Ameritox v. Millennium Health

U.S. District Court for the Western District of Wisconsin
Achieved a victory for Ameritox, a drug testing laboratory, in patent litigation against a competitor, Millennium. The district court ruled before trial that Millennium infringed Ameritox’s patent involving diagnostic testing methods for identifying pain medications in urine. The court ruled after trial that the method covered patent-eligible subject matter. At trial, the jury upheld the patent’s validity and awarded Ameritox over $8.6 million in damages.

Baker v. Nintendo of America

U.S. District Court for the Eastern District of Texas
U.S. District Court for the Western District of Washington
Obtained a complete victory for Nintendo. After the plaintiff filed suit against Nintendo, Microsoft, and game makers in the Eastern District of Texas alleging infringement of a patent involving motion tracking technology convinced the Texas court to transfer the case to the Western District of Washington. Then prevailed on early summary judgment motion contending that the applicant’s argument to the PTO during patent prosecution precluded infringement.

Callwave Communications v. AT&T Mobility

U.S. Court of Appeals for the Federal Circuit
On behalf of Google and T-Mobile, convinced Federal Circuit to affirm district court’s claim construction and resulting judgment of noninfringement in case involving charging online purchases to phone bills.

CAP Co., Ltd. v. McAfee, Inc.

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of California
U.S. Patent Trial and Appeal Board
Secured a victory for McAfee in a multi-patent case brought by Korean computer security firm CAP. Convinced the district court to strike most of CAP's infringement allegations and then stay the litigation pending inter partes reviews. The PTAB ultimately declared all challenged claims unpatentable and rejected CAP's attempt to amend the claims of one patent to salvage some protection. The Federal Circuit affirmed both rulings.

Cleveland Clinic Foundation v. True Health Diagnostics, Inc.

U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Ohio
U.S. District Court for the Eastern District of Virginia
Convinced the Federal Circuit to affirm the ineligibility of Cleveland Clinic’s patent claims on methods of detecting elevated levels of a biomarker that correlates with cardiovascular disease. The court held the claims invalid despite Cleveland Clinic’s argument that the PTO’s patent-eligibility guidelines approved the eligibility of similar laboratory-method claims. The win was recognized by Law360 as one of four recent Federal Circuit decisions that patent attorneys need to know.

Digital Media Technologies v. Amazon.com, Netflix and Hulu

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Florida
Successfully defended the district court’s ruling that DMTI’s patent claims involving digital rights management and encryption of content licenses were parent-ineligible.

Fontem Ventures v. R.J. Reynolds

Patent Trial and Appeal Board
Secured several wins for Fontem Ventures against one of the largest e-cigarette companies in the United States in IPR proceedings before the PTAB. In reaction to various litigations relating to 15 patents, R.J. Reynolds filed 26 IPR petitions requesting cancellation of Fontem’s patent claims. Of those, the PTAB denied 18 of Reynolds’s petitions outright. The parties jointly terminated proceedings for three petitions before the PTAB ruled on institution. The PTAB instituted review in only five of Reynolds’s IPRs and the PTAB issued final written decisions upholding all challenged claims in two of them. In the 23 IPR petitions filed by Reynolds where the PTAB decided whether to institute, Fontem had a 78% success rate in having the petitions denied and an 87% success rate when including proceedings where claims were ultimately found patentable in a final written decision from the PTAB.

In re Copaxone 40 mg Consolidated Cases

U.S. Court of Appeals for the Federal Circuit
Patent Trial and Appeal Board
U.S. District Court for the District of Delaware
Convinced the Federal Circuit to affirm rulings by both the district court and the PTAB that patents covering 40mg three-times-a-week dosing of Teva’s blockbuster multiple sclerosis drug Copaxone® (glatiramer acetate) were invalid for obviousness. The Federal Circuit's decisions put an end to Mylan's long-running battle against Teva and cleared the way for Mylan to market its own generic version of the product rather than waiting until the patents’ expiration in 2030.

Luminara Worldwide v. Liown Electronics

U.S. District Court for the District of Minnesota
U.S. Court of Appeals for the Federal Circuit
Patent Trial and Appeal Board
Took over case after the district court had issued a preliminary injunction enjoining Liown from selling its moving flameless candle products and convinced the Federal Circuit to vacate the injunction on grounds that the asserted claim was likely invalid. Later prevailed in IPRs, convincing PTAB to declare many of the claims unpatentable over prior art.

MACOM Technology Solutions v. Infineon Technologies

U.S. District Court for the Central District of California
Secured a preliminary injunction for MACOM against competitor Infineon Americas, which had purported to terminate MACOM’s exclusive license to foundational gallium nitride technology that will be used in next-generation cellular base stations. The court found that Infineon had no basis to terminate the license, ordered that the license agreement remains in full force and effect, and prohibited Infineon from marketing and selling within a field contractually reserved to MACOM.

Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories

U.S. Court of Appeals for the Federal Circuit
Convinced the Federal Circuit to reverse a district court’s ruling that two patents contained an adequate written description of the claimed invention. The claims required an amount of an uncoated proton-pump inhibitor effective to raise gastric pH to a certain level, but the Federal Circuit held that the specifications failed to demonstrate that the inventor knew, rather than hoped, that uncoated proton-pump inhibitors would work.

BTG International v. Actavis & Mylan Pharmaceuticals, Inc. v. Janssen Oncology, Inc.  

U.S. Court of Appeals for the Federal Circuit
Patent Trial and Appeal Board
U.S. District Court for the District of New Jersey
Persuaded the PTAB to find all claims of the only Orange Book-listed patent covering Janssen’s Zytiga® (abiraterone acetate) product unpatentable. Demonstrated the obviousness of combining abiraterone with prednisone to treat patients suffering from metastatic castration-resistant prostate cancer. Achieved a second victory in the parallel district court case when the court held the claims invalid after a bench trial. Convinced the district court, the Federal Circuit, and the Supreme Court to deny Janssen’s request for an injunction against generic launch pending appeal, and then persuaded the Federal Circuit to affirm the unpatentability of the claims on the merits.

Radware v. F5 Networks

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of California
Defended F5 Networks in patent litigation and a jury trial relating to network packet routing. Obtained summary judgment of noninfringement of one patent and the jury awarded only a small amount of damages on the others. The Federal Circuit affirmed.

St. Regis Mohawk Tribe v. Mylan

U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
Patent Trial and Appeal Board
Secured a major victory in a precedent-setting case in the Federal Circuit involving tribal sovereign immunity. Allergan transferred patents covering Restasis®, a treatment for chronic dry eye, to the St. Regis Mohawk Tribe so that the Tribe could assert sovereign immunity to IPRs that were instituted at Mylan’s behest. The Federal Circuit agreed with the PTAB that tribal sovereign immunity does not apply when a federal agency reconsiders its own patent grant. The Supreme Court denied certiorari. The matter was named one of the “Biggest Patent Cases of 2018” by Law360 and Managing IP recognized it as a “Patent Impact Case of the Year.”

Stragent LLC v. Intel Corporation

U.S. District Court for the Eastern District of Texas
Successfully defended Intel in patent infringement case relating to CRC polynomial circuits, obtained a jury verdict of both noninfringement and invalidity.

The Medicines Company v. Mylan Inc.

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Illinois
Trial and appellate counsel for Mylan in Hatch-Waxman litigation over patent rights to bivalirudin (Angiomax®). The district court found that Mylan infringed only one of two patents. The Federal Circuit reversed the finding of infringement, holding that Mylan infringed neither asserted patent.

Uniloc USA, Inc. v. Amazon.com, Google, Hulu & Netflix

U.S. Court of Appeals for the Federal Circuit
Successfully defended the district court’s ruling that Uniloc’s patent claims on time-adjustable licenses were ineligible for patenting under Section 101.

U.S. Water Services v. Novozymes

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Western District of Wisconsin
Won infringement and non-invalidity verdicts for the plaintiff at trial. Then convinced the Federal Circuit to reverse the district court’s post-trial grant of JMOL of inherent anticipation.

Vehicle IP LLC v. AT&T Mobility LLC

U.S. District Court for the District of Delaware
Defeated claims of infringement of a patent on navigation systems that provide estimated times of arrival and directions to destinations. After replacing previous defense counsel, convinced the district court to reconsider its construction of a key claim term shortly before trial and to enter judgment of non-infringement. Then convinced the Federal Circuit to affirm the claim construction.

VoIP-Pal.com v. Twitter

U.S. District Court for the District of Nevada
U.S. District Court for the Northern District of California
Successfully defended Twitter in case where VoIP-Pal, a publicly traded patent assertion entity, sought more than $1 billion from each defendant. Convinced the Nevada district court to transfer the case to the Northern District of California and then convinced the Northern California court to grant a motion to dismiss on grounds that the claims recited ineligible subject matter.