An industry leader in after-market automotive products stepped up to protect one of its most successful products (which is protected by a US design patent) after a direct competitor began offering similar products. The company turned to Womble Carlyle’s Intellectual Property Litigation Team for guidance in the dispute.

Earlier this year, the competitor filed a declaratory judgment action in the US District Court, Central District of California, seeking to establish that it does not infringe the client’s design patent and that the patent is invalid.

Womble Carlyle’s client responded by filing a counterclaim of patent infringement, along with a motion for a preliminary injunction seeking to prevent the competitor from selling its similar products during the lawsuit. The Womble Carlyle team of Kirk Watkins, Steve Kerr and Brad Cardon, with assistance from Jack Hicks, litigated the case. Sean O’Brien of the firm Payne & Fears in Los Angeles served as local counsel. Womble Carlyle Paralegal Sharon Dunn and Legal Secretary Amanda Childs also assisted in the case.

In April 2016, the US District Court, Central District of California sided with the client and granted a preliminary injunction preventing the competing company from making, using, and selling its similar products.

The two parties ultimately negotiated a final settlement agreement in which the competitor agreed to a permanent injunction and agreed to pay damages to Womble Carlyle’s client.

Steve Kerr is a former physicist and a patent attorney with more than 29 years of experience in patent law. Kerr provides strategic IP and patent portfolio guidance to companies in a variety of fields.

Brad Cardon is an experienced intellectual property attorney who helps clients research, prepare, prosecute and defend patents, particularly in the mechanical and electromechanical arts.

Kirk Watkins manages and tries patent, complex business litigation and arbitration disputes. He has nearly four decades of experience as a litigator, and has tried patent cases in federal courts across the country. Watkins serves as Womble Carlyle’s chief liaison to AtlAS (Atlanta International Arbitration Society).