Client Alert

Intellectual Property Practice News

1/8/2010

Leadership and Accolades

During the fourth quarter of 2009, several of the firm’s IP attorneys were appointed to leadership roles in local, national, and international legal organizations.  Brian Busey, partner in the Washington, D.C. office, was elected President of the International Trade Commission Trial Lawyers Association (ITCTLA).  Founded in 1984, the ITCTLA is the leading association for attorneys involved and interested in the Section 337 practice and, through its 13 committees, provides views of the Section 337 bar to the Commission and Congress.  San Francisco partner Arturo González was elected President of the Bar Association of San Francisco.  Mr. Gonzalez will preside over the 8,000-member organization, which is one of the largest and most distinguished bar associations in the U.S.  Lastly, James Pooley officially assumed his new role as Deputy Director General of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.  WIPO is a specialized agency of the United Nations and is dedicated to developing a balanced and accessible international IP system.  The organization was founded in 1967 by the United Nations’ 184 member states.  

In early December, Law360 recognized MoFo’s IP practice as the largest among full-service U.S. law firms.  The firm’s IP practice consists of approximately 325 attorneys worldwide, making it the third-largest IP practice among all U.S. law firms.  Also in December, Benchmark Litigation 2010 published its rankings.  Benchmark recommends the firm for IP litigation in addition to Appellate, General Commercial, and Securities litigation.  Harold McElhinny, partner in the San Francisco office, was named as a National Leading Lawyer (“Litigation Star”) for IP litigation.  Karl Kramer, partner in the Palo Alto office, was singled out for his victory for Osaka-based Funai Electric Co. in the ITC.  Included in Benchmark’s list of “Future Stars” in California were Eric Acker (San Diego partner), Scott Oliver (Los Angeles partner), and Alison Tucher (San Francisco partner).

From the Docket

Summary Judgment Victory for Netflix Against Non-Practicing Entity
Morrison & Foerster won a summary judgment motion in favor of Netflix Inc. in a patent infringement suit brought by Media Queue LLC in October 2008 in the Eastern District of Oklahoma. The patent-in-suit involved a method for notifying customers by email when their accounts no longer have movies queued for rental. The IP litigation team first won a motion to transfer the case in February 2009 to the Northern District of California. Within a few months after the transfer, the team filed an early summary judgment motion along with its claim construction briefs. On December 2nd, Judge Illston of the Northern District of California construed three key terms in the patent claims, found that Netflix does not infringe Media Queue’s patent, and granted summary judgment. 

San Francisco partners Michael Jacobs and Matthew Kreeger led the team for Netflix.

ITC Issues Exclusion Order in Sharp’s Favor
On November 9, the ITC ruled that certain Samsung products, including LCD TVs, professional displays, and computer monitors, infringe all four patents asserted by Sharp and banned importation of the products into the U.S.  The ruling is subject to a 60-day review period by the U.S. Trade Representative before it goes into full effect.  In a June 12, 2009 initial determination, Chief Administrative Law Judge Paul Luckern concluded that Samsung violated Section 337 by making products that infringe Sharp patents for technology used in liquid crystal display products and recommended a limited exclusion order. The full ITC affirmed Judge Luckern’s initial finding, but asked for comments on the appropriate remedy. After reviewing comments from Sharp, Samsung, and the Commission’s own investigative attorney, the ITC decided that an import ban and 100% bond, as requested by Sharp, would be appropriate.  This ITC matter is one of a series of disputes between Sharp and Samsung involving similar technology.  Three of the disputes are in the ITC: Certain Liquid Crystal Display Modules, Products, Containing Same, and Methods for Using the Same (337-TA-634), Certain Liquid Crystal Display Devices and Products Containing the Same (337-TA-631), and a recently instituted case also entitled Certain Liquid Crystal Display Devices and Products Containing the Same (337-TA-699).  In addition to the ITC investigations, there are companion district court cases in the District of Delaware where all of the patents at issue in the ITC are also at issue. There is also a separate patent infringement case in Texas involving five Sharp patents and five Samsung patents. Trial in the Texas case is set for July 2010.

Washington, D.C. partners Barry Bretschneider, A.C. Johnston, and Kristin Yohannan lead the team for Sharp. 

ICU Medical Wins Trademark Case
Morrison & Foerster scored a total victory for client ICU Medical, Inc., in the Central District of California. On October 8, Judge Mariana R. Pfaelzer issued an order and judgment in ICU’s favor on all claims in a multi-count complaint alleging trademark infringement and unfair competition. Resulting from three separate and complex summary judgment motions filed over a six-month period, the court’s sweeping ruling finds plaintiff RyMed Technologies’ registered trademarks for its intravenous therapy valves to be invalid and orders the USPTO to cancel the registrations. Regarding the unfair competition claims, RyMed had alleged that ICU had made 14 separate false and misleading statements concerning RyMed’s and ICU's own products.  Finding in favor of ICU on each of these allegations, Judge Pfaelzer ruled ICU had established that most of these statements were never made at all, and that the most consequential of the statements that were made, to the effect that RyMed’s products suffered from leaking and coring problems and were incompatible with small gauge luers, were true. Earlier in the case, RyMed had unsuccessfully filed a motion for a temporary restraining order.

Another dispute between the same parties, a complaint by ICU for infringement of several of its patents, remains pending in the District of Delaware, and MoFo will represent ICU in the trial of that case this year.

Kim Van Voorhis, partner in the Palo Alto office, leads the MoFo team for ICU Medical.  Laura and Ronald Kohut, partners at Kohut & Kohut in Orange County, California, are co-counsel for this matter.  James Pooley co-led the MoFo team until November, when he took up his new post as Deputy Director General at the World Intellectual Property Organization. 

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