Pending Cases

• Abbott Diabetes Care Inc. v. DexCom Inc.
  We are defending DexCom, Inc., a San Diego developer and manufacturer of a device for the continuous monitoring of glucose in people with diabetes, against charges of patent infringement the District of Delaware. The Court granted DexCom’s motion to stay litigation pending reexamination of all four asserted patents. The DexCom team’s patent prosecutors filed requests for reexamination of each asserted patent, all of which were granted. The team’s litigators persuaded the court to strike an amended complaint adding more patents, and then to stay litigation pending the outcome of the four reexaminations.
• Abbott Diabetes Care v. Roche Diagnostics Corp. and Bayer Healthcare LLC
  We are defending Bayer Healthcare in a suit in the Northern District of California in which Abbott Diabetes is simultaneously pursuing claims against most of the major participants in the hand-held diabetes diagnostics market. Abbott is arguing that its patents cover fundamental aspects of modern blood glucose sensors. The court recently granted our summary judgment motion on laches, thereby barring plaintiffs from seeking damages for hundreds of millions of dollars in sales over the past six years.
• Acacia Media Technologies v. Comcast/EchoStar Communications
  We represent EchoStar, the owner of the DISH Network, in a closely watched patent infringement case involving a number of patents purportedly relating to digital media transmission. The firm has assumed a leadership position in developing the defenses against these patents, which if afforded the broad construction assigned to them by the patentees could have far-reaching effects on numerous forms of digital transmission used in many different industries.
• Amanda May v. Wacoal America Inc., et al.
  We represent Wacoal America, Inc., and a variety of retailers in this action pending in the Eastern District of Texas in which an individual inventor is alleging infringement of a patent on a bra with interchangeable straps. The case was stayed pending the resolution of an inter partes reexamination proceeding instituted by Wacoal. We are also representing Wacoal in connection with the inter partes reexamination.
• Applied Materials v. Negevtech Ltd.
  We are defending Negevtech Ltd., an Israeli manufacturer of optical wafer inspection systems, in patent litigation brought by Applied Materials, Inc., in the Northern District of California. The case involves three patents. We defeated Applied’s claims on one of the patents with an anticipated motion for summary judgment. We resolved all significant issues on another patent through a stipulation of noninfringement based on a minor redesign of Negevtech’s accused tool. We put the third patent in reexamination, with so far favorable results.
• Barry Fiala, Inc. v. Arthur Blank & Co.; Barry Fiala, Inc. v. CardUSA, Inc.
  Barry Fiala, Inc. v. Stored Value Systems, Inc.; Taylor Corp. v. Barry Fiala, Inc.
  We represent Barry Fiala, Inc., a manufacturer of paper products, in a group of patent infringement actions and licensing disputes in the Western District of Tennessee and the District of Minnesota relating to Fiala’s patent on its method of activating card-package combinations (often seen as gift cards or telephone cards) at the point of sale.
• Broadcast Innovation, L.L.C. v. Charter Communications, Inc.
  In this patent infringement case pending in the District of Colorado, our client Charter Communications faces allegations of patent infringement. The Patent Trademark Office recently ordered reexamination of the plaintiff’s “datacasting” patent, and the District Court granted Charter’s motion to stay the case less than three months prior to the start of trial.
• Broadcast Innovation, L.L.C. v. EchoStar Communications Corp.
  We represent EchoStar in a patent infringement case filed against it in the District of Colorado with respect to data broadcasting and conditional access patents. We have secured summary judgment of invalidity as to one of the patents in suit. The case as to the remaining patent is stayed pending resolution of another action asserting the same patent.
• Chiron Corporation v. Laboratory Corporation of America Holdings et al.
  We represent Chiron (now Novartis Vaccines and Diagonistics) in a suit alleging patent infringement by the Laboratory Corporation of America and the National Genetics Institute. The Chiron patent relates to DNA-based diagnostic tests for HIV. Chiron’s complaint was filed in the Central District of California. The case has been stayed pending the resolution of two interferences in the PTO.
• Civix v. Yahoo! Inc.
  We currently represent Yahoo! in this case pending in the Northern District of Illinois, involving patents on location-based searching and mapping services. In September 2007, the court granted our motion to stay the case, pending the outcome of four reexamination petitions filed with, and granted by, the U.S. Patent and Trademark Office. Our patent prosecution team, in conjunction with our litigation team, had drafted and filed three of these four petitions.
• Competitive Technologies v. General Atomics, et al.
  We represent General Atomics in the District of Colorado in a patent infringement suit brought by Competitive Technologies, Inc., over General Atomics’ homocysteine assay. The patent that Competitive Technologies is asserting was also before the United States Supreme Court in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. We succeeded in getting the U.S. Patent and Trademark Office to agree to reexamine the patent. The litigation is currently stayed.
• Cybersource Corporation v. Retail Decisions, Inc., et al.
  We represent plaintiff Cybersource Corporation, a supplier of e-transaction technology and services, in a patent infringement case against Retail Decisions, Inc., in the Northern District of California. The lawsuit involves patent claims for a method of detecting credit card fraud in Internet transactions.
• International Electronic Technology Corp. v. DIRECTV, et al.
  We represent Thomson Consumer Electronics in this action involving security technology for satellite television broadcasting. The case was filed in the Central District of California.
• Juvenon, Inc. v. Vitacost.com, Inc.
  We represent Juvenon in its patent infringement lawsuit against Vitacost.com, Inc., claiming infringement of Juvenon’s patent covering a combination of micronutrient supplements marketed to sustain energy and support healthy cells. The complaint, filed in San Francisco Federal District Court, charges that Vitacost is infringing on Juvenon’s patent by selling over the Internet its proprietary technology, which Juvenon has exclusively licensed from the University of California and is protected by United States and international patents.
• Maxwell Technologies, Inc. v. Nesscap, Ltd.
• The firm represents Maxwell Technologies, Inc., the inventor and maker of the BOOSTCAP® line of ultracapacitors, which are products that bring new levels of efficiency and power to everything from hybrid cars to windmills and other renewable energy sources. Maxwell has sued a new Korea-based competitor, NessCap Co., Ltd., for infringing Maxwell’s ultracapacitor patents and has obtained a preliminary injunction against NessCap. The case is proceeding in federal district court in San Diego and the Court of Appeals for the Federal Circuit in Washington, D.C.
• OpenTV v. Liberate Technologies
  We represent OpenTV, a supplier of interactive television systems, in patent litigation against Liberate Technologies involving set-top box software. The action is pending in the Northern District of California. Several years into the litigation, Liberate declared bankruptcy, and was then acquired by Comcast. The case has been stayed since then pending business negotiations between the parties.
• Patent Rights Ltd. (Tse) v. Apple Computer, Inc. et al.
  We represent Apple in a patent case involving DRM technology. On behalf of Apple and our co-defendants, we successfully moved to transfer the case from the District of Maryland to the Northern District of California. The case remains in the early stages of litigation.
• Phillip M. Adams & Associates, LLC v. Fujitsu Limited, et al.
  We represent Fujitsu Limited and Fujitsu Computer Systems Corp. in the District of Utah in a patent infringement action brought by Phillip M. Adams & Associates, LLC, against several computer manufacturers. The plaintiff in the action has accused the defendants of infringing seven of its patents, which relate to the detection and prevention of errors in floppy disk controllers. The case is currently pending.
• Pioneer Corp. v. Samsung SDI Co.
  We represent Pioneer Electronic Corp. and its affiliates in a patent dispute with Samsung involving plasma display panel (“PDP”) technology. In September 2005, Pioneer filed an action against Samsung and its affiliates in the Eastern District of Texas asserting infringement of two Pioneer patents. Pioneer also filed an action in the Northern District of California seeking declaratory relief that Pioneer does not infringe any valid claim of three PDP patents owned by Samsung SDI. Samsung SDI then filed a counterclaim in the Texas action asserting that Pioneer and its affiliates infringe three of its PDP patents.
• Printless Previews LLC v. Twentieth Century Fox Film Corporation, et al.
  We represent the Motion Picture Association in a patent infringement suit brought against it on a patent relating to a method of editing motion pictures that involves the use of high definition video for previews. Discovery is ongoing. We have filed a request for reexamination and a motion for summary judgment of non-infringement as to a class of films made in a particular fashion.
• Ronald A. Katz Technology Licensing, L.P. v. Ahold U.S.A., Inc.
  We represent Express Scripts, Inc., a pharmacy benefits management company based in St. Louis, in this case pending in the District of Delaware. Katz has sued for infringement of 16 patents that allegedly relate to interactive call processing, based on ESI’s telephone systems that allow users to order prescription refills, pay for prescriptions, access account information, and locate participating pharmacies.
• Ronald A. Katz Technology Licensing v. Target Corp. et al.
  We represent Target Corporation, Target Bank, and Target National Bank ("Target") in the defense of a patent lawsuit filed by Ronald A. Katz Technology Licensing ("Katz") in the Eastern District of Texas. The lawsuit involves a family of patents relating to interactive voice response (IVR) systems. The suit was filed against Target and several other defendants and is one of twenty-five similar cases brought by Katz in both the Eastern District of Texas and in the District of Delaware.
• Semiconductor Energy Laboratory Co., Ltd. v. Toppoly Optoelectronics Corp. et al.
  We represent Toppoly Optoelectronics Corp., a manufacturer of LCD panels, in a patent infringement case brought by Semiconductor Energy Laboratory Co., Ltd., in the Central District of California. The lawsuit involves several patents directed to semiconductor manufacturing process technology.
• Seoul Semiconductor Co. v. Nichia Corporation
  We are defending Nichia Corporation, a world leader in high-brightness LEDs and lasers, in a patent suit brought by Seoul Semiconductor Ltd. in the Eastern District of Texas. Nichia’s award-winning technology has brought about a revolution in lighting and has made possible next-generation HD DVD and Blu-Ray disc players. The two patents in the suit relate to semiconductor lasers.
• Stratagene v. Invitrogen Corporation
  We represent Invitrogen Corporation in a patent infringement case pending in the District of Maryland involving a patent on polymerase blends for enhanced polymerase chain reaction (PCR). We successfully petitioned the Patent and Trademark Office to reexamine the asserted patent based on new prior art, and have moved the court to stay Stratagene’s lawsuit until the reexamination and a related case are completed. Based on the reexamination and related case, Stratagene stipulated to a stay of the case.
• SuperGuide v. Thomson Consumer Electronics et al.
  We represent Thomson Consumer Electronics and Echostar Communications, defendants in this patent infringement suit involving satellite broadcast television technology. Three patents were asserted against the defendants, which include DirecTV. The patents are directed generally to the electronic receipt, processing, and display of television program listings by satellite receiver boxes. The defendants received a favorable claim construction on all three patents and the District Court granted the defendants’ motions for summary judgment on each of the patents. The plaintiff SuperGuide appealed, along with Third Party Defendant Gemstar Corporation, and the Federal Circuit affirmed the District Court’s ruling on two of the patents and remanded the third for further proceedings. The parties have agreed to ask the court to resolve Thomson’s license defense before proceeding with the remaining patent claims, and the Court held an evidentiary hearing on the defense in March 2007. The parties are awaiting a ruling from the Court on that motion.
• TiVo v. EchoStar
  We represent EchoStar in a suit filed in the Eastern District of Texas alleging that EchoStar infringes a TiVo patent that TiVo claims is related to technology that permits television viewers to determine the time at which they choose to watch programs. The jury verdict in the case is currently on appeal to the Federal Circuit.
• White v. Hitachi, Ltd., Hitachi Global Storage Technologies Inc.
  We represent Hitachi, Ltd., and Hitachi Global Storage Technologies Inc. in patent litigation in the Eastern District of Tennessee. The patent in suit relates to the design of air-bearing sliders used in hard disk drive heads.
• Zoetics v. Yahoo! Inc.
  We represent Yahoo! in this patent case pending in the District of Delaware. The patent involves anti-spam techniques for email software.

Resolved Cases

• Abbott Laboratories v. Syntron Bioresearch
  We successfully represented Syntron Bioresearch in a patent suit brought by Abbott Laboratories alleging that Syntron’s test kits infringed on the ’484 and ’162 patents concerning lateral flow assays. We took over the defense of Syntron Bioresearch from another firm. At that time, the judge had already granted summary judgment of infringement. We immediately sought and won a motion for reconsideration vacating the infringement ruling. One year later, after a three-week trial, a jury returned a verdict of non-infringement as to the two patents asserted by Abbott. On appeal, the Federal Circuit affirmed all issues, except for the construction of a single claim term. The Patent Office also granted our request to reexamine the validity of the last remaining claims. Following remand to the District Court, Syntron reached a favorable settlement.
• ACLARA BioSciences, Inc. v. Caliper Technologies Corporation
  The firm represented ACLARA in the Northern District of California in multiple actions to protect ACLARA’s rights related to microfluidic devices for genetic analysis, drug screening, and clinical diagnostics. A global settlement came on the eve of trial in ACLARA’s suit against Caliper for infringing ACLARA’s patent, and after a jury trial in a related trade secrets case.
• Action Technologies v. Novell
  We represented Novell in this patent suit brought by Action Technologies in the Northern District of California accusing Novell’s GroupWise groupware product of infringing a software patent. The District Court granted summary judgment for Novell on the ground that the patent was anticipated. The Federal Circuit affirmed.
• Activ8Now LLC v. Red Envelope
  We represented Red Envelope against patentee Activ8Now in patent litigation involving e-commerce technology. We prepared ex parte reexamination requests on the two patents that were asserted by Activ8Now. The reexamination requests were shown to Activ8Now, after which the case was settled favorably to Red Envelope before the reexamination requests were filed with the PTO.
• Actuate Corp. v. Progress Software Corp.
  The firm represented Progress Software in defending against a breach of contract action in the Northern District of California. We successfully assisted the parties in negotiating an early resolution to the case on terms favorable to our client.
• Acuson v. Hewlett-Packard
  We represented Acuson in several patent infringement actions against Hewlett-Packard that settled before trial.
• AEM Holdings, Inc. v. Cooper Industries, Inc.
  We represented AEM in patent litigation relating to multilayer chip fuses. The case was settled on a favorable basis after AEM defeated Cooper’s motion to transfer AEM’s declaratory judgment action from California to St. Louis.
• Agen Biomedical Limited v. Synbiotics Corporation
  We represented Agen in two patent cases and a supply contract action against Synbiotics Corporation. Agen is an Australian company that manufactures canine heartworm detection kits. After terminating a contractual supply agreement with Synbiotics, Agen began selling its kits in the United States via a third party distributor. Synbiotics filed a lawsuit in the Southern District of California seeking declaratory judgment that Agen’s canine heartworm detection kits infringe Synbiotics’ patent. The case settled before trial after we successfully defended two separate preliminary injunction motions, thus allowing Agen to keep its products on the market, and after Agen successfully obtained a preliminary injunction against Synbiotics in the supply contract action.
• AGI Incorporated v. Bert-Co Industries, Inc.
  We represented an affiliate of Westvaco Corporation in litigation involving patents covering packaging for DVDs in the Central District of California.
• American VideoGraphics, L.P.V. v Hewlett-Packard, et al.
  We represented Fujitsu in a suit alleging infringement of various patents held by American VideoGraphics. The patents relate to graphics display technology. The case was filed in the Eastern District of Texas.
• Amylin Pharmaceuticals, Inc. v. The Regents of the University of Minnesota
  We represented the Regents of the University of Minnesota in a suit by its licensee Amylin, alleging that the University’s patent on an amyloid polypeptide was invalid and did not cover Amylin’s pharmaceutical product. After several years of litigation, the case settled shortly after Morrison & Foerster entered.
• Angeion Corporation v. Cardiac Pacemakers Inc.
  We represented the start-up medical devices company Angeion in a suit against Cardiac Pacemakers, a leader in the cardiac rhythm management industry. The suit charged infringement of three Angeion patents covering various inventions relating to microprocessor-based implantable cardioverter defibrillators. The case was settled shortly before trial in the District of Minnesota in early 1999. We also represented Angeion in a patent infringement action recently filed by CPI in Minnesota. The case involved three defibrillator patents allegedly licensed to CPI. This case also settled.
• Applied Materials v. AST Elektronik GmbH
  We represented AST Elektronik in a patent infringement action involving rapid thermal processing methods and apparatus used in manufacturing semiconductor devices. The case settled.
• Atmel Corp. v.Macronix America, Inc.
  We represented Macronix America, Inc., in a patent infringement case brought by Atmel Corporation in the Northern District of California involving a semiconductor process patent and a semiconductor circuit patent. We obtained summary judgment of invalidity of all but one of the asserted claims of the process patent due to the on-sale bar of 35 U.S.C. 102. We also won a four day evidentiary hearing at which we established that the circuit patent was missing an inventor and could not be corrected. Following the hearing, the court granted our summary judgment motion invalidating all the claims of the circuit patent under 35 U.S.C. 102(f) due to nonjoinder of inventor. Following these victories, the case settled.
• Avery Dennison v. NCR
  We represented NCR in litigation involving patents relating to media for printing business cards.
• BEA Systems, Inc. v. Software AG, Inc., et al.
  We represented BEA Systems, a leading international application infrastructure software company, in its patent infringement lawsuit in the Eastern District of Virginia against German company Software AG and its U.S. affiliate Software AG, Inc. BEA asserted two patents relating generally to object-oriented distributed computing across heterogeneous networks. The case settled in conjunction with a case Software A.G. filed against BEA.
• BEA Systems, Inc. v. Web Balance, Inc.
  We obtained summary judgment of non-infringement for BEA Systems, a leading international application infrastructure software company, in a patent lawsuit implicating BEA’s WebLogic Server software. In 2003, Web Balance sued BEA customers in Illinois, alleging that these customers infringed Web Balance’s load balancing patent by using BEA’s WebLogic Server software in their businesses. Morrison & Foerster moved quickly to put a stop to this customer harassment. We 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. WebLogic then dismissed the Illinois customer action. In the spring of 2006, we persuaded the Massachusetts court to grant summary judgment that BEA's products did not infringe and, over Web Balance's objections, to set BEA's substantial invalidity and unenforceability defenses for trial. The case settled shortly thereafter.
• Becton Dickinson v. OMRON Healthcare, Inc.
  The firm represented OMRON Healthcare, Inc., an affiliate of OMRON Corporation of Japan, in a patent action filed in the District of Delaware. The complaint alleged that OMRON’s infrared ear thermometer infringed a patent licensed to Becton Dickinson. The court granted a motion to dismiss for lack of standing, and the case was refiled with an amended complaint adding additional plaintiffs. The case was subsequently settled to the satisfaction of OMRON.
• Benesi v. CalEnergy Operating Corporation
  The firm defended CalEnergy in a patent infringement action involving filter technology used at a geothermal plant. The matter settled following our defeat of plaintiff’s preliminary injunction motion, where the District Court held that CalEnergy raised substantial questions as to the validity of plaintiff’s patent and as to the issue of infringement.
• Biosys v. University of Florida
  We represented Biosys in a dispute with the University of Florida concerning a patent on nematode-based mole cricket pesticides. This case settled.
• The Board of Trustees of the Leland Stanford Junior University v. Bayer HealthCare LLC.
  We represented Stanford as a plaintiff in a patent infringement case in the Northern District of California. The case involved a method of evaluating the effectiveness of antiretroviral HIV therapy. The court issued a claim construction ruling in Stanford’s favor and the parties settled all claims.
• Broadcast Innovation, L.L.C. v. Comcast Corporation
  We represented Comcast in defense of a patent infringement lawsuit regarding a data broadcasting patent. After filing motions for summary judgment of invalidity and noninfringement, we obtained a favorable settlement for the client.
• Carlos A. Amado v. Microsoft Corp.
  We obtained a victory for our client against Microsoft Corporation in a patent infringement suit filed in the Central District of California involving a software application that links an Excel spreadsheet to an Access database in a live link fashion. The jury awarded our client, Mr. Armando Amado, $6.1 million for sales of the software between March 1997 and July 2003. The verdict was affirmed by the U.S. Court of Appeals for the Federal Circuit. The District Court entered a permanent injunction, but stayed the injunction pending appeal. As a condition of the stay, the District Court ordered Microsoft to escrow an account covering sales of additional infringing products. The Federal Circuit left it to the District Court to determine Mr. Amado’s share of the escrow account after consideration of Microsoft’s continued infringement of the patent. Currently, the account balance is over $65 million..
• Carnegie-Mellon University v. Chiron Corp.
  We defended Chiron against accusations that it infringed two patents covering DNA polymerase in this action originally filed in the Western District of Pennsylvania. On Chiron’s motion, the matter was transferred to the Northern District of California. On April 16, 1999, the court held a hearing on Chiron’s and Hoffmann-La Roche’s summary judgment motions for non-infringement of one of the patents asserted by the plaintiff. The court granted defendants’ motions.
  
  Thereafter, Hoffmann-La Roche filed a motion for summary judgment of invalidity of the second patent. The court granted that motion as well. The plaintiff filed a motion for reconsideration, asking the judge to reinterpret its patent more narrowly to avoid invalidity. The court denied that motion, finding that the plaintiff’s new construction was not supported by the claim language.
• Chang v. Luciw
  The firm successfully represented Chiron (now Novartis Vaccines and Diagnostics) in the successful conclusion of its long-running dispute with first the National Institute of Health and then Institut Pasteur over who was the first to invent an antibody-based diagnostic test for the AIDS virus, used by blood banks all over the world. After a favorable 2002 decision for our client by the Patent and Trademark Office, Institut Pasteur attempted to appeal the decision by filing an action in Federal District Court under 35 U.S.C. 146. Chiron prevailed in a trial to compel Pasteur to arbitrate whether the Institut could maintain its appeal, and then prevailed again in the arbitration of that issue. The arbitrator’s award was confirmed by the District Court.
• Chips and Technologies, Inc. v. OPTi, et al.
  We represented Chips and Technologies in several infringement actions in the ITC and District Court involving Chips’ page interleaving and addressing multiple memories patents. These cases settled.
• Chiron Corp. v. Abbott Laboratories
  We represented Chiron in two patent cases, one in the Northern District of Illinois and the other in the Northern District of California, against Abbott Laboratories. The cases involved DNA probes and technology used to screen blood supplies for HIV. These cases settled when Abbott agreed to take a license the evening before trial was scheduled to start.
• Chiron Corp. v. Genentech, Inc.
  The firm represented Chiron in patent litigation against Genentech in a case involving Herceptin, a Genentech monoclonal antibody product used to treat certain forms of breast cancer. Herceptin is one of Genentech’s largest selling products.
• Chiron HCV Licensing
  We represented Chiron Corporation in patent infringement suits filed in support of Chiron’s HCV protease patent licensing program against Gilead Sciences, Agouron, Vertex, and Eli Lilly. All of the cases settled.
• Chiron Corp. v. Roche Molecular Systems
  We represented Chiron Corporation in a patent infringement arbitration against Roche Molecular Systems, Inc. Chiron alleged that certain Roche HIV nucleic acid tests infringed Chiron’s patent, U.S. Patent No. 6,531,276, issued on March 11, 2003, and thus, fell within the parties’ license agreement. Roche, in turn, contested the validity and enforceability of the ’276 patent. After the arbitration hearing in June 2004 before a retired federal judge, Roche agreed to settle the matter stipulating to the validity and enforceability of the patent, allowing Chiron to retain all funds paid by Roche while the matter was in dispute, and paying Chiron an additional lump sum of $78 million. Total value of the settlement was approximately $100 million.
• Chiron Corp. v. SmithKline Beecham
  We represented Chiron in parallel actions against SmithKline Beecham in the ITC and District Court regarding Chiron’s patents on technology used to make Hepatitis B vaccine. These cases were resolved when SmithKline Beecham took a worldwide license to Chiron’s technology.
• Classen v. Kaiser Permanente
  We represented Kaiser Permanente in defending this infringement action involving vaccine technology in the District of Maryland. We were able to obtain a dismissal of the case on a Rule 11 motion.
• Collagen Corp. v. Bioplasty Inc.
  We represented Collagen in a patent infringement action involving a biochemical compound used for soft tissue augmentation through injection. This case settled.
• Commissariat a l’Energie Atomique v.Fujitsu Ltd.
  We represented Fujitsu and its subsidiaries in a patent infringement suit filed by Commissariat a l’Energie Atomique (CEA), a French government agency, relating to liquid crystal display (LCD) technology. The case, which settled, was one of many brought by CEA before the District of Delaware.
• Composite Rotor v. Beckman Coulter, Inc.
  The firm represented Beckman Coulter in defense of a patent infringement action filed by Composite Rotor in the Northern District of California regarding a medical centrifuge patent. Beckman obtained summary judgment of non-infringement, which was affirmed by the Federal Circuit.
• Correa v. Roberts
  Successfully represented Johnson & Johnson Consumer Products Co. in a patent interference against Procter & Gamble relating to feminine hygiene products. The decision of the PTO Board of Patent Appeals and Interferences holding all of Procter & Gamble’s claims to be unpatentable was summarily affirmed by the Federal Circuit.
• Coval v. Green Cross and Alpha Therapeutics
  The firm represented Alpha Therapeutics in this case in the U.S. District Court in Washington involving a patent on intravenous gamma globulin purification. The case settled after jury selection and opening argument. Although the parties were far apart on settlement going into the trial, Coval accepted our client’s previously pending settlement offer after opening statements.
• Cylink v. RSA Data Security
  We represented Cylink in a patent dispute concerning the RSA data security algorithm. This case settled.
• Derman v. PC Guardian
  We represented PC Guardian in an action in the Central District of California alleging infringement of a patent for a locking device. The District Court entered summary judgment of non-infringement in favor of PC Guardian, and its ruling was affirmed by the U.S. Court of Appeals for the Federal Circuit.
• Diasonics v. Acuson
  We represented Acuson as the defendant in a major patent case concerning ultrasound medical technology. After a several-week trial in the Northern District of California, the jury rendered an inconsistent verdict, and the case settled.
• Digcom v. Anritsu et al.
  We were retained by Mitsubishi Electric to defend them in this case filed in the Eastern District of California, which involved cellular telephone technology. This case settled.
• DoubleClick Inc. v. L90 Inc.
  DoubleClick Inc. v. Sabela Media, Inc.
  We represented DoubleClick Inc., which received a patent on a method for delivering, targeting, and measuring advertising over the Internet, in two related patent litigations. The first was filed against L90 Inc., in the Eastern District of Virginia. The second action was filed against Sabela Media, Inc., in the Southern District of New York. In both cases, the parties dismissed the cases with prejudice and granted each other certain rights in certain of their respective patents.
• Drägerwerk Aktiengesellschaft v. RAE Systems
  We represented Drägerwerk Aktiengesellschaft in an infringement action in the Northern District of California, involving Dragerwerk’s patent on a device for the selective detection of a component in a gas mixture. The case settled.
• Ecast, Inc. v. Touchtunes Music Corporation
  We represented Ecast against Touchtunes Music Corporation in a patent infringement suit that involved downloading music from the Internet to juke boxes. The case settled favorably for Ecast in the Spring of 2004.
• EchoStar Litigation
  In what has been called the biggest-ever patent case in the ITC, we successfully represented EchoStar and SCI Systems, Inc., in an International Trade Commission investigation. Complainants Gemstar-TV Guide International, Inc., and StarSight Telecast, Inc., claimed that Respondents EchoStar Communications Corporation, SCI Systems, Inc., Scientific-Atlanta, Inc., and Pioneer imported set-top boxes that infringed four United States patents. The issues involved the way in which television scheduling information and programs are delivered to a viewer, manipulated by the viewer, and watched on a television screen. We won on multiple grounds, including non-infringement, no domestic industry, patent misuse, and invalidity for failure to join a co-inventor. Complainants appealed the decision to the United States Court of Appeals for the Federal Circuit. We represented EchoStar and SCI Systems, Inc., in the appeal, and argued on behalf of all Respondents at the oral argument. We reached a favorable settlement on behalf of EchoStar and SCI before the Federal Circuit issued its decision. Gemstar also asserted the same patents against EchoStar and SCI in cases filed in the Western District of North Carolina and in the Northern District of Georgia. Those cases had been stayed pending the completion of the appeal to the Federal Circuit of the ITC decision, but now have been dismissed pursuant to the parties’ settlement. In addition, Gemstar filed counterclaims against EchoStar alleging infringement of two United States patents in an antitrust action EchoStar asserted against the Gemstar entities in the District of Colorado. The issues in these patents also involve the way in which television scheduling information and programs are delivered to a viewer. The case was transferred for pretrial purposes by the Panel on Multi-District Litigation to the Northern District of Georgia. We successfully filed a motion for summary judgment as to Gemstar’s standing to assert one of the patents and Gemstar voluntarily dismissed its counterclaim as to the other patent based on the summary judgment decision. The antitrust claims against Gemstar are no longer pending as a result of the parties’ settlement.
• Electro-Medical Systems v. Cooper Life Sciences and Dentsply International
  We represented Electro-Medical Systems of Switzerland in a patent infringement action in the Southern District of New York concerning dental equipment. We were engaged in this case at the post-trial motion stage. In an appeal to the Federal Circuit, we obtained a reversal of a judgment of willful infringement and an award of attorneys’ fees. We subsequently represented EMS in a malpractice claim against its prior law firm. That claim settled after a mediation.
• Electro Scientific Industries v. General Scanning
  We represented ESI in litigation to enforce its rights governing the use of lasers in semiconductor manufacturing. The suit was filed in the Northern District of California, and a jury awarded ESI $13.1 million in damages, and found that infringement was willful. The decision was upheld in the U.S. Court of Appeals.
• Epicenter, Inc. v. Fujitsu Components America, Inc.
  We represented Fujitsu Components America, Inc., in connection with a suit alleging patent infringement, misappropriation of trade secrets, and breach of confidential disclosure agreement with respect to Fujitsu’s rack-mounted server drawer products.
• Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., Yahoo! Inc., and ESPN/Starwave Partners (dba ESPN Internet Ventures and EIV Ventures)
  We represented Yahoo! in an infringement suit filed in the Eastern District of Virginia, involving a patent on a “fantasy” football game on a computer. Fantasy Sports claimed 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 decision was affirmed in the U.S. Court of Appeals for the Federal Circuit.
• Federal Circuit Sanctions
  We represented a Washington, D.C., patent firm in a sanctions matter before the Federal Circuit Court of Appeals.
• Forgent Networks, Inc v. Echostar Communications Corporation, et al.
  We obtained a defense verdict in the Eastern District of Texas for EchoStar in a patent invalidity suit involving a computer-controlled video system that allows playback during recording. Forgent was seeking $205 million in damages for the patent royalties on digital video recorders and had already settled cases with more than a dozen companies over the patent. After approximately one hour of deliberations, an eight-person jury found all of the asserted claims invalid as anticipated, obvious, and lacking an adequate written description. EchoStar elected not to dispute infringement at trial in favor of a strategy focused on the invalidity of the patent. It was only the second time on record that a jury in the Eastern District of Texas had handed down a defense win in a patent case by finding the patent at issue invalid. The lawsuit was brought by Forgent against essentially the entire cable and satellite television industry, including EchoStar, DIRECTV, Comcast, Cable One, Time Warner, Charter, and Cox, as well as Motorola, Digeo, and Scientific-Atlanta. Forgent alleged that it invented the DVR in 1991. All defendants other than EchoStar settled shortly before trial for a cumulative amount of roughly $28 million, leaving EchoStar as the sole defendant.
• France Telecom S.A. v.Novell, Inc.
  We represented Novell in a patent infringement case brought by France Telecom S.A., Telediffusion de France S.A., and U.S. Philips Corp. in 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, rejected all of these arguments. Shortly thereafter, plaintiffs dismissed their suit against Novell with prejudice.
• Fujitsu v. Samsung
  We represented Fujitsu Limited in a patent litigation with Samsung SDI, an affiliate of Samsung Electronics, over infringement of Fujitsu patents relating to plasma television technology. Fujitsu pioneered the development of commercially viable color plasma displays, including televisions, and is currently the world leader in this important and growing market. The litigation was filed in U.S. District Court in Los Angeles. A confidential settlement was reached soon after Fujitsu’s claims were asserted.
• Fujitsu v. Samsung Electronics
  We represented Fujitsu in global patent disputes with Samsung Semiconductor involving a variety of patents regarding semiconductor processing and design. Litigation was filed in Italy, Germany, and the U.K. as well as in the Northern District of California, the Eastern District of Virginia, and the International Trade Commission. The matter was handled by lawyers in the San Francisco, Palo Alto, New York, Washington D.C., London, Brussels, and Tokyo offices and ended in a settlement.
• Genentech Inc. v. Celltech Therapeutics
  We represented Celltech in a District Court review of an interference proceeding on a patent relating to recombinant expression of humanized antibodies. The parties reached a settlement, which was approved by the District Court and the Patent Office.
• Genentech Inc. v. Chiron Corp.
  We represented Chiron in an action Genentech filed in the Northern District of California to review a ruling of the Patent and Trademark Office awarding Chiron a patent relating to IGF-I (Insulin-Like Growth Factor-I). Chiron prevailed in the Federal Circuit, confirming that Chiron was entitled to a patent on the disputed technology.
• General Atomics, Diazyme Laboratories Division (“General Atomics”) v. Axis-Shield ASA
  We represented General Atomics in an action filed in the Northern District of California against Axis-Shield ASA for declaratory judgment that General Atomics’ Diazyme Laboratories Divisions’ enzymatic homocysteine assay does not infringe certain patents held by Axis-Shield ASA, and that those patents are invalid and unenforceable. On Morrison & Foerster’s advice, General Atomics filed an early motion for summary judgment of noninfringement, which Judge Susan Illston granted, holding that General Atomics’ enzymatic assay does not infringe any claims in either of the two remaining patents in the case.
• Georg Fischer A.G. v. Sintokogio
  We took over the representation of the Swiss foundry company Georg Fischer A.G. in actions against Sintokogio, a Japanese competitor, and several Sintokogio equipment users. The patent at issue concerned a process for making foundry sand molds, and the litigation raised issues under the Process Patent Amendments of 1988. The case settled.
• Greenleaf VPL Patents
  We represented Greenleaf Medical in a bankruptcy dispute over the VPL “virtual reality” patent portfolio. The matter was ultimately resolved through an acquisition by Sun Microsystems of the patents at issue, with a substantial payment to Greenleaf.
• GSI Lumonics Corp. v.Electro Scientific Industries, Inc.
  We represented Electro Scientific Industries, Inc. (“ESI”) in a patent infringement action brought by GSI Lumonics Corp. GSI Lumonics alleged that ESI infringed three patents concerning systems and methods for using lasers to blow links in semiconductor devices. The action was filed in the Central District of California, but was transferred to the Northern District of California. Pursuant to agreements between the parties, the case was dismissed.
• Hockerson-Halberstadt, Inc. v. ASICS Tiger Corporation
  We represented an athletic shoe manufacturer in the Eastern District of Louisiana in a suit claiming that the manufacturer infringed a patent on a running shoe heel. The matter was resolved through settlement to the manufacturer’s satisfaction.
• In re Bell
  We represented Chiron in a successful appeal to the Federal Circuit from a final rejection by the Patent and Trademark Office of claims to DNA encoding Insulin-like Growth Factors I and II.
• In re Deuel
  We filed a brief amicus curiae in the Federal Circuit on behalf of the Bay Area Bioscience Center and BIO (the Biotechnology Industry Organization). The brief urged the result the court reached: reversal of the Patent and Trademark Office’s final rejection of claims to DNA encoding heparin binding growth factors.
• Innovatron v. Thomson Consumer Electronics
  We represented Thomson in parallel actions brought by Innovatron in the ITC and the District of Columbia alleging that Thomson infringed Innovatron’s patent on a method for connecting a smart card to an electronic device. We prevailed in the ITC and in the Federal Circuit on appeal from that decision, as well as receiving a favorable claim construction decision from the District Court. Innovatron subsequently agreed to voluntarily dismiss its District Court action with prejudice.
• Instance v. OnSerts Systems, Inc., et al.
  We represented the holder of patents on extended-text label manufacturing technology against two Canadian companies in this action in the Northern District of Illinois. The jury in the case found for our client on every claim of infringement while affirming the validity of the patent.
• Intel v. Chips and Technologies
  We represented Chips and Technologies in the TRO phase of Intel’s patent infringement claims against Chips’ Intel 80386- and 80387-compatible processors. Chips successfully defended Intel’s TRO application.
• International Academy of Science v. Novell Corporation
  We served as counsel for Novell in defending allegations of patent infringement in the Northern District of California. In the complaint, the 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. In 1994, we initiated reexamination proceedings, and the District Court action was, at the 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 the light of these rulings, the plaintiff agreed to dismiss its case against Novell. As the prevailing party, Novell recovered its court costs.
• International Liquid Packaging Division v. Marubeni Corp., et al.
  We represented Marubeni Corporation in the District of New Hampshire in a patent infringement suit relating to devices and methods for manufacturing paper boxes capable of storing liquids.
• International Rectifier Corp. v. Harris Corporation
  We represented Harris in two patent infringement matters involving semiconductor patents after it was enjoined preliminarily from selling its products. This matter settled.
• Inverness Medical, et al. v. ACON Laboratories
  We represented ACON Laboratories in two cases brought by Inverness, alleging that ACON’s test kits infringe a total of nine patents. Inverness won a preliminary injunction prohibiting another company, Pfizer, from selling its e.p.t product (the market leader). Inverness filed a similar motion against Acon, asserting the same patent it had used against Pfizer, but Inverness withdrew its motion after being informed of Acon’s arguments. Over the last two years, Inverness made repeated attempts to secure a preliminary injunction. Although the District Court issued a preliminary injunction in November of 2004, we obtained an immediate stay from the Federal Circuit. The dispute was fought in the U.S. and Europe for almost three years and settled when Inverness Medical Innovations agreed to acquire ACON’s rapid diagnostics business for $175 million.
• IP Learn v. Saba Software
  We defended Saba Software in a patent infringement case filed in the Northern District of California involving five patents that purportedly covered computer-assisted learning. After preparing reexamination requests against each of the patents in suit and filing one such request, we were able to obtain a favorable settlement agreement for Saba resulting in the dismissal of the litigation.
• Jerome Lemelson
  We have represented numerous companies on negotiations involving patents issued to Jerome Lemelson over infringement claims involving bar code readers and other technologies.
• JSR Corporation v. Tokyo Ohka Kogyo Co., Ltd.
  We successfully defended Tokyo Ohka Kogyo Co., Ltd. (“TOK”) in this patent infringement action involving four JSR photoresist patents. Judgment was entered in favor of TOK following successful summary judgment motions on the applicable damages period, non-infringement, and invalidity.
• Kaiser Permanente v. Biomedical Patent Management
  We represented Kaiser in a suit against Biomedical Patent Management Corporation (“BPMC”) to invalidate a patent used to demand millions of dollars in royalties from providers of a common prenatal test for birth defects. BPMC gave Kaiser a covenant not to sue on the patent and dismissed its claims.
• Korszun v. My Virtual Model (“MVM” formerly Public Technologies Multimedia, Inc.), et al.
  On April 11, 2005, the Federal Circuit summarily affirmed the District Court of Connecticut’s decision in Korszun v. Public Technologies Multimedia, Inc., 267 F. Supp. 2d 193 (D. Conn. 2003). Plaintiff alleged infringement of a patented method of providing a “virtual dressing room” to permit an on-line user to “try on” clothing. Our client, now known as My Virtual Model (MVM), is the leading provider of on-line virtual dressing rooms for clothing retailers, with clients that include Lands End, Sears, J.C. Penny, and HSN.com. We won a crucial claim construction in August 2002, which limited the patented method to 2D image manipulation techniques, and followed that victory with a successful summary judgment motion of non-infringement, which was granted in June of 2003 based on arguments that MVM’s sophisticated method of 3D object rendering did not literally infringe the asserted 2D image manipulation claim, and that the inventor had surrendered 3D equivalents in order to overcome prior art cited by the PTO during prosecution. The Plaintiff appealed, but the initial appeal was dismissed in 2004 upon MVM’s motion to dismiss on the grounds that the defendant’s counterclaims had not been fully adjudicated. The lower court judgment was corrected, and a second appeal to the Federal Circuit was taken by the plaintiff. The appeal was argued on April 8, 2005, and within a matter of days the Federal Circuit summarily affirmed the summary judgment of non-infringement in the defendant’s favor.
• Landau v. Thomson Consumer Electronics Inc.
  The firm was retained by Thomson to defend it in a patent infringement case in the New Hampshire District Court. The patent, claiming a separable computer video display, was asserted on the eBook technology. Gemstar and Barnes & Noble were also defendants. The matter was voluntarily dismissed by the plaintiff and has not been refiled.
• Loral Fairchild Corp. Litigation
  We represented Ricoh Company, Ltd., and its subsidiary Ricoh Corporation, in this consolidation of two patent infringement actions filed against 38 manufacturers and distributors of CCDs (charge coupled devices) and products using CCDs, such as facsimiles and camcorders.
• Lucas Aerospace Ltd. v. Unison Industries
  We represented Lucas Aerospace in a patent dispute in federal courts in both Delaware and Illinois. This case involved patents relating to ignition systems for gas-turbine engines.
• Lucent Technologies v. Aspect Telecommunications
  The firm represented Aspect in defending an infringement suit on four Lucent patents covering automatic call distribution, telephone switching, and computer/telephony interface technologies. As part of that representation, we negotiated and documented the acquisition of two patent portfolios by Aspect and filed suit for infringement against Lucent. Following the exchange of expert reports and the counter-suit, we negotiated a settlement and patent cross-license between the parties.
• Lumenis Ltd., et al. v. Syneron Medical Ltd., et al.
  We successfully defended Syneron Medical Ltd., an Israeli developer of dermatological and cosmetic medical devices, and its subsidiaries, Syneron Inc. and Syneron Canada Corp., in a patent infringement action relating to medical devices used for non-invasive treatment of vascular abnormalities and hair removal. The plaintiffs alleged infringement of six patents, seeking a temporary restraining order and preliminary injunction in the Central District of California. The District Court granted in part and denied in part Lumenis’s motion for a preliminary injunction. Lumenis subsequently appealed the decision to the Federal Circuit Court of Appeals, and Syneron then filed a notice of cross-appeal. Thereafter, a settlement was reached pursuant to which Syneron obtained a worldwide non-exclusive license to the patents at issue.
• Lund, LLC, v. Panasonic Corporation of North America
  We represented Fujitsu Computer Systems Corp. in a patent infringement lawsuit in the Eastern District of Texas. The plaintiff, Lund LLC, had alleged that certain of Fujitsu and Panasonic’s tablet PCs infringed his patent, which generally relates to a removable and reversible laptop screen. We secured a very favorable settlement for Fujitsu after we submitted our invalidity contentions, which showed that the asserted claims were anticipated or obvious.
• Markman v. Westview Instrs., Inc.
  We filed an amicus brief on behalf of Honeywell regarding the proper role of the jury in determining claim interpretation. In its opinion, the Federal Court adopted our analogy to statutory construction.
• Maurice Mitchell v. Fujitsu Limited and Fujitsu America, Inc.
  In March 2003, a team of litigators in our San Francisco and Tokyo offices settled a patent infringement litigation on very favorable terms for Fujitsu. While the terms of the settlement are confidential, this was a resounding victory for Fujitsu. In this case, a patentee accused Fujitsu’s super-computers, semiconductor devices and a variety of digital televisions and products of infringing a complex multiprocessor patent. After winning a long series of discovery motions, the team moved for summary judgment asking District Judge Susan Illston to invalidate the asserted patent claims. Under the pressure of Fujitsu’s motion for summary judgment, the patentee agreed to settle on the eve of the hearing.
• McKesson Information Solutions, Inc. v. Bridge Medical, Inc.
  We represented Bridge Medical, Inc., in a patent infringement case filed against it in the Eastern District of California accusing Bridge’s software of infringing McKesson’s patent on a patient identification and verification system. The court held a bench trial on Bridge’s inequitable conduct affirmative defense in May 2006. The trial evidence included adverse testimony over several days from the attorney who prosecuted the patent, and competing expert testimony from two former Patent and Trademark Office examiners and two technical experts. The court determined that Bridge had proven by clear and convincing evidence that the patent was procured through fraud on the PTO. The court entered judgment that the patent is unenforceable, entered judgment for Bridge Medical in the entirety of the patent litigation, and closed the case.
• MedImmune v. Celltech R&D Ltd.
  The firm represented Celltech in this declaratory relief action seeking to invalidate patents on antibody humanization technology. This case settled on terms favorable to the client.
• MedImmune Inc. v. Genentech Inc., City of Hope and Celltech R&D Ltd.
  The firm represented Celltech R&D Ltd. in this patent litigation and antitrust dispute. The plaintiff challenged the legality of a settlement between Celltech and Genentech over priority rights to a patent that first issued in 1989 and covering fundamental technology for artificial synthesis of antibody molecules. The PTO decided an interference in favor of Celltech in 1998, but following the introduction of new evidence during review proceedings in the District Court the parties settled and priority was awarded to Genentech. After a new patent subsequently issued to Genentech, MedImmune complained that this created a “29 year patent” and filed suit. The district court granted summary judgment to Celltech and Genentech on all antitrust and unfair competition claims based on the Noerr-Pennington doctrine. In October 2005, the Federal Circuit affirmed the district court judgment in all respects, holding that MedImmune could not challenge the validity and enforceability of a patent while simultaneously licensing the patented technology. It also affirmed the rejection of MedImmune’s claim that the Genentech-Celltech settlement violated antitrust laws. In a published opinion authored by Judge Pauline Newman, the Federal Circuit wrote that upholding MedImmune’s claim would “discourage if not prevent settlements, placing unnecessary burdens on the courts.”
• Medtronic v. Endoscopic Technologies
  We represented Medtronic in a suit concerning beating-heart surgery patents filed in the Northern District of California. This case settled.
• Minebea Co., Ltd. v. Think Outside, Inc. and Peripheral Technologies, Inc.
  Minebea Co., Ltd. v. Chicony Electronics Co., Ltd. andChicony America, Inc.
  We represented 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 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 Judge accepted certain of the claim constructions we proposed on behalf of Think Outside. The court granted our motion for summary judgment of non-infringement; the patentee appealed that ruling to the Federal Circuit, and the ruling was affirmed.
• MLR LLC v. U.S. Robotics Corp. et al.
  We 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 favorably for Toshiba.
• Multi-Format, Inc. v. Amazon.com, Inc.
  We represented twelve major retailiers in joint defense of litigation brought by Multi-Format, Inc., over DVD technology. Plaintiff voluntarily dismissed its complaint. The firm has since filed a protest at the PTO in a related reissue proceeding involving the Multi-Format patent.
• Murex Securities v. Vicinity Corp.
  We represented Qwest in a patent infringement case in the Eastern District Court of Virginia involving Domino’s, Pizza Hut and others. The patent claimed a method for calling local business by dialing one nationwide number. The case against Qwest was voluntarily dismissed.
• NeoRx v. Immunomedics
  We represented NeoRx in this action in the District of New Jersey concerning patents on radioimmundiagnosis and therapy of cancer and other diseases. After our client prevailed on a motion for summary judgment, the case settled.
• Nichols Institute Diagnostics v. Scantibodies Clinical Laboratory, Inc.
  Following a month-long jury trial in Southern District of California, a nine-member jury returned a verdict in favor of our