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Intellectual Property Litigation and Licensing

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In less than two decades, our intellectual property practice has grown from a small group of trial lawyers to a nationally recognized and respected intellectual property trial group. In 2009, Law360 Litigation Almanac ranked Robins, Kaplan, Miller & Ciresi L.L.P. in the top 5 list of general practice firms with the largest IP practice in the United States. Also in 2009, Law360 ranked the firm #3 on its list of firms with the highest concentration of intellectual property practitioners. In 2004, The American Lawyer named us the “IP Litigation Department of the Year” for 2003, noting that our firm “hails from the heartland, but goes for the jugular.”

At Robins, Kaplan, Miller & Ciresi L.L.P., we are known for our trial and appellate experience in patent litigation matters and in patent licensing on both an individual and an industry-wide basis.

Intellectual Property Litigation

Representing both plaintiffs and defendants, we have gained decades of experience litigating both large and small cases involving virtually every kind of technology. We have litigated patents from a wide range of technology disciplines, including software, semiconductors, computer peripherals, biotechnology, pharmaceuticals, medical products, telecommunications, and industrial machinery. We are proud to have been selected to litigate patent matters on behalf of established companies such as Honeywell, Pitney Bowes, Medtronic, General Electric, General Mills, as well as many younger, growing corporations. We also represent a number of leading academic institutions, including the University of California.

Our patent infringement trial lawyers include lawyers experienced in a variety of technical disciplines ranging from biophysics to electrical engineering. Many of these trial lawyers are registered to practice before the U.S. Patent and Trademark Office. But, first and foremost, we are trial lawyers who try patent infringement cases, argue Federal Circuit appeals, structure and negotiate business resolutions of patent infringement disputes, and counsel clients on patent matters.

Licensing

Intellectual property constitutes an increasingly large share of the average business entity’s assets. It therefore becomes increasingly important for businesses at every stage of development to properly recognize, protect, maintain and, as necessary, commercialize their intellectual property. At Robins, Kaplan, Miller & Ciresi L.L.P., we have years of experience in working with businesses of all sizes to develop appropriate intellectual property management and licensing strategies designed to help realize the value of intellectual property assets. In addition, we provide counsel to our business clients regarding all forms of intellectual property acquisitions and transfers. Our focus in such transactions is on evaluating the intellectual property assets to be transferred and determining the best means for accomplishing that transfer in light of the business goals of our clients.

We have experience in all of the competition aspects of intellectual property licensing agreements, including advice on cross-licensing agreements, enforcement of IP rights, licensing agreements, patent settlements, and strategic alliances. We regularly represent IP owners in competition investigations before the antitrust enforcement agencies.

Historical Background

Our firm established its name in the intellectual property world in 1991 with a historic result on behalf of Honeywell in a case involving patent infringement of Honeywell’s autofocus patents by Minolta. The verdict of $96.3 million was historic in several respects. First, it represented the beginning of protection of U.S. intellectual property against foreign competitors. At the time, according to International Trade Commission estimates, American companies were losing $40 to $50 billion annually, almost half the U.S. trade deficit at that time, through misappropriation of technology by foreign competitors. Second, the case was a trial of a complex patent case by a general litigation firm. In the end, Minolta settled with Honeywell for $125 million, and ultimately the rest of the camera industry settled as well, netting Honeywell over $500 million.

The Honeywell case was the beginning of a run of intellectual property cases for our firm. After a jury verdict, industry wide licensing netted over $500 million in royalties. In 1995, we represented Fonar Corporation in a patent infringement trial against General Electric, involving patents on magnetic resonance imaging (MRI) machines. The jury awarded Fonar $110.5 million. After the Supreme Court denied certiorari, General Electric paid Fonar $128 million (judgment plus interest).

Our firm went on to represent Pitney Bowes in a patent infringement case against Hewlett-Packard involving patents on laser-jet printer technology. The case settled on the morning that opening statements were to be made for $400 million -- one of the largest out of court settlements at that time.

In a series of trials in 2002 and 2004 involving digital camera patents on behalf of St. Clair Intellectual Property Consultants our firm obtained verdicts of $25 million, $34.7 million, and $3 million.

In 2003, we represented Eolas Technologies and the University of California in a patent infringement suit against Microsoft regarding web browser technology for the delivery of interactive applications embedded into web pages. The jury awarded Eolas and the University of California $520.6 million in damages. In January 2004, the court entered judgment for $565.8 million, which includes the verdict plus prejudgment interest. On appeal, the Federal Circuit affirmed the finding of infringement and the damages award, and ordered that Microsoft's invalidity and inequitable conduct defenses be retried. The case settled on a confidential basis four days before the start of the invalidity trial.

Our firm also represented TVI in a patent infringement matter against Microsoft. TVI owns several patents relating to the autoplay feature in Windows. The case settled in October 2005 with less than one week before trial was to begin.

In 2005, we represented Intergraph in a patent infringement suit against Dell, Gateway and Hewlett-Packard on patents related to microprocessor system designs. The case led to a recovery of $440 million in settlements.

Also in 2005, we defended General Electric in a patent infringement action brought by General Motors involving planetary and compressor bearings used in diesel locomotive engines. The patents were declared invalid on the basis of the on-sale bar. The matter resulted in a seminal decision from the Federal Circuit regarding the scope of an on-sale bar defense. See Electromotive Div. of General Motors Corp. v. Transportation Systems Div. of General Elec. Co, 417 F.3d 1203, 75 U.S.P.Q.2d 1650 (Fed. Cir. 2005).

Additional details on each of these cases, and other cases, are listed below under “Selected Results.”

Litigation Talent

As demonstrated above, we have had results in patent infringement trials. Our lawyers are experienced in patent cases because we understand the law, we understand complex litigation, and we understand technology. Our Intellectual Property Litigation Group includes trial lawyers with extensive experience in jury trials. Many of our lawyers have tried complex patent infringement cases in federal courts throughout the country. This knowledge of juries and persuasion, along with our technical and scientific experience, is the mainstay of our effectiveness in communicating our clients’ cases clearly and persuasively, whether to a judge or jury.

Trial Teams

Our trial lawyers are supported by paralegals, science advisors and a highly sophisticated information technology infrastructure. Our firm has a team of highly skilled individuals to assist our lawyers in understanding patented technology. We identified the advantage of and have pioneered the concept of in house scientists to more efficiently serve our clients. Our scientists assist in all types of litigation, but concentrate in the area of patent litigation.

Trial technology goes to the heart of each trial team. Our trial consultants are experienced in all areas of trial logistics including courtroom installations, evidence presentation, and war room design. In addition, the trial consulting department conducts or coordinates jury focus groups. Our Trial Practice Center allows us to stage mock trials with juries to gauge likely outcomes.

The depth of our resources gives us the ability to staff a litigation team as the situation demands. At the outset of every case, our patent infringement trial lawyers develop themes, theories and an overall strategy for the trial. We also anticipate the themes, theories and defenses that will be advanced by the other side. We then pursue a course of action that is designed to prove our theories and themes and to disprove those of our adversaries. Often times, this “trial-ready” and “trial-focus” approach to pre-trial proceedings, results in an opportunity to reach resolution.

Contingent and Other Alternative Fee Arrangements

Clients may lack the financial resources to undertake potentially costly intellectual property litigation. We are willing to share the risk with our clients, and accept such cases under a variety of alternative fee arrangements tailored to the client’s individual needs. After investigation, we discuss with our clients whether such an arrangement is advisable.

Our willingness to partner with our clients and participate in the economic risks of high-stakes intellectual property litigation allows clients to vindicate their rights in a financially viable manner.

Selected Results *

The following is a selection of patent-related litigation matters that our firm has handled:

Imation Corp. v. Koninklijke Philips Elec. N.V., et al., (Fed. Cir. 2009): Convinced the appellate court to reverse the entry of judgment on the pleadings dismissing two of Imation's key counts, and instead to order judgment for Imation on the question of whether certain entities formed or acquired later qualify as "subsidiaries" that could benefit from Imation's patent license with Philips.
In the Matter of Certain Flash Memory Controllers, ITC Inv. No. 337-TA-619: Represented Imation Corporation in a case of alleged patent infringement related to flash memory technology owned by SanDisk Corporation. The technology is used in several devices, most notably portable USB memory cards. Based on prior art, the International Trade Commission determined that patent 7,137,011 was invalid for obviousness and that Imation Corporation's products do not infringe the asserted claims.
WNS Holdings LLC et al. v. Northwest Airlines Inc.: Defended Northwest Airlines, Inc. in a patent infringement suit relating to GPS and avionics technology. Specifically, Plaintiffs accused Northwest of infringing the patents through the alleged use of Automatic Dependant Surveillance, including ADS-B. After extensive discovery, a dismissal of the action was obtained, and the client secured the right to potentially recover its fees and costs in the event of any future litigation.
Great Clips, Inc. v. Hair Cuttery of Greater Boston, L.L.C. and Great Cuts, Inc.: Summary judgment granted to client, Great Clips, Inc., against declaratory judgment defendant Great Cuts which had made claims of trademark infringement following Great Clips' entry into the New England market. On February 19, 2009, the U.S. District Court of Massachusetts found that a previous settlement agreement barred Great Cuts' claims. On January 5, 2010, the U.S. Court of Appeals affirmed the previous ruling by the District Court confirming Great Clips' right to use its trademarked name throughout the United States, including the New England market.
Grantley Patent Holdings, Inc. v. Clear Channel Communications, Inc.: A patent infringement case in which a federal jury in the Eastern District of Texas awarded Grantley Corporation $66 million. The jury found that Clear Channel Communications, Inc. infringed on four of Grantley Corporation's patents related to an integrated inventory management system for radio advertising time. The jury also found that the infringement was willful. The verdict was announced on April 22, 2008. On June 11, 2008, the court enhanced the damages by more than $16.5 million, awarded prejudgment interest and entered judgment totaling more than $89 million. The case settled while on appeal under confidential terms.
Ricoh Corp. v. Pitney Bowes Inc.: Defended Pitney Bowes in a patent infringement involving communications and control within Pitney Bowes' mailing machines. The case was tried in the United States District Court for the District of New Jersey, Trenton Division, with Judge Brown presiding. The jury returned a verdict of invalidity in favor of Pitney Bowes finding anticipation of all 18 asserted claims. In addition, during trial, the Court entered summary judgment of anticipation of four additional claims. Jury decision was affirmed in a post-trial memorandum by the district court and summarily affirmed by the Federal Circuit.
Eolas Technologies, Inc. and The Regents of the University of California v. Microsoft Corporation: Represented Eolas Technologies, Inc. and the Regents of the University of California, in action for patent infringement of web browser technology for the delivery of interactive applications embedded in web pages. The case was tried in United States District Court, Northern District of Illinois, Eastern Division, Chicago, Illinois, Zagel, Judge. Jury verdict in favor of Eolas and the University of California, on issues of infringement, validity, and damages in the amount of $520.6 million. On January 14, 2004, the court entered judgment for $565,894,868 which includes the amount of the original verdict plus prejudgment interest. On appeal, the Federal Circuit affirmed the finding of infringement and the damages award, and ordered that Microsoft’s invalidity and inequitable conduct defenses be retried. The case settled on a confidential basis four days before the start of the invalidity trial.
Intergraph v. Dell, Hewlett-Packard Co. and Gateway Inc.:Represented Intergraph Corp. in patent litigation involving microprocessor system design. Recovered, to date, a total of$500 million in settlements as follows:
- Hewlett-Packard $141 million, with cross licenses;
- Dell/Intel $225 million;
- Gateway/emachines $12 million plus ongoing royalties;
- AMD $20 million plus potential future royalty profits;
- IBM $10 million plus a license to IBM's portfolio;
- Toshiba and NEC, confidential settlements
Lead Licensing campaign following litigation:
- Fujitsu $9.75 million;
- Sony $15 million;
- Acer $7.5 million; and
- Other confidential licenses
Pitney Bowes Inc. v. Hewlett-Packard Co.: Represented Pitney Bowes in a patent infringement case against Hewlett-Packard involving patents on laser-jet printer technology. The case settled, on the morning opening statements were to be made, for $400 million and other business considerations.
TVI v. Microsoft (N.D. Calif): TVI is the owner of several patents covering the autoplay feature of Windows. TVI sued Microsoft in the Northern District of California alleging that all versions of Microsoft Windows since Windows 95 infringed these patents. The case settled in October 2005 a little more than one week before trial. Microsoft took a license under the patents. All other terms of the settlement are confidential.
Fonar v. General Electric: Represented Fonar Corporation and Dr. Raymond V. Damadian in a patent infringement action against General Electric involving patents on magnetic resonance imaging (MRI) machines. At trial the jury awarded Fonar $110.5 million. The Court of Appeals for the Federal Circuit affirmed almost the entire award, ordering General Electric to pay $103.4 million, reported at the time to be the largest patent infringement jury verdict ever upheld on appeal (IP Worldwide). Fonar Corporation v. General Electric Co., 107 F.3d 1543 (Fed. Cir.), cert. denied, 118 S.Ct. 266 (1997). After the Supreme Court denied certiorari, General Electric paid Fonar $128 million (judgment plus interest).
Electromotive Division of General Motors Corporation v. Transportation Systems Division of General Electric Co., et al.: Defended General Electric in a patent infringement action brought by General Motors involving planetary and compressor bearings used in diesel locomotive engines. Summary judgment which found invalidity of the patents on the basis of on-sale bar was upheld by the Federal Circuit in Electromotive Div. of General Motors Corp. v. Transportation Systems Div. of General Elec. Co., 417 F.3d 1203, 75 U.S.P.Q.2d 1650 (Fed. Cir. 2005).
Honeywell v. Minolta: Represented Honeywell in a patent infringement case against Minolta involving patents on autofocus cameras. After a five-month trial, the jury awarded Honeywell $96.3 million. The case subsequently settled for $127.5 million. Additional litigation against other autofocus camera manufacturers resulted in total settlements of approximately $500 million.
UNOCAL Corp. v. ARCO, Chevron, Exxon, Mobil, Shell and Texaco: Represented UNOCAL in a patent infringement case over UNOCAL's patent on gasoline. Jury verdict for $69 million in favor of UNOCAL on liability and damages and court judgment also in favor of UNOCAL on defendants’ claims that patent was unenforceable. With interest and attorney fees, the judgment in favor of UNOCAL amounted to $91 million. Verdict upheld on appeal.
Tulip Computers Int’l v. Dell Computers, Inc. (D. Dell. 2003): A patent infringement action tried to a jury in which our firm represented the patent owner Tulip, a Dutch corporation. The case settled two days before going to the jury with Dell paying Tulip $49.5 million.
St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc. et al.: No. 03-0241 (D. Del., filed February 28, 2008) Represented St. Clair Intellectual Property Consultants, Inc. in a patent infringement case in which a federal jury in Wilmington, Delaware awarded $34.7 million after a finding that Canon infringed four patents relating to digital camera technology. The verdict was announced on October 8, 2004.
Honeywell Inc. v. Victor Company of Japan and U. S. JVC Corp.: Trial counsel on behalf of Honeywell Inc. in action for patent infringement of color filters in video cameras. The case was tried in the U.S. District Court, District of Minnesota, St. Paul, Minnesota, Frank, Judge. Jury verdict in favor of Honeywell for $30 million, which reflects royalties of two percent of JVC’s sales of the accused camcorders to calculate past damages for the unlicensed use of the technology.
TriStrata Technology, Inc. v. Mary Kay Inc.: Patent infringement case relating to alpha-hydroxy acid (AHA) anti-aging skin technology. Our client, TriStrata Technology, Inc., was awarded $26,359,405 in damages plus interest. The jury ruled in TriStrata’s favor on all issues of infringement and validity. The U.S. District Court for the District of Delaware in Wilmington, Del. issued a final judgment March 31, 2006 granting prejudgment and post-judgment interest to TriStrata Technology, Inc. bringing the total award to over $43 million. Case was summarily affirmed by the Federal Circuit on January 10, 2007.
St. Clair Intellectual Property Consultants, Inc. v. Sony Corp. et al.: No. 01-557 (D. Del., filed Aug. 14, 2001) a case in which a federal jury in Wilmington, Delaware awarded St. Clair, $25 million after a finding that Sony infringed four patents relating to digital camera technology. The verdict was announced on February 25, 2003. The parties entered into a license agreement two days later, the terms of which are confidential.
St. Clair Intellectual Property Consultants, Inc. v. Fuji Photo Film, Ltd. et al.: No. 03-0241 (D. Del., filed February 28, 2003) Represented St. Clair Intellectual Property Consultants, Inc. in a patent infringement case in which a federal jury in Wilmington, Delaware awarded $3 million after a finding that Fuji infringed four patents relating to digital camera technology. The verdict was announced on October 25, 2004.
LaserMaster v. Sentinel Business Systems: Represented a manufacturer of large format inkjet printers in a trade secret case. Our firm was retained just five weeks before trial and won a jury verdict of $2.2 million which is one of the largest trade secret verdicts in the jurisdiction.
Talbert Fuel Systems Patents Company v. UNOCAL Corporation: Defense of patent infringement and judicial interference action in Central District of California. Summary judgment in favor of UNOCAL, affirmed by the Federal Circuit Court of Appeals, certiorari granted, vacated, remanded by the U.S. Supreme Court. On October 28, 2003, the United States Court of Appeals for the Federal Circuit unanimously ruled in favor of UNOCAL on all issues in this matter.

* Past results are reported to provide the reader with an indication of the type of litigation in which we practice and do not and should not be construed to create an expectation of result in any other case as all cases are dependent upon their own unique fact situation and applicable law.

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