Promega Corporation v. Applied Biosystems, LLC, Life Technologies Corporation, and California Institute of Technology: Judge Richard A. Posner ruled in favor of our client, Promega Corporation, in a suit that it initiated against one of its competitors. In an opinion dated June 12, 2013 from the U.S. District Court for the Northern District of Illinois, Judge Posner ruled that certain claims of U.S. Patent No. RE43,096, asserted against Promega, are invalid. Promega prevailed in its arguments that the claims of the ’096 patent were invalid due to the breadth of the claim constructions that Defendants sought and obtained. Certain asserted claims were invalid for lack of written description support. While the patent describes an improvement to DNA sequencing, the breadth of the claims encompassed technologies that Caltech did not invent, including the PCR-based methods on which Promega’s accused products are based. The asserted claims were additionally invalid as anticipated or obvious in view of the prior art, including a prior art patent to Caltech, which expired years ago. Judge Posner also found certain claims invalid for obviousness type double patenting. Defendants appealed various aspects of Judge Posner’s decision and the judgment. Six days after oral argument, the Federal Circuit summarily affirmed the judgment, awarding Promega a complete victory in the case.
Trial counsel in Grantley v. Clear Channel Communications, Inc., a patent infringement case in which a federal jury in the Eastern District of Texas awarded Grantley Corporation $66 million. The jury found that Clear Channel Communications, Inc. infringed on four of Grantley Corporation's patents related to an integrated inventory management system for radio advertising time. The jury also found that the infringement was willful. The verdict was announced on April 22, 2008. On June 11, 2008, the court enhanced the damages by more than $16.5 million, awarded prejudgment interest and entered judgment totaling more than $89 million. The case settled while on appeal under confidential terms.
Trial counsel in Personal Audio LLC v. Apple Inc., a patent infringement case in which a Texas federal jury awarded our client, Personal Audio LLC, $8 million in damages after finding that Apple's iPods infringed our client's patent for an audio player that can download or receive navigable playlists. The verdict was announced on July 8, 2011. The court also awarded prejudgment interest in the amount of $4,182,331 for a total judgment of $12,182,331.
Lead counsel for defendant Draeger Safety Inc. in a patent infringement suit brought by Sperian Respiratory Protection U.S.A. in the Central District of California involving Self Contained Breathing Apparatus ("SCBA") for the fire service industry. Following discovery and a Markman hearing, case settled confidentially with no changes made to Draeger Safety's product.
Trial counsel in Itron, Inc. v. Benghiat, a patent infringement lawsuit venued in Minnesota involving computer software claims to an improved utility meter reading device. Itron sued Ralph Benghiat, for a declaration that his patent was invalid, unenforceable and not infringed. In what The National Law Journal later featured as the “Verdict of the Week,” the jury awarded $7.4 million dollars and found willful infringement by Itron. The case settled for $7.9 million following post trial motions. (Prior to joining Robins, Kaplan, Miller & Ciresi L.L.P.)
Lead counsel for defendants in Pederson et. al. v. Akona L.L.C. et. al., a patent inventorship, ownership and contract case venued in Minnesota, involving a floor sweeping compound. Obtained a summary judgment ruling such that Akona owed no damages on any theory and any interest Pederson had in the patent as an inventor must be assigned to Akona. (Prior to joining Robins, Kaplan, Miller & Ciresi L.L.P.)
Represented defendant in ADE v. KLA-Tencor, a patent infringement case involving silicon wafer surface inspection systems venued in Delaware where ADE sought a nine figure damage award. Prevailed at the summary judgment stage. (Prior to joining Robins, Kaplan, Miller & Ciresi L.L.P.)