Patent

Steptoe & Johnson LLP's patent practice group has 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 fields and provide sound advice grounded in a thorough knowledge of the law and of the relevant technologies. They skillfully guide clients through all phases of patent and technology protection, including the following:

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; and
Providing validity, clearance, and infringement opinions.

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

We also frequently counsel clients on patent portfolio development and opinion matters, including freedom-to-operate and validity studies. Our attorneys also support due diligence investigations on behalf of investment groups and clients in pre-merger negotiations.

Representative Matters

Current Patent Litigation Cases

Balboa Instruments, Inc. v. Presair, LLC (C. D. CA) - Representing Balboa in a patent infringement action concerning spa controllers.
Sorensen Research & Development Trust v. Alltrade Tools (S.D. Ca) – Defending Alltrade Tools in a patent suit concerning injection molding method involving a common mold part with separate complementary mold parts.
Web Telephony v. Vonage (E.D. Tex) - Defending Vonage in patent suit involving telephony technology.
Mobile Micromedia Solutions v. Nissan North America (E.D. Tex) - Defending Nissan North America in a patent suit related to microprocessor technology.
Felix v. Honda (D. Kan.) - Defending Honda in patent infringement litigation related to the storage compartment in the Honda Ridgeline.
Ronald Katz Licensing v. Amtrak et al. (E.D. Tex.) - Representing Amtrak in patent case relating to automatic telephone call processing technology.
Simpleair Holdings, Inc. v. m-Qube, Inc. et al. (E. D. Tex) – Representing m-Qube (VeriSign, Inc. subsidiary) in patent litigation involving telecommunications and Internet technology.
Media Digital v Clarion et al. (E.D. Tex) – Defending Clarion in patent litigation involving audio entertainment systems.
Nutratech, Inc. v. Syntech (SSPF) International, Inc., (USDC – Central District of California Case No.: CV06-3709 GAF(SSx)) - Representing Nutratech in the patent infringement litigation.
VData v. Aetna (D. Minn) - Representing Aetna in patent infringement litigation involving patents relating to bar code technology.
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 U.S. District Court for the Eastern District of Texas.
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

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) - Plaintiff alleged that the In-Bed Trunk was a major selling point for the Honda Ridgeline and thus claimed to be entitled to over $100 million in damages for patent infringement.
The US District Court for the District of Kansas granted summary judgment in favor of Honda finding that the In-Bed Trunk of the Honda Ridgeline does not infringe the asserted patent.
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. of 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 (Northern District of Illinois) - 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. of California) - Represent 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. - Won stipulated judgment after successful Markman hearing in the district court, and prevailed for Cleveland Golf on appeal at Federal Circuit.
Comsat v. U.S. ( U.S. 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. – Successfully defended Cleveland Golf in alleged design patent, trade dress and trademark infringement case to stipulated dismissal with prejudice.

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