Knobbe/Martens: Intellectual Property Law

Successes

Successes

Successes by Jurisdiction

California
Delaware
Illinois
International Trade Commission
Massachusetts
Nevada
New York / New Jersey
Texas
Virginia
Wisconsin

CALIFORNIA

Strikeforce Technologies, Inc. v. SecureAuth Corporation
Strikeforce sued our client, SecureAuth, for infringement of three patents directed to “out-of-band” authentication and were seeking monetary damages, pre- and post-judgment interest, treble damages and injunctive relief.  We successfully brought a motion to dismiss under 35 U.S.C. § 101 that invalidated all 43 asserted claims as directed to an unpatentable abstract idea.  The Court ordered a dismissal with prejudice as to StrikeForce’s three asserted patents, thereby resolving the dispute at an early stage.  Ours is the first case to invalidate StrikeForce’s patents, which have been asserted nationwide.  

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. 

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.

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.

Guardian Media Technologies, Ltd. v. Toshiba America Consumer Products, LLC
Guardian Media sued our client, Toshiba, and other leading DVD player and TV manufacturers, alleging patents related to censoring video programs (e.g., V-Chip technology). Prior to this lawsuit, a significant segment of the industry had taken a license under the plaintiff's patent. After adopting our proposed claim construction, and prior to any substantial discovery taking place, we successfully obtained summary judgment of noninfringement. This result saved Toshiba from paying millions of dollars in royalties.

I-Flow Corporation. v. Apex Medical Technologies, Inc., et al.
We represented I-Flow Corp., a leading manufacturer of elastomeric infusion pumps, in a patent infringement, trade secret misappropriation and unfair competition action from complaint through trial and obtained a favorable jury verdict.

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.

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.

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. 

Ligand Pharmaceuticals, Inc. v. Calasia Pharmaceuticals, Inc.
We represented Ligand in a state court action alleging trade secret misappropriation and other state law claims against a former employee of a company who had recently been acquired by Ligand and started his own company. We obtained a favorable settlement early in the litigation, securing all rights for Ligand.

 

DELAWARE

Pfizer, Inc. v. Ranbaxy Labs., Ltd.
We successfully represented Ranbaxy in trial and before 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. We ultimately obtained a favorable settlement, and Ranbaxy was able to successfully launch its generic product with six months of market exclusivity. 

Masimo Corp. v. Philips Electronics North America Corp. et al.
We represented Masimo against Philips alleging that the Philips pulse oximetry products infringe Masimo’s fundamental pulse oximetry technology patents. The Knobbe Martens team obtained a jury verdict of over $466 million for lost-profits damages against Philips for infringing two Masimo patents. The jury also rejected Philips’s infringement claims seeking $169 million.

Otto Bock Healthcare LP v. Össur HF
Össur is a global company active in the development and distribution of products in the fields of non-invasive prosthetics, medical braces and supports. After Össur invested substantial resources to bring to market its Unity product of vacuum suspension prosthesis, Otto Bock filed a motion for a preliminary injunction seeking to enjoin Össur. We vigorously opposed the motion on Össur's behalf.  The district court denied Otto Bock’s motion, and concluded that Otto Bock was unlikely to prevail on the merits of any of its claims. The Federal Circuit affirmed the district court’s decision in favor of Össur and concluded that Otto Bock is unlikely to establish infringement of the asserted claims.

ReCor Medical. Inc. v. Warnking
We achieved a decisive victory for ReCor Medical in the Delaware Chancery Court, and we defeated the defendants’ appeal at the Delaware Supreme Court.  ReCor developed an innovative renal denervation ultrasound therapy for patients with resistant hypertension, a potentially life-threatening condition.  ReCor purchased the assets of an ultrasound technology company, ProRhythm, in connection with ProRhythm’s bankruptcy case.  Shortly after the ReCor/ProRhythm transaction closed, the former CEO of ProRhythm, Reinhard Warnking, filed patent applications disclosing the use of ultrasound to treat hypertension, and Warnking assigned those applications to his new company.  ReCor sought a ruling from the Delaware Chancery Court that ReCor is the rightful owner of those patent applications, as well as subsequent applications that claim the same technology.  At trial, we proved that Warnking conceived of the inventions while he was still employed at ProRhythm and, therefore, that the IP belonged to ReCor.  The Delaware Supreme Court affirmed.  In addition, the Delaware Chancery Court granted an injunction in favor of ReCor prohibiting Warnking and his new company from using the ultrasound technology.  The Delaware Chancery Court also awarded ReCor its costs and attorneys’ fees of nearly $1 million.

ILLINOIS

Ranbaxy Labs. Ltd. et al. v. Abbott Labs. et al.
We represented Ranbaxy as a declaratory judgment plaintiff in the Northern District of Illinois on three patents relating to extended-release formulations of clarithromycin (the active ingredient in Abbott’s Biaxin XL® product). At preliminary injunction stage involving multiple defendants, we achieved a ruling that two patents were likely invalid for inequitable conduct. We subsequently achieved a favorable case-dispositive settlement for our client.

Sanofi-Aventis U.S. LLC et al. v. Ebewe Pharma GmbH Nfg.Kg
We represented Ebewe Pharma in a patent infringement action involving multiple defendants and three patents relating to oxaliplatin. We achieved a favorable settlement for our client.

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.

INTERNATIONAL TRADE COMMISSION

In the Matter of Certain Notebook Computer Products and Components Thereof
We represented Toshiba in an ITC investigation (and a parallel district court action) involving patents on computer hardware and software features. We prosecuted the ITC investigation through discovery, with depositions taking place in Japan, Taiwan, the US and Korea. Just before trial and after defeating each summary judgment motion brought by Wistron, the case settled with Wistron paying for a license under Toshiba's patents.

Wistron also brought counterclaims on power management patents. We successfully obtained a dismissal of the claims on these patents for lack of standing.

In the Matter of Certain Point of Sale Terminals and Components Thereof
We defended CyberNet (Korea) and CyberNet USA in a patent infringement investigation involving point of sale terminals.

In the Matter of Certain Personal Watercraft and Components Thereof
We represented Yamaha in an ITC investigation against Bombardier Inc. on Yamaha’s watercraft patents. The case progressed through a four-week hearing before the ALJ. Just before the ALJ’s initial determination was issued, the parties settled.

In the Matter of Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing Same
We represented Microsemi Corporation in an ITC investigation on O2 Micro International LLC’s patents. We successfully obtained an Order from the Administrative Law Judge (“ALJ”) that Microsemi’s chips do not directly infringe. The ITC ultimately found no infringement by Microsemi under the theories of inducement or contributory infringement. O2 Micro has appealed. 

MASSACHUSETTS

CardiAQ Valve Technologies, Inc. v. Neovasc Inc.
In a case relating to medical device technology, we achieved a $70 million jury verdict for our client CardiAQ. CardiAQ designed a transcatheter mitral valve replacement device that was the first ever to be placed in human and hired the Defendant to help assemble prototypes under a non-disclosure agreement. The defendant's lead engineer began designing a directly competing device while working on CardiAQ's prototypes, but decided not to tell CardiAQ as their relationship contiuned for six more months, during which CardiAQ shared numerous confidential designs.

NEVADA

Custom Connect v. Bartholomew
We represented the plaintiff Custom Connect in a case involving customer lists. We obtained a permanent injunction and judgment by consent, an apology letter to the industry, and a substantial settlement payment from the defendants.

NEW YORK / NEW JERSEY

Small v. Nobel Biocare USA, LLC
A dentist sued Nobel Biocare alleging infringement of two patents relating to dental implant designs. The patents survived years of re-examination and reissue proceedings, and numerous other defendants settled.  Nobel instead chose to have us challenge the patents, with $50 million in damages at stake.  After obtaining key admissions from the dentist about the first patient on whom she used the patented implant, we obtained summary judgment of invalidity due to an on-sale bar. We also proved the second patent was invalid on multiple grounds, including the rare defense of “reissue recapture.” The dentist promptly dismissed the case.

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. 

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.

Roche Palo Alto LLC v. Ranbaxy Labs. Ltd.
We represented Ranbaxy in a patent infringement action on a patent relating to valganciclovir (the active ingredient in Roche’s Valcyte® product). We obtained a successful judgment of noninfringement following trial, and reached a favorable settlement prior to appeal. 

AstraZeneca AB et al. v. Ranbaxy Labs. Ltd. et al.
We successfully represented Ranbaxy in a patent infringement action in the District of New Jersey concerning six patents related to esomeprazole magnesium (the active ingredient in AstraZeneca’s Nexium® product). We achieved a favorable settlement for our client.

TEXAS

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. 

Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
We scored a major patent litigation victory for Smith & Nephew in a case involving patents relating to negative pressure wound therapy (NPWT). After a jury trial, the judge in a 37-page ruling granted Judgment as a Matter of Law of invalidity of the patent asserted against our client due to obviousness based on the many early uses of NPWT we prented on behalf of Smith & Nephew at trial.

Typhoon Touch Technologies, Inc. v. Dell, Inc. et al.
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 in the market. 

Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Toshiba America Information Systems, Inc.
CSIRO sued our client, Toshiba, and other leading laptop, desktop and wireless product manufacturers, alleging that their products that comply with the IEEE 802.11a, g or n standards infringed its patent. Previously, one company had been found to infringe the patent and was subject to a permanent injunction. In conjunction with the other defendants, the defense group was able to successfully settle the case after the fourth day of trial when the invalidity defense was presented to the jury.

VIRGINIA

Nobel Biocare USA, LLC v. Technique D’Usinage Sinlab
We obtained summary judgment for Nobel Biocare.  Competitor Sinlab accused Nobel of willfully infringing five U.S. patents for computerized dental surgery planning and customized dental prosthetics.  The parties had litigated related patents for years in Canada and Europe.  To quickly end this infringement threat, we filed a declaratory judgment action in the “rocket docket” of Eastern District of Virginia.  Only six months after filing suit, the court granted summary judgment of non-infringement on all patents at issue.  The case subsequently settled globally very favorably to Nobel.

WISCONSIN

Computer Docking Station Corp. v. Dell Inc. et al.
Non-practicing entity Computer Docking Station sued our client, Toshiba, and other leading computer makers, alleging that their products infringed a patent that related to computer docking technology. Though other defendants settled the case, we obtained summary judgment of non-infringement, successfully arguing that the patent-in-suit did not cover docking stations and docking connectors for use with laptop computers. We subsequently obtained affirmance of the judgment by the Federal Circuit on appeal.

Attorney Finder