Tech & Media

 

Litigation

Patent Case Dismissed On Summary Judgment With No Discovery

Mich & Mich TGR, Inc. v. Brazabra Corp. (2016)

Plaintiff asserted its reissued patent against multiple parties.  Most settled.  But our client did not want to pay the price of the proverbial “hold-up.”  Our lawyers asserted a motion for summary judgment in lieu of an answer, and had all the claims dismissed before any discovery was taken, saving our client significant litigation fees.  We then successfully defended the decision on appeal where it was affirmed.

 

Preliminary Injunction Successfully Defeated in Trademark Case

Lateral Link Group LLC v. Habeas Corp. (2015)

Our client, an innovative web start up in the legal recruiting industry uses the name and mark Laterally to market its services.  Plaintiff, claiming this infringes its mark Lateral Link for the same services, brought suit and sought a preliminary injunction.  Trademark cases often end at this point.  But we successfully opposed the PI motion by pointing to recent appellate cases overturning prior law in trademark cases that presumed irreparable harm, and instead requires a trademark plaintiff to demonstrate irreparable harm. We also provided extensive evidence that the common term lateral is a generic term in the legal recruiting industry, and thus cannot be the basis of an infringement claim.  Result: district court denied the injunction, and our client’s business could continue while the case is being litigated.


Copyright Case Settled Without Paying Troll A Dime

BWP Media, Inc. v. Minus Inc. (2014)

A notorious “copyright troll” brought a case against our client, one of the largest chat and photo sharing websites in the world, hosting some 400 Million user posted photographs. The plaintiff has made a cottage industry of obtaining copyrights to celebrity photographs and then bringing hundreds of suits against websites where the photographs appear.

Typically, trolls exploit the expense of litigation to extract a small but painful settlement. Although such claims are generally covered by the Digital Millennium Copyright Act, proving immunity under that statute can be expensive. Our lawyers were able to determine that on the facts of the case, the plaintiff was going to have a very difficult time proving liability, even before the DMCA defense would be considered. We were then able to leverage that to arrive at a quick settlement with no payment by our client

 

Patent Case Settled Without Paying Troll A Dime

Mobile Transformation LLC Litigations (2012)

Our lawyers, representing several internet media clients, brought about a quick dismissal of a patent troll’s infringement lawsuit.  The suits accused our client of infringing a patented system and method for displaying advertisements along with video, photo and text content. The same plaintiff (troll) had previously brought some twenty suits against various media companies, many of which settled for undisclosed sums.  Our lawyers researched and analyzed the prior art, and presented arguments that the patent was not valid, resulting in a dismissal and settlement where our client did not pay the troll a dime.


Favorable Settlement In Patent Malpractice Case

Leviton Manufacturing Co. v. Greenberg Truarig (2011)

Our lawyers worked with malpractice counsel to obtain a highly favorable and sizable settlement against one of the largest U.S. law firms.  Persuasively jumping the multitude of hurdles for proving a “case-within-a-case” on complex allegations of misconduct over an extended period of time relating to both patent litigation and prosecution laid the foundation for settlement.

The case was aggressively defended by another leading trial firm, and involved almost 2 years of extensive and intensive work such as document, deposition and expert discovery plus multiple motions, during which our lawyers repeatedly obtained favorable rulings from the magistrate judge and district court judge.

This case is exemplary of Springut Law’s “IP PLUS” work, where IP needs to be blended with other fields of law, e.g., antitrust, ethics, malpractice, bankruptcy, venture capital, entrepreneurs, insurance, SOX/corporate governance, valuation/FASB.

 

Patent Marking Statute Used To Force A Lower Settlement Of Design Patent Case

Vetrerie Bruni SpA v. Shonfeld’s (USA), Inc. (2003)

Plaintiff asserted a design patent for a decorative bottle.  The accused item was only a small part of our client’s line, so it did not mind discontinuing that one item.  But settlement talks foundered when the plaintiff demanded an exorbitant payment for past sales.  Our lawyers relied on the patent marking statute – which requires the item to be marked with the patent number, or else damages are limited to the time after actual notice of the patent.  This legal argument (and the spectre of a partial summary judgment on the issue) convinced the plaintiff to make a substantial cut in its settlement demand.  A settlement agreement was then easily reached.

 

Successful Litigation of Chemical Process Patents

E.I. DuPont de Nemours & Co. v. Millenium Chemicals, Inc. (1997)

 We successfully defended a suit involving patents for titanium dioxide pigments.  The suit eventually settled for favorable terms.

 

Expedited Restraints Obtained Stopping Theft of Trade Secrets Concerning Chemical Manufacturing Processes

SCM Chemicals, Inc. v. Benning and Kerr-McGee Corp.

When our client’s employee threatened to appropriate trade secrets about our client’s method of manufacturing titanium dioxide to a competitor in Saudi Arabia, where it would be much harder to obtain relief from later acts of misappropriation, we expeditiously moved to obtain temporary restraints and contain the problem at its inception.

Other Cases

Honeywell International Inc. v. Electrolux Home Products, Inc.

Negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding turbidity sensor technology used in home appliances.

Honeywell International Inc. v. Gollomp

Negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding ownership of intellectual property rights in air filter technology.

Datastrip International Ltd. v. Symbol Technologies and  Datastrip International Ltd. v. Intacta Technologies

Where the plaintiff-patent owner was represented in patent litigation involving two-dimensional bar-code technology.


Patent Prosecution

Kerr McGee Patent Successfully Opposed In European Patent Office

We prepared and caused to be filed opposition papers in the EPO that resulted in the revocation of EP 0 565 342, which was assigned to Kerr McGee and directed to a titanium dioxide pigments.

We won on appeal to the Board of Patent Appeals and Interferences U.S. Patent Number 6,656,290.

We successfully appealed an inorganic soldering technology finally rejected by the United States Patent Office.