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Experience
Cioffi v. Google LLC
U.S. Court of Appeals for the Federal Circuit
Convinced the Federal Circuit to reverse an Eastern District of Texas judgment for plaintiffs who had accused Google’s Chrome web browser of infringing four patents related to anti-malware technology. The court of appeals concluded that the asserted claims of all four patents were invalid for violating the original-patent/same-invention requirement of 35 U.S.C. § 251. 2023 WL 2981491 (Fed. Cir. Apr. 18, 2023).
Philips North America, LLC v. ITC
U.S. Court of Appeals for the Federal Circuit
Successfully defended the Commission’s rulings involving two patents that Philips had asserted against Fitbit activity monitors. The Commission held one patent invalid and that the other was not infringed, and the Federal Circuit affirmed. 2022 WL 3131841 (Fed. Cir. Aug. 5, 2021)
AstraZeneca AB v. Mylan Pharmaceuticals Inc.
U.S. Court of Appeals for the Federal Circuit
Convinced the Federal Circuit to reverse a district court’s construction of a limitation on the weight of a pharmaceutical component and hold that Mylan’s proposed generic version of an AstraZeneca asthma drug did not infringe an AstraZeneca patent. 19 F.4th 1325 (Fed. Cir. 2021).
Biogen International GmbH v. Mylan Pharmaceuticals Inc.
U.S. Court of Appeals for the Federal Circuit
Won affirmance of a district court ruling that Biogen’s patent claims involving a multiple-sclerosis drug were invalid for lack of adequate written description under 35 U.S.C. § 112. 18 F.4th 1333 (Fed. Cir. 2021).
In re Google LLC
U.S. Court of Appeals for the Federal Circuit
Successfully petitioned the Federal Circuit for writs of mandamus directing the U.S. District Court for the Western District of Texas to transfer two separate patent infringement suit against Google to the U.S. District Court for the Northern District of California. In both cases, the Federal Circuit agreed with Google that the district court clearly abused its discretion in denying transfer, granted the petition, and ordered transfer to California. 2021 WL 4592280 (Fed. Cir. Oct. 6, 2021).
Trimble Inc. v. PerDiemCo LLC
U.S. Court of Appeals for the Federal Circuit
Convinced the Federal Circuit to narrow the longstanding Red Wing Shoe doctrine regarding personal jurisdiction in declaratory judgment actions and to reverse the district court’s dismissal of Trimble’s declaratory judgment suit. 997 F.3d 1147 (Fed. Cir. 2021).
Gamevice, Inc. v. ITC
U.S. Court of Appeals for the Federal Circuit
Won affirmance of the ITC’s determination that Nintendo Switch products did not infringe Gamevice’s patents because the claims included means-plus-function terms and the accused products lacked the structures in the specifications that corresponded to those functions. 2021 WL 1904876 (Fed. Cir. May 12, 2021).
Uniloc 2017 LLC v. Hulu, Inc.
U.S. Court of Appeals for the Federal Circuit
Convinced the Federal Circuit that the Patent Trial and Appeal Board is entitled to review the patent-eligibility of proposed substitute claims in an inter partes review. 966 F.3d 1295 (Fed. Cir. 2020).
Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc.
U.S. Supreme Court
Persuaded the Supreme Court to deny a petition for certiorari regarding the effect of blocking patents in assessing the obviousness of patent claims. 140 S. Ct. 111 (2019).
Cleveland Clinic Foundation v. True Health Diagnostics LLC
U.S. Court of Appeals for the Federal Circuit
Convinced the Federal Circuit that five patents asserted by Cleveland Clinic relating to methods of diagnosing cardiovascular disease were not patent-eligible because they were directed to a natural correlation between cardiovascular disease and levels of a biomarker in the blood. 859 F.3d 1352 (Fed. Cir. 2017); 760 F. App’x 1013 (Fed. Cir. 2019).
Vehicle IP, LLC v. Cellco Partnership
U.S. Court of Appeals for the Federal Circuit
Won affirmance of a claim construction and summary judgment of non-infringement of a patent involving vehicle navigation applications that estimate times of arrival. 757 F. App’x 954 (Fed. Cir. 2019).
AC Technologies SA v. Amazon.com, Inc.
U.S. Court of Appeals for the Federal Circuit
Persuaded the Federal Circuit to affirm final written decisions by the Patent Trial and Appeal Board that declared patent claims to redundant storage of pieces of a data file unpatentable over prior art. 912 F.3d 1358 (Fed. Cir. 2019).
Nuvo Pharmaceuticals (Ireland) DAC v. Dr. Reddy’s Laboratories, Inc.
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. 925 F.3d 1368 (Fed. Cir. 2019).
BTG International Ltd. v. Amneal Pharmaceuticals LLC
U.S. Court of Appeals for the Federal Circuit; U.S. Supreme Court
Successfully defended PTAB and district court decisions that found it was obvious to treat patients suffering from metastatic castration-resistant prostate cancer with a combination of two prior-art drugs. Convinced the district court, the Federal Circuit, and the Supreme Court to deny the plaintiffs’ request for an injunction against generic launch pending appeal, and then persuaded the Federal Circuit to affirm that the claims were unpatentable on the merits. No. 18A539 (U.S. Nov. 21, 2018); 923 F.3d 1063 (Fed. Cir. 2019).
Digital Media Technologies, Inc. v. Netflix, Inc.
U.S. Court of Appeals for the Federal Circuit
Won affirmance of ruling that held that patent claims on a multimedia system with encrypted content and encrypted licenses were directed to the patent-ineligible abstract idea of digital rights management. 742 F. App’x 510 (Fed. Cir. 2018).
In re Copaxone Consolidated Cases (Teva Pharmaceuticals USA, Inc. v. Sandoz Inc.);
Yeda Research & Development Co. v. Mylan Pharmaceuticals Inc.
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to hold that claims to a 40mg, three-times-a-week dosing regimen for a multiple sclerosis drug were invalid as obvious over prior art. 906 F.3d 1013 (Fed. Cir. 2018); 906 F.3d 1031 (Fed. Cir. 2018).
Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.
U.S. Supreme Court; U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to hold that Indian tribes cannot assert tribal sovereign immunity to inter partes review of tribally owned patents, and convinced Supreme Court to deny certiorari. 896 F.3d 1322 (Fed. Cir. 2018).
CAP Co., Ltd. v. McAfee Inc.
U.S. Court of Appeals for the Federal Circuit
Won affirmance of two Patent Trial and Appeal Board decisions invalidating claims of patents relating to anti-virus technology. 730 F. App’s 927 (Fed. Cir. 2017); 730 F. App’x 931 (Fed. Cir. 2017).
Google LLC v. Network-1 Technologies, Inc.
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to vacate patentability determination by the Patent Trial and Appeal Board regarding patent on identification of electronic works and to remand the case for reconsideration under a more favorable claim construction. 726 F. App’x 779 (Fed. Cir. 2018).
MACOM Technology Solutions Holdings, Inc. v. Infineon Technologies AG
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm most of a preliminary injunction that declared that Infineon’s termination of a patent license agreement was ineffective. 881 F.3d 1323 (Fed. Cir. 2018).
Creative Technology Ltd. v. International Trade Commission
U.S. Court of Appeals for the Federal Circuit
Won affirmance of ITC ruling that patent claims involving user interface for a portable media player were not patent-eligible.
IPCom GmbH & Co. v. HTC Corp.
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to affirm most of a Patent Trial and Appeal Board ruling that claims involving handover of cellphones in a cellular telephone network were unpatentable over prior art. 861 F.3d 1362 (Fed. Cir. 2017). Also persuaded the court to affirm the PTO’s ruling that claims to a method of avoiding cellular network overload were unpatentable over prior art. Also won affirmance of a district court’s grant of summary judgment that HTC did not infringe two patents that IPCom, a European patent enforcement entity, had acquired from Robert Bosch GmbH. 550 F. App’x 881 (Fed. Cir. 2014).
The Medicines Co. v. Mylan Inc.
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to reverse a claim construction and hold that Mylan did not infringe either of two patents on making batches of the anti-coagulant bivalirudin in a way that consistently minimized an impurity. 853 F.3d 1296 (Fed. Cir. 2017).
Callwave Communications LLC v. AT&T Mobility LLC
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm district court’s claim construction and judgment that methods of billing Google Play Store purchases to phone bills did not infringe the plaintiff’s patent.
Luminara Worldwide, LLC v. Liown Electronics Co.
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to reverse a preliminary injunction that barred Liown from supplying artificial flame candles because the asserted patent claim was likely invalid over a prior-art patent. 814 F.3d 1343 (Fed. Cir. 2016).
FuzzySharp Corp. v. Intel Corp.
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm district court’s ruling that claim involving pre-calculations in rendering 3D graphics was not patent-eligible because it focused on an abstract idea.
Split Pivot, Inc. v. Trek Bicycle Corp.
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to affirm district court’s summary judgment that the Active Braking Pivot technology used in rear suspensions of Trek mountain bikes did not infringe two Split Pivot patents.
MasterObjects, Inc. v. Google Inc.
U.S. Court of Appeals for the Federal Circuit
Successfully defended district court’s claim construction and resulting judgment of noninfringement in a case alleging that the Google Instant search tool infringed the plaintiff’s patent.
Versata Development Group, Inc. v. SAP America, Inc.
U.S. Court of Appeals for the Federal Circuit
Filed amicus brief on behalf of numerous technology companies arguing that the Patent Trial and Appeal Board properly applied a “broadest reasonable interpretation” standard when construing unexpired patents in post-grant reviews and inter partes reviews under the America Invents Act.
SanDisk Corp. v. Round Rock Research LLP
U.S. Court of Appeals for the Federal Circuit
Submitted amicus brief on behalf of Intel and Broadcom urging reinterpretation of the law on international patent exhaustion.
Carnegie Mellon University v. Marvell Technology Group, Ltd.
U.S. Court of Appeals for the Federal Circuit
Submitted amicus brief on behalf of technology companies arguing that a district court erred in allowing Carnegie Mellon to rely on Marvell’s worldwide revenues in calculating reasonable royalty damages.
Medisim, Ltd. v. BestMed LLC
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to affirm JMOL that BestMed was not unjustly unriched by misappropriating Medisim-proprietary information and to affirm the grant of a new trial on BestMed’s on-sale bar defense to Medisim’s patent infringement claim. 758 F.3d 1352 (Fed. Cir. 2014).
Ericsson, Inc. v. D-Link Systems, Inc.
U.S. Court of Appeals for the Federal Circuit
Filed amicus brief for Wi-Fi chip companies arguing that the supposedly reasonable royalty awarded for infringing certain standard-essential patents was unreasonable and excessive.
Triton Tech of Texas, LLC v. Nintendo of America Inc.
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm summary judgment that Triton’s patent claims on a computer input device were invalid for indefiniteness because the patent’s specification did not disclose an algorithm corresponding to the claimed “integrator means.” 753 F.3d 1375 (Fed. Cir. 2014).
STC.UNM v. Intel Corp.
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the District of New Mexico
Successfully defended Intel in patent suit relating to lithographic patterning techniques for use in the manufacture of semiconductor devices. The district court granted summary judgment that the patent was unenforceable for most of its existence for failure to comply with a terminal disclaimer, and dismissed the remainder of the case for lack of standing because STC failed to join patent’s current co-owner. The Federal Circuit affirmed the dismissal, rejecting STC’s argument that it was entitled to join its co-owner against the co-owner’s will, and the Supreme Court denied certiorari. 754 F.3d 940, reh’g denied, 767 F.3d 1351 (Fed. Cir. 2014).
Bonneville Power Administration Residential Exchange Program Cases
U.S. Court of Appeals for the Ninth Circuit
Represented Puget Sound Energy Inc. and worked with counsel for other Pacific Northwest investor-owned utilities in a series of Ninth Circuit cases involving the Residential Exchange Program and other aspects of the Northwest Power Act. The Ninth Circuit ultimately affirmed BPA’s adoption of a long-term settlement over the objection of some parties. Ass’n of Pub. Agency Customers v. BPA, 733 F.3d 939 (9th Cir. 2013).
Monolithic Power Systems, Inc. v. O2 Micro International Ltd.
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm large attorney’s fee award to accused infringer MPS on grounds that the case was “exceptional” under Section 285 of the Patent Act. The Federal Circuit held that the district court properly found that O2 Micro pursued a vexatious litigation strategy and it engaged in litigation misconduct. The Federal Circuit also upheld the full amount of the award, agreeing that MPS was entitled to recover its fees for discovery that was taken for both the district court litigation and parallel ITC litigation. 726 F.3d 1359 (Fed. Cir. 2013).
FlashPoint Technology, Inc. v. International Trade Commission
U.S. Court of Appeals for the Federal Circuit
Obtained Federal Circuit decision affirming ITC’s determinations that HTC did not infringe a FlashPoint patent involving automatic rotation of images in cameras and that HTC was licensed to practice many of the accused products in any event. 496 F. App’x 997 (Fed. Cir. 2013).
Prism Technologies v. McAfee, Inc.
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm a summary judgment that McAfee’s system of registering its antivirus software products online did not infringe Prism’s patent, which involved limiting access to resources on an untrusted network by using a “digital identification” stored on a “hardware key” to authenticate the user or computer. 541 Fed. Appx. 999 (Fed. Cir. 2013).
Linear Technology Corp. v. Monolithic Power Systems, Inc.
U.S. Court of Appeals for the Federal Circuit
Persuaded Federal Circuit to affirm a JMOL that MPS did not breach a settlement agreement and was entitled to its attorneys' fees as a result.
Typhoon Touch Technologies Inc. v. Dell Inc.
U.S. Court of Appeals for the Federal Circuit
Successfully defended judgment that HTC did not infringe two patents involving touch-screen technology. 659 F.3d 1336 (Fed. Cir. 2011).
Monolithic Power Systems, Inc. v. O2 Micro International Ltd.
U.S. District Court for the Northern District of California
U.S. Court of Appeals for the Federal Circuit
Successfully defended lawsuit alleging that MPS infringed a patent on power management techniques for cold-cathode fluorescent lamps used in laptop computers and other devices. The Federal Circuit affirmed the jury's verdict that all the asserted claims were obvious and held that the trial court properly appointed an independent expert to testify regarding infringement and validity. The victory also resulted in vacatur of the judgment for O2 Micro in a separate case where the jury had found a Monolithic customer liable for infringing the same patent. 558 F.3d 1341 (Fed. Cir. 2009).
Clatskanie People's Utility District v. Bonneville Power Administration
U.S. Court of Appeals for the Ninth Circuit
Successfully defended Bonneville Power Administration's award of interim benefits under the Residential Exchange Program of the Northwest Power Act to Puget Sound Energy Inc. and other investor-owned utilities. At our urging, the Ninth Circuit dismissed the petition for review on grounds that the petitioner had not been injured and accordingly lacked standing to complain. 330 F. App’x 637 (9th Cir. 2009).
Eberle Design Inc. v. Reno A&E
U.S. Court of Appeals for the Federal Circuit
Successfully defended jury verdict and judgment that a patent on vehicle detector technology was invalid under the on-sale bar.
Microsoft Corp. v. AT&T Corp.
U.S. Supreme Court
Authored amicus brief for Intel Corporation arguing that § 271(f) of the Patent Act does not subject U.S. software companies to liability for worldwide sales simply because the master version of the software was designed and exported from the United States. 550 U.S. 437 (2007).
AmerisourceBergen Corp. v. Dialysist West Inc.
U.S. Court of Appeals for the Ninth Circuit
Successfully defended judgment on pleadings that Bergen was not entitled to offset damages that Dialysist West allegedly owed as to one product against sums that Bergen owed Dialysist West for another product. The Ninth Circuit also affirmed that Bergen was not entitled to amend its pleadings to retract several admissions and that Dialysist West was entitled to immediate entry and enforcement of judgment despite its insolvency and Bergen's pending claims. 445 F.3d 1132 (9th Cir. 2006).
O2 Micro Inc. v. Monolithic Power Systems, Inc.
U.S. Court of Appeals for the Federal Circuit
Convinced Federal Circuit to affirm a summary judgment that MPS did not infringe an O2 Micro patent on DC-to-AC inverter circuits that drive cold-cathode fluorescent lamps used in LCD panels. The Federal Circuit upheld the validity of the Northern District of California's Patent Local Rules and affirmed the district court's finding that O2 Micro lacked good cause to amend its Final Infringement Contentions under those rules. 467 F.3d 1355 (Fed. Cir. 2006).
Analog Devices Inc. v. Michalski
U.S. Court of Appeals of North Carolina
Successfully opposed former employer's attempt to enjoin Maxim Integrated Products from employing engineers in the field of high-speed, high-resolution analog-to-digital converters based on supposed "inevitable disclosure" of trade secrets. 579 S.E.2d 449 (N.C. Ct. App. 2003).
Hohokam Irrigation & Drainage District v. Arizona Public Service Co.
Arizona Supreme Court
Persuaded Arizona Supreme Court to hold that irrigation districts have constitutional and statutory authority to sell electric power outside district boundaries and to nonagricultural customers, even when competing with an incumbent investor-owned utility. 204 Ariz. 394, 64 P.3d 836 (2003).
Sanitation District No. 3 of Orange County v. United Technologies Corporation
California 4th District Court of Appeal, Division 3
Convinced California Court of Appeal to overturn a punitive damages award against UTC in a case alleging installation of defective sewer pipe. No. G018419 (Cal. Ct. App. 1999).
Pfaff v. Wells Electronics Inc.
U.S. Supreme Court
Convinced the U.S. Supreme Court to affirm a judgment invalidating patents on ball grid sockets and loadless chip carriers. The Supreme Court unanimously adopted our suggestion to apply a "ready for patenting" standard for determining the validity of a patent under the statutory on-sale bar, rejecting the Federal Circuit's "totality of the circumstances" test, the "actual reduction to practice" standard proposed by Pfaff, and eight alternatives proposed by amici. 525 U.S. 55 (1998).
