Our Intellectual Property Litigation Group has earned a national reputation for successful resolution of large, complex disputes involving rights in intellectual property. We handle the full range of patent, trademark, copyright, and trade secret litigation throughout the United States for large and small businesses, universities, and individuals. We also advise venture capital firms and institutional investors on the business implications of pending or threatened intellectual property litigation.
Patent Litigation
The largest component of our IP litigation practice is patent litigation. The disputes we have litigated for our clients cover inventions in such diverse fields as recombinant DNA, monoclonal antibodies, medical devices and diagnostics, computer electronics and software, instant photography, cellular telephones, Internet search engines, and novel business methods.
We litigate patent disputes in federal courts throughout the United States, in the Court of Appeals for the Federal Circuit, and at the International Trade Commission. We also coordinate and supervise global patent litigation in multiple foreign jurisdictions.
To maximize our clients’ opportunities for success, we have assembled a talented group of patent litigators who combine in-depth knowledge of patent law, an aptitude for science and technology, with an expertise in trial advocacy, including substantial jury trial experience.
Our patent litigators approach each case as a problem in communication skills: how to present the often-complex technical and legal issues to a judge or jury in clear, simple, persuasive language. To help tell your story in a succinct way, we select scientific and economic professionals with the same objective in mind; and we work with leaders in their fields at top universities and research institutions. When appropriate, we take advantage of the latest technology in animation, video and computer graphics to assist in telling our client’s story in the courtroom. We also make frequent use of mock trials and jury research when preparing a case for trial.
At all stages of your case, our patent litigators will draw on your resources, such as your in-house scientists and patent specialists. We also collaborate with the patent attorneys, patent agents, and technology professionals within Foley Hoag’s Intellectual Property group. The members of this group provide us with expertise and hands-on experience in biochemistry, molecular biology, immunology, medicine, surgery, computer and Internet technology, electrical engineering, mechanical engineering, and physics.
We believe this integrated approach to patent litigation is the key to achieving successful results for our clients in complex, high-stakes patent disputes. We approach global patent litigation in a similar fashion, assembling an integrated team of foreign patent counsel and experts in a coordinated effort worldwide.
Whether your goal is enforcing your patents against competitors, resolving inventorship disputes, or defending against infringement claims, we focus on your business objectives and work to find the most effective way to achieve those objectives. From the outset, we’ll explore with you the challenges, risks, costs, and opportunities associated with alternative strategies for dispute resolution, including litigation, mediation, arbitration, and negotiated settlements.
Representative Patent Cases
- Represented Biogen Idec, Inc., Genzyme Corp., and Baxter Healthcare in a suit challenging the validity and enforceability of Columbia’s patent on compositions and methods used in producing proteins by recombinant DNA technology. Shortly before trial, we obtained a royalty-free covenant not to sue from Columbia.
- Represented QLT in complex patent and trade secret litigation arising out of a collaboration among QLT, Massachusetts Eye and Ear Infirmary, and Massachusetts General Hospital that led to the development of photodynamic therapeutic treatment for age-related macular degeneration. We obtained a district court order correcting inventorship to add QLT’s scientist to the patent, leading to a stipulated dismissal.
- Successfully defended Becton Dickinson in a patent infringement action involving DNA probes for detection of bacterial pathogens. The district court’s decision invalidating the patent was affirmed by the Federal Circuit. Enzo Biochem, Inc., v. Gen-Probe, Inc. et al., 424 F.3d 1276 (Fed. Cir. 2005).
- Representing Fresenius in patent litigation under the Hatch-Waxman Act challenging an Abbreviated New Drug Application filed by generic manufacturer Roxane Laboratories, Inc. involving Fresenius’s patented PhosLo® brand drug for patients with end-stage renal disease. We are also defending Fresenius against an antitrust counterclaim.
- We are currently defending KVH Industries, Inc, a manufacturer of mobile satellite systems, in patent litigation involving satellite dish devices and methods for automatically positioning satellite dishes.
- Defending Global Bio-Chem Technology Group and its affiliates in an ITC proceeding involving claims of patent infringement related to genetically engineered L-lysine and methods of production.
- Defended Atrix in a patent infringement suit involving biodegradable polymers used for drug delivery. Under the terms of a settlement, Atrix obtained a royalty-free license under TAP’s past and future patents to make Atrix’s prostate cancer drug Eligard®.
- Represented Lambda Electronics in defense of a patent infringement action involving DC-to-DC power converters. This was one of a group of actions brought against four of the leading power converter manufacturers. We obtained favorable claim construction rulings and successfully defended them on appeal before the Federal Circuit, which lead to a favorable settlement. VLT, Inc. v. Artesyn et al., 2004 U.S. App. Lexis 10188 (Fed. Cir. 2004).
- Represented the defendant in a patent suit by Cognex Corporation involving machine vision and software algorithms, including vision algorithms for aligning surface-mounted devices on printed circuit boards. We obtained a favorable claim construction decision leading to a successful settlement. Cognex Corp. v. Electro Scientific Industries, 214 F. Supp. 2d 110, modified, 242 F. Supp. 2d 47 (D. Mass. 2003).
- Represented Boston Communications Group, Inc. and Western Wireless Corporation in defense of a patent case brought by Freedom Wireless, Inc., a licensing company that owns a portfolio of patents on prepaid wireless telecommunications. The litigation was ultimately settled, and our clients obtained licenses under the patent-in-suit.
- Won a jury verdict of willful infringement and a damages award in an amount greater than the defendant’s gross sales of the infringing product.
- Won an eight-figure jury award for Bard, including lost profits, price erosion damages, and royalties. The decision was affirmed by the Federal Circuit. 2000 WL 915241 (Fed. Cir.).
- Defended Abiomed in a patent infringement and trade secret action involving the development of transcutaneous energy transmission devices for artificial hearts, including plaintiff’s ultimate dismissal of all patent infringement claims. After trial, the jury returned a verdict for Abiomed on all claims.
- Represented Baxter Healthcare in a patent infringement, inventorship and contract dispute involving the manufacture of recombinant Factor VIII for treatment of Hemophilia A. The case was successfully settled before trial.
- Won jury verdicts for Johns Hopkins University and its licensees that CellPro willfully infringed two patents on monoclonal antibodies and stem cell purification technology. The Court awarded treble damages and attorneys’ fees and entered a permanent injunction against CellPro’s infringing products. The judgments were affirmed in Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998). We also defeated CellPro’s march-in petition to the NIH under the Bayh-Dole Act.
- Represented MIT researchers Patrick Winston and Boris Katz in their infringement action against Ask Jeeves relating to natural language search engine technology on the Internet. The case was successfully settled before trial.
Trade Secret Litigation
Our Group has handled numerous trade secret misappropriation cases across the United States in both state and federal district courts. As we do in litigating patent infringement disputes, our Group focuses on presenting the often complex technical and legal issues to the judge and jury in clear, simple, persuasive language. We assemble teams of litigators with a broad range of litigation experience and technical expertise who focus on both business objectives and litigation strategy.
Representative Trade Secret Cases
- Successfully defended our client, Abiomed, in a two-week jury trial against claims of trade-secret misappropriation related to the development of transcutaneous energy transmission devices for artificial hearts.
- Represented Reiser against claims of trade-secret misappropriation involving a process for manufacturing cheese products. After winning an interlocutory appeal to the United States Court of Appeals for the Ninth Circuit limiting the plaintiff's principal theory of damages, we resolved the case on terms favorable to our client.
- Represented QLT in a complex patent and trade-secret litigation arising out of a collaboration among QLT, Massachusetts Eye and Ear Infirmary and Massachusetts General Hospital, which led to the development of photodynamic therapeutic treatment for age-related macular degeneration. We won judgment as a matter of law on the trade-secret misappropriation claim at the close of the plaintiff’s case.
- Successfully defended Hoffmann-LaRoche against claims, which included a motion for preliminary injunctive relief, regarding employment of the plaintiff's former employee. The employee was hired to supervise research involving the use of the polymerase chain reaction (PCR) method of nucleic acid amplification to develop diagnostic assays for HIV and other viruses. The plaintiff alleged this resulted in trade-secret misappropriation of the plaintiff's Q-beta replicase technology.
Trademark and Unfair Competition Litigation
Foley Hoag’s trademark litigation practice involves litigation in federal district courts throughout the nation. We focus on innovative legal issues, new statutory strategies and registration disputes before the Trademark Trial and Appeal Board.
Our clients range in size from large corporations policing and protecting their national brands to smaller technology companies accused of infringement.
Our trademark litigators counsel our clients regarding strategies for protecting their trademarks—whether registered or protected under common law—and we conduct investigations concerning improper use of domain names and trademarks.
On behalf of our clients, our lawyers prosecute and defend lawsuits across the nation in federal district courts under the Lanham Act and the new Anticybersquatting Consumer Protection Act. We also pursue and defend oppositions to our clients’ pending trademark applications and petitions to cancel registrations before the Trademark Trial and Appeal Board. In addition, we represent our clients during arbitrations under the new uniform dispute resolution policy of ICANN, Internet Corporation for Assigned Names and Numbers.
Included among the numerous opposition and cancellation proceedings we have pending before the Trademark Trial and Appeal Board are actions on behalf of our client American Honda Motor Co. These actions relate to well-known marks in the automotive, motorcycle, and related industries. Similarly, we have filed numerous actions relating to food industry marks on behalf of our client, Ken’s Foods, Inc., one of the nation’s leading salad dressing and sauce manufacturers. In the technology field, we are representing SolidWorks Corp. in a cutting-edge proceeding involving the issue of when a computer-file name extension can serve as a trademark.
Representative Trademark Cases
- Represented the defendant in a hard-fought dispute, eventually settled, over whether a mottled paper pattern served as source-identifying trade dress. The case involved leading-edge issues of functionality, survey evidence and expert discovery.
- Represented defendants in a trademark dispute over the name AMERICAN FIDELITY in connection with the sale of insurance products and services. After a six-day trial, the district court issued extensive findings of fact and legal rulings in favor of our client on every issue. The plaintiff elected not to appeal and to change its name.
- Sued a Chicago-based company using SWEET BABY JAY’S, as compared to our client’s registered SWEET BABY RAY’S® mark. The case settled before a hearing on our motion for preliminary injunction, with the defendant agreeing to restrictions on the marketing of its product.
- Wrote the amicus brief of the American Intellectual Property Law Association in the KP Permanent case before the Supreme Court. The position we advocated was cited by the court and adopted in its unanimous ruling.
- Defended a restaurant owner in an infringement case. The case recently settled, with our client’s establishment retaining its name.
Copyright Litigation
Our lawyers also handle copyright infringement litigation; and we advise our clients in copyright matters involving books, movies, television programs, Internet sites and computer software.
We regularly represent software vendors and licensees in software copyright and licensing litigation. These matters typically involve claims of breach of a software license agreement and, sometimes, copyright infringement and trade-secret misappropriation through copying of source code or other allegedly protected materials. Our lawyers have a thorough understanding of the underlying technology, as well as background knowledge of computer software and associated litigation. This helps ensure that you receive the most effective representation
Representative Copyright Cases
Software Related
- Represented Sybase, Inc. in a dispute with a large retail merchandise vendor concerning relational database management and related software. The matter was successfully resolved through mediation.
- Retained as special counsel for software copyright matters by Automatic Tracking Systems, a vendor of loan-tracking software and services, in an arbitration held in Cleveland, Ohio. The arbitration resulted in a judgment in favor of our client.
- Represented a major health insurer and its subsidiary HMO in litigation concerning the HMO’s development and use of point-of-service and decision-support software. The case was settled after lengthy discovery.
- Represented NationsRent, a national provider of rental equipment, in litigation involving software used at its rental locations.
Other
- Successfully represented a video production studio in defending claims based on the use of photographs of Elvis Presley in a film. We won the case on summary judgment and obtained a rare award of fees against the plaintiff.
- Represented iCraveTV and TVRadio Now, Corp. in defense of claims of copyright infringement arising out of iCraveTV's Canadian Web site, which provided a television video service.
- Represented Prime Time 24 Joint Venture, a satellite carrier, in defense of claims of copyright infringement arising from its retransmission of network programming to the home satellite-dish market.
