Represented Metso Minerals, Inc., as plaintiff for patent infringement against Powerscreen Int’l. and Terex Corporation on a patent covering mobile screeners. The jury found, after a 7 week trial, that the patent was valid, enforceable and willfully infringed, and awarded damages of $15.8 million. The court doubled the damages to $31.6 million and issued a permanent injunction.
Prior to trial, represented Sun Pharma as a defendant for infringement, by the FDA filing of a generic drug application,
of a patent covering the drug pantoprazole. The preliminary injunction was denied.
Represented Metso Paper, Inc., as plaintiff for patent infringement against Enerquin Air on a patent covering a blow box used on machines for making paper. After a favorable court decision construing the claims of the patent, the defendant settled on favorable terms.
Served as lead trial counsel for Arora Board Review and various doctors in defense of claims of copyright infringement and breach of contract filed by the American Board of Internal Medicine.
Served as lead trial counsel for Triumbari Corporation in a motion to intervene and a motion to set aside a consent decree filed by Bug Juice concerning product trade dress on a plastic bottle.
Served as lead trial counsel for Oasys Mobile, Verizon Wireless, AT&T and Thumbplay in defense of a trademark infringement claim filed by Mantra Entertainment.
Served as lead trial counsel for Beachbody, LLC in prosecuting a copyright and counterfeiting case adverse to Costco Wholesale Corporation.
Served as lead trial counsel representing Jon Bon Jovi and the Philadelphia Soul Arena Football Team in prosecuting a trademark and copyright dispute.
Served as lead trial counsel for Wilmington Trust Company in largest multidistrict patent litigation suit in defense of claims of patent infringement of RAKTL concerning call processing patents.
Assisted in the IP due diligence of the $2.9 billion Altria Group, Inc. acquisition of John Middleton.
Served as lead trial counsel for the estate of the author of the song “Disco Inferno,” where we succeeded in negotiating a settlement which confirmed the author's estate was the copyright owner in the renewal rights, could appoint their own administrator of such rights, and could collect licensing fees relating to such rights.
Served as co-counsel representing National Association for Stock Car and Auto Racing, Inc., where NASCAR won a summary judgment leading to a ruling that NASCAR owns the worldwide copyrights to the NASCAR NEXTEL Cup Series Trophy. This ruling was upheld by the Third Circuit.
Served as lead counsel for a cigar manufacturer, now owned by Altria, where we won a summary judgment motion on product trade dress protection for the appearance of a cigar which led to a favorable settlement in which the opposing cigar manufacturer agreed to phase out all use of the trade dress in question.
Served as lead trial counsel for Celgene Corporation, a global biotechnology and pharmaceutical company, where we succeeded in obtaining a favorable settlement whereby a pharmaceutical company agreed to phase out all use of the term IMID.
Defended our client in a preliminary injunction motion to its right to its name in a $10 million trademark infringement claim and convincing a judge that not enough evidence existed to create a trademark challenge when our client, a top video adventure game manufacturer, was sued by another top producer of video games.
Represented Sandoz Inc. in King and Mutual v. Sandoz, 08-5974 (D.N.J.), in which Sandoz was alleged to infringe a patent concerning the muscle relaxant Skelaxin®. After an eight-day jury trial, the jury found the patent both invalid and not infringed. Both King and Mutual appealed, but then withdrew their appeal after Sandoz filed its appellate brief.
In Aventis v. Dr. Reddy’s, three of Dr. Reddy’s generic fexofenadine products were alleged to infringe a total of seven patents, four patents directed to fexofenadine formulations and three patents directed to methods of treatment using fexofenadine. After a bench trial and with several summary judgment motions filed by Dr. Reddy’s pending, the plaintiff capitulated, providing Dr. Reddy’s with a no-strings-attached covenant not to sue with respect to all asserted patents.
Designed and implemented the litigation strategy as counsel for the second generic challenger in a patent infringement case involving patentee's drug, TAMBACOR©, a heart medication with sales exceeding $150 million. Summary judgment of noninfringement was obtained in less than six months after patentee filed its complaint in the U.S. District Court for the District of Minnesota. This judgment began tolling the 180-day exclusivity period of the first generic challenger, who was still facing trial and not yet on the market. The Federal Circuit subsequently affirmed the decision and, in doing so, expedited the client's market entry by many years. The Federal Circuit's decision resulted in a leading opinion on the proper application of the Hatch-Waxman Act, Minnesota Mining & Manufacturing Co. v. Barr Labs.
Designed and implemented the litigation strategy as lead counsel for the declaratory-judgment plaintiff, a generic drug maker, in a patent infringement case involving Sanofi-Aventis’ drug RILUTEK©, before the Honorable Judge Farnan in the U.S. District Court for the District of Delaware. A preemptory declaratory judgment attack precluded patentee from relying on the statutory 30-month stay on approval, resulting in approval of the generic alternative only six months after the ANDA was filed. Impax Labs., Inc. v. Aventis Pharmaceuticals, Inc.
Defended Chi Mei Optoelectronics in patent infringement litigation involving plasma-enhanced chemical vapor deposition (PECVD) processes used to make TFT-LCDs. Jury trial on liability found no willfulness and awarded plaintiff less than 5 percent of requested damages. Plasma Physics v. Chi Mei Optoelectronics Display Corp., C.A. No. 08-1628 (E.D.N.Y).
Defended InnoLux Display Corp. in patent infringement litigation involving plasma-enhanced chemical vapor deposition (PECVD) processes used to make TFT-LCDs. Case settled on terms the client found favorable. (E.D.N.Y.).
Represented Wockhardt in ANDA litigation regarding LUNESTA®, the active ingredient of which is eszopiclone. Settled prior to trial on terms the client found favorable.
Represented Vonage Inc. in defense of a patent case in a jury trial in federal court in Kansas.
Represent relator in qui tam action involving patent false marking. Slack v. Bon Aqua International, (M.D.N.C.).
Patent infringement action representing defendant Chi-Mei Optoelectronics (CMO) relating to modules for monitor and television displays. Received summary judgment of non-infringement in favor of CMO.
Represented Fame Jeans Inc. in a trademark matter stemming from a TTAB action relating to mark for clothing. After heated discovery, prevailed on motion to dismiss one count from complaint. Subsequently negotiated multimillion-dollar settlement for Fame Jeans relating to mark.
Represented Signalization Ver-Mac in declaratory judgment patent infringement relating to smart work zones on highways. Settled the case on terms the client found favorable after summary judgment motions were filed.
Represented Vonage Holdings in a at jury trial of a patent infringement action relating to Voice Over Internet Protocol (VoIP). Settled the case on terms the client found favorable following trial.
Represented NuVox in patent infringement action relating to Voice Over Internet Protocol (VoIP). Settled the case on terms the client found favorable following substantial discovery.
Represented Peter Kiewit & Sons in patent infringement relating to fiber optic cable communications systems.Settled the case on terms the client found favorable following substantial discovery.
Represented Chi Mei Optoelectronics in patent infringement action relating to modules for monitor and television displays.
Represented CardSoft in a patent infringement action relating to point-of-sale devices. Granted Jury award in excess of $15.3 million.
Represented relator in qui tam action involving patent false marking.
Represented Chi-Mei Optoelectronics in a jury trial against a plaintiff who had received 42 licenses totaling $180-plus million in license royalties. Non-infringement found on 1 of 3 patents, reducing potential $900 million damages award to $10 million.
Represented Signalization VerMac in declaratory judgment patent infringement action relating to solar tilt and rotate features of roadside message boards. Settled the case on terms the client found favorable after discovery.
Represented Clark Capital Management Group, Inc. in filing dozens of federal lawsuits defending against unauthorized use of its NAVIGATOR marks. This is trademark infringement.
Defended Bel Fuse in a patent infringement case on integrated modular connectors which was favorably settled.
Represented Sultan Dental as accused infringer of dental fluoride foam patent. The patent was held invalid after jury trial.
Represented Cumberland (Sweet'n Low) against Monsanto (Nutrsweet) in a trade dress case for the use of the color blue on sweetener packets . Lower court ruling in our favor was affirmed by the seventh circuit.
Represented a German-based biotech company in a patent infringement action regarding a method for synthesizing nucleic acids.
Patent infringement action regarding Apotex's ANDA to make a generic version of Sanofi-Aventis' anti-cancer product TAXOTERE®, the active ingredient of which is docetaxel. Following a two-week trial, obtained an order for Apotex striking down the patents-in-issue as invalid and unenforceable due to Sanofi-Adventis' inequitable conduct in procuring the patents.
Served as lead counsel to well-known retailer of women's clothing in bringing cybersquatting claim under Lanham Act. Obtained summary judgment in client's favor, resulting in award of statutory damages, attorney fees, costs, sanctions and transfer of infringing domain name. Subsequently argued appeal in Fourth Circuit, obtaining affirmance on all grounds.
Served as lead counsel to vacuum tube manufacturer in opposition proceeding in Trademark Trial and Appeal Board. Obtained summary judgment in client's favor on issue of priority of use, resulting in dismissal of opposition and global settlement assigning worldwide marks to client.
Represented Signalization Ver-Mac, in declaratory judgment patent infringement action relating to solar tilt and rotate features of roadside message boards. Settled the case on terms the client found favorable after discovery.
Represented Vonage Holdings in a patent infringement action relating to Voice Over Internet Protocol (VoIP). Settled the case on terms the client found favorable following substantial discovery.
Represented Lockheed Martin Corp. in opposing an effort by Zoltek Corp. to substitute it as a defendant in a patent-infringement action Zoltek had originally brought against the United States stemming from the U.S.'s alleged use of Zoltek's patent in the manufacture of the F-22 fighter plane. Obtained a decision from the U.S. Court of Appeal for the Federal Circuit allowing it to seek an interlocutory appeal of a Court of Federal Claim's decision that Lockheed was not protected by government-contractor immunity pursuant to 28 U.S.C. §1498. Subsequent en banc Federal Circuit reversed trial court ruling thereby dismissing Lockheed Martin as a party.
Represented defendant Wal-Mart Inc. on appeal to the Federal Circuit. Settled the case on terms the client found favorable just prior to oral argument.
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Medicis' acne product SOLODYN® (minocycline hydrochloride).
Lead counsel for Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Endo's pain product OPANA® ER (oxymorphone hydrochloride).
Represented Apotex Inc., in a patent infringement action regarding Apotex's ANDA to make a generic version of Wyeth's anti-depressant product EFFEXOR XR® (venlafaxine hydrochloride). Settled on favorable terms during trial.
Represented Apotex Inc., in a patent infringement action regarding Apotex's ANDA to make a generic version of Sanofi-Aventis' anticancer product TAXOTERE®, the active ingredient of which is docetaxel. Following a two-week trial, obtained an order for Apotex striking down the patents-in-issue as invalid as obvious and unenforceable due to Sanofi-Aventis' inequitable conduct in procuring the patents. Successfully argued on appeal with the Federal Circuit affirming trial court decision (April 2012). Of import is that inequitable conduct defense remains viable in ANDA litigations because of this ruling.
Handled a patent infringement action regarding Apotex's ANDA to make a generic version of Pfizer's migraine product Relpax®, the active ingredient of which is eletriptan hydrobromide.
Represented Sandoz Inc. in a patent infringement action regarding Eon/Sandoz's abbreviated new drug application (ANDA) to make a generic version of Pfizer’s anti-seizure product Neurontin®, the active ingredient of which is gabapentin.
Handled a patent infringement action regarding Schwarz Pharma’s ANDA to make a generic version of Braintree Labs’ constipation product Miralax®, the active ingredient of which is polyethylene glycol. During discovery, Braintree dismissed its infringement complaint, waiving the remaining portion of the 30 month stay on FDA approval of Schwarz Pharma’s product.
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Allergan's glaucoma drops COMBIGAN® (brimonidine tartrate/timolol maleate.)
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Alcon's eye allergy product PANTANOL® (olopatadine hydrochloride).
Represented Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Merck's anti-nausea product EMEND® (aprepitant).
Designed and implemented the litigation strategy as lead counsel for defendant, a Taiwanese semiconductor manufacturer, in a patent infringement case involving DC/AC power inverters for LCD panels in portable electronic devices. The defense resulted in a judgment as a matter of law on the issues of direct and contributory infringement and plaintiff's abandonment of a $120 million-plus damage claim (jury finding of inducement was reversed on appeal).
Represented Chimei InnoLux Corporation, f/k/a InnoLux Display Corporation, in a patent infringement case involving brightness-enhancing films used in LCD devices. Plaintiff dismissed its case against our client, with prejudice, after the special master indicated he would recommend granting defendant's motion for summary judgment.
Represented our client in a patent infringement action regarding Actavis' ANDA to make a generic version of King's pain product AVINZA®, the active ingredient of which is morphine sulfate.
Represented our client, Mylan Pharmaceuticals, Inc., in a patent infringement action regarding Mylan's ANDA to make a generic version of Pfizer's cardiovascular product CADUET®, the active ingredients of which are atorvastatin calcium and amlodipine besylate. Settled prior to trial.
Represented Apotex Inc., in a patent infringement action regarding Apotex's ANDA to make a generic version of Procter's osteoporosis product ACTONEL® (risedronate).
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Abbott’s ZEMPLAR® (paricalcitol).
Represented Apotex Inc., in a patent infringement action regarding Apotex’s ANDA to make a generic version of LYSTEDA (tranexamic acid). Matter pending.
Represented Apotex Inc., in a patent infringement action regarding Apotex’s ANDA to make a generic version of ACULAR LS® (0.4% ketorolac tromethamine). Matter pending.
Represented Apotex Inc., in a patent infringement action regarding Apotex’s ANDA to make a generic version of PRISTIQ® (desvenlafaxine). Matter pending.
Represented Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Shire’s ADHD product INTUNIV® (guanfacine hydrochloride). Matter pending.
Represented Sandoz Inc., in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Roche’s VALCYTE® (valganciclovir hydrochloride). Matter pending.
Represented our client, Sandoz Inc., in patent infringement action regarding Sandoz’s ANDA to make a generic version of Helsinn’s anti-nausea product ALOXI® (palonosetron hydrochloride injection). Matter pending.
Represented our client in a patent infringement action regarding InnoPharma’s ANDA to make a generic version of Spectrum’s FUSILEV® (levoleucovorin). Matter pending.
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s cholesterol medication TRILIPIX® (fenofibric acid). Matter pending.
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s cholesterol product NIASPAN® (niacin). Matter pending.
Represented our client, Sandoz Inc., in a patent infringement action regarding Sandoz's ANDA to make a generic version of Alcon's eye allergy product PATANOL® (olopatadine hydrochloride).
Represented client CardSoft in patent infringement action against multiple defendants who manufactured and sold infringing electronic point-of-sale ("ePOS") terminals using “swipe-technology.” Successfully secured patent damages for client in excess of $15 million for CardSoft in jury trial against VeriFone Systems, Inc. and VeriFone, Inc. (VeriFone) and Hypercom Corp. (Hypercom).
Lead counsel in damage phase of a patent infringement action regarding Sandoz's ANDA to make a generic version of Pfizer’s seizure and neuropathic pain product, Neurontin®, the active ingredient of which is gabapentin.
Handled a patent infringement action regarding Sandoz's ANDA to make a generic version of Pfizer’s antifungal medication VFEND®, the active ingredient of which is voriconazole.
Handled a patent infringement action regarding Sandoz's ANDA to make a generic version of Pfizer’s antimuscarinic tablet Detrol and Detrol LA®, the active ingredient of which is tolterodine tartrate.
Handled a patent infringement action regarding Sandoz's ANDA to make a generic version of Alcon's eye allergy product Pataday®, the active ingredient of which is olopatadine hydrochloride.
Represented our client in a patent infringement action regarding Apotex’s ANDA to make a generic version of AVODART® (dutasteride). Matter pending.