Amazon.com, Inc. v. CustomPlay, LLC, IPR2018-01496, -01497, and -01498 (P.T.A.B.). Serve as lead counsel for Amazon in inter partes review (IPR) proceedings before the Patent Trial & Appeal Board (PTAB) on patents relating to displaying annotations during the playback of a video.
Rensselaer Polytechnic Institute et al. v. Amazon.com, Inc., 1:18-cv-00549-BKS-CFH (N.D.N.Y). Represent Amazon in a patent infringement lawsuit filed in the Northern District of New York relating to natural language processing, and serve as lead counsel in the related IPR proceeding (IPR2019-01068).
Smith & Nephew, Inc. v. ConforMIS, Inc., IPR2016-01874, IPR2017-00115, IPR2017-00510, IPR2017-00373, IPR2017-00544, IPR2017-00778-80 and ConforMIS, Inc. v. Smith & Nephew, Inc. (1:16-cv-10420-IT (D. Mass.)). Represented Smith & Nephew in a patent infringement case in the District of Massachusetts, and several IPR proceedings, involving patents relating to patient-specific instruments for knee replacement surgery. After our team successfully obtained final written decisions invalidating the first four asserted patents and Mr. Heideman conducted oral argument in four additional IPR proceedings, the parties settled.
Personalized Media Communications, LLC v. Amazon.com, Inc. et al., 1:13-cv-01608. Represented Amazon in a patent infringement action in the District of Delaware on seven patents relating to personalized recommendations, internet check-out processes, decryption, online advertising, and operating system updates. Obtained judgment that all asserted patents were invalid for failure to claim patent-eligible subject matter. 2015 WL 4730906 (D. Del. Aug. 10, 2015). Also successfully represented Amazon in the subsequent appeal to the Federal Circuit. (Case No. 2015-2008.)
Amazon.com, Inc. et al. v. Personalized Media Communications, LLC. Successfully represented Amazon in inter partes review proceedings involving all seven patents asserted in district court litigation. The PTAB held all of the challenged claims invalid as anticipated and/or obvious. See 2016 WL 932881; 2016 WL 1133371; 2016 WL 1170773; 2016 WL 1174571; 2016 WL 1224164; 2016 WL 1174550; 2016 WL 1296088. When PMC appealed the PTAB’s final written decision of invalidity, Mr. Heideman successfully argued to the Federal Circuit, obtaining a Rule 36 affirmance of the PTAB’s decision. (Fed. Cir. Case No. 2016-2606.)
Depomed, Inc. et al. v. Watson Labs.-Florida, Inc. et al., 1:12-cv-00492. Represent defendants in a patent infringement action in the District of Delaware on multiple patents relating to controlled-release oral dosage forms comprising metformin hydrochloride (the active ingredient in Glumetza®). Obtained favorable case-dispositive settlement for client.
Anderson v. Kimberly-Clark Corp., 2:12-cv-01979. Represented defendant in a design patent infringement case in the Western District of Washington involving plaintiff’s design patent related to a disposable absorbent undergarment. Obtained early dismissal of plaintiff’s infringement claims and a declaration of noninfringement. 2013 U.S. Dist. LEXIS 188222 (W.D. Wash. Sept. 25, 2013). Also represented the defendant on appeal and obtained affirmance of the district court’s judgment. 570 Fed. Appx. 927; 2014 U.S. App. LEXIS 13016 (Fed. Cir. July 10, 2014).
Aegis Mobility, Inc. v. Katasi LLC and ObdEdge, LLC, 1:12-cv-03306. Represented plaintiff in a declaratory judgment action seeking a declaration of noninfringement and invalidity in the District of Colorado. The technology at issue related to systems and methods for disabling mobile devices in vehicles to prevent distracted driving. Obtained a favorable case-dispositive covenant not to sue from defendants.
Jonna Markets, LLC v. Quickie Stores, Inc., 2:12-cv-92232. Represented plaintiff in a trademark infringement lawsuit in the Western District of Washington involving defendant’s unauthorized use of the mark, “Plum Market.” Achieved a favorable case-dispositive settlement for client.
Lupin Atlantis Holdings S.A. v. Ranbaxy Labs. Ltd. et al., 2:11-cv-03851. Represented defendants in a patent infringement action in the Southern District of New York on two patents relating to pharmaceutical compositions of fenofibrate (the active ingredient in Lupin’s Antara® product). Achieved favorable case-dispositive settlement for client.
Advanced Thermal Sciences Corp. v. Applied Materials, Inc., 8:07-cv-01384. Represented plaintiff in a breach of contract and improper inventorship action in the Central District of California involving patents relating to thermal control of semiconductor manufacturing equipment. Obtained summary judgment on critical issues and, following a two-week bench trial, the Court ruled in favor of our client on all substantive issues. See 2010 WL 2015236 (C.D.Cal.). Following the bench trial, obtained $5.7 million in attorneys’ fees for our client.
Alltech, Inc. v. Cenzone Tech, Inc., 06-cv-0153. Represented plaintiff in a patent infringement action in the Southern District of California on a patent relating to compositions for binding mycotoxins in animal feed. After obtaining summary judgment of infringement and summary judgment on defendant’s antitrust and invalidity counterclaims, obtained favorable case-dispositive settlement for our client.