IP Litigation

Steptoe’s IP Litigation team is led by experienced 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. Our trial lawyers and their teams have significant knowledge of the relevant technology, business issues, commercial markets, and law that allows them to find unique solutions to litigation projects. By utilizing our attorneys’ and professionals’ specific backgrounds in engineering, science, and technology, we create customized, efficient, winning teams for each client representation.

Our litigators have extensive litigation experience in courts throughout the United States, before the US International Trade Commission and the Supreme Court. They have tried scores of cases to judgment for Fortune 500 companies, mid-size companies, and small, emerging high-tech companies, before judges, juries, and administrative panels. Several of our IP litigators provide first chair trial and appellate representation of corporations in major intellectual property litigation cases in district courts throughout the country and in appeals before the Court of Appeals for the Federal Circuit.

The IP Litigation practice frequently makes use of the firm’s Complex Litigation Discovery Center (CLDC), established in 2003 in Rockville, Maryland. More than 100 contract attorneys at the CLDC provide a cost-effective way to manage and address all aspects of discovery and litigation including document and electronic file analysis. This turnkey operation is dedicated to that function and applies tried and true quality assurance protocols.

Copyright Litigation
Steptoe attorneys have significant experience in copyright litigation. We have represented telecommunications companies, financial institutions, filmmakers, and artists, among others, on issues relating to ownership, infringement, the Digital Millennium Copyright Act (DMCA), and other cutting edge topics.

Patent Litigation
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 are able to provide a unique perspective on client needs. We have attracted lawyers and specialists with PhDs and masters degrees in all areas of technology and who help represent clients in all technology areas with expertise and valuable insights.

Trade Secret Litigation
Steptoe attorneys have litigated claims for misappropriation of trade secrets and confidential information, unfair competition, breach of fiduciary duty, interference with prospective advantage or contractual relations, employee raiding, and related business torts. We also have litigated claims to enforce or invalidate confidentiality agreements and covenants not to compete. Our attorneys have experience litigating related claims under the Computer Fraud and Abuse Act, DMCA, and Electronic Communications Privacy Act.

Trademark Litigation
Steptoe represents some of the country’s most well-known brands in the technology, manufacturing, apparel, automotive, entertainment, sports, television, food and beverage, and industrial supply industries, among others. Our trademark litigators represent companies with in all aspects of trademark matters including infringement, application opposition, enforcement, and anti-counterfeiting issues. The firm also has represented a wide range of clients in trademark and cybersquatting suits arising from improper registration and use of Internet domain names.

Section 337/ITC Litigation
Over the course of nearly 30 years, Steptoe attorneys have handled more than 85 Section 337 cases. These cases have involved a wide range of alleged unfair import practices, including copyright, patent, and trademark infringement; trade dress and trade secret misappropriation, false advertising, labeling issues, designation of origin issues, passing off, and product disparagement, among others. Our knowledgeable Section 337 litigators skillfully manage the

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. Most recently, Steptoe successfully represented American Honda Motor Company, Inc. in a patent case in District Court and then on appeal, where the Federal Circuit affirmed the lower court decision and issued a precedential opinion. (Felix v. American Honda Motor Co., Inc., et al.)

Representative Matters

Current Patent Litigation Cases

W.E.T. Automotive Systems Ltd. v. Amerigon Inc. (E.D. Mich.) - Representing W.E.T. Automotive Systems Ltd. in a patent infringement case involving patents related to various comfort controls in automobile seats.
Sunbeam Products Inc. v. Hamilton Beach Brands, Inc. et al. (E.D. Va.) - Representing Sunbeam Products, Inc. in a patent infringement case related to blenders.
Sunbeam Products Inc. v. Global Marketing Corporation et al. (E.D. Va.) - Representing Sunbeam Products, Inc. in a patent infringement case related to coffee pots.
Sunbeam Products Inc. v. HoMedics (W.D. Wis.) - Representing Sunbeam Products, Inc. in a patent infringement case related to scales and scale bearings.
Weber-Stephen Products Co. v. Freedom Grill Inc. et al. (N.D. Ill.) - Representing Sunbeam Products, Inc. in a patent infringement case related to gas grills with fold-out integrated side tables.
Amerigon Inc. v. W.E.T. Automotive Systems Ltd. (C.D. Cal.) - Representing W.E.T. Automotive Systems Ltd. in a patent infringement case related to climate-controlled automobile seats.
SimpleAir, Inc. v. AWS Convergence Technology, Inc., et al. (E.D. Tex.) - 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.
Iris Corporation v. Japan Airlines Int’l Co., Ltd. (E.D. N.Y.) – 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.
BTG Int'l Inc. v. Sony Corp., et al, 2:09cv223 (E.D. Tex.). – 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.
Joao Bock Transaction Systems of Texas, LLC v. AT&T, Inc., et al. (E.D. Tex.) – Representing Regions Bank in a patent infringement case relating to transaction security.
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.
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.
LML Patent Corp. v. JP Morgan Chase & Co. et al. (E.D. Tex.) – Representing Regions Bank in a case involving certain payment services.
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.

Current Trademark Litigation Cases

Soccer United Marketing LLC et al v. The Black & Decker Corporation (S.D.N.Y 2009) – Defending Black & Decker in an case claiming false advertising, trademark infringement, and unfair competition.

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

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.
Certain Variable Speed Wind Turbines and Components Thereof (2009), USITC Inv. No. 337 – TA – 641 – Represented respondents Mitsubishi Heavy Industries, Ltd., et a., in an action involving three patents owned by General Electric on wind turbines.
Balboa Instruments, Inc. v. Consumer Engineering, Inc. (C.D. CA) - Represented Balboa Instruments in a patent infringement action involving electronic spa controllers. A favorable settlement was reached.
TQP Development LLC v. Merrill Lynch & Co. et al. (E.D. Tex.) – Represented Regions Financial Corp. against allegations of patent infringement involving an online encrypted data transmission patent. Obtained dismissal with prejudice upon favorable settlement.
EasyWeb Technologies, Inc. v. Blip Networks, Inc., et al. (E.D.N.Y.) – 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.
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.
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.
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.
Felix v. American Honda Motor Co., Inc., et al., (Federal Circuit) and 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. 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.
Stambler v. Regions Bank (E.D. Tex.) – Represented Regions Bank in patent litigation involving secure on-line transactions.
Abbott Laboratories et al. v. Teva Pharmaceuticals USA (D. Del.) – 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.
VData v. Aetna (D. Minn.) - Represented Aetna in patent infringement litigation involving patents relating to bar code technology.
Balboa Instruments, Inc. v. Presair, LLC (C.D. Cal.) – Represented Balboa in a patent infringement action concerning spa controllers.
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.
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.
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.
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 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 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.
Trover v. Regions Bank (E.D. Tex.) – Represented Regions Bank in patent litigation involving bank security systems.
Bright Solutions v. multiple accused infringers (E.D. Tex.) – 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.
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.) – Defended 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.
Gemtron Corporation v. Saint−Gobain Corporation (W.D. Mich.) – Represented Gemtron in a patent infringement action involving refrigerator shelves; prevailed at a jury trial
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.
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 patents 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

Trek Bicycle Corporation v. Trek Winery LLC (W.D. Wis.) – Represented Trek Winery LLC in a trademark infringement case. The Court found in favor of Trek Winery, dismissing an action for lack of personal jurisdiction.
Regions Asset Company v. Regional Acceptance Corporation (T.T.A.B. 2009) – Represented Regions Asset Company (Regions) in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning Regional Acceptance Corporation's applications to register the mark REGIONAL in both plain text and stylized format. The Board found that the REGIONAL marks were likely to cause confusion with Regions' REGIONS mark. Thus, the Board rendered judgment in favor of Regions and denied registration of both REGIONAL marks.
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.
The Black & Decker Corporation v. Emhart Electric Co. (T.T.A.B. 2007) - Represented The Black & Decker Corporation in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning Emhart Electric Co's intent-to-use applications for the trademarks DIRT HAWG and WATER HAWG for vacuum cleaners, wet and dry vacuum cleaners, and replacement parts therefor. Black & Decker claimed the marks DIRT HAWG and WATER HAWG were confusingly similar to its HOG family of marks for power-operated outdoor products, such as LEAF HOG, HEDGE HOG and EDGE HOG. The Trademark Trial and Appeal Board agreed, and in a decision dated March 23, 2007, the Board sustained the opposition and denied registration of the DIRT HAWG and WATER HAWG marks on the ground of likelihood of confusion.
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.
Texaco Inc. v. The Pennzoil-Quaker State Co. (T.T.A.B. 2004, Fed. Cir. 2005) – Represented Texaco in a trademark opposition proceeding at the Trademark Trial and Appeal Board concerning The Pennzoil-Quaker State Company's application to register a clear container design for motor oils. Texaco claimed that a clear bottle was functional in a utilitarian sense and that, if not functional, the clear container design was not inherently distinctive and had not acquired distinctiveness as an indicator of source for Pennzoil-Quaker State's motor oils. On May 28, 2004, the Board sustained the opposition on both grounds and refused to register the clear container as a trademark of Pennzoil-Quaker State. Pennzoil-Quaker State appealed the Board's decision to the Federal Circuit. On June 10, 2005, the Federal Circuit affirmed the Board's decision.
Heaven Sent Naturals v. Church & Dwight (D. Ariz ) – Represented Heaven Sent Naturals in a federal Lanham Act complaint filed for trademark infringement and trade dress that was confusingly similar, thus constituting trade dress and unfair competition, for a nutritional supplement.
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) – Successfully represented the petitioner at both the certiorari and merits stages in this case, in which the US Supreme Court unanimously reversed the Ninth Circuit. The case arose at the intersection of trademark and copyright law, and Steptoe’s arguments persuaded the Court to overturn more than two decades of court of appeals precedent. The Court’s opinion greatly narrowed the scope of permissible “reverse passing off” claims, limiting such claims to situations where the defendant strips the identifying marks off of the tangible products of another and then sells the products as its own.

Completed Copyright Litigation Cases

Stratos v. Telenor (D.Md) – Represented Stratos Global Corporation in copyright infringement litigation related to computer software.
Kirchman Corporation v. Regions Financial Corporation (M.D. Fla) – 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.
Textile Secrets International, Inc. v. Ya-Ya Brand Inc., 524 F. Supp. 2d 1184 (C.D. Cal. 2007) – Successfully obtained summary judgment on a novel issue of law concerning the proper interpretation of a provision under the DMCA.
Kay v. Kanter (Los Angeles Super. Ct.) – Represented young filmmaker in a declaratory relief action concerning the ownership of a copyrighted film. The case concluded with a settlement that resulted in our client owning all rights in the film.
The Welk Group, Inc. v. Televisa, S.A. de C.V. (Los Angeles Super. Ct.) – Defended Televisa in a common-law copyright infringement action involving music in television programs.

Completed Trade Secrets Litigation Cases

SundRy v. Xwave (E.D. Va.) – Defended Xwave in trade secrets case relating to software. Case settled.
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.
McDonnell Douglas v. NASA, 180 F.3d 303 (D.C. Cir. 1999) – Served as lead counsel for McDonnell Douglas in ground-breaking reverse-FOIA litigation, establishing that line item prices in government contracts can be protected from public disclosure under Exemption 4 and the Trade Secrets Act.
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 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.
Certain Flash Memory Chips and Products Containing Same, (2008), USITC Inv. No. 337-TA-664 – Representing respondents Sony Corporation and Sony Corporation of America in against allegations from Spansion, Inc. of patent infringement on Sony products incorporating flash memory devices (e.g., USB flash drives, personal computers, MP3 players, etc.).
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 Variable Speed Wind Turbines and Components Thereof (2009), USITC Inv. No. 337 – TA – 641 – Represented respondents Mitsubishi Heavy Industries, Ltd., et a., 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.
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.
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.
Certain short-wavelength light emitting diodes, laser diodes and products containing same (2008), USITC Inv. No. 337 – TA – 640 – Representing 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 – Represented 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 – 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.
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.
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 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 more than 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.

Select News & Events

Publications

Intellectual Property Advisory - New Requirements for Submission of Bioequivalence Data for Generic Drug Applications
January 28, 2009
How to Start From Behind and Finish Ahead: Section 337 From a Respondent's Perspective
September 12, 2005
Nanotechnology Thriving on Patents
April 2005, Intellectual Property Today