Patent Litigation

Patent litigation is inherently unpredictable and can be an expensive proposition. Yet, in a time of increasing financial pressures, it is vital to a company’s success to protect its intellectual property. Steptoe’s patent litigation team combines its wealth of experience with lean staffing and a teamwork approach to provide our clients with top-notch, effective, and efficient representation.

Over the past five years, Steptoe has developed a thriving, national patent litigation practice that operates seamlessly with the traditional litigation strengths of the firm. Our patent litigation team consists of several former in-house counsels, who understand clients’ top priorities, including budgeting, responsiveness, and efficiency. Client teams are staffed leanly; clients are able to speak directly with lead lawyers, who are intimately involved with the matters and are available at any time. We have attracted several lawyers and specialists with PhDs and masters degrees in all areas of technology and who represent clients in all disciplines of patent law.

Our attorneys have tried scores of cases to judgment for Fortune 500 companies, midsize companies, and small, emerging high-tech companies. We have litigated cases for prominent companies in a range of industries, including automobile, consumer products, electronics, financial, telecommunications, transportation, and the internet. Our clients, many of whom are not long-standing clients of the firm, have consistently returned to Steptoe and expanded their relationships with us year after year since the creation of the practice in 2003. We believe these companies come back to Steptoe because of our responsiveness, quality, and focus on efficient litigation.

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. 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.

Finally, as an added value to our clients, the firm established a Complex Litigation Discovery Center (CLDC) in 2003 in Rockville, Maryland. More than 100 contract attorneys at the CLDC with much reduced rates assist in all aspects of discovery and litigation, performing legal analysis of documents and electronic files accurately and cost-efficiently. This turnkey operation is dedicated to that function and applies tried and true quality assurance protocols.

Representative Matters

Current Patent Litigation Cases

Newport Controls v. Balboa Instruments (C.D. Cal., 2010) – Representing Balboa Instruments in a patent infringement action involving spa controllers, as well as in an antitrust and unfair competition case.
Tadayon et al v. Coach USA, Inc. et al (D. D.C., 2010) – Representing Coach USA, Inc. in a patent infringement case related to wireless communication devices.
Parallel Networks, LLC v. Abercrombie & Fitch Co. et al. (E.D. Tex., 2010) – Representing Disney Online against allegations of patent infringement involving dynamically generated applets in Internet software applications.
Abbott Laboratories and Fournier Laboratories Ireland Ltd. v. Lupin Limited (D.N.J., 2010) – Representing Fournier Laboratories Ireland Ltd. in a patent infringement case involving a filing seeking approval to sell generic copies of TRILIPIX® 45 mg and 135 mg products prior to the expiration of the '186 patent.
Datatern, Inc. v. Staples, Inc. et al. (E.D. Tex., 2010) – Representing Regions Financial Corporation in a patent infringement litigation involving database software.
Keranos, LLC v. Analog Devices, Inc. et al. (E.D. Tex., 2010) - Representing Samsung Electronics, Inc. in a patent infringement case related to the use and manufacture of integrated circuits using embedded flash memory.
Sunbeam Products, Inc. v. Pick Five Imports, Inc. (C.D. Cal., 2010) – Representing Sunbeam Products, Inc. in a design patent infringement case related to a three section buffet server sold as the Triple Slow Cooker Buffet.
TQP Development, LLC v. Bank of New York Mellon Corporation et al. (E.D. Tex., 2010) - Representing Time Warner, Inc. against allegations of patent infringement involving encrypted data transmission technology.
Site Update Solutions LLC v. Accor North America Inc. et al. (E.D. Tex., 2010) – Representing The Walt Disney Company against allegations of patent infringement involving the update of Internet search engines.
Amerigon Inc. v. W.E.T. Automotive Systems Ltd. (C.D. Cal., 2010) – Representing W.E.T. Automotive Systems Ltd. in a patent infringement case related to climate-controlled automobile seats.
W.E.T. Automotive Systems Ltd. v. Amerigon Inc. (E.D. Mich., 2010) – Representing W.E.T. Automotive Systems Ltd. in patent litigation against Amerigon Inc. There are thirteen patents at issue in two different cases, with assertions of patents by both parties. The technology relates to the heating and cooling of automobile seats. Amerigon previously brought suit against W.E.T. but that suit was dismissed for lack of personal jurisdiction.
SimpleAir, Inc. v. AWS Convergence Technology, Inc., et al. (E.D. Tex., 2009) – Representing Disney Online, ESPN Enterprises, Inc., and American Broadcasting Companies, Inc. in patent infringement litigation relating to the delivery of content, notifications, and updates to mobile computing devices.
Elan Pharma International Ltd. and Fournier Laboratories Ireland Ltd. v. Impax Laboratories, Inc. (D. N.J., 2009) - Representing Fournier Laboratories Ireland Ltd. in a patent infringement case related to TriCor® (fenofibrate) 48 mg and 145 mg tablets.
Abbott Laboratories and Laboratories Fournier S.A. v. Impax Laboratories, Inc. (D. N.J., 2009) - Representing Laboratories Fournier S.A. in a patent infringement case related to TriCor® (fenofibrate) 48 mg and 145 mg tablets.
Abbott Laboratories and Laboratories Fournier S.A. v. Lupin Limited and Lupin Pharmaceuticals, Inc. (D. N.J., 2009) - Representing Laboratories Fournier S.A. in a patent infringement case related to TriCor® (fenofibrate) 48 mg and 145 mg tablets.
Joao Bock Transaction Systems of Texas, LLC v. AT&T, Inc., et al. (E.D. Tex., 2009) – Representing Regions Bank in a patent infringement case relating to transaction security.
BTG Int'l Inc. v. Sony Corp., et al. (E.D. Tex., 2009) – Representing Sony Corporation and Sony Electronics Inc. in a district court action involving certain flash memory devices including MP3 players, solid state flash drives, digital video cameras, cellular telephone handsets, and flash memory cards.
Certain MLC Flash Memory Devices and Products Containing Same (2009) USITC Inv. No. 337-TA-683 – Representing respondents Sony Corporation and Sony Electronics Inc. in an action involving certain flash memory devices including MP3 players, solid state flash drives, digital video cameras, cellular telephone handsets, and flash memory cards.
Weber-Stephen Products Co. v. Freedom Grill Inc. et al. (N.D. Ill., 2009) – Representing Sunbeam Products, Inc. in a patent infringement case related to gas grills with fold-out integrated side tables.
Sunbeam Products, Inc. v. Global Marketing Corporation et al. (E.D. Va., 2009) – Representing Sunbeam Products, Inc. in a patent infringement case related to coffee pots.
Sunbeam Products, Inc. v. Hamilton Beach Brands, Inc. et al. (E.D. Va., 2009) – Representing Sunbeam Products, Inc. in a patent infringement case related to coffee bean grinders.
Axis AB et al. v. Vivotek USA, Inc. (E.D. Pa., 2009) – Representing Vivotek USA, Inc. in a design patent infringement litigation relating to security cameras.
Sorensen Research & Development Trust v. Alltrade Tools (S.D. Cal., 2008) – Defending Alltrade Tools in a patent suit concerning injection molding method involving a common mold part with separate complementary mold parts.
Elan Pharma International Ltd. et al. v. Biovail Laboratories International SRL et al. (D.N.J., 2008) – 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.
Elan Pharma International Ltd. et al. v. Teva Pharmaceuticals USA, Inc. (D.N.J., 2008) – 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.
Abbott Laboratories et al. v. Biovail Laboratories International SRL et al. (N.D. Ill., 2008) – 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.
Abbott Laboratories et al. v. Teva Pharmaceuticals USA, Inc. (N.D. Ill., 2008) – 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.
LML Patent Corp. v. JP Morgan Chase & Co. et al. (E.D. Tex., 2008) – Representing Regions Bank in a case involving certain payment services.
Certain Flash Memory Chips and Products Containing the Same (2008), USITC Inv. No. 337-TA-664 – Representing respondents Sony Corporation and Sony Corporation of America against allegations from Spansion, Inc. and Spansion LLC, of patent infringement with regard to downstream products containing Samsung flash memory chips.
Sunbeam Products, Inc. v. HoMedics (W.D. Wis., 2008) – Representing Sunbeam Products, Inc. in a patent infringement case related to scales and scale bearings.
MHL Tek v. American Honda Motor Co., Inc. (E.D. Tex., 2007) – Representing American Honda Motor Co., Inc. in patent litigation involving tire pressure sensor monitors.
Iris Corporation v. Japan Airlines Int’l Co., Ltd. (E.D. N.Y., 2006) – Representing Japan Airlines (JAL) in patent litigation involving a claim by plaintiff Iris Corporation that JAL’s government-mandated examination of electronic passports (“e-passports”) infringes Iris’s patent involving a method for manufacturing e-passports.

Completed Patent Litigation Cases

Balboa Instruments, Inc. v. Consumer Engineering, Inc. (C.D. Cal., 2009) – Represented Balboa Instruments in a patent infringement action involving electronic spa controllers. A favorable settlement was reached.
EasyWeb Technologies, Inc. v. Blip Networks, Inc., et al. (E.D.N.Y., 2009) – Defended Blip Networks, Inc., a leading video hosting, distribution, and media management service, in patent infringement litigation involving the upload of content to a website.
Gemtron Corporation v. Saint−Gobain Corporation (W.D. Mich., 2009) – Represented Gemtron in a patent infringement action involving refrigerator shelves; prevailed at a jury trial.
Certain Variable Speed Wind Turbines and Components Thereof (2009), USITC Inv. No. 337 – TA – 641 – Represented respondents Mitsubishi Heavy Industries, Ltd., et al., in an action involving three patents owned by General Electric on wind turbines. The ITC found in Mitsubishi's favor that the patents were not infringed and that there was no domestic industry and that one patent lacked proper inventorship.
Rates Technology v. Arbinet (S.D.N.Y., 2008) – Defended Arbinet in a patent suite involving Internet telephony.
Balboa Instruments, Inc. v. Presair, LLC (C.D. Cal., 2008) – Represented Balboa in a patent infringement action concerning spa controllers.
Certain Prepregs, Laminates, and Finished Circuit Boards (2008), USITC Inv. No. 337-TA-659 – Represented 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. The complaint was withdrawn after all respondents except Shengyi signed consent orders or settlement agreements. Shengyi remained free to continue selling its products.
Certain Tunable Laser Chips, Assemblies and Products Containing Same (2008), USITC Inv. No. 337-TA-662 – Represented 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. Case was terminated based on settlement agreements with the respondents taking licenses.
Abbott Laboratories et al. v. Teva Pharmaceuticals USA (D. Del., 2008) – Represented 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.
Stambler v. Regions Bank (E.D. Tex., 2008) – Represented Regions Bank in patent litigation involving secure on-line transactions.
TQP Development LLC v. Merrill Lynch & Co. et al. (E.D. Tex., 2008) – Represented Regions Financial Corp. against allegations of patent infringement involving an online encrypted data transmission patent. Obtained dismissal with prejudice upon favorable settlement.
Certain Semiconductor Integrated Circuits and Products Containing Same (2008), USITC Inv. No. 337-TA-665 – Represented respondent Seagate Technology against allegations from Qimonda AG of patent infringement with regard to semiconductor integrated circuit chips and downstream products containing those chips. The ITC found in Seagate's favor that the patents were invalid, not infringed and that Qimonda had no domestic industry.
Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (2008), USITC Inv. No. 337 – TA – 640 – Represented 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. Many respondents settled; however, the complaint against Toshiba was withdrawn just prior to trial.
Wright Metal Products Inc. v. American Honda Motor Co., Inc. (D. S.C., 2007) – Defended American Honda Motor Co., Inc. in patent litigation involving steel storage crates.
Ronald Katz Licensing v. Amtrak et al. (E.D. Tex., 2007) – Represented Amtrak in patent case relating to automatic telephone call processing technology.
Media Digital v Clarion et al. (E.D. Tex., 2007) – Defended Clarion in patent litigation involving audio entertainment systems.
Adamasu Gebre v. Clarion et al. (D. Utah, 2007) – Represented Clarion in a patent case involving touch screen technology.
Production Automation Inc. v. FKI Logistex Inc. (E.D. Va., 2007) – Defended FKI Logistex Inc. in a patent suit related to material handling equipment. Case settled favorably for FKI.
Mobile Micromedia Solutions v. General Motors (E.D. Tex., 2007) – Represented General Motors in a patent suit related to microprocessor technology.
Traffic Information, LLC v. Honda et al. (E.D. Tex., 2007) – Represented Honda in a patent case involving in-vehicle navigation systems.
Certain Buffer Systems and Components thereof used in Container Processing Lines (2007), USITC Inv. No. 337-TA – 609 – Represented 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. The investigation was terminated based on a settlement and license agreement entered into by KHS.
Macrovision Corporation v. Motorola, Inc. (N.D. Cal., 2007) – Represented defendant Motorola against 7 patents issued by Macrovision involving analog copy protection technology. Settled prior to trial.
IPT v. Motorola, Inc. (N.D. Ill., 2007) – Defended Motorola in a patent suit involving cell phones.
Trover v. Regions Bank (E.D. Tex., 2007) – Represented Regions Bank in patent litigation involving bank security systems.
Certain Hard Disk Drives, Components Thereof, and Products Containing the Same (2007), USITC Inv. No. 337 – TA – 616 – Represented respondent Toshiba America Information Systems against allegations of patent infringement for a process involved in making hard disk drives. The complaint was withdrawn by the complainant prior to trial.
Vonage v. Nortel (D. Del., 2007) – Represented plaintiff Vonage in Declaration Judgment action with respect to 3 Nortel patents covering VoIP technology. Case settled.
Web Telephony v. Vonage (E.D. Tex., 2007) – Defended Vonage in patent suit involving telephony technology.
AT&T v. Vonage (W.D. Wis., 2007) – Defended Vonage against AT&T with respect to one patent involving VoIP technology. Case settled.
VData v. Aetna (D. Minn., 2006) – Represented Aetna in patent infringement litigation involving patents relating to bar code technology.
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.
Bright Solutions v. multiple accused infringers (E.D. Tex., 2006) – Represented Bright Solutions, Inc., in a patent infringement action against multiple accused infringers of Bright Solutions patents on air conditioner leak detection equipment and methods.
Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems (2006), USITC Inv. No. 337 – TA – 569 – Represented respondents Canady Technology LLC and Canady Technology Germany GmbH against allegations of patent and trademark infringement with regard to medical devices. After trial, the complainant's patent was found not to be infringed by Canady and the Commission found no domestic industry. The ALJ thus found no violation and this was affirmed by the Commission.
XFactor LLC and Jack Hamm v. Roger Cleveland Golf Company, Inc. (D. Colo., 2006) – Defended Cleveland Golf in alleged design patent, trade dress and trademark infringement case to stipulated dismissal with prejudice.
Simpleair Holdings, Inc. v. m-Qube, Inc. et al. (E.D. Tex., 2006) – Represented m-Qube (VeriSign, Inc. subsidiary) in patent litigation involving telecommunications and Internet technology.
Nutratech, Inc. v. Syntech (SSPF) International, Inc., (C.D.Cal., 2006) – Represented Nutratech in the patent infringement litigation.
Verizon v. Vonage (Fed. Cir & E.D. Va., 2006) – Represented Vonage in its patent infringement case brought by Verizon Communications, Inc. Case settled following trial and appeal.
Felix v. American Honda Motor Co., Inc., et al., (Federal Circuit) and Civil Action No. 05-2525-CM (D. Kan., 2005) – Represented American Honda Motor Co., Inc. in a case involving the In-Bed Trunk of the Honda Ridgeline. Obtained summary judgment in district court in 2007. In April 2009, the Federal Circuit affirmed the decision, issuing a precedential opinion and agreeing with Honda's interpretation of the disputed claim terms in all relevant aspects.
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.
Mobile Micromedia Solutions v. Nissan North America (E.D. Tex., 2005) – Defended Nissan North America in a patent suit related to microprocessor technology.
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 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 an agreement for continuing licensing payments from Sony Corp., settling ITC action and federal court suit over digital camera image-related patents.
Henry-Griffitts, Inc. v. Roger Cleveland Golf Company, Inc. et al. (S.D. Cal., 2004) – Won stipulated judgment after successful Markman hearing in the district court, and prevailed for Cleveland Golf on appeal at Federal Circuit.
Midtronics, Inc. v. DHC Specialty Corporation (N.D. Ill., 2004) – Represented defendant DHC Specialty Corporation against accusations of infringing two patents relating to automotive battery tester technology. Settled prior to trial.
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.
Vonage v. SBC et al. (N.D. Tex., 2004) – Represented plaintiff Vonage in 3 patent cases against Sprint, SBC and Nortel involving voice compression technology. Cases settled.
Comsat v. US (US Cl. Ct., 1999) – Represented Stratos in a proceeding where a competitor alleged that telecommunications service infringed a patent. Case settled on favorable terms.

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