“Best Young Trial Lawyers”

Two F&R attorneys named to list

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IP Worldwide magazine chose two Fish & Richardson attorneys to include on a list of seven attorneys chosen as “ IP’s Best Young Trial Lawyers.” San Diego managing principal John Gartman and Boston principal Frank Scherkenbach were included on a select list chosen from among all intellectual property trial lawyers nationally. No other firm had more than one attorney included on the list.

Gartman has a national trial practice that focuses on high technology litigation, with particular experience in telecommunications, semiconductors, and software. He has successfully tried jury and bench cases in federal and state courts and the U.S. International Trade Commission. His representative clients include Intel, Microsoft, Marconi, and Adobe. Two of his cases have been recognized by the National Law Journal as among the “Year’s Top Wins” - Adobe v. Quantel (1997) and Marconi v. Bellcore (2000).

Gartman received his bachelor’s degree in electrical engineering and his law degree from the University of Texas where he was awarded the College of Engineering’s Outstanding Scholar-Leader Award in 1983. He has held faculty positions with the National Institute of Trial Advocacy and the Santa Clara University School of Law, and served as Patents Contributing Editor to the Federal Circuit Bar Journal from 1990-98. He has published articles and given speeches and demonstrations on technology litigation to the American Law Institute, American Bar Association, Practising Law Institute, and the American Intellectual Property Law Association.

Scherkenbach specializes in complex high technology litigation, with a focus on computer software, telecommunications, and semiconductors. He has successfully handled cases in state and federal courts and before the U.S. International Trade Commission, including trials and appeals to the Federal Circuit. Two of Scherkenbach’s favorable verdicts were selected by the National Law Journal as among the most significant in the country in 1997 and 1999.

Scherkenbach received a B.S. in mechanical engineering and an A.B. in classics from Stanford University. He received his juris doctorate from Harvard Law School. He was also a founder and Editor-in-Chief of the Harvard Journal of Law & Technology. By invitation of the Chief Judge, Scherkenbach serves on the Advisory Council of the Court of Appeals for the Federal Circuit.

Recent trial court wins

Carroll Shelby and Ford Motor Corporation v. Superformance International, Inc.

In August 2002 Fish & Richardson won summary judgment for its client Superformance International, Inc. against trade dress infringement and trademark counterfeiting claims in the United States District Court for the District of Massachusetts. 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. Fish & Richardson moved for summary judgment on all of these claims. Judge Zobel recognized that Shelby appears to have been the original designer of the 1960s-vintage COBRA automobile. But since the 1970s dozens of other companies, including Superformance, had been advertising, manufacturing, and selling COBRA replicas bearing the same shape. Judge Zobel found that Shelby “has failed to present any evidence that consumers associate the COBRA design with Shelby, and Shelby alone as the source.” Judge Zobel reasoned that “[t]here can be no protection under trade dress principles for the designers themselves, who do not take an active role in the marketplace, and therefore do not impact competition and consumer choice.” Fish & Richardson also defeated all cross-motions for summary judgment filed by Shelby and Ford.

Boston principal Greg Madera led the Fish & Richardson team for Superformance against Shelby, and Boston principal Kurt Glitzenstein led the Fish & Richardson team for Superformance against Ford. Goodwin Proctor LLP represented Carroll Shelby. Pattishall, McAuliffe, Newbury, Hilliard & Geraldson represented Ford.

Ventana Medical Systems, Inc. v. CytoLogix Corporation

In August 2002 Fish & Richardson defeated a motion for a preliminary injunction for its client CytoLogix. Ventana sued CytoLogix in the United States District Court for the District of Arizona arguing that CytoLogix’s Artisan Staining System infringed their automated tissue sample staining equipment patent. The judge agreed with Fish & Richardson’s argument that CytoLogix was not infringing the patent, and therefore denied Ventana’s Motion for Preliminary Injunction.

The Fish & Richardson team for CytoLogix was led by principal Alan Smith and associates Michael Zeliger and David Simons, all of the Boston office. Ventana was represented by Quarles & Brady Streich Lang LLP.

Cardiac Sciences v. ZOLL Medical Corp.

In July 2002 Fish & Richardson defeated a motion to enjoin its client ZOLL Medical Corporation from selling its newly introduced AED Plus, an automatic external defibrillator that promises to greatly expand the availability of life-saving defibrillation technology beyond hospitals and ambulance crews. Cardiac Sciences Inc. (“CSI”) sued ZOLL for patent infringement in the United States District Court for the Central District of California. When CSI moved for a preliminary injunction, Fish & Richardson found a powerful group of medical and technical experts and conducted intense deposition discovery to dispute the claims of infringement. The judge ruled from the bench at the close of oral argument in ZOLL’s favor.

The ZOLL team was led by Boston principal Greg Madera with assistance from principal Jon Singer and associate John Dragseth both in Twin Cities, and principal Juanita Brooks in San Diego. CSI was represented by Jones Day.

Cox Communications PCS and Sprint PCS v. City of San Marcos

In June 2002 Fish & Richardson won a “first-of-its-kind” order for its clients Cox Communications PCS and Sprint PCS under the Telecommunications Act of 1996. The decision establishes the right of telecommunications carriers to develop their wireless infrastructure on and under any public right-of-way location without having to undergo highly discretionary decision-making by local governments. Sprint sued the city of San Marcos in the United States District Court for the Southern District of California to enjoin excessive regulations imposed by the city during a permitting process to install wireless antennas on existing utility poles. A San Marcos ordinance reserved the right to deny permits, which could keep Sprint from using public rights of way -- a violation of the Telecommunications Act. Fish & Richardson obtained a preliminary injunction against the City of San Marcos thereby clearing the way for a streamlined permit process consistent with the Telecommunications Act.

The Fish & Richardson team for Sprint included San Diego principal Juanita Brooks. The City of San Marcos was represented by Lounsberry, Ferguson, Altona & Peak LLP.

BBA Nonwovens Simpsonville, Inc. v. CMC Magnetics Corporation

In June 2002 Fish & Richardson won summary judgment for its client CMC Magnetics Corporation (“CMC”) against patent infringement claims in the United States District Court for the District of Massachusetts. CMC is a world leader in the computer data storage media industry. BBA Nonwovens Simpsonville, Inc. (“BBA”), the second largest manufacturer of nonwoven materials in the world, sued CMC alleging willful infringement of BBA’s patent for nonwoven materials used in computer diskettes.

After a successful hearing, the judge issued a claim construction very favorable to CMC’s case, and further determined that BBA had made an excessive claim for damages. Based on the claim construction, Fish & Richardson moved for summary judgment that the patent at issue was invalid. After receiving CMC’s motion, BBA conceded that it could not prevail at trial in view of the earlier ruling, and the case was dismissed.

Boston principal Kurt Glitzenstein led the team for CMC, with assistance from Boston associate David Simons.

Philip Morris Companies v. Altira Group LLC

In June 2002 Fish & Richardson helped clear the way for Philip Morris Companies, Inc. to change its corporate name to ALTRIA GROUP, INC. after prevailing in the first round of a trademark infringement case brought against Philip Morris.

The firm served as co-counsel with Arnold & Porter in a trademark infringement case brought by Altira Group llc (“Altira”), a Colorado venture capital investment firm. Altira Group sought to prevent Philip Morris from using the name ALTRIA, claiming that the new name infringes its federally registered ALTIRA trademark.

The court found that Altira failed to establish the likelihood of succeeding in its case against Philip Morris and denied Altira’s motion for a preliminary injunction.

New York principal Tony Fletcher led the Fish & Richardson effort for Philip Morris with assistance from New York associate Stacy Grossman. Altira was represented by Merchant & Gould.

SanDisk v. Ritek

In May 2002 Fish & Richardson defeated a motion to enjoin its client Ritek Corporation from selling its COMPACTFLASH memory products. COMPACTFLASH cards are stamp-sized memory cards that are used in portable electronic devices, such as digital cameras to store the picture taken by the camera. Ritek was sued by SanDisk Corporation for patent infringement based on a patent that had already been successfully enforced against another competitor. The patent is part of a portfolio that has produced over $200 million in licensing revenue and given Ritek a leading position in the marketplace.

Judge Walker in the United States District Court for the Northern District of California agreed with Fish & Richardson’s arguments of noninfringement and no likelihood of success on the merits. Judge Walker denied the motion for a preliminary injunction finding that the plain language of the patent claim suggests there is no infringement.

The Fish & Richardson team for Ritek was led by Boston principal Alan Smith and Silicon Valley principal David Miclean with assistance from Silicon Valley associate Katie Prescott and Boston associate Rex Huang. Wilson Sonsini Goodrich & Rosati represented SanDisk.

Fish & Richardson holds first annual patent trial clinic

Fish & Richardson, in conjunction with the National Institute for Trial Advocacy, held its first annual Advanced Patent Jury Trial Clinic in San Diego, California, in July 2002. Lead by NITA instructors John O. Sonsteng, Professor of Law, William Mitchell College of Law, and J. Michael Roake, Roake & Roake, San Diego, CA, sixteen Fish & Richardson attorney-participants devoted four days to an intensive training session focusing on jury trial skills and culminating in a patent jury trial.

NITA, the premier institute for advocacy skills in the United States, and Fish & Richardson have worked together closely over the past three years to develop a complete in-house advocacy skills training curriculum, which has included previous programs in deposition skills and basic trial skills. The July 2002 jury trial program is a unique case file created exclusively for Fish & Richardson by Professor Sonsteng and Heidi E. Harvey, a principal of Fish & Richardson and the firm’s chair of in-house advocacy skills training programs.

In addition to team leaders John Sonsteng and Michael Roake, and Fish & Richardson Boston principal Heidi Harvey, the faculty included Fish & Richardson San Diego principals John Gartman and Juanita Brooks, Silicon Valley principals Shelley Wessels and David Barkan, and Boston principal Jolynn Lussier.