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.
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.
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.
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.
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.
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.
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).
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.
First Successful Invalidation of a U.S. Patent in Nevada Federal Court
Lead counsel in first successful invalidation of a U.S. patent in Nevada Federal Court based upon the seminal U.S. Supreme Court case Alice Corp. Pty. Ltd. v. CLS Bank Intern. concerning patent ineligibility. Successfully represented NRT Technology Corp and related international parties against Global Cash Access, now Everi Holdings, to have the Federal Court grant a motion to dismiss and find the asserted patent unenforceable.
Patent, Trademark, Copyright, and Trade Secret Rights Enforced on Behalf of U.S. and International Clients
As lead prosecution counsel and defense counsel, successfully negotiated and resolved scores of U.S. Federal Court patent, trademark, copyright, and trade secret intellectual property disputes involving U.S. and foreign companies, including international clients from, among other places, China, Canada, Mexico, Austria, and Australia.
Patent Protection Enforced at Tradeshow Changes how Chinese Companies Resolve Intellectual Property Cases
Lead intellectual property litigation counsel for a start-up tech company in securing an emergency temporary restraining order and court seizure by U.S. Marshals of patent infringing products in widely publicized CES® Consumer Electronic Tradeshow dispute. The case resulted in the successful ban of the production and sale of the infringing products from a foreign company and changed how many Chinese companies resolve intellectual property cases at international trade shows today.
Seizure of Infringing Nutritional Supplements at Tradeshow
Represented nutritional supplement manufacturer in connection with the enforcement of its patents and trademarks. Successfully obtained and executed order permitting the seizure of nutritional supplements displayed at SupplySide West tradeshow.
Defended Online Fantasy Sports Provider in Patent Infringement Claims
Represented online fantasy sports provider in defense of patent infringement claims. Successfully obtained transfer of venue.
Successful Settlement of Patent Infringement Against Foreign Television Manufacturer
Represented technology licensing company in patent infringement action against foreign television manufacturer. Successfully negotiated settlement of dispute.
Representation of Smartphone Manufacturer in Patent Infringement Claim
Represented smartphone manufacturer in defense of patent infringement case.
Injunction Obtained for Sporting Goods Company
Enforced a patent on behalf of a sporting goods company against a competitor, winning an injunction.
Patent Case for Supplier of Sound-insulated Glass for Automotive Vehicles
Represented a supplier in a patent case involving sound-insulated glass for automotive vehicles.
Successful Settlement in Patent Case for Software Company Specializing in Automotive Supply Chain Management
Advised a software company, who specialized in automotive supply chain management, in a patent case and reached a favorable settlement.
Settlement for Supplier of Wheel Alignment Systems
Defended a supplier of non-contact wheel alignment systems by discovering knock-out prior art and inequitable conduct evidence to force an immediate walk-away settlement.
Automotive OEM Minimizes Involvement in Supplier Disputes
Counseled an automotive OEM on a stream of third-party subpoenas for documents and depositions, and helped the OEM minimize its involvement in supplier disputes.
Successful Settlement in Patent Action for Supplier of Wheel and Tire Assembly Lines
Represented a supplier of wheel and tire assembly lines against a competitor's patents and reached a favorable settlement.
Patent Enforced for Wheel Alignment System
Enforced a patent on a wheel alignment system against a competitor, won a favorable Markman ruling, and obtained a favorable settlement.
Successful Defense of Side View Mirror Supplier in Patent Infringement Action
Represented a side view mirror supplier by finding a knock-out prior art reference that drove prompt settlement in our client's favor.
Successful Defense of Laser Industry Company in Patent Infringement Action
Defended a small company in the laser industry against a large company that had filed an aggressive patent infringement case regarding a laser-based measuring device. We identified key defects in the patent owner's position and persuaded it to dismiss the case.
Settlement Achieved in Action Involving Electro-Mechanical Patent
Enforced a client's electro-mechanical patent against a competitor and won a favorable settlement following months of intense litigation.
Plaintiff Dismisses Patent Infringement Case When Presented with Experts and Motions Demonstrating Lack of Evidence
Secured a dismissal with prejudice against a patent owner in a large, multi-defendant patent infringement case. After the Markman and discovery phases, we noticed that the patent owner failed to uncover sufficient infringement evidence against our client and confronted the patent owner with a motion for summary judgment, an expert report pointing out the evidentiary deficiency, and a motion challenging the qualification of the patent owner's expert and the validity of the expert's report. Resulted in patent owner dismissing the case with prejudice and with no money paid.
Plaintiff Dismisses Patent Infringement Claim After Presented with Detailed Defense
Secured a dismissal in a patent infringement case in the Eastern District of Texas by preparing a detailed invalidity and non-infringement analysis and threatening an inter partes review, which caused the patent owner to dismiss the case without prejudice and with no money paid. Rothschild Connected Devices Innovations, LLC v. Protect America, Inc., 2:15-CV-01465-JRG (E.D. Tex. 2015).
Settlement Driven After Win on Key Markman Ruling
Won a key Markman ruling invalidating all of the asserted claims in six different patents, driving a favorable settlement for our client including a dismissal with prejudice. Joao Control & Monitoring Systems, LLC v. Protect America, Inc., 1:14-CV-134-LY, (W.D. Tex. 2015).
Successful Settlement for General Motors on Patent Infringement Case
Settled a complex patent infringement case in the District of Delaware on terms favorable to General Motors where there were multiple patents and multiple indemnifying suppliers. We successfully found strong prior art and developed non-infringement and claim construction arguments that drove settlement.
Patent Infringing Products Forced to be Pulled Off of the Market
Enforced a client's patent, which we wrote and prosecuted, against two competitors, and successfully forced them to withdraw their products from the market.
Settlement Driven on Behalf of General Motors
Settled a complex patent infringement case in the District of Delaware on terms favorable to General Motors and its suppliers, where the suppliers also supplied multiple other OEM defendants. We coordinated a defense that helped everyone by finding invalidating prior art, and developing noninfringement and claim construction arguments that drove settlement.
Patent Action Dismissed in Favor Of Doctors Treating Opioid Patients
Represented a group of doctors that were helping patients overcome their opioid addictions by performing an elaborate and specific treatment method that would eliminate withdrawal symptoms in one day or less. Our clients were sued for patent infringement, facing allegations of direct infringement, contributory infringement, and inducing infringement. We successfully argued to the district court that the case should be dismissed for failure to state a claim under Iqbal and Twombly because the patent was limited to a narrow treatment method. The patentee appealed. In a 2-1 opinion, the CAFC affirmed the dismissal in our clients' favor.
Plaintiff Dismisses Patent Infringement Case After Reading Motion to Dismiss and Before It Was Filed with the Court
Secured a dismissal with prejudice in a patent infringement case by preparing a persuasive motion to dismiss. Before filing the motion, we shared it with the patent owner, who chose to dismiss the case with prejudice and with no money paid.
Plaintiff Dismisses Patent Infringement Case After Presented with Strong Prior Art
Secured a dismissal with prejudice in a patent infringement case after taking over the case from another firm. We successfully developed a strong prior art position and after confronting the patent owner with this prior art, the patent owner dropped the case with our client, while maintaining its cases against several other defendants. ComCam International, Inc. v. Protect America, Inc., 2:13-CV-00800 (E.D. Tex. 2014).
Plaintiff Dismisses Patent Infringement Claim After Presented with Detailed Defense Including Invalidity, Non-Infringement and Lack of Personal Jurisdiction
Secured a dismissal in a patent infringement case by preparing a detailed invalidity and non-infringement analysis and arguing that there was no personal jurisdiction in the Western District of North Carolina, which caused the patent owner to dismiss the case without prejudice and with no money paid. EyeTalk365, LLC v. Protect America, Inc., 3:14-CV-525 (W.D. N.C. 2014).
Representation of Firearms Manufacturer in Patent Infringement Claim
Represented firearms manufacturer in defense of patent infringement action.
Patent for GPS System to Plant Research Crops Invalidated
Successfully invalidated a patent, issued in 2003, involving technology using GPS systems to plant research crops for their client, which was a family owned business in Kansas. The patentee was a large company and industry leader from Iowa. We uncovered prior art from 1997 evidencing a public use of a prior system that existed more than a year before the patents. The evidence included pictures of the prior system, videos of the prior system planting in the field, a copy of the software that was run on the system, a company newsletter describing the system, a trade show presentation about the system, and declarations (including from individuals in Australia) from the people that operated the system and were shown in the video and pictures. The court agreed and invalidated the entire patent.
Successful Enforcement of Patents against Liner Motor Conveyor System Competitor
Represented manufacturer of liner motor conveyor system in connection with enforcement of its patents against competitor.
Successful Settlement for Automotive Supplier in Patent Infringement and Trade Secret Lawsuits
Represented an automotive supplier for critical adhesive technology used to attach hardware to automotive windows involving multiple patent infringement and trade secret lawsuits. All of the matters were settled in favor of our clients.
Successful Settlement for Fortune 500 Automotive Supplier in Patent Infringement Action
Lead counsel for a Fortune 500 automotive supplier in a patent infringement suit in the Eastern District of Michigan where the case settled in our client's favor after obtaining a preliminary injunction.
AmLaw 100 Law Firm Settles Patent Infringement Case After Defense Files Key Motions to Dismiss
Represented a multibillion-dollar automotive supplier and successfully settled a complex patent infringement case in the District of Delaware after filing key motions to dismiss for failure to state a claim, as well as two petitions for inter partes review, both of which drove plaintiff, who was represented by an AmLaw 100 firm, to settle.
Co-Counsel in U.S. Supreme Court Seminal Patent Case Addressing Obviousness
Co-counsel for the patent holder in the noted KSR Int. v. Teleflex Inc. intellectual property case in which the U.S. Supreme Court made its seminal ruling concerning the issues of obviousness as applied to patent claims.
Served as Patent Specialist Counsel in U.S. Supreme Court Seminal Patent Case Addressing Obviousness
Served as patent specialist counsel for patent holder Teleflex in the influential KSR Int. v. Teleflex Inc. intellectual property case where the U.S. Supreme Court ruled on the issue of obviousness as applied to patent claims.
Lighting Equipment Supplier Wins After Invalidating Competitor's Patents
Counseled a supplier of lighting equipment for sports fields and won a complete victory after trial and appeal by invalidating three of a competitor's patents. Musco Corp. v. Qualite Inc., 41 U.S.P.Q. 2d 1954 (Fed. Cir. 1997).
Substantial Settlement for Wiper Blade Patent Holder
Enforced a wiper blade patent against a competitor and obtained a substantial monetary settlement.
Supplier of Wheel Chair Restraints Wins Against Patent Troll
Defended a supplier of wheel chair restraints against a patent troll and won a finding of no infringement at trial. Queens University at Kingston v. Kinedyne Corp., 910 F.Supp. 527 (D. Kansas 1995).
Patent Wins Invention of the Year
Prepared and filed over 50 patent applications for an automotive OEM for an electronically controlled automatic transmission. One of these patent applications produced the patent that won invention of the year in 1990 by the Intellectual Property Organization.
Patent Applications Filed for Automotive OEM for a Hybrid Vehicle
Managed a team of attorneys that prepared and filed over 50 patent applications for a hybrid vehicle for an automotive OEM. Under this leadership, the team obtained the disclosures from a contract supplier, drafted the patent applications, and filed them all on the same day.
Medical Device Patents
Achieved favorable settlement for Biomet in a 15-patent declaratory judgment action after Indiana federal judge allowed Biomet’s claims of inequitable conduct into the case.