IP Commercial Litigation Attorney

Not every dispute involving a patent, trademark, or copyright is an infringement case. A licensing agreement can be breached without anyone infringing anything. A joint-development partner can walk away with more than it was owed. An acquisition can close on IP representations that turn out to be wrong. Those are not infringement cases. An IP commercial litigation attorney handles this second category: business and contract disputes where intellectual property is the asset at stake, not the cause of action. Keyhani LLC litigates these matters – license and royalty breach, ownership and assignment disputes, and IP-related deal claims – in federal courts nationwide.

What IP Commercial Litigation Covers

IP commercial litigation sits between two practices that are often treated as separate worlds: intellectual property enforcement and general commercial litigation. Unlike most commercial disputes, the matters in this category share one feature – intellectual property is the asset, right, or representation the dispute is about – without requiring proof that anyone infringed a patent, trademark, or copyright.

Federal or State Court: How Jurisdiction Is Decided

Getting an IP commercial dispute into the right court is a threshold strategic question, and it is more contested than it looks. Patent and copyright infringement claims fall within the exclusive jurisdiction Congress gave the federal courts: under 28 U.S.C. § 1338(a), district courts have original jurisdiction over “any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks,” and no state court may hear a claim arising under the patent, plant-variety, or copyright statutes.

A contract or business dispute that happens to involve IP does not automatically qualify. In Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988), the Supreme Court held that § 1338(a) jurisdiction exists only where a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolving a substantial question of federal patent law – and where a claim is supported by alternative theories, patent law must be essential to every one of them, not merely relevant to one theory among several.

Gunn v. Minton, 568 U.S. 251 (2013), sharpened that inquiry for state-law claims with an embedded federal issue: the issue must be necessarily raised, actually disputed, substantial to the federal system as a whole (not merely to the parties), and resolvable in federal court without disturbing the federal-state balance Congress approved. Applying that framework to a state-law legal-malpractice claim that turned on an underlying patent-validity question – whether the experimental-use exception to the on-sale bar would have saved the client’s patent – the Court held the state courts retained jurisdiction because the embedded issue failed the substantiality prong.

For most of the disputes this page covers – breach of a license or assignment agreement, a royalty audit disagreement, or an ownership fight over who holds title to the IP – the practical basis for being in federal court is not § 1338(a) at all. It is 28 U.S.C. § 1332(a) diversity jurisdiction, which requires complete diversity of citizenship between the parties and an amount in controversy that exceeds $75,000, exclusive of interest and costs, or supplemental jurisdiction under 28 U.S.C. § 1367 where a contract, ownership, or unjust-enrichment count is joined with a federal infringement claim. Where the claim does not itself arise under the patent or copyright statutes, and neither diversity nor a joined federal claim is present, the dispute belongs in state court.

Getting this analysis wrong at the outset – filing an ordinary contract claim as if it were a federal IP case, or missing that a claim actually does implicate exclusive federal jurisdiction – can cost a party its chosen forum or invite an early motion to dismiss.

Breach of Licensing, Assignment, and Development Agreements

Most IP commercial litigation begins with a written agreement that allocates rights in intellectual property: a license, an assignment, a joint-development agreement (JDA), or a manufacturing or original equipment manufacturer (OEM) agreement that grants rights to use, make, or sell a licensed product. When one side stops performing – a licensee keeps selling after termination, a development partner takes shared IP outside the scope of the collaboration, a manufacturer exceeds its licensed field of use – the claim is ordinary breach of contract under the governing state’s law – generally a valid agreement, performance or excuse by the plaintiff, breach by the defendant, and resulting damages.

What makes these cases distinct is that the remedy question is inseparable from IP law. A licensor seeking to stop continued use after termination is effectively asking a contract court to enjoin conduct that IP law would otherwise regulate, and the license’s own termination, cure, and post-termination sell-off provisions usually control the outcome more than any infringement analysis would.

Royalty Accounting, Audits, and Payment Disputes

Licensing and development agreements typically include royalty-reporting obligations, audit rights, and defined royalty bases – net sales, units sold, or a specified revenue stream. Disputes usually start with a licensor’s belief that a licensee is under-reporting or misclassifying revenue outside the royalty base, and they are decided largely on the agreement’s own definitions and audit mechanics rather than on any question about the IP’s scope.

A licensee that disputes an audit finding, or a licensor exercising a contractual audit-and-true-up right, is litigating accounting and contract-interpretation questions – what the royalty base means, what records the agreement required the licensee to keep, and what the audit clause entitles the licensor to recover. A common mistake on both sides is treating the audit clause as a formality rather than the actual battleground – what the agreement’s audit and reporting language requires typically frames the dispute more than any broader theory does.

Ownership, Inventorship, and Assignment Disputes

Ownership disputes are common where IP was created inside an employment, consulting, or founder relationship and the assignment paperwork was incomplete, informal, or contested after the fact. Patent rights are personal property that can be transferred, but under 35 U.S.C. § 261, an assignment must be by an instrument in writing (transfers by operation of law, such as by merger or inheritance, are treated differently), and an unrecorded assignment is void against a later purchaser or mortgagee for valuable consideration who takes without notice, unless the earlier assignment is recorded with the United States Patent and Trademark Office (USPTO) within three months of its date or before the later transaction.

Copyright ownership is even more formality-dependent. Under 17 U.S.C. § 204(a), a transfer of copyright ownership other than by operation of law is not valid unless it is in a signed instrument of conveyance, or a signed note or memorandum of the transfer, executed by the owner of the rights conveyed or that owner’s authorized agent.

A consultant’s work product raises a separate question before the transfer question even arises: an independent contractor’s work is not automatically “work made for hire” for the company that paid for it. It qualifies only if it falls within one of the categories the Copyright Act enumerates and the parties signed an agreement saying so, 17 U.S.C. § 101; Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). A company that relied on an informal understanding that a consultant’s work product belonged to the company can find both that the work was never “for hire” and that no signed writing ever transferred it.

Ownership and inventorship disputes are related but jurisdictionally distinct. A pure dispute over who owns the resulting rights is generally a state-law contract question. A claim to correct inventorship on an issued patent, by contrast, is created by the Patent Act and belongs in federal court under § 1338(a) – which is why these cases are often pleaded with both federal and state counts.

Where the dispute is over who should be named as an inventor rather than who owns the resulting rights, 35 U.S.C. § 256 lets a court, on notice and hearing of all parties concerned, order correction of inventorship on an issued patent – a claim frequently paired with a declaratory claim over who owns the resulting rights. The statute also allows the USPTO Director to make the same correction on application of all the parties and assignees.

NDA and Confidentiality Breach in a Commercial-Deal Context

Confidentiality obligations run through nearly every IP-related business relationship – due diligence for a license or acquisition, a joint-development collaboration, a vendor or manufacturing relationship. When a counterparty discloses or misuses confidential information outside a trade-secret-specific dispute, the claim is breach of the non-disclosure agreement (NDA) or confidentiality provision itself: a valid agreement, a disclosure or use that exceeded the agreement’s permitted purpose, and resulting harm. Keyhani LLC litigates these confidentiality disputes where they arise out of a licensing, joint-development, or acquisition relationship. Where the same conduct also supports a trade secret claim, see trade secret litigation; for confidentiality enforcement and defense outside a deal context, see NDA breach litigation.

Unjust Enrichment and Unfair Competition Claims Adjacent to IP

Not every IP-related wrong fits a contract claim or an infringement claim. Where a party benefited from another’s IP, confidential information, or competitive position without a valid agreement covering the conduct – or where an agreement is unenforceable, rescinded, or simply absent – the available claim is often unjust enrichment. According to the American Law Institute, a person who is unjustly enriched at another’s expense is liable in restitution to that person – the claim requires that the defendant received a benefit, appreciated or had knowledge of that benefit, and retained it under circumstances where retaining it without payment would be inequitable.

Unfair-competition and tortious-interference theories can also apply where a third party knowingly induced a breach of an IP-related contract or relationship, though the elements and available remedies for both unjust enrichment and business-tort claims vary by state and by the law the court applies, so which theories are viable is a jurisdiction-specific analysis from the outset.

These theories have real limits that are easy to miss. § 301(a) of the Copyright Act, 17 U.S.C. § 301, expressly preempts a state-law claim where the work falls within the subject matter of copyright and the state-law right asserted is equivalent to one of the exclusive rights 17 U.S.C. § 106 already grants – an unjust-enrichment count built on nothing more than “the defendant copied my work” is routinely dismissed on that basis. Federal patent law imposes a comparable ceiling by a different route: the Patent Act contains no express preemption provision, but a state unfair-competition theory that would extend patent-like protection to unpatented subject matter is preempted as an obstacle to the federal scheme, Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) – while state trade secret law and state law protecting against source confusion generally survive.

State law imposes a parallel limit of its own. According to the Uniform Law Commission’s Uniform Trade Secrets Act, adopted in some form in nearly every state, a trade-secret statute generally displaces conflicting tort and restitutionary law that would otherwise provide a civil remedy for misappropriation of confidential information – so an unjust-enrichment count aimed at misuse of confidential information usually has to rest on a contractual or fiduciary duty rather than on the misappropriation itself. Pleading the claim so that it rests on something more than the copying itself – a promise, a relationship, a confidence – is often what keeps it alive.

M&A, Earn-Outs, and IP Representations and Indemnification

Intellectual property is frequently one asset among several in a larger mergers-and-acquisitions (M&A) dispute – an acquisition agreement’s representations that the target owns or has valid rights to use its IP, an earn-out formula tied to a licensed or patented product’s performance, or an indemnification provision triggered by a third-party IP claim against the acquired business. These disputes are contract disputes about representations, warranties, and indemnification caps and baskets; the IP question is usually whether a specific representation was accurate as of closing, not whether the IP itself is valid or infringed. Getting the underlying IP facts right – what was actually owned, licensed, or encumbered at closing – is still essential to litigating the contract claim, which is why these matters benefit from counsel who can evaluate both the IP facts and the deal document.

Forum Selection, Arbitration Clauses, Choice of Law, and Venue

IP-related commercial agreements routinely include forum-selection and choice-of-law clauses, and those clauses do most of the work in deciding where and under which state’s law a dispute will be litigated. Since The Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (1972), a freely negotiated forum-selection clause has been prima facie valid and enforceable unless the party resisting it can show enforcement would be unreasonable, unfair, or unjust – a heavy burden that is rarely met absent fraud, overreaching, or a forum so gravely inconvenient that it would effectively deprive a party of its day in court.

Atlantic Marine Construction Co. v. U.S. District Court, 571 U.S. 49 (2013), supplies the mechanism courts use today to enforce that clause. Where the clause designates another federal district, the vehicle is a transfer motion under 28 U.S.C. § 1404(a), which permits transfer to a district where the action might have been brought or to any district to which all parties have consented; where the clause designates a state or foreign forum, the vehicle is dismissal for forum non conveniens instead.

On either motion, a valid clause is given controlling weight in all but the most exceptional cases: the plaintiff’s chosen forum receives no weight, the private-interest factors are treated as favoring the contractual forum entirely, and the party resisting the clause bears the burden of showing transfer is unwarranted – so only public-interest factors remain in play. One point that is easy to miss: an ordinary § 1404(a) transfer in a diversity case normally carries the transferor court’s choice-of-law rules with it, but Atlantic Marine held that rule does not apply where the transfer enforces a valid forum-selection clause – the transferee court applies its own choice-of-law rules there, because a plaintiff who filed in breach of the clause is not entitled to bring the law of the forum it agreed to give up along with it.

Many IP-related commercial agreements route disputes to arbitration rather than court. According to the American Arbitration Association, an arbitrator generally has the authority to rule on challenges to the scope of the arbitration clause itself, absent a contrary agreement – which is why the clause’s own scope usually becomes the first fight when one applies: which claims it captures, whether injunctive relief is carved out, and whether it survives termination of the underlying agreement. Keyhani LLC handles these matters in arbitration and mediation as well as in court; see IP dispute resolution.

Claim Type	What the Claim Requires	Typical Relief
Breach of license, assignment, JDA, or OEM agreement	Valid agreement, performance or excuse, breach, resulting damages	Damages, contract termination, injunctive relief tied to the contract’s own terms
Ownership / inventorship dispute	Proof of who created the IP and whether a valid, recorded assignment or signed writing transferred rights	Declaration of ownership, correction of inventorship, assignment or reassignment
Royalty / audit dispute	Interpretation of the royalty base and audit clause; proof of underpayment or audit non-compliance	Payment of the shortfall, audit costs where the agreement provides for them, contract interpretation ruling
Unjust enrichment / unfair competition	Benefit conferred and inequitably retained without payment (elements vary by governing state law)	Restitution or disgorgement of the benefit retained
M&A / earn-out / indemnification (IP-related)	Inaccurate representation or warranty at closing; indemnification trigger under the deal document	Indemnification payment, earn-out adjustment, purchase-price claim

IP Commercial Litigation Matters We Handle

Why Keyhani LLC for IP Commercial Litigation

Keyhani LLC is a litigation-led intellectual property boutique that also handles IP consulting, licensing disputes and negotiation, transactional work, and IP mediation and arbitration. That combination matters in IP commercial litigation specifically, because the strongest position in these disputes usually comes from understanding both the deal document and the underlying IP – not treating the case as a generic contract dispute that happens to mention a patent or copyright.

Founder Darius Keyhani has more than 20 years of intellectual property litigation experience and has served as lead counsel in 80+ federal cases, with Federal Circuit appellate experience and admission to the U.S. Supreme Court bar. Frances Stephenson, a Member of the firm admitted in New York, focuses on patent litigation – claim construction, infringement analysis, and prior art – along with trademark, trade secret, and copyright matters. The firm litigates in federal courts nationwide and for U.S. and international clients, including in Northern New Jersey, the New York metro area, Northern Virginia, and Washington, DC.

IP Commercial Litigation FAQ