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IP Litigation

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IP litigators at Steptoe & Johnson LLP know how to try cases to a jury, a judge, or an administrative panel.   Steptoe blends its litigation know-how with attorneys who have great experience in the relevant technology, commercial markets, and law, whether it be patent, trademark, copyright, trade secret, privacy, constitutional, or a combination of them – to produce winning and efficient trial teams.

Steptoe’s attorneys have tried scores of cases to judgment for Fortune 500 companies, midsize companies, and small, emerging high-tech companies.

Our partners have extensive litigation experience in courts throughout the United States and before the US International Trade Commission. They have been lead counsel in several patent infringement litigations in federal district courts across the country.  Several of our IP litigators provide trial and appellate representation of corporations in major patent litigation cases. 

Our IP litigation team is comprised of seasoned trial lawyers that have litigated a broad array of intellectual property matters ranging from patent, trademark, copyright, and trade dress infringement allegations to patent/antitrust claims. Another member of the team successfully litigated important patent interferences before the Board of Patent Appeals and Interferences, and trademark opposition/cancellation proceedings before the Trademark Trial and Appeal Board, in the USPTO.

Recent litigation cases include a successful trial in the Middle District of Alabama against Region University for infringement of the Regions mark of Regions Bank, a successful opposition to an application by Emerson Electric to register its Dirt Hog and Water Hog marks based on a family of Hawg marks of Black & Decker, and a decision of the Federal Circuit in favor of Texaco against the registration of a Clear Bottle mark by Pennzoil-Quaker State.

Our litigation experience includes:

  • Federal trial courts—Steptoe attorneys have handled hundreds of IP cases in federal court. Steve Barber, Fredric Bellamy, Tim Bickham, John Caracappa, Scott Doyle, Rebecca Edelson, Harold Fox, Michael Heimbold, Susan Koegel, Robert Kovelman, Alfred Mamlet, Roger Parkhurst, Will Pecau, Charles Schill, Stanley Schlitter, Michael Allan, Tom Barletta, David Bodney, Bill Bosch, Frank Burke, Bruce Converse, Ben Cooper, Bob Fleishman, Chris Gibson, José González-Magaz, Seong Kim, Alice Kipel, Peter Kozinets, Paul Lall, Rachel Marmer, Peter Meyer, Meredith Moss, Mark Neubauer, Brooke Quist, Herb Shelley, Nick Wallwork, Roger Warin, Peter Wellington, Seth Watkins, Scott Watkins, Jamie Beaber, Andrew Chen, Paul Gennari, Dan Girdwood, Dylan Ruga, Whitney Winston
  • Section 337 matters—Steptoe has one of the leading Section 337 practices and has handled over 85 Section 337 cases. Charles Schill, Alice Kipel, John Caracappa, Scott Doyle, Tim Bickham, Steve Barber, Susan Koegel
  • Appellate litigation—Steptoe IP attorneys regularly represent clients in appellate courts, including successful Supreme Court representations in Dastar v. Twentieth Century Fox, and Cardinal Chemical Co. v. Morton Intl. Inc.

Representative Matters

Current Patent Litigation Cases

  • Gemtron Corporation v. Saint-Gobain Corporation (W.D. Mich.) – Representing Gemtron in a patent infringement action involving refrigerator shelves; prevailed at a jury trial; appeal pending.
  • Abbott Laboratories et al. v. Biovail Laboratories International SRL et al. (N.D. Ill.) – Representing Laboratories Fournier S.A., an innovator pharmaceutical company, in a patent infringement action under the Hatch-Waxman Act based on Biovail’s filing of an Abbreviated New Drug Application to market a generic version of TriCor® 48 mg and 145 mg products.
  • Elan Pharma International Ltd. et al. v. Biovail Laboratories International SRL et al. (D.N.J.) – Representing Fournier Laboratories Ireland Ltd., an innovator pharmaceutical company, in a patent infringement action under the Hatch-Waxman Act based on Biovail’s filing of an Abbreviated New Drug Application to market a generic version of TriCor® 48 mg and 145 mg products.
  • Abbott Laboratories et al. v. Teva Pharmaceuticals USA, Inc.  (N.D. Ill.) – Representing Laboratories Fournier S.A. in a patent infringement action under the Hatch-Waxman Act based on Teva’s filing of an Abbreviated New Drug Application to market a generic version of TriCor® 48 mg and 145 mg products.
  • Elan Pharma International Ltd. et al. v. Teva Pharmaceuticals USA, Inc. (D.N.J.) – Representing Fournier Laboratories Ireland Ltd. in a patent infringement action under the Hatch-Waxman Act based on Teva’s filing of an Abbreviated New Drug Application to market a generic version of TriCor® 48 mg and 145 mg products.
  • Balboa Instruments, Inc. v. Presair, LLC (C.D. Cal.) – Representing Balboa in a patent infringement action concerning spa controllers.
  • Felix v. American Honda Motor Co., Inc., et al. (Federal Circuit) – Obtained summary judgment in district court for American Honda Motor Co., Inc.; appeal pending.
  • LMP Patent Corp. v. JP Moprgan Chase & Co. et al. (E.D. Tex.) – Representing Regions Bank in a case involving certain payment services.
  • Trover v. Regions Bank (E.D. Tex.) – Representing Regions Bank in patent litigation involving bank security systems.
  • Stambler v. Regions Bank (E.D. Tex.) – Representing Regions Bank in patent litigation involving secure on-line transactions.
  • MHL Tek v. American Honda Motor Co., Inc. (E.D. Tex.) – Representing American Honda Motor Co., Inc. in patent litigation involving tire pressure sensor monitors.
  • Sorensen Research & Development Trust v. Alltrade Tools (S.D. Cal.) – Defending Alltrade Tools in a patent suit concerning injection molding method involving a common mold part with separate complementary mold parts.  
  • VData v. Aetna (D. Minn.) - Representing Aetna in patent infringement litigation involving patents relating to bar code technology.  
  • Bright Solutions v. multiple accused infringers (E.D. Tex.) – Representing Bright Solutions, Inc., in a patent infringement action against multiple accused infringers of Bright Solutions patents on air conditioner leak detection equipment and methods. The litigation is pending in the US District Court for the Eastern District of Texas. 
  • Abbott Laboratories et al. v. Teva Pharmaceuticals USA (D. Del.) – Representing Laboratories Fournier S.A., an innovator pharmaceutical company, in antitrust litigation brought by generic drug manufacturers, direct purchasers, and indirect purchasers. The antitrust claims related to prior patent litigation and marketing practices.

Current Trade Secrets and Unfair Competition Cases 

  • StarTrak Sys. Inc. v. Satamatics, et al. (D. N.J.) – Defeated motion for preliminary injunction following evidentiary hearing in a trade secrets matter involving satellite and software technology.

Completed Patent Litigation Cases

  • Media Digital v Clarion et al. (E.D. Tex.) – Defended Clarion in patent litigation involving audio entertainment systems.
  • Web Telephony v. Vonage (E.D. Tex.) – Defended Vonage in patent suit involving telephony technology.  
  • Mobile Micromedia Solutions v. Nissan North America (E.D. Tex.) – Defended Nissan North America in a patent suit related to microprocessor technology.
  • IPT v. Motorola, Inc. (N.D. Ill.) – Defended Motorola in a patent suit involving cell phones.
  • Rates Technology v. Arbinet (S.D.N.Y.) – Defendant Arbinet in a patent suite involving Internet telephony.
  • Traffic Information, LLC v. Honda et al. (E.D. Tex.) – Represented Honda in a patent case involving in-vehicle navigation systems.
  • Ronald Katz Licensing v. Amtrak et al. (E.D. Tex.) – Represented Amtrak in patent case relating to automatic telephone call processing technology. 
  • Adamasu Gebre v. Clarion et al. (D. Utah) – Represented Clarion in a patent case involving touch screen technology.
  • Simpleair Holdings, Inc. v. m-Qube, Inc. et al. (E.D. Tex.) – Represented m-Qube (VeriSign, Inc. subsidiary) in patent litigation involving telecommunications and Internet technology.
  • Mobile Micromedia Solutions v. General Motors (E.D. Tex.) – Represented General Motors in a patent suit related to microprocessor technology.
  • Wright Metal Products Inc. v. American Honda Motor Co., Inc. (D. S.C.) – Defended American Honda Motor Co., Inc. in patent litigation involving steel storage crates.
  • Production Automation Inc. v. FKI Logistex Inc. (E.D. Va.) – Defended FKI Logistex Inc. in a patent suit related to material handling equipment. Case settled favorably for FKI.
  • Felix v. American Honda Motor Co., Inc., et al. Civil Action No. 05-2525-CM (D. Kan.) – Represented American Honda Motor Co., Inc. in a case involving the In-Bed Trunk of the Honda Ridgeline. 
  • Laboratoires Fournier S.A. – Represented Laboratories Fournier S.A., an innovator pharmaceutical company, in multiple Hatch-Waxman patent infringement actions against several generic drug manufacturers.
  • Vonage v. SBC et al. (N.D. Tex.) – Represented plaintiff, Vonage in 3 patent cases against Sprint, SBC and Nortel involving voice compression technology. Cases settled.
  • AT&T v. Vonage (W.D. Wisc.) – Defended Vonage against AT&T with respect to one patent involving VoIP technology. Case settled.
  • Vonage v. Nortel (D. Del.) – Represented plaintiff Vonage in Declaration Judgment action with respect to 3 Nortel patents covering VoIP technology. Case settled.
  • Verizon v. Vonage (Fed. Cir & E.D. Va.) – Represented Vonage in its patent infringement case brought by Verizon Communications, Inc. Case settled following trial and appeal.  
  • Midtronics, Inc. v. DHC Specialty Corporation (N.D. Ill.) – Represented defendant DHC Specialty Corporation against accusations of infringing two patents relating to automotive battery tester technology. Settled prior to trial.
  • Macrovision Corporation v. Motorola, Inc. (N.D. Cal.) – Represented defendant Motorola against 7 patent issued by Macrovision involving analog copy protection technology. Settled prior to trial. 
  • Henry-Griffitts, Inc. v. Roger Cleveland Golf Company, Inc. et al. (S.D. Cal.) – Won stipulated judgment after successful Markman hearing in the district court, and prevailed for Cleveland Golf on appeal at Federal Circuit.
  • Comsat v. US (US Cl. Ct.) – Represented Stratos in a proceeding where a competitor alleged that telecommunications service infringed a patent. Case settled on favorable terms.
  • XFactor LLC and Jack Hamm v. Roger Cleveland Golf Company, Inc. (D. Colo.) – Defended Cleveland Golf in alleged design patent, trade dress and trademark infringement case to stipulated dismissal with prejudice.
  • Nutratech, Inc. v. Syntech (SSPF) International, Inc., (C.D.C.A. Case No.: CV06-3709 GAF(SSx)) – Represented Nutratech in the patent infringement litigation.

Completed Trademark Litigation Cases

  • Regions Asset Co. et al v. Regions University (M.D. Al. 2008) – Represented Regions Bank in a trademark case of first impression concerning Southern Christian University’s change of its name to “Regions University.” Regions Bank claimed the name Regions University infringed and diluted its Regions brand.  After a week long trial that began on January 14, 2008, but before the Court could issue an opinion, the defendant conceded infringement and dilution and a Final Judgment by Consent was entered which immediately barred the defendant from using the Regions name in advertising, promotion and marketing and required defendant to change its name.
  • Franck Muller USA, Inc. v. Yafa Antique Jewelry Inc. et al (S.D.N.Y. 2007) – Represented the United States licensee for Franck Muller watches in a lawsuit alleging trademark infringement and unfair competition suit relating to the gray market trafficking of Franck Muller watches.  On December 7, 2007, a federal court issued the last of several rulings barring 11 retailers from engaging in this illegal activity in the United States, Canada and the Caribbean. 
  • Major League Baseball Properties v. Salvino – Represented Major League Baseball Properties in a case brought in the Southern District of New York concerning the use of Major League Baseball team colors and city names for toy plush animals. The action ended with a settlement favorable to MLBP.
  • New Sensor Corporation v. CE Distribution, 367 F. Supp. 2d 283 (E.D.N.Y. 2005) (attorneys’ fee award); 303 F.Supp. 2d 304 (E.D.N.Y. 2004) (summary judgment) – Secured summary judgments and sanctions award for distributor of electronic equipment in trademark infringement and unfair competition lawsuit. 

Completed Trade Secrets & Other
Intellectual Property Litigation Cases

  • SundRy v. Xwave (E.D. Va.) – Defended Xwave in trade secrets case relating to software.  Case settled.
  • Kirchman Corporation v. Regions Financial Corporation – Defended Regions in a contract action concerning bank data processing software in which the plaintiff was seeking in excess of $60 million.  The action was concluded with a settlement favorable to Regions. 
  • Phoenix Newspapers, Inc. v. Keegan, 201 Ariz. 344, 35 P.3d 105 (Ct. App. 2001) – Represented a major newspaper in an action against a developer of a high school graduation aptitude examination that was prohibiting access to or disclosure of the test on the grounds that it contained trade secrets. 
  • REM v. Risk Assessment Solutions, et al. – Represented defendants in a case involving trade secrets, contracts, and ownership of intellectual property assets.  Plaintiff dismissed actions.

Recent Section 337 Litigation

  • Certain Tunable Laser Chips, Assemblies and Products Containing Same (2008), USITC Inv. No. 337-TA-662 – Representing complainant JDS Uniphase Corporation, a California-based company and leading provider of optical products for the telecommunications industry, to assert the infringement of patents involving tunable laser chips used to transmit optical data signals at various wavelengths. 
  • Certain Prepregs, Laminates, and Finished Circuit Boards (2008), USITC Inv. No. 337-TA-659 – Representing respondent Guangdong Shengyi Sci. Tech Co., Ltd. against allegations from complainant Isola USA Corporation, of patent infringement involving a process for manufacturing the base materials for printed circuit boards (PCBs), used to direct electrical signals in advanced electrical equipment.
  • Certain short-wavelength light emitting diodes, laser diodes and products containing same (2008), USITC Inv. No. 337 – TA – 640 – Representation of Toshiba Corporation against allegations of patent infringement involving a process on making a wide-band gap semiconductor capable of emitting certain wave lengths of light.
  • Certain Hard Disk Drives, Components Thereof, and Products Containing the Same (2007), USITC Inv. No. 337 – TA – 616 – Representing respondent Toshiba America Information Systems against allegations of patent infringement for a process involved in making hard disk drives.
  • Certain Buffer Systems and Components thereof used in Container Processing Lines (2007), USITC Inv. No. 337-TA – 609 –  Representing KHS USA, Inc. and KHS AG against allegations of patent infringement involving a patent on an accumulation or buffer tables used as a component of bottling plant conveyor systems.
  • Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems (2006), USITC Inv. No. 337 – TA – 569 – Representing respondents Canady Technology LLC and Canady Technology Germany GmbH against allegations of patent and trademark infringement with regard to medical devices.
  • Certain Foam Footwear (2006), USITC Inv. No. 337 – TA – 567 – Represented respondent Australia Unlimited against allegations of trade dress and design patent infringement related to foam shoes.  Succeeded in having trademark allegations dismissed and negotiated a settlement based on cross-licensing of design patents.
  • Certain Devices for Determining Organ Positions and Certain Subassemblies Thereof (2005), USITC Inv. No. 337 – TA – 555 – Represented Resonant Medical Inc. in this matter involving alleged section 337 violations. Investigation terminated in its entirety on the basis of a settlement agreement between the complainants and sole respondent.
  • Certain Laminated Floor Panels (2005), USITC Inv. No. 337 – TA – 545 – Achieved a 337 victory for Yekalon Industry, Inc., in this wood flooring investigation. The Administrative Law Judge found that the new product design developed by the Steptoe team with the client during the early part of the investigation did not infringe the three patents.
  • Certain Weather Stations and Components Thereof (2005), USITC Inv. No. 337 – TA – 537 – Successfully defended respondent Hidecki Electronics in this patent-based investigation, which was terminated due to a withdrawal of the complaint.
  • Certain Digital Image Storage and Retrieval Devices (2004), USITC Inv. No. 337 – TA – 527 – On behalf of complainant, Ampex Corp., obtained an initial licensing fee of $40 million, and a an agreement for continuing licensing payments from Sony Corp., settling ITC action and federal court suit over digital camera image-related patents.
  • Certain Point of Sale Terminals and Components Thereof (2004), USITC Inv. No. 337 – TA – 524 – Represented respondent Lipman USA and Lipman Electronic Engineering against allegations of patent infringement on point of sale terminals (e.g., for swiping credit cards). Succeeded in forcing patent owner to withdraw complaint and persuaded the Administrative Law Judge to issue a seven figure sanction against the patent owner.
  • Certain Ink Markers and Packaging Thereof (2004), USITC Inv. No. 337 – TA – 522 – Obtained a general exclusion order for all ink markers and packaging that infringe or are confusingly similar to Sanford’s trademarks or trade dress for SHARPIE® ink markers.
  • Certain Bearings and Packaging Thereof (2003), USITC Inv. No. 337 – TA – 469 – Represented SKF USA in this investigation related to alleged infringement of registered and common law trademarks, dilution of trademarks, and various acts in violation of the Lanham Act.

Noteworthy

  • Our attorneys have handled over 85 Section 337 cases—litigating many cases to final decisions, and settling and licensing many others, on terms favorable to our clients, which have involved a wide range of alleged unfair importation practices.

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