Practice/Industry Group Overview
Fried Frank brings a sophisticated, multi-disciplinary approach to matters involving patents, copyrights, trademarks and other intellectual property rights (IPR). Our lawyers have a long track record of success and innovation in litigating claims for alleged infringement of IPR.
Our intellectual property attorneys provide qualitative assessments of IPR and IPR claims in the context of mergers and acquisitions, private equity investments, secured financing, and other business transactions.
We also provide clearance opinions and advice with regard to business behavior and transactions involving IPR, including transactions impacted by antitrust, bankruptcy, tax, and other laws. We prosecute applications for patents and United States registrations of trademarks and other IPR.
Intellectual Property and Technology: Selected Representations:
KSR International Co. v. Teleflex, Inc., et al.
Fried Frank successfully defended KSR International Co. in this action for alleged infringement of three patents claiming position adjustable vehicle control pedal systems. The plaintiff, Teleflex, had challenged KSR's supply of pedal systems to multiple high volume General Motors, Ford, and Chrysler vehicle programs. Represented by Fried Frank litigation partner James W. Dabney, KSR successfully moved for summary judgment declaring that all of the asserted patent claims were invalid as either anticipated by prior art or as encompassing at least some subject matter that would have been "obvious" at the time the claimed inventions were made. Teleflex appealed to the Court of Appeals for the Federal Circuit, which vacated the district court's judgment and remanded for trial. Fried Frank then successfully petitioned the Supreme Court to grant review. Mr. Dabney continued to act as lead counsel for KSR in the Supreme Court and orally argued the case before the Justices. Fried Frank of counsel John F. Duffy appeared as co-counsel for KSR in the Supreme Court. In a unanimous decision, the Supreme Court reversed the Federal Circuit's judgment and reinstated the district court's summary judgment of invalidity.
ARIAD Pharms., Inc. et al. v. Eli Lilly & Co.
Fried Frank represents ARIAD Pharmaceuticals, The President and Fellows of Harvard College, the Massachusetts Institute of Technology, and The Whitehead Institute for Biomedical Research in this Federal Circuit appeal from a judgment awarding approximately US$65m in damages for infringement of U.S. Patent No. 6,410,516 B1 entitled "Nuclear Factors Associated With Transcriptional Regulation." The defendant-appellant has raised multiple purported grounds for reversal. The principal brief for the plaintiffs-appellees was filed September 26, 2008. The Fried Frank team includes New York litigation partner Stephen S. Rabinowitz and also reunites the KSR team leaders, James W. Dabney and John F. Duffy. The ARIAD appeal remains pending and undecided at this writing.
Carnegie Mellon University v. Hoffmann-La Roche Inc., et al.
Fried Frank successfully defended Hoffmann-La Roche Inc., Applera Corporation, Laboratory Corporation of America, and co-defendants against claims for alleged infringement of three patents claiming recombinant plasmids for expression of bacterial DNA polymerase enzymes. In a decision handed down September 8, 2008, the Court of Appeals for the Federal Circuit affirmed a summary judgment declaring invalid, as lacking sufficient written description, seventy-two (72) claims in three related patents assigned to Carnegie Mellon University (CMU). The Federal Circuit also affirmed a summary judgment of non-infringement as to the surviving claims asserted by CMU. Fried Frank litigation partner Stephen S. Rabinowitz was lead counsel for the defendants. A petition for rehearing en banc is pending at this writing.
Technology Patents LLC v. Deutsche Telekom AG, et al.
Fried Frank represents defendants France Telecom, Orange, One GmbH, and several co-defendants in this action for alleged infringement of two patents claiming apparatus and methods for the international transmission and receipt of paging messages. The case raises novel issues associated with the extent to which United States patent law can be applied to conduct outside the United States and the circumstances, if any, in which separately owned and operated apparatus can be aggregated and deemed, collectively, to embody a patented invention, an issue is sometimes referred to as "joint" infringement liability. The case is pending in the District of Maryland.
In re Bilski
Fried Frank successfully represented amicus curiae Regulatory DataCorp, Inc. (RDC) in this Federal Circuit appeal concerning the scope of patentable subject matter under 35 U.S.C. § 101. At issue in the Bilski case is whether a particular claimed method for "managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price" constitutes a "process" within the meaning of 35 U.S.C. § 101. More broadly, the Bilski case concerns the extent to which "business method" subject matter is subject to regulation by United States patent law. In an unusual development, the Federal Circuit invited Fried Frank of counsel John F. Duffy to make oral argument as a friend of the court. In a 9-3 decision handed down October 30, 2008, the court cited RDC's brief and adopted a position urged by RDC, namely, that statutory term "process" was not subject to a "so-called 'technological arts test,'" in part because "the meanings of the terms "technological arts" and "technology" are both ambiguous and ever-changing."
Rosenruist-Gestao E Servicos LDA v. Virgin Enters. Ltd.
Fried Frank successfully represented Virgin Enterprises Ltd. in this Fourth Circuit appeal concerning the scope of a district court's subpoena power under 35 U.S.C. § 24. In a case of first impression, the Fourth Circuit held that the term "witness," as used in 35 U.S.C. § 24, includes a corporation, and that service of a deposition subpoena on an alien corporation's domestic representative under 15 U.S.C. § 1051(e) was valid to require the corporation to make a designation and to appear for deposition in the United States under Federal Rule of Civil Procedure 30(b)(6), irrespective of whether the corporation had contacts with the United States apart from its filing and prosecuting an application for issuance of a United States trademark registration. The Fourth Circuit accordingly reversed a district court judgment that had declined to enforce the subject subpoena in full. The Fourth Circuit's decision prompted a lengthy dissent and a petition for Supreme Court review. Fried Frank successfully opposed certiorari in May 2008.
Electrolux Home Care Prods., Inc. v. Black & Decker, Inc. et al.
Fried Frank successfully defended Electrolux Home Care Products, Inc. (EHP) in this action for declaratory judgment of non-liability for alleged patent infringement. The defendants filed compulsory counterclaims against EHP for alleged infringement of a patent claiming vacuum cleaner apparatus. After persuading the district court that any claim construction issues were appropriately resolved in the context of summary judgment motions rather than separate claim construction proceedings, Fried Frank moved for summary judgment of invalidity under 35 U.S.C. § 103(a) less than ninety days following the commencement of the action. Within ten days of the filing of the summary judgment motion, the defendants stipulated to the unconditional dismissal, with prejudice, of their patent infringement counterclaims.
Yves Saint Laurent Parfums S.A., et al. v. Costco Wholesale Corp.
Fried Frank successfully defended Costco Wholesale Corp. in this action for alleged trademark infringement, false advertising, and related torts arising from Costco's use of certain display packaging and its allegedly "unauthorized" sale of branded lip and mascara products. The case raised novel issues concerning the extent to which a seller of genuine goods is legally required to affix "re-packaging" notices on theft-resistant display packaging. Following pretrial discovery and mediation, the parties entered into a confidential settlement. All claims made against Costco were dismissed with prejudice and with no relief of any kind being awarded against Costco.
Novartis Vaccines and Diagnostics, Inc. v. Hoffmann-La Roche Inc., et al.
Fried Frank represents Hoffman-La Roche Inc., Trimeris, Inc., and co-defendants in this action for alleged infringement of U.S. Patent No. 7,285,271 B1 entitled "Antigenic Composition Comprising an HIV gag or env Polypeptide." The plaintiff seeks damages and injunctive relief on account of the manufacture and sale of a composition known as FUZEON, and end stage treatment for acquired immunity deficiency syndrome (AIDS). On behalf of two of the defendants Fried Frank has served an answer and counterclaims for judgment declaring that the asserted patent claims are invalid on multiple grounds including double patenting, and that the asserted patent is unenforceable in its entirety by reason of inequitable conduct. On behalf of two other defendants Fried Frank has filed motions to dismiss for lack of personal jurisdiction. Fried Frank has also moved for a transfer of venue. The case is pending in the Eastern District of Texas as of this writing.
eSpeed Inc., et al. v. BrokerTec USA, LLC, et al.
Fried Frank successfully defended units of ICAP plc and OMX Group in jury trial of claims for alleged infringement of U.S. Patent No. 6,560,580B1 entitled "Automated Auction Protocol Processor." The plaintiffs had sought more than US$100m in damages plus preliminary and permanent injunctive relief. Following 15 hours of deliberations, a jury returned a unanimous verdict that all of the asserted claims of the plaintiffs' patent were invalid for lack of adequate written description. Concurrently with the jury trial, Fried Frank tried to the Court a defense of inequitable conduct. The District Court subsequently held that the '580 patent was unenforceable by reason of inequitable conduct. The plaintiffs then appealed to the Court of Appeals for the Federal Circuit, which affirmed the District Court's holding of inequitable conduct and declined to reach any of the other purported grounds for appeal raised by the plaintiffs.
AB Electrolux v. Bermil Industries Corp.
Fried Frank successfully represented AB Electrolux in an action for alleged infringement of trademarks used in association with professional laundry equipment. The defendants included AB Electrolux's exclusive North American distributor of Electrolux-manufactured professional laundry equipment. The distributor had disputed AB Electrolux's ownership of the asserted marks and filed applications for registration in the context of a termination of its distributorship. Following issuance of a TRO and expedited discovery, the Court issued a broad preliminary injunction against the defendants, finding that they were unlikely to succeed on the merits of their alleged affirmative defenses of abandonment or acquiescence. The defendants subsequently stipulated to the entry of declaratory and permanent injunctive relief against use of the disputed marks in association with professional laundry equipment not manufactured or approved by AB Electrolux.
Sprint Communications Company LP v. Theglobe.com, Inc., et al.
Fried Frank successfully defended Theglobe.com, Inc. and Voiceglo Holdings against claims for alleged infringement of multiple patents including U.S. Patent No. 6,665,294 entitled "Broadband Telecommunications System." Following an initial round of discovery and mediation, the parties entered into a confidential settlement agreement with the plaintiff's claims being dismissed with prejudice. This case raised novel issues associated with the post-mortem filing of continuation applications, limits on claiming apparatus by reference to functions performed, and the extent to which conduct of independent actors may be aggregated for purposes of imposing direct infringement liability.
Virgin Trademark Matters
Fried Frank has continued to represent Virgin Enterprises Ltd. (VEL) in multiple federal court litigations and opposition proceedings before the Trademark Trial and Appeal Board (TTAB). Fried Frank has obtained judgments awarding VEL control over domain names (e.g., virgindirect.com), sustaining opposition to registration of VIRGIN-formative marks (e.g., VIRGIN VEHICLE), and providing for worldwide injunctive relief. In one case against a Nigerian defendant, VEL obtained control over the domain name previously used by the defendant (virginbeautyltd.biz) and associated it with a copy of a final judgment and permanent injunction order issued by a United States court.