$8.3 million patent judgment affirmed

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In December 2001, Fish & Richardson won an appeal of a patent infringement case for Bose Corporation. The United States Court of Appeals for the Federal Circuit affirmed Bose’s September 2000 trial victory in a Massachusetts federal court, in which Judge Patti Saris found that JBL, Inc. and Infinity Systems had infringed Bose’s patent covering the widely acclaimed loudspeaker enclosure found in the Bose Acoustimass® loudspeaker systems and Lifestyle® music systems. Judge Saris issued a judgment for damages amounting to more than $8.3 million with interest and costs, and ordered JBL and Infinity to stop making or selling products infringing the patent, including at least forty-five home audio speaker products.

The patent covers loudspeaker enclosures with an elliptical port. The invention eliminates the audible “chuffing” noise that a ported enclosure makes when the speakers are played very loudly. This “chuffing” sound is similar to the noise made by opening the window of a moving car. This patented invention is an important feature of Bose’s highly successful Lifestyle® and Acoustimass® systems.

At trial and on appeal Greg Madera, a principal in Fish & Richardson’s Boston office, and principal Shelley Wessels of the Silicon Valley office led the legal team for Bose. Madera and Wessels were assisted by Boston office principals Charles Hieken, Jolynn Lussier, and Steven Katz. David Boies of Boies, Schiller & Flexner LLP of Armonk, NY represented JBL and Infinity Systems on appeal. Mr. Boies is well known for his role as Special Trial Counsel for the United States Department of Justice in its antitrust suit against Microsoft and as Lead Counsel for former Vice President Al Gore in the disputed 2000 presidential election.

“This was an important victory for our client Bose and for Fish & Richardson,” said Greg Madera. “We are proud of our continuing success in protecting our client’s patented products.”

Smith & Nephew vs. Ethicon

In December 2001, Fish & Richardson won an appeal in a patent infringement case for Smith & Nephew. The decision by the Court of Appeals for the Federal Circuit reversed the decision of a district court that granted summary judgment to Ethicon. Smith & Nephew and its licensor, Dr. Hayhurst, sued Ethicon for infringing Smith & Nephew’s patented method for a suture anchor used in knee and other surgery. After a favorable Markman hearing, Smith & Nephew filed a summary judgment motion. The district court judge denied Smith & Nephew’s motion and granted Ethicon’s motion of non-infringement. On appeal, the court reversed that decision, finding in favor of Smith & Nephew.

Fish & Richardson principals Jack Skenyon and Mark Hebert of the Boston office led the legal team.

Menard, Inc. vs. John Zuccarini

In February 2002, Fish & Richardson obtained a decision transferring mennards. com to its client, Menard, under the Uniform Domain Name Dispute Resolution Policy. Menard is the nation’s third largest home improvement retailer and the twenty- fifth largest privately held company. Well known domain name pirate John Zuccarini registered the domain name.

Fish & Richardson principal Stephen Baird and associate Joel Leviton, both of Twin Cities, handled the case.

United States of America vs. Aleida DeLeon

In January 2002, federal prosecutors from the U.S. Attorney’s office for the Northern District of Texas dropped charges against Fish & Richardson’s client Aleida DeLeon, a Tyson Foods employee accused of helping transport illegal aliens to work for the nation’s largest beef and poultry processor. The indictment against DeLeon was dismissed shortly after jury selection and opening arguments in DeLeon’s trial. The trial was the first to result from a three-year federal investigation, dubbed “Operation Everest,” against Tyson Foods, Inc.

In December, a federal grand jury handed down a separate, thirty-six-count indictment against Tyson Foods and six of its executives alleging that the company smuggled illegal immigrants from Mexico to work at U.S. poultry plants.

“In fifteen years of practice, I’ve never seen the federal government surrender during trial,” said Dallas principal Tom Melsheimer, who was lead defense counsel in the case. “I think the federal government’s decision to drop charges against my client casts doubt on the credibility of the government’s entire undercover investigation.”

In addition to Tom Melsheimer, the defense team included Dallas associate Victor Johnson.

Melsheimer, a former federal prosecutor, is part of the firm’s new White Collar Criminal Defense practice. The new practice group also includes former U.S. Attorney in Dallas Paul Coggins, and San Diego criminal defense lawyer Juanita Brooks.

Avery-Dennison vs. 3M

In December 2001, Fish & Richardson successfully mediated patent infringement claims brought against 3M by Avery Dennison Corporation. Avery sued 3M for patent infringement, alleging that 3M infringed Avery’s patents on micro-replication processes and claiming more than $40 million in damages. The Fish & Richardson team mustered a vigorous defense against Avery’s claims, which so weakened Avery’s case that Avery dropped over half of its claims just two days before a scheduled Markman hearing. After the Markman hearing, Avery proposed to have the case mediated and the case was settled favorably for 3M.

The Fish & Richardson 3M team was led by Boston principal Greg Madera, with assistance from Delaware principal William Marsden, Twin Cities principals Jon Singer, Michael Florey, and Greg Gardella, and Twin Cities associates Chad Hanson and Jason Kelly.

GTESS Corporation vs. Imaged Data, Inc.

In December 2001, Fish & Richardson won a breach of contract case for GTESS Corporation before the American Arbitration Association. GTESS provides document imaging services for health care and insurance companies. The software turns doctors’ handwritten notes and insurance claim forms into computer files. GTESS licensed its software to a competitor, but when the competitor began sublicensing the software to others without permission, GTESS brought a breach of contract claim for violation of the licensing agreement. After a lengthy arbitration proceeding, the three person arbitration panel unanimously ruled that the contract was breached and entered an injunction that effectively shut down the defendant’s sublicensing operation. GTESS was also awarded all of its attorneys’ fees. The entire arbitration award was affirmed by a Dallas district court.

The Fish & Richardson GTESS team was led by Dallas principals Steven Stodghill and Geoff Harper, with help from associate Jason Rodgers.

Telular vs. Vox2

In December 2001, Fish & Richardson successfully defended start-up company Vox2 in a patent infringement case in an Illinois federal court. Vox2 makes Vox.Link, a docking station that allows cell phone users to “plug in” to land lines and take or make cell phone calls using home or office land-line phones. Vox2’s would-be competitor, Telular, an established fixed wireless company, sued Vox2 for infringement of patents already licensed to others for the same application, and brought a motion for a preliminary injunction that would have brought Vox2’s business to a halt. After a five-day hearing, a federal Magistrate Judge found that Vox2’s products did not infringe, and that Telular had not shown that it would suffer any irreparable harm. District Court Judge Manning adopted the Magistrate Judge’s sixty-page report and recommendation in its entirety.

The Fish & Richardson trial team was led by Wayne Willenberg, a principal in the Twin Cities office, with assistance from Twin Cities principal Matt Samuel, Twin Cities associate Jason Kelly, Boston office principal Gib Hennessey, and Boston associate Tino Lichauco.

Synopsys vs. Nassda

In November 2001, Fish & Richardson successfully defeated a motion for a preliminary injunction against Nassda Corporation just weeks before its IPO. Nassda (NSDA) is now a publicly traded company, listed on NASDAQ.

Synopsys, the former employer of the founding members of Nassda, alleged that Nassda’s new circuit simulation product, which allows designers and manufacturers to test their designs before production, was stolen from them.

Silicon Valley principal Shelley Wessels led the Nassda team, with assistance from associates John Picone, Katie Horvath, Tate Birnie, Craig Compton, and Jason Schultz, all of the Silicon Valley office.

Brookhill-Wilk vs. Intuitive

In November 2001, Fish & Richardson won summary judgment for its client, Intuitive Surgical, in a patent infringement case in the Southern District of New York. Intuitive makes the da Vincitm Surgical System—a robotic system that allows a surgeon to perform highly precise endoscopic (minimally invasive) procedures while sitting at a console that displays a 3-D image of the patient's internal organs. Brookhill-Wilk sued Intuitive for patent infringement immediately after Intuitive issued its IPO. Dr. Wilk, a general surgeon in New York City and the named inventor, claimed the da Vinci System infringed his two patents on “remote” surgery. Fish & Richardson defended Intuitive, arguing that its system is used by surgeons who operate the console in the same room as the patient, while Dr. Wilk’s patents cover a surgical system that allows surgeons to operate from “remote locations” outside the operating room. The court ultimately agreed with the defendant, granted summary judgment of non-infringement, and dismissed Dr. Wilk’s complaint.

The Fish & Richardson team was led by principal David Barkan of the Silicon Valley office and associate Todd Miller of the San Diego office.

E.A. Sween Company vs. Genuardi's Family Markets, L.P. and GTC II, Inc.

In November 2001, Fish & Richardson obtained a consent judgment and permanent injunction for its client, E.A. Sween Company, in a trademark infringement case. The defendants, Genuardi’s Family Markets and Safeway Inc., were infringing Sween’s federally registered trademark DELI EXPRESS by using the trade name “DELI EXPRESS” for similar goods sold in its supermarket delicatessans. Sween’s DELI EXPRESS sandwiches are the number one selling sandwich brand in the convenience food industry. Safeway Inc., Genuardi’s Family Markets’ parent company, is one of the largest food and drug retailers in North America.

Steve Baird, a principal in the Twin Cities office, led the team with assistance from Twin Cities associates Ann Cathcart Chaplin, Stephen Lee, and Joel Leviton.

Micro Motion vs. Endress + Hauser

In October 2001, Fish & Richardson’s Swiss client Endress + Hauser reached a favorable settlement in a patent suit brought by rival Micro Motion. Fish & Richardson had counterclaimed for violation of antitrust laws based in part on Micro Motion’s history of aggressively filing patent suits against any competitor gaining ten percent or more of the market in Coriolis mass flow meters. After three years of international discovery and several failed attempts to dismiss Endress + Hauser’s countersuit, Micro Motion agreed to a confidential settlement that dismissed the case.

Boston principal Gib Hennessey led the team for Endress + Hauser, with key assistance from Boston principal Kurt Glitzenstein and Twin Cities associates John Dragseth, Ann Cathcart Chaplin, John Adkisson, and Chad Hanson.