Patent Litigation

Overview

Combining extensive courtroom experience with technical depth, the Patent Litigation Group at Robins Kaplan LLP has earned national recognition and international ranking. Our victories include multiple nine-figure verdicts, the defeat of complex, significant infringement claims, as well as smaller, tactical-strike matters on both sides of the courtroom.

Representing both patent holders and accused infringers, our trial-born knowledge of patent infringement and patent litigation covers virtually every kind of technology, including software, semiconductors, computer equipment, generic pharmaceuticals, biotechnology, medical devices, telecommunications, and industrial machinery.

Additionally, many of our patent litigation attorneys hold advanced technical and scientific degrees and are registered to practice before the U.S. Patent and Trademark office. Our multi-industry experience—augmented by our team of Ph.D. scientists—means we see both the patterns that drive patent-infringement litigation as well as the legal intricacies specific to each unique technology. It also enables us to offer guidance on developing and executing strategies to monetize intellectual property and drive innovative solutions for IP protection.

For corporate counsel concerned with predictability, transparency, and clear communication, we use legal project management tools, and our in-house Ediscovery practice group manages budgets and provides access to the information needed for business decisions. These tools help our patent litigation lawyers pinpoint and deflect obstacles early in the process and structure and negotiate results that best meet client business interests.

Pinpoint IP^®: Our Proprietary Approach to Patent Analytics

Part of Acumen Powered by Robins Kaplan LLP^®

Using our proprietary approach to patent analytics, Pinpoint IP, our intellectual property litigation attorneys, Ph.D. science and engineering advisors, and financial and economic consultants leverage their know-how – earned litigating big IP cases on both sides of the courtroom – to help innovators and investors evaluate IP, identify hidden value, and better maintain, defend, or monetize technology and innovation assets.

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Experience

Our patent litigation lawyers try patent infringement cases, argue Federal Circuit appeals, structure and negotiate business resolutions of patent infringement disputes, and counsel clients on patent and other IP protections matters. Our patent litigation experience also includes:

Selected Case Results*

Oleksy v. Global diversified technology and financial services company: Represented GE in a patent infringement case venued in the Northern District of Illinois involving a method of manufacturing steam turbine blades. Robins Kaplan took over the case after six years of prior litigation, bringing it to conclusion when the court granted summary judgment of non-infringement in favor of GE. The judgment was affirmed on appeal.
Rembrandt Vision Techs. v. Johnson & Johnson Vision Care: Represented plaintiff through trial and appeal in patent-infringement case involving silicone-hydrogel contact lens technology.
PCT International, Inc. v. Holland Electronics, LLC (D. Ariz. No. 12-cv-01797): Represented telecommunications equipment supplier PCT in patent infringement case against competitor Holland Electronics, a division of Amphenol Corporation. Following a four-week trial in the District of Arizona, the jury found that 60 separate Holland products infringed PCT’s patent and rejected Holland’s challenges to validity of the patent. The District Court upheld the jury’s verdict and award of damages, and issued a permanent injunction prohibiting sales of Holland’s infringing products. Obtained summary affirmance by the Federal Circuit rejecting all of infringer’s claims on appeal.
Medtronic Inc. v. Boston Scientific Corp. et al.:Achieved complete victory for Medtronic, Inc. in a dispute that Medtronic’s cardiac resynchronization devices infringed certain claims of U.S. Patent Nos. RE38,119 and RE39,897. After a bench trial, a Delaware district court held that Mirowski Family Ventures, as the patentee, bore the burden of proving infringement and failed to meet that burden, entering a judgment of non-infringement on behalf of Medtronic. On appeal, the Federal Circuit reversed the district court on the burden of proof issue and held that Medtronic, as the licensee, bore the burden of proving non-infringement. Medtronic filed a petition for certiorari to the U.S. Supreme Court. The Supreme Court granted the petition and reversed the Federal Circuit, holding that the patentee always bears the burden of proof, even where the licensor cannot counterclaim for infringement because of the existence of a license agreement. On remand from the Supreme Court, the Federal Circuit affirmed the district court’s finding of non-infringement for Medtronic, awarding Medtronic a complete victory in the case.
Promega Corporation v. Applied Biosystems, LLC, Life Technologies Corporation, and California Institute of Technology: Obtained complete victory for our client, Promega Corporation, against allegations of infringement of U.S. Patent No. RE43,096., Decision summarily affirmed by the Federal Circuit, six days after oral argument.

In re Certain GPS Navigation Products, Components Thereof, and Related Software: Represented Honeywell Inc. in the enforcement of a series of patents related to GPS and navigational systems for use in the recreational marine industry. Filed suit in 2009 in District Court; while the patents were waiting re- examination, initiated proceedings before the International Trade Commission against one named defendant, Furuno Electric Co., related to additional acts of infringement of additional patents. Negotiated a successful resolution of that matter, along with resolution of that portion of the original District Court action related to that defendant.

Efficient Drivetrains, Inc. v. Toyota Motor Corp.: Successfully resolved dispute for Efficient Drivetrains, Inc. against Toyota Motor Corp. regarding a portfolio of fuel-efficient technology patents for hybrid and plug-in hybrid vehicles.

Convolve, Inc. v. Dell, Inc., Hitachi Global Storage Tech., Inc., Hitachi Ltd., and Western Digital Corp.: Willful infringement of patent relating to hard disk drive technology in Marshall, Texas for our client, Convolve, Inc.

Personal Audio LLC v. Apple Inc.: A patent infringement case in which a Texas federal jury awarded our client, Personal Audio LLC, $8 million in damages after finding that Apple's iPods infringed our client's patent for an audio player that can download or receive navigable playlists. The verdict was announced on July 8, 2011. The court also awarded prejudgment interest in the amount of $4,182,331 for a total judgment of $12,182,331.

Advanced Micro Devices v. Samsung: Brought to resolution patent litigation for Advanced Micro Devices (AMD) against Samsung in the Northern District of California. The case involved allegations that Samsung's DRAM, SRAM and NAND memory products, its system logic products, and its consumer products infringed seven AMD patents covering technologies in memory architecture, processor micro-architecture, MOS-transistor fabrication and design, and user interface design for consumer products. Samsung asserted six patents against AMD's x86 processors and graphics processing units (GPUs) covering technologies in processor micro-architecture design, and semiconductor fabrication and process control. After three years of litigation and two mediations the parties resolved the matter at the close of expert discovery and dispositive motion briefing, shortly before trial. Reputed to be the 4th largest patent case settlement and/or verdict from Jan. 2010-June 2011.

Silicon Graphics, Inc. v. Advanced Micro Devices: Represented Advanced Micro Devices (AMD) in patent litigation against Silicon Graphics, Inc. (SGI) on three patents drawn to graphics processing. The case resolved shortly before trial, after 37 motions-in-limine were filed by AMD.

Digital Sun v. The Toro Company: Obtained dismissal and successful resolution of antitrust, California unfair business practices, and common law fraud claims against The Toro Company. The complaint involved smart sprinkler technology, and arose out of Toro's consideration of a potential business relationship, including licensing.

Imation Corp. v. Koninklijke Philips Elec. N.V., et al., 586 F.3d 980 (Fed. Cir. 2009): Convinced the appellate court to reverse the entry of judgment on the pleadings dismissing two of Imation's key counts, and instead to order judgment for Imation on the question of whether certain entities formed or acquired later qualify as "subsidiaries" that could benefit from Imation's patent license with Philips.

In the Matter of Certain Flash Memory Controllers, ITC Inv. No. 337-TA-619: Successful defense of Imation Corporation against patent infringement claims related to flash memory technology owned by SanDisk Corporation.

WNS Holdings LLC et al. v. Northwest Airlines Inc.: Defended Northwest Airlines, Inc. in a patent infringement suit relating to GPS and avionics technology. Specifically, Plaintiffs accused Northwest of infringing the patents through the alleged use of Automatic Dependent Surveillance, including ADS-B. After extensive discovery, a dismissal of the action was obtained.

Great Clips, Inc. v. Hair Cuttery of Greater Boston, L.L.C. and Great Cuts, Inc.: Summary judgment granted to client, Great Clips, Inc., against claims of trademark infringement.

RealSource, Inc. v. Best Buy Co., et al.: Trial and appellate counsel for Best Buy in RealSource, Inc. v. Best Buy Co., et al. involving patent claims asserted in U. S. District Court in Austin, Texas. The plaintiff alleged Best Buy's gift cards infringed its patent, and sought more than $32 million in damages. Summary judgment was granted. The judgment was affirmed by the Federal Circuit on June 23, 2008.

Grantley v. Clear Channel Communications, Inc.: A patent infringement case in which a federal jury in the Eastern District of Texas awarded Grantley Corporation $66 million. The jury found that Clear Channel Communications, Inc. infringed on four of Grantley Corporation's patents related to an integrated inventory management system for radio advertising time. The jury also found that the infringement was willful. The verdict was announced on April 22, 2008. On June 11, 2008, the court enhanced the damages by more than $16.5 million, awarded prejudgment interest and entered judgment totaling more than $89 million. The case settled while on appeal under confidential terms.

Andersen v. Pella Corp. et al: Obtained reversal in Federal Circuit for Anderson of trial court decision that patent claims were obvious, one of the first post-KSR obviousness decisions to be reversed.

Ricoh Corp. v. Pitney Bowes Inc.: Defended Pitney Bowes in a patent infringement involving communications and control within Pitney Bowes' mailing machines. The case was tried in the United States District Court for the District of New Jersey, Trenton Division, with Judge Brown presiding. The jury returned a verdict of invalidity in favor of Pitney Bowes finding anticipation of all 18 asserted claims. In addition, during trial, the court entered summary judgment of anticipation of four additional claims. Jury decision was affirmed in a post-trial memorandum by the District Court and summarily affirmed by the Federal Circuit.

Prometheus Laboratories, Inc., et al. v. Quest Diagnostics, Inc.: Obtained dismissal of all claims in patent case involving DNA.

Eolas Technologies, Inc. and The Regents of the University of California v. Microsoft Corporation: Represented Eolas Technologies, Inc. and the Regents of the University of California, in action for patent infringement of web browser technology for the delivery of interactive applications embedded in web pages. The case was tried in United States District Court, Northern District of Illinois, Eastern Division, Chicago, Illinois, Zagel, Judge. Jury verdict in favor of Eolas and the University of California, on issues of infringement, validity, and damages in the amount of $520.6 million. On January 14, 2004, the court entered judgment for $565,894,868 which includes the amount of the original verdict plus prejudgment interest. On appeal, the Federal Circuit affirmed the finding of infringement and the damages award, and ordered that Microsoft’s invalidity and inequitable conduct defenses be retried. The case settled on a confidential basis four days before the start of the invalidity trial.

Pitney Bowes Inc. v. Hewlett-Packard Co.: Represented Pitney Bowes in a patent infringement case against Hewlett-Packard involving patents on laser-jet printer technology. The case settled, on the morning opening statements were to be made, for $400 million and other business considerations.

TVI v. Microsoft (N.D. Calif): TVI is the owner of several patents covering the autoplay feature of Windows. TVI sued Microsoft in the Northern District of California alleging that all versions of Microsoft Windows since Windows 95 infringed these patents. The case settled in October 2005 a little more than one week before trial. Microsoft took a license under the patents. All other terms of the settlement are confidential.

Electromotive Division of General Motors Corporation v. Transportation Systems Division of Global diversified technology and financial services company: Obtained summary judgment for General Electric in a patent infringement action brought by General Motors involving planetary and compressor bearings used diesel in locomotive engines.

Luigino's, Inc. v. Robert Peterson and IBP: Obtained summary judgment for Robert Peterson, the CEO of IBP, and the company, in the defense of a $500 million theft of trade secret, breach of fiduciary duty and breach of contract case.

Intergraph v. Dell, Hewlett-Packard Co. and Gateway Inc.: Represented Intergraph Corp. in patent litigation involving microprocessor system design. Recovered, to date, a total of $500 million in settlements as follows:
- Hewlett-Packard $141 million, with cross licenses;
- Dell/Intel $225 million;
- Gateway/emachines $12 million plus ongoing royalties;
- AMD $20 million plus potential future royalty profits;
- IBM $10 million plus a license to IBM's portfolio;
- Toshiba and NEC, confidential settlements
Licensing campaign following litigation:
- Fujitsu $9.75 million;
- Sony $15 million;
- Acer $7.5 million; and
- Other confidential licenses

Fonar v. General Electric: Represented Fonar Corporation and Dr. Raymond V. Damadian in a patent infringement action against General Electric involving patents on magnetic resonance imaging (MRI) machines. After trial, the Court of Appeals for the Federal Circuit ordered General Electric to pay $103.4 million, at the time reportedly the largest patent infringement jury verdict ever upheld on appeal (IP Worldwide). The final payment totalled $128 million (judgment plus interest).

Honeywell v. Minolta: Represented Honeywell in a patent infringement case against Minolta involving patents on autofocus cameras. Jury award for Honeywell of $96.3 million, with subsequent settlement for $127.5 million and total settlements of approximately $500 million against industry.

Union Oil Company of California ("UNOCAL") v. Atlantic Richfield Company, et al.: Represented UNOCAL in a patent infringement case over UNOCAL’s patent on gasoline. Jury verdict and ultimate judgment with interest and attorney fees in favor of UNOCAL amounted to $91 million.

Tulip Computers Int’l v. Dell Computers, Inc. "(D. Dell. 2003)": Represented patent owner Tulip, a Dutch corporation, in settlement during trial for $49.5 million payment by Dell.

St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc. et al.: No. 03-0241 (D. Del., filed February 28, 2003) Represented St. Clair Intellectual Property Consultants, Inc. in a patent infringement case in which a federal jury in Wilmington, Delaware awarded $34.7 million after a finding that Canon infringed four patents relating to digital camera technology. The verdict was announced on October 8, 2004.

Honeywell Inc. v. Victor Company of Japan and U. S. JVC Corp.: Jury verdict in favor of Honeywell for $30 million for patent infringement of color filters used in video cameras.

St. Clair Intellectual Property Consultants, Inc. v. Sony Corp. et al.: Jury award of $25 million after a finding that Sony infringed four patents relating to digital camera technology. The parties entered into a license agreement two days later, the terms of which are confidential.

Talbert Fuel Systems Patents Company v. UNOCAL Corporation: Defense of patent infringement and judicial interference action in Central District of California. Summary judgment in favor of UNOCAL, affirmed by the Federal Circuit Court of Appeals, certiorari granted, vacated, remanded by the U.S. Supreme Court. On October 28, 2003, the U.S. Court of Appeals for the Federal Circuit unanimously ruled in favor of UNOCAL on all issues in this matter.

* Past results are reported to provide the reader with an indication of the type of litigation we practice. They do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.