Patent Engagements

• Beckman Research Institute v. Genentech - We represented Genentech in this arbitration proceeding concerning the royalties due plaintiff under a research and license agreement regarding recombinant DNA technology, which resulted in the issuance of two patents and the development and commercialization of two highly successful anti-cancer drugs.  The case settled favorably for Genentech shortly before arbitration.

• Chiron v. Hoffman-LaRoche - Represented Chiron Corporation as a plaintiff in this patent infringement action in the Northern District of California. The case involved the patent for a vaccine for the Hepatitis C virus, as well as antitrust counterclaims.

• Dental Technology Recovery Trust v. International Technology Concepts, Inc. - Our client, IT Concepts, sells intra-oral cameras that are used in the dental industry which the plaintiff had claimed infringes its patent.  IT Concepts filed an action for declaratory judgment of noninfringement and invalidity, and the plaintiff counterclaimed for infringement.  We obtained a favorable settlement for our client.

• Synbiotics Corp. v. Heska Corp. - We represented Heska in a patent infringement suit in which the plaintiff charged Heska with infringing a patent that claims several bioengineered elements used in the detection of heartworm infection in dogs and cats.  We successfully moved for summary judgment that two of the patent claims in issue were invalid on the basis of anticipation.  We settled the remaining claims on terms favorable to our client.

• 3M Innovative Properties v. The Clorox Company - We represented Clorox, Brita, Pentair and Sears in a patent infringement lawsuit brought by 3M and its Cuno subsidiary in Minneapolis. The case involves two patents covering replacement water filters used in refrigerators. The court issued a favorable claims construction for Defendants in December 2007 as part of a ruling denying summary judgment. The case then settled on terms favorable to our clients.

• Atmel Corporation v. Ericsson – We represented Atmel, a leading semiconductor manufacturer, in a multi-week arbitration through which we obtained an award of over $43 million arising from Ericsson's misappropriation of Atmel's patented AVR microcontroller technology and Ericsson's multiple breaches of the parties' license agreement.  The International Centre for Dispute Resolution, International Arbitration Tribunal also awarded Atmel a permanent injunction prohibiting Ericsson from continued misappropriation of Atmel's proprietary technology.

• Compression Labs v SanDisk Corporation, et al - Represented AverMedia, a Taiwanese manufacturer, in connection with patent infringement claims asserted by Compression Labs relating to patents for digital compression technology.

• Cordis v. Guidant - One of our partners served on the arbitration panel that resolved patent infringement claims between Cordis Corporation and Guidant Corporation involving infringement claims over the groundbreaking Palmaz stent patent. The arbitration involved a lengthy claims construction proceeding, followed by a two week hearing ending in an award. The claims asserted sought hundreds of millions of dollars in damages for the alleged infringement.

• Creo Products v. Dainippon Screen - Successfully defended Japanese manufacturer Dainippon Screen against patent infringement and trade secret claims brought in the United States District Court for the Western District of Washington.  Obtained summary judgment of non-infringement in our client's favor based on application of prosecution history estoppel, and summary judgment dismissing all other claims and an award for attorneys' fees in favor of our client.  The district court judgment was affirmed in all respects by the Federal Circuit.

• Dainippon Screen Mfg. Co. Ltd. v. CFMT, Inc., et al. - This declaratory relief action was filed in March 1997, requesting a judgment of noninfringement and invalidity.  We successfully appealed a jurisdiction dismissal (142 F.3d 1266), and after remand, the patentee counterclaimed on four patents involving semiconductor cleaning and drying technology used in state-of-the-art semiconductor fabrication equipment.  We presented claim construction arguments at several Markman hearings. Following a month-long jury trial, this case was successfully settled.

• Datatern v Bank of America Corp. et al. - We defended Visa Inc. in a lawsuit filed by DataTern against it and others in the Eastern District of Texas which claimed that Visa was infringing DataTern's ‘402 patent titled "System for enabling access to a relational database from an object oriented program." We obtained a successful settlement of the case for Visa.

• Do-Lin Metal, et al. v. DS-Max Int’l, et al. - Represented DS-Max in this patent infringement action filed in the Northern District of California.  The case involved several design and utility patents on a carrying container for tools, and was successfully settled.

• Dolby Laboratories v. Lucent Technologies – We represented Dolby in seeking a declaratory judgment that Dolby’s AC-3 technology does not infringe patents Lucent had asserted against Dolby’s licensees.  Following protracted litigation, in which we obtained discovery sanctions against Lucent on multiple occasions and attorneys fees at the conclusion of the case, we successfully obtained orders granting summary judgment of non-infringement on the patents-in-suit.  The Federal Circuit affirmed the district court's orders awarding summary judgment and attorney's fees.

• Drexler Technology v. Dolby Laboratories, Inc., et al. - This case, filed in the Northern District of California, involved patent infringement claims asserting that Dolby Digital sound-on-film technology infringed patents held by the plaintiff, Drexler Technology Corporation.  In addition to defending Dolby Laboratories, also represented a number of major entertainment companies (including Walt Disney Pictures, Fox, MGM, Universal Studios and Columbia Pictures) in this action.  After obtaining a claim construction (“Markman”) order supporting virtually every claim construction position advocated on behalf of our clients, the Court entered summary judgment in the defendant's favor on grounds of non-infringement and patent invalidity.

• Elegent v. Dolby Laboratories - Defended Dolby Laboratories against antitrust and patent misuse claims relating to their licensing of the industry standard Dolby Digital audio compression for DVD video in a cutting-edge case involving the permissible scope of RAND licensing.

• Orion IP, LLC v. Wal-Mart Stores, Inc./Walmart.com USA, LLC - We defended Wal-Mart Stores, Inc. and Walmart.com USA, LLC in this patent action brought in the Eastern District of Texas, which recently settled. We obtained the most favorable settlement ever extracted from this litigant by any retailer. We have handled several other patent and licensing related matters for Wal-Mart Stores, Inc. and Walmart.com USA, LLC.

• Pickholtz v. Aladdin Knowledge Systems - We represented the inventor in a patent infringement action alleging that certain of Aladdin's Software Digital Rights Management (DRM) products infringed the inventor's patent (covering an invention restricting unauthorized use of pirated computer software).  We secured a $2 million settlement after successfully defeating Aladdin's jurisdictional challenges, winning all contested claim constructions and receiving favorable orders on many discovery issues, including an award of sanctions for the defendants' discovery abuse.  The settlement was reached and finalized without incurring the additional expense of taking or defending any depositions.

• PostX v. Sigaba - Represented Sigaba in two separate patent infringement actions asserting that Sigaba's e-mail encryption technology infringed two of the plaintiff's patents.  Obtained orders granting summary judgment of non-infringement on two separate patents prior to any claims construction hearings; these were affirmed by the Federal Circuit. Asserted antitrust counterclaims alleging that the plaintiff made bad faith infringement accusations in the marketplace under PREI.

• Scheiber v. Dolby - We successfully obtained summary judgment in favor of our client, Dolby Laboratories, Inc., in the Indiana District Court on the issue of bundling United States patents with foreign patents.  The judgment was affirmed by the Seventh Circuit, and a writ of certiorari denied by the Supreme Court.

• Trimble Navigation, Ltd. v. SiRF Technology, Inc. - We defended SiRF Technology in an infringement action on three patents related to chipsets for use in Global Positioning Systems (GPS) technology.  After a technical tutorial and the assertion of counterclaims based on limited discovery, and the exchange of initial disclosures under the Local Patent Rules, we achieved a favorable settlement for the client which included licenses to additional patents.

• Visa USA Inc. - We achieved a complete victory against plaintiff Every Penny Counts Inc. by obtaining a final judgment of non-infringement on all five patents allegedly covering prepaid cards based on a favorable claims construction ruling on the first morning of a scheduled two-day Markman hearing. The judgment, which was entered by the U.S. District Court for the Middle District of Florida in May 2008, was affirmed on April 30, 2009 by a 3-0 decision by the U.S. Court of Appeals for the Federal Circuit.

• Volterra Semiconductor v. Primarion & Infineon Technologies - Representing patent holder and plaintiff Volterra Semiconductor in an infringement action filed in the Northern District of California on five patents relating to flip chip switching regulators, conductive routings for IC's and discrete time-sampling of data for use in switching regulators.  We are also defending Volterra against antitrust counterclaims brought by defendants, including Walker-Process claims for monopolization and attempted monopolization.