Philip J. Foret

Chair, Intellectual Property

pforet@stradley.com

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Philip Foret

Overview

Philip Foret works closely with clients to develop strategies aligned with their business goals across the full range of intellectual property matters, including IP counseling and opinions, freedom-to-operate studies, due diligence, worldwide portfolio development, trademark clearance and dispute resolution and copyrights.

Phil’s experience covers a range of technologies, including information technology; telecommunications; smartphone systems and technology; software; computer security; data systems; control systems for industrial processes; blockchain; distributed ledger technology; and artificial intelligence related to computer vision, financial services (fintech), chemical processes and equipment, medical devices, product manufacturing processes and systems, food science, consumer and pet products, pharmaceuticals, biotechnology, stem cell technology, and sporting goods and apparel.

In addition to his deep IP counseling practice, Phil has experience in IP litigation, representing clients in patent infringement cases in federal courts. He has also successfully argued domain name disputes before the National Arbitration Forum and has resolved trademark disputes through administrative proceedings before the Trademark Trial and Appeal Board.

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Results

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Representative Matters

  • represented Fountain Life, an advanced diagnostics and preventative health company, in its acquisition of LifeOmic
  • represented Pacific Life in the sale of its third‐party credit asset management firm, Pacific Asset Management LLC, which at closing managed over $20 billion, to Aristotle Capital Management LLC
  • represented Berkshire Asset Management (BAM) in its sale of a minority stake to iM Global Partner, a leading global asset management network
  • worked on deal team representing UMB Financial in the sale of its institutional investment management subsidiary, Scout Investments, to Carillon Tower Advisors, a unit of Raymond James Financial, for $172.5 million in cash
  • reached pre-discovery settlements of nuisance patent infringement suits brought by patent trolls in the U.S. District Court for the Eastern District of Texas against a telecommunications company and the Southern District of New York against a secure HIPAA-compliant online therapy platform
  • represented a banking institution in defense of a copyright infringement lawsuit brought in the Eastern District of Pennsylvania
  • reached a pre-discovery settlement for a hotel services client in enforcing branding rights in a federal trademark infringement lawsuit brought in the Southern District of Florida
  • developed a comprehensive domestic and foreign brand protection and enforcement strategy for a vertically integrated energy company
  • conducted several freedom-to-operate, non-infringement and patentability studies during research and development of numerous pet and consumer products and manufacturing systems in a competitive landscape and developed a successful patent strategy to protect numerous commercial embodiments, manufacturing systems and related white space
  • drafted and negotiated numerous software licenses, software-as-a-service (SaaS) agreements and technology development agreements for fintech, banking technology and e-commerce clients
  • acquired numerous misappropriated domain names for clients using the Uniform Domain Name Dispute Resolution Policy
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Credentials

Bar Admissions
  • Pennsylvania
  • U.S. Patent and Trademark Office
Court Admissions
  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Western District of Pennsylvania
Education
  • J.D., Duquesne University School of Law
  • M.S., Duquesne University
  • B.A., Franciscan University
Memberships

  • American Intellectual Property Law Association
  • International Trademark Association
  • Board of Directors and Treasurer, Great Valley School District
  • Board of Directors (past), Chester County School Authority
  • Sons of the American Revolution

Publications

In The Community

Phil serves on the Planning Commission for Willistown Township, Pennsylvania. He has previously served as treasurer and on the board of directors of the Great Valley School District and on the board of directors for the Chester County School Authority.
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