Lerner David Gets Appeal Dismissed, Preserving Win Against Preliminary Injunction Motion
Claiming trademark infringement, unfair competition, and breach of contract, Osram Sylvania, Inc. (“OSI”) filed a complaint on November 23, 2020 in the Southern District of New York against Lerner David client Ledvance, LLC (“Ledvance”). OSI moved for a preliminary injunction, arguing that Ledvance, which held a license from OSI, simultaneously breached its license agreement and infringed OSI’s mark by selling licensed products through an Amazon Store. Lerner David vigorously opposed the motion, emphasizing that OSI had not proven the harm necessary to support a preliminary injunction. On January 27, 2021, Judge Abrams of the Southern District of New York denied OSI’s motion for a preliminary injunction, finding that OSI failed to demonstrate any likelihood of irreparable harm. The Court addressed each of OSI’s points individually in a detailed opinion and agreed with Lerner David that OSI’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, as the opinion explained, Lerner David’s explanation of Amazon’s search functions “cast further doubt on the plausibility” of OSI’s argument. The decision in the district court, combined with Lerner David’s success on appeal, not only preserves Ledvance’s right to operate its Amazon Store, but also lays the foundation for future proceedings in the district court, and will make it difficult for OSI to prove its case on the merits. Lerner David’s work here demonstrates its experience and skill in navigating trademark cases at both the trial and appellate levels, and responding rapidly and effectively to beat back requests for emergent relief.
New Jersey State Appeals Court Affirms Rutgers’ Victory in Open Public Records Act Lawsuit
A New Jersey state appeals court affirmed the dismissal of a state Open Public Records Act (“OPRA”) lawsuit against Rutgers. In this case, the plaintiff sought copies of Rutgers’ footage of a football game (referred to as “All-22” footage) against Pennsylvania State University. Rutgers denied plaintiff’s request for the videos on the basis that it was not permitted to share the videos with the public. Rutgers is a party to an agreement among other members of the NCAA Football Big Ten Conference to exchange their All-22 video footage, which also prohibits public dissemination of the videos. The plaintiff asserted that the videos were subject to OPRA, and brought suit after Rutgers’ denied the request for access to the videos. In August 2021, a New Jersey Superior Court ruled that the videos were exempt from OPRA, finding that (1) the video was proprietary to Rutgers; (2) the video fell within the competitive-advantage exemption under OPRA; and (3) that the copyright law's fair use doctrine was inapplicable. The plaintiff appealed. On August 15, 2022 a New Jersey state appeals court affirmed the dismissal of the suit, finding in favor of Rutgers on all points.
Second Circuit Affirms Pepsi’s Victory in Super Bowl Commercial Case
The Second Circuit issued a ruling affirming a decision of the Southern District of New York that granted Pepsi summary judgment in a case relating to its popular 2016 Super Bowl commercial. That commercial was entitled the “Joy of Dance” and featured Janelle Monae. The Court found that the district court correctly determined that Pepsi’s commercial did not copy any protectable elements from plaintiff. The Court also recognized that Pepsi’s 2001 “Now and Then” commercial with Britney Spears had previously featured the idea of a “performer moving through various time periods or musical styles.” With respect to a related breach of contract claim, the Second Circuit also affirmed the grant of summary judgment to Pepsi, finding that “the district court properly found that there was no enforceable contract between the parties.”
Lerner David Obtains Dismissal with Prejudice of Trade Dress Infringement Suit
A Michigan-based seller of perineal ice packs filed suit in the U.S. District Court for the District of New Jersey against Lerner David’s Australia-based client and its principal, asserting infringement of unregistered trade dress. Lerner David responded with a multi-pronged motion to dismiss, asserting that the plaintiff had not alleged and could not allege ownership of protectible trade dress; that the plaintiff had named the wrong defendant; and that the defendant was not subject to personal jurisdiction in New Jersey. Following an attempt to cure the defects in the case by amending its complaint, and in the face of a likely motion for attorney fees if the defendants prevailed, the plaintiff dismissed the complaint with prejudice and with releases in favor of persons and entities above and beyond the named defendants. The case was YSCS Products LLC v. Louise Beever et al., Civil Action No. 3:20-cv-12325 (D.N.J. 2021).
Lerner David Defeats Motion for Preliminary Injunction in Trademark Case
On January 27, 2021, Judge Abrams in the United States District Court, Southern District of New York, denied the opponent’s motion for a preliminary injunction, finding that the opponent failed to demonstrate any likelihood of irreparable harm. In the opponent’s motion, it argued that our client simultaneously breached a license agreement and infringed its mark by selling genuine, authorized products through an Amazon Store. The Court addressed each of the opponent’s points individually in a detailed opinion and stated that the opponent’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, the opinion expressed that our demonstration of Amazon’s search functions “cast further doubt on the plausibility” of the opponent’s argument. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.
Lerner David Obtains Dismissal with Prejudice of Copyright Lawsuit Against Sony’s Digital Binoculars
Claiming infringement of a copyright registration on digital binoculars, Gatewood filed a complaint in February 2019 in the U.S. District Court for Western District of North Carolina against Sony Corporation of America (“Sony”). Lerner David, on behalf of Sony, filed a motion to dismiss the second amended complaint for failing to plausibly plead copyright infringement. The district court granted Sony’s motion and dismissed the lawsuit with prejudice in July 2020 identifying multiple grounds as to why the second amended complaint failed to state a plausible claim for copyright infringement. Gatewood appealed to the U.S. Court of Appeals for the Fourth Circuit in August 2020. On December 21, 2020, a three-judge panel affirmed the district court’s judgment of dismissal, noting “[w]e have reviewed the record and discern no error by the district court.” The case is Gatewood v. Sony Corporation of America, No. 20-1887 (4th Cir), 3:19-cv-00087-FDW-DCK (W.D.N.C.)
Lerner David Achieves Favorable IPR Settlement Granting Amneal Pharmaceuticals Early Market Entry for Vivitrol®
With only a few hours until a scheduled hearing before the Patent Trial and Appeal Board, Lerner David client Amneal Pharmaceuticals LLC reached a settlement with Alkermes whereby both parties agreed to seek termination. Alkermes granted Amneal a license allowing it to market a generic version of VIVITROL® (naltrexone for extended release injectable suspension) in the U.S. beginning in 2028 or earlier under some circumstances in exchange for Amneal agreeing to drop its challenge to U.S. Patent No. 7,919,499 (“the ’499 Patent”), an Orange Book-listed patent for VIVITROL®. The ’499 Patent does not expire until 2029. While the terms of the settlement are confidential, in an analysis by Nasdaq.com, Alkermes’ management was said to have “noted that Vivitrol is a complicated drug to both make and sell, so even if the company loses the patent hearing, it may be hard for makers of generics to enter the market.” You can draw your own conclusions as to Alkermes’ level of confidence in the ‘499 Patent. The case is Amneal Pharmaceuticals LLC v. Alkermes Pharma Ireland Limited, Case No. IPR2019-00943.
Phytoceuticals, Inc. Prevails In Cancellation Proceeding Before The European Union Intellectual Property Office
On June 6, 2019, the European Union Intellectual Property Office issued a written decision determining that our client, Phytoceuticals, Inc.’s European Trademark Registration for the mark CELL SKIN LAB CLINICAL SKIN CARE was not invalid based upon prior use of the mark in Europe or the prior ownership of the mark as a result of an agreement between our client and the party seeking to cancel the registration. Likewise, the party seeking cancellation also failed on the grounds of bad faith. Based upon instructions and arguments prepared by our office and on actual evidence provided to our European associate, the European Union Intellectual Property Office specifically found that the filing for the trademark CELL SKIN LAB CLINICAL SKIN CARE was not unauthorized, and that our client, Phytoceuticals, Inc., had established prior rights in the mark in Europe. Further, the European Union Intellectual Property Office also found that the contract agreement entered into by our client with the party seeking cancellation, based upon principal/agent principals. Finally, the European Union Intellectual Property Office, based on evidence that our client provided, rejected all the accusations of the party seeking cancellation with respect to the fact that our client applied for the European Union Trademark in bad faith knowing that the party seeking cancellation had prior rights. Finally, based on these decision, the European Union Intellectual Property Office also awarded our client its reasonable fees and costs associated with this proceeding.
Lerner David Defeats Motion for Summary Judgment in Trademark Case
On December 20, 2018, Judge Wolfson in the United States District Court, District of New Jersey, denied the opponent’s summary judgment motion on all grounds that our client’s trademark is invalid. In the opponent’s motion, it argued that our client’s mark is invalid because 1) it creates a likelihood of confusion with other, third-party marks; 2) our client never actually used the mark in commerce; 3) our client committed fraud on the PTO in attempting to obtain registration; and 4) the defense of laches bars our client from asserting a trademark infringement claim. The Court addressed each of these points individually in a detailed opinion and reasoned that the opponent failed to meet its burden on each one, and that a genuine issue of fact exists with respect to each that precludes entry of summary judgment. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.
Kashiv and Amneal Prevail in Fourth IPR, Invalidating All Challenged Claims of OxyContin® Patents
In a Final Written Decision issued in favor of Lerner David clients Kashiv Pharma, LLC and Amneal Pharmaceuticals, LLC, the Patent Trial and Appeal Board ("PTAB") held all challenged claims of U.S. Patent No. 9,034,376 invalid on both asserted grounds. The '376 Patent is directed to a sustained release formulation of oxycodone HCl, marketed by Purdue Pharma as OxyContin®, and is one of twenty patents that Purdue has asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. This marks the fourth IPR win for Kashiv against this family of patents. Collectively, Lerner David has prevailed in all six grounds asserted over four IPRs. The case is Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01412, (Feb. 8, 2018). The previous cases are Case Nos. IPR2016-01413, (Jan. 17, 2018), IPR2016-01027, (Nov. 8, 2017), and IPR2016-01028, (Nov. 8, 2017).
Amneal and Kashiv Prevail, Again, in Invalidating Additional OxyContin® Patent
In a Final Written Decision issued in favor of Lerner David clients Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC, the Patent Trial and Appeal Board ("PTAB") held all challenged claims of U.S. Patent No. 9,034,376 invalid. The '376 Patent is directed to a sustained release formulation of oxycodone HCl, marketed by Purdue Pharma as OxyContin®, and is one of twenty patents that Purdue has asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. The case is Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01413, (Jan. 17, 2018).
Federal Circuit Affirms PTAB Decisions Holding Prasugrel Patents Invalid
In a Rule 36 affirmance entered just two days after oral argument, the United States Court of Appeals for the Federal Circuit entered judgment upholding two decisions by the Patent Trial and Appeal Board finding invalid all claims of two Orange Book-listed patents directed to Eli Lilly’s blood thinner Effient® (prasugrel). Lerner David represented Dr. Reddy’s Laboratories in the two Inter Partes Reviews before the PTAB and in the consolidated appeals to the Federal Circuit. The appeals are Daiichi Sankyo Company, Ltd. et al. v. Accord Healthcare Inc., USA et al., Nos. 2017-1052, 2017-1053 (Dec. 12, 2017).
Lerner David Defeats Effort to Preliminarily Enjoin Rutgers University
Lerner David successfully defended Rutgers University and one of its football coaches, Arin Blazek, against entry of a preliminary injunction. Following full briefing by the parties and oral argument, U.S. District Judge Michael A. Shipp denied the preliminary injunction, agreeing with the position argued by Lerner David.
Amneal and Kashiv Prevail in Two IPRs Invalidating OxyContin® Patent
In a pair of companion cases dated November 8, 2017, the Patent Trial and Appeal Board ("PTAB") issued Final Written Decisions in favor of Lerner David clients Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC finding unpatentable the asserted claim of U.S. Patent No. 9,060,976. The '976 Patent is listed in the Orange Book for OxyContin® (oxycodone HCl), the blockbuster opioid analgesic marketed by Purdue Pharma, and is one of twelve patents currently asserted against Kashiv's ANDA directed to its own abuse-deterrent formulation of oxycodone. The PTAB held the '976 Patent invalid on all three instituted grounds. The cases are Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01027, Paper No. 48 (Nov. 8, 2017) and Amneal Pharmaceuticals, LLC v. Purdue Pharma, L.P. et al., Case No. IPR2016-01028, Paper No. 47 (Nov. 8, 2017).
Lerner David Defends Clients’ Store Brand Against a Preliminary Injunction Motion
On July 28, 2017, on behalf of our clients Bed Bath & Beyond and Harmon Stores, Lerner David prevailed in having a preliminary injunction motion for trade dress infringement denied. The plaintiff sells “It’s a 10” hair care products. Bed Bath & Beyond and Harmon sell their Harmon Face Values store brand side-by-side on retail shelves. Following a hearing on July 5, 2017, Judge J. Paul Oetken of the Southern District of New York held that there was no likelihood of confusion between the trade dresses of the products. He pointed to the overall dissimilarity between the products’ trade dresses and the prominent display of the Face Values store brand. He also found no evidence that defendants had acted in bad faith. Agreeing with our arguments, Judge Oetken concluded the plaintiff had not raised sufficiently serious questions going to the merits to make them a fair ground for litigation. The decision is reported as It’s a New 10, LLC v. Harmon Stores, Inc. and Bed Bath & Beyond, Case No. 17-cv-4231, 2017 U.S. Dist. LEXIS 11892 (S.D.N.Y. Jul. 28, 2017).
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.))
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.)
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.)
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.
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).
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.).
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).
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).
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).
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.
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).
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.
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.
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).
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.
Kennedy and Gilman Contribute Chapter on Intellectual Property to New Jersey Federal Civil Procedure 2016
Partners Charles Kennedy and Keith Gilman have contributed their updated Chapter on Special Considerations in Cases Involving Intellectual Property for the just released New Jersey Federal Civil Procedure (2016). This publication has become a standard reference for litigation in New Jersey Federal district courts, used regularly by both judges and litigators. Kennedy and Gilman have authored the chapter on Intellectual Property since 1999.
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).
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).
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.
Lerner David Obtains Judgment and Injunction For Cutlery Manufacturer Waddington
On May 27, 2015, following a private settlement, U. S. District Judge Jose L. Linares entered a judgment in favor of Lerner David client Waddington North America, Inc., a manufacturer of patented metallized plastic cutlery. The judgment found that Waddington’s reexamined US Patent No. 6,983,542 was valid and enforceable and had been infringed by competitor Evriholder Products, LLC, and permanently enjoined Evriholder’s patent infringement. The judgment also finds that Waddington owns trade dress rights in the distinctive, nonfunctional and ornamental design of Waddington’s REFLECTIONS® metallized cutlery and serving pieces, and permanently enjoins Evriholder from infringing that trade dress.
Lerner David Obtains Appellate Affirmance of Invalidation of Four Patents
In Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F. 3d 1343 (Fed. Circ. 2014), representing ATM maker Diebold, Inc., Lerner David obtained an affirmance of a lower court ruling that 242 claims across four patents were invalid for lack of patent eligible subject matter.
Liberty Sport, Inc. et al. v. Miro Optix LLC.
LIBERTY SPORT, INC. ET AL. v. MIRO OPTIX LLC. After drafting notice letters on behalf of our client, Liberty Sport, Inc., we filed a patent infringement action in the District of New Jersey against Miro Optix LLC directed to certain sport-protective eyewear frame assemblies. The matter proceeded through the service of written contentions on infringement and validity, mediation before the Magistrate Judge, and initial claim construction proceedings. Just prior to filing opening claim construction briefs, the parties agreed upon a settlement that resulted in the entry of a consent final judgment acknowledging that our client’s patents are valid and enforceable, that the accused products from Miro Optix, LLC infringe the asserted claims, that all remaining inventory would be destroyed, and that Miro Optix, LLC would be permanently enjoined from selling such products in the future.
Lerner David Charges Forward in IPR
On January 27, 2014, Lerner David won a complete victory for our client, LG Chem, in an Inter Partes Review filed by Ube Maxell Co., Ltd. against LG Chem's U.S. Patent No. 7,709,152. Ube Maxell challenged the '152 Patent as anticipated and obvious on more than six different grounds. The Patent Trial and Appeal Board relied on Lerner David's arguments in a Preliminary Response as to why Ube Maxell's prior art references were deficient to show unpatentability of LG Chem's ‘152 Patent. Accordingly, the PTAB denied Ube Maxell's petition as to all challenged claims and ordered that no IPR trial be instituted.
Lerner David Defeats Motion for Summary Judgment of Invalidity In Video Chip Case
On November 7, 2013, Judge Colleen McMahon in the Southern District of New York agreed with arguments advanced by Lerner David and denied the defendants' motion that Advanced Video Technologies LLC's patent was invalid for failure to meet the written description requirement. The patent covers chips that are used in compressing or de-compressing video information. In seeking summary judgment, the three defendants argued that by not challenging the Patent and Trademark Office Examiner's assertion that a claimed feature (which was subsequently deleted from the claim) was not supported by the specification, AVT acquiesced in the Examiner’s conclusion that there was no support for the feature. In denying the motion, Judge McMahon found that defendants had confused the issues of claim construction and lack of written description. Thus, the Court held that the doctrines of prosecution history estoppel and prosecution history waiver were inapplicable to the defendants' motion. The Court likewise found that the doctrine of judicial estoppel, which the defendants also relied upon, was inapplicable. The Court thus denied the defendants’ motion. The consolidated cases are Advanced Video Technologies LLC, v. HTC Corporation and HTC America, Inc.; Research In Motion Ltd., et al.; and Motorola Mobility LLC (Civ. Nos. 11 Civ. 6604(CM); 11 Civ. 8909(CM); 12 Civ. 0918(CM)).
Floyd Rose wins UDRP complaint before WIPO Administrative Panel
Floyd Rose, represented by Gregg A. Paradise and Aaron S. Eckenthal, recently prevailed on his Uniform Domain Name Resolution Policy Complaint against Adam Reiver. The complaint sought a transfer of the Domain Name floydupgrades.com because use of that Domain Name violated Floyd Rose’s trademarks and was being used in bad faith. Floyd Rose is the inventor of the locking tremolo used on electric guitars. Floyd Rose owns several United States Trademarks, including FLOYD ROSE and THE FLOYD (U.S. Reg. Nos. 1,292,157; 1,925,371; 2,606,770), which are used in connection with electric guitar accessories, stringed instruments, and include tuners, tremolos, guitar stands, picks, etc. Adam Reiver used the floydupgrades.com Domain Name to deliberately refer to the Floyd Rose trademarks and offers products, including instructional videos on how a musician can modify or “upgrade” their FLOYD ROSE products such as the world-famous tremolo bridge. In his complaint, Floyd Rose contended that the disputed Domain Name (floydupgrades.com) is identical or confusingly similar to its trademarks. In addition, the complaint alleged that Adam Reiver used the trademarks for illegal solicitation and to gain an illicit profit based on the likelihood of confusion with Complainant’s trademark, which creates the likelihood that customers will believe that Floyd Rose is the owner and operator of the floydupgrades.com Domain Name. The three member Administrative Panel agreed with Floyd Rose. In the opinion, the panel held that Adam Reiver does not have a right to use the Floyd Rose trademarks, either as nominative fair use or otherwise. Any nominative fair use by Adam Reiver was negated by the fact that Reiver used the floydupgrades.com Domain Name for a website that not only sells goods and services related to Floyd Rose branded goods, but also products that directly compete with those offered by Floyd Rose. In addition, the panel held that Adam Reiver’s use of the floydupgrades.com Domain Name reflects bad faith in engendering at least initial confusion for commercial gain. Thus, based on the finding, the panel ordered that the Disputed Domain Name floydupgrades.com be transferred to Floyd Rose. Lerner, David was also previously successful in getting Facebook to terminate Adam Reiver’s “The Original Floyd Rose Upgrades” web page.
Lerner David Successfully Opposes Motion To Stay In Towel Case
Following oral argument on July 11, 2013, Judge Engelmeyer of the Southern District of New York agreed with the rationale proffered by Lerner David and refused Loftex’s request to stay its lawsuit pending a reissue proceeding it filed before the US Patent and Trademark Office. The refusal to stay was issued on the heels of Lerner David’s major victory on claim construction for its client, Trident Ltd. In denying the stay the Court agreed with Lerner David’s argument that plaintiff’s patent infringement allegations were “a cloud over Trident” and that the plaintiff’s case “was predominantly based on a theory that presumed the broader construction of the patent that was pursued in the Markman hearing. With the Court having rendered the defense [Trident] favorable construction of the patent, there remains only limited theory of liability left . . . .” The case is Loftex USA LLC v. Trident Ltd., 11 CV 9349 (S.D.N.Y.).
Lerner David Wins Markman Decision In Towel Case
Following oral argument, Judge Engelmeyer of the Southern District of New York agreed with Lerner David’s interpretation of the two key terms in dispute scoring a major victory for its client, Trident Ltd. The court ruled that Loftex’s U.S. Patent No. 7,810,308 was limited to a process of making a towel from 2-ply yarn free of polyvinyl alcohol (PVA) fibers before the yarn is woven to make the towel. Agreeing with our firm’s arguments, the court rejected Loftex’s assertion the key feature of the invention was how the yarns were twisted and therefore its patent more broadly covered the type of yarn twisting regardless of whether the towels were made with or without using PVA fibers. The court also agreed with Lerner David’s analysis that the term “2-ply yarn” meant “having only two discrete strands that are twisted together.” The court’s key rulings limiting the reach of Loftex’s patent were supported by the express words used in the claims as well as the patent’s specification. Click here for a copy of the decision.
Sony Wins Knock-out Jury Verdict
Sony Corporation and four of its subsidiaries (Sony Computer Entertainment Inc., Sony Computer Entertainment America LLC, Sony Electronics Inc., and Sony Corporation of America) prevailed on all counts of non-infringement and invalidity in a jury trial in the United States District Court for the Northern District of California against Television Interactive Data Corporation ("TVI"). TVI had alleged that Sony's Blu ray players, DVD players, and PlayStation3 consoles infringed claims in four patents related to autoplay of optical discs (DVDs and Blu-ray discs). The asserted patents are U.S. Patent Nos. 5,597,307; 5,795,156; 6,249,863; and 6,418,532. After a three week jury trial, the nine member jury delivered a verdict finding that Sony did not infringe any claim and that all asserted claims were invalid as anticipated and obvious to one of ordinary skill in the art. TVI had requested damages of $84M plus enhanced damages for alleged willful infringement. The jury delivered a knock-out blow to all of TVI's allegations. As reported in the March 28, 2013 edition of IPLaw360 "We felt very strongly from the beginning that there was no infringement, and that the patents were invalid," said Sony's attorney Greg Gewirtz of Lerner David. During closing arguments, Mr. Gewirtz made clear that Sony fought the battle with TVI "because of true justice, true principle" as Sony created and implemented autoplay in optical disc players well before TVI's patents were filed. The lawsuit was first filed in 2009 when TVI sued about a dozen consumer electronics companies alleging that all DVD and Blu-ray players infringed its patents. Sony was the only remaining defendant in the case and was very pleased to confirm its beliefs that its products did not use TVI's technology and that all asserted patent claims were invalid.
Bell'O Int'l's Counterclaims of Inequitable Conduct Remain in Lawsuit Against Whalen Furniture Mfg, Inc.
Whalen Furniture Mfg, Inc. ("Whalen") filed a lawsuit against Bell'O Int'l Corp. ("Bell'O") alleging infringement of United States Patent Nos. 8,079,311 ("the '311 Patent") and 8,191,485 ("the '485 Patent") in December 2011. Bell'O has maintained that none of the patent claims are infringed, that all claims will be found invalid, and will be held unenforceable due to inequitable conduct committed by two of Whalen's executives, Ken Whalen and Paul Jones, who are the named inventors of the asserted patents. On November 29, 2012, Judge Marilyn L. Huff of the United States District Court for the Southern District of California issued an Order advancing Bell'O's case by denying Whalen's motion to dismiss Bell'O's inequitable conduct counterclaim and affirmative defense. The Order concluded: In sum, Bell'O has sufficiently plead enough facts to state a claim for inequitable conduct under Rule 9(b) and Exergen. Accordingly, the Court denies Whalen's motion to dismiss Bell'O's Third Counterclaim for failure to state a claim. The Court then applied the same reasoning to deny Whalen's motion to strike Bell'O's affirmative defense concerning inequitable conduct. In reaching its ruling, the Court explained: Bell'O alleges specifically that two name inventors knew of the withheld references. (Id. 21.) Although, the Court in Exergen reasoned that mere knowledge of a reference does not make it reasonable to infer that the person has actual knowledge of the information contained in the reference, Exergen, 575 F.3d at 1330, the situation here is different. Bell'O alleges that both men, in addition to being the named inventors, were senior executives of Whalen at the time of the prosecution of the patents-in-suit. (Doc. No. 44 32.) As both executives of Whalen and the named inventors of the patents-in-suit, Bell'O alleges that the two men had knowledge of the products being sold, were familiar with their ability to function in the three identified configurations and were familiar with the 3 in 1 configuration feature, and understood the materiality of such references to the patentability of the claims. (Id. 40.) Therefore, Bell'O alleges sufficient facts to argue an inference that the inventors had knowledge of the material information contained in the references. Bell'O's president, Marc Sculler, stated that he was pleased with the Court's finding and looks forward to a final decision establishing that Whalen's patents are not infringed, are invalid, and are unenforceable due to inequitable conduct. A copy of the Court's Order is available here.
Bell'O Int'l's Request For Reexamination Granted – All Asserted Claims Of Whalen Furniture Mfg.'s U.S. Patents Rejected By PTO
On November 9, 2012, the United States Patent and Trademark Office granted Bell'O International Corp.'s request for inter partes reexamination of U.S. Patent Nos. 8,079,311 ("the '311 Patent") and 8,191,485 ("the '485 Patent"), and also issued office actions rejecting all claims of the '311 and '485 patents at issue in the reexamination proceedings. The '311 and '485 Patents are the subjects of a patent suit filed by Whalen Furniture Mfg., Inc. against Bell'O International Corp. on December 21, 2011 in the United States District Court for the Southern District of California, civil action no. 3:11-cv-02988-H-DHB. The '311 and '485 Patents are related to television stands for flat panel televisions. In particular, Whalen has alleged that its '311 and '485 patents cover television console kits that permit flat panel televisions to be mounted in any one of three configurations (on the console, on a pole secured to the back of the console, and on a wall above the console). Marc Sculler, CEO, of Bell'O International, commented that "we are very pleased that the United States Patent and Trademark Office has adopted our arguments and has rejected all of Whalen's asserted '311 and '485 patent claims in the reexamination proceedings. Bell'O has not infringed any of Whalen's alleged patent rights and will continue to vigorously defend against Whalen's allegations of patent infringement. Bell'O will continue to pursue invalidity of the '311 and '485 patents via the PTO reexamination proceedings and in the lawsuit." Copies of the PTO's Orders granting Bell'O's reexamination requests and corresponding Office Actions can be accessed through the link below. Office Action '311 Patent Order Granting Reexam Request '311 Patent Official Action '485 Patent Order Granting Reexam Request '485 Patent.
Sony's Motion to Strike VoxPath's Infringement Contentions Granted In-Part
On November 15, 2012, Judge Cavanaugh of the United States District Court for the District of New Jersey issued a decision and order granting in-part a motion filed by Sony and codefendants to strike infringement contentions served by plaintiff, VoxPath RS, LLC, in civil action no. 2:12 cv 00952-DMC-JAD. Pursuant to the order, VoxPath's infringement allegations against hundreds of accused products were stricken, and Voxpath will not have the opportunity to amend its infringement contentions. The lawsuit involves VoxPath's allegations that optical disc players infringe claims of U.S. Patent Nos. 5,450,378 and 6,304,530. In granting Sony's motion, the Court confirmed that the local patent rules "require a chart mapping out where each infringing product (identified by model number) contains each element of the claim it infringes." VoxPath was thus required to provide as specific an identification as possible of the accused products, which allegedly infringe VoxPath's patents. The Court recognized that VoxPath accused hundreds of models of optical disc players (DVD players, Blu-ray player, and Sony's Playstation3 console), but only provided infringement contention charts for a small portion of the accused products. The Court agreed with Sony that this approach was unacceptable. In some cases, it was found that VoxPath did not include charts for entire product classes, including all DVD players, most Blu-ray players, and various PlayStation3 consoles. The Court specifically held that: Not only does VoxPath concede that hundreds of infringement charts for accused products are lacking, but it fails to make any argument to support the similarities between the charted products and the other accused products for which a chart has not been submitted. VoxPath is not permitted to take a broad stroke approach by alleging infringement against hundreds of products without providing specific evidence of elements that allegedly infringe. The Court agreed that VoxPath was on notice of the rules, had sufficient time to comply, and had enough information to file proper infringement contentions and charts. Thus, the Court granted Sony's motion filed on behalf of all defendants to strike the claims regarding the uncharted products without leave to amend. Copies of the Court's opinion can be accessed through the link below. Opinion Granting In-Part Sony's Motion to Strike Infringement Contentions Order Correcting Opinion to Strike Infringement Contentions.
Glatt Air Techniques Obtains Favorable Settlement Of Patent Claims On Eve of Trial
Our client Glatt Air Techniques filed a patent infringement suit in federal court against defendant Freund Vector Corp. asserting its patent covering machines for coating pharmaceuticals. Following the successful defense of Glatt's patent through a decision from the Federal Circuit upholding the patent in suit in reexamination in January 2011, we obtained a favorable claim construction decision from the district court in January 2012. In September 2012, shortly before the scheduled jury trial, Glatt defeated Vector's motions for summary judgment on the merits, and prevailed on cross motions dismissing validity defenses raised by Vector. On September 10, 2012, when the parties were picking a jury for the trial, Glatt was able to obtain a favorable monetary settlement from defendant Freund Vector. The settlement was completed on October 17, 2012.
Sony Prevails In Motion To Transfer VoxPath Case Out of The Eastern District Court Of Texas
Sony Corporation and several of its subsidiaries were sued in the Eastern District of Texas, with the complaint alleging that Sony’s Blu-ray players, DVD players and PlayStation3 consoles infringed claims of two patents owned by a non-practicing entity, VoxPath RS, LLC. Numerous other consumer electronic companies were named as codefendants with Sony in the case. We led Sony and the joint defense group in their motion to transfer the lawsuit from the Eastern District of Texas to the District of New Jersey by providing evidence to establish that the balance of private and public interest factors clearly supported Sony's position. Judge Gilstrap of the Eastern District of Texas issued his Order on January 23, 2012, concluding that the District of New Jersey was clearly more convenient than the Eastern District of Texas in the case, such that Sony's motion to transfer venue was granted. Click here to obtain a copy of the transfer Order.
Glatt Air Techniques Obtains Favorable Claim Construction Decision
Our client Glatt Air Techniques filed a patent infringement suit in federal court against defendant Vector Corp. involving machinery used to coat fine particles. The district court has entered a Memorandum and Order resolving disputes over the construction of the claims of Glatt's patent. The Court's decision favors the position of our client Glatt on the important claim construction issues. Glatt is now moving forward with this patent infringement action against Vector Corp. About Lerner, David, Littenberg, Krumholz & Mentlik, LLP Since its founding in 1969, Lerner David has been devoted exclusively to intellectual property law. The firm has earned a solid reputation for active and effective client representation in the Patent and Trademark Office, in the courts and at the bargaining table — but our role as “counselors” remains paramount. By providing sound, practical advice, Lerner David’s 70+ attorneys help clients make informed, intelligent choices about the benefits and risks associated with intellectual property.
Waddington Patent on Metallized Cutlery Upheld in Consent Judgment Following Several Favorable Rulings
WADDINGTON NORTH AMERICA, INC. v. SABERT CORPORATION. After assisting our client Waddington in obtaining a successful reexamination of its patent on metallized cutlery, we filed an infringement action in the District of New Jersey against its competitor, Sabert. In various pretrial rulings, we obtained dismissal of Sabert's inequitable conduct defenses (2010 WL 3907036); several favorable claim construction rulings (2010 WL 4363137); summary judgment of literal infringement as to one of Sabert's products (2011 WL 1098998); and summary judgment on one of Sabert's defenses alleging lack of written description support (2011 WL 1098996). After a trial in which a jury rendered a verdict adverse to our client, we obtained judgment as a matter of law on Sabert's remaining written description defense, and a new trial on all other issues based upon opposing counsel's trial misconduct (2011 WL 3444150). Prior to the scheduled retrial, the case was settled with the entry of a consent judgment acknowledging that our client's patent was valid and enforceable, and with Sabert taking a license under our client's patent.
Rutt’s Hut Wins “Dog Fight”
On June 29, 2011, our client Rutt’s Hut, Inc. (“Rutt’s Hut”) won its trademark infringement case against Mutt’s Hut International and its principals (“Mutt’s Hut”), securing a default judgment from the District Court of New Jersey that prohibits Mutt’s Hut from any act that uses any trademark owned by Rutt’s Hut or any confusingly similar variations thereof. Mutt’s Hut was ordered to immediately remove all exterior and interior signage bearing the “Mutt’s Hut” designation and immediately discontinue use of the designation on employee uniforms, menus, napkins, and all advertising and promotional materials. In addition, the District Court recently awarded Rutt’s Hut attorneys’ fees, finding Mutt’s Hut’s conduct to be culpable and exceptional enough to justify a fee award.
“Dog Fight” Pits Client Rutt’s Hut Against Imitator
Our client Rutt’s Hut, Inc. (“Rutt’s Hut”) filed suit against Mutt’s Hut International and its principals (“Mutt’s Hut”) in the United States District Court for the District of New Jersey on March 9, 2011. The suit alleges violations of trademark and unfair competition laws of the United States as well as unfair competition laws of the State of New Jersey. Rutt's Hut has operated its restaurant in Clifton, New Jersey since 1928, and most notably, sells unique and famous hot dogs called "RIPPERS." Rutt's Hut owns United States federal trademark Registration No. 1,368,370 for RUTT'S HUT. Because of the notoriety it has obtained through its famous hot dogs, Rutt's Hut has been, and continues to be included in several lists of famous American restaurants. It has also been featured in television programs on several stations including the Travel Channel, the Food Network, and PBS, as well as in the magazines Gourmet and Details. Mutt’s Hut opened in January 2011 also in Clifton, NJ. Mutt’s Hut did not respond to cease and desist letters sent by LDLKM in January and February 2011. The aforementioned suit was filed shortly thereafter. Click here for story as covered by My 9 News.
3D Systems Obtains Judgment as a Matter of Law (JMOL) Against Envisiontec
On March 10, 2011, the District Court for the Eastern District of Michigan granted our motion for JMOL in favor of our client, 3D Systems, Inc. The decision reversed a jury verdict of noninfringement on 3D Systems’ U.S. Pat. No. 5,660,981, a pioneering patent covering rapid prototyping methods. The decision further denied Envisiontec’s concurrent JMOL motion and affirmed there was substantial evidence supporting the jury’s verdict of infringement as to another 3D Systems patent in the case, U.S. Pat. No. 6,651,934. With the JMOL order, both of Envisiontec’s Perfactory and Vanquish line of rapid prototyping machines have been found to infringe the ‘981 Patent, while the Vanquish line has also been found to infringe the ‘934 Patent. Click here if you would like to obtain a copy of the JMOL Memorandum and Order.
TriGen Laboratories Defeats Preliminary Injunction Motion Against the Marketing of its Prenatal Vitamins
Our client TriGen Laboratories was sued by USPC for alleged false advertising and unfair competition in its marketing of prenatal vitamin products in competition with USPC's products. USPC moved for a preliminary injunction. The United District Court for the Northern District of Georgia heard argument, directed the taking of discovery from organizations that list pharmaceutical products, and considered full submissions from all parties. In a comprehensive opinion issued on January 27, 2011, the Court denied an injunction against TriGen. The Court held that USPC had not established a likelihood of success on its claim that TriGen had falsely advertised or misrepresented its prenatal vitamins. In upholding the labeling of TriGen's products, the Court considered carefully the manner in which these prenatal vitamins are listed with drug databanks and made available to pharmacists for dispensing. This comprehensive decision should be applicable to numerous other such actions which have been filed by companies challenging the marketing of products in competition with prescription drug products or pharmaceuticals.
Glatt Air Techniques Prevails in Patent Reexamination Before Federal Circuit
In response to our client Glatt filing a patent infringement lawsuit in federal district court, the defendant Vector Corp. filed a request to have Glatt's patent on machinery used to coat fine particles (such as pharmaceuticals) reexamined by the U.S. Patent and Trademark Office ("PTO"). In reexamination, the Examiner rejected an important claim of Glatt's patent, and the rejection was upheld by the Board of Patent Appeals and Interferences. Glatt appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit. In a precedential, unanimous decision, the Federal Circuit reversed in favor of our client Glatt, finding that the PTO "has failed to make a proper prima facie case of obviousness." The Federal Circuit also held that the PTO improperly rejected objective evidence of nonobviousness submitted by Glatt that included unexpected results, long felt need, and commercial success due to the improvement of the patented invention. As a result of this decision, the PTO has stated its intention to issue Glatt a reexamination certificate. Glatt will now move forward with the district court action for patent infringement against Vector Corp.
Sony Continues to Prevail in Patent Dispute against Orinda
In September 2009, we helped Sony win a transfer of a patent infringement lawsuit from the Eastern District of Texas to the Northern District of California. The lawsuit alleges that various of Sony's VAIO pc and PlayStation products capable of playing Blu-ray Discs infringed claims of a patent owned by a patent holding company, Orinda Intellectual Properties USA Holding Group, Inc. On August 11, 2010, the District Court for the Northern District of California granted Sony's motion to stay the lawsuit pending reexamination of Orinda's asserted patent. Sony explained in its motion that the asserted patent is believed to be invalid as indicated in the PTO's grant in April 2010 of Sony's reexamination request, which identified various substantial new questions of patentability based on the prior art. The Northern District of California's opinion and order held that Sony proved that a stay of the proceeding was warranted because: (1) the lawsuit was at an early procedural stage; (2) reexamination is likely to simplify or moot the lawsuit; and (3) Orinda was not likely to be unduly prejudiced by the stay. Click here if you would like to obtain a copy of the transfer order.
Sony Succeeds Again in Transfering Lawsuit out of Eastern District of Texas
Sony Electronics Inc. was sued in the Eastern District of Texas along with seven codefendants alleging that its various USB flash drive products infringed claims of a patent owned by a patent holding company, Ennova Direct, Inc. We lead a joint defense team to help Sony (and all other defendants) obtain an order transfering the lawsuit from the Eastern District of Texas to the Northern District of California. The Court held on March 31, 2010 that the balance of various private and public interest factors clearly supported Sony's position. The Court thus ruled that the evidence presented by Sony established that the Northern District of California was a more convenient forum for the patent dispute than the Eastern District of Texas selected by the plaintiff. Click on the following link if you would like to obtain a copy of the transfer order.
Oilmatic's Non-infringement Verdict on Summary Judgment Upheld by Federal Circuit
Restaurant Technologies, Inc. v. Jersey Shore Chicken, United States Court of Appeals for the Federal Circuit, 2009-1176, January 6, 2010. The patent owner RTI had filed two patent infringement actions against customers of our client, Oilmatic Systems, LLC, alleging that the customers were infringing a patent relating to systems for supplying and draining cooking oil. We then filed a declaratory judgment action against RTI on behalf of Oilmatic. We initially sought and obtained a favorable claim construction. Thereafter, in a 50-page opinion, the District Court granted summary judgment, ruling that the Oilmatic system did not infringe any of the seven asserted claims of RTI's patent. On January 6, 2010, a three-judge panel of the Federal Circuit affirmed this decision. In a press release issued shortly after the decision, Michael Allora, President of Oilmatic, noted "I am extremely pleased with the successful outcome of this patent infringement suit. The Federal Circuit's decision vindicates the position that we have held all along, that Oilmatic's bulk oil distribution system did not infringe the RTI patent." The Federal Circuit's full decision can be viewed at www.cafc.uscourts.gov/opinions/09-1176.pdf.
Sony Succeeds in Transfering Lawsuit out of Eastern District of Texas
Four Sony entities were sued in the Eastern District of Texas (EDTX) alleging that various VAIO and PlayStation products capable of playing Blu-ray Discs infringed claims of a patent owned by a patent holding company, Orinda Intellectual Properties USA Holding Group, Inc. On behalf of Sony we obtained a rare win on a motion to transfer the lawsuit from the EDTX to the Northern District of California (NDCA) by submitting evidence establishing that the balance of various private and public factors clearly supported Sony's position. The EDTX court issued its order on September 29, 2009 explaining why Federal Circuit and Fifth Circuit law and the evidence presented by Sony established that the NDCA was clearly a more convenient forum for the patent dispute than the EDTX selected by the plaintiff. Click on the following link if you would like to obtain a copy of the transfer order. About Lerner, David, Littenberg, Krumholz & Mentlik, LLP Since its founding in 1969, Lerner David has been devoted exclusively to intellectual property law. The firm has earned a solid reputation for active and effective client representation in the Patent and Trademark Office, in the courts and at the bargaining table — but our role as “counselors” remains paramount. By providing sound, practical advice, Lerner David’s 55+ attorneys help clients make informed, intelligent choices about the benefits and risks associated with intellectual property.
Lerner David Prevails on behalf of G&W Laboratories in Case of First Impression on Trademark Fraud
G&W LABORATORIES, INC. v. G W PHARMA LIMITED, Opposition No. 91169571 (TTAB January 29, 2009). In a case of first impression dealing with the scope of cancellation of a trademark registration including goods on which the trademark is not used, the Trademark Trial and Appeal Board held in favor of Lerner David's client G&W Laboratories. In an opposition proceeding before the Trademark Trial and Appeal Board, against the mark "G W Pharma," G W Pharma filed a counterclaim seeking cancellation of G&W's trademark registrations alleging fraud based on a lack of use of the mark by G&W for the Class 35 services. G W Pharma sought cancellation of the entirety of G&W's registrations -- not just in Class 35, but G&W's core goods in Class 5 as well. On Lerner David's motion to dismiss this counterclaim as to our client's core goods in Class 5, the Board issued a precedential decision, holding that a multiple-class application can be viewed as a series of applications for registration. Thus, the Board found, fraud in one class can not serve to invalidate any other class in a combined application. This decision fills a void in the line of cases going to back to Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), which have applied a very strict standard of fraud based on a party's failure to use its mark on each and every one of the goods and/or services identified in its registration.
Court Grants Howmedica Osteonics' Motion to Stay Further Proceedings Pending Patent Reexam
SYNTHES (U.S.A.) v. STRYKER CORP., Civil Action No. 06-5681-AB (E.D. Pa. Mar. 19, 2009). In this two-year-old patent infringement suit brought by Synthes (U.S.A.) against our client Stryker Corp. and its subsidiary, Howmedica Osteonics Corp., the district court granted our motion to stay further proceedings pending reexamination of Synthes' patent-in-suit, directed to a threaded insert for a bone plate screw hole. Reexamination of Synthes' patent by the United States Patent and Trademark Office was commenced in response to a request for reexamination filed on behalf of Howmedica Osteonics by our firm. In March 2008, the district court had issued a claim construction order broadly construing the patent's claims, which resulted in the request for reexamination. The stay was granted by the district court in the face of arguments by Synthes that the stay motion was a "transparent" attempt to unnecessarily delay the case.
Sony Wins Successful Settlement of Blu-ray Patent Dispute
SONY DADC U.S. INC. v. TARGET TECHNOLOGY, LLC ET AL. , SA CV 04-1083 (DOC), CDCA. Sony successfully intervened in a lawsuit in April 2007 that was pending in the Central District of California between Target Technologies, LLC and Williams Advanced Materials, Inc. and others. Target had asserted that it owned a large family of patents covering optical discs, such as Sony's Blu-ray DVDs. We asserted that Sony was the actual owner of the patents and succeeded in obtaining a favorable settlement for Sony in late 2008.
Lerner David Obtains Appellate Judgement of Noninfringement
In John Hopkins University v. Datascope Corp., 543 F. 3d 1342 (Fed. Cir. 2008), Lerner David successfully overturned on appeal a jury verdict of infringement in a case involving fragmentation catheters.
Stryker's Jury Verdict against Synthes is Bolstered by Successful Reexamination of Orthopedic Patent on an External Fracture Fixation Device
In a trial in late 2006, we successfully tried the issues of validity and infringement before a jury in Newark, New Jersey in Stryker v. Synthes. The Stryker patent found infringed by the jury relates to the setting fractures with an external fixation system somewhat reminiscent of an erector set. After fighting off Synthes' post trial motions before the judge on, among other things, the validity of the asserted patent, we were faced with yet another validity challenge, this time the result of Synthes' petition for reexamination before the U.S. Patent and Trademark Office. With the depth of our litigation and prosecution experience, we presented evidence supporting our longstanding and judge and jury-tested position that the asserted patent was valid. In June 2008, the U.S. Patent and Trademark Office rendered a decision that Synthes' attack was not persuasive and that the patent claims held infringed would stand as previously issued and litigated.
Federal Circuit Delivers Blow To Tranquil
In a dispute over hip implant patents, a federal appellate court has affirmed a district court decision finding of noninfringement for a subsidiary of orthopedics company Stryker Corp., potentially killing rival Tranquil Prospects Ltd.'s infringement counterclaim. On Jan. 10, the U.S. Court of Appeals for the Federal Circuit issued a per curiam decision upholding the district court's summary judgment for the subsidiary, Howmedica Osteonics Corp. Oral argument in the case had been held the day before, on Jan. 9, according one attorney. The case began in May 2002, when Howmedica filed suit seeking a declaratory judgment of noninfringement and invalidity with respect to two patents owned by British Virgin Island-based Tranquil Prospects. Tranquil countersued for infringement. George C. Summerfield of Stadheim & Grear Ltd., which is representing Tranquil, said Monday that his client was contemplating a request for a rehearing. “I was very pleased with the ruling, because in my view it's the last nail in the coffin of this case, which we've always maintained had no basis,” said William L. Mentlik of Lerner, David, Littenberg, Krumholz & Mentlik LLP, which is representing Howmedica. He added, “Although Tranquil has the right to petition for rehearing and/or rehearing en banc, in the case of a per curiam affirmance, the likelihood of a successful petition is virtually nonexistent.” In March 2007, a judge in the U.S. District Court for the Northern District of Indiana found that Tranquil’s assertions of infringement, which were backed by an unsworn expert declaration and “virtual surgery” geared toward demonstrating that implanting Howmedica’s stem implants would infringe on Tranquil’s patented methods, weren’t up to snuff. At issue in the suit are two patents, both of which are entitled “Implantation of Articulating Joint Prosthesis.” Tranquil contended that a variety of Howmedica’s “hip stems,” which connect the femur to the hip socket, encroached on its intellectual property. “We were surprised. We understood the Howmedica attorney to have conceded at oral argument that the judge's claim construction on the medullary canal was incorrect, one of the main issues of the appeal,” Summerfield said Monday. But Mentlik, who represented Howmedica at oral argument, disputed this. “I did not concede anything of the sort,” he said. “What I said was that as a matter of anatomy, the medullary canal doesn't extend the entire length of a longbone. In the context of this particular patent, the judge was justified in construing the limitation as he did.” “Under any construction, they had to lose,” he added. The case stretched on as long as it did in part because of an appeal by Tranquil, which followed the district court’s January 2004 finding that the asserted claims of disputed patents were invalid. The Federal Circuit Court breathed new life into the case in 2005, reversing the lower court’s ruling that the Tranquil’s patent claims were indefinite and invalid, vacating the lower court’s ruling that one patent was not infringed because that ruling was based on an “erroneous claim construction,” and remanding the case back to district court. The patents in dispute are U.S. Patent Numbers 4,636,214 and 5,222,985. Tranquil is represented in this matter by Stadheim & Grear Ltd. and Hunt Suedhoff Kalamaros LLP. Howmedica is represented by Lerner, David, Littenberg, Krumholz & Mentlik LLP. The case is Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., case number 2007-1358,in the U.S. Court of Appeals for the Federal Circuit. --Additional reporting by Ben James
Restaurant Technologies, Inc. v. Jersey Shore Chicken
Restaurant Technologies, Inc. v. Jersey Shore Chicken 2007 WL 446910 and 2007 WL 4081737 (D.N.J. Feb. 6, 2007 and Nov. 15, 2007). The patent owner RTI had filed two patent infringement actions against customers of our client, Oilmatic Systems, LLC, alleging that the customers were infringing a patent relating to systems for supplying and draining cooking oil. We then filed a declaratory judgment action against RTI on behalf of Oilmatic. We initially sought and obtained a favorable claim construction. Thereafter, in a 50-page opinion, the Court granted summary judgment that the Oilmatic system did not infringe any of the seven asserted claims of RTI's patent.
Ecce Panis, inc. v. Maple Leaf Foods USA, inc.
Ecce Panis, inc. v. Maple Leaf Foods USA, inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. Nov. 7, 2007). Plaintiff Ecce Panis, which markets "artisan" breads, brought an action against our client Maple Leaf Foods alleging trade dress infringement in connection with packaging using a European motif for a competing line of breads. After the plaintiff moved for a preliminary injunction, the court conducted a two-day evidentiary hearing and subsequently issued a decision denying the requested injunction. Noting that the plaintiff's trade dress contained functional elements, the court concluded that the plaintiff had not shown that a likelihood of confusion existed between the two competing products, based upon dissimilarities in the trade dress, the absence of intentional copying, and the failure of the plaintiff's survey to demonstrate actual confusion.
Everett Laboratories v. Vertical Pharmaceuticals
A three-judge panel of the United States Court of Appeals for the Third Circuit, based in Philadelphia, has issued a decision in favor of Vertical Pharmaceuticals, Inc., a distributor of prescription vitamin products sold under the trademark CORVITE. The panel affirmed an earlier decision by a federal judge in Newark, New Jersey, who had denied an injunction requested by Everett Laboratories, Inc., which had been asserting trademark infringement relating to Everett's STROVITE products. In January 2006, U.S. Senior District Judge Dickinson Debevoise had denied Everett's request for a preliminary injunction, holding that Everett had not established a likelihood of success in demonstrating confusing similarity between STROVITE and CORVITE. In a June 13, 2007, opinion by Circuit Judge Marjorie Rendell, the Third Circuit agreed with Judge Debevoise's decision and suggested that Judge Debevoise had not sufficiently appreciated the weakness of Everett's case. The panel's decision expressed the view that Judge Debevoise had "overstated the similarity of the marks," because the common element of the two competing trademarks (STROVITE and CORVITE) was the suffix "-vite," which is a common descriptive term having little independent force or distinctiveness. While the Third Circuit's decision did not result in dismissal of the suit, Charles Kennedy of Lerner, David, Littenberg, Krumholz & Mentlik, LLP of Westfield, New Jersey, lead counsel for Vertical, suggested that the Third Circuit's decision may lead to the suit being dropped. As Kennedy noted, "We think Everett should think long and hard about pursuing this case in the face of a Third Circuit decision that is extremely negative to Everett's position." The case is Everett Laboratories, Inc. v. Vertical Pharmaceuticals, Inc., Appeal No. 06-1661 in the U.S. Court of Appeals for the Third Circuit and may be found at 2007 WL 1700688 (C.A. 3 (N.J.)).
Stryker Unit Wins Summary Judgment In Patent Case
In a move that could mark the resolution of a patent infringement suit over hip implant technology that has lasted almost five years, a court has granted summary judgment to a subsidiary of orthopedics company Stryker Corp. U.S. District Judge Allen Sharp on Wednesday signed off on an order granting summary judgment of noninfringement to plaintiff Howmedica Osteonics Corp., rejecting a summary judgment motion by Tranquil Prospects Ltd. Judge Sharp’s ruling could be appealed, but at the district court level, the case is essentially over, said William L. Mentlik, managing partner of the firm Lerner, David, Littenberg, Krumholz & Mentlik, LLP and lead counsel for Howmedica. We feel pretty good about it, Mentlik said of the decision, adding that he was confident that the ruling would hold up if appealed. Judge Sharp held that Tranquil’s assertions of infringement, which were backed by an unsworn expert declaration and virtual surgery geared toward demonstrating that implanting Howmedica’s stem implants would infringe on Tranquil’s patented methods, weren’t up to snuff. This curt declines the apparent invitation to engage in a fishing expedition and issue a catchall opinion, Judge Sharp wrote, after noting that Tranquil's expert failed to identify specifically which Howmedica prostheses infringed the patents-in-suit. Judge Sharp goes on to quote from a Seventh Circuit decision from 1991, in a case captioned United States v. Dunkel: A skeletal argument, really nothing more than an assertion, does not preserve a claim…Judges are not like pigs, hunting for truffles buried in briefs. Howmedica asked the court for summary judgment of noninfringement of four claims of the 985 patent and one claim of the 214 patent, while Tranquil sought summary judgment of direct literal infringement of four claims of the 985 patent. Tranquil also argued that it was entitled to summary judgment that the asserted claims of the 985 patent were not anticipated by putative prior art. In May 2002, Howmedica filed suit seeking a declaratory judgment of noninfringement and invalidity with respect to two patents owned by British Virgin Island-based Tranquil Prospects. Tranquil prospects countersued for infringement. At issue in the suit are U.S. Patent No 636,214 and 5,222,985—both of which are entitled Implantation of Articulating Joint Prosthesis Tranquil contended that a variety of Howmedica’s hip stems, which connect the femur to the hip socket, encroached on its intellectual property. More than 20 Howmedica’s hip stems, including the Omnifi and Strata, infringed, Tranquil alleged. The case stretched on as long as it did in part because of an appeal by Tranquil, which followed the district court's January 2004 finding that the asserted claims of the 985 and 214 patents were invalid. The U.S. Court of Appealsfor the Federal Circuit breathed new life into the case in 2005, reversing the lower court's ruling that the Tranquil’s patent claims were indefinite and invalid, vacating the lower court’s ruling that the 985 patent was not infringed because that ruling was based on an “erroneous claim construction, and remanding the case back to the northern Indiana district court. Attorneys for Tranquil Prospects Ltd. could not be immediately reached for comment. Tranquil is represented in this matter by Stadheim & Grear Ltd. and Hunt Suedhoff Kalamaros LLP. Howmedica is represented by Lerner, David, Littenberg, Krumholz & Mentlik, LLP. The case is Howmedica Osteonics Corp. v. Tranquil Prospects Ltd., case number 02-321,in the U.S. District Court for the Northern District of Indiana. By Ben James, email@example.com.
Lerner David Leads Sony to Successful Settlement in Historically Significant Patent Litigation
New Jersey-based intellectual property law firm Lerner, David, Littenberg, Krumholz & Mentlik, LLP recently concluded simultaneous litigation involving a total of 58 patents against the Eastman Kodak Company. Representing Sony Corporation, various Sony subsidiaries and Sony Ericsson Mobile Communications, Lerner David secured a successful settlement after several years of extensive negotiation and litigation, including a Markman hearing involving 27 patents. The patents covered digital cameras and other technology used in scanners, printers, software and film cameras. All told, these simultaneous litigations may collectively constitute the largest patent litigation ever brought in the United States or elsewhere.