Intellectual Property Litigation - China Business Team

Recent Successes and Selected Ongoing Cases

• In August of 2010, we represented appellant Merial in its appeal to the Federal Circuit from summary judgment of noninfringement concerning a porcine vaccine for Postweaning Multisystemic Wasting Syndrome. Our efforts resulted in the reversal of the claim construction, the summary judgment of noninfringement being vacated, and the case remanded to determine infringement under the new, correct claim construction. Intervet, Inc. v. Merial Ltd. (No. 2009-1568, August 4, 2010).
• We represented an industrial equipment manufacturer before the US International Trade Commission in this investigation brought by Lincoln Electric Company. The case involved bulk weld wire packaged by our client in Mexico and China. In July 2010, the ALJ ruled in favor of the respondents, including our client. In re Certain Welding Bulk Welding Wire Containers and Components Thereof and Welding Wire, USITC Investigation No. 337-TA-686 (Judge Rogers).
• We represented AGA Medical Corporation against Medtronic Inc. Medtronic accused AGA's innovative and life-saving products of infringing three patents that Medtronic alleged to cover expandable medical devices made of Nitinol, and methods for using Nitinol devices. Medtronic had previously asserted its patents against many other medical device makers, all of whom had taken licenses. In this case, the court granted AGA Medical's motion for summary judgment of noninfringement, thus ending Medtronic's infringement claim under one patent and ending a portion of its infringement claim under a second patent. The court also granted AGA's motion to preclude Medtronic from recovering pre-suit damages on its product claims. As to the remaining patents, the case proceeded to a six-week jury trial in July 2009 on issues of alleged infringement and validity over prior art, and later, to a ten-day bench trial in December 2009 concerning the issue of whether the product patent claims are invalid for double patenting. (No defendant previously sued by Medtronic had asserted invalidity based on double patenting). Shortly after the conclusion of the bench trial on double patenting, but before any ruling by the court, Medtronic entered into a settlement agreement with AGA that gives AGA complete freedom to continue its activities without concern as to infringement liability. Medtronic, Inc. v. AGA Medical Corporation, Case No. 3:2007-cv-00567 (N.D. Cal.).
• On May 22, 2009 our team of IP litigators won a Federal Circuit decision vacating a limited exclusion order issued by the ITC against its client Epistar and remanding to the ITC for consideration of its invalidity defenses. The Federal Circuit also determined that any exclusion order could not include downstream products under the court's Kyocera decision, while acknowledging that Epistar products are almost always imported as part of downstream products. This latter decision, as well as the client’s effective redesign around the patent and the upcoming expiration of that patent, makes it unlikely that the complainant will pursue the remand. Epistar Corporation v. International Trade Commission and Philips Lumileds Lighting Company, LLC, Fed. Cir. (USITC Investigation No. 337–TA–556) 2007-1457.
• In late 2009 and early 2010, our IP litigators secured an earlier victory with a final affirmance of a judgment of noninfringement for client InComm. InComm was involved in a multi-defendant suit brought by Every Penny Counts, Inc. on claims of patent infringement related to closed gift card systems. On May 22, 2008, the district court conducted a Markman hearing and construed the patent claims in favor of our client, and soon thereafter granted summary judgment of noninfringement. Every Penny Counts, Inc. v. First Data Corporation, et al., No. 8:07-cv-01254 (M.D. FL) (Lazarra, R.) The plaintiff appealed this ruling to the Court of Appeals for the Federal Circuit, which issued an opinion affirming the district court ruling and later denied the plaintiff's petition for rehearing en banc. Every Penny Counts, Inc. v. First Data Corporation, et al., Appeal No. 2008-1434 (Fed. Cir.). The plaintiff then filed a petition for writ of certiorari at the United States Supreme Court concerning the Court of Appeals affirmance. The Supreme Court denied the plaintiff's cert. petition, thus finally determining the issue of noninfringement in favor of Incomm. Every Penny Counts v. American Express et al., No. 09-425 (U.S. S.Ct.) Last, in 2010 the district court directed Every Penny Counts to pay costs to our client.
• U.S. International Trade Commission Section 337 Investigation - In Re Certain R-134a Coolant, (Otherwise known as 1,1,1,2-tetrafluoroethane), Investigation Number 337-TA-623. We successfully represented the complainants, INEOS Fluor Americas LLC, INEOS Fluor Limited, and INEOS Fluor Holdings Limited, in their efforts to stop respondent Sinochem's importation of infringing R-134a coolant, the CFC-free refrigerant used today in automotive air conditioners. In December of 2008, Chief Judge Luckern entered his Initial Determination finding that the accused R-134a coolant infringed INEOS Fluor's patent, and recommending that the Commission issue a limited exclusion order.
• In November of 2008, our team of litigators won summary judgment of invalidity and noninfringement for our client Move, Inc. (formerly known as The HomeStore, Inc.) in a patent case alleging that its web sites infringed technology related to an information-processing system for real estate. Kevin L. Keithley et al. v. The HomeStore.com Inc. et al., No. 3:03-cv-04447 (N.D. of CA) (Illston, S.)