REPRESENTATIVE SAMPLE OF
CASES AND MATTERS
Federal District Court
Patent cases
Lead counsel for start-up client in “declaratory judgment” lawsuit in which a competitor attacked the client’s core patents for oil recovery technology. Ed won the case on a threshold motion and then defeated the competitor’s appeal. Ed also won a rare fee-shifting motion that required the competitor to reimburse all of the client’s legal expenses in the lawsuit.
Lead trial counsel for large international generic pharmaceutical company in "Hatch Waxman" litigation over a product with a $750 million domestic market. Won an invalidity judgment at trial on the later-expiring family of patents. That judgment allowed the client to launch its generic product several years before those patents would have expired. Successfully argued and defended the invalidity judgment on appeal.
Lead trial counsel in patent infringement case involving dental tool technology. Tried the case and won a judgment on a non-infringement defense. Argued the appeal and successfully defended the judgment.
Co-lead trial counsel for Japanese manufacturer in patent infringement jury trial over "touch panel" switches used in consumer electronics devices. Filed a successful pre-trial motion that eliminated most of the damage base. After trial, the jury awarded a small award and the case settled on appeal.
Lead counsel for world's largest online retailer and consumer products manufacturer in patent infringement case relating to flexible data display technology. Successfully argued summary judgment motion for invalidity defense (patent claim was "indefinite") and won an attorney fee award against the plaintiff (a non-practicing entity).
Lead counsel for world's largest online retailer and consumer products manufacturer in patent infringement case relating to e-book reader displays. Won a strategic motion to transfer the case from Puerto Rico to the Northern District of California.
Lead counsel for national telecommunications company in a multiple-defendant patent infringement lawsuit relating to wireless communications technology. Convinced the plaintiff to allow client to sit out discovery while our team collected non-infringement evidence. Presented non-infringement case to plaintiff, which then voluntarily dismissed our client from the lawsuit.
Lead counsel for national restaurant franchise in patent case involving credit card processing systems. Won a judgment for the client on an unusual non-infringement theory framed within a threshold motion to dismiss. Argued the appeal and successfully defended the judgment.
Lead counsel for national hardware retailer in patent case involving credit card processing systems. Won a motion to dismiss on a non-infringement theory based on the detailed infringement allegations in the complaint. Filed a second motion to dismiss after the plaintiff amended the complaint. Rather than oppose the second motion, the plaintiff voluntarily dismissed its case with prejudice.
Lead counsel for plaintiff in patent case against competitor involving valve-turning equipment for underground pipes. Obtained injunction and damage settlement.
Lead counsel for plaintiff in patent case against competitor involving flanges used to join prefabricated concrete blocks in construction industry. After claim construction ruling, negotiated a stipulated injunction and a damage settlement.
Successfully represented clients in dozens of other patent cases involving: internet loan systems, laser-assisted manufacturing for structural components on airplanes, industrial plastic wrap technology and machinery, manufacturing control systems, food processing methods and equipment, cell phone and wireless technology, and many other technologies.
Federal District Court
Trademark, Trade Secret and Copyright Cases
Lead counsel for international telecommunications company in trade secret case involving internet-based entertainment systems. Won strategic summary judgment motion that eliminated the plaintiff's central damage claim. Then settled the case for nuisance value.
Lead counsel for trademark owner, a well-known Chicago restaurant, in trademark infringement case. Won summary judgment on infringement and obtained a permanent injunction against the competitor.
Lead counsel for trademark defendant based in Australia. Won motion to dismiss on jurisdictional grounds and successfully defended the dismissal on appeal.
Represented defendants (screenwriter, director, producer, and film studio) at copyright infringement trial over the Steven Spielberg/Michael Crichton movie "Twister." Won jury verdict of non-infringement.
Represented defendants in various trade secret actions involving technologies ranging from consumer products to commodities trading software.
International Trade Commission
(IP cases relating to imported products)
Lead trial counsel for Taiwanese manufacturer of integrated circuits in two separate patent cases concerning display controller technology for computer displays. Won the first trial before the Administrative Law Judge after discrediting the opponent's expert witness in a cross-examination that the judge quoted extensively in his ruling. After the judge issued this ruling, the patent owner voluntarily dismissed the client from the second case, while continuing its case against the other parties.
Co-lead trial counsel for computer chip manufacturer in multi-party patent infringement case concerning computer memory storage devices. Won a "no violation" ruling (while the other accused parties were subject to "exclusion orders").
Counsel for Taiwanese semiconductor manufacturer in patent infringement case involving semiconductor fabrication and photolithography. Hired by client after trial to draft briefs and argue post-trial motions. Invalidated all but one narrow claim that client easily designed around without any business disruption.
Court of Federal Claims
(IP claims asserted against the Government)
Lead trial counsel for the government in a patent case involving Navy and Coast Guard computer-based ship-board tactical data systems. After a two-week trial, the judge entered judgment for the government on a non-infringement defense, noting that the plaintiff's expert had been thoroughly discredited on cross-examination.
Lead appellate counsel for the government in a trade secret case filed by a federal prisoner, who alleged that the government had stolen his idea for a Kevlar cutting device (which the prison used to manufacture military helmets). Assigned to the case after the prisoner, who was represented pro bono by a national law firm, won an appeal that reversed a lower court judgment for the government. Won a petition for en banc rehearing and overturned the adverse appeal order. Briefed and argued the case before an en banc court, which ultimately affirmed the lower court judgment for the government.
Lead counsel for the government in a case involving two patents for manufacturing portable panels for bomb-proof shelters. Won summary judgment on one patent on a license defense after proving that the claimed invention was developed (and first "reduced to practice") under a series of Air Force research contracts. Obtained summary judgment of non-infringement on the remaining patent.
Lead counsel in Invention Secrecy Act case in which the plaintiff allegedly was harmed by a government secrecy order applied to a patent application for a missile guidance device. Won summary judgment on grounds that that the plaintiff had suffered no harm because it could not plausibly exploit the technology after the government declined to implement it.
Lead counsel for the government in a patent case involving pioneering laser patent involving YAG lasers. Won summary judgment on license defense after unearthing a decades-old contract report proving that the claimed invention had been developed (and first "reduced to practice") under a military research contract.
Represented the government on a wide variety of other intellectual property matters and technologies, including satellite orbit-correction systems, military hovercrafts, and cutting-edge drug research at the National Institutes of Health.