Patent

Steptoe & Johnson LLP’s patent practice group develops and enforces patent portfolios in the United States and helps guide the development and enforcement of patents abroad. We have extensive experience in the following core practice areas:

Electronics and Software
Pharmaceuticals and Biotechnology
Chemistry
Materials Science
Nanotechnology
Mechanical

Our attorneys have practical experience in these and other fields and provide sound advice grounded in a thorough knowledge of the law. We skillfully guide clients through all phases of patent and technology protection, including the following:

Litigation;
Counseling;
Strategic portfolio building;
Drafting and prosecuting patent applications in the United States and managing portfolios worldwide;
Drafting and negotiating patent licenses, research agreements, and other technology transfer agreements;
Conducting due diligence investigations;
Executing clearance and freedom to operate studies;
Formulating defensive and offensive patent strategies including litigation;
Conducting patent audits and portfolio assessments;
Providing validity, clearance, and infringement opinions; and
Licensing.

Our registered patent attorneys have prosecuted thousands of patents in the various core technology areas and have engaged in numerous appellate and interference proceedings.

We also frequently counsel clients on patent portfolio development and we have supported due diligence investigations on behalf of investment groups and clients in pre-merger negotiations.

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.
LML Patent Corp. v. JP Morgan Chase & Co. et al. (E.D. Tex.) – Representing Regions Bank in a case involving certain payment services.
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.
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.

Completed Patent Litigation Cases

Trover v. Regions Bank (E.D. Tex.) – Representing Regions Bank in patent litigation involving bank security systems.
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.
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.

Noteworthy

Select News & Events

Publications

Litigating the Business Method Patent: Pitfalls for Unwary Defendants
2006, The Intellectual Property Strategist Vol 12 No 12
Big Suits: Verizon v. Vonage
October 2006, IP Law & Business
Implications of Patent Reform
Who Wins, Who Loses? Executive Summary and Update from 6/28/05 Teleconference
July 29, 2005