Fish & Richardson Wins Jury Verdict in Pharmaceutical Case

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In February 2001 Fish & Richardson obtained a jury verdict for Clariant Life Science Molecules SpA (Clariant) in a patent infringement case brought by Great Lakes Chemical Company in the United States District Court for the District of Delaware. The jury found that Clariant's process to make tic-d - an important ingredient used in the manufacture of AIDS drugs - does not infringe US patent 5,587,481, owned by Great Lakes.

Great Lakes made two infringement allegations: first, that an old process no longer used by Clariant to manufacture tic-d infringed Great Lakes' patent; and second, that Clariant's new and current process infringed the patent. Great Lakes asked that Clariant be enjoined from making tic-d, and sought more than $12 million in damages.

The jury found that the process Clariant has used since late 1998 to manufacture tic-d does not infringe Great Lakes' patent. The verdict means Great Lakes cannot enjoin Clariant from continuing to supply high quality anti-viral active ingredients for pharmaceuticals used to fight AIDS.

The jury awarded Great Lakes damages on sales of product made under an old process used for a brief period in 1997 and 1998, which was stipulated to be within the claims of Great Lakes' patent. The award, $1 million, represents a fraction of Great Lakes' original claim.

"This is a major victory for Clariant," said William Marsden, a principal of Fish & Richardson who represented Clariant with principal Frank Porcelli. "The jury confirmed that our present manufacturing processes do not infringe the Great Lakes patent. This is a victory both for Clariant and for people with AIDS."

"The evidence showed a clear lack of equivalence between Clariant's process and the '481 patent claims - the Clariant process operated in a very different way to obtain a very different and much improved result," added Frank Porcelli. The Clariant team also included Bill Hone, a principal, and George Heibel, an associate, both in New York, John Meli, an associate in Delaware, Sean Daley, an associate in Boston, and John Dragseth, an associate, and Molly Mosley-Goren, of counsel, both in Twin Cities. Terry Mahn and Jill Deal, principals from the firm's regulatory group, also assisted the trial team.

Great Lakes was represented by Kirkland & Ellis.

Other Recent Wins

Deborah Charms v. Cardiac Pacemakers, Inc., Guidant Corp. and Medtronic, Inc.

In February 2001 Fish & Richardson successfully defended against an appeal of a summary judgment granted for Medtronic in a patent infringement case brought by Deborah Charms in the United States District Court for the Western District of Texas alleging that her late husband's patent covered virtually all of the implantable defibrillators sold by Medtronic and CPI/Guidant over the last seven years. The district court granted summary judgment in favor of the defendants, finding the patent invalid based on anticipation. The Court of Appeals for the Federal Circuit affirmed. Mike Kane, a principal in Twin Cities, led the Fish & Richardson team for Medtronic, with assistance from Greg McAllister, an associate in Twin Cities. Charms was represented by Jenkens and Gilchrist.

In the Matter of Certain Safety Eyewear and Components Thereof

In January 2001 Fish & Richardson obtained a successful settlement in a patent and trade dress case before the US International Trade Commission (ITC) for Bacou USA Safety and Uvex Safety Mfg. Co. against Crews, Inc. The Fish & Richardson team was led by Ralph Mittelberger, a principal in Washington, DC, with assistance from Linda Kordziel, a principal and Lauren Degnan, an associate, both in DC, and Chris Centurelli, an associate in Boston. The team had assistance from Gib Hennessey, Chuck Hieken, and Jim Hall, principals in Boston, Tony Fletcher, a principal in New York, and Brian Racilla and Malan Rampton, associates in Washington, DC. Crews, Inc. was represented by Griegg & Griegg.

VLT Corporation and Vicor Corporation v. Unitrode Corporation

In January 2001 Fish & Richardson obtained summary judgment for VLT Corporation and Vicor Corporation (Vicor) in a patent infringement case against Unitrode Corporation in the United States District Court for the District of Massachusetts. Judge Patti Saris issued a 55-page opinion that granted Vicor's motion for summary judgment of direct infringement by Unitrode and some third parties. The court also granted summary judgment in favor of Vicor, striking down Unitrode's defenses that the patent claims were anticipated, indefinite, and invalid for failing to disclose the best mode. The case involved Vicor's patented design for electrical power converters. Bob Hillman and Larry Kolodney, principals in Boston, represented Vicor. Unitrode was represented by Hale and Dorr.

Lorenc v. Titan Corp. and Unidyne Corp.

In December 2000 a Fish & Richardson team won summary judgment for its clients Titan Corp. and Unidyne Corp. in an employment case in California state court in San Diego. The Fish & Richardson team was led by Juanita Brooks with assistance from Susan Emrich, both principals in San Diego. Lorenc was represented by the Law Offices of Sean Simpson and Associates.

Apple Computer v. Articulate Systems

In December 2000 Fish & Richardson successfully defended against an appeal of a summary judgment granted in favor of Articulate Systems against Apple Computer. Articulate sued Apple in the United States District Court for the District of Massachusetts for infringing its voice control system for a computer. Fish & Richardson had obtained a patent for Articulate on the system. Apple filed a counter-suit in California on four Apple patents. In defending the California case, Fish & Richardson identified several flaws in Apple's case, including that Apple had licensed some of its technology to Articulate. Fish & Richardson obtained summary judgment for Articulate on all four Apple patents, the last based on invalidity. Apple appealed only on the last one. The Court of Appeals for the Federal Circuit affirmed the summary judgment, and remanded three dependent claims.

In two of those claims, the Federal Circuit gave a construction of the key element which will mean Articulate does not infringe. The third has been remanded so the lower court can do a formal obviousness analysis. The Fish & Richardson team was led by principals Jack Skenyon in Boston and Howard Pollack in Silicon Valley. Mark Hebert and Jolynn Lussier, principals in Boston, and Tim Porter, a principal in Silicon Valley, assisted with the appeal. Apple was represented by Fenwick & West.

Alcide Corp. v. ABS Global and Ecolab

In November 2000 Fish & Richardson successfully defended against an appeal of a summary judgment for Ecolab. The case had been brought by Alcide Corp. in the United States District Court for the Western District of Wisconsin and involved a patent on a gelled teat dip to prevent bovine mastitis in cow udders. The district court ruled that Ecolab's teat dip did not infringe Alcide's patent literally or under the doctrine of equivalents, and the Court of Appeals for the Federal Circuit affirmed. The appeal was argued in Minneapolis during the Federal Circuit's visit in October 2000. The appellate team was led by Frank Porcelli, a principal in Boston and Delaware, with assistance from Jon Singer and Mike Kane, principals in Twin Cities. Alcide was represented by Dorsey & Whitney.

Mars, Inc. v. Coin Acceptors, Inc.

In November 2000 Fish & Richardson won a judgment of literal infringement for Mars, Incorporated against Coin Acceptors, Inc. in a patent infringement case in the United States District Court for the District of New Jersey. The case involved a patent on an electronic coin recognition system. A Mars subsidiary, Mars Electronics Incorporated is a major producer of coin recognition equipment for vending machines. John Pegram, a principal in New York, led the team for Mars, with assistance from Sam Borodach, also a principal in New York. Coin Acceptors was represented by Haverstock, Garrett & Roberts.

Lincoln Diagnostics v. Panatrex

In October 2000 Fish & Richardson defeated a motion for a preliminary injunction brought against Panatrex in a trade dress infringement case brought by Lincoln Diagnostics in the United States District Court for the Central District of Illinois. Panatrex makes disposable allergy skin testing devices. Lincoln Diagnostics sued Panatrex, alleging that it infringed the trade dress of a product that had been the subject of a now-expired patent. After a hearing, the court denied the motion in a 28-page decision. Tony Fletcher, a principal in New York and co-chair of the firm's Trademark and Copyright Group, led the team for Panatrex, with assistance from Cindy Johnson, an associate in Boston, and Susan Emrich, a principal in San Diego. Lincoln Diagnostics was represented by Banner & Witcoff and Kehart Shafter Webber & Campbell Robinson.

K2 v. Benetton/Rollerblade

In September 2000 Fish & Richardson defeated a motion for a preliminary injunction brought by K2 against Benetton/Rollerblade in a patent infringement case. The case involved an in-line skate patent. Bob Hillman, a principal, led the Fish & Richardson team for Benetton/Rollerblade. He was assisted by Larry Kolodney, a principal, from Boston. K2 was represented by Black Lowe & Graham, PLLC.

Belmont Textile Machinery Co. v. Superba, S.A. et al

Bose Corp. v. JBL, Inc.

In September 2000 Fish & Richardson won a patent infringement case for Bose Corporation in the United States District Court for the District of Massachusetts following a bench trial before Judge Patti Saris. Judge Saris found that JBL and Infinity, subsidiaries of Harman International, infringed Bose Pat. No. 5,714,721 covering the Acoustimass® loudspeaker enclosure. The Bose Acoustimass® system also includes cube speakers that are small enough to fit in the palm of your hand and are an important part of the Bose Lifestyle® music system. Judge Saris ordered judgment for damages, prejudgment interest, and costs amounting to more than $8,000,000, and directed that JBL and Infinity be enjoined from any further production or sale of products infringing the '721 patent. The Fish & Richardson team for Bose included principals Greg Madera, Chuck Hieken, and Jolynn Lussier in Boston, and Shelley Wessels in Silicon Valley, assisted by Heidi Harvey, a principal, and Steven Katz, an associate, both in Boston. JBL was represented by Jones, Day, Reavis & Pogue.

MasterCard International, Inc. v. Nader 2000

In August 2000, Fish & Richardson defeated an effort by MasterCard International to prevent Ralph Nader's presidential campaign from continuing to run a television advertisement that parodied MasterCard's "Priceless" ad campaign. MasterCard had sued alleging infringement and dilution of MasterCard's trademarks under the Lanham Act and infringement under the Copyright Act. MasterCard has been using its $250 million "Priceless" ad campaign since 1997. After a 90-minute hearing, Judge George B. Daniels of the United States District Court for the Southern District of New York denied MasterCard's motion for a Temporary Restraining Order, finding that there was insufficient evidence that MasterCard would suffer irreparable injury if Nader used the parody as part of his presidential campaign. Tony Fletcher, a principal in New York, and Mark Lemley, of counsel in Silicon Valley, led the team for Fish & Richardson, with help from Larry Kolodney, a principal in Boston. MasterCard was represented by Baker Botts.

Gamesville.com, Inc. vs. John Zuccarini

In August 2000 Fish & Richardson obtained a decision from the National Arbitration Forum transferring the domain names "GAMESVILLES.COM," "GAMESVILLE.COM," "GAMESVILL.COM," "GAMESVLLE.COM," "GAMEVILE.COM," and "GAMEVILL.COM" to its client, Lycos.

The decision was issued under the ICANN Uniform Domain Name Dispute Policy for the resolution of disputes involving domain names. The respondent, John Zuccarini, is a well known "typo domain name pirate." He registers domain names with misspelled variations of well-known trademarks, and is known by pseudonyms that include Cupcake Party, Country Walk, Cupcake Patrol, Cupcake City, and Cupcake Confidential. The arbitrator found that the URLs were confusingly similar to Lycos' registered trademark "GAMESVILLE.COM," and that Zuccarini had registered the domain names at issue in order to redirect users to sites that trap them within a number of advertisements. The arbitrator ordered the domain names transferred to Lycos. Merton Thompson, an associate in Boston, handled the case.

Harpak, Inc. v. Convenience Food Systems, Inc. et al.

In August 2000 Fish & Richardson obtained summary judgment of non-infringement for Convenience Food Systems, Inc. in the United States District Court for the District of Massachusetts. Chief Judge Young first granted summary judgment of no literal infringement, and later found no infringement under the doctrine of equivalents. A Boston team handled the case. Principals Bob Hillman and Jim Hall led the team, with assistance from Bill Booth, a principal, and Mike Zeliger and Tom Johnston, associates.