Representative Litigation Cases
Patent Cases
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 invalidity and non-infringement. In October 2008, with just a week remaining before trial and significant pre-trial evidentiary motions pending before the Court, Kraft agreed to pay our client a lump sum of $17,000,000 for a limited, non-exclusive license.
NewRiver v. Mobular Technologies. On behalf of client NewRiver, we brought suit in District of Massachusetts against direct competitor, Mobular, for infringing our client’s patent related to mapping mutual fund compliance information from a database of securities information. Immediately upon the close of a hearing, we won a summary judgment ruling from the bench that Mobular infringed NewRiver’s patent.
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.
CIEA v. The Jackson Laboratory. In June 2010 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.
Goldfarb v. W.L. Gore & Associates. After winning the longest-running patent interference in USPTO history, we were part of the litigation team that represented Goldfarb and C.R. Bard, Inc. in their subsequent patent infringement suit against Gore over its enormously valuable vascular grafts. Goldfarb and Bard prevailed at trial, resulting in entry of a judgment of $659 million against Gore in 2010. Gore has appealed.
Cordance v. Amazon. We represented Cordance against Amazon.com in a high-profile e-commerce suit involving Amazon’s renowned 1-Click® ordering process. We secured a patent infringement verdict against Amazon, as well as judgment as a matter of law that asserted claims were not invalid. The case is presently up on appeal to the Federal Circuit.
Alexsam v. Humana. We represented Alexsam, owner of a patent to a multifunction card system, in a suit against Humana, a Fortune 100 health insurer, over Humana’s use of its debit/medical services cards. Right before jury selection and trial in Marshall, Texas, Humana settled favorably with our client.
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.
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.
Electronics/Hardware Patent Case. After a handful of high-ranking employees left the plaintiff and started a competing business, we brought a patent infringement lawsuit on behalf of the plaintiff against the new company, alleging its sole product infringed six of plaintiff’s patents. We successfully opposed a motion to dismiss, after which we secured a confidential eight-figure settlement.
Internet patent settlement. We represented several on-line data storage companies in an infringement suit brought by a patent holding company. As part of discovery and independent research, we uncovered evidence the prior art invalidated the asserted patent. On the eve of a Markman hearing in 2007, plaintiff patent holder agreed to withdraw the case and to pay our client a substantial confidential sum to drop our invalidity counterclaim.
Trexel v. Master. Trexel replaced its former counsel with Wolf Greenfield to bring suit against a major competitor – the first company in the U.S. to commercialize a product covered by Trexel’s patent. Within a few months after initiating suit, we had obtained a permanent injunction barring the infringer from making further use of its infringing device and a favorable settlement of all remaining issues.
L-3 Communications Security and Detection Systems v. American Science and Engineering. Our client, L-3, was threatened with suit by AS&E on a family of patents. To remove this cloud from its product development program, our client sued for a declaratory judgment of noninfringement and invalidity. We successfully opposed the patent holder’s motion to dismiss the case. In discovery, we uncovered evidence the asserted patents were invalid and the patentee had failed to disclose pertinent information to the Patent Office. We sought and won summary judgment on certain patents in the family, after which patent holder conceded the case and covenanted not to sue L-3 for infringement of any patents.
Johns Hopkins University v. CellPro. A member of our group worked on the team that successfully represented Johns Hopkins, Becton Dickinson, and Baxter Healthcare in asserting a stem-cell technology patent against CellPro, resulting in jury verdict of willful infringement and multi-million dollar damages award, trebled by the district court and affirmed by the Federal Circuit.
Bruce's Splicing and Rigging v. F&B Enterprises. Successful defense of patent infringement case during which we established waiver of plaintiff's attorney-client privilege, leading to disclosure of key documents. At trial, these materials formed the basis of verdict of inequitable conduct, which led judge to hold the patent unenforceable.
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 Federal Circuit.
Fisher-Price v. Safety 1st. After Fisher-Price sued our client, Safety 1st, for patent infringement, we were awarded summary judgment, removing one patent from the case entirely and substantially narrowing the issues on the others. At trial, the jury awarded only a small fraction of the asked amount. In the subsequent Federal Circuit appeal, we prevailed in overturning the jury’s finding of design patent infringement.
Ohayon v. Staples. We successfully represented Staples in the defense of a patent case in New York relating to telephone handset technology. We won a motion for summary judgment of non-infringement before a Magistrate Judge, which was subsequently affirmed by the District Court and was not further appealed.
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.
Bodalamente v. Hyde. This Ohio lawsuit was brought by an individual for patent infringement in which our client, Hyde, ultimately prevailed. After trial, we secured an award for personal sanctions against Bodalamente’s counsel that was one of the largest personal awards against counsel at that time. The sanctions were ultimately reversed on appeal on a technicality.
In re Sullivan. We successfully represented a patent applicant in his appeal to the Federal Circuit seeking to overturn a finding of invalidity by the USPTO. This is one of the rare cases where the Federal Circuit vacated a finding of invalidity based on obviousness entered by the patent examiner and affirmed by the Board of Patent Appeals and Interferences, and remanded to the Board to consider evidence that it failed to address originally.
Interferences
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. Our client then brought suit for infringement against a competitor, resulting in judgment being entered for $659 million on behalf of our client in 2010. The case has been appealed.
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.
Trademark Cases
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.
RadioShack v. VideoShack. Our client RadioShack sued VideoShack for its use of the VIDEOSHACK mark for videos and electronics. VideoShack agreed to drop the mark as a result of on-site surveys which indicated a 90% recognition of the RADIOSHACK trademark and a well over 20% likelihood of confusion between the two marks.
Mister Donut v. Mr. Donut. Our client Mister Donut filed a trademark suit against Mr. Donut, which had a chain of seven donut shops that had been operating for several years. Only one of the shops, however, had been operational prior to the issuance of our client’s federal registration. The court held that our client’s then-pending application and issued registration took precedence and the defendant’s use of MR. DONUT, and that the defendant was charged with constructive knowledge of our client’s rights. The defendant dropped all uses because the court’s injunction applied to six out of seven of the defendant’s stores.
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.
Copyright Cases
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, 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 trial was scheduled to begin.
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.
RadioShack “Trucker’s Dictionary” Case. We represented RadioShack in a suit by a small group for copyright infringement because RadioShack produced a “trucker’s dictionary” with approximately 110 definitions of which 105 were essentially identical to those in a previously published work by the plaintiffs. RadioShack ultimately prevailed when it established that galley proofs for its dictionary (used in the preparation of manuscripts) had been prepared weeks before RadioShack first saw the plaintiffs’ dictionary, thereby showing that no access had been established.
Trade Secret Cases
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.
Licensing / Contract Cases
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.
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.
