Cadwalader's Intellectual Property Practice Group is unique among major U.S. law firms - it is a litigation- and trial-based full service IP group known for its depth of experience and exceptional capabilities in all intellectual property matters. Our IP Group lawyers handle sophisticated litigation and trials in all IP subjects, with particular expertise in complex patent and trade secret proceedings in U.S. district and state courts, patent trials in the ITC and in WIPO arbitrations as well as infringement, nullity and opposition hearings in a host of European tribunals. Our lawyers are equally adept in the preparation and prosecution of strategically important patent and trademark applications, and copyright registrations. Because we are an integral part of a large general law practice , our IP Group lawyers frequently team up with lawyers in other elite practice groups to provide intellectual property advice on all IP subjects to our Fortune 500 and International clients in a variety of transactional and other matters - such as IP due diligence in corporate transactions (e.g., mergers and acquisitions), intellectual property counsel and participation in other contested matters such as complex bankruptcy proceedings, etc. Cadwalader's IP Group and Litigation Department lawyers also have extensive experience enforcing trademarks and trade dress rights in anti-counterfeiting and infringement actions in a variety of fields, including luxury goods, electronics, consumer goods, etc.
Cadwalader's IP practice is built around a large and growing number of nationally and internationally recognized intellectual property lawyers, including lawyers with Ph.D., bio-medical, engineering and other advanced scientific degrees, who are highly experienced in the intricacies of patent, trademark, trade secret and copyright law. Our IP litigators, and our IP Group as a whole, have been consistently recognized in leading peer-review ranking guides such as "Chambers and Partners", "Best Lawyers In America", "Legal 500", "Benchmark Litigation" and "Super Lawyers", and our IP Group Chair, Christopher Hughes, has been recognized as one of the Top-Ten Intellectual Property Lawyers in the United States by United States Lawyers Rankings.
The breadth of technology handled by Cadwalader's IP lawyers in patent and trade secret matters is virtually unbounded, extending from mechanical and electro-mechanical subject matters to computer hardware/software, business methods and financial services subject matters to cellular telephone and semiconductor technologies, to sophisticated medical devices, to chemical and pharmaceutical matters and complex biotechnology matters handled by our lawyers with Ph. D. degrees. Cadwalader's IP lawyers have helped clients obtain pioneer patent protection in new-era technology, such as the famous "Priceline" patent, which was successfully asserted in litigation.
The highly experienced and dedicated lawyers in Cadwalader's core IP Practice Group assist our clients maximize their investments in intellectual property and protect their market assets, whether that requires enforcing or defending IP claims in litigation and trials, or providing expert opinions, or evaluating and selling or licensing intellectual property, or obtaining comprehensive/strategic IP protection, or conducting due diligence. They have particularly extensive experience dealing with the complexities of handling IP rights in bankruptcy proceedings where there has been an acute demand for skilled IP lawyers capable of advising clients in the disposition of highly valuable IP rights in Bankruptcy. Of particular note are the intense proceedings involving the bankruptcies of Chrysler and of General Motors where our IP Group teamed up with Cadwalader's Bankruptcy, Corporate, Private Equity and other practice groups to represent the United States Treasury in achieving successful conclusions with unheard-of speed.
Cadwalader's Intellectual Property Group has handled every aspect of complex patent and trade secret disputes and trials before state courts, U.S. District Courts, the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission, and the Judicial Panel on Multidistrict Litigation, as well as numerous arbitration and mediation proceedings, particularly under the WIPO Rules. We have also engineered comprehensive programs for protecting and enforcing valuable and well-known trademark and trade-dress rights for many famous luxury goods, computer and consumer product companies, including anti-counterfeiting actions in the courts and through U.S. Customs actions.
Our ITC litigators have decades of experience trying patent infringement matters in the ITC including as Staff Counsel for the ITC itself. These complex cases require the experience our attorneys offer, from knowledge of the technology to the experience in the running of the day-to-day efforts in the multi-party, fast-track litigation. Our IP lawyers are also highly experienced in directing IP-related proceedings abroad. They routinely partner with local counsel in a large number of foreign countries to direct and coordinate protection and enforcement of our clients' important IP rights around the world (including trials seeking preliminary relief and/or cross-border injunctions), as well as nullity, cancellation and opposition proceedings in various courts, patent tribunals and patent offices throughout the world.
Our IP litigators are also experienced in the supervision, management and trial of large, complex civil patent cases-efficiently handling the burdens of enormous discovery in highly contentious litigations, and working closely with technical consultants, experts and in-house counsel to effectively and efficiently further the interests of our clients. We continually explore state of the art technologies to help us organize and manage discovery and trial materials, design exhibits and communicate with our clients. We have extensive experience in conducting Markman hearings and achieving successful results that are carried forward into winning summary judgment and other case-dispositive motions to significantly reduce or eliminate the issues remaining for trial. In several instances, our lawyers have achieved summary judgment of an entire case in our clients' favor, and on more than one occasion, have even obtained the affirmative grant of summary judgment of patent infringement in favor of our clients. While we have been particularly effective in utilizing carefully focused motion practice to reduce or eliminate costly discovery and trial issues and burdens, in those cases that have gone to trial, our lawyers have been successful in achieving highly favorable jury verdicts and judgments.
The IP team also has had in-depth experience evaluating the patentability of client inventions, as well as preparing and prosecuting patent applications to protect inventions that are highly valued or of strategic importance. Among the patents obtained by lawyers in our group is the famous "Priceline Patent" which helped launch one of the leading companies of the internet era, and which was asserted successfully in litigation. Other patents have similarly served to protect the core business segments for our clients. We have also routinely coordinated efforts to optimize corresponding patent protection throughout the world, carefully coordinating the corresponding activities abroad with those of the U.S. counterpart patents.
We have had similar success with trademark matters where we have produced significant results, working diligently to obtain protection for our clients' "house marks" and successfully guiding clients in avoiding potential infringement issues with others in their field, including by facilitating the acquisition of marks that would otherwise present obstacles or servicing co-existence agreements. We have even acted as agent to facilitate acquisition of significant marks. We also provide clients with assistance in worldwide trademark risk analysis, and the clearance and management of domestic and foreign trademark portfolios, trade dress, copyrights, and Internet domain names. We also manage domestic and foreign registration and enforcement programs and counsel clients on the rebranding of products and services; the clearance of advertising, promotional materials, packaging, and websites; and trademark and copyright licensures and audits.
Cadwalader IP lawyers have extensive experience negotiating and drafting copyright and trademark licenses for copyrightable content, names and likeness of individuals and fictional characters, etc., as well as agreements concerning distribution of copyrightable materials and content, web site operations, software development and licenses, and related services agreements. Working on and conducting diligence of product merchandising and personal endorsement agreements between manufacturers and retailers and athletes, actors, and television personalities in various media, including web-based content. Representative engagements include:
- Negotiating a copyright and trademark license between Six Flags Inc. and Tatweer (a member of Dubai Holding) for the building and operation of a Six Flags Dubailand theme park.
- Negotiating and drafting intellectual property and software/information technology licenses and representing clients in acquisitions, divestitures, audits, and securitizations of intellectual property portfolios and related agreements.
- Counseling domestic and multinational clients on all aspects of intellectual property matters, including worldwide risk analysis, clearance, prosecution, management, and enforcement of domestic and foreign and trademark portfolios, trade dress, copyrights, and Internet domain names.
- Enforcing intellectual property, from issuing cease-and-desist letters to negotiating settlement agreements to litigating intellectual property infringement and other issues before the Trademark Trial and Appeal Board and federal courts.
In the transactional area, we partner with the firm's other elite practice groups such as anti-trust, bankruptcy, corporate and capital markets (M&A and private equity) attorneys regarding the acquisition and divestiture of intellectual property portfolios and the securitization of revenue streams from intellectual property assets.
Many of our IP lawyers have also been serving in prestigious leadership positions with and remain active members of key bar associations, including the New York Intellectual Property Law Association "NYIPLA," the International Trade Commission Trial Lawyers Association "ITCTLA," the American Intellectual Property Law Association "AIPLA," the Licensing Executives Society "LES," Intellectual Property Owners "IPO," the Patent, Trademark & Copyright Law and Intellectual Property Sections of New York State Bar Association and American Bar Association.
A listing of cases which were successfully litigated by lawyers at Cadwalader include the following:
Counsel to Plaintiff - U.S. Federal District Court
- General Atomics v. TetraVue Inc. (Superior Court of California 2010): Representing General Atomics (GA) in a trade secret misappropriation suit against a former employee and his new company relating to GA's laser-based 3D imaging technology developed for use on PredatorTM and ReaperTM UAVs.
- Medinol, Ltd. v. Guidant Corp. and Advanced Cardiovascular Systems, Inc. (S.D.N.Y., 03 Civ. 2604 (SAS) (Patent Infringement)). Representing Medinol in patent infringement action involving several patents relating to cardiovascular stents; significant decisions include 2004 U.S. Dist. 19705 (S.D.N.Y. 9/30/04). Favorable Markman decision, 2005 U.S. Dist. LEXIS 35866 (S.D.N.Y. 2005). Defeating summary judgment of invalidity. 2006 U.S. Dist. LEXIS 5812 (S.D.N.Y. 2/10/06). Granted summary judgment of patent infringement.
- Heidelberger Druckmaschinen AG v. Corel Corp. (S.D.N.Y., 2003-05; settled favorably by creative use of Court mediation process). Represented Heidelberger in asserting patents covering digital color-image storage technology. (S.D.N.Y., 2003-05; settled favorably by creative use of Court mediation process).
- IBM Corp. v. Compuware (04-cv-000357 (CM)(LMS) (S.D.N.Y. 2004)). Represented plaintiff IBM in asserting several patents related to database management, distributed computing and data processing. (Settled)
- IBM Corp. v. Babcock & Wilcox, (Trademark Cancellation) Represented IBM in securing rights to Power PC mark; settled with full relief sought by IBM following heated motion practice. (PTO, unpublished)
- Robert Bosch GMBH v. Applied Materials, Inc., 1:02-cv-01523-JJF (D. Del. 2002). (Patent Infringement): Represented Bosch in action involving two patents covering complex silicon plasma etching technology. Negotiated favorable settlement after pursuing aggressive pre-trial schedule and motion practice.
- Roche Palo Alto LLC v. Ranbaxy Laboratories Limited and Ranbaxy Inc., Civil Action No. 06-2003 (FLW) (D.N.J. 2009) and Roche Palo Alto v. Ranbaxy Labs., No. 2010-1056, -1101 (2010) (Representing plaintiff Roche Palo Alto LLC in patent infringement action against defendants Ranbaxy Laboratories Limited and Ranbaxy Inc. pending on appeal to the Court of Appeals for the Federal Circuit.)
- Symbol Technologies, Inc. v. Bell Data Software Corp., 56 USPQ2d 1534 (E.D. Mich. 2000) (Summary Judgment of Invalidity). Represented Symbol in declaratory judgment action seeking invalidity of patent covering encoded identification cards. Succeeded in establishing subject matter jurisdiction to challenge patent validity, despite withdrawal of infringement charges by asserting novel theory based on Lanham Act violations. Grant of summary judgment of patent invalidity disposed of case favorably and avoided need for costly license by clients.
- Convolve Inc. v. Compaq Computer Corp., Civil Action No. 5141 (GBD)(JCF) (S.D.N.Y. 2000) Cadwalader represents plaintiffs Convolve, Inc. and Massachusetts Institute of Technology against Compaq Computer Corp. and Seagate Technology LLC. The case involves technology related to disk drive vibration control and input shaping and includes claims of patent infringement, trade secret misappropriation, breach of contract and other torts.
- Priceline.com, Inc. v. Expedia, Inc., et al. (Patent infringement) Represented Priceline.com in asserting the famous "Priceline Patent" against Expedia. Case settled on favorable terms to client (D. Conn. 1999-2000).
- Hoffmann-La Roche Inc. v. Genpharm, Inc., 2000 U.S. Dist. LEXIS 8128, 2000 U.S. Dist. LEXIS 8124 (D.N.J. 2000) and 50 F. Supp. 2d 367 (D.N.J. 1999). Represented plaintiff Hoffmann-La Roche Inc. ("Roche") in case involving alleged infringement of Roche's patents directed to a process of manufacturing ticlopidine hydrochloride and successfully dismissing defendant Genpharm's counterclaims.
- Lucent Technologies Inc. v. Micron Technology, Inc., Civil Action No. 99-403 (GMS) (D. Del. 1999). (Patent Infringement and Breach of Patent License) Represented Lucent in the District of Delaware in asserting several of Lucent's semiconductor device and fabrication technology patents as well as a breach of license/contract claim. Also represented Lucent in declaratory judgment action of invalidity and non-infringement of several Micron patents covering complex telecommunication technology. The team was successful in achieving a rare transfer of Micron's countersuit from Eastern District of Virginia to Delaware. The case settled favorably. (Settled).
- Stryker Corp. and Osteonics Corp. v. Intermedics Orthopedics, Inc. and Marli Medical Supplies, Inc., 891 F. Supp. 751 (E.D.N.Y. 1995) (Patent infringement). For orthopedic hip replacement patent, award of $72 million in damages after trial, based on novel lost profits theory, plus increased damages and attorneys' fees, after willful infringement was established. Affirmed. 96 F.3d 1409 (Fed. Cir. 1996).
- The Procter & Gamble Company v. Paragon Trade Brands, Inc., 989 F. Supp. 547 (D. Del. 1997). Represented plaintiff The Procter & Gamble Company ("P&G") in bench trial resulting in $178 million awarded to P&G for infringement of P&G's patents directed to barrier leg cuffs for diapers.
- Symbol Technologies, Inc. v. PSC, Inc., (Patent License): Represented Symbol Technologies in breach of patent license. (S.D.N.Y., unpublished, settled)
- Mobil Oil Corporation v. Amoco Chemicals Corporation, 915 F. Supp. 1333 (D. Del. 1995). Represented plaintiff Mobil Oil Corporation ("Mobil") in bench trial involving damages resulting in $120 million including interest awarded to Mobil for infringement of Mobil's patents directed to ZSM-5 catalysts and processes for conversion of hydrocarbons.
- Stryker Corp. and Osteonics Corp. v. Zimmer, Inc., 741 F. Supp. 509 (D.N.J. 1990) (Patent Infringement). Represented plaintiffs asserting patent for orthopedic hip replacement and defending charge of patent infringement asserted by way of counterclaim; summary judgment dismissing defendants' counterclaim patent for laches and estoppel. Case then settled for $22 million payment to plaintiffs.
- Mobil Oil Corporation v. Amoco Chemicals Corporation, 779 F. Supp. 1429 (D. Del. 1991). Represented plaintiff Mobil Oil Corporation ("Mobil") in bench trial resulting in judgment of infringement of Mobil's patents directed to ZSM-5 catalysts and processes for conversion of hydrocarbons.
- Procter & Gamble Co. v. Nabisco, Keebler & Frito Lay (Patent/Trade Secret) (1984-1989). Represented P&G in highly complex patent and trade secret/industrial espionage case involving food chemistry. Settled on eve of trial for payment to P&G of $125 million, which, at the time, represented the largest settlement in a patent case. Interlocutory published decisions: 604 F. Supp. 1485 (D. Del. 1985); 109 F.R.D. 673 (D. Del. 1986); 711 F. Supp. 759 (D. Del. 1988); 111 F.R.D. 326 (D. Del. 1986); 697 F. Supp. 1360 (D. Del. 1988); and 125 F.R.D. 405 (D. Del. 1987).
- Slater Electric, Inc. v. Thyssen-Bornemisza, Inc., 650 F. Supp. 444 (S.D.N.Y. 1986) (Patent Infringement). Represented plaintiff-patentee on patent covering electrical outlet boxes. Prevailed on rarely issued affirmative grant of summary judgment of patent infringement.
- Agere v. Multiplex Represented Agere in trade secrets case related to semiconductor lasers and avalanche photo diodes against company founded by a former employee. Aggressive discovery and cooperation with federal law enforcement helped drive an early settlement.
- Lucent v. Newbridge Represented Lucent in a jury trial related to data networking resulting in willful infringement findings. Settled prior to appeal.
- Agere v. Intersil Represented Agere in this patent infringement action in which Agere asserted multiple patents related to wireless LAN technology. Intersil counterclaimed alleging infringement of wireless LAN patents of its own as well as semiconductor manufacturing patents. The case settled favorably.
- Merck Frosst Canada & Co. v. Teva Pharmaceuticals USA, Inc., Civil Action No. 3:12-cv-00210-FLW-LHG (D.N.J., filed Jan. 11, 2012)(lead counsel for Merck in Hatch-Waxman suit involving Merck's Singulair® product).
- Merck Frosst Canada & Co. v. Mylan Pharmaceuticals Inc., Civil Action No. 3:11-cv-07569-FLW-LHG (D.N.J., filed Dec. 29, 2011)(lead counsel for Merck in Hatch-Waxman suit involving Merck's Singulair® product).
- Schering Corporation v. Sandoz Inc., (D.N.J. filed May 4, 2011)(lead counsel for Schering in Hatch-Waxman suit involving Schering's Noxafil® product).
- Merck & Co., Inc. and Merck Sharp & Dohme Corp. v. Hetero Drugs Ltd., Unit III and Hetero USA Inc., (D.N.J. filed Nov. 19, 2010) (lead counsel for Merck in Hatch Waxman suit concerning Merck's Propecia® product, where favorable settlement and dismissal of the case was achieved in March 2011).
- Merck & Co., Inc. and Merck Sharp & Dohme Corp. v. Hetero Drugs Ltd., Unit III and Invagen Pharmaceuticals, Inc., Civil Action No. CV 10-5370 (JS) (WDW) (E.D.N.Y. filed Nov. 19, 2010) (lead counsel for Merck in Hatch-Waxman suit concerning Merck's Propecia® product, where favorable settlement and dismissal of the case was achieved in March 2011).
- Hoffmann-La Roche Inc. v. Apotex Corp. and Apotex Inc., Civil Action No. 09-647-PGS-ES (D.N.J. 2009) (Represented plaintiff Hoffmann-La Roche Inc. ("Roche") in filing Motion for an Order to Show Cause for a preliminary injunction in response to Paragraph IV Certifications filed by defendants Apotex Corp. and Apotex Inc. (collectively "Apotex") to enjoin Apotex from entering the market with its generic drug products prior to the expiration of Roche's patent-in-suit. Following a hearing before Judge Sheridan, who granted an expedited preliminary injunction hearing, the case was voluntarily dismissed in view of the parties' agreement by Stipulation and Order to adjourn the preliminary injunction hearing indefinitely based on Apotex's representation that it would not commercially launch prior to the expiration of Roche's patent-in-suit.)
- Cadwalader IP attorneys have handled confidential arbitration trials for patent infringements under the rules of the World Intellectual Property Organization (WIPO). These arbitrations included litigation and trial of both US and European patents.
Counsel for Defendant - U.S. Federal District Court
- ParkerVision, Inc. v. Qualcomm Incorporated, 3:11-cv-719-J-37-JBT, (M.D. Fla.) - defending Qualcomm against charges of infringement in six patents related to RF cellular technology.
- Adaptix, Inc. v. AT&T , Inc. et al., 6: 12-cv-00125-LED (E.D.TEX.) defending AT&T Mobility in a patent infringement action filed by Adaptix, Inc., concerning 4G wireless technology and various IEEE and like industry standards.
- Ganas LLC v. IBM, et al., (E.D. Tx.; 2:10-cv-320) - defended IBM in multi-defendant patent infringement suit in E.D. Texas for patents dealing with various aspects of operating systems; case settled.
- Digital Development Corp. v. IBM Corp., (03cv2909(JGK) S.D.N.Y.) (Patent Infringement) - defending IBM against patent infringement claims relating to Virus Detection patents.
- C.R. Bard v. AngioDynamics, 2:12-cv-00035-TS-EFJ (D. Utah, 2012) - defending AngioDynamics against charges of infringing three (3) Bard patents.
- Development Innovation Group, LLC v. AT&T Mobility, et al., 3:11-cv-02150-DMS-DLS (S.D.Cal.) - defended AT&T Mobility against charges of infringing three patents related to device synchronization, voice commands and power conservation.
- CYBERsitter, LLC (d/b/a Solid Oak Software) v. The People's Republic of China, et al., CV10-0038 JST (SH) (C.D. Cal.) - defending co-defendant Zhengzhou Jinhui Computer system Engineering, Ltd. in copyright infringement and trade secret action.
- Catheter Flushing, LLC v. Angiodynamics, et al., defending Angiodynamics in patent infringement suit on patent relating to catheter devices (D. Utah; 2:10-cv-00963)
- ASUSTek Computer, Inc., ASUS Computer International v. International Business Machines Corporation, Civil Action No. C08-CV-1168-MMC (N.D. Cal.). Represented IBM as declaratory judgment defendant and counterclaim plaintiff patentee. Case settled on favorable terms.
- Man Roland Inc. v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Civil Action No. C-03-513-SM (D.N.H. 2007). Represented counterclaim-defendant Heidelberger Druckmaschinen AG in successfully dismissing eleven counterclaims for alleged antitrust allegations. See 2006 U.S. Dist. LEXIS 27923; 2006 U.S. Dist. LEXIS 25769; 2006 U.S. Dist. LEXIS 36386; and 2007 U.S. Dist. LEXIS 18112.
- Broadcom Corp. v. Qualcomm, Inc., Civil Case No. SACV05-0467-JVS (C.D. Cal. 2005) (Patent). Substituted as counsel of record on the eve of the trial to defend Qualcomm against allegations of infringement by its 3rd Generation baseband processors and proprietary network software. Broadcom alleged that these products infringed telecommunications patents related to video encoding and network switching technologies. The case settled on favorable terms.
- Medtronic Vascular, Inc. v. Boston Scientific Corp., Scimed Life Systems, Inc. Boston Scientific Scimed, Inc. and Medinol, Ltd., District of Delaware, Civil Action No. 98-478-SLR (Patent). Defending Medinol against charges of infringement of several patents relating to cardiovascular stents. Obtained summary judgment of no direct infringement and no contributory infringement. Medtronic, 348 F. Supp. 2d 316 (D. Del. 2004); received favorable Markman ruling and grant of summary judgment of no infringement, including no active inducement of infringement. Medtronic, Civ. No. 98-478-SLR, 2005 U.S. Dis. LEXIS 822 (D. Del. 2005) (Markman); Medtronic, Civ. No. 98-478-SLR, 2005 U.S. Dist. LEXIS 1157 (D. Del. 2005) (no infringement). (D. Del., 2004-2005).
- Hakim v. Cannon Avent Group, PLC, 2005 U.S. Dist. LEXIS 16827 and 2005 U.S. Dist. LEXIS 16833 (W.D. La. 2005). Represented defendant Cannon Avent Group, PLC ("Avent") in decisive victory granting summary judgment that Avent's accused non-spill cup products do not infringe one of the asserted patents and that the second patent is invalid over the prior art.
- SCO v. IBM, 03-cv-0294 (DAK) (D. Utah 2003). Represented defendant IBM in patent counterclaim involving three patents related to high availability and encoding.
- Compuware v. IBM, 02-cv-70906 (E.D. Mich. 2002). Represented defendant IBM against claims of trade secret theft, copyright infringement and antitrust violations and in asserting counterclaims of infringement of six patents related to graphical user interfaces, error detection and system monitoring.
- Yamaha et al. v. Bombardier et al., 2001 U.S. Dist. LEXIS 24568 (C.D. Cal. 2001). Represented defendants Bombardier Inc., Bombardier Corporation and Bombardier Motor Corporation in action brought by plaintiffs Yamaha Motor Co. and Sanshin Industries Co., Inc. involving allegations of infringement of 33 patents directed to personal watercraft. The case was settled as part of settlement of companion ITC proceeding.
- TM Patents, L.P. v. IBM Corp., 97 Civ. 1529 (CM) (S.D.N.Y. 1997) (Patent Infringement). Represented IBM against allegations of infringement of four complex computer patents in the area of data storage, memory control and parallel processing data routing. In a case of first impression, the Court ruled that a patentee is collaterally estopped from challenging claim construction rulings obtained in a prior action that was settled before appeal. 72 F. Supp. 2d 370 (S.D.N.Y. 1999) (includes favorable Markman rulings). Our lawyers succeeded in obtaining a ruling that the patent holder lost his rights to the parallel processing data router patent for which he had received government funding when he failed to comply with the government-grant license requirements, resulting in the Government acquiring title. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). IBM won summary judgment dismissing some of the patents following Markman ruling. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). The case settled on the eve of trial on terms highly favorable for the client.
- Marketel Int'l v. Priceline.com, et al., C-99-0161 (N.D. Cal. 1999) (Trade Secret and Patent Inventorship/Ownership Dispute). Represented Priceline.com against charges of trade secret misappropriation and a patent inventorship dispute including demands for ownership of the famous "Priceline Patent." Summary judgment granted in favor of Priceline.com dismissing all counts. 2001 U.S. Dist. LEXIS 10495 (N.D. Cal. 1/23/01).
- Data General v. IBM Corp. (Patent Infringement - three actions). Represented IBM against charge of infringing a dozen complex computer patents, including patent infringement counterclaim for infringement of seven IBM patents in various aspects of computer technology. Favorable Markman decision at 93 F. Supp. 2d 89 (D. Mass. 2000) encouraged successful resolution by way of favorable settlement.
- Pope & Talbot, Inc. v. The Procter & Gamble Company, W.D. Wash., Civil Action No. C97-203 (OD) and D. Del., Civil Action No. 98-CV-504 (RRM) (1998) (Represented defendant/counterclaim plaintiff The Procter & Gamble Company ("P&G") in declaratory judgment action settled by the parties involving P&G's patents directed to barrier leg cuffs for diapers).
- Union Oil Company of California v. Atlantic Richfield Company, 34 F. Supp. 1208 (C.D. Cal. 1998). Represented defendants Atlantic Richfield Company, Chevron U.S.A., Inc., Exxon Corporation, Mobil Oil Corporation, Shell Oil Products Company and Texaco Refining and Marketing, Inc. in bench trial involving alleged inequitable conduct during prosecution of plaintiff Union Oil Company of California's patent directed to unleaded automotive gasoline.
- Union Oil Company of California v. Atlantic Richfield Company, 1998 U.S. Dist. LEXIS 22847 (C.D. Cal. March 10, 1998). Represented defendants Atlantic Richfield Company, Chevron U.S.A., Inc., Exxon Corporation, Mobil Oil Corporation, Shell Oil Products Company and Texaco Refining and Marketing, Inc. in jury trial involving alleged infringement of plaintiff Union Oil Company of California's patent directed to unleaded automotive gasoline.
- Square D. v. Slater Electric, Inc. (Patent/Trademark/Unfair Competition). Invalidated all six patents-in-suit at jury trial, judgment dismissing trademark and unfair competition claims. Court granted partial aware of attorneys' fees for establishing four of six patents procured by inequitable conduct. 223 USPQ 804 (E.D.N.Y. 1983).
- Hybrid Patents LLP v. Charter Communications, Part of a team called in less than a year before trial to defend a group of cable providers against this patent infringement suit. The asserted patents related to cable modems filed by a non-practicing entity and trial ultimately resulted in a jury verdict of non-infringement for all defendants after less than 45 minutes of jury deliberation.
- Foundry Networks v. Lucent,Represented Lucent in defending a patent infringement litigation related to Voice-over-IP (VoIP) technology, in which Lucent also counterclaimed for infringement of a data networking patent. The case settled favorably before trial.
- MLMC v. Verizon, et al., Represented defendants in this patent infringement action related to cellular telephony on behalf of base-station supplier Lucent technologies, the only supplier not to settle before trial. Jury trail resulted in verdict of non-infringement after 20 minutes of deliberation.
Representative Proceedings in The International Trade Commission
- In The Matter of Certain Computer Products, Computer Components and Products Containing Same, No. 337-TA-628 (U.S.I.T.C. 2008). Represented complainant IBM in patent infringement proceeding against respondents ASUSTek Computer, Inc. and ASUS Computer International. Case was on appeal to the Federal Circuit (2009-1561) and settled on favorable terms with all activity concluded in first quarter 2010.
- In the Matter of Certain Products and Pharmaceutical Compositions Containing Recombinant Human Erythropoietin, Inv. No. 337-TA-568, Fed. Reg. Vol. 71, No. 172 (U.S.I.T.C. September 6, 2006 to present) (Representing respondents Roche Holding Ltd., F. Hoffmann-La Roche Ltd., Roche Diagnostics GmbH, and Hoffmann-La Roche Inc. (collectively "Roche") in initially dismissing on summary determination a patent infringement proceeding commenced by complainant Amgen, Inc. The case was recently remanded to the ITC after rehearing en banc by the Federal Circuit. 565 F.3d 846 (Fed. Cir. 2009). Currently representing Roche in reaching a global settlement and dismissal of the 568 investigation and a parallel action in the U.S. District Court for the District of Massachusetts, Case No. 05-12237-WGY.)
- In the Matter of Short-Wavelength Light Emitting Diodes, Laser Diodes, and Products Containing Same, Inv. No. 337-TA-640 (U.S.I.T.C. 2008-09) (Represented respondent Sony Ericsson, Inc. in favorable settlement of pending litigation.)
- In the Matter of Certain Personal Watercraft and Components Thereof (U.S.I.T.C. Inv. No. 337-TA-452 (2002)). Represented respondent Bombardier Inc. in proceeding before International Trade Commission brought by complainants Yamaha Motor Co. and Sanshin Industries alleging infringement of 11 patents directed to personal watercraft. Obtained dismissal of six of the patents before trial through successful motions for summary determination of noninfringement, invalidity or lack of jurisdiction (no domestic industry). The matter was settled after trial on the remaining five patents. Published decisions: 2001 ITC LEXIS 865 (August 14, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination With Respect To U.S. Patent No. 5,390,621); 2001 ITC LEXIS 867 (August 20, 2001) (Initial Determination Granting In Part Respondents' Motion For Summary Determination Of Noninfringement And Invalidity Of Claim 1 Of U.S. Patent No. 4,813,898); 2002 ITC LEXIS 586 (September 4, 2001) (Initial Determination Granting In Part Respondents' Motion For Summary Determination Of No Domestic Industry Of Claims 1-22 Of The 5,699,749 Patent); 2001 ITC LEXIS 974 (November 15, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination That Asserted Claim 24 Of U.S. Patent No. 4,811,560 Is Invalid For Violation Of 35 U.S.C. § 102(b)); 2001 ITC LEXIS 973 (November 16, 2001) (Initial Determination Granting Respondents' Motion For Summary Determination That Asserted Claim 9 Of U.S. Patent No. 5,550,337 Is Invalid For Violation Of 25 U.S.C. § 102(b)).
Representative Proceedings in the Federal District Court of Appeals
- Move, Inc. v. Real Estate Alliance Ltd., 2010-1236 (2010) (Retained by Appellant Real Estate Alliance Ltd. in appeal of Markman/claim construction rulings by district court; ongoing.)
- Amgen Inc. v. International Trade Commission, 565 F.3d 846 (Fed. Cir. 2009). Represented intervenors Roche Holding Ltd., F. Hoffmann-La Roche Ltd., Roche Diagnostics GmbH and Hoffmann-La Roche Inc. in petition for rehearing en banc granted in part by the Court of Appeals for the Federal Circuit.
- Medtronic Vascular, Inc. v. Medinol, Ltd. et al., summary judgment of no-infringement in favor of client - Medinol - affirmed by Federal Circuit; 182 Fed. Appx. 994, 2006 WL 1478513 (Fed. Circ. 2006).
- Marketel Int'l v. Priceline.com, et al., dismissal of all claims (trade secret) and patent inventorship/ownership against client - Priceline.com - affirmed by Federal Circuit; 36 Fed. Appx. 423, 2002 U.S. App. LEXIS 7843 (Fed. Cir. 2002).
- Hoffmann-La Roche Inc. v. Invamed Inc., 213 F.3d 1359 (Fed. Cir. 2000). Represented appellee Hoffmann-La Roche Inc. ("Roche") in appeal affirming order that Roche's claim of infringement was not unreasonable.
- Union Oil Company of California v. Atlantic Richfield Company, 208 F.3d 989 (Fed. Cir. 2000). Represented appellants Atlantic Richfield Company, Chevron U.S.A. Inc., Exxon Corporation, Mobil Oil Corporation, Shell Oil Products Company and Texaco Refining and Marketing Inc. in appeal involving alleged infringement of Union Oil Company of California's patent directed to unleaded automotive gasoline.
- Mobil Oil Corporation v. Amoco Chemicals Corporation, 980 F.2d 742 (Fed. Cir. 1992). Represented appellee Mobil Oil Corporation ("Mobil") in appeal affirming judgment of infringement of Mobil's patent directed to ZSM-5 catalysts and processes for conversion of hydrocarbons.
- Paul Banks v. General Atomics et al. Case No. 37-2009-00084081-CU-BC-CTL (Superior Court of California, County of San Diego) (Represent General Atomics as a cross-claimant alleging, inter alia, trade secret misappropriation by a former employee and his new company dealing with laser-based three dimensional imaging systems. We secured a temporary restraining order against the cross defendants and the preliminary injunction hearing and trial are scheduled for later this year.)
- In The Matter of Opposition by Bakul Pharma Pvt. Ltd., Mumbia-400018, Maharashtra, India (2009) (Serving as co-counsel for F. Hoffmann-La Roche AG ("Roche") in patent opposition proceeding in India brought by Bakul Pharma Pvt. Ltd. with respect to Roche Patent No. 207232 (959/MAS/1995)).
- Notice of Allegation Pursuant to the Patented Medicines (Notice of Compliance) Regulations with Respect to Canadian Letters Patent No. 1,333,285 (2009) (Serving as co-counsel for Hoffmann-La Roche Limited ("Roche") in Notice of Compliance proceeding in Canada brought by Apotex Inc. with respect to Roche's Canadian Patent.)
- UST - Chrysler. Retained by the United States Treasury in connection with Chrysler's Chapter 11 bankruptcy proceeding and related transactions such as merger agreements, sale agreements, and loan agreements. The effort includes conducting IP due diligence and overseeing relevant filings of IP releases, assignments, name changes, and security interests in the United States and abroad, which is continuing. In re: Old Carco LLC (f/k/a/ Chrysler LLC), 09-50002 (Bankr. S.D.N.Y.)
- UST - GM. Retained by the United States Treasury in connection GM's Chapter 11 bankruptcy proceeding and related loan agreements. The firm advised extensively on IP aspects of the bankruptcy, and is continuing to oversee relevant IP filings in the United States and abroad. In re Motors Liquidation Company, et a., f/k/a/ General Motors Corp., et a., 09-50026 (Bankr. S.D.N.Y.)
- Lyondell. The firm's attorneys advised Lyondell Chemical on all IP issues relating to loan and security agreements and IP matters raised by the Unsecured Creditors Committee in connection with one of the most complex Chapter 11 bankruptcy proceedings. Lyondell bankruptcy concluded in mid-2010. In re: Lyondell Chemical Company, 09-10023 (Bankr. S.D.N.Y.)
- Xerium. The firm also assisted Xerium Technologies, Inc. in connection with IP matters concerning Xerium's Chapter 11 bankruptcy proceeding, related loan agreements, and Post-Closing IP matters in 2010. In re Xerium Technologies, Inc., et al., 10-11031 (Bankr. Del.)
- Cadwalader IP attorneys are also directing several patent litigations on behalf of Medinol Ltd, a medical device innovator and manufacturer, against companies such as Abbott Vascular (and affiliates), Boston Scientific and Cordis in Germany, Ireland, Italy, Netherlands and United Kingdom. They are similarly directing numerous oppositions, nullity and invalidity proceedings in various European courts and in the EPO. The following are representative:
- Medinol, Ltd. v. Abbott Ireland, Abbott Vascular International BVBA, Abbott Cardiovascular Systems Inc., Abbott Vascular Devices Holland, B.V. and Abbott Laboratories, Inc., The Irish High Court Commercial Record No.: 10436P Commercial Court No.: 24 COM (Serving as co-counsel for Medinol, Ltd. patent infringement litigation in Ireland; trial set for January 2011.)
- Abbott Laboratories Limited v. Medinol, Ltd., The High Court of Justice - Chancery Division / Patents Court HC 09 C 01401 (Abbott is Claimant / Part 20 Defendant and Medinol is Defendant / Part 20 Claimant) (serving as co-counsel for Medinol in a nullity and infringement action in the United Kingdom; trial set for October 2010.)
- Medinol, Ltd. v. Abbott B.V., Abbott Vascular Devices Holland, B.V. and Abbott Logistics B.V. District Court of The Hague, Case / Docket Nos. 329760 / HA ZA 09-418 (serving as co-counsel for Medinol in the appeal of a patent infringement decision of the District Court.)
- Medinol Ltd. v. Abbott Vascular Instruments Deutschland GmbH, Herrn Daniel Pittoors, Abbott Vascular Deutschland GmbH and Abbott GmbH & Co. KG, Court of the First Instance, case no. 4a O 281/08 (Düsseldorf), Oberlandesgericht Düsseldorf Court of Appeals, case no. I-2 U 59/10 (Serving as co-counsel for Medinol, currently defending Abbott's appeal of a determination of patent infringement of DE Patent No. 195 49 477 B4.)
- Medinol Ltd. v. Abbott Vascular Instruments Deutschland GmbH, Herrn Daniel Pittoors, Abbott Vascular Deutschland GmbH and Abbott GmbH & Co. KG, Court of the First Instance, case no. 4a O 20/09 (Düsseldorf), Oberlandesgericht Düsseldorf Court of Appeals, case no. I-2 U 60/10 (Serving as co-counsel for Medinol, currently defending Abbott's appeal of a determination of patent infringement of DE Patent No. 195 49 520 B4.)
- Abbott GmbH & Co. KG and Abbott Vascular Instruments Deutschland GmbH v. Medinol, Ltd. (Serving as co-counsel for Medinol in German Nullity Proceeding brought by Abbott with respect to Medinol German Patent No. 195 49 520 C9 in the German Federal Patent Court (4 Ni 43/09))
- Abbott GmbH & Co. KG and Abbott Vascular Instruments Deutschland GmbH v. Medinol, Ltd. (Serving as co-counsel for Medinol in German Nullity Proceeding brought by Abbott with respect to Medinol German Patent No. 195 49 477 B4 in the German Federal Patent Court (4 Ni 42/09))
- In The Matter of Opposition by Cordis Medizinische Apparate GmbH, Boston Scientific Medizinische GmbH. (Serving as co-counsel for Medinol in the appeal of patent opposition decision in the EPO with respect to Medinol Patent No. 0 846 449 B1 for a Flexible Expandable Stent (Appeal No.: T 1967/08-3202))
- In The Matter of Opposition by Dr. Edward w. Tomlinson (Serving as co-counsel for Medinol in the appeal of patent opposition decision in the EPO with respect to Medinol EP Patent No. 1 181 902 B2 for a Flexible Expandable Stent (Appeal No.: T 0842/08-3202))
- In The Matter of Opposition by Boston Scientific, Ltd. (Serving as co-counsel for Medinol in the patent opposition proceeding in the EPO with respect to Medinol EP Patent No. 0 916 317 B1 for a Multilayered Metal Stent.)
Counsel for Amicus Curiae before the U.S. Supreme Court and the Federal Circuit Court of Appeals
- eBay v. MercExhange, LLC (January 2006). Filed amicus brief in the U.S. Supreme Court as lead counsel on behalf of IBM 126. S. Ct. 733 (2005). See, Supreme Court decision 126 S. Ct. 1837 (2006).
- Lab Corporation of America v. Metabolite Labs, Inc. (December 2005). Filed amicus brief in the U.S. Supreme Court as lead counsel on behalf of IBM. 126 S. Ct. 543 (2005). See, Supreme Court decision 548 U.S. __ (2006).
- Eli Lilly & Co. v. Barr Labs., 251 F.3d 955 (Fed. Cir. 2001) (Briefing for amicus curiae Federal Circuit Bar Association).
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (2001). Lead counsel on Amicus brief filed in U.S. Supreme Court on behalf of IBM, Kodak, Ford, DuPont, Agere Systems and the Financial Services Roundtable. 533 U.S. 915 (2001).
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (December 1999). Lead counsel on Brief for Amici IBM, Eastman Kodak and Ford Motor Co. in connection with en banc rehearing. Decision tracks position proposed in our Amicus brief which was specifically cited with approval in majority opinion. 234 F. 3d 558, 575 (Fed. Cir. 2000).
- UMC Electronics Co. v. United States (Oct. 1987). Co-authored Amicus brief on behalf of American Intellectual Property Law Association (AIPLA) in support of Petition for Writ of Certiorari. (Petition granted). 484 U.S. 1025.