creative solutions

Patent Litigation

• Cargill, Incorporated v. Zeigler Bros., Inc. (S.D. Fla.) Won jury verdict and finding of willful infringement of patent on liquid shrimp feed.
• Cargill, Incorporated v. Salt Creek, Inc. (S.D. Fla.) Won jury verdict of willful infringement and award of treble damages for owner of patent relating to animal feed.
• Osteotech, Inc. v. GenSci OrthoBiologics, Inc. (C.D. Cal.) Won $17.5 million jury verdict for patent infringement involving osteoinductive bone repair gels and putties.
• Emergis v. Otter Tail (D. Minn. and Fed. Cir.) Won summary judgment, affirmed by Federal Circuit, finding no infringement of plaintiff’s patent concerning Internet payment system. This case was one of dozens that the plaintiff filed or threatened in a nationwide campaign targeting utility companies and our strategy led to the successful resolution of many other cases.
• George Martin Co. v. Alliance Machine Systems International (N.D. Cal. and Fed. Cir.) Won judgment, affirmed by Federal Circuit, finding plaintiff’s patent on machine used in cardboard manufacturing invalid after jury trial.
• Knopik v. Mobil Oil (D.Minn. and Fed. Cir.) Represented Mobil and won summary judgment, affirmed on appeal, that Mobil did not infringe two patents relating to soil vapor extraction technology.
• Pure Fishing, Inc. v. Normark Corporation (D.S.C. and Fed. Cir.) Represented defendant Normark in matter relating to manufacture of polymeric fishing lines and biodegradable fishing lures. Won summary judgment, affirmed on appeal, invalidating fishing line patent on three separate grounds (on-sale bar, derivation, and obviousness). Won dismissal of lure patent claim after Markman hearing and obtained substantial attorneys’ fee recovery.
• University of Minnesota v. AGA Medical (now owned by St. Jude Medical) Represented AGA in patent infringement action accusing AGA’s AMPLATZER™ septal occluders of infringement, and won partial summary judgment that the one patent was expired and unenforceable. AGA successfully intervened and opposed the University's case to reinstate that patent, with the Federal Circuit affirming the patent's expiration. AGA then won consecutive summary judgments that one patent was not infringed and that the other was invalid. The Federal Circuit affirmed AGA's victories on both fronts.
• In re Certain Point to Point. Represented Toshiba in an International Trade Commission Enforcement action by patent holder alleging that imported network devices infringed its patents. Plaintiff withdrew complaint prior to hearing.
• In re USB Portable Storage Devices Represented respondents Imation and IronKey in International Trade Commission proceeding relating to USB flash drives. Claimants dismissed proceedings, without any payment or other concession, on the eve of trial hearing.

Trademark Litigation

• GlaxoSmithKline LLC et al. v. Laclede, Inc., 18 Civ. 4945 (JMF) (2019). Obtained preliminary injunction against ongoing use of confusingly similar advertising and promotional materials for competing dry mouth products.
• US Footwear LLC v. JRA Trademark Co., Ltd. (AAA 2017). Obtained award in trademark licensing dispute of more than $5 million for licensee.
• JA Men’s Group LLC v. JA Apparel Corp. (AAA 2015). Secured and collected award of $42.6 million in trademark licensing dispute.
• Walgreen Co. v. Wyeth, (TTAB, N.D. Ill. 2009). Prevailed in trademark opposition proceeding, subsequently appealed and resolved through settlement involving client Wyeth's ALAVERT trademark and adversary's WAL-VERT trademark.
• Argus Research Group, Inc. v. Argus Media, Inc., 562 F. Supp. 2d 260 (D. Conn. 2008). Obtained dismissal on summary judgment of majority of plaintiffs' trademark infringement claims on ground of laches; remainder of claims amicably resolved thereafter.
• Physicians Formula Cosmetics, Inc. v. Cosmed, Inc., Docket No. 92040782 (T.T.A.B. 2008). Prevailed on petition to cancel trademark registration for PHYSICIANS CHOICE based on likelihood of confusion with client's well known PHYSICIANS FORMULA trademark for cosmetics.
• Fantasia Accessories, Ltd. v. Mizrahi et. al., 06 Civ. 12914 (DC), (S.D.N.Y. 2007). Obtained permanent injunction and related relief on claims of trade dress infringement, as well as declaration of trademark ownership in dispute concerning ownership of intellectual property rights among former business associates.
• National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474 (S.D.N.Y. 2002). Successful defense of manufacturer of GLACIER BAY vodka coolers against claims of trademark and trade dress infringement, trademark dilution and false advertising asserted by manufacturer of TETON GLACIER vodka.

Copyright Litigation

• Toliver v. Sony Music Entertainment, Inc. Won summary judgment award and affirmance dismissing copyright infringement claims asserted against the record label for Destinys’  Child and awarding attorneys’ fees to the prevailing defendant. The judgment was upheld on appeal to the Ninth Circuit.
• The Pokémon Company International, Inc. v. Tee Turtle, U.S. District Court for the Western District of Washington, 2017 (Lasnik, J.). Defended Tee Turtle against copyright infringement claims seeking multi-million dollar damage award. The dispute involved several novel legal issues including First Amendment protection for “mash-ups” and copyright enforcement. Case settled during mediation.
• Kumar v. Institute of Electrical and Electronics Engineers, Inc., 12 Civ. 06870 (KSH)(CLW) (2016). Obtained defense verdict for scientific publisher after seven-day jury trial on claim of copyright infringement involving doctoral thesis and journal article that were both concerned with robotics.
• Abilene Music, Inc. v. Sony Music Entertainment, Inc., 67 U.S.P.Q.2d 1356 (S.D.N.Y. 2003). Obtained summary judgment in favor of major music label on ground that use of copyrighted song lyrics was a parody protected by principles of fair use.

Trade Secret Litigation

• NeoNetworks, Inc. v. Cisco Systems, Inc., et al. Successfully defended Cisco against suit by NeoNetworks which sought more than $1.3 billion in damages on 19 claims, including breach of fiduciary duty, breach of non-compete agreement, misappropriation of trade secrets and usurpation of corporate opportunity. We obtained a complete defense verdict of no liability after eight weeks of trial. The court awarded our clients $650,000 in costs and we successfully defended this result on appeal.
• Storage Technology Corp. v. Cisco Systems, Inc. Successfully obtained summary judgment for Cisco Systems in action for misappropriation of trade secrets, corporate raiding, and breach of fiduciary duty. Affirmed by the Eighth Circuit. Plaintiff recovered nothing on $450 million claim.
• C.H. Robinson Worldwide, Inc. v. FLS Transportation, Inc. et al. We handled the landmark case in Minnesota that established the right of a Minnesota company to bring suit in Minnesota courts against ex-employees and their subsequent employer residing outside Minnesota (and even outside the United States) for violation of agreements which limit their post-employment competitive activities and for misappropriation of trade secrets.
• Piper Jaffray & Co. v. Vermilion Capital Management, LLC, et al. Represented Piper against four former employees who resigned to start a new company managing a hedge fund. Three of them worked in Piper’s technical research area. Eighteen months later, their new company produced technical research products indistinguishable from Piper‘s and began marketing them to Piper’s customers. Piper sued, alleging misappropriation of trade secrets and breach of fiduciary duty. After we advised the defendants that our client would not accept a monetary settlement and would seek a permanent injunction, defendants shut down. The court entered a permanent injunction.
• Virtual Cloud, Inc. v. CH2M HILL, Inc. - Represented client in complex litigation involving trade secret claims. Successfully opposed preliminary injunction after three-day hearing.
• CADIS, Inc. v.D’Angelis. Obtained Temporary Restraining Order preventing former employee from working for competitor based on former employees’ threatened misappropriation of trade secrets.
• Represented Lockheed Martin Corp. in a trade secrets and computer fraud case in Lockheed Martin v, L-3 Communications, Inc., 2007 WL 3171299 (M.D. Fl. 2007).
• Counsel for Cargill in litigation against a former executive for misappropriation of trade secrets in the District of Colorado.