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Experience

Patent Filed in Medical Instrument Industry

Assisted a client in the medical instrument industry with obtaining a U.S. patent. Prior to filing and obtaining a U.S. patent for the client, a detailed patentability search was performed to identify any existing art in the space. Based upon the search results, we were able to advise the client on a strategy for drafting the application, which ultimately resulted in an allowance by the USPTO.

Marcus Smetka

Freedom to Operate Search for Client in Medical Instrument Industry Assists Client in Managing Risks

Performed a freedom to operate search for a client in the medical instrument industry related to development of a new product. We presented the results to the client which included a list of features currently protected by active patents, as well as features previously disclosed that are now in the public domain. The information provided assisted the client in managing risks as they moved forward with development of the product.

Marcus Smetka

Attorney's Fees Not Warranted

Lead counsel in Halo Electronics, Inc. v. Pulse Electronics, Inc. after the seminal U.S. Supreme Court decision regarding patent infringement damages issued and the case was remanded back to Nevada. Successfully defended Pulse Electronics against the imposition of enhanced damages and attorney's fees as the court found that this was not an exceptional case warranting further recovery under 35 U.S.C. § 285.

W. West Allen

Patents Protected for Alternator Decoupler Manufacturer

Represented an industry leader for overrunning alternator decouplers on their patented technology, which was the core of the their business and represents hundreds of millions of dollars in revenue each year. As their patent was coming to the end of its enforceable life, competitors were anxious to get into the industry and entered the market while the patent was still enforceable. We quickly filed suit and resolved the matter to protect the client's position within the industry.

Kristopher K. Hulliberger

Successful Settlement Achieved for Automotive Tier I Supplier in Patent Infringement Action

Represented Tier I supplier against another competitor Tier I supplier in a patent infringement action. We successfully negotiated settlement during the trial.

Jeff Sadowski

Summary Judgment Obtained for Automotive Supplier in Patent Infringement Action

Represented automotive supplier for OEM and aftermarket. We won summary judgment on the patent infringement claim in 2017. The matter settled just before the trial on damages, for a favorable amount, and we successfully negotiated for our client to purchase the defendant for a lesser amount.

Jeff Sadowski

Representation of Gaming Client in Patent Infringement Actions and Copyright and Trademark Claims

Intellectual property litigation counsel for one of the largest gaming corporations in the world against multiple non-practicing entities (NPEs) patent infringement actions and other copyright and trademark claims asserted before U.S. Federal Courts and the U.S. Trademark Trial and Appellate Board.

W. West Allen

Seizure of Infringing Shoes at Tradeshow

Represented shoe manufacturer in connection with enforcement of its design patents and trademarks. Successfully obtained and executed order permitting the seizure of shoes displayed at the World Shoe Association tradeshow.

Jonathan W. Fountain

Strong Defenses Force Plaintiff to Dismiss Our Client After a Swift Two Week Representation

Successfully secured a dismissal in a patent infringement case after quickly developing several strong defenses including non-infringement, invalidity, failure to state a claim, and low potential for damages. After confronting the patent owner with a letter explaining our defenses, the patent owner dismissed the complaint against our client within two weeks of our being engaged, while maintaining its actions against several other defendants. T-Rex Property AB v. Destination Media, Inc., 1:16-CV-1587 (N.D. IL. 2016).

Andrew (Jake) Grove

Successful Claim Construction Ruling Paves Way for Settlement of Patent Infringement Suit

Obtained a favorable settlement in patent infringement lawsuit on behalf of an inventor in the Eastern District of Texas after a successful result in a claim construction hearing. The team successfully argued against the defendant's attempts to force means-plus-function language into a process patent claim. The claim construction ruling made a determination of infringement much more likely, leading to the favorable settlement.

Joseph Barber