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 Federal Patent Litigation Cases 

• Secor View Technologies, LLC v. Nissan North America, Inc. (D. N.J. 2012) - Representing Nissan North America, Inc. in a patent infringement suit involving rear camera view technology in automobiles.
• Bone Care International v. Roxane Laboratories (Fed. Cir. 2012) – Representing Sandoz Inc. in an appeal of a district court judgment finding infringement of a proposed doxercalciferol product and holding validity of patents.
• Semiconductor Energy Laboratory, Co., LTD v. ChiMei Innolux Corp., et al. (C.D. Cal. 2012) - Representing SEL in a patent litigation against six defendants accused of infringing six of SEL's patents relating to LCDs.
• Allergan, Inc. v. Barr Laboratories, et al. (Fed. Cir. 2012) - Representing defendant-appellant Sandoz Inc. in an appeal from the final judgment and injunction entered by Judge Robinson of the US District Court for the District of Delaware finding infringement of US patents relating to bimatoprost, sold by Allergan as Lumigan®, used to treat glaucoma or reduce intraocular pressure (“IOP”).
• Benefit Funding Systems LLC, et al. v. Regions Financial Corporation (D. Del. 2012) – Representing Regions Financial Corporation in a patent infringement litigation relating to a patent that allegedly covers a computerized system and method for obtaining authorization to periodically withdraw a portion of future Social Security benefit payments, that are directly deposited into an account, in exchange for providing a monetary benefit based at least in part on the present value of a portion of the future Social Security benefit payments.
• Prowess, Inc. v. RaySearch Laboratories, AB, et al. (D. Md. 2011) – Representing Prowess, Inc. in a patent infringement litigation with respect to two US patents involving radiation therapy for cancer treatment. 
• Apple Inc. v. Samsung Electronics Co. Ltd., et al. (N.D. Cal. 2011) – Representing Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC in a patent infringement litigation involving user interfaces, and product and packaging design of phones and computer tablets. 
• Howmedica Osteonics Corp., et al. v. Smith & Nephew, Inc. (D. N.J. 2011) - Representing Smith & Nephew, Inc. in a patent infringement litigation regarding external bone fixation devices.  This case is currently in discovery.
• Novo Nordisk Inc., et al. v. Sandoz Inc. (D. N.J. 2011) - Representing Sandoz Inc. in a patent infringement litigation over the generic drug repaglinde, used in the treatment of type 2 diabetes, sold by Novo under the brand name Prandin®.
• Kickstarter, Inc. v. Fan Funded, LLC, et al. (S.D. N.Y. 2011) – Representing Kickstarter, Inc., the crowdfunding website that helps advance original ideas, in a patent infringement suit related to methods and apparatuses for financing and marketing a creative work.
• Beacon Navigation GmbH v. Nissan Motor Co. Ltd., et al. (D. Del. 2011) – Representing Nissan Motor Co. Ltd. and Nissan North America Inc. in patent litigation brought by Beacon Navigation GmbH regarding six patents related to Global Positioning System (GPS) technology.
• Beacon Navigation GmbH v. Hyundai Motor Company, et al. (D. Del. 2011) – Representing Hyundai Motor Company, Hyundai Motor America, and Hyundai Motor Manufacturing Alabama LLC in patent litigation brought by Beacon Navigation GmbH regarding six patents related to Global Positioning System (GPS) technology.
• Beacon Navigation GmbH v. Kia Motors Corp., et al. (D. Del. 2011) – Representing Kia Motors Corp., Kia Motors America Inc., and Kia Motors Manufacturing Georgia Inc. in patent litigation brought by Beacon Navigation GmbH regarding six patents related to Global Positioning System (GPS) technology.
• Technology Innovations LLC v. Amazon.Com Inc. (D. Del. 2011) – Representing Amazon.com Inc., a provider of e-commerce, in a patent litigation suit brought by Technology Innovations LLC regarding patents related to Amazon’s Kindle e-book reader.  The matter was originally filed in the US District Court for the Southern District of Texas, but was dismissed and re-filed in the District of Delaware after Amazon threatened sanctions in Texas.
• Parallel Networks, LLC v. Backstage Web Inc., et al. (D. Del. 2011) - Representing Forever 21, a retail store that sells trendy apparel, in a patent infringement suit involving website operations and communications.
• Stragent, LLC, et. al. v. Pioneer Electronics (USA) Inc., et al. (E.D. Tex. 2011) - Representing American Honda Motor Co., Inc. in a patent infringement suit brought by Stragent and SeeSaw Foundation regarding a patent for voice recognition technology.
• TQP Development, LLC v. Aflac Incorporated, et al. (E.D. Tex. 2011) - Representing Medical Protective Insurance Co. in a patent infringement litigation involving encrypted data communications.
• Phoenix Licensing Inc., et al. v. Alliance Data Systems Corp., et al. (E.D. Tex. 2011) – Representing Regions Financial Corporation and Regions Bank in a patent infringement suit involving the automatic marketing of financial products based on specific customer information.
• LBS Innovations LLC v. Sally Beauty Supply LLC, et al. (E.D. Tex. 2011) - Representing Regions Financial Corporation in a patent infringement litigation on a US patent involving a wireless system that provides information about proximate destinations to mobile computers and their users. LBS alleges that Regions is directly infringing their patent by operating its website, www.regions.com, which has a store or dealer location interface at https://www.regions.com/Locations.rf.
• TuitionFund, LLC v. SunTrust Banks, Inc., et al. (M.D. Tenn. 2011) - Representing Regions Financial Corporation and Regions Bank in a patent infringement suit involving two US patents for Cashback Rewards services. 
• Joao Bock Transaction Systems, LLC v. USAmeribank, et al. (C.D. Fla. 2011) - Representing EverBank in patent infringement litigation relating to account security for financial services and wireless telephone accounts.
• Sandoz Inc. v. Novo Nordisk, Incorporated, et al. (E.D. Mich. 2011) - Representing Sandoz Inc. in a patent litigation suit under the Hatch-Waxman Act against Novo alleging non-infringement and invalidity of the US patent associated with repaglinide,  an oral blood glucose-lowering drug used in the management of type 2 diabetes, sold by Defendants under the brand name Prandin®.  Sandoz is currently seeking approval of a generic form of Prandin®.  This matter is currently stayed pending a Supreme Court decision in Caraco v. Novo.
• Aristocrat Technologies Australia Pty Ltd. v. International Gaming Techs. (Fed. Cir. 2010) - Representing Aristocrat Technologies Australia Pty Ltd. in an appeal of summary judgment determination of non-infringement based on claim construction and the doctrine of joint infringement. The patents-in-suit pertain to electronic gaming system technologies for casino games.  Oral argument was held in 2011 and the appeal is currently pending a decision.
• Iris Corporation v. Japan Airlines Int’l Co., Ltd. (Fed. Cir. 2010) – Representing Japan Airlines (JAL) in an appeal of judgment determination of non-infringement on a US patent involving a method for manufacturing e-passports.  Japan Airlines filed a suggestion of bankruptcy, which was treated as a motion to stay.  The motion was granted and the appeal has been stayed pending bankruptcy proceedings.
• Allergan, Inc., et al. v. Apotex Inc., et al. (M.D. N.C. 2010) – Representing Sandoz Inc. in a patent litigation under the Hatch-Waxman Act related to bimatoprost sold by Allergan as Latisse®.
• Site Update Solutions LLC v. Accor North America Inc., et al. (N.D. Cal. 2010) – Representing The Walt Disney Company against allegations of patent infringement with respect to methods for updating Internet search engines.  This matter was transferred from the US District Court for the Eastern District of Texas to the US District Court for the Northern District of California upon granting defendants joint unopposed motion to transfer.  Currently, the case is in discovery and scheduled for jury trial in April 2013.
• 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.
• 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. 
• OPTi Inc. v. Silicon Integrated Systems Corp., et al. (E.D. Tex. 2010) - Representing OPTi Inc. in a patent infringement case against SIS and Via, two computer chipset manufacturers. The patents involved are OPTi's presnoop patents.
• MonoSol Rx, LLC v. Biodelivery Sciences International, Inc., et al. (D. N.J. 2010) – Represented MonoSol Rx, LLC, a leading drug delivery company, against several drug manufacturers in a patent infringement and false patent marking matter related to MonoSol’s patent on its dissolving medicated film drug delivery system. The case was stayed on March 7, 2012, after the three patents-in-suit were taken up for reexamination by the USPTO.
• AstraZeneca LP, et al. v. Breath Limited, et al. (D. N.J. 2008) - Representing Sandoz Inc., the generic subsidiary of Novartis, in an ANDA patent litigation against AstraZeneca regarding two patents for Pulmicort Respules®, an inhalation product used to treat asthma. 
• Sunovion Pharmaceuticals Inc., et al. v. Sandoz Inc. (E.D. N.C. 2008) – Representing Sandoz Inc. in a patent litigation under the Hatch-Waxman Act related to levocetirizine sold by UCB as Xyzal®. Currently pending decision on motion for summary judgment of non-infringement.

To see a comprehensive list of our representative patent litigation matters, please click here.

Noteworthy

• Steptoe ranked among top patent litigation firms in Intellectual Asset Management (IAM) magazine's "Patent 1000 - The World's Leading Patent Practitioners," 2012

Select News & Events

• Steptoe’s Chicago Office Expands, Adds Trio of Patent Litigators
• Law360 Covers Steptoe’s Win for Sandoz in Patent Dispute Over Asthma Drug
• Law360 Features Charles Schill for Practice Leaders Q&A
• Law360 Covers Steptoe’s Win for Aristocrat at Federal Circuit
• "Apples, Oranges, and the ITC: Insights into Section 337 Patent Litigation Practice," Colorado Bar Association
• "An Update on the Law of Patent Infringement in the US," A Webinar sponsored by The American Bar Association
• Section 337 Investigations Workshop (September 16 or 17, 2010)
• After Ariad v. Lilly: Implications and Best Practices

More News »

Publications

• The Evolving Patent Troll
  2013
• Section 337 Litigation Strategies
  2012, Patent Litigation Strategies Handbook, Third Edition
• Rogue Websites and the ITC: New Proposed Anti-Piracy Legislation
  December 16, 2011
• Intellectual Property Advisory: Effective Timeline for the America Invents Act
  November 4, 2011

More Publications »