OUTCOME: Summary judgment of no infringement for my client
I represent one of the defendants, Federal Signal Corporation, in a case brought by Cooper Notification Inc. for infringement of a patent involving an emergency messaging system. We shared the expense...s of a re-examination with the co-defendants. The PTO rejected some of the claims of the Cooper patent in the re-examination process. Cooper decided to drop those claims from the lawsuit.
We then relied in part on the PTO’s construction of the allowed claims to support a summary judgment motion for noninfringement. In early 2012, the district court granted summary judgment of no infringement before trial. Cooper has taken an appeal of that decision, which is pending.
The underlying case involved copyright infringement and related business claims involving designs of scented candles and other giftware. The president of the plaintiff, Mostly Memories, made a series ...of admissions at her deposition that proved the verified complaint was not true in critical respects. Mostly Memories' counsel asked that the deposition be stopped, in exchange for voluntarily dismissing the entire complaint including copyright infringement claims involving 47 works.
Mostly Memories' counsel then moved for a voluntary dismissal with prejudice based in large part on a lack of credibility of Mostly Memories' own president. The district court granted the motion and dismissed the plaintiff's claims with prejudice. Mostly Memories soon moved to vacate its voluntary dismissal, apparenbtly changing its. The court denied this motion.
The district court denied a requested award of fees and sua sponte dismissed For Your Ease Only's counterclaims, ending the case.
Mostly Memories then moved to reconsider the denial of the motion to vacate, but its motion was denied.
Mostly Memories appealed the denial of its motion to vacate. On motion of For Your Ease Only, the appeal was dismissed because it was too late. Mostly Memories' motion to reconsider filed before the district court did not extend the deadline for appeal.
For Your Ease Only appealed the denial of fees and dismissal of its counterclaims. The Seventh CIrcuit sided with For Your Ease Only on both issues. It found For Your Ease Only was the prevailing party under the Copyright Act, and thus was entitled to fees even though the plainitff voluntarily dismissed its claims. It also found no grounds to dismiss For Your Ease Only's counterclaims, and reinstated them.
Intellectual property
Advantus Capital Management et al. v. Aetna, Inc.
N/A
OUTCOME: Preliminary injunction granted
Represented plaintiff owner of ADVANTUS trademark for investment-related services. Moved for preliminary injunction to stop Aetna from using ADVANTUS for health plan-related services. After showing re...latedness of parties' services, secured immediate and complete preliminary injunction against Aetna's recent launch of the ADVANTUS brand. Case then settled.
Intellectual property
Susan Maxwell v. J. Baker Meijer Inc., Pamida, Angel-Ettes of California, Dollar General, Family Dollar, et al.
Rerpesented plaintiff inventor of a patented shoe connection system against several discount chain stores and their vendors. Tried case vs. Angel-etts of California to jury verdict of infringement, wi...llful infringement, and a royalty of 21 cents per pair of shoes. All jury findings upheld in post-verdict motions and on appeal at the Federal Circuit. Cases against several other discount stores and vendors settled over the course of several years. Patented system used on shoes retailing for an estimate $2 billion+.
Patent infringement
ePlus v. Lawson (E.D.Va. 2011)
N/A
OUTCOME: $0 owed by my client to plaintiff seeking over $30 Million
Represented defendant in case involving allegation of infringement of three electronic procurement system patents. Successfully moved to exclude plaintiff's damages expert, who sought over $30 million ...in reasonable royalty damages. Also successfully moved to bar plaintiff from seeking any damages at trial as a discovery sanction under Federal Rule 37. Case went to jury trial in January 2011 with a split verdict finding defendant's core procurement suite not infringing. On appeal, the Federal Circuit affirmed the denial of damages, and provided additional relief to Lawson, including invalidating all asserted system claims under 35 U.S.C. S. 112 and reversing infringement findings as to all but one remaining method claim.
Patent infringement
For Your Ease Only, Inc. v. Calgon Carbon Corp. (N.D. Ill.)
N/A
OUTCOME: Settled with Calgon paying my client $4.3 million and agreeing to exit the market
I represent Lori Greiner, a noted inventor and QVC celebrity who now regularly appears as a judge on Shark Tank on ABC-TV. Ms. Greiner’s business derives the vast majority of its sales through QVC, a h...ome shopping network. One of Ms. Greiner’s product lines is anti-tarnish jewelry boxes. A competitor, Calgon Carbon Corporation, also sought to sell anti-tarnish jewelry boxes on QVC. They obtained a patent on the use of an activated carbon-based material in a jewelry enclosure to inhibit tarnish. Calgon sent a letter threatening QVC with a patent infringement lawsuit if they continued buying my client’s product.
We sued Calgon for tortious interference and related claims. Calgon claimed infringement. We initiated a reexamination and then supplemented our reexamination contentions with a second request based on prior art uncovered in discovery that Calgon knew about but did not disclose. The PTO found the asserted claims of the Calgon patent invalid in view of this prior art. Calgon’s multiple appeals failed.
We requested a stay of the lawsuit, brought in federal court in Chicago, pending the outcome of the re-exam. We were able to save the costs of the litigation from that point forward until the patent was finally found invalid at the PTO.
Once the patent was found invalid, Calgon agreed to settle the case. Calgon agreed to pay my client $4.3 million to resolve the case, even though Calgon owned the patent.
