Overview

In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof — Int’l Trade Comm’n Investigation No. 337-TA-997 (I.T.C. and companion case in S.D. Cal.).  Lead counsel for complainant ResMed in investigation against Chinese manufacturer BMC and U.S. distributor 3B Medical involving four ResMed patents on CPAP flow generators to treat sleep apnea.  Case settled on eve of trial in January 2017.

In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof — Int’l Trade Comm’n Investigation No. 337-TA-890 (I.T.C. and companion case in S.D. Cal.).  Lead counsel for complainant ResMed in investigation against Chinese manufacturer BMC and U.S. distributor 3B Medical relating to six ResMed patents on CPAP masks and flow generators to treat sleep apnea.  Six-day trial held in April 2014.  Final determination finding violation and issuing exclusion order against all accused BMC masks in December 2014; remanded to ITC in April 2016 for reconsideration of domestic industry in light of Lelo Inc. v. International Trade Commission; on remand, in November 2016, ALJ Pender found domestic investments to be qualitatively but not quantitatively significant under Lelo.

In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components T hereof — Int’l Trade Comm’n Investigation No. 337-TA-879 (I.T.C. and companion case in C.D. Cal.).  Counsel for ResMed in ITC investigation against Taiwanese manufacturer APEX involving seven ResMed patents on CPAP masks and flow generators for treating sleep apnea.  ITC investigation resulted in consent order barring APEX from importing, selling or importing for sale any infringing products; hearing on Apex’s request for advisory opinion regarding certain design-around products held in March 2014. 

Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. — Civ. No. 03-0597 (D. Ariz.).  Represented Gore on remand from Federal Circuit relating to issues of willfulness and related impact on original trial.

Products liability

In re Fresenius GranuFlo/NaturaLyte Dialysate Products Liability Litigation — (MDL No. 2428 and various state court actions).  Trial counsel for Fresenius in products liability mass tort litigation relating to the use of acid concentrate products during dialysis, which the plaintiffs alleged resulted in sudden cardiac arrest.

Dial v. Fresenius Medical Care Holdings, Inc. – C.A. No. 14-11101-DPW (D. Mass.).  Co-lead trial counsel for defendant Fresenius in four-week trial in which plaintiff alleged use of NaturaLyte liquid acid concentrate in hemodialysis treatment caused patient’s death; obtained defense verdict of no causation in March 2017.

Ogburn-Sisneros v. Fresenius Medical Care Holdings, Inc. – No. MICV2013-05050 (Mass. Sup. Ct.).  Trial counsel for defendant Fresenius in three-week trial in which plaintiff alleged use of GranuFlo granulated acid concentrate in hemodialysis treatment caused patient’s death; obtained defense verdict of no causation in December 2015.

Pharmaceuticals (Hatch-Waxman)

Trial counsel for leading pharmaceutical company in bench trial in October 2016 in Hatch-Waxman case in which defendant sought to manufacture and sell a generic version of plaintiff’s glaucoma treatment, protected by three patents.  Court found for plaintiff, keeping in place the previous permanent injunction.

Trial counsel for leading pharmaceutical company in five-day bench trial in July 2013 in Hatch-Waxman case in which four defendants sought to manufacture and sell a generic version of plaintiff’s glaucoma treatment, protected by five patents. Court found all asserted claims valid and infringed and granted plaintiff a permanent injunction keeping the generics off the market.

Trial counsel for leading pharmaceutical company in eight-day bench trial in November 2012 in Hatch-Waxman case in which three defendants sought to manufacture and sell a generic version of plaintiff’s ocular treatment, protected by two patents.

Trial counsel for leading pharmaceutical company in bench trial in August 2011 in Hatch-Waxman case in which four defendants sought to manufacture and sell a generic version of plaintiff’s glaucoma treatment, protected by four patents.  Court found for plaintiff and granted plaintiff a permanent injunction.  Federal Circuit affirmed with regard to at least one patent, keeping the generics off the market.

Represented leading pharmaceutical company in bench trial in February 2011 in Hatch-Waxman case in which three defendants sought to manufacture and sell a generic version of plaintiff’s glaucoma treatment, protected by two patents.  Court found all asserted claims valid and infringed and granted permanent injunction keeping the generics off the market.  Affirmed by Federal Circuit.

False Claims Act

United States ex rel. Gonzalez v. Fresenius Medical Care — No. 07-CV-247 (W.D. Tex.).  Defended Fresenius Medical Care in qui tam action involving seven counts under the False Claims Act.  Tried to jury verdict in month-long trial in El Paso, Texas in February 2010.  Jury found for Fresenius on all claims; affirmed by Fifth Circuit Court of Appeals.  Published at 748 F. Supp. 2d 95 (W.D. Tex. 2010); 761 F. Supp. 2d 442 (W.D. Tex. 2010); and 689 F.3d 470 (5^th Cir. 2012)

Software and encryption

RPost Holdings, Inc. v. Zix Corp. — No. 2:11-cv-00064 (E.D. Tex.).  Represented Zix in patent litigation relating to RPost’s assertions that Zix’s ZixMail e-mail encryption system infringed RPost patent relating to e-mail receipt confirmation.  Case settled favorably after claim construction.

Zix Corp. v. Echoworx Corp. — No. 3:12-cv-1102 (N.D. Tex.).  Represented Zix in patent litigation asserting that Echoworx’s product infringe two Zix patents relating to e-mail security and encryption.  Case settled favorably.

Uniloc USA, Inc. v. Microsoft Corp. — No. 03–440S. (D.R.I.).  Trial counsel for Microsoft in jury trial in March 2012 on damages issues relating to patent on software registration technology; case settled in second week of trial.  This case, along with the Lucent case below, is regularly cited among the most important damages cases in patent law in recent years.  Published at 632 F.3d 1292 (Fed. Cir. 2011); 640 F. Supp. 2d 150 (D.R.I. 2009); 290 Fed. Appx. 337 (Fed. Cir. 2008); and 447 F. Supp. 2d 177 (D.R.I. 2006).

Lucent Technologies, Inc. v. Gateway, Inc. et al. — No. 07-CV-2000 H (S.D. Cal.).  Co-lead trial counsel for Microsoft in jury trial in July 2011 on remand from the Federal Circuit relating to damages on user-interface technology patent; original jury had awarded over $356 million; second jury awarded $70 million; argued post-trial JMOL motion in which Court (J. Huff) reduced damages to $26 million. Case settled shortly thereafter. One of the most important damages cases in patent law in recent years. Published at 2011 WL 5513225 (S.D. Cal. 2011); 580 F.3d 1301 (Fed. Cir. 2009); and 580 F. Supp. 2d 1016 (S.D. Cal. 2008).

Microsoft Corp. v. Lucent Technologies, Inc. — No. 06-CV-0684 H (S.D. Cal.).  Lead trial counsel for Microsoft in 7-week jury trial in April-June 2008 in patent case relating to video compression technology. Plaintiff sought more than $400 million in damages. Jury found that none of Microsoft’s products infringe and awarded no damages. Named one of the “Top 10 Litigation Wins of 2008″ by IP Law and Business. Published at 2008 WL 2872738 (S.D. Cal. 2008).

Microsoft Corp. v. Lucent Technologies, Inc. — No. 07-CV-2000 H (S.D. Cal.).  Trial counsel for Microsoft in 6-week jury trial in February-April 2008 in patent case relating to four patents on video compression, video displays, stylus-based input devices and user interfaces.  Plaintiff sought more than $2 billion in damages.  Jury found Lucent’s video compression patent invalid; found that Microsoft’s products do not infringe the video compression or video display patents, and awarded reduced damages on the other two patents, which were further reduced after appeal.  Named, with the case above, one of the “Top 10 Litigation Wins of 2008″ by IP Law and Business.  Published at 580 F.3d 1301 (Fed. Cir. 2009); and 580 F. Supp. 2d 1016 (S.D. Cal. 2008).

Lanham Act and unfair competition

Avid Identification Sys., Inc. v. Philips Semiconductors Inc. — No. 2:04-cv-183 (E.D. Tex.).  Co-lead trial counsel for Avid in two-week jury trial asserting patent infringement (3 patents) and Lanham Act claims relating to RFID transponders and readers. Tried to jury verdict in May 2006. Obtained mid-trial settlement from two defendants and jury verdict against remaining defendants, including Lanham Act damages. Published at 2006 WL 278265 (E.D. Tex. May 18, 2006); 2006 WL 278265 (E.D. Tex. February 3, 2006); 2007 WL 2901415 (E.D. Tex. Sept. 28, 2007); 603 F.3d 967, 973 (Fed. Cir. 2010)

Stonebreaker v. Medical Management Int’l, Inc. — No. GIC 830293 (Cal. Sup. Ct.).  Co-lead trial counsel for Stonebreaker and Avid Identification Systems in jury trial asserting unfair competition under California Code Section 17200 and the Lanham Act relating to RFID technology. Tried to jury in July 2005. Obtained mid-trial settlement that included recovery of damages and a stipulated permanent injunction against the defendant.

Semiconductors and communications

Applied Signal Technologies, Inc. v. ViaSat, et al. — No. 09-cv-02180 (N.D. Cal.) – Represented ViaSat in patent litigation relating to five patents on satellite communications and cancellation technology.  Case settled favorably.

Coppola v. Powerware Corp. — CV 03-03667 (C.D. Cal.).  Defended Powerware in patent infringement case relating to uninterruptible power supplies for computers and computer networks.  Case settled prior to Markman hearing.

Maxim Integrated Products adv. Microelectronics Modules Corp. — No. 01 C 0272 (E.D. Wi.).  Defended Maxim in patent infringement case relating to circuit design for switching voltage regulators.  Case settled after favorable Markman ruling.

Lemelson Medical, Educational & Research Foundation v. Intel Corp. — No. 98-1413 (D. Ariz.).  Defended Intel in patent infringement case relating to semiconductor manufacturing and machine vision and bar-coding technology.  Case settled after favorable Markman ruling.  Published at 2002 WL 31323299, 64 U.S.P.Q.2d 1172 (D. Ariz. July 30, 2002); 2002 WL 453212, 61 U.S.P.Q.2d 1905 (D. Ariz. Feb. 26, 2002); 1999 WL 813940, 52 U.S.P.Q.2d 1122 (D. Ariz. Aug. 18, 1999).

Maxim Integrated Products adv. Sipex Corp. — 99 CF 10096 RCL (D. Mass.).  Represented Maxim as plaintiff in infringement case asserting patent relating to automatic shutdown circuitry for RS-232 interface devices.  Case settled after favorable Markman ruling.  Published at 2002 WL 1046699 (D. Mass. May 24, 2002).

Cypress Semiconductor Corp. adv. EMI Group North America, Inc. — No. Civ.A. 98-350 (D. Del.).  Defended Cypress in infringement case relating to two patents on semiconductor manufacturing technology.  Tried to jury verdict in 1999. Jury verdict of non-infringement of all claims and invalidity based on non-enablement, lack of utility, anticipation and obviousness; judgment affirmed by Federal Circuit.  Published at 268 F.2d 1342 (Fed. Cir. 2001); 104 F. Supp. 2d 370 (D. Del. 2000); 68 F. Supp. 2d 421 (D. Del. 1999).

Consumer goods

Callaway Golf Co. v. Acushnet Co. — No. 06-91 (D. Del.).  Co-lead trial counsel for Callaway Golf in case asserting that Acushnet’s popular Titleist Pro V1 and Pro V1x golf balls infringe four Callaway Golf patents on golf ball construction. Tried once to jury verdict in December 2007, then tried again to jury verdict in March 2010, with intervening appeal to the Federal Circuit. Case ultimately settled. Published at 523 F. Supp. 2d 388 (D. Del. 2007); 576 F.3d 1331 (Fed. Cir. 2009).