Chicago, IL
Patent infringement Lawyer at Chicago, IL
Practice Areas: Patent Infringement, Litigation, Trademark Infringement
OUTCOME: Confidential Settlement
Lead counsel to Rohm Co., Ltd. in a patent case tried to a jury in Marshall, Texas. The case was settled on confidential terms after cross-examination of the plaintiff’s technical expert, shortly bef ... ore closing argument. The technology at issue was for inverter controller IC chips.
OUTCOME: Judgment for Clients
Lead counsel to Elpida Memory, Inc. in the E.D. Virginia bankruptcy court trial of the In Re Qimonda licensing dispute in 2011, and trial counsel to the joint defense group in the same case. Elpida se ... ttled on confidential terms after trial. Judgment was eventually rendered in favor of the joint defense group, with the Court finding that Section 365(n) of the Bankruptcy Act applied to preserve the licensees’ rights to Qimonda’s United States patents, notwithstanding the German estate’s administrator’s decision to terminate the licenses.
OUTCOME: Judgement for Clients
Obtained summary judgment of invalidity for indefiniteness of United States Patent No. 5,241,671 for DENSO CORPORATION and Toyota Motor Sales, U.S.A. against Encyclopaedia Britannica. The case accused ... searchsoftware implemented in DENSO navigation systems and certain Toyota cars. See Order dated September 30, 2008, Case 1:05-cv-359 (W.D. Texas, Yeakel, J.). In a second, parallel case, Paul also obtained summary judgment of invalidity of United States Patents Nos. 7,051,018 and 7,082,437 for DENSO CORPORATION, Toyota Motor Sales U.S.A. and Magellan Navigation, Inc. against Encyclopaedia Britannica on grounds of a broken chain of priority and invalidity by anticipation over published prior art. See Order dated August 3, 2009, Cases Nos. A-06-ca-578 and A-07-ca-787 (W.D. Texas, Yeakel, J.).
OUTCOME: Judgment for Clients
Obtained summary judgment of non-infringement on all claims of two patents asserted against Konica Minolta Photo Imaging U.S.A. Nonin Medical, Inc. v. Konica Minolta Photo Imaging U.S.A., et al., 381 ... F.Supp.2d 1069 (D. Minn. 2005), affirmed, 197 Fed. Appx. 940 (Fed. Cir., Sept. 14, 2006). This case involved hand-held pulse oximeters, devices that measure pulse rate and blood oxygen level by directing a beam of light through a finger and measuring the changes in a photodiode response. Through the case, Nonin sought to monopolize the U.S. market for handheld units by filing this case and a case against another manufacturer. Nonin’s damages demand was clearly directed to this end, seeking either all of Konica Minolta’s revenues or a 25% royalty. Judge Rosenbaum of the United States District Court for the District of Minnesota adopted all of K&E’s proposed claim constructions (and prosecution history disclaimers) for all contested limitations, and granted summary judgment on four separate grounds in August 2005. Summary judgment briefs available for download at 2004 WL 3370888 and 2004 WL 3370892.
OUTCOME: Judgement for Clients on Appeal
Bbriefed, argued and won an appeal for the joint defense group in Encyclopaedia Britannica, Inc. v. Alpine Electronics, Inc., Appeal No. 2009-1078 (Fed. Cir. 2009). The appeal confirmed the invalidity ... of United States Patent No. 5,241,671 for indefiniteness.
OUTCOME: Judgement for Clients on Appeal
Bbriefed, argued and won a separate appeal for a related joint defense group in Encyclopaedia Britannica, Inc. v. Alpine Electronics, Inc., Appeal Nos. 2009-1544, -1545, F.3d (Fed. Cir. 2010). The app ... eal confirmed the invalidity of United States Patents Nos. 7,051,018 and 7,082,437 over prior art due to a broken chain of priority, in a statutory construction matter of first impression in the Federal Circuit. A summary of the case appeared in Law360’s article, “Fed. Cir. Affirms Invalidity of Britannica Patents.â€
OUTCOME: Judgement for Clients on Appeal
Briefed and argued two successive Seventh Circuit appeals for a pro bono client in a Lanham Act trademark infringement case. The first appeal resulted in reversal of an erroneous summary judgment ente ... red against client in the Court below, and judgment for the client. See 297 F.3d 662 (7th Cir. 2002). A second appeal resulted in an award of attorneys’ fees. See 392 F.3d 248 (7th Cir. 2004).
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