Litigation examples
Ecolab Inc. v. Solia Technology (D.MN ) - This case was brought by some of the largest corporations in Minnesota after they received a demand letter from Solia that alleged patent infringement. Companies filed a declaratory judgment action seeking a judgment that the patent was both invalid and not infringed, and also claims under the Minnesota Deceptive Trades Act and Unfair Competition. Solia was a notorious troll (non-practicing entity) company that had acquired the patent at an "auction". Solia was created and represented by the Niro law firm whose practice centers on representing such companies on a contingent fee basis. Solia had purportedly collected millions of dollars from others. The patent in suit related to processing equipment designed to automate plants for filling everything from paint cans to cereal boxes. Solia demanded royalties from manufacturers for every container that was filled. Following several key rulings by the court the case settled at an early stage. Settled with no payments to Solia from any of the companies.
Magestic Systems, Inc. v. Trumpf, Inc. (D NJ 2009) (Judge Hochberg) - Defended Trumpf GmbH, a German manufacturer of steel fabricating machines, in a trademark infringement case before Judge Hochberg in the District of New Jersey. Following several favorable rulings by the court the case settled favorably at an early stage mediation before Magistrate Shwartz.
Klayman v. Freedom's Watch, Inc., et al. (S.D. Fla. 2008) - Successfully defended a high profile political action group and its Board of Directors, which included former senior White House officials, against charges of trademark infringement brought by Larry Klayman who had achieved notoriety as the Founder and General Counsel of Judicial Watch.
Implant Innovations, Inc. (Biomet 3i) v. Bicon, LLC, et al. (S.D. Fla. 2007) - Defeated motion for preliminary injunction on behalf of defendants by establishing priority in disputed trademark for dental implants. A concurrent trademark opposition in the USPTO against the plaintiff 3i, a wholly owned subsidiary of the medical device company Biomet, was resolved in Bicon's favor on the basis of the District Court's findings.
Myers v 3M (E.D. Michigan) - Successfully defended 3M in a patent infringement suit involving intraocular lens implants. Opposing counsel was Douglas Sprinkle of Gifford Krass Groh, Sprinkle et al.
Lawlor v. Nike, Inc. (D. Mass 2006) (athletic shoes) Trial counsel for Nike, defending it against charges of patent infringement. The accused products were Nike’s entire line of Tuned Air athletic shoes. Summary judgment of non-infringement by Nike was affirmed by the Court of Appeals of the Federal Circuit.
ADE Corporation v. KLA-Tencor Corporation (D.Del. 2004) (silicon wafer laser inspection equipment) Co-trial counsel for ADE - successfully defended ADE in obtaining jury verdict of invalidity of all claims of patent asserted by KLA.
Bose Corp. v. JBL, Inc. et al. (D. Mass.) (2001) (loudspeaker enclosures). Lead trial counsel for Bose -- obtained judgment of $8 million for patent infringement and injunction. Successfully defended appeal to the Court of Appeals to the Federal Circuit against opposing counsel David Boies of Boies, Schiller & Flexner LLP, followed by denial of certiori by U.S. Supreme Court.
Belmont Textile Machinery Co. v. Superba, S.A. et al. (W.D.N.C.) (2000) (machinery for carpet yarn). Co-trial counsel for Belmont Textile -- obtained jury verdict of $1.6 million for patent infringement on all claims asserted. Not appealed.
Concept Design Electronics and Manufacturing, Inc. v. Duplitronics, Inc. (W.D. N.C.) (1995) (digital bins for mass reproduction of audio cassette tapes). Co-trial counsel representing declaratory judgment plaintiff in two jury trials conducted in Charlotte, North Carolina. The first trial was a successful defense against a charge of infringement of two patents involving a claim of damages of $300 million directed against the U.S. recording industry. Both patents were held to be invalid, not infringed and unenforceable due to inequitable conduct. The case was reported in the Wall Street Journal and other press articles as the largest patent case ever tried in North Carolina. The second jury trial involved a successful prosecution of a related claim of unfair competition under the North Carolina Business Code for bad faith litigation, which resulted in an award of $900,000 plus interest and attorney fees. The Federal Circuit Court of Appeals affirmed both jury verdicts in all respects.
Carroll Shelby and Ford Motor Corporation v. Superformance International, Inc. (D.Mass) (2002) Won summary judgment for Superformance against trade dress infringement and trademark counterfeiting claims. Superformance makes premium rolling chassis replicas of the COBRA "muscle car" that Ford marketed in the 1960s. Carroll Shelby sued Superformance alleging trade dress infringement and dilution of his rights in the COBRA shape, and Ford sued Superformance alleging counterfeiting of thirteen federally registered COBRA trademarks. Summary judgment was obtained on these claims.
Cardiac Sciences v. ZOLL Medical Corp. (C.D. CA) (2002) Defeated a motion to preliminary enjoin ZOLL Medical Corporation from selling its newly introduced AED Plus, an automatic external defibrillator that promises to expand the availability of life-saving defibrillation technology beyond hospitals and ambulance crews. A group of medical and technical experts was assembled and intense deposition discovery was conducted to dispute the claims of infringement. The judge ruled from the bench at the close of oral argument in ZOLL's favor.
Exergen Corporation v. Gentri Controls Inc. (D. Mass.) (1995). Trial counsel for Exergen Corp. in case involving patent infringement and trade secret misappropriation (infrared detection devices). Based on jury verdict, treble damages for willful infringement and attorney fees for exceptional case, as well as injunction, granted under Mass. Unfair Competition Law (M.G.L. 93A).
Comair Rotron, Inc. v. Nippon Densan Corporation et al. (D. CT) (2001). Appointed Special Master to U.S. District Court Judge Christopher F. Droney to conduct hearings and issue reports on discovery motions.
Haemonetics Corporation v. Medtronic Inc. (D. Mass.) (2001) (autologous blood systems). Lead counsel for defendant Medtronic; summary judgment of non-infringement affirmed by the Federal Circuit Court of Appeals.
Pioneer Hi-Bred Int'l v. Cargill, Inc. (S.D.Iowa) (2000) (trade secrets related to corn germplasm). Lead counsel for Cargill; case resolved on business arrangement.
Citron v. 3M (D. NH) Lead counsel for defendant 3M in a patent infringement suit against 3M's Post-it® tape flags. A summary judgment of non-infringement was affirmed by the Federal Circuit Court of Appeals.
3M v. Johnson & Johnson (D. Minn.) (1991) Represented 3M in trial involving four patents covering fiberglass casting tape for bone fractures. Summary jury trial (two juries) resulted in award to 3M of $10 million in damages by one jury and $57 million in damages by the other. The final award by the District Court was $115 million to 3M after addition of amounts for willful infringement. The Federal Circuit affirmed the award in all respects.
3M v. Brite-Line Technology, Inc. (D. Minn.) (1999) (retroreflective pavement marking tapes). Lead counsel for 3M; obtained five summary judgment victories on infringement, non-infringement, invalidity, laches and equitable estoppel; case resolved on consent judgment of infringement and validity.
Medtronic Inc. v. Johnson & Johnson, et al. (D. Minn.) (1999) (cardiac stent technology). Lead counsel for Medtronic; matter resolved on business arrangement.
3M v. Signtech, Inc. (D. Minn.) (1998) (seaming tapes). Lead counsel for 3M, obtained consent judgment of infringement, validity and enforceability.
Vehicle Enhancement Systems, Inc. v. Intellon Corp. (D.S.C.) (2001) (spread spectrum chip technology). Lead counsel for Intellon; case resolved on business arrangement.
3M v. North American Sciences Assoc. (D. Minn.) (2000) (sterilization indicators). Lead counsel for 3M; obtained summary judgment victories on infringement and invalidity (anticipation); won interlocutory appeal to Federal Circuit; case resolved on business arrangement.
Glaxo Welcome, Inc. v. 3M (M.D.N.C.) (2000); 3M v. Glaxo Welcome, Inc. (D. Minn.) (2000) (non-chlorofluorocarbon metered dose inhalers). Lead counsel for 3M; case resolved on business arrangement.
Velcro USA Inc. v. YKK Corporation (D. NH) (1995). Lead counsel for Velcro in patent infringement case involving hook and loop fasteners, matter resolved on business arrangement.
Carter-Wallace, Inc. v. Gillette (D. Mass) (1981) Successfully defended Gillette as trial counsel in the U.S. District Court for the District of Massachusetts against Carter-Wallace, Inc. in a case involving Arrid Extra Dry aerosol antiperspirant. Gillette won 211 USPQ 499, case was remanded 675 F.2d 10, Gillette won again 220 USPQ 711, case was affirmed 705 F.2d 439. Carter Wallace's patent was held invalid.
3M v. Van Leer Plastics (D. Mass) (1983) Represented 3M in the U.S. District Court for the District of Massachusetts against Van Leer Plastics in a case involving insulating solar control window film. Case was settled after 6 weeks of trial with a consent decree in favor of 3M and an injunction against the defendant.
General Electric Co. v. RTE/Aerovox (D. Mass) (1986) Defended RTE/Aerovox as trial counsel against a charge of infringement by General Electric Co., involving six G.E. patents relating to capacitors. G.E. sought an injunction that would have covered essentially the entire product line of Aerovox, then the second largest capacitor manufacturer in the U.S., and damages in excess of $60 million. All six G.E. patents were held either invalid, not infringed, or procured through inequitable conduct. G.E. did not appeal.
Balston v. Finite Filter Co. (E.D. Mich.) (1980) Represented Balston Inc. in a patent and unfair competition suit involving self-sealing glass fiber filter tubes. Case was settled after our successful reissue of patent in a protested reissue proceeding.
Represented Ameritech in a trademark infringement action (Bell Company yellow page directories).
Other trademark cases include policing and enforcing of trademarks for numerous companies, including 3M (3M®, Post-it®), Stride Rite (Stride-Rite®, Grasshoppers®), and Bose Corporation (Bose®, Wave®);Trak Incorporated v. Franz Kneissl Skifabrik Gessellschaft mbH et al., 205 USPQ 35 (D.N.H. 1979) (t.r.o. for our client, the owner of a trademark on the design of the bottom of a cross country ski); Trak Incorporated v. Benner Ski KG, 475 F.Supp. 1076 (D. Mass. 1979) (preliminary injunction for our client, the trademark owner, against similar mark on identical goods, cross country skis); Trak Incorporated v. Ski-Trac, Inc. et al., 209 USPQ 507 (N.D. Cal. 1980) (preliminary injunction for our client, trademark owner and maker of cross country skis, against similar mark on somewhat related product, grass skis).