FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc.

We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

$16 million judgment

Softspikes, LLC et al. v. MacNeill Engineering Company, Inc. Trisport, Ltd. et al. v. MacNeill Engineering Company, Inc. et al.

United States District Court for the District of Delaware

In this pair of patent litigations, Sunstein defended MacNeill Engineering against claims of infringing five patents owned by related companies Softspikes and Trisport. In the first litigation Sunstein obtained favorable claim construction rulings that forced Softspikes to drop one of the two patents it had asserted against MacNeill. Faced with these setbacks and a counterclaim for infringement of three of MacNeill’s own patents with a substantial claim for damages, the plaintiffs agreed to a settlement and dismissed their cases.

Comair Rotron v. Nippon Densan Corporation and Nidec Corporation

United States District Court for the District of Connecticut

Sunstein successfully negotiated a multimillion dollar settlement on behalf of our client, Comair Rotron, following a jury verdict that our client’s patent was infringed. The patent was directed to important magnetization technology for brushless DC electric motors and MIT professors served as technical expert witnesses for both sides. The case had been earlier dismissed before trial, but we successfully obtained a decision by the United States Court of Appeals for the Federal Circuit reversing the trial court’s summary judgment determination and remanding the case to the District Court for trial.

Abbott Laboratories v. Syntron Bioresearch, Inc.

United States Court of Appeals for the Federal Circuit, United States District Court, Southern District of California

Sunstein represented Abbott Laboratories in patent infringement litigation concerning immunoassay technology against Syntron Bioresearch, Inc. in the United States District Court for the Southern District of California. After a four week jury trial and an appeal to the Court of Appeals for the Federal Circuit (see 334 F.3d 1342 (Fed.Cir. 2003)), we prevailed on our claim of patent infringement and secured a permanent injunction from the trial court against further infringement. The case then settled during the damages phase.

Kotowski et al. v. Mastronardi et al. (Patent Interference No. 105,890)

United States Patent and Trademark Office, Patent Trial and Appeal Board

We obtained a win for our client American Science and Engineering in an interference proceeding against its competitor Rapiscan Systems. Interference proceedings are instituted before the Patent Trials and Appeals Board to establish priority of inventorship, because, for US patent applications filed prior to March 16, 2013, rights are awarded to the first inventor, irrespective of who first filed a patent application. For more recent applications, early filing is of increased importance. AS&E’s invention concerns backscatter x-ray technology.

Patent Award

Fotomedia Technologies, LLC v. Fujifilm U.S.A et al.

United States District Court for the Eastern District of Texas

Sunstein defended MyPublisher, Inc. against patent infringement claims brought by FotoMedia Technologies, LLC. MyPublisher was one of many defendants named in the suit (others included Fujifilm USA, Inc. and Nokia, Inc.). FotoMedia had earlier filed similar complaints against dozens of other defendants, including AOL, Yahoo! and Shutterfly. Sunstein successfully adopted a litigation strategy focused on getting our client out of the suit as early as possible and without incurring any significant litigation costs. Sunstein obtained a settlement from FotoMedia without the payment of any damages by MyPublisher.

Ariad Pharmaceuticals, Inc., Massachusetts Institute of Technology, The Whitehead Institute for Biomedical Research, and The President and Fellows of Harvard College v. Eli Lilly and Co.

United States Court of Appeals for the Federal Circuit, United States District Court, District of Massachusetts

Sunstein worked with a New York firm to obtain a $65 million patent infringement verdict for Ariad Pharmaceuticals, Inc., against Eli Lilly and Company in 2006. This jury verdict was the largest in the state of Massachusetts in 2006. The legal team presented weeks of complex evidence on various aspects of patent law, including infringement, inducement and validity. The jury learned about Ariad’s pioneering research and discovery of methods of treating disease by regulating NF-kappaB cell signaling activity. Witnesses included experts in molecular biology and two Nobel prize winning scientists. After the successful jury trial, Sunstein then continued its collaboration in this matter by participating in a bench trial on inequitable conduct, in which Ariad again prevailed. In a milestone ruling on the Patent Act’s written description requirement, the Federal Circuit found the patents in suit invalid and reversed the jury verdict.

$65 million patent infringement verdict

Comair Rotron, Inc. v. Matsushita Electric Corporation of America et al.

United States Court of Appeals for the Federal Circuit, United States District Court for the District of New Jersey

Sunstein secured at trial a $25 million judgment for willful patent infringement, including treble damages and attorneys’ fees, and defended it on appeal for our client, Comair Rotron, Inc. In a related case, Rotron, Inc. v. United States International Trade Commission, we obtained a ruling from the Court of Appeals upholding the validity of our client’s patent and directing the International Trade Commission to enter an appropriate exclusion order against infringing products imported by Matsushita Electric Corporation of America.

$25 million judgment

B. Braun Medical, Inc. v. Abbott Laboratories

United States Court of Appeals for the Federal Circuit, United States District Court for the Eastern District of Pennsylvania

Sunstein secured a jury verdict for Abbott Laboratories, defeating an $11.5 million patent infringement claim relating to intravenous valve devices. The jury verdict and judgment of non-infringement was affirmed on appeal.

$11.5 million patent infringement judgment

Gates Formed-Fibre Products, Inc. v. Delaware Valley Corp. and Dominic Paul DiMaggio, Jr.

United States District Court for the District of Massachusetts

Sunstein obtained a verdict of no liability for Delaware Valley and Dominic Paul DiMaggio, Jr., who were accused of patent infringement. Gates asserted that Delaware Valley’s process to make its fused-back carpeting infringed a process patent and that the defendant’s fused-back material infringed a product patent. Gates sought damages of more than $36 million and an injunction against Delaware Valley. After a four-week trial, the jury determined that our clients were not liable because the patents were invalid. The jury’s verdict was affirmed by the Court of Appeals for the Federal Circuit.

Network Appliance, Inc. v. BlueArc Corporation

United States District Court for the Northern District of California

Working with co-counsel in San Francisco, Sunstein successfully defended BlueArc, which was accused of infringing a patent for network server software architecture, by obtaining favorable claim construction from the Court and by winning summary judgments of noninfringement or invalidity of all asserted claims, without the need for a trial on the merits. This favorable judgment was upheld on appeal.

Successful defense

VLT Inc. v. Power-One, Inc

United States Court of Appeals for the Federal Circuit, United States District Court for the District of Massachusetts

Sunstein won the appeal for Power-One which upheld a judgment of non-infringement. We also represented Power-One in Federal District Court in Massachusetts in this patent infringement action, which concerned power converters essential for providing a DC voltage to computers or other electronic equipment. Early in the litigation, we forced the plaintiff to narrow its claim brought against hundreds of millions of dollars in sales down to the limited sales of a particular series of power converters, and next forced the plaintiff to drop its claims for lost profits. We then obtained favorable claim construction and judgment of non-infringement as to the remaining series of power converters.

Bowers v. Baystate Techs., Inc.

United States Supreme Court; United States Court of Appeals for the Federal Circuit; United States District Court for the District of Massachusetts

Sunstein represented Baystate Technologies in obtaining a reversal of a jury verdict of patent infringement. The patent owner claimed infringement by Baystate’s template, for use with a “digitizer” attached to a computer to assist in operating computer-aided design software. The Federal Circuit agreed with our position that the trial court erred in its claim construction and reversed the infringement ruling on the ground that the claims, properly construed, were not infringed. The case also involved significant copyright and license issues.

Davis v. SpeechWorks International, Inc. Davis v. ScanSoft, Inc.

United States District Court, Western District of New York

Sunstein obtained a summary judgment dismissal of a multi-million dollar suit for infringement of speech recognition software patents asserted against our clients SpeechWorks International, Inc. and ScanSoft, Inc. (now Nuance Communications, Inc.), recognized throughout the industry as leaders and innovators in speech recognition technology. Sunstein was able to overcome the presumption of patent validity in obtaining the declaration by the federal court in New York that the asserted patents, for reducing errors in speech recognition software, were invalid. By aggressively moving for and securing summary judgment of patent invalidity, we obtained a dismissal at an early stage and thereby avoided expensive additional proceedings including trial.

Engineered Data Products v. Netc, LLC, Engineered Data Products v. Art Style Printing Inc., d/b/a Dataware

United States District Court for the District of Colorado

After extensive litigation in our client’s home forum of Colorado, Sunstein obtained favorable settlements in a series of cases for infringement of EDP’s patent for a color- and bar-coded label-generation system. The patented technology is used to manufacture labeling systems as well as to permit customers to generate their own labels.

Engineered Data Products, Inc. v. GBS Corp

United States District Court for the District of Colorado

Sunstein obtained a confidential settlement of our client’s claims for infringement of a patent covering software for generating color-coded labels after winning summary judgment on defendant’s “intervening rights” defense. GBS had raised this defense on the grounds that EDP’s patent claims, amended during a reexamination proceeding (in which the firm represented EDP), were not substantially identical to the corresponding claims in the original patent. The Court held that the amendment of EDP patent claims during reexamination did not change their scope and that GBS would not be permitted to avoid damages for its alleged infringement of these claims before issuance of the Reexamination Certificate. See Engineered Data Products, Inc. v. GBS Corp., Slip Copy, 2007 WL 915783 (D.Col. 2007)

Bowers v. Baystate Techs., Inc.

United States Supreme Court United States Court of Appeals for the Federal Circuit United States District Court for the District of Massachusetts

Sunstein represented Baystate Technologies in obtaining a reversal of a jury verdict of patent infringement. The patent owner claimed infringement by Baystate’s template, for use with a “digitizer” attached to a computer to assist in operating computer-aided design software. The Federal Circuit agreed with our position that the trial court erred in its claim construction and reversed the infringement ruling on the ground that the claims, properly construed, were not infringed. The case also involved significant copyright and license issues.

Samsung Electronics Co., Ltd. v. Arendi S.A.R.L.

(IPR2014-00214.)

Samsung attacked our client’s patent in the Patent Trial and Appeal Board (PTAB) on grounds of obviousness. We persuaded the PTAB that an element of the claims was not disclosed by the cited references and thus prevented the inter partes review from even being instituted.

Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi S.A.R.L.

(IPR2014-00203.)

Motorola, Google and Apple attacked the same patent as Samsung raising several additional grounds. Our arguments carried the day and the inter partes review was not instituted, freeing our client’s patent for unfettered assertion in court.

$116 million settlement

Arendi S.A.R.L. v. Apple Inc., Google Inc., Motorola Mobility LLC

(Federal Circuit 15-2073, appeal of IPR2014-00208.)

Sunstein scored a victory on behalf of its client Arendi by obtaining a reversal of a PTAB decision that had invalidated Arendi’s patent. The court warned against using so-called common sense as a wholesale substitute for reasoned analysis to show how prior art combined with extraneous knowledge or insight might invalidate a patent claim. The Federal Circuit reversed the PTAB’s finding of unpatentability outright rather than remand the case for further consideration because it found no evidence in the record to suggest that Arendi’s technique was obvious.

Analog Devices, Inc.

(IPR2013-00108)

We filed a petition for inter partes review against U.S. Patent No. 7,439,616. Earlier, we had filed inter partes reexaminations in rapid response to a district court action for patent infringement. We followed up with several more reexaminations. Worldwide litigation involving these and other patents was settled a couple months after the inter partes review was filed. The inter partes review was terminated upon submission of the settlement agreement.

New Bay Capital, LLC

(IPR2013-375, 376, 377, 378)

We filed four petitions for inter partes review attacking four patents owned by VirnetX Inc. These patents are all involved in litigation used by VirnetX to obtain a jury award of over $360 million against Apple, Inc.

Source MDx

(No. 95/001,032.)

We handled inter partes reexamination of a patent pioneering the use of gene expression profiles to detect presence of biological conditions.

Surmodics and its exclusive licensee Abbott Laboratories

(No. 90/006,785)

We defended an ex parte reexamination related to a method for conducting an immunoassay. We won a reexamination certificate to amended patent claims that roughly corresponded to the claim scope successfully asserted against an infringer in earlier litigation. We formulated a question of first impression for the Federal Circuit as to when a reexamination can be brought on prior art previously considered by the federal courts. In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008).

Prosensa B.V.

(No. 90/011,320)

We filed a request for reexamination of Prosensa’s U.S. Patent 7,534,879 for exon skipping oligonucleotides to treat Duchenne muscular dystrophy to confirm patentability over additional prior art, and obtained a certificate of reexamination without amending the claims

Color Coded Label Apparatus

(No. 90/005,316)

Our careful amendments to the claims achieved an allowance and a reexamination certificate. Most importantly a District Court later ruled that the claims did not change in substance thereby allowing our client to claim infringement damages back to the issuance of the patent. Engineered Data Products v. GBS Corp., 506 F.Supp.2d 461 (D. Colo. 2007).

Color Coded Label Apparatus

(No. 90/005,316)

Our careful amendments to the claims achieved an allowance and a reexamination certificate. Most importantly a District Court later ruled that the claims did not change in substance thereby allowing our client to claim infringement damages back to the issuance of the patent. Engineered Data Products v. GBS Corp., 506 F.Supp.2d 461 (D. Colo. 2007).

Caching on a Network

(No.90/009,108, No. 90/009,110, No. 90/009,111, No.90/009,385)

The Superspeed software patents were successfully litigated to settlements with Oracle and then IBM. We defended the reexaminations filed by IBM and obtained allowance of minimally amended claims. Some of the patents are now asserted against Google.

JPEG reexamination

(No. 90/007,808)

We handled reexamination of a patent relating to JPEG technology

Video Game inter partes reexaminations

(No. 95/000,408, No. 95/000409 and No. 95/000,410)

In addition to filing ex parte reexamination requests for some older related patents, inter partes reexaminations were instituted against three patents of interest.

University of Western Australia v. Academisch Ziekenhuis Leiden

(Patent Interference No. 106,013.)

We obtained a judgment in favor of its client. The technology concerns antisense oligonucleotides.

Kotowski et al. v. Mastronardi et al.

(Patent Interference No. 105,890)

United States Patent and Trademark Office, Patent Trial and Appeal Board. We obtained a win for our client American Science and Engineering in an interference proceeding against its competitor Rapiscan Systems. AS&E’s invention concerns backscatter x-ray technology.

Thompson et al. v. Normand et al.

(Patent Interference No. 103,347)

United States Patent and Trademark Office, Board of Patent Appeals and Interferences. We obtained a win for our client Deka Research and Development in an interference proceeding. The invention concerns a medical device for delivery fluid at constant pressure.

Schmieding v. McGuire et al.

(Patent Interference No. 104,007)

United States Patent and Trademark Office, Board of Patent Appeals and Interferences. We obtained a win for our client Dr. David McGuire in an interference proceeding. The invention concerns a surgical instrument and method.

Bioactive Laboratories v. BTG International Inc.

This IPR involved a snake antivenom. The preliminary response persuaded the PTAB to decline to institute an IPR of its patent.

Cooper v. Goldfarb.

This patent interference involved enormously valuable vascular graft technology, and was the longest-running patent interference in USPTO history. The client prevailed in three Board of Patent Appeals and Interferences decisions and two Federal Circuit appeals. The resulting patent issued in 2002 and has been litigated with success.

Regents of the University of California v. University of Iowa Research Foundation.

This patent interference involved a client’s core biotechnology IP. The client prevailed because the Court found that the competition failed to comply with the statutory requirements of 35 U.S.C. § 135(b). In a decision appealed to the Federal Circuit, the victory not only preserved the client’s valuable patent rights, but also significantly expanded the existing law and provided additional protection to all patent holders by restricting the ability of patent applicants to provoke an interference with an issued patent.

Raz v. Krieg.

The client inventor prevailed in two related patent interferences regarding patent applications for methods of treating asthma. In the first interference, the client prevailed in the preliminary motions period, and the other side appealed. During the appeal, the other side abandoned the appeal. In the second interference, the other side conceded and requested that judgment be entered in the client’s favor.

Massachusetts Institute of Technology v. Catalyst Assets.

In this patent interference, the client obtained a dismissal of an interference provoked by one of MIT’s competitors for failure to meet the statutory requirements of 35 U.S.C. § 135(b). This decision confirmed and extended the holding that he had previously secured for a different client in the Regents of the University of California v. University of Iowa Research Foundation.

Bestfoods v. Barber Foods.

This patent interference involved food processing technology, in which the applicant discovered a former collaborator had filed for, and had obtained, a patent on subject matter the client believed had been derived from its inventors. A strategy was developed that caused the patentee to concede the interference, resulting in the collaborator’s patent being cancelled and the client to obtain a patent on that subject matter.

Landers v. Sapolsky.

This interference involved inventions for the Massachusetts Institute of Technology for methods for detecting genetic defects. MIT prevailed on 35 U.S.C. § 112 grounds as Sapolsky’s claims were not supported because they were broader in scope than the method disclosed in the patent specification.

Conopco v. Vrije Universiteit Brussel.

This interference involved immunoglobulins devoid of light chains. The interference was settled on terms that allowed the client to obtain a patent covering the commercially valuable embodiment of the invention.

Adimab v. Dyax.

This interference related to a method of displaying a library of antibodies on the surface of yeast cells. The client provoked the interference and invalidated claims of a competitor’s patent based upon the prior art while successfully avoiding the same prior art to obtain a patent on the claimed method.

Bison v. Crabtree.

This interference related to organic liquid fertilizer. The client successfully provoked an interference against a competitor who, it believed, had stolen his clients invention The interference settled on grounds in which the competitor requested adverse judgment and the client obtained a patent on the technology.

BreathableBaby, LLC v. Summer Infant, Inc.

United States District Court for the District of Minnesota

Sunstein defended Summer Infant, Inc. against claims of patent and trademark infringement concerning “breathable” crib bumpers. Following extensive briefing and oral argument, we secured a favorable preliminary claim construction from the Court and defeated BreathableBaby’s motion for a preliminary injunction. The case settled shortly thereafter.

HP Hood LLC v. Stremicks Heritage Foods LLC,

United States District Court for the Southern District of California

Sunstein represented HP Hood LLC in design patent litigation concerning Hood’s patented bottle designs. Through focused third-party discovery, we were able to secure meaningful admissions that contributed directly to our ability to secure a favorable settlement for our client.

Bio-Nutra Technologies, L.L.C. et al v. Decas Cranberry Products, Inc. et al

United States District Court for the Middle District of Florida

Sunstein defended Decas Cranberry Products and Decas Botanical Synergies against patent infringement and false advertising claims regarding nutraceutical products, including cranberry-based supplements. We responded to the Bio-Nutra complaint with counterclaims of our own for false advertising, unfair competition and antitrust violations. Following an extensive pre-trial factual investigation that supported Decas’s position, Bio-Nutra agreed to dismiss its claims and signed an agreement not to bring similar lawsuits against Decas in the future. Importantly, the resolution of the litigation resulted in no restrictions, limitations or conditions on the sale or distribution of Decas’s products.

McGuire et al. v. Schmieding

Board of Patent Appeals and Interferences, Washington, DC

Sunstein successfully represented two medical doctors who asserted that they were the first to invent the claimed technology, which is used in anterior cruciate ligament (ACL) surgery. During the proceeding, which went to a final hearing, the issues of priority and patentability were raised. Our adversary initially argued that it had invented the claimed invention first, but then argued that the technology was unpatentable to both parties. We successfully prevented our adversary’s introduction of both our opponent’s reissue application and our clients’ continuation patent into the interference proceeding. We also obtained a dismissal of our adversary’s motion on the issue of patentability and won a final decision awarding priority of invention to our clients. In addition, our adversary’s reissue application was rejected by the USPTO, while we obtained an allowance of our clients’ application that had been involved in the interference.

S.C. Johnson & Son, Inc., et al. v. Chelsea Industries, Inc. v. Illinois Tool Works, Inc.

United States District Court for the Eastern District of Wisconsin

Sunstein represented Chelsea Industries in this patent infringement case involving resealable plastic bags. We engaged in vigorous discovery in the U.S. and Asia and assisted our client in development of technology that plaintiff itself would be forced to admit avoided plaintiff’s patents. We also impleaded a third party defendant. Shortly after receiving a very favorable discovery ruling on motions to compel the opposing party to produce millions of documents and provide further answers to numerous interrogatories, the case settled favorably for our client, leaving the third party defendant in the case.

Blue Ridge International Products Co. v. Nolan Brown, Inc., et al.

United States District Court, Western District of North Carolina

Sunstein represented Nolan Brown in patent infringement litigation concerning its patent for an infant auto seat safety device widely sold through national retailers such as Target and Toys “R” Us, in the United States District Court for the Western District of North Carolina. We successfully resisted our adversary’s assertion of noninfringement, and after vigorous litigation and mediation, we negotiated a favorable settlement on behalf of our client.

Heimann Systems GmbH v. American Science & Engineering, Inc.

United States District Court for the District of Massachusetts

Sunstein represented AS&E, an industry leader whose technology is used by government officials to inspect vehicles for explosives and other contraband. Our client was accused of infringing a patent relating to security applications of x-ray inspection technology. On the eve of trial, we developed a strategy for settlement that was successfully implemented on terms beneficial to our client.

CYBEX International v. Ground Zero Design, LLC

United States District Court for the District of Massachusetts

Sunstein represented Ground Zero Design and succeeded in obtaining a dismissal of an action for patent infringement and misappropriation of trade secrets against our client for lack of personal jurisdiction under the long arm statute. Based on our arguments, the court ruled that our client’s contacts with Massachusetts were insufficient to invoke personal jurisdiction.

Mediacom Corp. v. Rates Technology, Inc.

United States District Court for the District of Massachusetts

Sunstein obtained favorable patent claim interpretation and defeated summary judgment motions on behalf of Rates Technology, owner of patents covering telecommunications hardware and software. The case resulted in an important ruling by the Court which established procedures in this district for conducting Markman claim-construction hearings, 4 F. Supp. 2d 17 (1998) (Young, C.J.). Shortly thereafter, we negotiated a favorable settlement for our client.

MacNeill Engineering Co., Inc. v. Unique Sports Inc.

United States District Court for the Northern District of Georgia

Sunstein filed suit for infringement of a patent for shoe spikes and cleats on behalf of MacNeill Engineering Co. Within two months we obtained a final judgment of patent validity and infringement and a permanent injunction prohibiting further infringement of our client’s patent.

New England Braiding Co., Inc., et al. v. A.W. Chesterton Co.

United States District Court for the District of Massachusetts

Sunstein filed suit for infringement of New England Braiding’s patent for ANTIKEYSTONE mechanical compression packing. Halfway through trial we obtained a favorable settlement upholding the validity of our client’s patents and ensuring our client’s position as the sole supplier of the ANTIKEYSTONE packing.

Converse Inc. v. Comfort Products, Inc.

United States District Court for the District of Massachusetts

Sunstein represented Converse, a major footwear manufacturer accused of patent infringement. We filed a suit for a declaratory judgment of invalidity of two patents held by defendant that it had asserted against one of Converse’s product lines. We obtained a settlement under which the defendant granted Converse a perpetual, royalty-free, fully paid up, non-exclusive, worldwide license under the two patents.

San Shoe Trading Corp. v. Converse Inc.

United States District Court for the Southern District of New York

Sunstein successfully defended Converse in an action for patent infringement. Prior to trial, we obtained a settlement in which our client received a royalty-free, non-exclusive license to make use of the technology in the patent.

Sage Therapeutics, Inc. v. Sage Naturals, Inc.

United States District Court for the District of Massachusetts

Sunstein brought suit in federal district court in Massachusetts against a medical marijuana dispensary using the name Sage Naturals (formerly Sage Biotech) on behalf of Sage Therapeutics, a biopharmaceutical company based in Cambridge, Massachusetts, with global activities committed to developing novel medicines to treat patients suffering from CNS disorders. Sage Naturals promoted use of its medical marijuana products to treat the same types of CNS disorders that Sage Therapeutics’ investigational medicines were intended to treat. Sage Naturals subsequently changed its name to Sira Naturals.

’47 Brand, LLC v. Contrast Imports, Inc.

USPTO, Trademark Trial and Appeal Board

Sunstein successfully represented ’47 in trademark litigation before the USPTO Trademark Trial and Appeal Board. ’47 opposed Contrast Imports’ application to register a 47 in a circle based on likelihood of confusion with its 47-formative marks. After TTAB trial proceedings, the Board agreed that there was a likelihood of confusion between ’47’s strong 47 marks used for apparel and headwear and Contrast Imports’ 47 mark used for silver jewelry, and held that consumers would likely mistakenly believe that Contrast Imports’ originated from or were associated with or sponsored by ’47. Accordingly, the TTAB sustained ‘47’s opposition.

Vertex Pharmaceuticals Inc. v. Hercules Brand Corp.

USPTO, Trademark Trial and Appeal Board

Sunstein successfully represented Vertex in its opposition to the mark VERTOX in trial proceedings before the USPTO Trademark Trial and Appeal Board. After the submission of trial briefs, the Board agreed with Vertex that there was a likelihood of confusion between Vertex’s VERTEX marks registered for pharmaceutical preparations and pharmaceutical research services, and Hercules Brand’s VERTOX mark for vitamin and multivitamins. Among other factors, the Board considered the issue of public safety in cases involving confusingly similar trademarks for pharmaceuticals and closely related products like vitamins or nutritional supplements.

Hambrecht Wine Group, L.P. d/b/a Belvedere Winery, L.P. v. Millennium Import LLC

United States District Court for the Northern District of California

Sunstein obtained a summary judgment ruling in favor of its client, a Sonoma winery, holding that the winery’s trademark licensee, an importer of luxury vodka, breached its license to use the BELVEDERE® trademark, that the winery properly terminated the vodka importer’s license, and, accordingly, that the importer’s continued sales of BELVEDERE® vodka infringed the winery’s trademark rights. The case, which was litigated in the federal court in San Jose, settled shortly after the summary judgment ruling.

Harvard and Harvard Business School Publishing v. Oezyurt Harvard and Harvard Business School Publishing v. LeEL Technology.com

WIPO

Sunstein represents Harvard University with respect to numerous trademark matters, and recently achieved victories in contested cybersquatting disputes through the Uniform Domain-name Dispute Resolution Process (UDRP). In two independent cases filed and decided on the same day, Harvard and its subsidiary Harvard Business School Publishing (publisher of, among other things, the famed Harvard Business Review magazine) sought transfer of the domains harvardbusinessreview.mobi and harvardbusiness.net. Harvard argued that both sites were registered and used in bad faith, as evidenced by the fame of the Harvard mark. In both cases, the respondents argued that their use and registration of the sites were made in good faith, for legitimate purposes. The WIPO panelist, siding with Harvard, emphasized the fame of the Harvard name in concluding that registration of the sites could only have been in bad faith.

M&M Label Company, Inc. v. Lone Peak Labeling Systems, Inc.

United States District Court for the District of Massachusetts

Sunstein brought suit in federal district court in Massachusetts against Lone Peak Labeling System on behalf of its client M&M Label Company in an action for breach of contract, trademark infringement, false designation of origin and unfair competition. M&M Label is a leader in the label, decal and nameplate production and printing industry in the United States and the creator of the proprietary label-printing system sold under the trademark THE MERCHANDISER. After seeking a preliminary injunction, we obtained an agreement from Lone Peak to, among other things, immediately cease use of the mark THE MERCHANDISER and to abandon its application with the USPTO.

AOL, LLC, Time Warner, Inc., et al. v. NameMedia, Inc.

United States District Court for the Eastern District of Virginia

Sunstein represented NameMedia in a federal court action in the Eastern District of Virginia “rocket docket” brought by AOL, Time Warner, and associated companies. Plaintiffs asserted claims including trademark infringement, cybersquatting, and breach of contract relating to the registration of certain domain names. After vigorous motion practice on numerous issues, including the successful defeat of plaintiffs’ motion to dismiss NameMedia’s reverse domain name hijacking counterclaim (an issue of first impression), and motion practice related to NameMedia’s defense that the agreement underlying AOL’s breach of contract claim was unenforceable due to conflict of interest, a stipulation of dismissal of the action, with prejudice, was entered.

The HipSaver Company, Inc.

United States District Court for the District of Massachusetts

Sunstein represents the HipSaver Company, an innovator in the design and manufacture of products which protect against hip fracture and newly invented products which protect against skin injury. We have represented HipSaver in two lawsuits which safeguard the marketplace integrity of its hip protector products under the Lanham Act and the Massachusetts business practices act. Significantly, we have also obtained an important judicial ruling which advances the law in the First Circuit on damages relief for willful, literally false advertising. Under this ruling, the trial court has recognized a rebuttable presumption of causation and injury where willful, literally false advertising is committed by a direct competitor in a concentrated market.

First Act Inc. v. Brook Mays Music Company, Inc.

United States District Court for the District of Massachusetts

Sunstein won a $20.7 million jury verdict for First Act in this suit for false advertising in violation of the Lanham Act, commercial disparagement and interference with contractual relations. During the five-week trial, we presented extensive expert witness testimony including in-courtroom demonstrations as proof that defendant’s statements about our client’s musical instruments were false. The global aspects of the parties’ manufacture and distribution of the products in issue posed unique challenges involving discovery throughout the United States and in China and Hong Kong. In addition, because of the harm being caused to our client on an ongoing basis, we acted quickly upon filing suit to obtain expedited discovery and a preliminary injunction against the defendant. The case is also of general interest because we established jurisdiction in Massachusetts over the Texas-based defendant by proving (among other facts) the defendant’s contact with Massachusetts through email messages sent to residents of the forum state.

Global Business Network, Inc. v. James Pinda

World Intellectual Property Organization (WIPO) Arbitration and Mediation Center

Sunstein represented Global Business Network, Inc., a wholly owned entity of Monitor Company Group of Cambridge, Massachusetts, in a domain name and copyright dispute with James Pinda, of Fremont, California. Our aggressive assertion of claims under the Digital Millennium Copyright Act and ICANN’s Uniform Dispute Resolution Policy caused Mr. Pinda’s website to be swiftly removed from the web, and his domain name to be transferred to our client.

Ken’s Foods, Inc. v. Ken’s Steak House, Inc.

United States District Court for the District of Massachusetts

Sunstein represented Ken’s Steak House, a restaurant in Framingham, Massachusetts, in a trademark lawsuit brought by Ken’s Foods. The parties reached an amicable settlement on the second day of trial. The terms of the settlement are confidential.

ElizaGray, LLC v. Lacoste Alligator, S.A.

United States District Courts, Massachusetts and Southern District of New York

Sunstein represented ElizaGray, LLC in trademark infringement litigation concerning its design marks for crystal jewelry ornaments it sells in specialty retail shops throughout the country. We successfully resisted the Swiss corporation’s assertion of infringement, and after vigorous litigation in Boston and New York, we negotiated a favorable settlement on behalf of our client.

Versal Technologies, Inc. v. Versalent, Inc.

United States District Court for the District of Massachusetts

Sunstein represented Versal Technologies, a computer software development and consulting firm and owner of numerous VERSAL-formative marks, in a trademark infringement action against its competitor, Versalent, a software firm that used the trademark VERSALENT and had registered VERSALENT-formative domain names. Sunstein’s motion for preliminary injunction forced a settlement in which defendant Versalent agreed to cease using the VERSALENT mark, company name, and domain names.

Gifford’s Dairy, Inc. v. Richardson’s Farms, Inc.

United States District Court for the District of Maine

Sunstein represented Richardson’s Farms, one of the oldest family-owned dairies in the United States, in a trademark infringement action brought by Gifford’s Dairy. Gifford’s, a competitor, sought to prevent Richardson’s from using the mark MAINE BLACK BEAR for one of its ice cream flavors, and also sought treble damages. Our aggressive litigation strategy secured a highly favorable settlement. Today Richardson’s continues to sell MAINE BLACK BEAR ice cream free and clear of the plaintiff’s assertion of rights in the name.

Judith E. Pancoast v. Razor & Tie Direct, LLC

United States District Court for the District of Massachusetts

Sunstein filed a lawsuit to enforce the rights of Judith E. Pancoast, a composer and performer of children’s music, in the KIDPOP! mark against a major music distributor using the confusingly similar KIDZ BOP mark. We were able to obtain a favorable outcome for our client in mediation.

United States Trust Company v. United States Trust Company of New York

United States District Court for the District of Massachusetts

Sunstein represented United States Trust Company of New York in a trademark infringement case against the Boston-based United States Trust Company, which asserted ownership of the name UNITED STATES TRUST COMPANY. After trial, and while an appeal of ownership rights was pending, we successfully negotiated a settlement. The Boston bank ceased use of the UNITED STATES TRUST COMPANY name, and our client now has exclusive rights to the name.

Shelby v. Factory Five Racing, Inc.

United States District Court for the District of Massachusetts

Sunstein’s client, racing legend Carroll Shelby, obtained a consent judgment and comprehensive injunction against Factory Five Racing, Inc. on the first day of trial. Factory Five was the largest maker of “replicas” of Shelby’s famous COBRA® race cars of the 1960’s. In the lawsuit, Shelby claimed that the “replicas” are counterfeits of the Shelby-designed COBRAs and that Factory Five’s use of the famous COBRA, 427 S/C, and DAYTONA COUPE trademarks violated the Lanham Act and the Federal Trademark Dilution Act. Factory Five has been barred from selling cars or chassis for cars that make any use of the trademarks. Factory Five also is required to make specific disclaimers and to inform customers at the time of sale that it cannot use and is not authorized to use Shelby or Ford trademarks on Factory Five products.

Cambridge Documentary Films, Inc. v. Jean Kilbourne and Media Education Foundation

United States District Court for the District of Massachusetts

Sunstein successfully defended Jean Kilbourne, an internationally known media critic, lecturer and writer, against a claim of trademark infringement. The plaintiff initiated the suit against Kilbourne seeking to prevent her use of the mark KILLING US SOFTLY in connection with her most recent documentary film, Killing Us Softly III. Kilbourne asserted her rights to the mark and filed counterclaims for trademark infringement. We negotiated a settlement agreement that, among other things, acknowledged Kilbourne’s undisputed right to the KILLING US SOFTLY mark and allowed her to continue distributing Killing Us Softly III. The case also involved significant copyright issues.

Harvard Pilgrim Health Care, Inc. v. President and Fellows of Harvard College

United States District Court for the District of Massachusetts

Sunstein represented Harvard University in this significant trademark licensing case. Harvard Pilgrim asserted exclusive ownership of the name “Harvard Pilgrim.” The University asserted that Harvard Pilgrim used the name pursuant to a trademark license, based in part on the fact that Harvard Pilgrim’s predecessor, Harvard Community Health Plan, was founded by Harvard in 1968 and has engaged in joint teaching, research and patient care activities with Harvard since that time. The parties entered into a settlement agreement in which Harvard Pilgrim abandoned its ownership claim and agreed to use the “Harvard Pilgrim” name pursuant to a written trademark license.

i2 Technologies, Inc. v. Rhythms NetConnections, Inc.

United States District Court for the Northern District of Texas

Sunstein successfully defended Rhythms NetConnections, a national telecommunications company, and preserved its multi-million dollar marketing campaign against allegations of trademark infringement and trademark dilution. In a case turning on legal and expert analysis contrasting the market for high-end enterprise software with the market for DSL connectivity, i2 ultimately dropped its suit. The lawsuit presented a variety of complex trademark claims, including allegations of reverse confusion and trademark dilution based on “niche fame.” Our attorneys worked closely with experts specializing in consumer surveys, the economics of the Internet, and market analysis in the fields of enterprise software and telecommunications.

RLM Software, Inc. v. WSI Corporation

United States District Court for the District of Massachusetts

Sunstein represented RLM Software, Inc., owner of the mark FLIGHTVIEW, and sued WSI Corporation for trademark infringement and unfair competition based on its use of the mark FLIGHTWATCH. Both parties’ marks were used in connection with the provision of real-time flight information and weather data. Shortly after we filed the complaint on behalf of RLM, the parties entered into a settlement agreement by which WSI agreed to cease using the FLIGHTWATCH mark.

Dragon Systems, Inc. & Lernout & Hauspie Speech Products, N.V. v. Spinner Media

United States District Court for the District of Massachusetts

Sunstein secured preliminary injunctive relief against an Internet-based business, which the Court found willfully misrepresented itself as an affiliate of our client Dragon Systems, a renowned developer of speech recognition software and related technology. In addition, the Court found that the defendants used the Dragon Systems and Lernout & Hauspie names and marks on a website and in domain names, secretly linked their website to Dragon Systems’ database, sold Dragon Systems’ products without authorization and sold nonexistent software support services to customers over the Internet. The Court issued a preliminary injunction, which halted all of these activities.

Eschool, Inc. d/b/a notHarvard.com v. President and Fellows of Harvard College

United States District Courts for the Northern District of Texas and Massachusetts

Sunstein represented Harvard University in a suit alleging trademark dilution, infringement and unfair competition. We moved for a preliminary injunction preventing Eschool from using the “notHarvard” trademark in connection with its so-called “on-line universities.” Eschool and Harvard entered into a consent judgment by which Eschool agreed to cease use of the “notHarvard” mark.

Cubist Pharmaceuticals, Inc. v. John Pakiw, a.k.a. John Pankin

United States District Court for the District of Massachusetts

Sunstein sued on behalf of Cubist for violations of the Anti-Cybersquatting Consumer Protection Act and false advertising. The defendant had registered multiple Internet domain names that contained the names of pharmaceutical preparations that Cubist was developing, and was using the sites to disparage Cubist. We obtained a temporary restraining order against the defendant and put a halt to this activity. The defendant soon agreed to transfer ownership of all of the domain names to Cubist and refrain from any public comment or disparagement of Cubist, its trademarks and its goods and services.

President and Fellows of Harvard College v. University Sports Publications Company, Inc.

United States District Court for the District of Massachusetts

Sunstein brought suit for infringement and dilution of Harvard’s trademarks by an unauthorized ‘sports annual’ published by the defendant. The case was settled when the defendant agreed to cease all unauthorized use of Harvard’s trademarks, with strict penalties, including payment of attorneys’ fees, for breach of the agreement.

Digital Equipment Corp. v. AltaVista Technologies, Inc.

United States District Court for the District of Massachusetts

Sunstein successfully defended AltaVista Technologies, Inc., licensee of the altavista.com domain name, against trademark infringement and related charges made by Digital Equipment Corporation, owner of the AltaVista Search service, in a dispute over trademark rights. After extensive pretrial activities, we negotiated a settlement agreement favorable to our client.

Gennex Healthcare Technologies, Inc. v. Blue Cross and Blue Shield of Massachusetts, Inc.

United States District Courts for the District of Illinois and Massachusetts

Sunstein represented Blue Cross in a dispute with a health care company regarding the domain name HEALTHWIRE.COM and related trademarks. After we took action to put the health care company’s domain name on hold, the company sued our client for a declaratory judgment in Illinois. We succeeded in having the Illinois action dismissed and countersued in Massachusetts for trademark infringement. Shortly before trial, we negotiated an amicable settlement on behalf of our client. Today, our client uses the HEALTHWIRE mark in connection with its business.

Idea Courier Inc. v. U.S. Robotics, Inc.

United States Trademark Trial and Appeal Board

Sunstein prevented U.S. Robotics from obtaining federal trademark registration of the mark COURIER for modems on grounds of likelihood of confusion with our client’s mark IDEA COURIER for video display terminals.

Keystone Investments, Inc. v. Keystone Investment Corporation

United States District Court for the District of Michigan

Sunstein represented a large investment firm that marketed and sold shares of mutual funds under the KEYSTONE mark. We threatened to bring an action against another investment company using that mark in connection with investment services offered in the state of Michigan. Upon reviewing the preliminary injunction papers that we intended to file, the company entered into a settlement by which it agreed to cease all use of the KEYSTONE mark.

British Telecommunications plc v. I.D.E. Corporation

United States Trademark Trial and Appeal Board

Sunstein successfully fought off the attempt by a multinational telecommunications company to bar I.D.E. Corporation’s registration of its trademark. By vigorously defending the suit and by counterattacking to bar registration of the telecommunications company’s own marks, we forced it to the bargaining table and obtained not only the right to proceed with registration of our client’s trademark, but also a substantial monetary settlement for our client.

Future Electronics Corp. v. Reptron Electronics, Inc.

United States District Court for the District of Massachusetts

Sunstein represented Future Electronics, a company using the acronym FIRST to identify a sophisticated proprietary system for inventory replenishment in the field of electronic components. We sued a competitor for using an identical trademark to identify its services. We were successful in obtaining a preliminary injunction at an early stage of the litigation, and negotiated a settlement by which the competitor agreed to cease all use of the mark.

IDEAssociates, Inc. v. Ideatech, Inc., et al.

United States District Court for the District of Columbia

In this action for trademark infringement and unfair competition, Sunstein obtained a preliminary injunction prohibiting defendants from making use on computer products of a trademark using the word IDEA and defeated defendants’ counter-motion for a preliminary injunction. A subsequent settlement required the defendants to assign IDEA-formative marks relating to computer hardware and software products to our client, IDEAssociates.

Blue Cross of Massachusetts, Inc. & Blue Shield of Massachusetts, Inc. v. Page Systems, Inc.

United States District Court for the District of Massachusetts

On behalf of Blue Cross and Blue Shield, Sunstein sued for trademark infringement and unfair competition relating to the defendant’s use of the mark MASTER DRUG, which infringed plaintiff’s identical MASTER DRUG mark and their family of well known MASTER formative marks for health insurance and related services, including MASTER MEDICAL and MASTER HEALTH. After protracted litigation, a settlement was reached in which the defendant agreed to cease using the mark and to assign all its rights therein to our client.

Converse Inc. v. Mile 1933 International, Ltd., et al.

United States District Court for the District of Massachusetts

On behalf of Converse, Sunstein brought suit for trademark infringement, misappropriation of trade secrets and unfair competition relating to the defendant’s sale of consumer products in the United States and in European countries. We obtained a temporary restraining order and preliminary injunction prohibiting the individual defendant from producing, marketing and selling products bearing trademarks and designs proprietary to Converse. In a subsequent settlement of the case, the corporate defendant agreed to redesign its ankle patch to distinguish its shoes from Converse’s shoes.

Blue Cross of Massachusetts, Inc., and Blue Shield of Massachusetts, Inc. v. Ocean State Master Health Plan, Inc., et al.

Suffolk Superior Court

Sunstein represented Blue Cross and Blue Shield, obtaining a preliminary injunction against the use by defendants of the service mark MASTER HEALTH in connection with health benefits services and services in the medical and health care insurance field. The case was settled shortly thereafter and the preliminary injunction was made permanent.

Botsini Corp. v. Vecchione, et al.

Barnstable Superior Court

Sunstein obtained a preliminary injunction on behalf of Botsini Corp., which prohibited defendants from opening a restaurant in our client’s trade area employing a similar name and logo for use on signage, uniforms, napkins, cups, vehicles and in advertising. The case settled based upon the defendants’ agreement to change the name and logo of their restaurant.

Converse Inc. v. S.B. Sports, Ltd., et al.

United States District Court for the District of New Jersey

Sunstein represented Converse, obtaining a temporary restraining order, which shortly resulted in a favorable settlement under which the defendants agreed to change the objectionable trademark.

’47 Brand, LLC

’47 is one of the most trusted names in licensed sports merchandise in the United States. Products bearing ’47’s marks are sold in sports stadiums, team stores and in thousands of retail stores throughout the United States, Canada, Europe and Asia. We have assisted ’47 for over a decade, including in connection with its corporate re-branding from Twins to ’47, and provide both trademark prosecution and enforcement services worldwide. We successfully represented ’47 in its opposition to another party’s application to register a 47 in a circle, obtaining a judgment from the USPTO Trademark Trial and Appeal Board in ’47’s favor.

Cambridge College

Cambridge College is a pioneer in adult learning, offering academically excellent and affordable higher education to a diverse population of working adults. We have helped Cambridge College obtain protection for marks that advance its educational mission.

The Charles Stark Draper Laboratory, Inc.

Draper is a world-renowned not-for-profit research and development company. Headquartered in Kendall Square, Cambridge, Massachusetts, Draper focuses on the design, development and deployment of advanced technological solutions for the world’s most challenging and important problems. We work with Draper protecting its valuable trademarks, patents and other IP.

Deerfield Academy

Deerfield Academy, founded in 1797, is a preeminent U.S. independent, coeducational boarding and day school. We assist Deerfield with the protection of its venerable trademarks as well as with protection for its newer brands.

Eastern Bank

Eastern Bank is the largest and oldest mutual bank in the United States, which is distinguished in the industry by its focus on community growth and technological innovation. Its commitment to the community is reflected in its JOIN US FOR GOOD campaign. We assist Eastern Bank with its trademark prosecution and enforcement efforts.

Haemonetics Corporation

Haemonetics is the world leader in blood management products and services. Haemonetics’ comprehensive portfolio of devices, software and services offers blood and blood plasma management solutions for each facet of the blood supply chain. We assist Haemonetics with its worldwide trademark prosecution, brand protection strategy and enforcement needs.

Hexagon

Sunstein provides US-based strategic trademark advice to Hexagon AB, of Sweden, and Hexagon’s affiliated companies in the US and around the world. Hexagon is a leading global provider of information technology solutions in the geospatial and industrial landscapes. Sunstein employs a pragmatic approach to trademark policing and prosecution to secure registration of Hexagon’s import house marks and product marks.

Hologic

A global leader of healthcare products, Hologic strives to make advances toward greater certainty for its customers by providing them with cutting-edge technology that makes a real difference. Working together with Hologic’s internal counsel, Sunstein helps Hologic protect its core brands around-the-world by developing and implementing a pragmatic and effective strategy focused on sound principles of brand protection.

Intersystems

Intersystems Corporation is a 40-year-old computer software company that, in conjunction with its application partners, has been developing and licensing computer software for large entities, such as governments, large corporations and institutions that is used for building applications, managing databases and integrating data primarily in the healthcare field. Sunstein attorneys have worked with in-house attorneys at Intersystems to build a large international portfolio of registered trademarks covering each of its software products. We continually monitor trademark usage by its competitors and oppose attempts by competitors to use and/register confusingly similar trademarks worldwide.

Lola And Company LLC

Lola and Company LLC designs and sells unique, personalized high-end jewelry and accessories (https://lolacompany.com/).&nbs... assist Nantucket-based Lola and Company with the protection of its trademarks and copyrights.

Med-El Elektromedizinsche Gerate

We represent Med-El in connection with its trademark matters worldwide, including contentious and non-contentious matters. Headquartered in Austria, Med-El is the industry leader in implantable hearing solutions, and has a strong tradition of advancing the technological and scientific foundation in the field of hearing implants. Our firm has a long term relationship with Med-El acting as their trademark counsel for adversarial and non-adversarial matters, as well as with the development of its patent portfolio.

MSI Global Talent Solutions

MSI provides a complete range of employee relocation and international assignment management services delivered in more than 190 countries and territories worldwide. MSI’s services are directed to employee relocation, corporate expansion, talent management, immigration, compensation and international and local tax compliance. We have represented MSI in obtaining and defending trademarks both in the United States and internationally.

New England Historic Genealogical Society

Founded in 1845, New England Historic Genealogical Society is the first such society established in the United States. NEHGS advances the study of family history through its collections, original scholarship, and research center. We support the society’s cause by protecting marks that reflect both its venerable history and its always evolving approach to genealogical study.

Sage Therapeutics, Inc.

Sage Therapeutics is a biopharmaceutical company working to develop novel medicines, based in Kendall Square, Cambridge, Massachusetts. We work closely with Sage in connection with the launch of its first products. We assist Sage with the development, protection, and enforcement of its trademarks, both in the U.S. and abroad. As part of these efforts, we also represent Sage in federal court litigation.

Vertex Pharmaceuticals Incorporated

Sunstein has been proud to be part of Vertex Pharmaceuticals’ trademark team since the company’s earliest days. Our attorneys have helped Boston-based Vertex protect and enforce its valuable trademark rights in its renowned VERTEX name, its distinctive purple triangle logo, and its important product marks, including the KALYDECO and ORKAMBI brands. These brands symbolize Vertex’s unique approach to the development of transformative pharmaceutical products. Vertex now holds trademark rights in over 70 countries and continues to expand its ground-breaking pharmaceutical discoveries to new countries. Sunstein attorneys work closely with the internal team at Vertex and are focused on ensuring that business strategy drives IP decisions. Our sophisticated understanding of the interplay of FDA and USPTO issues and timing relating to new drug names has informed our representation of Vertex.

Clients Abroad

Sunstein assists many clients outside the United States, including numerous intellectual property firms working in Japan, Germany, England and elsewhere. These firms value Sunstein’s guidance and support for their clients’ needs in the United States and abroad. Our expertise and team-based approach help de-mystify the complexities associated with the U.S. trademark application process, whether an applicant is filing a trademark application directly with the USPTO or through WIPO via the Madrid Protocol. Our forward-thinking approach is tailored to avoid problems frequently encountered in the application process. We also excel in assisting non-U.S. attorneys in developing registration strategies when they receive a substantive refusal of their client’s U.S. trademark applications. In situations like these, many clients abroad benefit from our experience and institutional knowledge.

Global Business Network, Inc. v. James Pinda

World Intellectual Property Organization (WIPO) Arbitration and Mediation Center

Sunstein represented Global Business Network, Inc., a wholly owned entity of Monitor Company Group of Cambridge, Massachusetts, in a domain name and copyright dispute with James Pinda, of Fremont, California. Our aggressive assertion of claims under the Digital Millennium Copyright Act and ICANN’s Uniform Dispute Resolution Policy caused Mr. Pinda’s website to be swiftly removed from the web, and his domain name to be transferred to our client.

Experience, Inc. v. CSO Research, Inc.

United States District Court for the District of Massachusetts

Sunstein defended CSO Research, a developer of software products for university career placement offices, against charges of copyright infringement that threatened to halt sales of CSO’s leading software product. After defeating a preliminary motion, we negotiated a settlement favorable to CSO.

Bowers v. Baystate Techs., Inc.

United States Supreme Court; United States Court of Appeals for the Federal Circuit; United States District Court for the District of Massachusetts

Sunstein represented Baystate Technologies in appealing a jury verdict that Baystate breached a “shrinkwrap” license prohibiting reverse engineering of Bowers’ software, and that Baystate’s computer-aided design software infringed Bowers’ copyright. Demonstrating the national impact of this case, thirty-three law professors and eight organizations joined in filing an amicus brief supporting our client’s position that Bowers’ breach of contract claim was preempted by the Copyright Act. Nevertheless, the Federal Circuit, in a 2-1 decision, ruled that the shrinkwrap license provision was enforceable. Despite the national attention received by this case, and a supporting brief filed by four organizations (including the Institute of Electrical and Electronics Engineers – USA), the Supreme Court of the United States declined review.

Cambridge Documentary Films, Inc. v. Jean Kilbourne and Media Education Foundation

United States District Court for the District of Massachusetts

Sunstein successfully represented Jean Kilbourne, an internationally known media critic, lecturer and writer, in a copyright and trademark infringement case. The plaintiff initiated the suit against Kilbourne seeking to prevent her use of the mark KILLING US SOFTLY in connection with her most recent documentary film, Killing Us Softly III. Kilbourne asserted counterclaims for copyright and trademark infringement. We negotiated a settlement agreement that, among other things, established that the films were derivative works based on Kilbourne’s work and could not be distributed absent a license from Kilbourne, acknowledged Kilbourne’s undisputed right to the KILLING US SOFTLY mark, and allowed her to continue distributing Killing Us Softly III.

Something Else by Peterene v. Roxbury Twain Publishing Company

United States District Court for the District of Massachusetts

Sunstein represented a small business engaged in graphics design. We secured injunctive relief and we negotiated a monetary settlement and agreement against unauthorized use of our client’s copyrighted designs.

Thayer v. John Wiley & Sons, Inc.

United States District Court for the Southern District of New York

Sunstein sued for infringement of Thayer’s copyrighted menu translator books. Shortly after we filed for a preliminary injunction, the defendant agreed to withdraw the four infringing books from the market.

Consulting Psychologists Press, Inc. v. Little Brown & Co., et al.

United States District Court for the District of Massachusetts

On behalf of Consulting Psychologists Press, Sunstein sought a preliminary injunction against the defendants who had used, in their own book, part of the copyrighted Myers-Briggs Type Indicator test, without attribution or permission. The defendants agreed to issue a revised edition of the book removing items that infringed on our client’s copyright, and paid part of our client’s attorneys’ fees.

Plumsters, Ltd. v. Converse Inc.

Sunstein represented Converse, deflecting a motion for preliminary injunction and successfully defending a copyright infringement claim related to designs used on consumer products. We obtained a settlement under which our client was licensed and authorized to make use of the allegedly infringing designs.

Lasercomb America, Inc. v. Holiday Steel Rule Die Corporation et al.

United States Court of Appeals for the Fourth Circuit; United States District Court for the Middle District of North Carolina

Sunstein obtained a preliminary injunction prohibiting further sales by the defendant company of its software program. On behalf of our client, Lasercomb, we subsequently prevailed at trial on claims of copyright infringement, breach of contract and fraud against a licensee of Lasercomb’s sophisticated CAD/CAM computer software program. The liability finding on fraud was upheld, 911 F.2d 970, and the defendant company, which had waived its appeal, was effectively foreclosed from the relevant software market.

Marling v. Ellison

United States District Court for the Southern District of Florida

Sunstein obtained for Marling, the author of books on Spanish and German cuisine, a substantial damages award and an attorneys’ fees award in a copyright infringement case. In addition, we obtained a permanent injunction prohibiting the defendant from any further marketing, sale or distribution of his infringing works.

StaffBridge, Inc. v. Gary D. Nelson Associates, Inc.

Suffolk Superior Court

Sunstein defended the largest provider of temporary staffing and personnel management in Northern California against charges that, in developing its workforce management software, it misappropriated the trade secrets of StaffBridge, its former application service provider. By calling into question the trade secret status of most of the components of plaintiff’s application and demonstrating the fundamental differences between the competing programs, the case was substantially narrowed such that a favorable outcome was achieved in mediation. On a critical point, the court endorsed our analysis and established a requirement that Massachusetts plaintiffs identify their trade secrets in detail at the earliest stages of litigation.

Brahmin Leather Works, Inc. Surette

Suffolk Superior Court

Brahmin’s success in the global marketplace as a designer and manufacturer of leather handbags and accessories rests upon its proprietary, trade secret integration of design, manufacturing processes, vendor relationships, and sales. When confronted with direct competition from a former Brahmin executive, Sunstein obtained an emergency injunction which comprehensively enforces all terms of the executive’s non-competition agreement.

Duracraft Corp. v. Holmes Products Corp.

Massachusetts Supreme Judicial Court

Sunstein argued successfully that the summary dismissal process of the anti-SLAPP statute cannot be used to abridge our client’s constitutional right to seek judicial enforcement of a voluntary, pre-existing non-disclosure agreement. The Court upheld enforcement of an employment-related non-disclosure agreement against challenge under the Massachusetts anti-SLAPP statute.

Statistical Innovations, Inc. v. Marsh, et al.

Middlesex Superior Court

In this action for violation of confidentiality and non-competition contracts, violation of license agreement, misappropriation of trade secrets and unfair competition, Sunstein successfully obtained a preliminary injunction against defendants, prohibiting them from any further use of our client’s proprietary computer software program and related confidential information.

Zango, Inc. v. Kaspersky Lab

United States Court of Appeals for the Ninth Circuit; United States District Court for the Western District of Washington

In a boost for the internet security industry, Sunstein won broad immunity for our client Kaspersky’s anti-malware products. Both the district and appeals courts extended a statutory protection for internet service providers to sellers of software that safeguards users against spyware and adware. Zango, an operator of websites providing downloadable videos and other programs, alleged that the Kaspersky software improperly classified Zango’s downloads as “adware” and thus improperly blocked potential users from downloading Zango’s programs. With the Ninth Circuit’s ruling, the “Good Samaritan” immunity of the Communications Decency Act of 1996 now accommodates certain filtering software, a conclusion which reassures the makers of anti-spyware and anti-spam tools that developing robust user protections puts them on the right side of the law.

The HipSaver Company, Inc.

United States District Court for the District of Massachusetts

Sunstein represents the HipSaver Company, an innovator in the design and manufacture of products which protect against hip fracture and newly invented products which protect against skin injury. We have represented HipSaver in two lawsuits which safeguard the marketplace integrity of its hip protector products under the Lanham Act and the Massachusetts business practices act. Significantly, we have also obtained an important judicial ruling which advances the law in the First Circuit on damages relief for willful, literally false advertising. Under this ruling, the trial court has recognized a rebuttable presumption of causation and injury where willful, literally false advertising is committed by a direct competitor in a concentrated market.

First Act Inc. v. Brook Mays Music Company, Inc.

United States District Court for the District of Massachusetts

Sunstein won a $20.7 million jury verdict for First Act in this suit for false advertising in violation of the Lanham Act, commercial disparagement and interference with contractual relations. During the five-week trial, we presented extensive expert witness testimony including in-courtroom demonstrations as proof that defendant’s statements about our client’s musical instruments were false. The global aspects of the parties’ manufacture and distribution of the products in issue posed unique challenges involving discovery throughout the United States and in China and Hong Kong. In addition, because of the harm being caused to our client on an ongoing basis, we acted quickly upon filing suit to obtain expedited discovery and a preliminary injunction against the defendant. The case is also of general interest because we established jurisdiction in Massachusetts over the Texas-based defendant by proving (among other facts) the defendant’s contact with Massachusetts through email messages sent to residents of the forum state.

$20.7 million jury verdict

Brahmin Leather Works, Inc. Surette

Suffolk Superior Court

Brahmin’s success in the global marketplace as a designer and manufacturer of leather handbags and accessories rests upon its proprietary, trade secret integration of design, manufacturing processes, vendor relationships, and sales. When confronted with direct competition from a former Brahmin executive, Sunstein obtained an emergency injunction that comprehensively enforces all terms of the executive’s non-competition agreement.

i.LAN Systems, Inc. v. NetScout Service Level Corp.

United States District Court for the District of Massachusetts

Sunstein represented i.LAN, a California computer network consulting firm, in its suit to enforce a software licensing agreement for network monitoring software. The dispute turned on cutting-edge legal issues concerning the application of the Uniform Commercial Code to software licensing, including the enforceability of so-called “click licenses” and the interplay between such standardized licenses and agreements specifically negotiated between businesses. After trial, the parties reached a settlement favorable to our client.

Antreassian v. City Council of Salem

United States District Court for the District of Massachusetts

Sunstein secured a reversal of the City Council’s rejection of a small business person’s applications for a license to conduct tours of historic Salem. Some members of the City Council objected to the content of Mr. Antreassian’s tour narrative. After unsuccessful attempts to negotiate a compromise, we challenged the Council’s action as a constitutional violation of the First Amendment. The court directed the Council to reconsider the license application, which resulted in the grant of a license to Mr. Antreassian.

Summit Tire Company v. Schlott Wholesale Tire Company

Massachusetts Superior Court, Essex County

Sunstein represented Summit Tire in its lawsuit to halt unfair competition by the principals of a company that had sold its assets and name to the plaintiff. We obtained injunctive relief against the former owners’ attempt to revive the company in direct competition with Summit Tire.

Dooley v. Companion Life Insurance Company

United States District Court for the District of Massachusetts

Sunstein successfully defended Companion Life Insurance, a disability insurer, against a multimillion dollar claim for long-term disability coverage. After trial, the Court issued a ruling for our client, finding in part that the plaintiff’s claims for disability coverage were grounded in a fraudulent scheme to misrepresent earnings.

Duracraft Corp. v. Holmes Products Corp.

Massachusetts Supreme Judicial Court

Sunstein argued successfully that the summary dismissal process of the anti-SLAPP statute cannot be used to abridge our client’s constitutional right to seek judicial enforcement of a voluntary, pre-existing non-disclosure agreement. The Court upheld enforcement of an employment-related non-disclosure agreement against challenge under the Massachusetts anti-SLAPP statute.

Brown v. Armstrong

United States District Court for the District of Massachusetts

Sunstein defended Armstrong against allegations of false advertising, tortious interference with contractual and prospective business relations, and unfair and deceptive business practices in connection with the production and advertising of our client’s golf instructional videos. We succeeded in obtaining a summary judgment. The trial court’s decision was affirmed on appeal.

Rehab Assoc. of New England v. BlueCross BlueShield of MA

Massachusetts Supreme Judicial Court

Sunstein’s successful appeal relieved our client of a multi-million dollar liability when the Supreme Judicial Court reversed an Appeals Court ruling and endorsed our argument that our client had the legal right to contract selectively with professional health care providers.

Saar v. Blue Cross Blue Shield of Massachusetts, Inc.

Suffolk Superior Court

Sunstein successfully defended Blue Cross Blue Shield in a sexual discrimination case in which the plaintiff alleged that she was terminated due to her pregnancy. We successfully obtained summary judgment on the grounds that plaintiff did not establish a prima facie case of discrimination, and that the evidence showed that her termination was based on a legitimate non-discriminatory reason.

Rector v. Fretter, Inc. et al.

Essex Superior Court

Sunstein represented the defendant, Fretter, Inc., against charges by a terminated employee that Fretter had discriminated against her on the basis of sex and sexual orientation. After a three-day trial in which Fretter set forth numerous, legitimate business reasons for her termination, the jury returned a verdict favorable to the defendants.

WGBH Educational Foundation v. Simeone et al.

United States District Court for the District of Massachusetts

Sunstein successfully fended off injunctive relief sought by WGBH against our clients, independent film producers, in a dispute over rights to certain documentary films concerning the last Czar of Russia and his family.

Charles v. Durkan Patterned Carpet, Inc.

United States District Court for the District of Massachusetts

Sunstein obtained dismissal of claims against our Georgia-based client of infliction of emotional distress, sex discrimination, harassment and wrongful discharge.

Levy v. Crawford

Massachusetts Appeals Court

Sunstein involved our client’s effort to repel a creditor’s attempt to enforce payment of her guarantee of a promissory note by attaching the home our client owned with her husband. The Appeals Court endorsed our contention that a wife’s interest in a tenancy-by-the-entirety is exempt from attachment or seizure by a creditor.

Davis v. Paolillo et al.

United States District Court for the District of Massachusetts

Sunstein represented the Chief of Police of the City of Cambridge against allegations that he and others in the City had discriminated against a terminated police officer. We obtained a judgment favorable to the defendant on all claims.

Torres v. Barclay Management Group, Inc., et al.

Suffolk Superior Court

Sunstein obtained a substantial settlement for our client after demonstrating that his severe burn injuries resulted from the negligence of a landlord and property management company in regulating the supply of hot water to his apartment building.

470 Atlantic Avenue Management Corp. v. Zar Corp. et al.

Suffolk Superior Court

Sunstein helped our client, who had an interest in the income stream from the lease of an office building, fend off the commercial tenant’s claim that the lease should be terminated because plans for a large public construction project (the “Big Dig”) allegedly hindered its efforts to profitably sublet the space.

Barovich v. Parade Publications, Inc., et al.

Suffolk Superior Court

Sunstein obtained a Stipulation of Dismissal without payment of any damages or settlement amount whatsoever of the plaintiff’s libel and invasion of privacy claims against our client for its publication of an article in Parade Magazine.

Whiteneck v. The Republican Company, et al.

Barnstable Superior Court

Sunstein successfully limited the plaintiff’s jury verdict recovery for libel and invasion of privacy to less than 4% of his claimed damages against our metropolitan newspaper client and its police reporter.

Statistical Innovations, Inc. v. Marsh, et al.

Middlesex Superior Court

In this action for violation of confidentiality and non-competition contracts, violation of license agreement, misappropriation of trade secrets and unfair competition, Sunstein successfully obtained a preliminary injunction against defendants, prohibiting them from any further use of our client’s proprietary computer software program and related confidential information.

Dane Entertainment Services, Inc. v. Belanger, et al.

Suffolk Superior Court

Sunstein obtained a preliminary injunction prohibiting the local police department from conducting raids in which they interrogated our client’s patrons and employees and seized equipment from our client’s premises.

Varrasso, et al. v. Murphy, et al.

Essex Superior Court

Sunstein obtained summary judgment of liability against the co-defendant for certain losses sustained by our client in connection with a failed real estate transaction. After trial, our client was awarded over one-half million dollars for damages and attorneys’ fees.

Kaminski v. City of Salem, et al.

United States District Court for the District of Massachusetts

Sunstein brought suit on behalf of Kaminski, an elderly school department employee, when she lost her job as a result of a state-mandated civil service job reclassification. We successfully contended at trial that the plaintiff lost her job as a result of unlawful sex discrimination arising from the efforts of city officials and union officials to preserve all positions held by males. We recovered damages including enhanced pension benefits for Kaminski, as well as an award of attorneys’ fees.