi-million-dollar “mLife” TV ad, scheduled to be aired during the Super Bowl, on the basis of trademark infringement with MetLife’s trademark. We drafted the settlement agreement whereby AT&T agreed to restricted use of the term “mLife” and curtailed its ad campaign. (Metropolitan Life Insurance Co. v. AT&T Wireless (S.D.N.Y.2002))