The firm’s diligence paid off. By finding the patents invalid, the jury agreed that the patents covered public domain technology that everyone, including Adobe, should be free to use.
Firm client Adobe Systems turned to Fish & Richardson to defend it against allegations by EveryScape of patent infringement. EveryScape alleged that Adobe's renowned Photoshop software infringed two patents relating to preserving perspective while clone brushing from one portion of an image to another. The Photoshop feature in question, called Vanishing Point, can be used to edit digital images in perspective, for example, in architectural and building photographs. After a two-week trial, the jury deliberated for less than three hours before returning a verdict that EveryScape's patents were invalid as both anticipated and obvious in view of the prior art.
This case demonstrated the importance of using all available avenues – including the jury trial, appeal to the Federal Circuit, and post-grant review in the USPTO – when a defendant is facing potentially large patent infringement claims, and set an important precedent for IP law that will dramatically change the strategies companies use in future patent disputes.
Fish won a major, precedent-setting, 10-year-long case for client Fresenius USA, which reversed a combined damages and royalty award that would have reached $150 million had it stood. The dispute dates back to 2003, when Fish filed a declaratory judgment on behalf of Fresenius against Baxter, alleging claims in four patents were invalid. In return, Baxter filed counterclaims for infringement with regards to Fresenius’ 2008K hemodialysis machine. Fish then filed an ex parte reexamination request asking the USPTO to cancel Baxter’s patent – a decision that would be important to Fresenius’ victory.
Fish’s innovative strategies and aggressive enforcement led the way in protecting the hard-won intellectual property that protects Allergan Alphagan® P 0.1%, which today enjoys market exclusivity until the last of its patents expires in 2022.
In a series of cases beginning in 2002, Fish successfully navigated for Allergan a path to lasting exclusivity for its sight-saving glaucoma drug, Alphagan® P 0.1%. These cases culminated when the U.S. Supreme Court denied a petition for a writ of certiorari in 2012 filed by generic drug maker Apotex. That petition grew out of a trial win by Fish in the District of Delaware in 2009, when that court concluded that five patents protecting Alphagan® P were valid and infringed. The Federal Circuit Court of Appeals affirmed four of the five patent’s validity on appeal.
The Fish trial team broke down the science for the judge and jury and walked them step-by-step through the plaintiffs’ faulty chain of causation, resulting in a defense verdict of no causation at the first and only bellwether trial.
Based on an internal study and memo by Fresenius, the FDA issues a Class I recall of Fresenius’ acid-concentrate products GranuFlo® and NaturaLyte®, which are used during dialysis. As a result of the recall, over tweleve thousands plaintiffs sued Fresenius alleging their product caused electrolyte imbalances leading to sudden cardiac arrest and death. Within a few months, the Fish team demonstrated to the FDA that the underlying science and conclusions of the memo were flawed and convinced the FDA to recall the recall. Building on that success Fish broke down the science for the judge and jury and walked them step-by-step through the plaintiffs’ faulty chain of causation, resulting in a defense verdict of no causation at the first and only bellwether trial. On the heels of the bellwether trial, Fresenius was able to obtain a favorable global settlement agreement.
Fish defended L-3 Communications against claims of misappropriation of trade secrets and copyright claims and won summary judgment in the District of Massachusetts, which counted among the largest defense wins for a software dispute in 2010.
Fish defended L-3 Communications, a major defense contractor, in a complex commercial dispute against Airframe Systems Inc., which accused L-3 of various misappropriation of trade secrets and copyright claims. Fish won summary judgment in the District of Massachusetts and successfully defended its client in the Court of Federal Claims, as well as in multiple appeals to the First Circuit.
"Fish has a good understanding of the FDA process and strives to seek the least burdensome path forward. Working with Fish helped to put us at ease, and their attorneys are a pleasure to work with." Virginie Lafage, CTO/CFO and Co-founder, Nemaris
Nemaris, Inc. is a leading developer of surgery planning software, including tools for measuring anatomical components for placement of surgical implants. When Nemaris needed FDA counsel to assist in obtaining marketing clearance for its first generation Surgimap Spine software, it relied on Fish & Richardson to draft the 510(k) premarket notification and guide it through the regulatory process.
“We’re glad we originally started with a smaller firm because now we can recognize the quality difference that Fish & Richardson brings. You need to have lawyers who have the engineering backgrounds and qualifications to match your own engineers, and ours feel as if they have a kinship with the Fish attorneys. It’s a pleasure to explain and disclose our inventions because they ‘get it’ as if they’re our own engineers.” Jeff Han, Founder, Perceptive Pixel
Following a groundbreaking demonstration in 2006, Perceptive Pixel quickly became an industry leader in multi-touch display technology. In 2008, Perceptive Pixel’s Multi-Touch “Magic Wall” was at the forefront of the US presidential election television coverage, as the technological centerpiece of CNN’s Peabody Award–winning broadcast. More recently, Perceptive Pixel’s 82-inch Multi-Touch Display was front and center when Microsoft introduced Windows 8.
"I chose Fish because of their expertise in litigious reexamination matters. Many firms claim to be experts in litigious reexam, but very few are." Marc Asperas, Director of Patents, Lantiq
With a record of more than 20 years of innovation and technology leadership in the fabless semiconductor industry, Lantiq needed to ensure a positive result in defending its patent when challenged by an ex parte reexamination filed during a pending patent infringement suit.
After interviewing a number of firms, Lantiq’s Director of Patents, Marc Asperas, settled on Fish because of its expertise in litigious reexamination matters.
The jury was clearly convinced, returning a verdict of $28 million in damages, the exact amount sought. All aspects of the decision were subsequently affirmed on appeal, resulting in a judgment of $32 million.
Video game legend, Richard Garriott engaged Fish & Richardson in a breach of contract case against South Korea-based NCSoft Corp. Mr. Garriott was among the first to develop and market role-playing and massively multi-player online (MMO) games for the PC. NCsoft acquired Mr. Garriott's company, Destination Games, in 2001. As part of the acquisition, Mr. Garriott received stock options valid through May 30, 2011. The options were to remain in place in the event of his termination, but would expire within 90 days if he left the company voluntarily.
"Hands down, Fish ran the best process—they listened to us and absorbed what we do, and when it was their turn to speak, they took over with precise questions. The Fish attorneys were methodical and organized in their approach. We know that not all firms cost the same, but we said to ourselves 'Fish will give us the value we need'," said Dennis Fortier, President and CEO.
Medical Care Corporation had some big ideas and knew it needed to protect them. The company interviewed a small number of firms, asking them to spend time with a core team to understand what they do and where they wanted to go.
The decision of that court—which became a landmark precedent—ruled that once a shareholder action has been decided by another jurisdiction, any successive case must be governed by the full faith and credit clause. Allergan’s motion to dismiss was thus granted, a victory for our client.
In a multiforum case that was ultimately decided in the Delaware Supreme Court, our client Allergan faced an action brought by its shareholders following its $600 million
settlement with the government over alleged off-label promotion of its BOTOX® product. Fish handled this precedent-setting litigation as part of a multifirm team.
...The National Law Journal ranked this win one of the largest jury verdicts in the nation and the third largest in Texas.
When NL Industries set up a subsidiary to deal with the financial aspects of its massive environmental liabilities, three companies bought minority shares in the new company, NL Environmental Services. That deal gave the minority shareholders the right to sell back their stock to NL after seven years, for a price determined by a preset formula.
But when it came time to exercise that right, the three minority companies found the subsidiary had been substantially stripped of its assets, with the contracted formula now calculating a total value of $3.9 million—roughly one-tenth of what they’d expected. The three minority shareholders decided to sue NL Industries, and one of them—Highland Environmental Management—engaged Fish & Richardson to press its claims and defend a claim brought against it.