Intellectual Property Litigation

Representative Clients

• Hormel Foods Corporation
• Medtronic
• Becton, Dickinson and Company

Patent Litigation & PTAB Matters

• We obtained dismissal of a lawsuit filed by a non-practicing entity (NPE) in the District of Delaware against our client who makes software that public companies use to file with the SEC. An NPE sued the client for patent infringement. The patent owner claimed that its patents cover the use of XBRL, an international standard for reporting financial information. According to the patent owner, people who file with the SEC in the required format are infringing its patents. We first moved to dismiss under Section 101, then contacted the SEC to encourage the agency to intervene in the lawsuit and, finally, filed Inter Partes Review (IPR) petitions. All three avenues were successful.
• We defended a patent infringement lawsuit filed in the Central District of California. The asserted patent was directed to remote alert notification systems for assisted living facilities. After receiving our motion to dismiss the lawsuit based on Section 101, the patent owner chose to dismiss the lawsuit voluntarily.
• We were retained by a large medical technology company to defend it in three patent infringement lawsuits. The first lawsuit involved patent infringement claims of three unrelated patents involving infusion pump technology. We initiated a multi-faceted attack involving two challenges under Section 101 and filing three IPR petitions. The Patent Trial and Appeal Board invalidated all of the instituted claims, resulting in claimant dismissing the heart of its case. In all, we disposed of 25 of the 35 asserted patent claims before summary judgment. In the second lawsuit, we successfully obtained summary judgment of noninfringement of all three asserted patents. In the third lawsuit, we utilized a Section 101 motion with three IPR petitions to stay the litigation prior to the initial scheduling conference pending the instituted IPR trials and any appeal. All three asserted patents were invalidated by the IPRs. 
• Our team won summary judgment in the U.S. District Court for the District of Delaware that invalidated a patent covering a method of making precooked bacon on an industrial scale. Our client was accused of infringement by a claimant seeking tens of millions of dollars in damages. The asserted patent covered precooked bacon that “resembles a pan-fried bacon product.” Our team convinced the judge that the phrase was purely subjective, rendering the entire patent invalid. The judge found our expert to be “clearly and convincingly credible.”

Trademark Litigation & TTAB Matters

• Often engaged to protect important trademarks, our team has achieved successful outcomes for prominent brand owners in litigation across the country. We represented the Estate of the late artist Prince in several lawsuits concerning the PRINCE® trademark.
• Our team defended a large manufacturer in a trademark infringement lawsuit involving the company’s top-selling product. After obtaining a decision dismissing the damages claim, we negotiated a settlement that secured the client’s rights in the mark.
• We have prosecuted and defended lawsuits concerning lookalike packaging and trade dress. In one example we represented an international restauranteur against an imitator and forced changes to the opponent’s brand.
• We have handled all aspects of trademark opposition proceedings for numerous clients before the Trademark Trial and Appeal Board. For example, we successfully opposed two applications to register trademarks incorporating the dominant aspect of a national restauranteur’s brand in two highly contested oppositions that proceeded through final hearing, and in one, appeal to the Federal Circuit.

Licensing Disputes

• Our team defended AGA Medical in a licensing dispute initially valued by the plaintiff at $300 million, including a two-phased trial. After trial and raising a concern over the validity of the license agreement, the presiding judge initiated a settlement conference that lead to a favorable settlement well below pretrial settlement demands.
• We represented a mortarless retaining wall design company in a trial before the Western District of Wisconsin and two appeals before the Seventh Circuit Court of Appeals regarding the company’s enforcement of a license agreement, resulting in a finding of liability, injunction and full damages award.
• Our attorneys represented Medtronic in licensing disputes with various parties. In one instance, we were able to convince a licensee, without resorting to litigation, to restart and complete license payments after it initially determined it could cease payments, resulting in $2 million in additional royalties.

Trade Secret Litigation

• Our attorneys represented a medical device company in a lawsuit to protect its trade secrets. Our client developed a new technology and entered into a non-disclosure agreement with a potential vendor. The vendor later applied for a patent that incorporated our client’s technology. We filed suit and achieved a settlement that keeps the competitor out of our client’s market.
• We represented a manufacturer of electronic medical records software in trade secret litigation with the former employee of a development partner. Our client co-developed key software that performs natural language processing of medical records. One of the principal designers of the software subsequently left our client’s development partner, taking copies of the software’s source code with him and deleting the code from his employer’s computers. When our client learned that the former employee was attempting to sell the software to other customers, we joined in a lawsuit with our client’s co-developer to protect the technology and recover the stolen source code. The case was tried before a jury in the U.S. District of Minnesota, and the jury decided and the Court ruled in favor of our client on all claims.

Copyright Litigation

• We recently obtained an award of nearly $4 million in damages and attorney’s fees in an arbitration hearing involving the unauthorized use of music owned by the Estate of Prince Rogers Nelson.
• Our team defended a Fortune 500 company in a copyright infringement lawsuit in Indiana. After identifying numerous obstacles to the plaintiff’s claim, the plaintiff agreed to dismiss the lawsuit.

Anti-Counterfeiting & Anti-Piracy Litigation

• Our attorneys represented the Estate of Prince Rogers Nelson in litigation concerning the late superstar’s intellectual property assets. In one case, we brought suit against a bootleg record label asserting claims for trademark infringement, trademark counterfeiting, copyright infringement, bootlegging and violating Prince’s right of publicity. We obtained a default judgment against one of the bootleggers for $7 million plus attorney’s fees.
• We obtained a default judgment against a defendant who was selling counterfeit products on Amazon. The district court found willful patent infringement, entered a permanent injunction against the seller, awarded treble damages and attorney’s fees to our client and held the defendant in contempt when it violated the injunction. We succeeded in removing the counterfeiter’s fake products from the market.
• Our team brought suit for patent infringement against a large group of related counterfeiters who were selling on Amazon. We obtained a consent judgment against the largest violator and negotiated settlements with the remaining defendants. As a result of the lawsuit, the infringing products were removed from Amazon.
• We brought lawsuits enforcing utility and design patents when counterfeit products from China began appearing in U.S. retail outlets. We negotiated favorable settlements that compensated our client for the infringement and forced changes in purchasing channels to reduce the risk of future counterfeits.

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