Representative Matters

Antitrust & Competition
• • Petrolon Management, Inc. v. Howe Laboratories, Inc., et al., 1:92-cv-511 (D. Del.) and 94-7648 (3rd Cir.): Served as counsel in this matter involving trademark infringement, antitrust and unfair competition
  • Diesel Injection Service Co., et al. v. Jacobs Vehicle Systems, Inc., 98-582400 (CT Sup. Ct, Hartford Div.): Served as counsel in this matter involving allegations of wrongful termination and violations of antitrust and unfair competition laws
  • Bandag Inc. v. Michelin Retread Technologies, Inc., et al., 3:99-cv-80165, and 4:02-cv-40204 (S.D. Iowa): Served as counsel on this case involving antitrust, unfair competition and trade secret misappropriation
  • LG Electronics v. Iridian Technologies, 2:04cv00391 (D.N.J.) and 08 cv 234 (D. Del.): Served as counsel in this case involving complex commercial dispute over licensing, breach of contract, trade secret misappropriation, antitrust and unfair competition, and foreign corrupt practices claims
  • Served as counsel in multiple matters involving standards-essential patents (SEPs) and fair, reasonable and non-discriminatory (FRAND) licensing, including those specifically related to FRAND licensing of SEP intellectual property rights
Appellate
• • Petroscan A.B. v. Mobil Oil Corporation, 95-1109, 97-1583, and 97-1584 (Fed. Cir. 1995 and 1997): Served as counsel in a patent infringement action; secured appellate decision affirming summary judgment of non-infringement and subsequently secured second summary judgment of non-infringement
  • Mobil Oil Corporation v. Advanced Environmental Recycling Technologies, 01-1081, 01-1096 (Fed. Cir.): Served as appellate counsel and secured decision affirming judgment of non-infringement on all four patents in favor of client, Mobil Oil; invalidity holding was vacated by Federal Circuit as moot based on affirmance of non-infringement judgment
  • Nystrom v. Trex Company, Inc., 03-1092 (Fed. Cir.) and 09-1026 (Fed. Cir.): Represented maker of wood-polymer composite decking material, defending patent infringement action; secured summary judgment of no-infringement, which was appealed; argued appeal, and district court’s judgment was affirmed; secured second summary judgment of non-infringement (and successfully argued the appeal) when Nystrom subsequently sued a successor Trex product on the same patent claims
  • Pacific Diesel Brake Co., v. Jacobs Vehicle Systems, Inc., 2012-1193-1194 (Fed. Cir.): Represented defendant in district court and on appeal; following multi-week bench trial, secured judgment of non-infringement and/or invalidity of each claim; secured appellate decision affirming non-infringement and invalidity judgment
  • General Electric v. Raytheon Technologies, (Fed. Cir.): Represented defendant at trial at United States Patent and Trademark Office, Patent Trial and Appeal Board, and on appeal at the Federal Circuit post grant review challenges to United Technologies’ patent portfolio on geared turbofan engines and components; argued multiple appeals of final written decisions in PTAB inter partes review proceedings challenging United Technologies’ (Raytheon’s) geared turbofan engine and component patents
Business Commercial
• • Petron Petroleum Trading Company, Inc. v. Hydrocarbon Trading & Transport Company, Inc., 1:93-cv-511 (D. Del.): Represented defendant in commercial dispute involving breach of contract and unfair competition; secured summary judgment dismissing two causes of action based on Uniform Commercial Code; parties settled the remaining claim favorable to Hydrocarbon
  • Represented United Technologies and Raytheon in multiple competitive hire cases against General Electric; GE asserted claims for trade secret misappropriation based on multiple competitive hires by Pratt & Whitney, a commercial aviation engine manufacturer; successfully defended Pratt & Whitney against each of the multiple claims and developed an effective, mutually acceptable dispute resolution protocol to resolve all pending claims favorable to Pratt & Whitney and avoid future claims
Intellectual Property
• Patent

  • Allegheny Ludlum v. Nippon Steel, 2:92-cv-5940-JS (E.D. Pa.): Represented Allegheny Ludlum in multiple ex parte reexamination proceedings at USPTO BPA&I, and Allegheny Ludlum v. Commissioner of Patents, 2:92-cv-11589-ANB (W.D. Pa.): Represented Allegheny Ludlum in a patent infringement action against Nippon Steel; Nippon filed serial ex parte reexamination requests; Conducted discovery from Nippon Steel in Japan and handled motions, expert prep and reports; argued reexamination appeal and secured issuance of reexamination certificate and payment of full royalty amount requested
  • Mobil Oil Corporation v. Advanced Environmental Recycling Technologies, 1:92-cv-00351, (D. Del.), 01-1081, 01-1096 (Fed. Cir.): Represented Mobil in defending a patent infringement case brought by AERT in a multi-week jury trial; Secured a verdict that Mobil infringed none of AERT’s four asserted patents and that two of AERT’s asserted patents were invalid; argued appeal, securing a decision affirming judgment of non-infringement on all four patents; invalidity holding was vacated by Federal Circuit as moot based on affirmance of non-infringement judgment
  • Jacobs Vehicle Equipment Company v. Pacific Diesel Brake Company, et al., 3:93-cv-1093-JAC (D. Conn.) and 2012-1193-1194 (Fed. Cir.): Represented Jacobs Vehicle Systems Inc. in district court and on appeal; matter involved a patent on a method of using Jacobs’ engine brake; Jacobs filed a declaratory judgment to secure a determination of non-infringement; the claim construction hearing resulted in a construction precluding PacBrake’s claims from covering supercharging the engine cylinder on the intake stroke; after over a decade of delay, following a multi-week bench trial, secured district court judgment of non-infringement and/or invalidity of each asserted claim; argued the appeal and secured appellate decision affirming
  • Petroscan A.B. v. Mobil Oil Corporation, 1:94-cv-501-A (E.D. Va.), 95-1109 (Fed. Cir.), 1:97-cv-202-A (E.D. Va.), and 97-1583 and 97-1584 (Fed. Cir.): Represented Mobil Oil Corporation, defending patent infringement action on a method for using satellite gravimetry to identify subseafloor areas of lower density, indicating potential oil and gas deposits; secured summary judgment of non-infringement; argued and secured appellate decision affirming judgment; despite judgment of non-infringement, Petroscan prosecuted a continuation application and brought a second infringement action against the same process; secured second summary judgment of non-infringement in action under continuation patent; argued appeal and secured decision affirming in second appeal
  • In re Certain Nickel Metal Hydride Anode Materials and Batteries, and Products Containing Same, 337-TA-368 (U.S. ITC 2006): Represented Ovonic Battery Company in an International Trade Commission investigation of infringement; as the case proceeded to a hearing, each of the respondents took a license to Ovonics’ patents, resolving the investigation in Ovonic’s favor
  • Mobil Oil Company v Exxon Corp., E.D. Va., 1:96-cv-1603-A-TSE; Bamberger v. Cheruvu, Interference, 104,844 (USPTO BPA&I); Exxon Corp. v. Mobil Oil Company, H-06-cv-3795-KH (S.D. Tex.): Represented Mobil in multiple related proceedings involving patent infringement, interference and appeals; during appeal process, plaintiff and defendant merged, resulting in dismissal of all proceedings based on the Exxon-Mobil merger
  • Certain Zero Mercury Added Alkaline Batteries, Parts Thereof, and Products Containing Same, 337-TA-493 (U.S. ITC); Jackson Electric Company, Ltd. v. Gold Peak International, 1:03-cv-1317 (D. D.C.); Gold Peak (North America) Inc. v. Energizer Holdings, et al., 3:03-cv-1851 (S.D. Cal.); and GoId Peak (North America) Inc. v. Energizer Holdings, Inc., 5:03-cv-4110 S.D. Cal.): Represented defendant in ITC investigation and multiple related proceedings involving patent infringement claims; defendant settled with plaintiff for a non-royalty-bearing license and dismissal of all claims and counterclaims, in favor of plaintiff
  • BTG and Teleshuttle, LLC v. Microsoft Corporation and Apple. Corp., 3:04-2927-JW, and 3:04-2928-JW (N.D. Cal.): Represented plaintiff in patent infringement action involving a method for performing online software updates; parties mutually agreed to resolve claims favorably, with defendants paying for licenses to plaintiff’s technology
  • BTG International Ltd. v. Zimmer Holdings, et al., 1:04-cv-00085-GS (D. Del.): Represented plaintiff in matter involving acquired rights to third party’s patents for devices used in hip replacement surgery; defendant declined plaintiff’s license offer, resulting in suit brought by plaintiff for patent infringement; matter proceeded through foreign and domestic discovery and motions practice, and settled with defendant taking a license and paying plaintiff and third party
  • In the Matter of Certain Refrigerators and Components Thereof, 337-TA-632 (U.S. ITC 2008); LG Electronics Inc. v. Whirlpool, 2:08-cv-1868-GS (D. N.J.) (parallel district court action to 337-TA-632); LG Electronics v. Whirlpool Corp.,1:08-cv-00234 (D. Del.); and LG Electronics USA v. Whirlpool, 10-1093 (Fed. Cir.): Represented plaintiffs in an ITC investigation and series of related patent infringement actions asserting multiple patents; defendant counter-asserted multiple patents against plaintiff’s products; upon the conclusion of multiple proceedings, the cases were settled by mutual agreement, resulting in a cross-licensing agreement between the parties
  • Rolls-Royce v. United Technologies Corp., 1:10-cv-00457-LMB-JFA (E.D. Va.), (D. Conn.); In re Certain Turbomachinery Blades, Engines, and Components Thereof, (U.S. ITC); and United Technologies Corp. v. Rolls-Royce, 3:2010-cv-015234 (D. Conn.): Represented defendant in multiple actions related to infringement, antitrust, unfair competition and interference; upon the conclusion of multiple proceedings, court granted summary judgment of no infringement and no damages based on the design-around, and plaintiff agreed to a “walk-off” settlement
  • B/E Aerospace v. Safran Cabin Inc. f/k/a C&D Zodiac, Inc., 2:19-cv-01480 (C.D. Cal.): Represented plaintiff in patent infringement action involving multiple patents on a configuration for a space-saving aircraft lavatory; after multiple judicial and administrative proceedings, including entry of a voluntary, negotiated preliminary injunction pending resolution of the litigation, parties were able to reach an amicable settlement
  • Lead or backup lead counsel in multiple USPTO BPA&I and PTAB patent interference proceedings (determining who was the first to invent) involving polymers, polymer catalysts, methods of making polymers having specific properties, aircraft equipment, coatings for aircraft components and method of assaying asphaltenes in a refinery feedstock stream

  Trademark

  • Over 40 years’ experience as an advocate in trademark cancellation and opposition practice before the TTAB in cases involving all market segments, including consumer products, food and beverage, industrial products, and services
  • Cumberland Farms, Inc. v. Dairy Mart (D. Mass 1987): Represented plaintiff in trademark infringement and unfair competition action; secured a favorable settlement, including payment of damages and cessation of infringement
  • Pacific International Rice Mills, Inc. v. Rice Growers Association of California (S-89-cv-0419 (E.D. Cal. 1989): Represented defendant in matter involving trademark infringement action, undertaking all discovery and arguing all motions and hearings in case; settled following preliminary injunction hearing

  Copyright

  • Columbia Pictures Industries, Inc. v. Professional Real Estate Investors, Inc., 83-cv-02594, C.D. Cal., 90-55583, 90-55668 (9th Cir.) and 91-1043 (S. Ct.): Represented Professional Real Estate Investors in matter involving allegations of copyright infringement and violations of antitrust and unfair competition laws; argued the appeal in front of the United States Supreme Court, whose decision set a new legal standard for bad faith prosecution of infringement claims
  • MPSI Systems, Inc v. Control Sciences Ltd., 4:92-cv-287 (N.D. Ok.): Represented plaintiff in declaratory judgment action to establish that its code did not infringe copyright claimant’s code; managed the case through discovery and motions practice, securing favorable settlement before trial
  • Costco Wholesale Corporation v. Omega, S.A., 08-1423 (U.S.): Principal author of the AIPLA’s amicus brief on a challenging issue of copyright law, whether defendant could assert copyright to prevent importation of authorized products made by defendant and distributed by an authorized reseller in a foreign market, in violation of its distribution agreement; the Supreme Court adopted the position advocated in the AIPLA’s amicus brief
  • Humphreys v. Lessard, 1:13-cv-433-TSE (E.D. Va.): Represented defendant architect building a residential building in matter where plaintiff alleged that defendant’s architectural design infringed architectural copyright for plaintiff’s building in another state; following discovery, secured summary judgment that the asserted features were not copyrightable
  • Represented multiple defendants against claims that their use of a video or photograph downloaded from the internet that did not bear any copyright notice was not infringing; successfully resolved each of these multiple cases in a manner favorable to defendants
  • Represented dozens of clients navigating software licensing disputes, both as copyright holder and licensee, while avoiding litigation

  Trade Secret

  • In the Matter of International Arbitration Act (CAP 1443) and in the Matter of Arbitration Between FMC Corporation and Shenzhen CIMC-TianDa Airport Support Ltd., F/K/A TianDa Airport Support Ltd., International Chamber of Commerce (ICC) CAP 143A, Singapore International Arbitration Centre and FMC Corporation v. Shenzhen-TianDa Airport Support, H-98-cv-1007 LNH (S.D. Tex): Represented FMC in dispute over breach of technology transfer, license and manufacturing agreement to make aircraft passenger boarding bridges to FMC’s specification and order; TianDa misappropriated FMC’s trade secret information and began competing with FMC using FMC’s design; conducted arbitration proceeding and tried multiple-week arbitration trial in Singapore to a successful arbitral award, for breach of contract and misappropriation of trade secrets, enjoining TianDa worldwide from using the FMC trade secret technology for a period of 10 years
Personal Injury
• • Michael Mann, Ph.D. v. National Review et al., 2012-CA-008263-B (D.C. Superior Court): Represented plaintiff in defamation case against defendants; tried the case in a three-week jury trial, resulting in a plaintiff’s verdict imposing punitive damages
Product Liability
• • Oxendine v. Merrell Dow Pharmaceuticals, Inc., 83-1055 (D.C. Ct App.); Ealy v. Richardson-Merrell Dow Pharmaceuticals, Inc., 1:83-cv-3504 (D. D.C.); Richardson v. Richardson-Merrell Dow Pharmaceuticals, Inc., 1:83-cv-3505 (D. D.C.); Raynor v. Richardson-Merrell Dow Pharmaceuticals, Inc., 1:83-cv-3506 (D. D.C.); and Rosen v. Richardson-Merrell Dow Pharmaceuticals, Inc., 02-cv-0513 (E.D. Pa.): Represented defendant in 11 separate product liability cases (through jury trial and appeal) in the Mid-Atlantic region, in which plaintiffs claimed that the morning sickness medication, Bendectin, caused plaintiffs’ birth defects; served as technical lead and coordinated technical expert witnesses on scientific evidence; the leading Bendectin case was Daubert, which set the current standard for the use and admissibility of scientific evidence in U.S. federal courts