Lead defense counsel for Upsher-Smith Laboratories in Auxilium Pharmaceuticals v. Upsher-Smith Laboratories, a Hatch-Waxman patent infringement case in which we obtained a summary judgment of non-infringement of ten patents claiming a transdermal testosterone gel and method of treating hypogonadism before Judge Sue Robinson of the Federal District Court in Delaware. The opinion was filed on December 4, 2013. The technology related to claimed macrocyclic penetration enhancers for increasing the rate of passage of an androgen through the skin. We were successful in demonstrating to the Court that the case warranted an exception to the Court’s ordinary practice of declining to hear summary judgment motions in Hatch-Waxman cases.
Trial counsel in 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.
Lead defense counsel for Upsher-Smith Laboratories in a copyright, trade dress, and patent action concerning packaging for a pharmaceutical, and a related indemnification dispute. Resolved on confidential terms prior to significant litigation.
Lead defense counsel to Tornier, Inc., in Nuvana Medical Innovations LLC v. Tornier, Inc., a patent infringement action filed in the Federal District Court in Delaware concerning the Aequalis Intermedullary Nail used for shoulder fractures. The action was resolved on confidential terms prior to significant litigation.
Lead counsel for large beverage company in defense of a matter involving multiple patents. Resolved without litigation.
Lead counsel for Upsher-Smith Laboratories in ongoing actions arising under the Hatch-Waxman Act.
Counsel to a Requestor in an action naming the University of Texas at Austin under the Texas Public Information Act seeking disclosure of public records. Following several discovery motions and the depositions of records custodians, the matter was resolved by production of the requested records to our client.
Lead trial counsel defending Upsher-Smith Laboratories in a patent suit to enjoin the sale of a pharmaceutical formulation. Following a two-day bench trial on the issues of infringement, validity and enforceability of the plaintiff's patent, the Court denied a request to temporarily enjoin the client from making and selling its products. All claims asserted against our client were subsequently invalidated during an ex parte re-examination based on the same arguments and evidence we presented during the bench trial. The invalidity of the claims was summarily affirmed on appeal to the CAFC. The District Court action is Medicis Pharm. Corp. v. Upsher-Smith Labs., No. CV05-3458 (D. Az. filed October 27, 2005). The re-examination appeal is No. 2009-1291 (Reexamination No. 90/008,068).
Trial counsel in St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc. et al., No. 03-241 (D. Del., filed February 28, 2003) a case in which a federal jury in Wilmington, Delaware awarded Mr. Holdreith's client, St. Clair, $34.7 million after a finding that Canon infringed four patents relating to digital camera technology. The verdict was announced on October 8, 2004.
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. Holdreith'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.
Trial counsel in 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 his client, 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.
Lead counsel in complex patent litigation in several jurisdictions, including cross claims for infringement of seven patents on surgical methods and devices. Matter was settled on confidential terms involving cross-licenses.
Defended ev3, Inc. in an action brought by Boston Scientific Corporation and Boston Scientific Scimed, Inc. for misappropriation of trade secrets and infringement of patents related to medical devices known as embolic protection filters. Also represented ev3, Inc. in patent counterclaims against the Boston Scientific defendants involving embolic protection technology. Claims for misappropriation of trade secrets were dismissed in part. The patent claims and counterclaims were settled before trial on a confidential basis.
Lead counsel for individual inventor and related small business in defense of an action by former employer seeking to gain control of our client’s subsequent invention and resulting business. The case was resolved prior to significant litigation through our successful motion on the plaintiff’s failure to join an indispensable party, resulting in a negotiated resolution of the claims.
Obtained a ruling of federal preemption in the Ninth Circuit Court of Appeal as counsel to General Electric Company in a putative class action alleging state law claims of hearing loss by workers on locomotives. The Ninth Circuit affirmed a district court ruling that the claims were preempted under the Federal Boiler Inspection Act, and dismissed all claims against our client. Law v. General Motors and General Electric, 114 F.3d 908 (9th Cir. 1997).
Appellate counsel to Bicoastal Corporation in appeal of commercial dispute argued before the 11th Circuit Court of Appeals. Obtained summary affirmance for our client in a commercial dispute concerning an acquisition, dismissing claims by an unsuccessful bidder for an aerospace business alleging improper termination of the acquisition agreement and seeking a breakup fee. 87 F.3d 1330 (11th Cir. 1996).
Counsel to Metropolitan Airport Commission in regulatory litigation concerning administrative rules promulgated by the Commission under its statutory powers. Obtained judgment that the Commission acted within its authority, and obtained dismissal of claims challenging rules for ground transportation operators as against challenges arising under the applicable statute, as well as claims sounding in due process and equal protection. Hyland v. Metropolitan Airport Com’n, 884 F.Supp. 334 (1995).
Counsel to Wisconsin Central Railroad in regulatory litigation concerning Wisconsin’s “conductor law” governing the qualifications of conductors. Obtained a ruling that the state law challenged by our client is preempted by the Federal Railroad Safety Act. State v. Wisconsin Central Transp. Corp., 200 Wis.2d 450, 546 N.W.2d 206 (Ct. App. 1996).
Lead trial counsel for ATEC associates in contested regulatory matter relater before the State of Minnesota Office Of Administrative Hearings, resulting in significant reduction of penalties under contested Administrative Penalty Order.
Other cases include trial experience in complex, multi-million dollar patent litigation in multiple forums and before the Federal Circuit Court of Appeals. Technologies include, among others, medical devices, surgical methods, computer hardware and software, and pharmaceuticals.