Litigation

Sample Representations

• Mr. O’Connor litigated one of the leading cases on the doctrine of the on sale bar, The Beachcombers International, Inc. and Patrick McCarthy v. WildeWood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994), where Mr. O’Connor obtained a jury verdict of invalidity on behalf of WildeWood and successfully defended the decision on appeal. The case established that sales by a person other than the patentee and unknown to the patentee, nonetheless constitute a statutory bar if such sales occurred more than a year before the filing of the application.

Patent Infringement Cases

• Independent Ink, Inc. v. Illinois Tool Works et al., 396 F.3d 1342 (Fed. Cir. 2005). Won a Federal Circuit reversal of summary judgment dismissing antitrust claims for illegal tying of patented products with non-patented products. The United States Supreme Court overruled the presumption of market power and remanded the case for trial.
• Scieran Technologies, Inc. v. Bausch & Lomb Incorporated, D. Del. (2005). Patent infringement case involving a medical device for excising tissue in the back of the human eye. Case settled under confidential terms.
• Targetti North America, Inc. v. Electrix, Inc., C.D. Cal. (2005). Patent infringement case involving fluorescent cove lighting systems for galleries, theaters and casinos. Case settled under confidential terms.
• Systems Division, Inc. v. Teknek Electronics, LTD and Teknek, LLC, 2003 U.S. App. Lexis 3288 (Fed. Cir. 2003). Won appeal in Federal Circuit reversing District Court grant of summary judgment. On remand, won a $3 million jury verdict of patent infringement in industrial cleaning technologies.
• Martin Gardner Reiffin v. Microsoft Corporation, 214 F.3d 1915 (Fed. Cir. 2000). Wrote the appeal brief resulting in reversal of summary judgment previously obtained by Microsoft against our client. The appellate opinion stands as one of the leading cases of the Gentry Gallery v. Berkline Corp., 134 F.3d 1973 (Fed. Cir. 1998) progeny of cases.
• Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp, Inc., 123 F.3d 1445 (Fed. Cir. 1997). Obtained summary judgment against Hewlett-Packard of non-infringement of Hewlett-Packard patent based upon repair/reconstruction. Successfully defended award of summary judgment on appeal. The case is one of the leading cases of the repair/reconstruction doctrine.
• Case ID Confidential, (E.D. VA 1994). Won payment to defendants on patent infringement defense involving a multimillion dollar laptop LCD screen patent.
• Mr. O’Connor won a verdict of more than $23 million dollars for patent infringement in the case of Automotive Products PLC. v. Tilton Engineering, Inc., 855 F. Supp. 1101 (C.D. Cal. 1994). In that case, judgment also included an attorney’s fees award in excess of $3 million.
• Mr. O’Connor also won a $3 million dollar jury verdict after reversal of summary judgment against Plaintiffs and remand in the case of Systems Division, Inc. v. Teknek, 2003 U.S. App. Lexis 3288 (Fed. Cir. 2003).
• In the case of Bellcore v. FORE Systems (D. Del. 2001), named top defense victory by National Law Journal in 2000, Shekhar Vyas defended FORE against four ATM and Ethernet patents, where Bellcore dismissed two patents prior to trial. Following favorable Markman ruling on the two remaining patents, the court entered a final judgment of no infringement. The Federal Circuit affirmed one patent and reversed and remanded the other, and the case was settled after remand.
• Shekhar Vyas defended Microsoft against a video compression patent asserted by Multimedia Patent Trust (MPT) in MPT and Alcatel-Lucent v. Microsoft (S.D. Cal. 2008), and worked on ten patent counterclaims filed by Microsoft against Alcatel-Lucent. Jury returned a verdict of no infringement and awarded no damages to MPT.
• Becky Christensen won a federal jury verdict on a trade dress claim in excess of $3.6 million dollars. The victory included a permanent injunction and an award of more than $500,000 in attorneys’ fees. Perine Lowe, Inc. v. Dolly Inc. (C.D. Cal. 2003).
• Ms. Christensen won $1.08 million for a client in the dietary supplement industry and also succeeded in winning payment to Defendants in a trademark action after Plaintiffs demanded over $1 million dollars.
• Prior to joining the Firm, Paul Tauger obtained a $3.5 million dollar judgment for his client on summary judgment in Pacfab v. Sunline et al. (D.C. Arizona).
• Stephen Lobbin, in Intergraph Hardware Technologies Corp. v. Toshiba America Information Systems, Inc. et al. (N.D. Cal.), achieved a favorable Markman ruling on behalf of Defendant Toshiba, negating a claim for over $100 million in damages by Plaintiffs.
• Gary Gillen successfully defended Samsung Electronics against a patent holding company in William Reber LLC v. Samsung Electronics America, Inc. et al. (N.D. IL, 2003) for infringement claims involving wireless camera phones.

Antitrust Cases

• Independent Ink, Inc. v. Illinois Tool Works et al., 396 F.3d 1342 (Fed. Cir. 2005). Won a Federal Circuit reversal of summary judgment dismissing antitrust claims for illegal tying of patented products with non-patented products. The United States Supreme Court has remanded the case for trial.
• Caddock Electronics, Inc. v. Siemens Components, Inc. et al., (D. N.J. 1997). Successfully represented Plaintiffs in antitrust case against Siemens regarding specialized circuit breakers in telephone line systems. Case settled.
• Automotive Products v. Tilton Engineering, Inc., 855 F.Supp. 1101 (C.D. Cal. 1994). Won patent infringement and antitrust claims, which resulted in a $24 million judgment for the client, including over $3 million in attorneys fees.
• Clayton Jacobson v. Kawasaki Heavy Ind. Ltd., Japan; Kawasaki Motors Corporation, USA; and Kawasaki Motors Mfg., Corp., USA, (C.D. Cal. 1989). Successfully defended Kawasaki in antitrust case involving the “jet ski”®.

Copyright

• Case I.D. Confidential, (C.D. Cal. 2005). Defended retail clothing seller from alleged counterfeiting and trademark infringement claims and obtained dismissal of all claims before a responsive pleading was required.
• Abeshouse, dba Amity Products v. Ultragraphics, 754 F.2d 467 (2nd Cir. 1985). Obtained jury verdict in favor of Plaintiffs on a copyright infringement suit involving the Rubik’s Cube. Remanded on appeal for reduction of the jury verdict as the 2nd Circuit found that the verdict was excessive.
• Case I.D. Confidential, (2005). Protected innovative clothing designs in adolescent girls surf wear market, enhancing valuable licensing rights.
• Case I.D. Confidential, (C.D. Cal. 2004). Stopped infringement of copyrighted sales brochures in the commercial lighting fixture market which also resulted in six figure settlement to client.
• Case I.D. Confidential, (C.D. Cal. 2002). Forced dismissal of alleged copyright infringement against our client in the automobile industry before a responsive pleading was necessary.
• KK Merchandise v. BIC Enterprises, (C.D. Cal. 1994). Won a preliminary injunction against copyright infringers in retail kitchen goods market, causing settlement prior to extensive litigation.
• Case I.D. Confidential, (Federal courts nationwide). Successfully defended more than ten companies and individuals against Microsoft’s allegations of copyright infringement and counterfeiting of Microsoft software before extensive discovery.
• Interealty Corp. v. Superlative, Inc. et al., (C.D. Cal. 2001). Successfully defended client against allegations that it copied Plaintiff’s software used in its nationwide real estate business.
• Veterinary Imaging Centers, Inc., v. Sound Technologies, Inc., et al., (N.D. Ohio 2002). Successfully defended client against allegations that it copied Plaintiff’s software related to veterinary services.
• Pivot Point Intl., Inc. v. Charlene Products, Inc. (N.D. IL, 1990). Obtained summary judgment in favor of defendants after lengthy litigation involving the copyrightability of mannequins for beauty schools.

Trademark & Trade Dress Infringement

• Carlini Enterprises v. V-Twin Manufacturing, (C.D. Cal. 2006). Won the destruction of offending product, payment of damages and attorney fees by settlement prior to trial.
• Healthy Solutions Inc. v. ITV Direct (D. Mass. 2005). Won summary judgment in excess of $1.08 million for the sale of dietary supplements.
• PMI v. Thermos, (W.D. Wash. 2004). Developed successful defense for Thermos against competitor’s trade dress attack on Thermos’ successful product.
• Perine Lowe, Inc. v. Dolly, Inc., (C.D. Cal. 2003). Won a $3.6 million dollar jury verdict, including punitive damages, and attorney’s fees for trade dress infringement in the retail baby products industry.
• Focus360 v. InVision International, (C.D. Cal. 2003). Settlement of trademark infringements on the Internet in the computer imagery market.
• Case ID Confidential, (C.D. Cal. 2001). Negotiated nationwide trademark rights in the retail auto lubricant market for Fortune 500 client.
• Case ID Confidential, (C.D. Cal. 2001). Established fair use defense to alleged trademark infringement in the security enclosure market.
• Case ID Confidential, (S.D.N.Y. 2004). Convinced plaintiff to drop trade dress case in the initial stages of discovery and pay our client a substantial settlement.
• Case ID Confidential, (C.D. Cal. 1995). Successfully defended trademark infringement and unfair competition claims for personal computer OEM defeating Plaintiff’s $1 million demand and settling by payment to our defendant clients.
• St. Charles Mfg. Co. v. Mercer, 719 F.2d 380 (11th Cir. 1983). Obtained summary judgment against St. Charles and successfully defended the summary judgment on appeal. One of the leading cases on trademark infringement damages.
• Second Chance Body Armor, Inc. v. American Body Armor et al. (N.D. IL, 1996). Obtained summary judgment finding of trademark infringement for plaintiff in case between leading competitors in ballistic body armor industry.

Trade Secret, Unfair Competition, & Other unfair Competition Claims

• Case I.D. Confidential, (C.D. Cal. 2004). Won mediated settlement for twice the amount of damages for furniture design misappropriation and breach of contract.
• Case I.D. Confidential, (2001). Forced pre-litigation settlement against executives using trade secret formulas to establish competing business in the dietary supplement industry.
• Case I.D. Confidential, (2001). Stopped misappropriation of publicity rights of public figure’s name and face, preventing damage to reputation and damage to the commercial value of person’s name.
• Case I.D. Confidential, (C.D. Cal. 1999). Successful defense of trade secret formulas for perfumes and lotions, including recoupment of attorney fees.