Successes
Our record speaks for itself. We think you'll be impressed by what it has to say.
Advanced Thermal Sciences Corp. v. Applied Materials, Inc.
We achieved a bench trial victory for Advanced Thermal, a BE Aerospace subsidiary, finding that Applied Materials breached a joint development agreement by filing ten patent applications on temperature control systems for semiconductor fabrication equipment and that Advanced Thermal was the sole inventor and owner of other patents. The court also awarded Advanced Thermal its attorneys’ fees.
Alios BioPharma
The firm handled the intellectual property aspects of Alios Biopharma’s recent collaboration deal with Vertex Pharmaceuticals. Alios is a biopharmaceutical company that employs molecular modeling and replicon assays for drug screening. Vertex obtained rights to two hepatitis C drugs from Alios in a transaction worth up to $1.5 billion, said to be the largest preclinical licensing deal in history. Knobbe Martens developed an IP strategy for Alios, filed Alios’ patent applications, analyzed potential third party risks and strategies for market clearance, and assisted Alios in the due diligence aspects of the deal with Vertex.
American Medical Association v. Practice Management Information Corporation
We successfully represented the defendant, a distributor of medical books, by obtaining a judgment that the copyright owner had engaged in copyright misuse, rendering the copyright unenforceable until the misuse could be purged. This decision marked the first time the Court of Appeals for the Ninth Circuit recognized the existence of the defense of copyright misuse.
AMP Research: Bed Extender
Knobbe Martens was instrumental in securing patent protection for AMP Research's BED X-TENDER, used to increase the effective length of pick-up trucks. To date, Knobbe Martens has worked with AMP to develop and implement a strategy that has resulted in AMP being granted over 17 U.S. patents for key aspects of the BED X-TENDER technology. Knobbe Martens successfully negotiated a license agreement with a major tier one supplier, resulting in AMP receiving millions of dollars in royalties, while being free to continue to sell the BED X-TENDER in the aftermarket.
Knobbe Martens has also successfully asserted the BED X-TENDER patents on behalf of AMP in patent infringement litigation in which it obtained summary judgment of infringement against E-Z Load. This later resulted in AMP securing a permanent injunction and a final judgment awarding AMP damages equal to 25% of gross sales, as well as attorneys’ fees."
Applied Medical Resources Corp. v. Tyco Healthcare Group LLP
We represented a medical-device maker accused of patent infringement in two jury trials in the Eastern District of Texas. After one jury found one patent invalid, the court relied on that verdict to invalidate other claims in that patent and another patent on summary judgment. Then, a second jury found two more patents invalid and not infringed. An appeal is pending.
Applied Medical Resources Corp. v. United States Surgical Corp.
We obtained a $43.5 million verdict for Applied Medical in a jury trial and a finding that U.S. Surgical, a division of Tyco Healthcare, had willfully infringed the asserted patent covering trocar devices for minimally invasive surgery. The district court upheld the verdict, enhanced the damages, and entered a $64.5 million judgment. We obtained an affirmance of the judgment in its entirety from the appellate court.
Applied Medical Resources Corp. v. United States Surgical Corp.
Covidien companies, Tyco Healthcare and United States Surgical, accused Applied’s trocars (a medical device used in laparoscopic surgery) of infringing four patents. The Covidien companies sought $112 million in damages and enhanced damages for alleged willful infringement. They also sought an injunction to prevent Applied from selling much of its trocar line. Before trial, Covidien withdrew its assertion of willful infringement, and we invalidated two of the asserted patents on summary judgment. We then successfully obtained a unanimous jury verdict that the remaining two asserted patents were not infringed and also were invalid.
Automobile Club of Southern California v. The Auto Club
The firm successfully represented the Automobile Club of Southern California in obtaining summary judgment that the defendants were unfairly competing by operating as a motor club in the State of California without the required license from the Department of Insurance. The Court enjoined the defendants from further operations in California. The firm then successfully defended against the defendants’ motion for summary judgment that the mark AUTO CLUB was generic. The Court found that the firm had introduced sufficient evidence that consumers viewed the mark as a brand and that the defendants’ use of the name “The Auto Club” was causing consumer confusion. Published decisions at 2007 WL 704895 (C.D. Cal. Jan. 3, 2007); 2007 WL 704892 (C.D. Cal. Mar. 6, 2007); 2007 WL 909599 (C.D. Cal. Mar. 15, 2007)
Broadcom Corporation
Liaised with in-house legal and domain name team to establish and execute worldwide domain name enforcement and procurement strategy for Broadcom Corporation despite challenges due to ever increasing number of generic and country code level domain names. Broadcom Corp. v. BroadVoice, Inc., (C.D. Cal 2005) (represented plaintiff in trademark infringement suit; obtained settlement through mediation) and Broadcom Corporation v. Broadphone LLC (TTAB 2009) (represented Broadcom in obtaining summary judgment against Broadphone LLC).
Computer Docking Station Corporation v. Dell et al. (representing Toshiba)
We obtained summary judgment of non-infringement and affirmance of the judgment on appeal. Toshiba, along with several other computer laptop makers, were sued for infringement by a non-practicing entity. We successfully argued that the patent-in-suit did not cover docking stations and docking station connectors for use with laptop computers.
Cook v. Makita USA, Inc.
We defended the world’s premier power tool maker, Makita USA, in a trade secret misappropriation case relating to power tool design. The plaintiff alleged that he was the inventor of a power tool accessory, and claimed that he had presented the accessory to Makita pursuant to a non-disclosure agreement. We resolved the matter favorably shortly before trial, when the plaintiff dismissed all claims without any compensation from our client.
Cosmo Lyles
Knobbe Martens’ client Cosmos Lyles was recently recognized by Popular Science magazine for developing an Invention of the Year in 2010. Mr. Lyles invented a guitar bridge that incorporates a series of springs and levers to keep the strings of a guitar constantly in tune without having to adjust the guitar pegs. Slash (Guns N' Roses lead guitarist) and Rob Zombie's lead guitarist John 5 are using the new bridge and rave about it. The bridge is sold under the EVERTUNE mark. The firm obtained patent protection for the bridge, which will enable musicians worldwide to spend more time playing and less time tuning their instruments.
Gart v. Logitech, Inc.
We represented an individual inventor who had patented an ergonomic computer mouse. After the District Court entered summary judgment of non-infringement against our client, we successfully persuaded the Federal Circuit that the District Court had incorrectly adopted a narrow claim construction. The Federal Circuit vacated the District Court's decision and remanded for further proceedings using the broader claim construction. The Gart decision is now one of the leading Federal Circuit decisions instructing the District Courts not to adopt unduly narrow claim constructions.
Guardian Media Technologies v. Toshiba America Consumer Products, L.L.C.
We defended Toshiba against allegations of infringement of a patent involving methods for censoring video programs. Prior to this lawsuit, a significant segment of the industry had taken a license under the plaintiff’s patent. But, after adopting Toshiba’s proposed claim construction, and prior to any substantial discovery, the court granted summary judgment of noninfringement, which prevented Toshiba from paying tens of millions of dollars in royalties sought by the plaintiff.
Hansen Beverage Company v. Cytosport Inc.
We represented Hansen, owner of the MONSTER ENERGY trademark, alleging trademark infringement, unfair competition and false advertising against a protein beverage manufacturer using the MONSTER MILK mark. We obtained a preliminary injunction for Hansen and the case settled favorably on the eve of trial.
Hewlett-Packard Co. v. Mustek Systems, Inc.
In a jury trial and on appeal, we successfully represented a manufacturer of digital scanners accused of infringing several Hewlett-Packard patents. Our client was found not liable because the asserted patents were either invalid or not infringed.
I-Flow Corp. v. Apex Medical Technologies
We represented I-Flow Corp., a leading manufacturer of elastomeric infusion pumps, in a month-long trial involving patent infringement, trade secret misappropriation and unfair competition claims. The jury found for I-Flow Corp. on all issues and awarded a multi-million dollar verdict for our client.
In the Matter of Certain Notebook Computer Products and Components Thereof
We represented Toshiba in an ITC investigation brought by Wistron involving patents on computer hardware and software features. We prosecuted the case through discovery with depositions taking place in Japan, Taiwan, US and Korea. During pre-trial preparations, we defeated every summary judgment motion filed by Wistron. Subsequently, the case settled with Wistron paying for a license under Toshiba’s patents.
Ingersoll Machine Tools v. CG Tech
We defended CG Tech in lawsuit brought by Ingersoll involving claims of federal unfair competition, copyright infringement, misappropriation of trade secret, deceptive trade practices and civil conspiracy relating to machine tool simulation software. We resolved the case favorably for CG Tech by obtaining a dismissal with prejudice after minimal discovery.
Intermune
The firm developed a large patent portfolio surrounding danoprevir, an HCV protease inhibitor, for our client InterMune, Inc. In addition to obtaining several key patents, the firm filed suit against the U.S. Patent Office on behalf of InterMune to maximize the patent term adjustment awarded to the U.S. patent. After successfully prosecuting the danoprevir portfolio world-wide, the firm handled the intellectual property aspects of the negotiations and ultimate $175 million cash deal with Hoffman-La Roche giving them the development and commercialization rights to danoprevir.
Journée Lighting Inc.
Our client Journée Lighting Inc. designs and manufactures state-of-the-art LED lighting fixtures. Journée Lighting invented a new light bulb that makes LED lights easier to use. The new light bulb, if never turned off, would last for 5.7 years at a fraction of the cost of a standard light bulb. GE Lumination purchased the next-generation LED module technology from Journée Lighting. A team of Knobbe Martens attorneys played an instrumental role in obtaining patent protection for the invention and providing agreement services leading to highly successful negotiations.
KFx Medical Corp. v. Anthrex, Inc.
Knobbe Martens’ client KFx Medical Corporation received from the United States District Court for the Southern District of California an Order Granting KFx’s Motion for Summary Judgment of No Inequitable Conduct in Connection With U.S. Patent No. 7,585,311.
On August 1, 2011, KFx filed a complaint against Arthrex alleging claims of induced and contributory infringement of United States Patent Number 7,585,311 (“the ‘311 Patent”). Since that time KFx has been awarded an additional three patents covering knotless double row repair, two of which are now art of the Arthrex suit (United States Patent Numbers 8,100,942 (“the ‘942 Patent”) and 8,109,969 (“the ‘969 Patent”). The order issued by the district court rejected Arthrex’s defense that the ‘311 patent is unenforceable for inequitable conduct committed during prosecution of the ‘311 patent. The lawsuit is currently set for trial in August 2013.
Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
Knobbe Martens successfully defended Smith & Nephew in a case in which Kinetic Concepts asserted several patents on negative pressure wound therapy (NPWT). NPWT is the treatment of difficult-to-heal open skin wounds with negative pressure. After a jury trial, the Court granted JMOL of invalidity due to obviousness based on evidence presented at the trial by the Knobbe team. In view of this ruling, clinicians and patients now have a choice when selecting NPWT products.
Kyoto University
Knobbe Martens worked closely with Professor Yamanaka and his team to obtain U.S. Patent No. 8,048,999, the first patent granted for the work which led to Professor Yamanaka’s Nobel Prize. This patent relates to a nuclear programming factor for the production of induced pluripotent stem cells from adult cells. It is expected that the production of these induced pluripotent stem cells will ultimately lead to treatments that allow the complete regeneration of injured and diseased tissues.
Knobbe Martens continues to represent Kyoto University in connection with its ongoing efforts to obtain patent protection in the United States for Professor Yamanaka’s further work. We are greatly honored that Kyoto University entrusted Knobbe Martens to assist it in connection with such groundbreaking work, and we particularly appreciate the opportunity to work with Professor Yamanaka, a scientist of such renowned stature.
Lockwood v. American Airlines, Inc.
We defended American Airlines against a charge that its SabreVision computer reservation system infringed three patents. We obtained summary judgment rulings that SabreVision did not infringe any of the three patents and that two of the plaintiff’s patents were invalid. All rulings were affirmed on appeal.
M’Otto Enterprises, Inc. v. Redsand, Inc.
We represented a professional volleyball player and clothing manufacturer against a competing clothing manufacturer. Our client marketed his clothing under a trademark that was a stylized version of his own face, emphasizing his distinctive hairstyle. The competitor marketed its clothing using a cartoon logo having a similar hairstyle. We obtained a judgment after trial that the competitor had infringed our client’s trademark rights, and enjoining further use of the competitor’s logo.
Magnetar Technologies Corp
Intamin, the largest amusement park ride manufacturer in the world, repeatedly enforced its patents on magnetic braking systems without challenge until it sued Magnetar, a local start-up aggressively defended by Knobbe Martens. In November 2010, the Federal Circuit ruled in Magnetar's favor, summarily affirming a judgment of unclean hands. The firm ascertained that a recorded patent assignment was forged by Intamin, which lead to unclean hands and an attorneys’ fee award.
Masimo Corp. v. Nellcor Puritan Bennett and Mallinckrodt, Inc.
We obtained a $164 million verdict for Masimo in a jury trial in Los Angeles. The award is one of the largest verdicts in a medical device patent suit in history. The jury found that Nellcor Puritan Bennett, a division of Tyco Healthcare, had willfully infringed Masimo’s patents related to pulse oximeters, medical devices that allow clinicians to obtain accurate oxygen saturation and pulse rate values despite interference caused by patient motion. The appellate court affirmed the $164 million judgment and ordered the entry of a permanent injunction. The case settled for $330 million and future royalties.
Nobel Biocare, USA, Inc.
The firm successfully defended Nobel Biocare, USA, Inc. in a binding arbitration proceeding involving a dental implant patent dispute where alleged past damages of $100 million and a possible injunction against future sales were at risk. Nobel Biocare is the world's leading manufacturer of dental implants, which are surgically implanted in the jaw to support prosthetic teeth and dental bridges. Two of its popular product lines were accused of infringement in this binding arbitration conducted by a panel of three patent attorneys. The patent had been previously enforced against over a dozen companies in the dental implant industry, resulting in settlements and payments of millions of dollars in royalties to the patent owner. Instead of owing any damages, Nobel Biocare was found not to infringe, and was awarded over $2 million in lawyers' fees and expenses. Knobbe Martens also prosecutes Nobel’s substantial patent portfolio.
Oakley, Inc. v. Sunglass Hut, Int’l
Successfully represented plaintiff, owner of patent for lens coatings, in obtaining preliminary injunction. Decision affirmed by the United States Court of Appeals for the Federal Circuit.
Pfizer v. Ranbaxy Pharmaceuticals
The firm successfully represented Ranbaxy in trial and before the U.S. Court of Appeals for the Federal Circuit in Ranbaxy's efforts to be the first company to seek approval to market a generic version of the world's best-selling drug, Pfizer's cholesterol-reducing drug Lipitor®. On appeal, the Federal Circuit invalidated one of the patents protecting Lipitor, shortening Pfizer's patent protection by fifteen months. Through our representation, Ranbaxy ultimately obtained a favorable settlement, and was able to successfully launch its generic product with six months of market exclusivity.
Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.
In a jury trial and on appeal, we represented laboratory-instrument maker Beckman Coulter, which was accused of patent infringement. After verdict, we obtained a ruling that Beckman had not infringed and that the patent was invalid for obviousness and because Beckman was the first inventor. The appellate court affirmed the invalidity ruling.
Schindler Elevator Corp. and Inventio AG v. Otis Elevator Co.
We achieved a complete victory for Schindler in jury trial in Manhattan involving Schindler’s patented Schindler ID® elevator system. After a two-week jury trial, the jury answered all 33 questions in Schindler’s favor and the district court entered a permanent injunction. We previously represented Schindler in a successful appeal overturning an erroneous claim construction and obtaining reversal of noninfringement ruling.
SuperShuttle International, Inc. v. Schafer-Schonewill & Associates, Inc.
We represented, SuperShuttle, a well-known provider of airport van services against a competitor that began using the trademark “SuperShuttle Express.” We obtained a preliminary injunction against the use of the SuperShuttle Express trademark. When the defendant switched to the trademark “Super Express Shuttle,” we obtained a judgment of contempt.
The Laryngeal Mask Company Ltd., et al. v. Ambu A/S, et al.
We represented the plaintiff asserting a patent in the field of laryngeal mask airway devices, a medical device used to administer anesthesia gases and establish an airway in unconscious patients. We obtained a disqualification of initial defense counsel based on California ethics rules. On appeal, we obtained a reversal of summary judgment of non-infringement based on a flawed claim construction, and a reversal of summary judgment of invalidity for lack of written description. We settled the case successfully for our client after an appeal and a remand to the district court.
Typhoon Touch Technologies, Inc. v. Toshiba America Information Systems
Typhoon filed suit against our client, Toshiba, and other leading laptop and cell phone manufacturers, alleging that their touchscreen devices infringed two patents. After we obtained a District Court judgment of no infringement, the Federal Circuit affirmed. Because the patents in suit had been asserted against essentially any device with a touchscreen, the decision was significant because it removed a major obstacle to the market.
Ulthera Inc.
The firm represented Ulthera Inc., developer of ultrasound technology to rejuvenate the skin, in IP diligence resulting in the successful completion of $10.5 million in Series C venture funding. The funding was led by New Enterprise Associates with participation by Apposite Capital LLP. The Ulthera® System, approved by the FDA for eyebrow lifting, combines traditional ultrasound imaging with focused ultrasound therapy to provide lifting and toning of the skin, including face and neck treatments and eyebrow lifts. Coverage of Ulthera on national television segments has raised awareness among millions of consumers, fueling demand for the treatment worldwide. Knobbe Martens has also helped to build and manage Ulthera’s patent and trademark portfolio.