Successes

Lerner David Establishes Lower Court Erred

On behalf of our client New York University (“NYU”) Lerner David won an appeal before the New York Supreme Court Appellate Division. The Appellate Division reversed a lower court decision that had dismissed a breach of contract action brought by NYU against Pfizer Inc. and reinstated the lawsuit. The suit involves an exclusive technology license from NYU to a small company named Sugen, which was ultimately acquired by Pfizer. The license concerned fundamental technology in the field of targeted cancer therapies. Pfizer launched a drug known as XALKORI® to treat non-small cell lung cancer. NYU filed suit alleging that it was entitled to royalties under a 1996 amendment of the license agreement. In late 2015, the New York Supreme Court, Commercial Division, construed the agreement favorably for Pfizer, which resulted in dismissal of NYU’s claim. As urged by Lerner David, the Appellate Division found ambiguity in the agreement and held that in the face of countervailing reasonable interpretations, which could not be resolved at an early procedural stage, the complaint should not have been dismissed. The majority rejected Pfizer’s contention that NYU’s reading of the 1996 amendment would lead to a “commercially unreasonable” result. Adopting Lerner David’s arguments, the Court based its decision on the fact that NYU had agreed to give up certain royalties in the short term in exchange for royalties on certain future products (such as XALKORI®), coupled with the fact that the products on which royalties were being sought were alleged to have been derived from NYU technology. NYU plans to continue seeking a 2.5% royalty on Pfizer’s sales of XALKORI®, which (cumulatively) are believed to have exceeded $1.5 billion. (The case is New York University v. Pfizer Inc., 2017 N.Y. App. Div. LEXIS 03464, 2017 N.Y. Slip Op. 03464 (Appellate Div., First Dep’t, May 2, 2017.))

Practice:
Litigation
Attorney(s):
Roy H. Wepner,
Stephen F. Roth

Lerner David Triumphs In Australian Trademark Strategy

Our firm developed a strategy for our client Bed Bath & Beyond in pursuit of revoking a trademark registration owned by a New Zealand company for the mark BED BATH & BEYOND. We successfully formulated and implemented a strategy by which the New Zealand company’s Australian registration for BED BATH & BEYOND was revoked and its effort to oppose our client’s application to register the BED BATH & BEYOND mark was defeated. With the assistance of Australian counsel, we were able to establish unequivocally that the New Zealand company was not making use of its BED BATH & BEYOND mark, resulting in revocation of the New Zealand company’s registration by IP Australia. IP Australia also ruled against the New Zealand company in its opposition to our client’s application for registration of the BED BATH & BEYOND mark.

Practice:
Trademark and Trade Dress Procurement
Attorney(s):
Bruce H. Sales,
Gregg A. Paradise

Lerner David Awarded Fees in Motion to Stop Opposing Counsel from Contacting Client's Employees

In our representation of Delta Air Lines in defense of a patent suit involving boarding passes, the plaintiff's attorneys contacted Delta's employees without our permission. To stop this conduct, we moved for sanctions and an Order from the Court barring any further contacts. The Court granted our request, and to "admonish" plaintiff's counsel, required the plaintiff's counsel pay Delta $25,000. As Mr. Stephen Roth, a partner, stated in an article discussing the success, “All of this together will hopefully bring an end to the abuses occurring on plaintiff’s side.” Once again, Lerner David shows that its central job is to protect the client, both on the merits of the case and in prevention the disruption litigation often causes. (The case is Freeman v. Delta Air Lines Inc., case number 4:13-cv-04179, in the U.S. District Court for the Northern District of California.)

Practice:
Litigation
Attorney(s):
Bruce H. Sales,
Stephen F. Roth,
Alexander Solo

Lerner David Protects Client from Harassment by Opposing Counsel

In a patent infringement action against our client, Delta Air Lines, the patentee’s counsel repeatedly contacted Delta’s current and former employees to get information about Delta’s confidential airline boarding systems. Consistent with Lerner David’s mission to serve the client’s interests from the top of the company to the bottom, Delta sought sanctions from the Court. The Court agreed with Lerner David that such contacts were “inappropriate” and “strongly reprimanded” opposing counsel. The Court also awarded fees to compensate Delta. As noted in the article published about the case, Lerner David took this recourse to protect its client. And to that end, we were able to stop opposing counsel from disrupting the day to day business of Delta. (The case is Freeman v. Delta Air Lines Inc., case number 4:13-cv-04179, in the U.S. District Court for the Northern District of California.)

Practice:
Litigation
Attorney(s):
Stephen F. Roth,
Alexander Solo,
Bruce H. Sales

PTAB Institutes Trial on IPR Petition filed by Lerner David on behalf of Amneal

In companion Decisions issued in favor of Lerner David client Amneal Pharmaceuticals, the Patent Trial and Appeal Board instituted Inter Partes Review on three grounds against all challenged claims of U.S. Patent No. 9,034,376, listed in the Orange Book for OxyContin® (oxycodone HCl). These Institution Decisions follow a pair of decisions issued by the PTAB in November 2016 against a different listed patent.

Practice:
Post-Grant Procedures (IPR, PGR...),
Litigation
Attorney(s):
Michael H. Teschner,
Maegan A. Fuller,
Nichole Martiak Valeyko,
Tedd W. Van Buskirk

Sony Prevails in Two IPRs Invalidating Claims of Imation Patents

On December 27, 2016 and January 3, 2017, Lerner David obtained decisions from the Patent Trial and Appeal Board (“PTAB”) finding unpatentable all challenged claims of U.S. Patent Nos. 6,908,038 and 6,890,188. Imation filed a lawsuit in 2014 against Sony Electronics Inc. for patent infringement of the ‘038 and ‘188 patents in the District of Minnesota (Imation Corp. v. Sony Electronics Inc., C.A. No. 14 628 (D. Minn.) (MJD/SER)). The patents were alleged to cover flash drives having multiple connectors. Imation particularly alleged that Sony’s MicroVault Smartphone USB Flash Drive infringed claims of both patents. Lerner David filed two petitions on behalf of Sony Corporation seeking Inter Partes Review of various claims of the ‘038 and ‘188 patents, and obtained a stay of the district court proceedings. The PTAB’s final written decisions found that Sony proved that all challenged claims of the ‘038 patent were invalid as anticipated by a prior art patent, and that all challenged claims of the ‘188 patent were invalid as both anticipated and obvious over the prior art. The decision for the ‘188 patent followed an unsuccessful attempt by another petitioner to challenge Imation’s patent claims based on the same prior art. Based on the more complete record developed by Lerner David in the present IPRs, however, the PTAB determined that Sony met its burden of proving that all challenged claims were invalid. The PTAB cases are Sony Corp. v. Imation Corp., Case No. IPR2015-1556, Paper No. 19 (Dec. 27, 2016) and Sony Corp. v. Imation Corp., Case No. IPR2015-1557, Paper No. 17 (Jan. 3, 2017).

Practice:
Litigation
Attorney(s):
Gregory S. Gewirtz,
Russell W. Faegenburg

Federal Circuit Affirms Judgment of Noninfringement in Favor of Buffalo

On December 28, 2016, Lerner David obtained an affirmance from the United States Court of Appeals for the Federal Circuit of a final judgment of non-infringement of U.S. Patent No. 4,977,577 on behalf of its client Buffalo Americas, Inc. Buffalo was sued by Northpeak Wireless, LLC in October 2008 for infringement of the ‘577 Patent and related U.S. Patent No. 5,987,058. Northpeak contended that Buffalo’s 802.11(b)-compliant “Wi-Fi” products infringed Northpeak’s patents directed to spread-spectrum wireless communication devices. After successfully transferring the case from Alabama to the Northern District of California, Buffalo and the other defendants then instituted ex parte reexamination against both patents, and stayed the litigation pending reexamination, during which the challenged claims of the ‘058 Patent were invalidated. The claims of the ‘577 Patent survived reexamination, but were significantly narrowed in light of a prior art reference that Lerner David attorneys originally identified and advanced as a basis for invalidity. This facilitated a favorable claim construction ruling, which was the basis for the district court’s judgment of non-infringement. The Federal Circuit affirmed the district court’s construction of a dispositive claim term in light of, inter alia, the arguments Northpeak had made during reexamination to avoid the prior art. The case is Northpeak Wireless, LLC v. 3Com Corp. et al., Appeal Nos. 2016-1477, 2016-1481 (Fed. Cir.).

Practice:
Litigation
Attorney(s):
Gregory S. Gewirtz,
Russell W. Faegenburg

Lerner David Defeats UDRP Complaint for Vipme.com Domain Name

A decision issued on December 20, 2016 by a FORUM administrative panel, resolving a dispute under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). Vipshop (US) Inc. prevailed against a UDRP complaint that was filed by VIP ME Enterprises LLC. The UDRP was filed on November 8, 2016 and requested that VIPME.com, a domain name used by Vipshop (US) Inc., be transferred to the Complainant because it violated Complainant’s trademark rights and was being used in bad faith. The Complainant owns a registered service-mark VIPME for, among other things, advertising on the Internet for others, and uses its VIP-ME.net website to promote its ViPme app that offers discounted bottle services in night clubs. Vipshop (US) Inc. is an online retailer that offers flash sales on women’s clothing and fashion accessories. The complaint alleged that Vipshop (US) used its VIPME.com domain name to advertise third party goods, albeit women’s clothing and apparel, in violation of Complainant’s registered VIPME service-mark. It also alleged that Vipshop (US) Inc. knew or should have known that Complainant applied for the VIPME service-mark before Vipshop (US) Inc. chose the name of its company and registered the VIPME.com domain name. As such, Complainant asserted that Vipshop (US) Inc. had no right or legitimate interest in the VIPME.com domain name and was using the domain name in bad faith. The panel disagreed with the Complainant and found it failed to show that Vipshop (US) Inc. lacked rights and a legitimate interest in VIPME.com and also failed to establish that Vipshop (US) Inc. acted in bad faith when it registered and used VIPME.com. Thus, the panel concluded that the Complainant failed to establish two of the three elements required to succeed in a UDRP proceeding and denied the complaint.

Practice:
Trademark and Trade Dress Procurement
Attorney(s):
Aaron S. Eckenthal

PTAB Institutes Trial on IPR Petition filed by Lerner David on behalf of Luye Pharma

In a Decision issued in favor of Lerner David clients Luye Pharma Group Ltd., Luye Pharma (USA) Ltd., Shandong Luye Pharmaceutical Co., Ltd., and Nanjing Luye Pharmaceutical Co., Ltd. the Patent Trial and Appeal Board instituted Inter Partes Review of all challenged claims of U.S. Patent No. 6,667,061, listed in the Orange Book for Risperdal®CONSTA® (risperidone).

Practice:
Post-Grant Procedures (IPR, PGR...),
Litigation
Attorney(s):
William L. Mentlik,
Paul H. Kochanski,
Tedd W. Van Buskirk,
Nichole Martiak Valeyko

PTAB Institutes Trial on Two IPR Petitions filed by Lerner David on behalf of Amneal

In two related Decisions issued in favor of Lerner David client Amneal Pharmaceuticals, the Patent Trial and Appeal Board instituted Inter Partes Review on three grounds challenging U.S. Patent No. 9,060,976, listed in the Orange Book for OxyContin® (oxycodone HCl).

Practice:
Post-Grant Procedures (IPR, PGR...),
Litigation
Attorney(s):
Michael H. Teschner,
Maegan A. Fuller,
Tedd W. Van Buskirk,
Nichole Martiak Valeyko

Lerner David Succeeds in Having IPR Instituted on Behalf of MVG, Inc.

On October 12, 2016, Lerner David received a decision from the Patent Trial and Appeal Board instituting Inter Partes Review on behalf of MVG against an ETS-Lindgren patent (IPR2016-00879). The patent, U.S. Patent No. 8,331,869, generally relates to complex radiation pattern measurements for testing the radiated performance of wireless devices. The Board found that MVG had made a showing that all challenged claims of the patents were either anticipated or obvious in light of the prior art. Indeed, the Board decided that the IPR should be instituted on all seven different grounds requested by MVG, including different combinations of prior art against many of the same claims.

Practice:
Post-Grant Procedures (IPR, PGR...)
Attorney(s):
Orville R. Cockings,
Robert B. Hander

Microwave Vision’s Patent Upheld Over Indefiniteness Defense

In April, 2014, Lerner David clients Microwave Vision, SA and MVG Industries sued ETS Lindgren Inc. for infringement of Microwave’s U.S. Patent No. 7,443,170 covering technology for multi probe array antenna measurement systems. In July, 2015 Lerner David obtained a claim construction Order favorable to Microwave’s patent rights. Microwave Vision, S.A. v. ESCO Techs. Inc., No. 14 CV 1153 SCJ, 2015 WL 11237099 (N.D.Ga. July 5, 2015), reconsideration denied, 2016 WL 4111361 (N.D. Ga. Feb. 2, 2016). During the prosecution of this case, ETS filed an IPR to invalidate the ‘170 Patent. The PTAB denied ETS’s petition, concluding that ETS had failed to identify a structure that performed a function of the means in claim 12. ETS attempted to use the decision by the PTAB offensively in the litigation by filing a motion for summary judgment that the ‘170 Patent was invalid as indefinite. In an Opinion and Order dated September 20, 2016, Judge Steve C. Jones reviewed prior decisions and the decision by the PTAB, and reaffirmed his decision that claim 12 of the ‘170 Patent is not invalid as indefinite. Judge Jones concluded that claim 12 of the patent clearly links its functions with corresponding structure in the ‘170 Patent. The court also granted Microwave summary judgment that the ‘170 Patent was not invalid. The decision is report at Microwave Vision v. ETS Lindgren, No. 14 CV 1153 SCJ, 2016 U.S. Dist. LEXIS 131729 (N.D. Ga. Sep. 20, 2016).

Practice:
Litigation
Attorney(s):
Charles P. Kennedy,
Robert B. Hander

Lerner David Invalidates Key Prasugrel Patents Before PTAB on Behalf of Dr. Reddy’s Laboratories

In two Final Written Decisions entered by the Patent Trial and Appeal Board, Lerner David attorneys prevailed in invalidating all challenged claims of two Orange Book-listed patents directed to Effient® (prasugrel). Lerner David was one of five firms representing a total of 20 named generic pharmaceutical Petitioners in two related Inter Partes Reviews. These decisions pave the way for the prevailing generics to launch their products as early as October 14, 2017.

Practice:
Post-Grant Procedures (IPR, PGR...),
Litigation
Attorney(s):
William L. Mentlik,
Michael H. Teschner,
Paul H. Kochanski,
Tedd W. Van Buskirk

Lerner David Succeeds In Defeating 101/Alice Motion

Lerner David defeated an “Alice” motion to dismiss a patent infringement claim filed by Lowe’s Companies, Inc in Iron Gate Security, Inc. v. Lowe’s Companies, Inc., 15-cv-8814-KBF, S.D.N.Y. Lowe’s contended that a patent for indexing multimedia data such as video, which was asserted by Iron Gate Security, Inc. against Lowe’s Iris surveillance system, was an unpatentable abstract idea under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). On August 3, 2016, Judge Katherine B. Forrest of the Southern District of New York issued an opinion in which where she agreed with Iron Gate and denied Lowe’s motion, holding that the patent was not directed to an abstract concept (thereby passing step one of Alice), and also contained an inventive concept that transformed the claims into a patent-eligible invention (thereby passing step two of Alice).

Practice:
Litigation
Attorney(s):
Gregory S. Gewirtz,
Jonathan A. David

Lerner David Achieves Successful Markman Ruling

Lerner David represented Certified Measurement, LLC in a patent infringement case against Alstom Grid LLC, involving remote sensing devices. At issue were three patents (5,828,751; 6,282,648; and 6,289,453) that cover a novel way to certifying a physical measurement, such that a person who was not present when the measurement was taken can verify the accuracy of the measurement and the time it was taken. Stephen Roth and Aaron Eckenthal were lead counsel On July 22, 2016, Aaron argued the Markman hearing before Judge Burke in the District of Delaware. In the Court’s Report and Recommendation Judge Burke wholly adopted Lerner David’s claim construction positions for all terms at issue. After that ruling, Lerner David was able to achieve a favorable settlement on behalf of Certified Measurement. The case is Alstom Grid LLC v. Certified Measurement LLC, No. 1:15-cv-00072-LPS-CJB in the United States District Court for the District of Delaware.

Practice:
Litigation
Attorney(s):
Aaron S. Eckenthal,
Stephen F. Roth

PTAB Denies Petition for IPR of Lambeth Magnetic Structures

In a decision in favor of Lambeth Magnetic Structure, the Patent Trial and Appeal Board denied TDK Corporation’s request for Inter Partes Review of U.S. Patent 7,128,988 (IPR2016-00013). The ‘988 patent relates to magnetic structures used in devices such as memories. In its decision on April 12, 2016, the Board decided that TDK had not met its burden to show a reasonable likelihood that TDK would prevail with respect to at least one challenged claim. Instead, the Board ruled in Lerner David’s and Lambeth’s favor in finding that the petitioner provided insufficient evidence to show certain claim limitations were taught or suggested by the prior art.

Practice:
Post-Grant Procedures (IPR, PGR...)
Attorney(s):
Alexander Solo,
Orville R. Cockings

Lerner David Establishes License As Basis for Patent Exhaustion

In High Point SARL v. T-Mobile USA, Inc., 640 F. Appx 917 (Fed. Cir. 2016), a patent infringement suit brought against T-Mobile involving cellular telephone network infrastructure equipment, a Lerner David team represented Ericsson Inc., one of T-Mobile’s suppliers. After intervening at the district court, we established on summary judgment that the Ericsson components had been licensed by a previous owner of the patents, which provided support for T-Mobile to prevail on a defense of patent exhaustion. The judgment was affirmed in all respects by the Federal Circuit.

Practice:
Litigation
Attorney(s):
William L. Mentlik,
Roy H. Wepner,
Jonathan A. David,
Jeffrey S. Dickey,
Robert B. Hander

Lerner David Succeeds In Instituting IPRs On Behalf Of Sony

On December 25, 2015 and January 4, 2016, Lerner David received decisions from the Patent Trial and Appeal Board instituting Inter Partes Review on behalf of Sony Corporation against two Imation patents. The patents, U.S. Patent Nos. 6,908,038 and 6,890,188, are directed to multi-connector portable memory cards. The Board found that Sony had made a showing that all challenged claims of the patents were either anticipated or obvious in light of the prior art. The Board’s institution of IPRs follows Lerner David success in obtaining a stay of related district court proceedings involving the same patents. Imation sued Sony in the District of Minnesota in 2014, alleging that Sony’s MicroVault Smartphone USB Flash Drive infringed both the ‘038 and ‘188 Patents. Following initial contentions, early discovery and the filing of the two IPR petitions, the case was stayed, allowing invalidity issues at the heart of the case to be litigated in the PTAB, with its favorable burden of proof and claim construction standards. The PTAB cases are Sony Corp. v. Imation Corp., Case No. IPR2015-1556, Paper No. 8 (Dec. 29, 2015) and Sony Corp. v. Imation Corp., Case No. IPR2015-1557, Paper No. 7 (Jan. 4, 2016).

Practice:
Post-Grant Procedures (IPR, PGR...),
Litigation
Attorney(s):
Russell W. Faegenburg,
Gregory S. Gewirtz

Lerner David Obtains Judgment Of Noninfringement For Buffalo

On December 16, 2015, Lerner David obtained a final judgment of non-infringement of U.S. Patent No. 4,977,577 on behalf of its client Buffalo Americas, Inc. The decision concluded litigation in the United States District Court for the Northern District of California and the Patent Office. Northpeak Wireless originally sued Buffalo for infringement of the ‘577 Patent and related U.S. Patent No. 5,987,058 in October 2008, contending that Buffalo’s 802.11(b)-compliant “Wi-Fi” products infringed Northpeak’s patents directed to spread-spectrum wireless communication devices. Buffalo and other defendants successfully transferred the case from Alabama to the Northern District of California. The defendants then instituted ex parte reexamination against both patents, and stayed the litigation pending reexamination, during which the challenged claims of the ‘058 Patent were invalidated. The claims of the ‘577 Patent survived reexamination, but were significantly narrowed. This facilitated a favorable claim construction ruling, which was the basis of the judgment of non-infringement. The case is Northpeak Wireless, LLC v. 3Com Corp. et al., C.A. No. 09-602-SI (N.D. Cal.). Northpeak has filed an appeal in the Court of Appeals for the Federal Circuit.

Practice:
Litigation
Attorney(s):
Russell W. Faegenburg,
Gregory S. Gewirtz

Wepner Successfully Mediates Patent and Trade Dress Case

On November 4, 2015, Lerner David partner Roy Wepner successfully mediated a case involving utility patents, design patents and trade dress, The Eastern Company v. Phoenix USA, Inc., Case No. 1:15-cv-00327 in the U. S. District Court for the Northern District of Ohio.

Attorney(s):
Roy H. Wepner

Lerner David Wins Transfer of Patent Lawsuit

Lerner David represents MVG, Inc. of Kennesaw, Georgia that sells antenna measurement systems. MVG is a subsidiary of Microwave Vision, a global group of high-tech companies developing technologies for measurement solutions, antennas, advanced positioning systems, absorbing materials and shielding for anechoic chambers. ETS Lindgren, Inc., a competitor with its home base in Austin, Texas, sued MVG in the United States District Court for the Western District of Texas for infringement of U.S. Patent 8,331,869 for an antenna measurement system generically known as a “MIMO” system. Lerner David promptly challenged jurisdiction and moved to have this suit transferred to Atlanta, Georgia where MVG is based. On November 4, 2015, Judge Sam Sparks of the United States District Court for the Western District of Texas in a memorandum opinion granted MVG’s motion, finding no jurisdiction over MVG in the Western District of Texas and transferring the case to the Northern District of Georgia. The decision is reported as ETS Lindgren, Inc. v. MVG, Inc., 2015 U.S. Dist. LEXIS 149906 (W.D. Tex. Nov. 4. 2015).

Practice:
Litigation
Attorney(s):
Charles P. Kennedy,
Orville R. Cockings,
Robert B. Hander

Lerner David Obtains Injunction and Damages for Renowned Martial Arts Organization

On August 17, 2015, following a four day trademark infringement trial, Lerner David obtained an injunction and money damages for its client United States Soo Bahk Do Moo Do Kwan Federation. Lerner David’s client is the United States organization of the internationally renowned Moo Duk Kwan martial arts organization, founded in Korea in 1945 by Hwang Kee. On April 10, 2012, plaintiff sued Tang Soo Karate School, Inc. and its owners for infringement from use of the marks International Tang Soo Do Moo Duk Kwan Association, Moo Duk Kwan, and the fist and laurel leaves design for studios and tournaments. After a February 2015 trial, U.S. District Judge Robert D. Mariani of the Middle District of Pennsylvania entered a comprehensive memorandum opinion finding in favor of plaintiff on the trademark issues, enjoining infringement of each of plaintiff’s trademarks, dismissing defenses that plaintiff’s trademarks were generic and had been procured by fraud, and granting an injunction against further infringement. In addition, the Court granted plaintiff’s request for damages in the amount of $115,560. This judgment should serve as an important vehicle to enforce the rights to the marks “Moo Duk Kwan” and the fist and laurel leaves design against other rival organization. The decision is reported as United States Soo Bahk Do Moo Duk Kwan Fed’n, Inc. v. Tang Soo Karate Sch., Inc., 2015 U.S. Dist. LEXIS 107955 (M.D. Pa. Aug. 17, 2015).

Practice:
Litigation
Attorney(s):
Charles P. Kennedy

Lerner David Wins Markman Decision in Copy Protection Case

Lerner David represents Copy Protection LLC in a patent infringement enforcing Copy Protection’s U.S. Patent 7,079,649 against Netflix, Inc. The ‘649 Patent relates to methods for unauthorized copying of downloaded data. Following oral argument, on August 5, 2015, Chief Judge Leonard P. Stark issued a decision agreeing with Lerner David’s interpretation on nearly every claim term at issue in the ‘649 Patent. The Court also agreed with Copy Protection that two method steps in three asserted claims did not have to occur in the specific order recited, as Netflix had contended. Based on the ruling, Copy Protection is proceeding with further pretrial preparations, and heading towards a trial of the case. The case is Copy Protection LLC v. Netflix, Inc., No. 1:14-cv-00365-LPS before the United States District Court for the District of Delaware.

Practice:
Litigation
Attorney(s):
Maegan A. Fuller,
Aaron S. Eckenthal,
Jonathan A. David

Sony Wins Invalidity Determination Against Orinda

In 2008, four Sony entities were sued by Orinda Intellectual Properties USA Holding Group, Inc. (“Orinda”) in the United States District Court for the Eastern District of Texas (“EDTX”) alleging that various PlayStation products and VAIO laptops capable of playing Blu ray disks infringed claims of Orinda’s U.S. Patent No. 5,438,560. Sony initially succeeded on a motion to transfer the lawsuit from the EDTX to the Northern District of California (“NDCA”). Sony then filed a request for reexamination of all claims of the ‘560 Patent, and an Examiner at The United States Patent and Trademark Office (“PTO”) rejected all claims as invalid. The NDCA granted a motion filed by Sony to stay the lawsuit pending reexamination of Orinda’s patent. The PTO Examiner maintained that the only remaining claim was invalid. Orinda appealed the PTO’s invalidity determination to the Patent Trial and Appeal Board (“PTAB”). In 2013, the PTAB affirmed the Patent Examiner’s invalidity determination. Orinda then appealed the PTAB’s decision to the United States Court of Appeals for the Federal Circuit, which then affirmed the PTAB’s invalidity determination. The NDCA dismissed Orinda’s lawsuit with prejudice on August 13, 2015.

Attorney(s):
Russell W. Faegenburg,
Andrew T. Zidel,
Gregory S. Gewirtz

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