Representative Patent Litigation Cases

Exergen Corp. v. 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.

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.

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.

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.

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.

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.

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.

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.

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.

MacNeill Engineering, Inc. v. Trisport, Ltd.
United States District Court for the District of Massachusetts

Sunstein filed suit on behalf of MacNeill, one of the world’s largest manufacturers of golf cleats, for infringement of its patented golf cleat attachment system. Shortly before trial, the defendant discontinued the accused cleat design and switched to a non-infringing design. The parties settled the case shortly after trial.

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.

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