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Frank M. Caprio


Representative Experience

Frank regularly advises government contracting technology companies with respect to issues involving rights in technical data, patent rights, computer software issues, and other matters arising under the FAR and the DFAR.
Served as an arbitrator on a three-arbitrator panel in a three-year arbitration concerning the payment of worldwide software license royalties.
Copyright infringement litigation involving computer software for computational fluid dynamics.
Our firm assists in all domestic and international trademark work, licensing activity, and other IP contractual matters for the Alabama Space Science Exhibit Commission/U.S. Space and Rocket Center, a state governmental entity that operates the famous Space Camp, Aviation Challenge, and other educational programs. We have handled opposition proceedings, conducted regular policing activities, and have helped to create a strategy for selecting the marks and countries for protection. The firm assists in all licensing activity and IP contractual matters, as well as book deals and licensing with well-known national and international partners, and movie and music producers.
Provided professional reports and testimony in Federal Court on issues of trade dress protection, trademark protection, design patent protection, and utility patent protection.
Oral argument at the Alabama Supreme Court in a case concerning the state legislature’s determination of whether a quorum was present for the legitimacy of decades’ worth of votes on legislation.
Oral argument at the Court of Federal Claims in a case brought by the contractor who was not selected for the follow-on government contract.
Copyright infringement concerning a photograph and painting of a famous college sports figure.
Provided a professional witness report on the joint authorship of certain computer software.
Caprio has provided professional reports and testimony in Federal Court as to the meaning of certain patent terms in a patent claim construction hearing (a Markman hearing).
Successfully obtained the release of software source code from escrow on Summary Judgment in a case where the other party denied the occurrence of certain release conditions.
Provided an report and testimony concerning misappropriation of trade secrets and the reasonableness of an award to the defendants of attorney’s fees in excess of $1 million.
Negotiated and drafted contracts between our client and a Satellite Radio provider for the distribution of real-time, site specific, weather information and the display of weather information to aviation, marine, and land-based (vehicles) moving platforms.
Negotiated and drafted a software license agreement for the conversion of a financial institution from one data processing provider and system to another.
Won a trademark opposition proceeding in which the Trademark Trial and Appeal Board stated that the mark, SPACE CAMP, is “famous.”
Copyright infringement dispute concerning the publication of a photographer's photographs beyond the scope of the license agreement between the parties.  Negotiated and achieved settlement on behalf of the client.
Copyright infringement dispute concerning the construction of corporate buildings based on an architect's design initially drafted for another related building and client of the architect.
Draft confidentiality and non-competition agreement for client's alternative energy small engine invention.
Representation of medical device manufacturer defendant in two separate lawsuits in United States District Court, where the plaintiff asserted claims of patent infringement related to four separate patents, interference with non-compete agreements with former plaintiff employees, and ownership over client patents.  Jury verdict for defendant on all counts.
Baron Services is a worldwide provider of real-time, site-specific weather information, Doppler weather radars, satellite radio weather information and geographic depiction. Our services to Baron Services include domestic and international patent prosecution and portfolio management. We also provide trademark prosecution and portfolio management, general intellectual property strategy, licensing, and technology transactions.
Drafted employee confidentiality, non-disclosure and copyright assignment agreement for computer software development.
Advised credit union regarding regulatory issues for establishment of non-credit union finance company/credit union service organization, and regarding ASP, SAS and other vendor contracts for implementation of financial services retail locations.
Successfully defended a UDRP action brought by the University of Arkansas against the owner of the URL, www.razorbacks.com, resulting in the continued ownership and use of the URL.
Responsible for trademark portfolio work for a number of public and private corporations and other entities, including domestic and foreign filings, Opposition Proceedings, licensing efforts and negotiations.
Representation of plaintiff software developer asserting claims of copyright infringement and trade secret misappropriation in United States District Court, related to software sold by former employee. Case was successfully resolved prior to trial.
Assisted clients in dispute over rights to the trademark and trade name of a new sports and energy drink. 
Drafted and negotiated trademark license agreement for socks/leggings and other related apparel.
Drafting and filing of a trademark registration application with the USPTO for the color blue as it is associated with the client's agricultural machinery.