• EMC Corporation v. Zerto, Inc. We obtained a jury verdict on May 8, 2015 in favor of our client EMC against Zerto, Inc. A federal jury in Delaware found that Zerto infringed four of the five data protection-related patents that EMC had asserted in the lawsuit. The jury also rejected all of the validity challenges that Zerto mounted to the patents-in-suit. Before the trial, we secured dismissal of five separate inter partes review (IPR) petitions filed by Zerto with the Patent Trial and Appeal Board. Those dismissals came before any IPR trials were instituted with respect to the patents-in-suit.

• Research Frontiers v. E Ink and Advanced eScreens v. E Ink. We are currently defending our clients E Ink, Barnes & Noble, Kobo and Sony in lawsuits filed in the District of Delaware. 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.   

• Warrior Sports v Maverik. We are currently defending 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.
• Teashot v. Keurig. We represented Keurig in a lawsuit brought by a Colorado tea supplier, Teashot, for infringement of a patent directed to a type of tea-filled container.  After securing a favorable claim construction, the district court granted our motion for summary judgment of non-infringement. The Federal Circuit fully affirmed the decision on appeal.
• 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 and 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.  We defended Sony in the International Trade Commission against a patent owner targeting a wide array of Sony products, including the PlayStation 4. We identified key third-party witnesses concerning prior art products and developed a compelling record to establish that such products invalidated the asserted patents. Further, despite the ITC’s reputation for expansive discovery, we kept Sony’s burdens reasonable and defeated a high-stakes motion to compel. The complainant dropped its case less than two weeks before the hearing.
• 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 recently 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). The settlement prevents the accused infringers from entering the market until 2018 and requires royalty payments from that point until BTG’s patent expires in 2028. In October 2013, 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 in August 2014. As a result, BTG negotiated a resolution that secures its market-leading position through 2018 and ensures fair compensation once the defendants eventually do enter the market.
• U.S. International Trade Commission Investigation No. 337-TA-741/749. In June 2012 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.
• In the Matter of Certain Electronic Devices. One of our litigators defended parallel International Trade Commission and Eastern District of Texas cases involving power adaptor technology.
• In the Matter of New Skies Communications and Astrium, SAS. One of our litigators defended a $120 million International Chamber of Commerce arbitration arising out of the design and construction of solar power panels and steering rockets on a telecommunications satellite.

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. In this case involving enormously valuable vascular graft technology, we won the longest-running patent interference in USPTO history, prevailing in three Board of Patent Appeals and Interferences decisions and two Federal Circuit appeals. The resulting patent issued in 2002 and has been litigated with success.
• 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. In this patent interference, we obtained dismissal of an interference provoked by one of our client’s competitors for failure to meet statutory requirements. This decision confirmed and extended the holding that we had previously secured for a different client in the case Regents of the University of California v. University of Iowa Research Foundation.
• 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. Bern sued multiple manufacturers of snow sports helmets, including our client Burton, for alleged infringement of Bern’s trade dress in a particular shape of helmet. We developed an argument on summary judgment that Bern had failed to show that its trade dress had achieved “secondary meaning,” or that the relevant class of consumers recognized the particular helmet shape as originating from Bern. The district court found that every relevant factor weighed against secondary meaning, granted summary judgment, and dismissed all of Bern’s claims—a complete victory for 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.

• Represent Photographic Illustrators Corporation (PIC) in ongoing, seven-figure copyright enforcement campaign. The cases arise from unlicensed use of and manipulations to PIC’s copyrighted images. The multiple, client-favorable settlements resulted from negotiating numerous legal issues including contract interpretation of conditions versus covenants, the scope of the Lanham Act’s protections under Dastar v. Twentieth Century FoxFilm Corp., DMCA violations, and the fair use defense to copyright infringement.
• American Century Home Fabrics v. Ashley Furniture Industries. We represented American Century, a small fabric importer and converter, in a lawsuit against the world’s largest furniture corporation for copyright infringement of American Century’s most popular fabric line. Disputed issues in the case included the identity of the original authors, the validity of the copyright registration, and the amount of Ashley’s profits. After discovery involving depositions of artists in the U.K. and manufacturers in Hong Kong, we prepared the case for trial where the parties entered into a confidential settlement just before opening statements.
• Photographic Illustrators v. Gillette. On behalf of a commercial photographer (PIC), we won a permanent injunction against Gillette Corporation in a complex copyright and breach of contract case. In the course of that litigation, we also successfully moved to hold Gillette in contempt of court for litigation misconduct, resulting in the Court imposing an evidentiary inference in our client’s favor. We then mediated the case, resulting in a favorable settlement for our client, shortly before the trial began.
• 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.