Intellectual Property Litigation
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 on both an individual and an industry-wide basis.
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.
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 $500 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 firm has a team of highly skilled individuals to assist our attorneys in understanding patent technology, including science advisors, a highly sophisticated information technology infrastructure, and paralegals. 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.
Strategic IP Monetization / Licensing
Many companies and investors do not fully understand the scope and value of the IP in their portfolio. In the context of our representation, our lawyers will conduct a strategic IP assessment, helping to identify and evaluate intellectual property for its hidden value.
We can help you recognize real, quantifiable value if you buy, sell, invest in or operate intellectual property-driven businesses and avoid costly and embarrassing mistakes. If you are a buyer, we will help ensure you don't overpay. If you are a seller, we will help you identify valuable IP assets that can increase a purchase price. If you are an investor, we can help you understand the strength and valuation of the portfolio company, and if you operate a business we can help you identify previously untapped revenue streams.
We also offer guidance on developing and executing strategies to monetize intellectual property. These strategic alternatives may include targeted licensing discussions, a widespread licensing campaign, a sale-and-lease back transaction, a royalty interest sale, a synthetic royalty financing, a sale of the IP assets, a sale of the company, or a restructuring that allows the IP assets to be used as collateral or as a financing vehicle. Our lawyers have significant experience in technology and transactions and will bring their extensive experience, industry knowledge and professional judgment to bear on these and other alternatives to help you make the best possible decision given your particular circumstances.
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:
Represented Honeywell Inc. in the enforcement of a series of patents related to GPS and navigational systems for use in the recreational marine industry. Filed suit in 2009 in district court; while the patents were waiting re- examination, initiated proceedings before the International Trade Commission against one named defendant, Furuno Electric Co., related to additional acts of infringement of additional patents. Negotiated a successful resolution of that matter, along with resolution of that portion of the original district court action related to that defendant.
Efficient Drivetrains, Inc. v. Toyota Motor Corp.: Represented Efficient Drivetrains, Inc. in a dispute with Toyota Motor Corp. regarding a portfolio of fuel-efficient technology patents for hybrid and plug in hybrid vehicles. The dispute was resolved on February 21, 2012 when a confidential agreement was reached, providing Toyota with freedom to operate.
Convolve, Inc. v. Dell, Inc., Hitachi Global Storage Tech., Inc., Hitachi Ltd, and Western Digital Corp.: A case in which a federal jury in Marshall, Texas, found that the defendants had willfully infringed the patent of the firm's client, Convolve, Inc. The patent relates to hard disk drive technology. The verdict was announced on July 26, 2011.
Personal Audio LLC v. Apple Inc.: A patent infringement case in which a Texas federal jury awarded our client, Personal Audio LLC, $8 million in damages after finding that Apple's iPods infringed our client's patent for an audio player that can download or receive navigable playlists. The verdict was announced on July 8, 2011. The court also awarded prejudgment interest in the amount of $4,182,331 for a total judgment of $12,182,331.
Advanced Micro Devices v. Samsung: Brought to resolution patent litigation for Advanced Micro Devices (AMD) against Samsung in the Northern District of California. The case involved allegations that Samsung's DRAM, SRAM and NAND memory products, its system logic products, and its consumer products infringed seven AMD patents covering technologies in memory architecture, processor micro-architecture, MOS-transistor fabrication and design, and user interface design for consumer products. Samsung asserted six patents against AMD's x86 processors and graphics processing units (GPUs) covering technologies in processor micro-architecture design, and semiconductor fabrication and process control. After three years of litigation and two mediations the parties resolved the matter at the close of expert discovery and dispositive motion briefing, shortly before trial. Reputed to be the 4th largest patent case settlement and/or verdict from Jan. 2010-June 2011.
Silicon Graphics, Inc. v. Advanced Micro Devices: Represented Advanced Micro Devices (AMD) in patent litigation against Silicon Graphics, Inc. (SGI) in the Western District of Wisconsin. The case involved three patents in the areas of graphics processing. The District Court granted summary judgment of non-infringement on all three patents. The summary judgment was also based on a license SGI granted to Microsoft. The case was appealed to the Federal Circuit. AMD sustained two-thirds of the non-infringement issues appealed. The case was remanded to the District Court for resolution of remaining issues as to 5 claims on one patent. The case resolved shortly before trial after 37 motions-in-limine were filed by AMD.
Juniper Networks v. Shipley, Fed. Cir. No. 2010-1327: Defended inventor in a false patent marking case brought under 35 USC sec. 292 in the Northern District of California. Case dismissed under Rule 12(b)(6) for failure to state a claim, dismissal affirmed at the Federal Circuit on April 29, 2011.
Digital Sun v. The Toro Company: Obtained summary dismissal of complaint asserted against The Toro Company, alleging violations of the federal antitrust laws (Sherman and Clayton Acts), as well as California unfair business practices and common law fraud. The complaint involved smart sprinkler technology, and arose out of Toro's consideration of a potential business relationship with the named plaintiff regarding that technology, including the licensing of certain intellectual property related to that technology. The issues presented in the motion to dismiss included the plausibility of the allegations under the standard set forth in the Supreme Court's decision in Twombly, as well as the intersection between the antitrust and patent laws. The dismissal briefing focused on key points in the related documentation and dealings which confirmed the business reality existing between the parties, thereby overcoming an otherwise complex set of allegations presented in the complaint. The matter settled shortly after the summary dismissal.
Imation Corp. v. Koninklijke Philips Elec. N.V., et al., 586 F.3d 980 (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.
RealSource, Inc. v. Best Buy Co., et al.: Trial and appellate counsel for Best Buy in
RealSource, Inc. v. Best Buy Co.,
et al. involving patent claims asserted in U. S. District Court in Austin, Texas. The plaintiff alleged Best Buy's gift cards infringed its patent, and sought more than $32 million in damages. Summary judgment was granted. The judgment was affirmed by the Federal Circuit on June 23, 2008.
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.
Andersen v. Pella Corp. et al: Represented plaintiff Andersen Corporation in overturning a district court decision granting the defendants summary judgment and finding that claims of the asserted patent were invalid as obvious. The Federal Circuit'sdecision was one of the first post-
KSR District Court findings of obviousness to be reversed by the Federal Circuit. The Supreme Court denied the defendants' petition for certioriari. 2007-1536, 2008-WL4927431, (Fed. Cir. Nov. 19, 2008), cert. denied.
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.
- 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.
- 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).
- Luigino's, Inc. v. Robert Peterson and IBP: Represented Robert Peterson, the CEO of IBP, and the company, in the defense of a $500 million theft of trade secret, breach of fiduciary duty and breach of contract case. The district court dismissed the case on a motion for summary judgment shortly before trial, a decision that was affirmed on appeal. Luigino's, Inc. v. Peterson et al., 317 F.3d 909 (8th Cir. 2003).
- 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
- 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).
- 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.
- Union Oil Company of California ("UNOCAL") v. Atlantic Richfield Company, et al.: 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 (affirmed, 208 F.3d 989 (Fed.Cir. 2000).
- 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. Fuji Photo Film, Ltd. et al.: Trial Counsel in St. Clair Intellectual Property Consultants, Inc. v. Fuji, Ltd. et al., No. 03-241 (D. Del., filed February 28, 2003) a case in which a federal jury in Wilmington, Delaware awarded Mr. Schutz's client, St. Clair, $3 million after a finding that Fuji infringed four patents relating to digital camera technology. The verdict was announced on October 25, 2004. After a long and tortured post-trial history the verdict was reversed by the Federal Circuit on a claim construction issue.
- 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.
- 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 U.S.Court of Appeals for the Federal Circuit unanimously ruled in favor of UNOCAL on all issues in this matter.
Litigation Practices > Intellectual Property Litigation