Lerner David Named Winner of Intellectual Property Litigation Department of the Year

The New Jersey Law Journal has named Lerner David the winner of its 2015 Intellectual Property Litigation Department of the Year award.

Published since 1878, the New Jersey Law Journal is New Jersey’s premier legal periodical, and the winners of its Litigation Department of the Year award are selected by its senior editors and reporters. 

Lerner David was recognized for its litigation successes in intellectual property law, which in 2014 included victories before numerous federal courts and agencies. For instance, in addition to winning multiple federal district court and appellate decisions, Lerner David also achieved victories in the newly-createdinter partes review (“IPR”) proceedings of the U.S. Patent Office.

The following is a summary of some of the litigations that the New Jersey Law Journal considered. 

TV Interactive Data Corporation v. Sony Corp., et al.,
No. 3:10-cv-00475-JCS, (Jury Verdict on March 28, 2013)

In 2013, after a three-week patent infringement trial, Lerner David obtained a “knock-out” verdict from a nine member federal jury for its clients Sony Corporation and four Sony subsidiaries in TVI Interactive Data Corp v. Sony Corp., et al.

The jury unanimously found that Sony's PlayStation3 consoles and Blu-ray players did not infringe a single claim of four patents asserted by TV Interactive Data Corporation (“TVI”) in the lawsuit on video disc “auto-play” technology.

The jury also invalidated every patent claim at issue, finding that all asserted patent claims were invalid as anticipated by prior art of others, and as obvious to one of ordinary skill in the art. TVI had been seeking $84 million in purported damages from Sony.

Lerner David's complete win on behalf of Sony – after all other defendants settled – demonstrated its client’s confidence in the firm's litigation abilities, tenacity and expertise in patent litigation in presenting complex technological (and legal) matters to juries and to judges. The verdict was also reported in Law360:

Ube Maxell Co., Ltd. v. LG Chem, Ltd.,
IPR Nos. 2013-00470, 2013-471
United States Patent and Trademark Office
Patent Trial and Appeal Board (Jan. 27 and Jan. 28, 2014)

Lerner David got off to a fast start in 2014 by successfully defending LG Chem, Ltd against an attack against its patents that was brought by a competitor using the Patent and Trademark Office’s new, streamlined adversarial IPR proceedings.

Ube, a competitor of LG Chem in the battery industry, challenged the validity of two LG Chem patents directed to separators used in lithium-ion batteries. Ube brought the action using the Patent and Trademark Office’s new, streamlined adversarial proceedings. These proceedings, called an Inter Partes Review (“IPR”), became available in late 2012 to serve as a low cost substitute for litigation.

Although the IPR had been pending for several months, Lerner David had only two weeks to absorb the file, design a strategy, and then prepare and file a preliminary response. Although optional, a preliminary response is an important strategic tool that can be used in appropriate cases to limit the scope of an IPR or prevent the institution of an IPR altogether.

On January 27, 2014, the Patent Trial and Appeal Board (“PTAB”) denied institution of an IPR on all grounds with respect to the first challenged patent. Given that IPRs are permitted to go forward for at least some claims in the vast majority of cases, this was a rare outcome and a complete victory for LG Chem. The following day, the PTAB declined to institute IPR on seven of the nine grounds advanced by Ube regarding the second patent, including a key patent claim. Ube moved unsuccessfully for reconsideration of the PTAB's refusal to institute IPR on the rejected grounds, and LG Chem entered into an advantageous settlement with Ube.

Lerner David's success on behalf of LG Chem demonstrates the firm's ability to absorb the technology and legal background in a truncated timeframe using a team of specialists, rapidly develop a strategic approach, and implement that approach at low cost to obtain a successful result.

St. Jude Medical, Cardiology Division, Inc. v.
The Board of Regents of the University of Michigan

IPR No. 2013-00041, United States Patent and
Trademark Office, Patent Trial and Appeal Board (May 1, 2014)

Just a few months after successfully defending its client’s patents in an IPR proceeding, Lerner David helped another client successfully invalidate a patent in an IPR proceeding.

Lerner David represented St. Jude in an IPR before the Patent and Trial Appeal Board, with respect to a patent owned by the Board of Regents of the University of Michigan (“University”). This was a complex case in which St. Jude was a licensee of a patent owned by the University, and the patent was the subject of related litigation between the parties. Before St. Jude filed this IPR, very few other IPRs had been filed.

The new IPR process required Lerner David to perform extensive searching and analysis of scientific literature and patents in order to invalidate the '775 Patent, which was directed to a method of treating animal tissue for use in bioprosthetic heart valves. St. Jude's petition was filed on November 9, 2012, less than two weeks after Super Storm Sandy hit New Jersey, as a result of which significant portions were drafted using pen, paper, and flashlights.

The PTAB proceeding culminated with a lengthy oral argument and presentation of evidence before a three judge panel. Only a handful of earlier filed IPR proceedings had actually reached the oral argument stage, so Lerner David was very much navigating uncharted waters.

In a decision issued on May 1, 2014, the PTAB found in favor of St. Jude, and held all of the challenged claims of the '775 Patent invalid, which ultimately lead to the litigation being settled.

Lerner David's victory demonstrates the firm's ability to manage complex adversarial proceedings from inception through final adjudication. Lerner David's litigation experience and scientific prowess helped St. Jude prevail in a proceeding with little precedent. 

High Point SARL v. T Mobile USA, Inc.,
No. 1:12 cv 0153, 2014 U.S. Dist. LEXIS 147047 (D.N.J. Oct. 15, 2014)

Lerner David was asked to represent Ericsson, Inc. in connection with a patent infringement suit brought by High Point against Ericsson's customer, T-Mobile. High Point's infringement contentions were directed, in part, to cellular telephone network infrastructure equipment which T-Mobile had purchased from Ericsson.

The Lerner David team first arranged for Ericsson to intervene as a defendant in the action. Upon doing so, Lerner David asserted defenses which included the contention that Ericsson had been licensed by prior owners of the patents in suit and that, in light of those licenses, High Point's infringement claims against T-Mobile were barred by the doctrine of patent exhaustion. Ericsson filed a summary judgment motion on license and exhaustion issues prior to claim construction and full discovery. Lerner David partner William Mentlik argued the motion before Judge Joseph Irenas at the U.S. District Court in Camden.

On October 15, 2014, Judge Irenas issued an opinion which granted Ericsson's motion for summary judgment in all respects. The decision, which as of September 2015 has been appealed by High Point, amounted to a complete vindication of T-Mobile's position insofar as it was accused of infringement based upon Ericsson equipment.

Lerner David's win on behalf of Ericsson was especially gratifying because it showcased the firm's ability to assemble a team tailored to the needs of the case. The team included overlapping groups of lawyers with extensive patent litigation expertise; lawyers familiar with the technology at issue; and even a licensing specialist.

Orinda Intellectual Properties USA Holding
Group, Inc. v. Sony Electronics Corp. et al.,

No. C 09 04920 (N.D. Cal.), Invalidity Affirmed,
581 Fed. App'x 906 (Fed. Cir Nov. 5, 2014)

Orinda, a nonpracticing patent assertion entity, initially filed a patent infringement suit against several Sony companies in the U.S. District Court for the Eastern District of Texas, Marshall Division. Orinda asserted that its patent was infringed by several Sony product lines which employed BLU RAY technology, including PlayStation3 video game systems, disk players, VAIO computers, and computer peripheral products.

Lerner David initially filed a motion to change venue. Although the Eastern District of Texas has been ____ and continues to be ____ reluctant to transfer cases out of its jurisdiction, the Texas court granted Sony's motion and transferred the case to the Northern District of California. Orinda Intellectual Props. USA Holding Grp., Inc. v. Sony Corp. et al., No. 2:8 cv 323, 2009 U.S. Dist. LEXIS 98881 (E.D. Tex. Sept. 29, 2009).

Following the transfer, the Lerner David team filed a request in the U.S. Patent and Trademark Office for ex parte reexamination of Orinda's patent. With the reexamination having been initiated, the Lerner David team prevailed on a motion to stay the infringement suit pending the outcome of the reexamination. Orinda Intellectual Props. USA Holding Grp., Inc. v. Sony Electronics Corp., No. C 09 04920, 2010 U.S. Dist. LEXIS 82729 (N.D. Cal. Aug. 11, 2010).

Based on the invalidity arguments advanced on behalf of Sony in its reexamination request, all claims that had been asserted against Sony were held invalid. Orinda appealed the ruling, but on November 5, 2014, a three judge panel of the Federal Circuit issued a per curiam affirmance of the reexamination decision. In re Orinda Intellectual Props. USA Holding Grp., Inc., 581 Fed. App'x 906, 2014 U.S. App. LEXIS 21376 (Fed. Cir. Nov. 5, 2014).

Thus, on behalf of Sony, the Lerner David team achieved a complete and final victory in a suit that targeted an array of successful Sony products, and thus raised a risk of a substantial damage claim. The Lerner David team did so by first obtaining a change of venue to a more appropriate forum than the one in which the suit had been filed. The team then successfully brought the dispute before what is perceived as a more hospitable forum: the U.S. Patent and Trademark Office, where there is no statutory presumption of validity.

Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nos. 2013 1588, 1589, 2014 1112, 1687,
2014 U.S. App. LEXIS 24258 (Fed. Cir. Dec. 23, 2014)

In 2012, Content Extraction and Transmission LLC (“CET”) filed patent infringement suits against five banks which had purchased automatic teller machines (“ATMs”) from Lerner David’s client Diebold, Incorporated. CET contended that the use by the banks of ATMs to process checks and paper currency deposited into the ATMs by the banks' customers infringed CET's patents. On behalf of Diebold, Lerner David filed a declaratory judgment suit against CET in the District of New Jersey, seeking an adjudication of noninfringement and invalidity.

The Lerner David team initially worked with a team from Winston & Strawn representing Bank of America, in preparing a motion to dismiss CET's complaint against the bank based upon lack of patentable subject matter. However, shortly before a scheduled oral argument, the parties to that action settled. Thereafter, attorneys representing PNC Bank from the firm of Bakos & Kritzer filed a substantially identical motion to dismiss which included arguments previously drafted by Lerner David. That motion was eventually granted by U.S. District Judge Michael Shipp, holding the four asserted patents invalid under 35 U.S.C. § 101.

CET appealed to the U.S. Court of Appeals for the Federal Circuit. Working with PNC's counsel and counsel representing Wells Fargo Bank, Lerner David defended the district court's judgment at the Federal Circuit.

On December 23, 2014, the Federal Circuit issued a unanimous precedential opinion affirming the invalidation of all 242 claims across four patents owned by CET. The appeals court rejected CET's arguments that a decision on patent eligibility had to await formal claim construction. It also found no error in the district court analyzing two claims which were representative of all claims of the four patents for purposes of its § 101 analysis, and no failure by the district court to give effect to the presumption of validity.

Lerner David's win on behalf of Diebold demonstrated the firm's ability to master an increasingly important issue in patent law: patent eligible subject matter under 35 U.S.C. § 101. It also showcased the firm's litigation expertise, not only in practice before U.S. District Courts, but also at the Court of Appeals for the Federal Circuit.