RECENT SOBEL & FELLER SUCCESSES AND
Copyrights, Trade Secret, and Unfair Competition Litigation
Business and Commercial Litigation
New and Noteworthy:
- We won a Federal Circuit appeal on behalf of Motorola Solutions. After dismissing all patent infringement claims on summary judgment in a case involving hand-held mobile computers, the the EDTX district court denied sanctions for frivolous litigation by the plaintiff, and we appealed to the Federal Circuit. In a rare decision, the Federal Circuit reversed and held that the plaintiff must be sanctioned because its patent claim construction was contrary to the evidence and proper legal standards. This decision, which was reported in the legal press as well as in outlets such as Bloomberg.com and BusinessWeek.com, will serve as an important tool for companies facing frivolous patent infringement lawsuits.
(Read the Fed. Circuit Opinion)
- We filed a petition for inter partes review before the Patent Trial and Appeal Board requesting a trial to invalidate claims in a patent that had been asserted against our client Motorola Solutions.
- We are defending Society Awards and Bluestone Designs & Creations, Inc., designers and manufacturers of high end custom awards and recognition products, in a dispute involving the manufacturing and sale of the Emmy statuette brought by a former supplier of the award.
- We successfully pursued a case on behalf of a software developer in the mortgage analytics field, asserting claims of misappropriation of trade secrets involving computer software and know-how, and related breach of contract by a former employer.
- We successfully defended a patent troll case brought against our client involving energy management solutions.
- We are working with an orthopedic surgeon to commercialize his invention involving a device for treating compression fractures in the spine. The device is being manufactured and is expected to be released for sale around mid-2013.
- We represented GLT Technovations and The Grandoe Corporation in litigation against Fownes Brothers, involving issues of misappropriation of trade secrets, unfair competition, trade defamation and related claims, in connection with the development and marketing of touchscreen-enabled gloves. The case was settled on confidential terms.
- We recently brought suit on behalf of an orthopedic surgeon against a major U.S. manufacturer of medical devices, asserting claims of unfair competition and breach of a non-disclosure agreement, in connection with the development of a device for treating compression fractures in the spine. The case was settled on favorable terms.
- We are representing Motorola Solutions in a patent infringement case brought by a non-practicing entity in the Eastern District of Texas, relating to digital picture frames.
- We recently represented a lighting company in defending claims of trademark infringement. We helped secure an early dismissal and resolution of the case on favorable business terms for our client.
- We recently resolved a patent litigation brought by a non-practicing entity against our client, a major publishing and media company, negotiating a favorable settlement for substantially less than the cost of litigation after developing and presenting significant legal and technical defenses to the plaintiff.
- On behalf of our client Motorola Solutions, we were successful in forcing an early and complete dismissal of patent claims brought by the plaintiff in the Eastern District of Texas, relating to keyboard layout on portable devices. We marshaled prior art that clearly would invalidate the asserted patent, and presented it in detailed form at the pleadings stage. We saved Motorola Solutions substantial legal fees.
- We represented Motorola Mobility in litigation against Apple as co-counsel responsible for obtaining discovery from and depositions of several chip manufacturers, relating to wireless protocols and related functions in chips used within accused smart phones.
- On behalf of our client Motorola Mobility, we were successful in obtaining summary judgment of non-infringement in patent litigation brought in the Eastern District of Texas, involving methods of communicating over the internet.
- We represented Psion Corp. (now part of Motorola Solutions) against a non-practicing entity in the Eastern District of Texas, that accused Psion's portable computer terminals of infringing patents related to wireless communication encryption. We secured a dismissal of the claims early in the case.
- We represented a developer of medical devices used for non-invasive gastrointestinal surgical procedures in a patent infringement suit pending in the Eastern District of New York. The suit was resolved during the discovery phase.
- We represented a manufacturer of bonded silicone caps used for test tubes, in a patent infringement action brought by a competitor in the Northern District of New York. The case settled on favorable terms.
- We have and are currently representing a shoe manufacturer accused of infringing patents that are directed to timers and flashing lighting circuitry embedded in sneakers and other footwear.
- We successfully represented a jewelry distributor against claims of patent infringement in an action filed in the Southern District of New York, using invalidity arguments to obtain a dismissal of claims with a nominal payment of money.
- We represented several defendants against a non-practicing entity that asserted a portfolio of patents related to computer systems used for boating. We successfully resolved the cases early on in our clients' favor, in one instance convincing the plaintiff to dismiss the case for no payment and in another for a nominal payment.
- We successfully defended a design patent case on behalf of a home product manufacturer. We convinced the plaintiff to drop its infringement claims before having to answer the complaint, by locating prior art that provided clear evidence invalidating the plaintiff's patent. This saved our client the cost of a protracted litigation.
- We successfully defended a manufacturer of a kitchen device and related parties against claims of patent infringement. We located evidence that clearly invalidated the asserted patent and obtained a consent decree of invalidity.
- We are working with an orthopedic surgeon to commercialize his patent-pending invention for improved treatment of vertebral compression fractures. The device is being manufactured and is expected to be released for sale around mid-2013.
- We represented a doctor-owned medical transcription company in negotiations regarding the licensing of technology relating to advances in medical record data processing and data mining.
- We have helped, and continue to help, individuals such as doctors to commercialize and license their inventions in areas involving the human spine, software-related inventions, and other areas of technology.
Patent and Other IP Counseling:
- We are providing advice regarding technology transfer and IP licensing on behalf of a company formed by a group of entrepreneurs in the high-end car care business.
- We have performed patent landscape studies for our clients to advise them of potential threats and opportunities in their industries.
- We are providing advice to technology clients in connection with their patent prosecution strategy to best position themselves for enforcement of their IP.
- We have provided, and continue to provide, patent counseling, such as invalidity and/or non-infringement analyses, and responses to cease and desist letters from third parties claiming infringement. Our clients include Fortune 100 and other companies in the cell phone, portable computer, and digital media industries, as well as manufacturers of medical devices and surgical implants, manufacturers of construction and maintenance equipment, a provider of internet-based scheduling systems, and manufacturers of various consumer products including shoes, toys, and kitchen equipment.
Copyrights, Trade Secret, and Unfair Competition
- We represented a Fortune 500 financial company asserting claims of computer software copyright infringement, misappropriation of confidential information, and unfair competition, against a direct competitor in the field of loan syndication front-office software.
- We filed suit in the Southern District of New York against an entertainment company for misappropriation of our client's idea for a console home video game.
- We filed lawsuits under "hot news" law to protect the rights of a distributor of time-sensitive movie show times and related information from misappropriation by a company that is improperly accessing and redistributing the information. The defendants quickly ceased their misappropriation as a result.
- We successfully warded off litigation on behalf of our client, a maker of movable book shelves, in response to allegations of theft of trade secrets and unfair competition.
- We successfully resolved a copyright dispute for a consulting company accused of infringing copyrights in photos, saving our client the expense of protracted litigation.
- We successfully represented musicians in a copyright dispute involving unauthorized distribution of their musical works on CD and via the Internet.
- We are advising a restaurant that has a distinctive trademark and product, in a dispute with a restaurant chain concerning infringement of our client's trademark.
- We filed suit asserting trademark infringement on behalf of a real estate investment and advisory company, against a company using a nearly identical name in an overlapping area of business. We were successful in getting the other side to change their name promptly, without further litigation.
- We represented doctors who specialize in bariatric surgery, in a trademark dispute with a hospital with which they were previously affiliated.
- We represented a company that specializes in arranging golf travel excursions in Ireland, in a dispute involving alleged internet domain name misappropriation.
- We successfully defended against and resolved a trademark lawsuit early on, brought by IMC, one of the largest marketing companies in the world. We negotiated a multi-pronged, favorable business resolution for our client, and avoided the expense of protracted litigation.
- After receiving no satisfactory response to a cease and desist letter, we filed a trademark suit on behalf of our client, a manufacturer of implants for the human spine. The complaint triggered an immediate resolution, with the defendant ceasing use of the mark.
Business and Commercial Litigation:
- We represented an individual in a dispute with his partners in a family-owned business, and helped resolve the dispute through a buy-out agreement of one of the members of the company.
- We represented a distributor of martial arts equipment in a contract dispute with an on-line retailer of martial arts equipment.
- We represented a small business owner in a dispute with his partner related to their restaurant business, resolving disputes related to present and future ownership rights as well as rights with respect to certain intellectual property assets of the business.
- We represented a product design company in connection with contract negotiations related to production of a novel timepiece.