Maxwell Goss speaks with Doug Lalone, an engineer and patent attorney with the intellectual property firm Fishman Stewart. Doug tells the story of a very interesting case he handled involving a design patent for a rifle scope. The case involved not only cutting-edge issues in IP law but also intersected with a criminal prosecution. Doug offers insights on dealing with scorched earth litigation tactics and putting together a winning strategy in high-stakes cases.
00:19 – Introduction
01:49 – About Doug Lalone
04:20 – Doug’s involvement with ACG
05:13 – The Leepers rifle scope case
12:41 – Trade dress infringement
16:25 – Functionality and trade dress
22:04 – Resolution of the rifle scope case
24:18 – Doug’s advice for dealing with scorched earth litigators
26:20 – Pleading the fifth in a civil case
30:52 – Where to find Doug Lalone online
31:38 – Sponsor Spotlight: Shaun Fitzpatrick of Fortz Legal Support
Doug LaLone is an engineer, patent attorney, and partner at Fishman Stewart. He also serves as chair of the firm’s Strategic IP Practice Group which counsels portfolio companies, PE, VC and IB firms on intellectual property strategies, due diligence and portfolio management.
Doug works on both the buy and sell side of M&A transactions. He has successfully prosecuted and defended over 100 different Intellectual Property suits in numerous federal and state courts, and appeals before the Sixth Circuit Court of Appeals. His cases have covered patent, trademark, trade secret, unfair competition, domain name, non-compete, and copyright infringement claims. Additionally, Doug has prosecuted hundreds of patent applications on numerous consumer and industrial products for middle market companies and routinely conducts brand clearances and prosecutes trademark applications to help clients protect their Intellectual Property positions.
Doug has served as a judge for the Crain’s Detroit Business M&A Awards and as president of the Association for Corporate Growth (ACG) – Detroit. Doug is a member of the Michigan District Optimist Club and is an active member of Kensington Community Church.