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INTELLECTUAL PROPERTY PRACTICE

INTELLECTUAL PROPERTY PRACTICE

PRACTICAL ADVICE TO PROTECT YOUR MOST VALUABLE ASSETS

Intellectual property (IP) is one of the most im-

portant aspects of modern business. According to

Information Week, IP-based businesses now repre-

sent the single largest sector of the U.S. economy.

The Intellectual Property Group at Becker pro-

vides comprehensive intellectual property manage-

ment and strategic planning services. At Becker,

we understand that intellectual property is often a

company’s most valuable asset—a company’s life

blood. We understand our clients’ business goals.

We know they need advice that is practical, based

on real-world experience. We craft solutions de-

signed to interface with a company’s current busi-

ness model, addressing its immediate business needs, while also keeping in

mind its longer-term business objectives, maximizing the company’s IP rights,

while minimizing the impact on the company’s ability to generate revenue.

The firm represents a wide variety of entities, from large public companies to

middle market and start-up companies, to individual innovators in a broad

range of areas, including software development; weight loss products and ser-

vices; medical and other sophisticated devices; equipment leasing; and e-

commerce. Representative services include:

Trade secret protection

Due diligence related to formation

and execution of mergers, acquisi-

tions and joint ventures

Licensing

Trade related aspects of intellectual

property rights

Enforcement and litigation

Intellectual property best practices

Intellectual property audits

Non-disclosure issues

Non-competition and consulting

Trademark prosecution and branding

The Paris Convention

Madrid System or Protocol

World Intellectual Property

Organization

Community Trade Mark System

Domain name procurement

Copyright registration for written, visual,

graphic, sound recording, software, and

HTML materials

Berne Convention

Invention disclosures

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According to “Information Week,” IP-based business-es now represent the single largest sector of the U.S. economy...we craft solu-

tions designed to interface with a company’s

current business model, addressing its immediate business needs while also

keeping in mind its longer-term business

objectives, maximizing the company’s IP rights, while minimizing the impact on the company’s ability to

generate revenue.

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STRATEGIC MANAGEMENT OF INTELLECTUAL PROPERTY PORTFOLIOS We provide our clients with comprehensive IP ser-

vice to maximize their intellectual property hold-

ings. We help capture, register, enforce and mone-

tize these assets with an eye on the return on our

clients’ investments, employing various strategies

and tactics from both a legal and business perspec-

tive to meaningfully maximize these assets.

Tim Szuhaj, Becker’s Intellectual Property Chair,

continues to successfully represent Nutrisystem,

Inc., a national leader in the weight loss industry, in

prosecuting trademark applications and enforcing

the company’s trademark rights in the United States

and world-wide. We provide Nutrisystem with pri-

mary outside counsel regarding the vital issues re-

lated to building and protecting the company’s fa-

mous brand.

In addition to structuring and maintaining a substantial world-wide trademark

portfolio of over 250 marks, we vigorously pursue enforcement of Nutrisys-

tem’s rights on a world-wide basis via pursuing oppositions in the subject juris-

dictions, and pursuing administrative proceedings before various international

bodies, including the WIPO or beneficial interparty agreements. We continue

to counsel Nutrisystem with respect to day-to-day trademark and domain name

issues.

“Tim Szuhaj has been a most valuable resource over the years, aiding in maintaining the integrity of the Nutrisystem brand.

As we continue to help more and more Americans achieve their weight loss goals and live healthier

lives, we are confident in Mr. Szuhaj’s ability to continue to protect our

interests in matters concerning intellectual

property.”

-- Denise Bergner, Senior Director, Legal & Corporate Compliance,

Nutrisystem, Inc.

DOMAIN NAME PROCUREMENT

With the new information era confronting businesses, maintaining a brand iden-

tity has become increasingly complex. Internet presence is all but a must in the

modern marketplace. We provide our clients with counsel regarding the selec-

tion of domain name as it relates to their brands as well as the brands of other

companies.

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INTELLECTUAL PROPERTY PRACTICE

COPYRIGHT REGISTRATION FOR WRITTEN,

VISUAL, GRAPHIC, SOUND RECORDING,

SOFTWARE, AND HTML MATERIALS

Through our representation of software and technology

companies, we are especially adroit at protecting rights in

software and related materials.

We advise clients on the synergistic relationship of copy-

rights to other types of intellectual property; the securing

of copyright protection filings; and strategy development

to maximize the revenue potential of copyrights. We also

protect clients' rights in court. We represented Lime Sys-

tems, Inc., which involved, first and foremost, the regis-

tration of its copyrights. Additionally, our Intellectual

Property Practice Chair, Tim Szuhaj, brought a suit

against former employees and the founder who left the

company, for copyright infringement and various other

contractual violations.

After vigorously prosecuting the matter, the case settled with our client obtain-

ing a substantial cash settlement. We also handle all of Lime Systems’ trade-

mark and copyright matters, helping the client to build its brand and maintain

its competitive advantage. We continue to represent Lime Systems in day-to-

day intellectual property matters.

“As our business continues to grow, safeguarding our

intellectual property has become an

increasing priority. We have

always been able to count on Becker to

provide us with comprehensive

intellectual property management and strategic planning

assistance.”

-- Bill Swank, President and CEO,

Lime Systems

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INTERNET, CYBERLAW AND E-COMMERCE

Becker assists with the formation of online businesses such as limited liability

companies, corporations and non-profit companies. We draft legal disclaimers

for websites, including terms and conditions, privacy policies, online sale or

license agreements and hosting agreements, advising our clients on issues relat-

ed to online marketing, the Communications Decency Act, the Digital Millenni-

um Copyright Act and compliance with the Child Protection and Obscenity En-

forcement Act. The firm also represents clients with respect to online copyright

and trademark infringement, cybersquatting and other disputes.

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INTELLECTUAL PROPERTY PRACTICE

Riverside Recreations LLC relies on our firm to provide advice regarding

all legal aspects of their social networking website, including trademark and

copyright issues, compliance with state and Federal statutes and regulations and

the preparation of Terms of Use, Privacy Policies and other legal documents.

PATENT LITIGATION

Becker represented Polytech Enterprises Ltd, a Chinese company, in extensive

patent litigation related to single-use film cameras. This litigation included the

question of the international applicability of the doctrine of patent exhaustion.

TRADEMARK PROCUREMENT AND BRANDING IN THE U.S. AND ABROAD Selecting the right trademark is integral to the

brand equity inherent in successful businesses.

Our trademark professionals not only guide cli-

ents through the clearance and registration pro-

cess, but also advise as to appropriate use to fur-

ther strengthen the goodwill associated with these

trademarks. We have extensive experience in

procuring and leveraging trademarks in the Unit-

ed States, Europe and Asia. For example, we

work with Infinitus Law Corporation of Singa-

pore to provide representation in the United

States for several of Infinitus’ clients. We provide counsel regarding U.S.

trademark practice and effectively prosecute U.S. applications for these foreign

business entities.

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“We are committed to providing our clients with prompt and excellent legal solutions. Our relationship with Becker has helped us

facilitate proceedings in the U.S. to efficiently serve the

business needs of our clients regionally and worldwide.”

-- Jonathan Foong, Associate Director,

Infinitus Law Corporation

COPYRIGHT, PATENT AND TRADEMARK LICENSING

We understand that effective licensing of copyright, patent, trademark and know

-how assets creates value for our clients.

INTELLECTUAL PROPERTY PRACTICE

We represent clients in all phases of patent litigation,

both as lead counsel in the Federal District Courts

nationwide and the Court of Appeals for the Federal

Circuit, and as local counsel in the busy patent forum

that is the District of New Jersey.

The breadth and depth of our knowledge and experience allows our attorneys to assist our clients in formulating practical solutions to

expected and unexpected issues that arise.

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We craft agreements that combine real-world commercial impact with our un-

derstanding of the legal ramifications of the agreement. We appreciate our cli-

ents' specific goals, including the likely problematic areas, and develop appro-

priate strategies to achieve our clients’ commercial targets.

Our familiarity with the technology sector

has given us extensive experience in drafting

numerous custom software development and

licensing agreements for our clients.

Tim Szuhaj has negotiated sophisticated

technology development and license agree-

ments for prominent inventors, including Dr.

Erol Veznedaroglu, Director of Neurosci-

ences and Endovascular & Cerebrovascular

Neurosurgery at Capital Health’s Stroke &

Cerebrovascular Center of New Jersey.

We negotiated a complex deal between Dr. Veznedaroglu and a prominent

West Coast medical device company. The

resulting Services and Technology Option

Agreement culminated in the development

and commercialization of cutting-edge medi-

cal technology, as well as very favorable

compensation for our client.

Likewise, the firm continues to represent the

Coalition of Cancer Cooperative Groups with

respect to licenses and services related to

CCCG’s industry-leading technology solu-

tions and services, including the commercial

roll-out and commercialization of both Trial-

Check,® a comprehensive, Internet-based

cancer clinical trial navigation and matching service containing all federally

registered cancer studies, and TrialTracker, a clinical trials navigation software.

We also advise CCCG regarding copyright matters, data ownership issues and

other general business matters.

“The field of health and medicine relies on innovation. Therefore, it is critical that technological discoveries be protected from

nception to completion in order for medical professionals to offer

patients the most advanced service available. Mr. Szuhaj understands this and has the

experience and professionalism to execute that protection

successfully.”

-- Dr. Erol Veznedaroglu

“As a non-profit organization, the Coalition’s mission is at the heart of our business dealings. Becker has been integral in se-

curing the integrity of our Trial-Check® system, which serves as a resource for patients, caregivers

and healthcare professionals. We value their support in helping us achieve

our mission.”

--Larissa Tis, Senior Director, eBusiness, Coalition of

Cancer Cooperative Groups

INTELLECTUAL PROPERTY PRACTICE

www.becker.legal

TRADEMARK, COPYRIGHT

AND LICENSING LITIGATION

AND ENFORCEMENT

We represent clients across the mar-

ketplace in trademark, copyright,

trade dress and trade secret infringe-

ment actions, as well as licensing dis-

putes, in the Federal Courts, the

Trademark Trial and Appeal Board

and administrative tribunals around

the globe. From the initial cease and

desist notice, through the preliminary

injunction phase and ultimately to

trial, we employ a dynamic, assertive and cost-effective approach to protecting

our clients’ valuable intellectual property rights.

Case Study: David Sprong, a partner

who concentrates his practice in IP liti-

gation, represented ASICS CORPORA-

TION in numerous successful trade-

mark infringement actions across the

United States designed to protect the fa-

mous ASICS footwear trademarks. Em-

ploying an aggressive approach at the

outset, these cases were often resolved

quickly during the preliminary injunction

phase of the litigation.

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DEVELOPMENT AND OTHER “GO-TO-MARKET” AGREEMENTS

In addition to licensing, we counsel

clients about the various channels

available to commercialize their in-

tellectual property. These include

sophisticated Joint Development

Agreements; Commercialization

Agreements; Collaborative Research

Agreements; Domestic and Interna-

tional Marketing and Distribution Agreements; OEM Agreements; Reseller

Agreements; and End User Licenses.

We represent Lattice Incorporated, solution providers focused on reliable and

secure information and communications technology to the government and

commercial markets, regarding all of its intellectual property matters. We have

successfully negotiated various technology and patent licenses on behalf of Lat-

tice as well as providing litigation counsel as needed.

“The nature of our business requires sensitivity to matters concerning the

protection of our intellectual property. Becker’s expertise in this area

has been a tremendous value to us.”

-- Paul Burgess, President and CEO, Lattice Incorporated

INTELLECTUAL PROPERTY PRACTICE

We conduct a methodical and comprehensive review of all forms of intellectual

property in order to position the intellectual property assets for maximum value,

fully assess relevant risks, and develop negotiating strategies to achieve busi-

ness goals while minimizing those risks.

NON-COMPETITION, NON-DISCLOSURE AND CONSULTING

ISSUES

Whether our client is a consultant or a company, when a consultant is engaged,

the respective rights of the parties in their existing intellectual property and

their rights in the resulting intellectual property must be determined and memo-

rialized. We regularly draft agreements that not only delineate and protect each

party’s rights, but also maintain the agreed upon balance of competition with

respect to those rights.

DUE DILIGENCE RELATED TO, AND FORMATION AND EXECU-TION OF, MERGERS, ACQUISITIONS, AND JOINT VENTURES

We provide thorough due diligence services in connection with disposition of intellectual property, whether by sale, license, or purchase, or the pursuit of re-search and development agreements.

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INTELLECTUAL PROPERTY PRACTICE

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Timothy J. Szuhaj, Esq., Partner

Chair, Intellectual Property and Technology Group

Timothy J. Szuhaj is a partner in the firm and chairs the intel-

lectual property and technology practice group. In addition to

specializing in intellectual property law and portfolio manage-

ment, technology law, Internet law, and e-commerce law, Mr.

Szuhaj handles general corporate and commercial matters.

His private practice includes prosecution of trademark, service mark and copy-

right applications and assignments (foreign and domestic); negotiating and

drafting numerous licenses, including software, patent, trademark, trade name

and technology licenses; managing all aspects of various clients' intellectual

property portfolios, including cost management associated with creating and

maintaining such portfolios, drafting cease and desist letters, and employment

contracts and employee handbooks regarding work for hire and confidentiality;

advising clients on the formation and operation of businesses; drafting agree-

ments for joint ventures, channel partners and numerous varieties of "go to mar-

ket" ventures; and negotiating and drafting general corporate and commercial

documents. Included in Mr. Szuhaj’s clientele is Nutrisystem, Inc. and its sub-

sidiaries, for which he is the sole trademark counsel. As such, he manages all

facets of the company’s substantial domestic and international trademark port-

folio of over 250 marks.

In addition to his private practice experience, Mr. Szuhaj also has significant in-

house experience. He served as both Deputy General Counsel and Intellectual

Property Counsel to Verticalnet, Inc., a publicly owned enterprise software and

e-commerce company.

His responsibilities included licensing intellectual property, human resources,

service contracts, sale process and consulting and procurement issues. Mr.

Szuhaj also served as Vice President of Vert Tech LLC, the wholly-owned in-

tellectual property subsidiary of Verticalnet, Inc. As such, he was the primary

officer responsible for the formulation of domestic and international intellectual

property business strategies and management of the company-wide intellectual

property portfolio.

INTELLECTUAL PROPERTY PRACTICE

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Mr. Szuhaj has presented numerous intellectual property seminars, including:

"Contempt Hearings in Patent Litigation", Pennsylvania Bar Institute, August

2011; the 20th Annual Meeting of the Federation of Exchange Accommodators,

Intellectual Property and Other Personal Property Exchanges, October 2, 2009,

Orlando Florida; CLE Seminars; West Legalworks, Issues of Liability in Online

Business Commentary Webinar 2008, Protecting Brand and Reputation: the

Communication Decency Act and Beyond; The Entrepreneur Institute, Presi-

dent’s Forum 2007, Knowing What You Don’t Know – How to Profit from

Hidden Risks that Threaten Your Company; and The Pennsylvania Bar Insti-

tute’s Technology Law Fora 2005, 2006 and 2007 and Intellectual Property De-

velopments Impacting E-Commerce in 2008, Intellectual Property Develop-

ments Impacting E-Commerce in 2007, and Intellectual Property Case Law De-

velopments Impacting E-Commerce in 2006.

Mr. Szuhaj has authored or co-authored several articles, including :"A Chance

to Select a Standard for Use of Summary Contempt in Patent Cases," New Jer-

sey Law Journal (March 21, 2011); “Trademark Practice After In re Sones:

Subtle but Important Shift in IP Law Opens Door for Internet Businesses,” The

Legal Intelligencer (May 11, 2010); “Internal Cross-Marketing: Picking the

Low-Hanging Fruit,” The Legal Intelligencer (December 28, 2009); “Brand

Building and Asset Protection: Adding Value to Amusement Business,” Park

World (November 2009); “What is a ‘Patented Invention?’ The Federal Cir-

cuit's Decision in Proveris Scientific Corp. v. Innovasystems, Inc.,” Upon Fur-

ther Review, the Philadelphia Bar Association News Letter April 4, 2009.

Mr. Szuhaj received his B.A. in Chemistry from Indiana University and his J.D.

from Villanova University School of Law, where he was editor-in-chief of the

Villanova Environmental Law Journal. Mr. Szuhaj is a member of the Ameri-

can Bar Association, the American Intellectual Property Law Association, and

the International Trademark Association. Most recently, he was elected to the

Schuylkill Center for Environmental Education Board of Trustees.

INTELLECTUAL PROPERTY PRACTICE

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David J. Sprong, Esq., Partner

David J. Sprong is a partner in the firm practicing in the litiga-

tion, intellectual property, and employment and labor depart-

ments. Mr. Sprong represents large and small businesses in var-

ious commercial litigation matters, including various types of

business disputes; claims of breach of contract, including lease

and financing agreements; claims of fraud and defamation; con-

struction disputes; and healthcare matters. He has substantial ex-

perience in disputes involving intellectual property and computer technology,

litigating trademark, patent and copyright infringement in cases nationwide. He

has enforced and protected clients' trademarks by obtaining preliminary and

permanent injunctive relief for trademark infringement, and has defended sig-

nificant claims of patent infringement. He also has litigated actions involving

computer software and hardware, and is well-versed in electronic discovery and

data storage, maintenance and retrieval issues. He served as a Barrister in the

John J. Gibbons American Inn of Court for Intellectual Property Litigation and

Federal Practice.

Mr. Sprong has practiced for more than 10 years in the state and federal courts

of New Jersey and New York and is experienced in the procedural and substan-

tive aspects of litigation matters.

He often represents out-of-state entities as local counsel in the courts of New

Jersey and New York and has represented clients as in significant actions in

Pennsylvania, Florida, California, Massachusetts, Missouri, Illinois, and Minne-

sota.

Mr. Sprong has experience in all facets of litigation, from case inception

through trial. In cases, he employs an assertive and cost-effective approach to

protecting the rights of his clients. He also has significant experience in resolv-

ing cases without the need for trial through various alternative dispute resolu-

tion methods.

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INTELLECTUAL PROPERTY PRACTICE

Mr. Sprong has represented varied clients including Horizon Blue Cross Blue

Shield of New Jersey, ExxonMobil, Asics Corporation, KPMG, Wal-Mart

Stores, Inc., Danka Office Imaging Company, the Middlesex County Joint

Health Insurance Fund, Toys 'R' Us, Inc., Foster Wheeler Corporation, the Es-

sex County Prosecutor's Office, and the University of Medicine and Dentistry

of New Jersey.

An active member of the New Jersey and New York bars, Mr. Sprong is admit-

ted to practice in the United States District Courts for the District of New Jersey

and for the Southern and Eastern Districts of New York. He is a member of the

Litigation and Labor and Employment Law Sections of the American Bar Asso-

ciation, and also is a member of the New Jersey State and Essex County Bar

Associations.

He obtained a J.D. degree, magna cum laude, from Seton Hall University

School of Law, and is an alumnus of Rutgers College. Before joining Becker as

a partner, Mr. Sprong practiced in the litigation and employment law depart-

ments of Wolff & Samson PC.

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INTELLECTUAL PROPERTY PRACTICE

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Firm Profile

Becker is a premier mid-market firm serving the

New York, New Jersey and Philadelphia corri-

dor. The firm provides litigation, transactional,

counseling and regulatory representation to clients

ranging from major multinational corporations to

local businesses, families and individuals. Our size

and regional footprint allow us to provide sophisticated services in a manner

focused not only on results, but also on our clients’ return on their legal invest-

ment.

Becker is one of the few firms of its size and caliber that can boast of a minori-

ty, female founding partner, Stacey L. Meisel. The belief in diversity starts at

the top, and as with many of the firm’s corporate clients, is a cornerstone of the

firm’s mission statement.

Becker takes great pride in the fact that minority and/or women attorneys are

found at every level of the firm, and the firm is committed to hiring from the

broadest applicant pool. Much in line with the corporate commitment to the

highest business ethics, rigid adherence to the Rules of Professional Conduct is

embedded in the firm’s culture.

Three former Governors of New Jersey have turned to the firm for advice and

guidance on ethics, which included an appointment to conduct a thorough audit

of the ethics rules, statutes, regulations, and codes of conduct for all employees

of the Executive Branch and state authorities, and provide a comprehensive

plan to improve and strengthen them.

The highest quality work product, the investment in technology that allows for

a seamless partnership with clients, attention to return on investment (and a rate

structure in line with that philosophy), devotion to diversity, professional re-

sponsibility, and, above all, a commitment to make our clients’ causes our own

cause, have been the defining qualities of Becker. These qualities have garnered

the respect of the bench and bar, adversaries and co-counsel, and will be the

firm’s guiding light for the future.

≈

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Becker has earned an AV rating from Martindale-

Hubbell, which is the high-est possible rating for legal

ability and ethics.*

INTELLECTUAL PROPERTY PRACTICE

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Disclaimer The information, materials and services offered herein are for general informa-tional purposes only and do not constitute legal advice. The foregoing is pre-sented without any representation or warranty whatsoever, including as to the accuracy or completeness of the information. Examples of cases previously handled by this firm are for informational purposes only. Prior success in such cases does not guarantee similar results in future cases. No one should, or is entitled to, rely in any manner on any of the information contained herein. Par-ties seeking advice on a particular matter should consult with legal counsel fa-miliar with their particular circumstances. *Martindale-Hubbell is the facilitator of a peer review rating process. Ratings reflect the anonymous opinions of members of the Bar and the Judiciary. Martindale-Hubbell Peer Review Ratings fall into two categories—legal ability and general ethi-cal standards. No aspect of this advertisement has been approved by the Supreme Court of New Jer-sey.

INTELLECTUAL PROPERTY PRACTICE

With offices in New York ,New Jersey, and Pennsylvania,

Becker is strategically located at the heart of the metro

area with easy access to all cities in the Northeast

corridor...

Offices:

New Jersey Office

Becker

354 Eisenhower Parkway

Plaza II, Suite 1500

Livingston, NJ 07039

Tel: 973-422-1100

Fax: 973-422-9122

New York Office

Becker

240 Madison Avenue,

7th Fl.

New York, NY 10016

Tel: 212-390-8407

Fax: 646-619-4699

www.becker.legal

Pennsylvania Office

Becker 1515 Market Street, Suite 1200

Philadelphia, PA 19102

Tel: 856-779-8700

Fax: 856-779-8716