Intellectual Property

Today’s knowledge economy makes intellectual property assets—patents, trademarks, copyrights, trade secrets, data and business methods—prime currency. As a strategic partner offering a full panoply of intellectual property services, Brownstein Hyatt Farber Schreck partners with you each step of the process in effectively managing these assets to maximize your business goals. Whether it is recognizing and guarding against data privacy concerns, consulting on initial product clearance, developing, identifying and protecting innovation, or fighting for and defining boundaries for intellectual capital in an era of increasing technological capability and legal complexity, our team of skilled professionals is there by your side.

We are scientists and engineers, former in-house counsel, marketing and advertising consultants, certified privacy consultants, and former executives from technology, bioscience, media and engineering companies who take a forward-looking, broad-based approach to the management, analysis, protection and defense of your intellectual property.

Our diverse team procures, maintains and protects patents, trademarks, trade dress, copyrights and trade secrets at local, national and international levels. We counsel clients on technology, data privacy and brand matters and build comprehensive and cohesive intellectual property portfolios and strategies. We conduct audits, prepare and review licensing agreements, support joint ventures, and analyze corporate transactions. We guide product development from initial stages of research through regulatory approval, and research and prepare freedom to practice assessments and invalidity opinions, and often provide post-grant strategic counseling.

When your intellectual property assets become the subject of adversarial proceedings, either in court or before the United States Patent and Trademark Office, our team handles complex patent infringement litigation, Patent Trial and Appeal Board (PTAB) inter partes reviews, Trademark Trial and Appeal Board (TTAB) oppositions and cancellations, trade secret injunctions, and product seizures. We also work with foreign counsel to coordinate parallel procedures outside the United States. In addition, we work closely with our Business & Corporate Advisory, Mergers & Acquisitions and Private Equity groups in due diligence and document preparation for merger and acquisition deals that have an intellectual property element.

Michael D. Rounds 775.398.3800

Chambers USA, 2017

Colorado: Intellectual Property

What the team is known for: A diverse IP offering that is well known for work relating to the commercialization of IP assets both within the USA and globally. Represents clients from sectors such as aerospace, healthcare and software in a range of trademark, copyright and patent matters.

Strengths: The team is described as "technically savvy" and "very practical."


Representative Matters
  • Served as intellectual property counsel to Encore Consumer Capital, a San Francisco-based private equity investment firm focused on the consumer products industry, in its acquisition of LORAC cosmetics. LORAC is a developer and marketer of branded, prestige color cosmetics that are distributed through specialty beauty retailers, department stores and online.

  • Responsible for managing intellectual property and data privacy for a $250 million general contracting and engineering firm.

  • Responsible for the management of the intellectual property portfolio for a Denver-based provider of digital signage and other visual software solutions with sales exceeding $75 million.

  • Primary outside intellectual property counsel for a national software company that provides automated solutions for addressable advertising and digital advertising, builds repositories of advertising data, and creates aggregated unwired advertising networks for the cable and broadcast industry.

  • Responsible for the management of the intellectual property portfolio for a $100 million nutraceutical company specializing in supplements for the exercise and health industries.

  • Responsible for the management of the intellectual property portfolio for a $100 million nutraceutical company specializing in supplements for the exercise and health industries.

  • Served as intellectual property counsel to Encore Consumer Capital in its investment in Thanasi Foods, the Boulder, Colorado-based company that owns the BIGS Seeds and Duke’s Smoked Meats brands.

  • Represent Brownie Brittle, LLC, a snack foods company, in connection with its brand management and enforcement efforts, including social media enforcement.

  • Serve as intellectual property counsel to Yardi Systems, Inc., a real estate software and professional services company, in connection with its domestic and foreign brand management and enforcement, and copyright protection and enforcement efforts.

  • Represented KSL Capital Partners in its acquisition of a controlling interest in Miraval Resort & Spa, a luxury wellness spa in Tucson, Arizona, and its brand. Additionally, the firm negotiated joint venture/partnership agreement with the prior owner, and restructured Miraval as part of the acquisition.

  • Counsel for software provider in a significant multi-state, multi-patent infringement litigation. Case settled favorably after Requests for Reexamination prepared.

  • Represented Encore Consumer Capital and other owners in the sale of Zuke’s LLC to Nestlé Purina PetCare Company.

  • Primary outside intellectual property counsel for restaurant and world famous chef regarding intellectual property and employment issues. Recently litigated potential TTAB opposition for one of the registered marks.

  • Represented Fortune 100 bank in trade secret action in D. Kan regarding Agribusiness suppliers and lenders. After extensive briefing and discovery, helped achieve positive settlement on the eve of preliminary injunction hearing.

  • Led a multidisciplinary health care, corporate, real estate, tax and intellectual property team in providing counsel to a start-up health insurance company and participant in the Consumer Operated and Oriented Plan (CO-OP) program created under the Affordable Care Act.

  • Represented a healthcare company in creating innovative new joint venture ownership structure for in vitro fertilization labs, leveraging best of breed technologies and best practices through licensing and management systems. Researched and created innovative corporate and business structure achieving business priorities while addressing competing requirements in areas of corporate, tax, insurance, consumer finance, and health care, including restrictions on corporate practice of medicine, fee splitting, self-referral, and anti-kickback.

  • Represented the TriZetto Group, Inc. in its acquisition of Healthcare Productivity Automation, LLC, a Franklin, Tennessee based company that employs a highly advanced, cloud-based claims workflow tool, Health Mason.

  • Represented client company and employees in connection with trade secret and unfair competition claims. Successfully compelled arbitration of virtually all claims and obtained stay of entire action. Forced arbitration in more favorable jurisdiction for our clients. Secured settlement with no monetary payout by our clients and favorable covenants in favor of our clients.

  • Served as lead counsel for Flintco, LLC and Flintco West, Inc. in a state level qui tam action brought regarding alleged fraud in the procurement and billing of the $60 million dollar renovation of the University of New Mexico Arena (the "Pit"). In what may be the first state level false claims act case to be tried to a jury, Eric and his team were able to get a complete defense verdict on all claims.

  • Served as lead counsel to Defiant Technologies, Inc. in claims that Defiant undertook to unlawfully obtain licensing of certain intellectual property technology from Sandia National Laboratory, thereby depriving the Plaintiff of the ability to continue its economic development of similar technology. After obtaining complete summary judgment on all of Plaintiff's claims against Defiant, Eric tried a claim of malicious abuse of process against the original Plaintiff to a jury in Federal Court in Santa Fe, New Mexico, asserting that Plaintiff brought suit against Defiant to wrongfully prevent Defiant from gaining a competitive advantage in the market. As a result of the trial, Eric obtained judgment against the Plaintiff for $2 million and was able to collect same.

  • Served as special Nevada counsel to Tropicana Entertainment, Inc. and its subsidiaries and issued a legal opinion in connection with the refinancing of the company's existing term and revolving credit facilities.

  • Represented Barden Nevada Gaming, LLC in the $18,000,000 sale, representing 100% of the equity, of the Fitzgerald's Casino and Hotel in Las Vegas.

  • Assisted Vail Resorts, Inc. and its subsidiary Mountain News Corporation, publisher of OnTheSnow the most visited snowsports website in the world, with intellectual property issues associated with the acquisition of, the second most visited ski report website in North America.

  • Served as Nevada gaming, corporate, real estate and intellectual property counsel in connection with Station Casinos, Inc. and its operating subsidiaries' emergence from bankruptcy. Brownstein also handled the restructuring, including both asset and equity transfers and new organizational documents with the new owners, and new or amended credit facilities.

  • Served as lead counsel to Treasure Island, LLC in connection with the refinancing of its existing credit facility.

  • Represented a hotel property owner when an employee was wrongly accused of certain bad actions which were posted on an anonymous website. This accusation urged web users to boycott Brownstein's client's properties. The firm was successful in shutting down the defamatory website.

  • Negotiated a complex trademark settlement and consent agreement between the City of Las Vegas and Boyd Gaming Corporation regarding the use of the famous Fremont mark in connection with the City's downtown redevelopment district.

  • Served as counsel to the Flamingo Las Vegas Hotel and Casino in negotiation of the intellectual property and other rights necessary to develop a Margaritaville-themed gaming area at the Flamingo. This area is approximately 15,000 square feet and includes 22 table games and 220 slot machines.

  • Assisted Graham Packaging Company, L.P. in a $568 million strategic acquisition of another manufacturer and supplier. In the transaction, Graham Packaging Company acquired all of the limited partnership units of the target company from the company's limited partners and all of the stock of each of the company's three corporate general partners from their stockholders. A manufacturer and supplier of technology-based, customized blow molded plastic containers for the branded food and beverage, household, personal care/specialty and automotive lubricants product categories, Graham Packaging Company is a portfolio company of Blackstone Capital Group.

  • Represented Vail Resorts, Inc. in its acquisition of Mountain News Corporation (MNC), which operates the world's most visited online snow sports portal, Mountain News Corporation is the top provider of snow reports to more than 1,200 web sites throughout the world, including approximately 400 news media websites.

  • Served as intellectual property counsel to Strategic Analytics Inc., a global software and services company in the retail lending industry, in connection with the sale of all of the outstanding stock of the company.

  • Assisted Aion Partners LLC in its corporate structuring and private placement of limited liability company units to raise equity for bringing its technology to market. Brownstein also secured the intellectual property rights for Aion to sell its proprietary, green technology that minimizes the occurrence of hospital-acquired secondary infections.

  • Represented Tropicana Atlantic City Corp. in its online services agreement with Gamesys Limited.

  • Represented Station Casinos in a dispute over unauthorized third-party use of the trade dress and trademarks used in their distinctive Red Rock Casino Resort & Spa striped design.

  • Negotiated settlement of a trademark infringement lawsuit between two Las Vegas golf courses. This matter included alleged counterfeiting, service mark infringement, dilution, false advertising, false designation of origin and unfair competition.

  • Represented an industrial manufacturer as the plaintiff in trade secret litigation against former employees who were hired by a direct competitor.

  • Represented Icahn Associates Corp. in the $1.3 billion sale of its membership interests in American Casino and Entertainment Properties LLC, owner of the Stratosphere Hotel in Las Vegas and other gaming properties. The sale was to ACEP Holdings, LLC, an Affiliate of Whitehall Street Global Real Estate Limited Partnership 2007, the affiliated private equity group of Goldman Sachs.

  • Represented Meteorcomm LLC, a global, wireless telecommunications company providing data communications solutions and services, in general corporate and intellectual property licensing transactions.

  • Represented Wolf Creek Golf Club in a trademark infringement suit against a neighboring real estate developer attempting to capitalize on the goodwill associated with the Wolf Creek trademark. Mr. Firth prohibited the developer's use of the Hidden Wolf name, other Wolf marks and prominent photos of the client's golf course.

News & Events

Meet The Team

Michael D. Rounds Shareholder T 775.398.3800
S. Craig Hemenway Shareholder T 303.223.1104
Paul J. Prendergast, Ph.D. Shareholder T 303.223.1194
Benno M. Guggenheimer Shareholder T 303.223.1202
Erin E. Grolle Shareholder T 702.464.7087
David S. Atkinson Of Counsel T 303.223.1105
Elissa A. Asaro Patent Agent T 303.223.1333
Margaret Martinez Intellectual Property Practice Group Manager T 303.223.1453
Peter M. Jarvis Patent Agent T 303.223.1302
Tamala Jonas Patent Agent T 303.223.1483
Randolph E. Treece, Ph.D. Patent Agent T 303.223.1362
Daniel Ackerman Shareholder T 303.223.1199
Peter H. Ajemian Shareholder T 702.464.7003
Andrew J. Freyer Associate T 303.223.1148
Martha L. Fitzgerald Shareholder T 303.223.1472
Matthew D. Francis Shareholder T 775.324.4100
Ryan J. Cudnik Of Counsel T 775.398.3813
Amanda K. Houseal Associate T 303.223.1247
Van Aaron Hughes Of Counsel T 303.223.1253
Andrea M. LaFrance Associate T 303.223.1182
Cassidy A. Merriam Associate T 303.223.1248
Esteban M. Morin Associate T 303.223.1275
Gregory W. Osterloth Of Counsel T 303.223.1273
Laura Bielinski Langberg Of Counsel T 702.464.7046
Peter J. Nagle Associate T 303.223.1180
Benjamin W. Ryan Associate T 303.223.1262
Guy B. Sereff Associate T 303.223.1265
Samantha J. Reviglio Associate T 775.398.3808
Timothy R. Schulte Of Counsel T 303.223.1240
Adam Yowell Of Counsel T 775.398.3803
Arthur Zorio Shareholder T 775.398.3812
Lindsey A. Williams Associate T 702.464.7056
Dawn R. Sullivan Paralegal T 303.223.1404
Julie Obermeyer Paralegal T 702.464.7079
Jeff Tillison Paralegal T 775.398.3819
Kara Kenfield Paralegal T 303.223.1485
Nancy Lindsley Paralegal T 775.398.3802
Shannon M. Kline Paralegal T 702.464.7088
Stephanie Klepp Paralegal T 303.223.1395
Valerie H. Brown Paralegal T 303.223.1318