Fish & Richardson provides the appellate client with the critical resources necessary to conduct successfully an appeal in a technology case. Our lawyers have handled many intellectual property appeals in the United States courts of appeals, especially in the Court of Appeals for the Federal Circuit and its predecessor, the Court of Customs and Patent Appeals. We have also argued successfully appeals in state appellate courts. Our appellate experience stretches back over one hundred years: the firm’s founder, Frederick P. Fish, argued or appeared in the Supreme Court of the United States in over eighty cases.

Today, twenty seven of our attorneys served as judicial clerks for the Federal Circuit. Our appellate team includes Frank P. Porcelli, the chair of the group and Visiting Professor of Intellectual Property Law at Harvard Law School. Mr. Porcelli has successfully argued many cases in the Court of Appeals for the Federal Circuit, including Minnesota Mining and Manufacturing v. Johnson & Johnson. In that case, the Court of Appeals for the Federal Circuit upheld a damages award of $129 million, the largest district court patent damages award to be upheld by that Court.

Appeals involving complex legal issues of intellectual property and technology law have increased dramatically. Developments in the law, such as the Supreme Court’s decision in Markman and its progeny, have made appellate skills more important in intellectual property disputes. Fish & Richardson has organized its appellate group to meet the needs of our clients in this changing field.

Trial practitioners, and patent and trademark prosecutors, either from law firms or corporate law departments, with little experience under the Federal Rules of Appellate Procedure, will find that bringing Fish & Richardson’s appellate group into litigation is the wisest possible decision they can make. Fish & Richardson views trial counsel as indispensable colleagues who provide the background and continuity for the litigation to be taken on appeal.

Over the years, Fish & Richardson has carefully developed and expanded at every level a professional complement of lawyers of the highest possible technical and legal qualifications. Likewise, the firm’s commitment to technology in the practice of law insures that the preparation and presentation of the appeal will benefit from the best available technology. The appellate services offered by the firm, described below, demonstrate Fish & Richardson’s unique position in the appellate field.

Hypertext brief:

Emergency applications:

Whether seeking or responding to applications for stays or injunctions pending appeal, one thing is certain: time is the enemy. District judges entering temporary restraining orders and preliminary injunctions on the basis of firm showings by patentees or entering final injunctions against adjudged infringers are often unwilling to stay their orders pending appeal to maintain the status quo between the parties. We are intimately familiar with the court’s requirements for emergency applications, and our proximity to the court makes us a natural choice to handle this special procedure.

Management of multiparty appellate litigation:

Amicus curiae counsel:

Representative appellate victories:

Minnesota Mining and Manufacturing Company v. Johnson & Johnson
Successfully defended against an appeal of a judgment awarding $129 million in damages to our client, 3M, in a patent infringement and trade secrets case involving polyurethane impregnated fiberglass orthopedic casts, the largest known district court patent infringement damages award affirmed by the Federal Circuit. This award included lost profits and price erosion damages and a doubling of the base award for willful infringement. Frank Porcelli was lead counsel for 3M at trial and argued the appeal. He was assisted at trial and on the briefs by principals Greg Madera, Bob Nabinger and Mark Hebert of the Boston office and on the briefs by Bob Hillman. 976 F.2d 1559, 24 USPQ2d 1321 (Fed. Cir. 1992).

Johnson & Johnston Assocs. Inc. v. R.E. Service Co.
Successfully appealed a jury verdict against R.E. Service Co. after Fish & Richardson was brought in to handle the appeal. A jury had found that R.E. Service infringed a patent on a printed circuit board under the doctrine of equivalents. In an en banc decision, the Court of Appeals for the Federal Circuit reversed, holding that if a patent owner fails to claim something described in the patent, whatever has been described but not claimed has been dedicated to the public. Boston Frank Porcelli argued the appeal. He had assistance from principal Bob Hillman from Boston, and principal Rick Anderson and associate John Dragseth, both from Twin Cities.

Frink America v. Champion Road Machinery
Successfully defended against an appeal a judgment in favor of Champion Road Machinery in the United States District Court for the Northern District of New York. The Court of Appeals for the Second Circuit affirmed the judgment as a matter of law (JMOL). Frink America had sued Champion alleging theft of trade secrets, copyright, trademark, and trade dress infringement, interference with contract, breach of contract, unfair competition, and conversion. Boston principals Frank Porcelli and Larry Kolodney, who argued the case before the Court of Appeals, led the team for Champion, with assistance from Boston principal Jack Skenyon.

Benetton v. First Team Sports
Successfully appealed summary judgment of non-infringement against Benetton in the United States District Court for the District of New Jersey. The case involved a patent on ROLLERBLADE brand in-line skates. Boston principal Frank Porcelli argued the case. He had assistance from principal Bob Hillman, also from the Boston office.

Bose Corp. v. QSC Audio Products, Inc.
Successfully appealed a decision of the Trademark Trial and Appeal Board (TTAB) against Bose Corporation to the United States Court of Appeals for the Federal Circuit. The Federal Circuit ruled that QSC Audio Products, Inc.’s mark POWERWAVE for audio power amplifiers is confusingly similar to Bose Corp.’s famous marks ACOUSTIC WAVE and WAVE for products with audio power amplifiers. Boston principal Chuck Hieken led the appellate team with assistance from Boston principal Cindy Johnson and Of Counsel Molly Mosley-Goren.

Omega Optical, Inc. v. Chroma Technology, Corp., et al.
Successfully defended against an appeal of a judgment in favor of Chroma Technology Corporation in a trade secrets case in Vermont Superior Court. In a 5-0 decision, the Vermont Supreme Court affirmed the decision of the trial court in what had been the largest trade secrets trial in the history of Vermont. Boston principal Heidi Harvey was lead counsel at trial and in the appeal. She was assisted by Of Counsel Blair Perry, principal Jolynn Lussier, and associate Mike Zeliger, all of the Boston office.

Bose Corporation v. JBL Inc. and Infinity Systems Corp.
Successfully defended against an appeal of Bose's victory in the US District Court for the District of Massachusetts, in which Judge Patti Saris found that JBL, Inc. and Infinity Systems infringed a Bose patent. Judge Saris issued a judgment for damages totaling more than $7.6 million with interest and costs, and entered an injunction precluding JBL and Infinity from making or selling products infringing the patent. Boston principal Greg Madera led team for Bose with assistance from principals Charles Hieken and Jolynn Lussier, and associate Steven Katz, all in Boston, and principal Shelley Wessels in Silicon Valley. In October 2002 The United States Supreme Court declined to hear the case.

Smith & Nephew vs. Ethicon
Successfully appealed 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 of Appeals for the Federal Circuit reversed finding in favor of Smith & Nephew. Fish & Richardson principals Jack Skenyon and Mark Hebert of the Boston office led the legal team.

Kimberly-Clark v. Tyco International Inc.
Successfully defended against an appeal of a summary judgment in favor of Tyco in a closely watched patent case involving a patent on disposable diaper flaps. The Court of Appeals for the Federal Circuit affirmed the summary judgment and denied a petition for rehearing; Kimberly-Clark’s petition for certiorari to the Supreme Court was also denied. Boston principal Jack Skenyon handled the case both at trial and on appeal, assisted by Boston principal Alan Smith.

In the Matter of Certain Lens-Fitted Film Packages
Successfully appealed a decision of the International Trade Commission (ITC) on behalf of Jazz Photo and Seattle Filmworks/Opticolor. The case was significant because in an unprecedented move, the Court of Appeals for the Federal Circuit granted Fish & Richardson’s motion for a stay of the ITC exclusion order pending the appeal. Washington, DC principal Ralph Mittelberger led the appellate team with behind-the-scenes help from Boston principal Frank Porcelli and Washington, DC principal Mike McKeon.

Advanced Interactive v. ATI Technologies et al.
Successfully defended against an appeal of a summary judgment in favor ATI Technologies in a patent infringement case that Advanced Interactive, Inc. brought against ATI and eighteen other defendants. Washington, DC principal Ruffin Cordell led the team for ATI, with assistance from Washington, DC principal Linda Kordziel, and associate Lauren Degnan, who wrote the brief. The Court of Appeals for the Federal Circuit issued ATI a Rule 36 summary affirmance three days after the oral argument.

Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc.
Successfully defended an appeal of a summary judgment in favor of Covad Communications Group against Bell Atlantic Network Services. The Court of Appeals for the Federal Circuit affirmed the summary judgment. Ruffin Cordell was lead counsel for Covad and argued the case on appeal.

AllVoice Computing plc v. L&H Holdings USA, Inc. (formerly Dragon Systems, Inc.)
Successfully handled a federal appeal for its client L&H Holdings, which had been sued by AllVoice Computing for patent infringement. After Fish & Richardson defeated AllVoice's motion for a preliminary injunction, AllVoice appeald. A day after the Federal Circuit heard oral argument on the appeal, the Court summarily affirmed the district court’s decision. Boston principal Jolynn Lussier handled the appeal with assistance from associate Craig Smith and trial counsel Jack Skenyon.

Mentor H/S, Inc. v. Medical Device Alliance
Successfully appealed a patent case to the Court of Appeals for the Federal Circuit on behalf of Mentor Corporation. Following a jury verdict of infringement in Mentor’s favor, the district judge granted JMOL, holding Mentor's patent invalid for failure to comply with the best mode requirement. The judge also granted a new trial on many issues. Mentor hired Fish & Richardson to handle the appeal. Boston principal Bob Hillman and Twin Cities associate John Dragseth wrote Mentor’s briefs. Silicon Valley principal Frank Scherkenbach argued the case. The Federal Circuit reversed the JMOL ruling and reinstated the jury’s verdict.

Yukiyo, Ltd. v. Shiro Watanabe
Fish & Richardson successfully appealed a district court judge’s decision overturning a jury verdict in favor of our client Yukiyo, Ltd. The Court of Appeals for the Federal Circuit reinstated the jury’s verdict. This was the first case in which a CD-ROM containing a brief written in hyper-text mark-up language (HTML) was submitted to the Court of Appeals for the Federal Circuit. Frank Scherkenbach of the Silicon Valley office argued the appeal. 111 F. 3d 883, 42 USPQ2d 1474 (Fed. Cir. 1997).

Wright Medical Technology, Inc. v. Osteonics Corp.
Fish & Richardson won a reversal of a summary judgment of non-infringement from the Court of Appeals for the Federal Circuit for Wright Medical Technology, Inc. The appellate team included Boston principals Jack Skenyon and Mark Hebert, who drafted the brief, and Frank Porcelli, who argued the case before the Federal Circuit. 122 F.3d 1440, 43 USPQ2d 1837 (Fed. Cir. 1997).

Signtech USA, Ltd. v. Vutek, Inc.
Fish & Richardson successfully defended against an appeal from a finding of no infringement of Signtech’s patent. Signtech sued Vutek for infringement of its patent for ink jet printers for printing large signs. Vutek counterclaimed for infringement of its patent. A federal district court in San Antonio, Texas denied Signtech’s claims for infringement. On Vutek’s counterclaim, Signtech stipulated to infringement of Vutek’s patent, if valid. The court found Vutek’s patent valid, Signtech’s infringement willful, and awarded Vutek treble damages. On appeal, the Court of Appeals for the Federal Circuit affirmed the finding of non-infringement by Vutek, affirmed a permanent injunction award against Signtech, and set the damages award to Vutek at $420,000, three times the amount of the basic damage award. Boston principal Jack Skenyon handled the case both at trial and on appeal, assisted by Boston principal Jolynn Lussier. 174 F.3d 1352, 50 USPQ2d 1372 (Fed. Cir. 1999).

High Tech Medical Instrumentation, Inc. v. New Image Industries, Inc.
A Fish & Richardson appellate team successfully appealed a partial summary judgment of non-infringement against our client, High Tech Medical Instrumentation, Inc. (HTMI). The summary judgment was based on a claim construction that excluded the illustrated embodiment. The Court of Appeals for Federal Circuit agreed that the claim construction used by the lower court was not correct. Fish & Richardson later won summary judgment for HTMI. Principals Shelley Wessels, Jack Slobodin, and Frank Scherkenbach, all of the Silicon Valley office, represented HTMI in the district court and appeal with help from Boston principal Bob Hillman on the appeal briefs. Frank Porcelli argued the case before the Federal Circuit. Appeal No. 97-1143 (Fed. Cir. 1997).

Motorola v. Bose Corporation
Fish & Richardson successfully defended against an appeal of a Trademark Trial and Appeal Board (TTAB) decision in favor of its client Bose Corporation. Bose filed an opposition against Motorola after Motorola sought to register LIFESTYLE for cellular phones, related products, and accessories, including speakers. Bose relied on its federal registration and ten year use of LIFESTYLE for its music systems, including speakers. On appeal, the Federal Circuit granted a Rule 36 summary affirmance of the TTAB decision. Chuck Hieken, a principal in the Boston office, argued successfully both before the TTAB and the Federal Circuit. Molly Mosley-Goren, of counsel in the Twin Cities office, and Cindy Johnson, an associate in the Boston office, assisted with the appeal.

DSC Communications v. Pulse Communications
Fish & Richardson successfully appealed a judgment against our client DSC Communications. At issue was whether the copyright in software used in DSC’s digital carrier loops was infringed, directly or contributorily, when Pulsecom made “compatible” devices. On appeal, the Court of Appeals for the Federal Circuit reversed and remanded the case for a new trial. Washington, DC principal Ruffin Cordell led the appellate team, which included Boston principal Jack Skenyon and Washington, DC associates Linda Kordziel and Mike McKeon. 170 F.3d 1354, 50 USPQ2d 1001 (Fed. Cir. 1999).

Digital Biometrics, Inc. v. Identix, Inc.
Fish & Richardson successfully defended against an appeal of a summary judgment in favor of our client Identix, Inc. The trial court found that Identix did not infringe a Digital Biometrics patent on a system (and method) for capturing, storing, and displaying digital fingerprint images. Silicon Valley principal Frank Scherkenbach argued the case before the Federal Circuit. 149 F.3d 1335, 47 USPQ2d 1418 (Fed. Cir. 1998).

The Chinet Company v. Fripp Fibre Forms Inc.
A multi-office team of Fish & Richardson attorneys successfully defended a judgment of non-infringement of a design patent before the Federal Circuit. Heidi Harvey, a principal of the Boston office handled the case in the District Court and argued the appeal before the Federal Circuit. She was assisted on the briefs by principals Frank Porcelli, of the Boston office, and Frank Scherkenbach of the Silicon Valley office. The case was notable because it included the second-ever HTML brief submitted to the Federal Circuit, which lent itself particularly well to the visual aspects of the case.

Citron v. Minnesota Mining and Manufacturing Company
A Fish & Richardson appellate team successfully defended against an appeal from a grant of summary judgment in favor of our client, 3M. The issues on appeal involved claim construction under Markman and issues of doctrine of equivalents under Hilton-Davis, with related questions of the role the jury is to play. On appeal, the Court of Appeals for the Federal Circuit affirmed the summary judgment. The appellate brief was written by Boston principals Bob Hillman and Mark Hebert. Greg Madera argued the case before the Federal Circuit. Appeal No. 96-1442 (Fed. Cir. 1997).

Braun, Inc. v. Dynamics Corp. of America
Fish & Richardson successfully defended against an appeal of a $1 million jury verdict for Braun in a design patent infringement and unfair competition case. 975 F.2d 815, 24 USPQ2d 1121 (Fed. Cir. 1992).

Gechter v. Davidson
Fish & Richardson successfully appealed an unpatentability ruling of the United States Patent and Trademark Office Board of Patent Appeals and Interferences. 116 F.3d 1454, 43 USPQ2d 1030 (Fed. Cir. 1997).

Raytheon v. Roper Corp.
Fish & Richardson successfully appealed a trial court holding of invalidity for lack of utility and inoperativeness. On appeal, the court also affirmed a finding of infringement. Frank Porcelli argued the appeal. In the subsequent damages case, we obtained a $2.25 million award in settlement. 724 F.2d 951, 220 USPQ 592 (Fed. Cir. 1983).