The Law Offices of Eugene M. Cummings, P.C.media.virbcdn.com/files/45/77600f87ceb3304a-EMCPCv1... · 2014-09-29 · 1 The Law Offices of Eugene M. Cummings, P.C. Eugene Cummings founded

The Law Offices of Eugene M. Cummings, P.C.

Intellectual Property Law

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Eugene Cummings founded the firm bearing his name in 1981 with

the sole intention of providing world class intellectual property

representation to businesses and individuals. Our firm is respected

as one of the top intellectual property firms in the country. Clients

ranging from individual inventors to large corporations trust us to

represent them in their intellectual property interests. Eugene M.

Cummings, P.C. focuses on providing personalized representation,

protection and enforcement of rights to individuals and businesses

in all areas of intellectual property. Our firm specializes in patent

licensing and litigation and has collected hundreds of millions of

dollars on behalf of its clients.

Experienced. Personalized. Committed.

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Eugene M. Cummings, P.C. attorneys regularly handle a broad

spectrum of patent issues, including patent validity, patent

infringement, priority of invention, inequitable conduct, damages,

patent misuse, antitrust, licensing, marketing, and preliminary and

permanent injunctions, among others. Once patent protection is

obtained, we are able to give our clients the benefit of our strong

licensing and enforcement experience to maximize the value of their

patent portfolio. Eugene M. Cummings, P.C. is focused on negotiating

and drafting licenses and technology transfer agreements, which

range from industry-wide patent licensing agreements to cross-

licensing programs and technology partnerships.

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Because of the successes of skilled patent attorneys, such as Mr.

Cummings, general practice firms have been attracted to patent

litigation and licensing. However, general practice firms are ill-

equipped to deal with the complexities of patent litigation and

patent law. Given the expertise of Eugene M. Cummings, P.C. in

litigating and licensing complex patent matters, our clients can

expect us to efficiently enforce, protect and defend their inventions

and patents.

Patent Licensing and Litigation

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As the global economy becomes increasingly focused on

technological industries, a business’s ability to safeguard and

capitalize on its innovation is crucial to ensuring continuing

prosperity and sustainability. Eugene M. Cummings, P.C. is

dedicated to protecting, enforcing, defending and maximizing

clients’ ideas, creativity, and innovations in virtually every industry

and technology. Our attorneys combine their varied technical

backgrounds with an appreciation for and understanding of our

clients’ business priorities.

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Our attorneys have decades of experience practicing before

the United States Patent & Trademark Office. Additionally, our

attorneys have extensive technical experience. Our varied technical

backgrounds together with our extensive legal experience make

us uniquely situated to obtain the best possible patent protection

for our clients. Moreover, the attorneys of Eugene M. Cummings,

P.C. have in-depth experience with international patent protection,

and can draw upon a network of foreign associates to protect our

clients’ inventions throughout the world.

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We offer personalized service to our clients at each phase of the

patent process. Our attorneys become involved in the early stages

of product development in order to better assist our clients in

determining whether their proposed invention may be infringing of a

competitor’s patent. Evaluating the patent rights of your competitors

is often just as important as obtaining patent rights. Our clients need

to know if they are free to produce their products without infringing

on the intellectual property rights of others. Our lawyers are often

retained to render infringement and validity opinions with respect

to patents and products of competitors of our clients.

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Traditional IP Services Patent Law

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Traditional IP Services Patent Law … continued

We then assess whether the client’s invention is patentable and, if it

is, we draft the patent application while in constant communication

with the client. Our attorneys are dedicated to ensuring that we

obtain the broadest possible protection for each prosecution matter.

Therefore, we take steps to guarantee that we fully understand

the breadth of the invention and the intention of the inventor. For

instance, we will go to our clients’ place of business to meet with

the inventors to discuss the invention and the patent.

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We measure the risk of exposure of the products or services of

our clients to potential claims of infringement of patents owned

by competitors and, conversely, determine whether there is

infringement of patents obtained for our clients by the products of

competitors.

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Traditional IP Services Patent Law … continued

M. Cummings, P.C. offers professional legal expertise to clients, on

either a traditional fee-for-service arrangement or on an alternative

fee arrangement. Our firm provides legal services relating to all

intellectual property related matters, including:

Patent Law Patent Litigation Patent Licensing Patent Application Preparation Patent Application Prosecution

Intellectual Property Portfolio Management IP Portfolio Assessment IP Portfolio Licensing IP Related Contract Preparation

Trademark Law Trademark Litigation Trademark Licensing

Patent Reexamination Proceedings Patent Interference Proceedings Patent Validity Assessment Patent Infringement Assessment

IP Related Contract Review IP Related Seminars Product Development Review

Trademark Application Preparation Trademark Application Prosecution

Copyright Law Copyright Litigation Copyright Licensing Copyright Application Preparation Copyright Application Prosecution

Trade Secret Law General Trade Secret Law Counseling

Insurance IP Insurance Coverage Assessment

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Eugene M. Cummings, P.C. attorneys work with clients at every

step of the trademark development process including assisting in

the creation, identification, registration and licensing of marks. Our

experienced trademark litigators also have decades of experience

practicing before federal courts and the United States Trademark

Trial and Appeal Board (TTAB) to ensure that our clients’ brands are

protected. Our attorneys are experienced in the broader field of unfair

competition law. Such matters include trade dress infringement,

false advertising, deceptive trade practices, misappropriation,

passing off, defamation, right of publicity, parody, counterfeiting

and related issues. The broad experience and in-depth knowledge

of our attorneys allow us to provide comprehensive, creative legal

counsel that assists our clients in building and maintaining the

reputation that those marks represent.

Traditional IP Services Trademark Law

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The management of intellectual property, especially in technology-

based companies, has become a critical competitive arena in global

commerce. Without thoughtful planning and a useful knowledge

base to support decision-making, companies are not able to

adequately safeguard their valuable intellectual property.

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Eugene M. Cummings, P.C. attorneys have the skills and experience

required to develop and/or acquire intellectual property rights and

to leverage these assets in the marketplace. More importantly, our

firm has the skill and experience to help businesses make informed

decisions regarding what to protect and how to protect it. Our

attorneys assess our clients’ IP portfolios and determine how best

to protect their individual needs. To maximize the IP portfolio’s

value, we offer our clients our considerable licensing expertise.

To this end, we are skilled in preparing, drafting and reviewing IP

related contracts.

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We believe that equipping our clients with a strong knowledge

base on the basics of intellectual property law assists them in the

maintenance and protection of their IP portfolios. Accordingly, we

often provide complimentary IP related seminars to our clients and

their employees.

Traditional IP Services IP Portfolio Management

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Enforcing a patent through litigation is a highly complex process

which involves extensive technical and legal expertise. The costs

associated with enforcing a patent through trial can exceed $3

million. In a traditional fee-for-service arrangement, the client is billed

by the hour and pays for any expenses relating to the litigation (e.g.,

court filing fees, trial preparation costs, expert witness fees, etc.).

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Eugene M. Cummings, P.C. understands that enforcing a patent

portfolio can be very expensive for independent inventors and small

businesses. Through alternative fee arrangements, our firm allows

a patent owner an opportunity to enforce its portfolio against even

the most powerful corporations. In a contingency fee arrangement,

the client is not billed by the hour. Instead, the firm is compensated

by receiving a percentage of the settlement or trial award.

Alternative Fee Arrangements

Eugene M. Cummings

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Cleversafe, Inc.

Chicago, IL

Software and hardware developer for dispersed data storage

networks.

Electro-Motive Diesel, Inc. (EMD)

LaGrange, IL

One of the world’s largest manufacturers of diesel engines and

diesel-electric locomotives. Formerly the Electro-Motive Division

of General Motors Corp.

Klein Tools, Inc.

Lincolnshire, IL

Manufacturer of premium hand tools widely used in the electrical

industry.

Philos Technologies, Inc.

Wheeling, IL

National provider of surface treatment technology for the tooling

and manufacturing industries.

Schweitzer Engineering Laboratories, Inc. (SEL)

Pullman, WA

International manufacturer and designer of power system

protection devices.

Representative Clients

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Past Representative Licensing & Litigation Experience

Telesonics Systems Inc.

Telesonics Systems, Inc. v. Zenith Electronics Corp., N.D.Ill

An early case handled by Eugene M. Cummings was the representation of Telesonics Systems, the developer of the U.S. stereo sound television system. This case resulted in one of the most successful patent licensing campaigns of its time. The patents owned by Telesonics, United States Patent Number 4,048,654 and 4,139,866, were both drafted by Eugene Cummings, and when Telesonics was unable to find a firm willing to represent it without a large upfront payment, Mr. Cummings agreed to represent Telesonics on a contingent fee basis.

Nissim Corp.

Attorneys from Eugene M. Cummings, P.C. represented Nissim Corp., a Florida-based engineering company, in the licensing of its DVD related patents to the consumer electronics industry. As a result of our extensive licensing efforts, nearly every major manufacturer that produces, markets, or sells DVD players in the United States now pays a royalty to Nissim.

Orbsak, LLC

Orbsak, LLC v. Dell, Inc.,et al., E.D.Tx. Orbsak, LLC v. Directv Group, Inc.,et al., E.D.Tx. Orbsak, LLC v. General Instrument Corp., N.D.Ill.

Attorneys from Eugene M. Cummings, P.C. represented Orbsak, LLC, a California-based engineering group, in multiple patent infringement suits against the television and digital broadcast industry. In the course of litigation, every major manufacturer agreed to license the Orbsak patents.

Feature Film Services, Inc.

Feature Film Services, Inc. v. Echostar Commc Corp., et al., N.D.Ill

Eugene M. Cummings represented Feature Film Services, LLC, a Chicago-based engineering firm, in the licensing and litigation of a portfolio of encryption patents. After extensive litigation, all major distributors of television programming accepted licenses under the client’s patents.

Our Successes

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Finoc Design Consulting Oy

Finoc Design Consulting Oy v. 2 Wire Inc., et al., E.D.Tx.

Eugene M. Cummings, P.C. is currently representing the Finnish company, FINOC Design Consulting Oy, in the enforcement of U.S. Patent No. 6,850,560 against manufacturers of DSL equipment.

Microlinc, LLC

Microlinc, LLC v. Intel Corp., et al., E.D.Tx.

Eugene M. Cummings, P.C. is currently representing Microlinc in the enforcement of U.S. Patent No. 6,009,488 against the computer industry. Our firm successfully represented Microlinc in reexamination proceedings against this patent, which resulted in the confirmation of a key original claim as well as the issuance of additional claims further defining Microlinc’s innovation in the field of packet based computer buses.

Premier International Associates

Premier International Associates v. Microsoft Corp., et al., E.D.Tx. Premier International Associates v. Hewlett-Packard, et al., E.D.Tx.Premier International Associates v. Apple Computer, E.D.Tx

Attorneys from Eugene M. Cummings, P.C. represented Premier International Associates, LLC, a Chicago-based software company, against Apple Computer in a patent infringement suit. After a successful Markman hearing that eviscerated Apple’s invalidity and infringement defenses, Apple Computer was forced to take a license on terms favorable to Premier. Eugene M. Cummings, P.C. is currently representing Premier in the enforcement of its patents against other industry leaders.

Metamorfyx, LLC

Metamorfyx, LLC v. Logitech, Inc., N.D.Ill. Metamorfyx, LLC v. Datadisk Technologies, N.D.Ill. Metamorfyx, LLC v. Compusa, Inc., N.D.Ill. Metamorfyx, LLC v. Bencole Int’l Inc., N.D.Ill. Metamorfyx, LLC v. Tech Manufacturing Group, N.D.Ill. Metamorfyx, LLC v. Micro Innovations, N.D.Ill.

Attorneys from Eugene M. Cummings, P.C. represented Metamorfyx, LLC, a California-based engineering group, in multiple patent infringement suits against the keyboard industry. In the course of litigation, nearly every major manufacturer of ergonomic keyboards agreed to license the Metamorfyx patents. Eugene M. Cummings, P.C. is currently representing Metamorfyx in arbitration proceedings.

Current Representative Licensing & Litigation Experience

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Patent Related Ventures

Acoustic Technologies, LLC.

Acoustic Technologies, LLC is a manufacturer of a unique patent-pending loudspeaker which combines a single 3” high-efficiency full range driver with an ingenious enclosure, which serves as an amplifier and resonator to accurately reproduce a coherent, naturally synthesized sound over a large range of frequencies. These single-driver loudspeakers create a realistic three-dimensional listening experience over previously unattainable range of listening positions. Eugene M. Cummings is the Managing Member of Acoustic Technologies while members of Eugene M. Cummings, P.C. are currently involved in all aspects of the company from corporate formation and governance to the design, branding and patenting of the company’s products.

IsoClear, Inc.

IsoClear, Inc. is a manufacturer of a patented contact lens cleaning system having compartments that include a biocompatible surface coating which removes contaminants from the surface of the lens. Eugene M. Cummings is the President of IsoClear while members of Eugene M. Cummings, P.C. are currently involved in all aspects of the company from corporate formation and governance to the design, branding and patenting of the company’s products.

Sierra Election Systems, LLC (formerly, AutoMARK Technical Systems, LLC)

AutoMARK Technical Systems, the manufacturer of a patented voter assist terminal of which over 50,000 units were sold for use in 37 states, provided voters with disabilities the ability to vote using a private and secure electronic ballot marking method. Eugene M. Cummings invented this voter assist terminal and was the Founder and President of AutoMARK. Members of Eugene M. Cummings, P.C. were involved in many aspects of the company from corporate formation and governance to the design, branding and patenting of the company’s products. AutoMARK’s intellectual property was acquired by Election Systems & Software, Inc. (ES&S), who still manufactures and sells AutoMARK branded and related products. AutoMARK’s successor company, Sierra Election Systems, LLC, still manufactures and sells voting equipment throughout the United States. Eugene M. Cummings currently serves as President of Sierra Election Systems.

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Contact Us


One North Wacker Drive

Suite 4130

Chicago, Illinois 60606

Tel: 312-984-0144

Fax: 312-984-0146

Email: [email protected]

www.emcpc.com

Documents

The Law Offices of Eugene M. Cummings, P.C.media.virbcdn.com/files/45/77600f87ceb3304a-EMCPCv1... · 2014-09-29 · 1 The Law Offices of Eugene M. Cummings, P.C. Eugene Cummings founded