Frederick L. Tolhurst

Director
Bar/Court Admissions
  • Pennsylvania
  • Ohio
  • U.S. Court of Appeals for the 3rd and Federal Circuits
  • U.S. District Court for the Northern District of Ohio
  • U.S. District Court for the Western District of Pennsylvania
  • U.S. Patent and Trademark Office
Education
  • J.D., University of Pittsburgh School of Law, 1975
  • B.S., cum laude, University of Pittsburgh School of Engineering, 1971

Fred serves a broad range of clients, including industrial, manufacturing, retail and service companies. His emphasis is on intellectual property litigation and counseling on intellectual property issues – particularly strategies for protecting and exploiting patent and trademark rights.

  • Litigation of claims asserting the infringement and validity of patents, trademarks and copyrights
  • Litigation of claims concerning misappropriation of trade secrets
  • Licenses and technology transfer agreements concerning patents, computer software and manufacturing rights
  • Agreements concerning development, ownership and transfer of intellectual property and computer software
  • Counseling in the protection and exploitation of trade secrets and confidential technology
  • Preparation, prosecution and appeal of applications for U.S. and foreign patents in the electrical, electronic, computer, biomedical and mechanical arts
  • Counseling concerning patentability, freedom-to-operate, infringement and strategic use of patents
  • Inter parte proceedings in the U.S. Patent and Trademark Office concerning registration, opposition and cancellation of trademark registrations
  • Counseling regarding availability and use of trademarks, service marks and domain names
  • Hearings and appeals concerning government approvals and contracts regarding technology rights

Select Representative Matters

Manufacturer of Automated Warehouse Systems – Virginia and Florida

  • Our client developed a computer-controlled inventory stocking and order make-up system for use by beer distributors. A major competitor sued them alleging patent infringement and trade secret violations arising out of a system that had served as a beta-site and a new system that they were installing. The Plaintiff’s trade secret claims were dismissed upon motion for summary judgment. Thereafter, the Plaintiff voluntarily dismissed the patent claims in exchange for dismissal of the counterclaims for patent misuse. (Middle District of Florida)

 

 

Manufacturer of Photovoltaic Panels – Colorado

  • A small Colorado company asserted claims of trademark infringement and unfair competition under a theory of reverse confusion against our client, a major U.S. manufacturer of photovoltaic panels. The case was in the same court and before the same judge who presided over the seminal case on the reverse confusion theory of trademark infringement. After the Plaintiff’s motion for summary judgment was denied, the case was settled. The Plaintiff dismissed the suit, assigned its trademark registration to our client, and changed its company name. (District of Colorado)

Licensor of Manufacturing Rights for Automotive Accessories – Pennsylvania

  • We secured patent and trademark protection for an inventor who developed an accessory for the automotive aftermarket. We then secured license agreements with Japanese and U.S. companies who had peremptorily began manufacturing and selling copies of the patented invention in major retail stores throughout the U.S. (Western District of Pennsylvania)

Manufacturer of Architectural and Specialty Glass – Illinois

  • A manufacturer of specialty and architectural glass had purchased a division of another glass manufacturing company. Following the acquisition, the seller complained that the purchase agreement did not convey rights to continue using the name of the seller in connection with the product. We defended against the seller’s litigation claims and negotiated a settlement that allowed our client to continue the use of the name and precluded the seller from using the name in the future. (Northern District of Illinois)

Manufacturer of gas detection devices – California

  • Our client had developed and marketed a gas detection device that incorporated a new type of gas sensor. A competitor had the device copied and reproduced in China for importation to the U.S. Our client sued for patent infringement. The competitor settled the suit on the basis of a payment for past damages and a royalty-bearing license based on future sales. (Northern District of California)

Manufacturer of Scientific Instrumentation – Pennsylvania

  • Our client invented and patented an Internet-based system for collection, reporting and management of employee chemical exposure data. A new competitor copied the system and began offering a competing service. Our client sued for patent infringement. After several months, discovery showed that the competing system was copied from our clients’ patented system. The case was settled on the basis of a royalty payment for use of the infringing system. (Western District of Pennsylvania)

 

Manufacturer of Home Gifts – Pennsylvania

  • Our client designed, manufactured and sold glassware with an original design. The glassware was copied by an importer and supplied to a major U.S. retailer. Our client registered their copyright in the design and filed a suit against the retailer for copyright infringement. The retailer settled the case within two months of filing the complaint by agreeing to discontinue all sales and paying the full amount of the damage claim for past sales. (Western District of Pennsylvania)

Manufacturer of Specialty Glass Products – Pennsylvania

  • Our client, a manufacturer of specialty glass, was supplying glass to a government prime contractor for use in the manufacture of Army vehicles. The client applied for qualification to supply the glass directly to the Army as replacement parts. The prime contractor sued our client claiming misappropriation of trade secrets. We counter-claimed against the prime contractor asserting misuse of trade secret claims under Pennsylvania state statutes. Shortly after the close of pleadings, the contractor voluntarily dismissed the claims against our client with prejudice. The contractor also withdrew their opposition to our client’s qualification as a supplier to the Army. (Western District of Pennsylvania)

Hotel Owner – Florida

  • We took over a trademark infringement case that had been filed by other counsel. We were engaged after a motion for preliminary injunction had been lost and discovery had been closed. The case was settled with the agreement of the Defendant to change the name of its hotel to a name approved by our client. (Middle District of Florida)
  • Member, Allegheny County Bar Association
  • Member, Pennsylvania Bar Association
  • Member, Pittsburgh Intellectual Property Law Association