Market-moving victories. Litigation

In the Matter of Certain Electrical Connectors and Cages, Components Thereof, and Products Containing the Same No. 337-TA-1241

We represented Amphenol in a complex, five-patent, investigation involving computer technology against a competitor company. The dispute involves multiple parallel proceedings before the PTAB and in other jurisdictions. We prevailed in obtaining both an exclusion order and a cease and desist order.

Teashot v. Keurig

Research Frontiers v. E Ink & Advanced eScreens v. E Ink

We defended our clients E Ink, Barnes & Noble, Kobo and Sony in lawsuits filed in the District of Delaware in which the plaintiff sought damages of billions of dollars in eReader sales. E Ink is the world’s leading innovator of electronic paper display technology. E Ink’s technology enables eReaders, such as Amazon’s Kindle, Barnes & Noble’s Nook, Kobo’s Glo, and Sony’s Reader. We obtained claim constructions under which the plaintiff conceded there is no infringement by E Ink’s electronic paper or the accused eReaders. The Federal Circuit affirmed the victory.

Warrior Sports v. Maverik

We defended our client Maverik against allegations of design patent infringement in a lawsuit filed in the Eastern District of Michigan. Maverik is a leading manufacturer of lacrosse equipment. The design patent at issue relates to lacrosse heads.

Grant Street Group v. DebtX

We secured a quick resolution with exceptionally favorable terms for our client DebtX in its patent dispute with Grant Street Group.  Grant Street Group (formerly known as Muniauction) has a history of aggressively asserting its patents. The case illustrates the value of coordinating District Court litigation with Patent Office administrative challenges. 

Athenahealth v. ADP AdvancedMD, Inc.

Represented athenahealth, Inc. (Athena) in litigation against ADP asserting Athena’s patent directed to its core technology.  The case required multiple source code experts and ADP identified a broad swathe of prior art. After securing key claim constructions which foreclosed several of ADP’s non-infringement and invalidity positions, the case reached a client-favorable settlement.

Kantar v. TRA (TiVo)

Successfully defended WPP plc, the world’s largest advertising company, and its subsidiaries in a suit involving three patents, 24 trade secrets, four separate contracts, fiduciary duty claims, and a $120 million damages claim. We eliminated all claims through summary judgment and in limine motions.

Goldfarb v. W.L. Gore & Associates

After winning the one of the most contested and longest running patent interferences in Patent Office history, we were part of the litigation team that represented Goldfarb and Bard Peripheral Vascular in their subsequent patent infringement suit against Gore over its enormously valuable vascular grafts.  The judgment against Gore, affirmed in three Federal Circuit decisions, now totals over $1 billion.

Red v. Sony & Sony v. Red.

In a series of patent cases concerning high-end digital cinema cameras, we defended Sony against two patents asserted by a competitor and filed a countersuit asserting seven Sony patents. Following Sony’s countersuit, the parties agreed to dismiss both cases without prejudice.  

ADT v. Sony Electronics Inc.

Representing our client Sony in the Eastern District of Texas, we secured summary judgment that one asserted patent was invalid and a favorable claim construction for the second asserted patent. Following these victories, the case settled favorably.

CIEA v. The Jackson Laboratory

We secured summary judgment of no patent infringement for our client The Jackson Laboratory, which had been accused of infringing a patent on a transgenic mouse. This pioneering case turned on a novel question of claim construction, namely the proper interpretation of mouse nomenclature in patent claims. After securing a favorable claim construction from the court, the parties stipulated that there was no literal patent infringement by Jackson’s accused mouse strain, and we established by summary judgment that the Jackson mice did not infringe under the doctrine of equivalents.

Keurig v. Kraft

Our client, Keurig, sued Kraft Foods for infringement of a Keurig patent directed to a type of cartridge for use in single-serve coffee brewers. We successfully opposed Kraft’s attempt to obtain summary judgment of patent invalidity and non-infringement, and we prepared the case for trial.  With just a week remaining before trial and significant pre-trial evidentiary motions pending before the Court, Kraft agreed to pay Keurig a lump sum of $17M for a limited, nonexclusive license.

Diomed v. AngioDynamics & Vascular Solutions

On behalf of medical device client Diomed, won largest Massachusetts patent infringement verdict of 2007. The jury’s award of $12.46 million was increased post-verdict to $14.7 million, and a permanent injunction was entered against defendants. Prior to jury trial, we secured summary judgment that Diomed’s patent was valid over eight separate prior art references and an inequitable conduct challenge.

In re Certain Point-to-Point Network Communication Devices and Products Containing the Same

In re Certain Consumer Electronics and Display Devices and Products Containing Same

We defended Sony in the International Trade Commission against a non-practicing entity seeking to monetize patents originally owned by Silicon Graphics. The accused products spanned a wide range of technologies including graphic processing units (GPUs), central processing units (CPUs), and liquid crystal displays (LCDs). Out of over ten summary determination motions collectively filed by the several respondents in the investigation, ours was the only one that the ITC Staff Attorney recommended the Administrative Law Judge grant. The investigation settled shortly thereafter on very favorable terms for Sony.

In the Matter of Certain Antivenom Compositions and Products Containing the Same

Wolf Greenfield secured a favorable settlement for our long-time client, BTG plc, manufacturer of CroFab® rattlesnake antivenom, in a complex patent infringement investigation before the International Trade Commission (ITC). BTG filed a complaint with the ITC asserting that several foreign biotechnology companies and their U.S. partners had begun to violate BTG’s hard-won patent rights by importing and selling antibody-based snake antivenoms into the U.S. Utilizing a multidisciplinary legal and technical strategy, our team secured a string of pre-trial victories, including a favorable claim construction decision. We also achieved success on several key discovery motions, including compelling critical discovery from the defendants while at the same time defeating over a dozen different procedural and substantive motions that the defendants filed, including several motions for summary judgment. These and many other successes positioned BTG favorably for settlement negotiations on the eve of trial. As a result, BTG negotiated a resolution that prevented the accused infringers from entering the market for a period of several years and required royalty payments from that point until BTG’s patent expired.

In the Matter of Certain Liquid Crystal Display Devices, Including Monitors, Televisions, and Modules, and Components Thereof No. 337-TA-741/749

The International Trade Commission issued a final ruling in favor of our client, MStar Semiconductor, Inc., in a case brought by Thomson Licensing. The Commission found no infringement by either MStar’s scaler chips, or the LCD products, sold by MStar’s customers, that incorporate those chips. The complainant, Thomson Licensing, had sought to exclude from importation a significant proportion of the LCD products imported into the United States.

Uniloc USA, Inc. v. Picis, Inc.

We successfully represented Picis, Inc., Quadramed Corporation, and N. Harris Computer Corporation in a suit filed against multiple defendants by Uniloc USA, Inc., Uniloc Luxembourg S.A. in the Eastern District of Texas, and subsequent appeal to the Federal Circuit. At the district court, the defendants moved to dismiss, asserting that Uniloc’s patents were patent-ineligible under Section 101. The lower court judge ruled in the defendants’ favor and invalidated all the claims, an unusual result in this district. Uniloc then appealed to the Federal Circuit, which issued a summary affirmance, upholding the district court’s invalidation of all claims of both Uniloc patents. This result was a complete win for our clients, achieved at the very outset of the case.

In the Matter of Certain Capacitive Touch-Controlled Mobile Devices, Computer, and Components Thereof No. 337-TA-1193

In this investigation, our team represented Sony against Neodron Ltd. (an NPE represented by the Russ August team). Neodron accused Sony smartphones of infringing patents previously held by Microchip (i.e., the alleged source of domestic industry both in 1193 and the current case). Working together with counsel for other respondents in a joint defense group, we developed close relationships with the ITC staff attorneys (including now-ALJ Bhattacharyya) and we successfully positioned the case to reach a favorable settlement shortly after the close of fact discovery and the start of expert discovery. We gained significant background concerning Microchip and its relationship with Atlantic IP/Magnetar.

Under the America Invents Act (AIA), interferences will be phased out in the coming years; however, they are still a viable alternative for patents filed before March 16, 2013. For information on our other post grant services, please see our Post-Grant Proceedings page.

Cooper v. Goldfarb

Regents of the University of California v. University of Iowa Research Foundation

In this patent interference involving a client’s core biotechnology IP, we sought dismissal of the interference (provoked by a competitor) for failure to meet statutory requirements. We won a dismissal that not only preserved our client’s valuable patent rights, but also significantly expanded the existing law and provided additional protection to all patent holders by restricting the ability of patent applicants to provoke an interference against an issued patent.

Raz v. Krieg

We represented the prevailing inventor in two related patent interferences regarding patent applications for methods of treating asthma. In the first interference, we prevailed in the preliminary motions period, and the other side appealed. During the appeal, the other side abandoned the appeal. In the second interference, the other side conceded and requested that judgment be entered in our favor.

Massachusetts Institute of Technology v. Catalyst Assets

Bestfoods v. Barber Foods

In this case involving food processing technology, we represented the applicant who discovered a former collaborator had filed for, and had obtained, a patent on subject matter our client believed was derived from them. We developed a strategy that caused the patentee to concede the interference, resulting in the collaborator’s patent being cancelled and allowing our client to obtain a patent on that subject matter.

Landers v. Sapolsky

Successfully represented Massachusetts Institute of Technology in an interference with respect to methods for detecting genetic defects. We prevailed on §112 grounds as Sapolsky’s claims were not supported because they were broader in scope than the method disclosed in the specification.

Bern v. Burton

Bridgewater Candle v. Yankee Candle

This case has become one of the leading trademark, trade dress, and copyright infringement cases in the First Circuit. We represented Bridgewater Candle against industry leader Yankee Candle, represented by one of the largest intellectual property firms in the world. We prevailed on all issues both in trial court and again before First Circuit Court of Appeals and were awarded a seven-figure sum in attorneys’ fees and costs.

Perfection Fence v. Fiber Composites

We represented Perfection Fence in an action over the marks PERFECTION® and PERFECTION FENCE® for fences and related products. After we secured a preliminary injunction forcing defendant to stop using the marks, the case settled on confidential terms favorable to our client.

General Healthcare v. Qashat

In this trademark battle over rights to a mark for a consumer product, we won summary judgment that our client properly obtained rights abandoned by third party and plaintiff had failed to properly secure U.S. trademark rights. We successfully defended this judgment before the First Circuit Court of Appeals.

Tootsie Roll v. Sathers

We successfully obtained a temporary restraining order against a bulk purchaser selling candy with wrappers that infringed on the trade dress of our client Tootsie Roll’s wrappers. The bulk purchaser had to recall hundreds of thousands of dollars worth of candy and destroy the wrappers. We later secured a permanent injunction.

Nabisco v. Tootsie Roll

Nabisco sued our client, Tootsie Roll, in the Southern District of New York over Tootsie Roll’s red pennant trademark. After a full trial, but before judgment, the case settled with Nabisco agreeing to drop its claims in exchange for our client’s adoption of its current logo, a brown rectangle with the word ‘TOOTSIE’ on its face. The logo was well received as an improvement of what had been used before, since it was more directly relevant to the famous shape of Tootsie Rolls.

Paramount v. Venture Tape

We represented Venture Tape in a suit brought by Paramount on its KLINGON mark from Star Trek. Our client used CLINGON in relation to optical masks for manufacturing progressive lenses. We defeated a preliminary injunction motion by Paramount, and the case settled shortly thereafter on favorable terms that allowed our client to continue using its mark.

American Century Home Fabrics v. Ashley Furniture Industries

OnAirWare v. MacroMedia

We secured summary judgment that our client was a co-author of the copyrighted work in dispute, and thus could not be liable for copyright infringement. The other counts in the case were dismissed pursuant to a favorable confidential settlement.

Kantar v. TRA (TiVo)

Successfully defended WPP plc, the world’s largest advertising company, and its subsidiaries in a suit involving three patents, 24 trade secrets, four separate contracts, fiduciary duty claims, and a $120 million damages claim. We eliminated all claims through summary judgment and in limine motions.

Foster-Miller v. Babcock & Wilcox

We won the largest trade secrets jury verdict in Massachusetts history, in a case relating to nuclear power reactor technology. We successfully defended this verdict before the First Circuit Court of Appeals.

Karol v. Burton

We successfully defended a major patent and trade secret case brought against Burton. First, we secured transfer of the case from Colorado to Burton’s home court in Vermont. We then obtained summary judgment that four of the five asserted patents were invalid, and forced plaintiff to withdraw seven of the eight trade secrets underlying his trade secret allegation. Following these results, the case settled on very favorable terms.

First National Bank of Omaha v. Trans Union Corporation

One of our litigators won a $23.7M jury verdict against a national credit reporting company for misuse of confidential computerized customer information.

BlueChip v. HCA

We represented software company, BlueChip Technologies, Ltd., against a branch of HCA, Inc., one of the world’s largest healthcare corporations. We obtained a finding of likelihood of success on the merits in a hotly-contested preliminary injunction battle. That ruling led to a very lucrative confidential settlement for our client.

Software licensing settlement

A major consumer software provider came to us for a second opinion eight weeks before trial on a $100 million claim. We identified to in-house counsel a previously undiscovered and potentially dispositive issue. Based on our analysis and a resulting motion, we negotiated a favorable confidential settlement for our client.

Burton v. Vans

We represented snowboard equipment manufacturer Burton in a California declaratory judgment action brought by Vans, asserting a Burton patent was invalid and not infringed. We won dismissal of that case, and filed a separate lawsuit against Vans in Vermont. Vans ultimately agreed to take a license to the patent on terms favorable to Burton.

Imperial Credit Industries, Inc. v. Steadfast Insurance Company

One of our litigators recovered $12.5 million settlement for bad faith insurance litigation in the Northern District of Illinois.

Williams v. Poulos

One of our litigators secured a permanent injunction and attorney fees against a former federal bankruptcy judge and others for illegal use of wiretap evidence in a RICO and securities fraud case.

We represent clients under Uniform Dispute Resolution Policy (UDRP) domain name arbitration process. In addition, Michael Albert serves as a UDRP arbitrator and has arbitrated over 85 cases for World Intellectual Property Organization and National Arbitration Forum.

Aro Manufacturing v. Convertible Top Replacement Co

We represented the winning party in this seminal U.S. Supreme Court case on the repair doctrine. The Supreme Court held that purchasers of cars with a patented convertible top – the combination of fabric and a supporting structure – did not infringe the patent when replacing worn fabric. The case was before the Supreme Court twice, resulting in two decisions in our client’s favor.

O2 Micro International, Ltd. v. Beyond Innovation Technology Co., Ltd

One of our litigators defended a semiconductor manufacturer in a jury trial in Marshall, TX, resulting in the plaintiff’s abandonment of its $120 million damage claim and defense judgments as a matter of law on direct and contributory infringement claims (inducement infringement verdict reversed on appeal). 

Vitronics v. Conceptronic

We won this landmark case on the types of evidence courts may consider for claim construction. The reasoning from this case was later upheld and quoted extensively by the Federal Circuit in its en banc decision in Phillips v. AWH, a leading case on claim construction.

State Street Bank v. Signature Financial

We represented the winning party in this leading Federal Circuit case establishing the right to business method patents.

Unette Corp. v. Unit Pack Co

We represented the prevailing party in this seminal 1985 case dealing with “point of novelty” issue in design patents. We prevailed again on appeal to the Federal Circuit.

In the Matter of Certain Portable Electronic Devices and Components Thereof No. 337-TA-994

We succeeded in obtaining the first-ever victory on unpatentability in a 100-day proceeding for all joint defense respondent's major electronics companies (e.g. Sony, HTC, LG, Samsung, etc.), securing a ruling from the ITC that the asserted patent was invalid under 35 U.S.C. § 101. We also led the joint defense group effort to secure a claim construction under which there was no infringement. These successful decisions were affirmed by the Federal Circuit.

U.S. International Trade Commission Investigation Nos. 1012, 1076, and 1012e

We represented Sony as a respondent in these multi-patent investigations (and redesign proceedings before CBP) brought by key competitor Fujifilm regarding computer storage technology. In the first investigation (1012), our team forced Fujifilm to dismiss one of its six patents after we identified contrary assertions that it made in a related Japanese litigation. We tried the case and ultimately prevailed on four out of the five remaining asserted patents, leaving Fujifilm with limited remedial orders based on a single patent that expires significantly earlier than any of the other asserted patents and for which Sony developed a redesign. In the second investigation (1076), we similarly forced the pre-trial dismissal of one of five asserted patents and prevailed at trial regarding the patents asserted against Sony’s newest generation of products and technology. In the third enforcement investigation (1012e), we succeeded in having the ALJ reject nearly every theory pursued by Fujifilm and in assessing a penalty less than 2% of what Fujifilm requested.

In the Matter of Certain Toner Cartridges and Components Thereof Inv. No. ITC-337-TA-1174

We represented Aster Graphics (a printer cartridge manufacturer) in an ITC suit launched by Canon concerning replacement printer cartridges. The ALJ granted Aster’s motion for summary determination of non-infringement.

In the Matter of Personal Transporters, Components Thereof, and Manuals Therefor No. 337-TA-935