Marcus R. Chatterton

Marcus R. Chatterton

Balch & Bingham LLP, Partner

Birmingham, Alabama

About About Q&A Select Matters Publications News Speaking Engagements Credentials About Marcus Marcus Chatterton is a tech-minded litigator experienced in intellectual property, social media, smart grid, electronic data, and general technology issues. Marcus represents large and small businesses, inventors, and creative clients in patent, trademark, copyright, and trade secret disputes. Working hard to keep his clients out of court, Marcus often advises on strategies to protect intellectual property, handle large volumes of data from systems like the "smart grid" or automated metering technologies, or to navigate Internet commerce issues and information governance. In court, Marcus is experienced as lead counsel for patent, trademark, and copyright infringement actions in federal court, administrative trials before the Patent Trial and Appeal Board and Trademark Trial and Appeal Board, and in state courts involving unfair competition, trade secrets, state trademark laws, and internet-based torts. Q&A Expand All Collapse All What types of clients do you represent? I usually represent large and small businesses (including regulated entities and international businesses), artists, innovators, and creative minds in matters involving technology and intellectual property. What previous experiences, prior to your work at Balch, influence your practice? I spent almost ten years in the Marine Corps, both during and after college. I served in the Middle East during the earliest stages of the Iraq War. The lessons I learned in the Corps influence my life and my law practice in profound ways. What do you find most exciting about your work? I love the fact that every case and every client is different. I relish the opportunity to learn and overcome new challenges every day. How are you involved in your community? I love to connect on the most local level with my neighbors and my community. I am active in my Rotary Club, in the leadership of my church, and my neighborhood Bible study. I am a Cub Scout leader, and I am often involved in community leadership on issues like school zoning, business development, and local philanthropy. Most of all, I strive to be a great husband to my wife and father to my three young sons. Select Matters Patent Infringement (Federal Court & PTAB): Represented a beverage company in patent infringement litigation filed by a competitor in a matter involving venue transfer and disqualification of opposing counsel; successfully invalidated each of the competitor's patents in inter partes review and post-grant review proceedings before the PTAB (2021) Patent Infringement (Federal Court & PTAB): Represented a manufacturer in a patent infringement action against a larger competitor that copied a key innovation; successfully avoided the institution of inter partes review after the competitor petitioned the PTAB to invalidate the manufacturer's patents (PTAB 2020; litigation ongoing) Patent Counseling: Routinely advised clients in the successful avoidance of litigation and/or modification of products to "design around" existing patents. Examples include: methods for removing heavy metals from industrial wastewater, design of outdoor cooking equipment, prison door locking systems, and electricity distribution automation systems. Patent Reexamination: Represented a physician / small-business owner in a petition before the PTAB to successfully invalidate a patent issued to a competitor for core technology that is central to both businesses. (2016) Patent Infringement: Represented a regulated utility in the defense of a coordinated attack by a "patent troll" focused on a core industry technology. (2014) Copyright Infringement: Successfully represented an artist in filing a series of copyright enforcement actions involving overseas copying and domestic distribution of copyrighted artwork on media ranging from housewares to handbags to decorative glazed tiles. (2014) Copyright Infringement: Successfully defended a developer accused of stealing a competitor's copyrighted house plans by obtaining a summary judgment declaring that the developer's plans did not infringe the competitor's copyright. (2013) Copyright Infringement: Successfully defended a professional theater company against claims of copyright infringement that arose from a licensing dispute between the playwright and a production company. (2012) Trademark Infringement: Representing a law firm accused by a competitor of infringing registered trademarks both in direct advertising and keyword advertising (ongoing) Trademark Infringement: Representing a medical weight loss clinic accused of infringing the registered trademark of a competitor (ongoing) Trademark Opposition / Cancelation: Represented clients including large and small businesses, restaurants, universities, and industrial entities before the Trademark Trial and Appeal Board to defend and prosecute oppositions to pending applications to register trademarks or to cancel existing trademark registrations. Internet – Defamation: Filed state court "John Doe" litigation on behalf of a restaurant against anonymous message board user publishing defamatory information; successfully identified the defendant, resulting in a confidential settlement. (2019) Internet – Defamation: Intervened in state court litigation to halt the distribution of "revenge pornography" (2018) Internet – Fraud: Represented companies and individuals by filing or intervening in state court actions related to phishing and bank fraud; advised and represented clients in "takedown" actions on social media other online forums; and successfully secured the transfer of fraudulently-obtained internet domains through arbitration before the World Intellectual Property Organization ("WIPO") and other forums authorized under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP") Product Liability / Counterfeiting: Successfully defended a manufacturer in the exercise industry in a product liability matter where the defense centered on determining, and proving, that the product at issue was a counterfeit reproduction of the client's product, resulting in a summary judgment that the client was not liable under any theory. (2010) Trade Secret / Breach of Contract: Successfully brought suit on behalf of a university that developed technology (later patented) for training specialized working dogs that was misappropriated by a contractor, resulting in a stipulated judgment against the contractor on the eve of trial. (2014) Technology / Qui Tam: Defended a regulated entity against claims under the U.S. False Claims Act relating to a key business technology. (2011) FDA / USDA: Represented a botanical extract company in a series of cases involving allegations of product contamination, mislabeling, and adulteration in circumstances that required detail chemical testing and analysis and application of federal regulations to the results of that analysis. (2016) FDA: Represented a supplement manufacturer in responding to FDA warning letters involving allegedly adulterated and mislabeled products, successfully avoiding an FDA enforcement action. (2020) Casualty / Business Technology: Represented a regulated entity in a major wrongful death lawsuit that involved the use of core technology and previously-unavailable electronic data to dispute liability. (2012) Publications View More News View More Speaking Engagements View More Credentials Education The University of Alabama School of Law, J.D., 2007, magna cum laude; Order of the Barristers; National Trial Team Auburn University, B.S., 2000, Environmental Science Courts U.S. District Court, Northern District of Alabama, 2007 U.S. District Court, Middle District of Alabama, 2008 U.S. District Court, Southern District of Alabama, 2008 Alabama State Courts, 2007 Bar Admissions Alabama, 2007 Professional Affiliations American Bar Association Alabama State Bar Awards & Accolades The Best Lawyers in America, Commercial Litigation Mid-South Super Lawyers, Rising Star, 2014 - present Birmingham Magazine, Top Attorney, 2018 Community Involvement Rotary Club of Shades Valley, president-elect Bluff Park United Methodist Church, past chair of the Board of Stewards, Sunday School Leader

Experience

Balch & Bingham LLP Logo
Balch & Bingham LLP
Partner
∼ Present
Firm Prospects attorney tracking launched in 2015/2016. Prior employment history currently unavailable.

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Experienced Products Liability Attorney
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