Grant E. Coffield

Overview

Grant Coffield counsels clients on all aspects of intellectual property law, including the preparation and prosecution of patent applications, infringement and validity studies, patentability and right-to-use opinions, litigation support, licensing matters and trademark, trade secret, and copyright issues. His experience extends from the development, maintenance, and enforcement of patent, trademark, copyright, and trade secret rights to their protection in worldwide competition against infringement, misappropriation, deceptive trade practices, and counterfeiting. Grant also provides clients with a full range of patent-related legal services in a variety of technical fields, with an emphasis in the mechanical arts, including U.S. and international patent prosecution, patent opinions, pre-litigation counseling, due diligence of intellectual property assets, and patent licensing.

He has filed and prosecuted hundreds of patent applications in the United States and, through collaboration with hand-picked counsel licensed in numerous jurisdictions throughout the world, including Canada and throughout Europe, South America, and Asia. Grant works very closely with his clients in order to develop an understanding of the unique legal and business challenges they face, recognizing that building a relationship with a client involves much more than just attending to the project at hand.

While his primary area of emphasis is intellectual property law, Grant often functions as outside general counsel to his clients, working directly with C-level executives in viewing the “big picture” of the business, while developing practical and efficient solutions to the challenges and opportunities the company faces, and also constantly looking ahead to evaluate emerging markets and cutting-edge technologies. For instance, for over 15 years (and through the multiple ownership changes), Grant has represented the world’s leading supplier of machinery for the global metal container industry. He originally handled the company’s intellectual property work, but has progressively grown in the role to act as outside general counsel, serving as the central point of contact for all legal issues within the company. His responsibilities range from IP services such as the management of a portfolio of hundreds of patents and numerous trademarks to managing and overseeing other legal matters (handled by a team of Eckert Seamans lawyers) such as the drafting of joint development, supply and vendor agreements, labor and employment issues, and general corporate matters including mergers and acquisitions.

In addition to his dedicated client focused legal practice, Grant is the Business Division Chair at Eckert Seamans, leading a team of approximately 100 attorneys across more than ten offices and ten practice groups.  Grant is additionally a member of the firm’s Executive Committee, in which he supports and guides the firmwide business operations focused on client development, firm strategy, lateral recruiting and professional development for our firmwide attorneys and professional administration.

Representative Matters

• Serves as intellectual property counsel and outside general counsel for a leading supplier of capital equipment, spare parts and service for producers of beverage and food cans; also handled various due diligence and issues relating to the successful sale of the company and routinely handles various technology development, license, sale and supply agreements, among other matters.
• Represents an international electrical and electromechanical component manufacturer for residential and commercial applications in managing the patent portfolio, overseeing a team of patent attorneys that files and prosecutes domestic and international applications in a wide range of technologies, in addition to freedom-to-operate and infringement opinion work.
• Counsels an international tool and die manufacturer and specialty machining company in trademark, patent, litigation and transactional work; has assisted with building the company’s IP portfolio from the ground up by protecting their name, logo, products and slogans.
• Represents one of the largest manufacturer of ventilation products and accessories in North America in connection with a wide variety of intellectual property matters.
• Represents a leading manufacturer of mailboxes in North America in connection with a wide variety of intellectual property matters.
• Has enforced the trademark rights on behalf of the exclusive licensees of professional athletes and organizations.
• Acts as the domestic representative for several foreign law firms, filing and prosecuting U.S. patent and trademark applications on behalf of the foreign agents and their clients.
• Stolle Machinery Company, LLC v. Shu An and Suzhou Slac Precision Equipment Co. Ltd. Case No. 3:10-cv-155 (U.S. District Court for the Southern District of Ohio Western Division). Counsel for plaintiff Stolle Machinery Company, LLC; trade secret misappropriation and copyright infringement litigation; settled.
• Air Vent, Inc. v. Vent Right Corp. Case No. 2:08-cv-146-TFM (U.S. District Court Western District of PA); counsel for plaintiff Air Vent Inc.; patent infringement litigation; handled all aspects of litigation through Early Neutral Evaluation (ENE).
• Stolle Machinery Company, LLC v. Standard Engineering Group, Inc. and Die Components, Inc. Case No. 5:2007-cv-03061 (Ohio Northern District Court); counsel for plaintiff Stolle Machinery Company, LLC; patent infringement litigation; settled.
• Canplas Industries, Ltd., v. Air Vent, Inc. and Marco Wood Products Inc. (d/b/a Handy Home Products) Case No. 1:05- cv-0673 (United States District Court Northern District of Ohio Eastern Division); counsel for defendant Air Vent Inc.; patent infringement litigation; settled.