Ongoing Matters

Minebea Co., Ltd. v. Think Outside, Inc. and Peripheral Technologies, Inc. Minebea Co., Ltd. v. Chicony Electronics Co., Ltd. and Chicony America, Inc. May 2001 and August 2003
Currently represent Think Outside, a leading designer of foldable keyboards for personal digital assistants and other compact electronic devices, and Chicony, a leading manufacturer and designer of keyboards, in patent infringement actions filed in the U.S. District Court, Southern District of California. The cases involve a patent on a structure designed to prevent the tilting of keytops on a keyboard. During the Markman phase, the District Court accepted certain of the claim constructions we proposed on behalf of Think Outside. Shortly thereafter, we filed motions for summary judgment of non-infringement. The District Court granted certain of these motions, disposing of approximately 95% of the case. The plaintiff has appealed the Court's disposition to the Federal Circuit and we are currently handling that appeal.

BEA Systems Inc. v. Web Balance, Inc. September 2003
Defending BEA Systems against a patent infringement claim implicating BEA's WebLogic Server software. In the fall of 2003, Web Balance sued BEA customers in Illinois, alleging that these customers infringed Web Balance's patent by using BEA's WebLogic Server software in their businesses. Morrison & Foerster moved quickly to put a stop to this customer harassment. The Firm filed a declaratory judgment complaint on BEA's behalf in Massachusetts, defeated Web Balance's motion to dismiss this complaint, and, working with customer counsel, convinced the Illinois court to stay the customer suit pending resolution of the Massachusetts action. Discovery is ongoing, with a trial expected in early 2005.

SCO Group v. Novell June 2003
We represent Novell in one piece of the litigation brought by The SCO Group that is currently embroiling the Linux industry. SCO has sued Novell for "slander of title" based on Novell's contention that ownership of the UNIX copyrights that are at issue in the broader litigation did not transfer to SCO. We successfully removed the case from state to federal court and are currently litigating motions to dismiss.

OpenTV v. Liberate Technologies September 2001
Currently represent OpenTV, a supplier of interactive television systems, in patent litigation against Liberate Technologies. The action is pending in the U.S. District Court in San Francisco, California.

Applied Materials v. Negevtech Ltd. 2004
We represent Negevtech in defending this patent infringement action involving semiconductor defect inspection technology in the Northern District of California.

Classen v. Kaiser Permanente 2004
We represent several Kaiser Permanente entities in a patent infringement action filed in the District of Maryland. The Kaiser companies were sued by Classen Immunotherapies for allegedly infringing four patents related to claimed methods for determining vaccination protocols to decrease the incidence of immune-mediated disorders later in life. We have filed a Rule 11 motion against the plaintiff, alleging that the plaintiff failed to investigate both the procedural and substantive grounds for its claims.

Software AG v. BEA Systems, Inc. 2003
We represent BEA Systems in this patent infringement action involving web services technology before Judge Sleet in the District of Delaware. The deadline for completion of discovery has passed and the Court issued a claim construction order on September 23, 2004. Currently, the parties are exchanging expert reports and requesting leave to file summary judgment motions. A May 2005 trial is scheduled.

2004

International Academy of Science v. Novell Corporation May 2004
Served as counsel for Novell in defending allegations of patent infringement in the United States District Court for the Northern District of California. In the complaint, plaintiff, an entity owned by Roger Billings, alleged that the patent at issue was sufficiently broad to encompass all methods of distributed data processing and networking. We raised several counterclaims on Novell's behalf. In 1994, we initiated reexamination proceedings, and the district court action was, at plaintiff's request, stayed. On reexamination, the PTO rejected the key claims of the patent at issue in the lawsuit. In May of 2004, the Federal Circuit upheld the PTO's rejection. In light of these rulings, Plaintiff agreed to dismiss its case against Novell, and stipulated to entry of judgment on one of Novell's counterclaims. As the prevailing party, Novell is now seeking to recover its costs.

France Telecom and Philips v. Novell April 2004
Represented Novell, Inc. in a patent infringement case brought by France Telecom S.A. and U.S. Philips Corp., in the United States District Court for the District of Delaware. The case involved public-key encryption techniques and Novell's NetWare networking software. After Novell obtained a favorable claim construction ruling in District Court, plaintiffs resorted to theories of infringement under the doctrine of equivalents. An arbitrator in related proceedings against Novell's licensor, RSA Security, Inc., rejected all of these arguments. Shortly thereafter, plaintiffs dismissed with prejudice their suit in District Court.

2003

Tumbleweed Communications Corp. v. Yahoo! Inc. June 2003
Represented Yahoo! Inc. and HSBC Bank USA in a patent infringement lawsuit filed by Tumbleweed Communications in late 2002. The suit involved three patents disclosing systems for delivering over the Internet documents traditionally sent by mail, FedEx, or facsimile. Tumbleweed alleged that two Yahoo! properties unrelated to the document delivery field infringed the three patents: Yahoo! Greetings (Yahoo!'s on-line card site) and PayDirect (a funds transfer service offered by Yahoo! in conjunction with HSBC). Yahoo! and HSBC denied Tumbleweed's infringement claims. Within months of taking over the case from another firm, we developed numerous grounds on which the Court could invalidate the patents, and, after conducting limited discovery and an independent investigation of Internet standards, filed an inequitable conduct counterclaim explaining why the Tumbleweed patents are unenforceable. Shortly after this counterclaim was filed, the case settled.

Yahoo! Inc. et al v. Careerbuilder, LLC May 2003
Represented Yahoo! and its subsidiary, HotJobs, in a declaratory judgment action in the United States District Court for the Northern District of California involving Careerbuilder's on-line employment recruiting patents. We successfully defeated Careerbuilder's motion to transfer the case to its home forum and then developed overwhelming evidence of invalidity and inequitable conduct. Careerbuilder ultimately agreed to dismiss its claims with prejudice and granted Yahoo! a covenant not to sue on other Careerbuilder patents, all at no cost to Yahoo!.

MLR LLC v. U.S. Robotics Corp. et al. March 2003
Represented Toshiba in a patent infringement case in the Northern District of Illinois. The six patents-in-suit related to cellular telephony, and in particular, to mechanisms for transmitting data from laptops over cellular telephone systems. The plaintiff was represented by Niro, Scavone, Haller & Niro. After Toshiba filed summary judgment motions of non-infringement, the action settled.

2002

Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., Yahoo! Inc., and ESPN/Starwave Partners January 2002
Represented Yahoo! in a patent infringement suit filed in the U.S. District Court for the Eastern District of Virginia, involving a method of and apparatus for playing a "fantasy" football game on a computer. Fantasy Sports filed suit alleging that the defendants' computerized fantasy football games infringed its patent. Yahoo! filed a motion for summary judgment of non-infringement, arguing that its Yahoo! Sports Fantasy Football game does not satisfy the "bonus points" limitation. The court granted summary judgment that Yahoo!'s product does not infringe the patent as a matter of law. The decision was affirmed in the U.S. Court of Appeals for the Federal Circuit.