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Services Available
Our firm’s IP practice encompasses:
- Litigation of disputes concerning all types of intellectual property in federal courts throughout the United States and before the U.S.P.T.O., and management of IP litigation before the foreign courts.
- Risk assessment, portfolio management, and prosecution of applications for patents, trademarks, and copyrights.
- Strategic IP counseling, audits, and due diligence.
- Supervision of global intellectual property enforcement initiatives.
- Development, negotiation, and implementation of patent, trademark, and copyright licenses, product development deals, outsourcing, and consulting contracts.
- Virtually all aspects of advertising, marketing, and promotion, including FTC review and counseling and sweepstakes counseling.
Our attorneys are uniquely qualified to multi-task within the broad discipline of IP law. During the course of any given day, it is not unusual for one of our attorneys to draft a motion for a temporary restraining order in a trademark infringement case; negotiate a Web site development agreement; counsel a client on the legality of its activities under the copyright laws; and negotiate and evaluate key intellectual property aspects of a merger, acquisition, or IPO. On the patent side, our attorneys are busy handling industry-critical litigation; counseling clients with respect to the development and maintenance of patent portfolios, patent licensing, and related technology transfers; assisting with research and development projects; and providing patent portfolio review and due diligence.
Representative Matters
Ortho-McNeil Pharmaceuticals v. Caraco Pharmaceutical Laboratories Ltd.
Caraco Pharmaceutical Laboratories, Ltd.
Winston & Strawn represented Caraco Pharmaceutical Laboratories Ltd. in an action brought by Ortho-McNeil Pharmaceutical Inc. in the District Court of New Jersey in which Ortho-McNeil asserted that Caraco infringed certain claims of U.S. Reissue Patent No. RE39,221. The patent purported to cover the pain reliever marketed as Ultracet®, which is a combination of tramadol and acetaminophen. The court granted summary judgment for Caraco, holding that Ortho-McNeil's asserted claims were obvious and therefore invalid as a matter of law. This decision paves the way for Caraco's continued distribution and sale of its popular generic version of Ultracet®.
Caraco Pharmaceuticals v. Forest Laboratories
Caraco Pharmaceutical Laboratories, Ltd.
Winston & Strawn represented Caraco Pharmaceuticals, a subsidiary of Sun Pharmaceuticals, in a patent case involving U.S. Patent No. 6,916,941, one of two critical patents that protects Lexapro, a $2 billion-per-year anti-depressant manufactured by Forest Laboratories. Caraco sought a declaratory judgment action from the district court stating that the ‘941 patent was invalid or not infringed, a requirement under the Hatch Waxman Act in order for Caraco to enter the market for generic Lexapro. Forest unilaterally granted Caraco a covenant not to sue for infringement, seeking to avoid trial and arguing that the covenant eliminated the case or controversy—thus depriving the district court of jurisdiction. The district court agreed and dismiss
Barr Laboratories v. Bayer Schering
Barr Laboratories, Inc.
Winston & Strawn represented Barr Laboratories in a four-week bench trial in November and December 2007 before the U.S. District Court for the District Court of New Jersey in a patent case against Bayer Schering. The court held that the asserted claims of Bayer Schering's U.S. Patent No. 6,787,531 are invalid due to obviousness. The '531 patent covers the oral contraceptive pill marketed as Yasmin®, currently the largest selling oral contraceptive pill on the market with annual sales of approximately $322 million for the 12 months ending January 2005 (based on IMS sales data). This ruling allows Barr Laboratories to market and launch a generic version of Yasmin®. In addition, our client will receive 180 days of exclusivity under the Hatch W
The Regents of The University of California, Abbott Molecular, Inc. and Abbot Laboratories, Inc. v. Dakocytomation California Inc.
Abbott Laboratories
In an appeal concerning a pioneering patent on DNA-based diagnostic technology, Winston & Strawn attorneys prevailed before the the Federal Circuit Court of Appeals on behalf of our clients Abbott Laboratories and The Regents of the University of California.
Chamberlain Group v. Lear Corporation
Lear Corporation
The Federal Circuit Court of Appeals issued a unanimous opinion reversing and vacating a preliminary injunction issued by the Northern District of Illinois against Winston & Strawn client Lear Corporation. The preliminary injunction had prohibited Lear from making and selling its Car2U universal garage door opener device, except under its existing contracts with General Motors.
Shuffle Master Inc. v. VendingData Corporation
Elixir Gaming Technologies, Inc.
On Friday, February 1, 2008, the U.S. District Court for the District of Nevada granted summary judgment to Winston & Strawn client Elixir Technologies (f/k/a VendingData Corp.), finding that the company's PokerOne Automatic Card Shuffler did not infringe patents held by Shuffle Master, Inc, (SMI), its main competitor.
Novartis v. Sun Pharmaceuticals
Sun Pharmaceutical Industries, Ltd.
Winston & Strawn secured a significant settlement for client Sun Pharmaceuticals in a patent infringement lawsuit brought by Novartis involving its Alzheimer's drug Exelon® (rivistigmine). Novartis sued Sun on two patents after Sun filed its Abbreviated New Drug Application seeking to market generic rivistigmine. That matter was consolidated as part of a multi-district litigation action in the Southern District of New York. This case involved several complex discovery issues, including lengthy proceedings before Israeli courts and a privilege dispute involving the application of Swiss law, which culminated in a 100-page opinion by the court. The Winston team aggressively pursued an inequitable conduct theory, forcing Novartis to drop the
Verizon Communications, et al. v. Vonage Holdings, et al.
Verizon Communications
Winston client Verizon Communications sued Vonage, the largest provider of voiceover internet service in the United States, alleging that Vonage had infringed several of Verizon’s patents, including those related to connecting calls to ordinary phone lines, features such as call forwarding, and the use of Wi-Fi networks for internet-phone service.
Perfect 10 v. VISA and MasterCard
MasterCard International Incorporated
Winston & Strawn represented MasterCard Inc. in a lawsuit brought by Perfect 10, a Web site and magazine publisher.
Loker Hydrocarbon Institute Patent Matters
University of Southern California
Winston & Strawn attorneys have represented Dr. George A. Olah, a Nobel Prize winner in Chemistry, and the University of Southern California's Loker Hydrocarbon Institute, in the preparation, prosecution, and licensing of various patents in the field of hydrocarbon processing, oil and gasoline additives, fuel cells, and in chemical recycling of carbon dioxide.
Perfect 10 v. Google Inc.
Google, Inc.
Winston & Strawn represented Google Inc. in a copyright, trademark, and publicity law challenge alleging direct, contributory, and vicarious liability theories brought by Perfect 10, a Web site and magazine publisher. Perfect 10 claimed that Google's method of providing Web searches and image searches to the public, as well as its practice of selling advertising space tied to key words used by consumers in searches, are a violation of the copyright, trademark, and publicity rights claimed by Perfect 10. Our attorneys defended against Perfect 10's motion for a broad preliminary injunction. Google prevailed on most grounds but the District Court found for Perfect 10 on one ground. In November 2006, one of our attorneys argued for Google befor
Arista Records et al v. Launch Media, Inc.
Yahoo! Inc.
Winston & Strawn client Launch Media, Inc. (now owned by Yahoo!, Inc.) operates LAUNCHcast, an internet radio Web site.
Biovail Laboratories Inc. v. Anchen Pharmaceuticals, Inc.
Anchen Pharmaceuticals Inc.
Winston & Strawn represented Anchen Pharmaceuticals, Inc. in a lawsuit brought by Biovail Laboratories, Inc. in the Central District of California alleging infringement of patents covering Biovail's antidepressant WELLBUTRIN XL following Anchen’s submission of an FDA application to sell a generic version of the drug.
Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Laboratories, Ltd., 476 F.3d 1321 (Fed. Cir. 2007)
Caraco Pharmaceutical Laboratories, Ltd.
Winston & Strawn represented Caraco in a patent infringement lawsuit brought by Ortho-McNeil in an effort to block approval of Caraco's application with the FDA seeking permission to market a generic version of Ortho-McNeil's painkiller Ultracet® (tramadol/acetaminophen). Ortho-McNeil alleged that our client’s proposed generic Ultracet infringed a patent claiming tramadol and acetaminophen compositions “in a weight ratio of about 1:5,” which Ortho-McNeil had interpreted to mean a range of ratios from 1:3.6 to 1:7.1. Caraco’s proposed weight ratio for its generic was outside of this range, but Ortho-McNeil argued that Caraco could produce individual pills that did fall within Ortho-McNeil’s interpretation of the patent claim. Working with Ca
Abbott Laboratories v. Baxter, Inc.
Abbott Laboratories
For the past several years, W&S has represented Abbott Laboratories and Central Glass, Ltd. of Tokyo in connection with various patent and licensing matters regarding Abbott’s drug Ultane, an inhalant anesthetic. In 2003, the United State Supreme Court denied a writ of certiorari brought by Baxter Healthcare and upheld a ruling by the Seventh Circuit in favor of Abbott, which precluded Baxter from using a generic version of the drug to compete with Abbott until the expiration of their contractual relationship in December 2005. We are also representing Abbott and Central Glass in related patent infringement matters against Baxter involving a patent our clients received in connection with the addition of an inhibitor to Ultane (need re
OPTi Inc. v. NVIDIA Corporation
OPTi, Inc.
Winston & Strawn was retained by OPTi, a company that was formerly the leading manufacturer of core logic chipsets, in connection with its program to monetize its portfolio of patents. In October 2004, Winston attorneys filed suit on behalf of OPTi against NVIDIA Corporation seeking to enforce OPTi’s patents on key features of the PCI and LPC buses that are ubiquitous in Intel compatible computers and servers. OPTi prevailed on 13 out of 15 claim limitations at issue at a Markman hearing in April 2006. The case settled in early August 2006, netting OPTi a lump sum payment of $11 million and commitment from NVIDIA to either abandon the technology or pay going-forward royalties. Since the date of the Markman, our client’s market capitalizatio
Kos Pharmaceuticals, Inc. v. Barr Laboratories, Inc.
Barr Laboratories, Inc.
In March 2005, just days before the district court for the Southern District of New York was scheduled to rule on a case-breaking preliminary injunction motion, W&S forced a favorable settlement for client, Barr Laboratories, in a patent infringement case over the blockbuster cholesterol-lowering drug Niaspan. To protect its most important asset, Kos Pharmaceuticals had erected a barrier of seven patents around Niaspan, its most lucrative and rapidly growing drug with nearly half-a-billion dollars in annual sales. The case was literally “bet-the-company” for Kos because Niaspan provides over 80 percent of the company’s profits to support its $1.8 billion market capitalization. Even though the case was not scheduled for trial until February
Pegasus Development Corp., and PMC, LLC, v. DirecTV, Inc., Thomson, Inc. et al.
Thomson Inc.
We are currently representing Thomson, Inc., owner of the brand name RCA, in connection with this multidistrict patent infringement/antitrust case, which also involves DirecTV, EchoStar, and Scientific-Atlanta. The technology at issue involves software relating to interactive program guides used with digital satellite broadcasts. Thomson has already obtained a favorable settlement from one of the defendants, Gemstar-TV Guide International, in connection with its antitrust counterclaims.
Precision Consulting v. Virsa Systems, Inc.
Virsa Systems, Inc.
We represented Virsa Systems, a provider of software programs for monitoring and securing corporate computer systems, in a lawsuit brought by Precision Consulting in the Southern District of California.
Pixion Inc. v. PlaceWare Inc.
Microsoft Corporation
Microsoft selected Winston & Strawn as one of its preferred providers in the patent litigation area. In this capacity, our attorneys represented Microsoft subsidiary PlaceWare, Inc. in a patent and trade secret case brought by Pixion alleging that our client used Pixion’s confidential source code and other information in its web-conferencing software product, Live Demo. At trial, the jury returned a verdict in favor of PlaceWare on all counts. Pixion has appealed the matter to the Federal Circuit.
Huntsman et al. v. Soderbergh et al.
ClearPlay, Inc.
We defended ClearPlay against copyright infringement claims brought by eight major motion picture studios, and against trademark infringement claims brought by 16 major Hollywood directors and the Directors Guild of America.
Solaia v. Smurfit-Stone
Smurfit Stone Container Corporation
We represented Jefferson-Smurfit Corp. in this patent infringement action brought in the Northern District of Illinois involving a patented software program that communicated data between a spreadsheet program on a personal computer and a network of programmable logic controllers. The case settled on very favorable terms following a Markman ruling.
Abbott Laboratories v. Mylan Pharmaceuticals
Abbott Laboratories
Winston & Strawn represented Abbott Laboratories, Mayne Pharmaceuticals, and NaPro Bio Therapeutics in a patent infringement case against Mylan Pharmaceuticals involving the leading cancer drug Paclitaxel. This high-stakes case involved five patents, virtually every conceivable type of infringement defense, and six expert witnesses. Before trial, our attorneys succeeded in eliminating most of Mylan’s defenses through summary judgment motions. After a trial in the Western District of Pennsylvania, we defeated Mylan’s final defense, and the court held that Mylan had infringed Mayne’s valid and enforceable patents.
Verizon Wireless v. Nextel Corporation
Verizon Wireless
Our firm was retained by Verizon Wireless to file suit against Nextel Communications in the Eastern District of Virginia. Verizon Wireless, which was in the process of developing a prototype push to talk (walkie-talkie) service, accused Nextel of misappropriating prototype Verizon Wireless handsets and gaining unauthorized access to Verizon Wireless’ prototype push to talk network. Verizon Wireless’ complaint alleged theft of trade secrets and sought millions of dollars in damages. This matter settled favorably for Verizon Wireless in February 2004.
Serio-US Industries, Inc. v. Plastic Recovery Technologies Corp.
Plastic Recovery Technologies Corporation
Our attorneys represented Plastic Recovery Technologies Corp. this past year in a case brought against our client in the District of Maryland by Serio-US Industries, Inc. alleging patent infringement related to automatic locks for industrial waste containers. In October 2004, we tried the case to a jury and received a verdict for our client on all counts. The case is currently on appeal.
Cellco Partnership d/b/a/ Verizon Wireless v. Nextel Communications, Inc. (Delaware case)
Verizon Wireless
Our IP attorneys assisted Verizon Wireless in preventing Nextel Communications from obtaining a federal trademark registration for the generic term “push to talk” for combination walkie-talkie cellular telephone services and thwarting Nextel’s effort to block Verizon’s entry into the “push to talk” market. After nine months of extensive discovery, both parties filed motions for summary judgment. On the eve of the summary judgment argument, Nextel agreed to relinquish all claims to the term “push to talk” and withdrew all pending applications for “push to …” combination marks for telecommunications services.
Microsoft Corporation v. Lindows.com
We represented Microsoft Corporation as co-lead trial counsel in its trademark infringement, trademark dilution, and unfair competition lawsuit against Lindows.com. The dispute, which involved the world’s most valuable trademark — WINDOWS — settled in 2004. Our client brought the case against Lindows.com after the defendant announced its intention to market a Linux-based operating system called Lindows.
Oakley v. Sunglass Hut
Luxottica U.S. Holdings Corp
We represented Sunglass Hut, Bausch & Lomb, Luxottica Group, and its named subsidiaries and affiliates in two actions brought by Oakley in the Central District of California. The plaintiff sought permanent injunctive relief and alleged violations of certain optics and coatings patents, trade dress infringement, unfair competition, and other related claims with potential liability in excess of $100 million. After discovery was virtually complete, Oakley agreed to dismiss all of its claims with prejudice, and provided a covenant not-to-sue to the Luxottica defendants with respect to their future manufacture and sale of certain sunglass lenses.
Rockwell International v. Nortel Networks
Nortel Networks Corp.
We defended Nortel in this case brought in the Northern District of Illinois involving what has often been characterized as the pioneering patent covering fabrication techniques for the semiconductor wafers used to make the microelectronic devices at the heart of all optical networks. Though the patent had been successfully enforced worldwide against more than 100 other competitors generating a reported nine-figures of licensing revenue, we were able to persuade the plaintiff to dismiss all claims against Nortel with prejudice and without any payment by Nortel, making Nortel the only industry participant to avoid a license under the patent.
Shire Pharmaceuticals v. Barr Laboratories
Barr Laboratories, Inc.
We defended Barr Labs against a trade dress infringement claim brought by Shire Richwood Inc., a unit of Shire Pharmaceuticals Group plc. The lawsuit, filed in federal court in New Jersey, challenged Barr’s sale of generic amphetamine salts used to treat hyperactivity and other behavioral symptoms in children. Shire claimed that Barr’s generic drug was identical in size, shape, and color to Adderall®, a Shire drug with $345 million in annual sales. The trial court denied Shire’s preliminary injunction to restrain Barr from using the trade dress and to recall any generic hyperactivity drugs sold by Barr. Shire appealed the decision before the Third Circuit, which affirmed the trial court decision in favor of our client.
Syndia v. The Gillette Corporation
Syndia Corporation, Roger Hickey and Jam
In a successful patent infringement challenge, the firm obtained a $10 million jury award on behalf of client Syndia Corporation against The Gillette Company. The Illinois federal jury rendered a verdict in Syndia's favor on all issues of liability, validity, and damages after unanimously finding that Gillette's process of manufacturing certain razor blades for its Mach3, Mach3 Turbo, and Venus products infringed on patents that had been issued to a Syndia co-founder. The patented technology involves coating razor blades with diamond-like carbon (DLC), which enables thinner, stronger blades. Syndia continued to seek permanent injunctive relief against Gillette barring future sales of the products and received a favorable settlement in early
Jackson v. Nortel Networks
Nortel Networks Corp.
We represented Nortel Networks in an infringement matter involving a patent that has been asserted broadly against most participants in the telecommunications and home electronics industries. The patent has been licensed to substantially all industry participants in several market segments, generating well into eight figures in license fees. Through the successful development of novel defenses, our attorneys were able to settle the Nortel case for a nuisance value, despite a $12 million jury verdict in another case involving the same patent.
Soitec v. Silicon Genesis Corporation
Soitec S.A.
We represented Soitec, the exclusive licensee of a patent for the fabrication of the silicon-on-insulator substrates, in a patent infringement case against SiGen, a Silicon Valley start-up. SiGen claimed to have developed the first truly competitive, non-infringing alternative to our client’s patented technology, which is expected to become a multi-billion industry. The case involved cutting edge issues in ion implantation, fracture mechanics and material science. After a six-week jury trial, we were awarded a $4.4 million judgment on behalf of our client, with total sales in the lower six figures. The verdict was affirmed on appeal. To date, no other companies have come to market with competing technologies or otherwise challenged the pate
Morton Grove Pednisolone Litigation
Morton Grove Pharmaceuticals
We represented generic drug manufacturer Morton Grove Pharmaceuticals in a patent case filed in the Northern District of Illinois involving the pediatric drug pednisolone sodium phosphate. After obtaining a significant Markman ruling in our favor, we settled by obtained a cost-free, royalty-free license to the disputed patent.
McCook Metals v. Alcoa, Inc.
Alcoa, Inc.
We tried this non-jury case brought in the Northern District of Illinois involving technology relating to a specific kind of aluminum boron mixture used in the manufacture of airplane fuselages. The case settled on very favorable terms while the court’s decision was pending.
Knowles v. Microtronic
SonionMicrotronic US, Inc.
We represented Microtronic in a patent infringement case involving electroaccoustic transducers, the critical part used in hearing aids. The case settled immediately prior to trial on terms highly favorable to our client, in part because of the existence of Microtronic’s claim against the patent holder of inequitable conduct in the procurement of the patent.
Davol, Inc. v. Allegiance Healthcare Corp.
C.R. Bard, Inc. - Chicago
We represented Davol, an operating unit of C.R. Bard, in this case brought in the District of Delaware, which was settled favorably for our client when Allegiance agreed to a permanent injunction against the distribution of a product used in its laparoscopic surgical kits.
Appellate Cases - Intellectual Property
Our attorneys have handled appeals involving a variety of legal issues, including those in the intellectual property area.
Applexion v. Amalgamated Sugar
Applexion, Inc.
We represented Applexion in this case brought in the Northern District of Illinois against one of the country’s largest sugar refiners. During discovery, our attorneys developed evidence relating to inequitable conduct in the prosecution of the patent-in-suit. Amalgamated subsequently dismissed its patent infringement claims with prejudice.
Burroughs Wellcome v. Barr Laboratories
Barr Laboratories, Inc.
Our attorneys represented Barr at trial and in subsequent appeals of Burroughs Wellcome’s suit for infringement of method of treatment patent for AZT, the drug used to treat AIDS. Winston & Strawn was brought into this case as lead trial counsel two months before trial, after discovery was closed and the legal theories had been predetermined. We were able to get quickly up to speed on a matter involving extremely complicated factual and legal issues. The case was appealed to the Federal Circuit and the United States Supreme Court. Although our petition for certiorari was denied, it was not denied prior to the Supreme Court requesting the solicitor general to express the views of the United States. The case likely set the standard that controls the determination of inventorship for drug discovery in the pharmaceutical industry.
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