PATENT PROSECUTION

The firm represented the defendant in a matter which involved numerous claims including patent, copyright and Digital Millennium Copyright Act (DMCA) infringement. The technology at issue involved complex computer data storage equipment. In this “bet the company” case, our attorneys handled numerous dispositive motions, including Markman arguments, as well as a preliminary injunction hearing and its appeal. An appeal resulted in two landmark decisions from the Federal Circuit Court of Appeals. These opinions are the only Court of Appeals decisions interpreting the Computer Maintenance Competition Assurance Act. These opinions, along with three others, are the leading opinions concerning the DMCA.

Snap-On Technologies, Inc. v. Hunter Engineering Company
A patent infringement action involving numerous patents covering automotive repair equipment. The primary focus of the case was a complex technology known as machine vision. The case settled favorably for our client after we argued the Markman hearing and summary judgment motions.

Crown Poly, Inc. v. Bunzl, USA, Inc.
Thompson Coburn defended Bunzl in a patent infringement case involving three patents relating to produce bags and produce bag dispensers, in which plaintiff sought damages in excess of $30 million. After a Markman hearing, the court entered summary
judgment in favor of our client.

Thompson Coburn represented the defendant in this patent infringement action over toolboxes brought in federal court in Cleveland. The case settled favorably for our client on the eve of trial after the court indicated that it intended to grant our summary judgment motion as to the plaintiff's damage claims because of its failure to mark the product.

We represented the plaintiff in a “bet the company” case against a subsidiary of a large Canadian conglomerate and a subsidiary of a large German conglomerate. The firm filed a complaint seeking a declaration that certain patents were invalid and/or not infringed. Our attorneys then asserted antitrust and Lanham Act claims. Defendants filed a counterclaim seeking damages for patent infringement. Thompson Coburn was involved in all stages of the litigation. The trial lasted six months, with a verdict rendered in favor of our client. The jury also found in favor of our client on the Lanham Act claim and awarded monetary damages. The Federal Circuit affirmed the patent invalidity and non-infringement verdicts.

We became involved in this "bet the company" case after the district court had entered summary judgment against our client, finding its patent invalid. The firm’s motion for reconsideration was granted, and the court then found in our client’s favor on the summary judgment motion, concluding that the patent was valid.

CIMA v. KV Pharmaceutical
We represented KV in this patent infringement case involving the composition of prescription drugs. With approximately $30 million at stake, our attorneys defended the preliminary injunction hearing which involved extensive Markman interpretation. The court entered an order in favor of our client on the motion for preliminary injunction. The decision in favor of our client included a Markman interpretation adopting the firm’s interpretation.

William Toy v. Scottrade, Inc.
Our attorneys represented Scottrade, Inc. in this federal patent infringement suit in which the plaintiff claimed that Scottrade infringed a U.S. patent through its online trade notification and stock alerting features. Our attorneys successfully moved to have the case bifurcated into two phases, the first on liability and invalidity issues, to be followed (if necessary) by damages and willfulness. They then prevailed on a key discovery dispute, resulting in an order from the court compelling the plaintiff to produce a series of documents strongly indicating that the patent was procured through inequitable conduct. Shortly after the plaintiff was forced to produce these key documents, the case settled on very favorable terms for Scottrade.

Datamize, LLC v. Scottrade, Inc., et al.
We represented Scottrade, Inc. in this federal patent infringement action filed in the Eastern District of Texas. Plaintiff alleged infringement of two patents by Scottrade. Scottrade asserted that the patents were invalid, based in part upon certain “prior art” publications or services/products. Our attorneys successfully settled the case shortly before trial.

The firm handled a case alleging patent infringement, tortious interference and antitrust violations and involved a mechanical patent for devices used to fill pill cards. In defense of the patent infringement claim, our attorneys submitted a summary judgment brief with a video comparing the patented invention with the alleged infringing device, showing the substantially different ways that they operated. We retained an expert from the packaging industry with a machine that predated the patent and utilized the inventive elements claimed in the patent. The case was settled for a dismissal of all claims and the plaintiff's payment of our client's sanctions award.

Kawasaki Heavy Indus. Ltd. v. Bombardier Recreational Prods. Inc.
Thompson Coburn represented Kawasaki Heavy industries and its subsidiaries in major patent litigation against Bombardier Recreational Products. Bombardier first filed suit against our client in the Middle District of Florida on several patents and demanded a substantial royalty payment. We successfully petitioned the USPTO to re-examine all of the patents in suit from the Florida litigation, resulting in a Court Order staying that litigation. Simultaneously, Kawasaki filed suit against Bombardier in the Eastern District of Texas on several Kawasaki patents, thus shifting the advantage to Kawasaki. The parties settled on terms favorable to Kawasaki.

Insituform Technologies, Inc. et al. v. Cat Contracting, et al.
We represented Insituform in a patent infringement trial. This case involved lateral linings for municipal sewer systems and ultimately resulted in a multimillion-dollar damage award for our client.