Experience

Copyright Litigation: Software

Defended equipment manufacturer in copyright dispute involving firmware for digital subscriber line access multiplexers (“DSLAMs”). Case resolved favorably.

Patent Litigation: Electronic Health Records

Defended electronic health record (“EHR”) software producer in patent dispute involving a non-practicing entity and patents related to database design and operation. Filed an early motion to dismiss based upon subject matter eligibility under 35 U.S.C. § 101, which was ultimately granted. The case settled on appeal on favorable terms.

Patent Litigation: LED Lighting

Defended national lighting manufacturer against competitor with patents relating to LED lighting and driver design. Briefed Markman. Also filed successful IPR petitions against asserted patents (each petition instituted on all challenged claims). Case settled shortly after institution of IPR petitions.

Patent Litigation: LED Lighting

Defended national lighting manufacturer against non-practicing entity on patents relating to TLED design. Developed early non-infringement positions which resulted in early (and favorable) settlement.

Patent Litigation: LED Lighting

Represented national lighting manufacturer in Section 337 investigation before the International Trade Commission. Developed early invalidity position, which resulted in early (and favorable) settlement prior to summary determination.

Patent Litigation: Software

Defended integrated design environment (“IDE”) producer in patent dispute involving patents related to user authentication systems. Briefed and argued Markman. Case settled shortly thereafter on favorable terms.

Patent Litigation: Software

Defended semiconductor designer in patent dispute involving patents related to user authentication systems. Briefed and argued Markman. Case settled shortly thereafter on favorable terms.

Patent Litigation: Telecommunications

Defended regional telecommunications provider against non-practicing entity with patents related to modem design and operation. Developed exhaustion argument based on prior licensing activity. Also successfully opposed non-practicing entity’s motion to consolidate cases under Multi-District Litigation panel. Case resolved on favorable terms shortly thereafter.

Patent Litigation: Telecommunications

Defended national telecommunications provider in patent dispute involving patents related to standard-essential DSL technology. Developed unenforceability defense as well as defense based on patent troll’s failure to offer fair, reasonable, and non-discriminatory royalty rate. Case settled early on favorable terms.

Trademark Litigation: Consumer Goods

Represented three defendants against trademark owner in long-running dispute. Successfully briefed early motion to dismiss on all non-trademark claims against the defendants. First-chaired trial of trademark claims leading to a successful decision invaliding all trademark rights of plaintiff on grounds of genericism.

Trademark Litigation: Hospitality

Represented trademark owner in litigation with direct competitor. Successfully defeated summary judgment motion by defendant. Case tried to a jury who returned a verdict in favor of trademark owner, which ultimately resulted in defendant being enjoined for further use of infringing name.

Trademark Litigation: Software

Represented trademark owner in litigation with foreign software company. Successfully defeated motion to dismiss on jurisdictional grounds, which was affirmed on appeal. Also successfully defeated summary judgment motion, which resulted in case settling before trial.

Patent Litigation: Mesenchymal Stem Cells

Represented small biotech company and two academic researchers against large pharmaceutical company in dispute over inventorship of several patents relating to mesenchymal stem cells and their uses, as well as defending against numerous state law claims regarding alleged improper use of information; co-lead counsel; responsible for damages experts and substantial responsibility for state law claims; examined (and cross examined) multiple witnesses in one of the first Zoom bench trials in Massachusetts; prevailed on all state law claims, including a finding that defendants were not entitled to any monetary compensation.

Patent Litigation: Semiconductors

Represented semiconductor manufacturer in patent case against competitor in litigation in U.S. District Court for the District of Delaware, in which both sides asserted patents relating to power management and A-D converters; conducted Markman hearing and obtained favorable construction, leading to the case being settled on favorable terms shortly after fact discovery began.

Patent Litigation: NPEs

Represented many companies over the years in patent litigations brought by numerous non-practicing entities, including in U.S. District Courts for the Eastern District of Texas, District of Delaware and Northern District of California; aggressively pursued early motions and uncovered key prior art that led to favorable settlements for his clients.

Patent & Trade Secret Litigation: IT Infrastructure Software

Represented large provider of IT management solutions in lawsuits in U.S. District Courts for the Eastern District of New York and the Northern District of California against competitor alleging infringement of patents relating to object code instrumentation and misappropriation of trade secrets; took the lead in discovery matters, argued several Daubert motions in court and participated in successful settlement negotiations of all matters shortly before trial.

Patent Litigation: MEMS Microphones

Represented large semiconductor manufacturer in an ITC investigation and parallel district court proceeding in U.S. District Court for the Northern District of Illinois, defending against two patents owned by a competitor relating to microelectromechanical systems (MEMS) microphones; instrumental in prevailing in a rare initial determination proceeding (akin to a preliminary injunction hearing), in which an administrative law judge found the competitor's patents were invalid, and then in proving invalidity at full merits hearing; ITC affirmed both invalidity determinations.

Patent Litigation: Telecommunications

Defended large telecommunication company in patent litigation in U.S. District Court for the Northern District of Texas brought by a competitor over eight patents relating to encryption, unified communications, messaging, and audio and video codecs; filed four petitions for Inter Partes Review with the Patent Office, and obtained institution on all of them; case settled favorably shortly thereafter.

Patent Litigation: Golf Balls

Represented large golf equipment manufacturer in case in U.S. District Court for the District of Massachusetts against numerous golf ball sellers over patents relating to aerodynamics of golf balls; defeated a motion to dismiss and obtained favorable settlements with all defendants early in proceedings.

Patent Litigation: Chemicals

Defended chemical company in patent case involving patents related to termites and animal health, and was heavily involved in expert reports and discovery, as well as Markman and summary judgment motions; obtained favorable claim construction ruling and filed strong summary judgment motion of invalidity, leading to the case being settled hours before argument on summary judgment motion.

Patent Litigation: Golf Clubs

Defended large golf equipment manufacturer against competitor who alleged that several golf clubs infringed a patent; obtained summary judgment of non-infringement for all golf clubs and claims from U.S. District Court for the Eastern District of New York, defended decision on appeal to the U.S. Court of Appeals for the Federal Circuit, and obtained second summary judgment of non-infringement after initial decision was partially vacated on appeal.

Patent Litigation: Medical Device

Defended company medical device manufacturer against claimed infringement of expired patent relating to laser hair removal; obtained stay of matter pending reexamination of patent, which resulted in cancelling of all allegedly infringing claims and dismissal of case against client.

Patent Litigation: Ride Sharing

Represented car sharing company in patent litigation in D. Mass; developed key non-infringement argument and convinced plaintiff to dismiss suit with prejudice before deadline to file Answer.

Patent Litigation: Speech to Text Software

Represented company that developed speech-to-text software in action against large software company for patent infringement; successfully transferred case from E.D. Tex. to D. Mass; obtained favorable claim construction ruling; and matter settled after business resolution between the parties.

Patent Litigation: Telecommunications

Defended three major telecommunications companies against patent claims relating to VoIP technology in U.S. District Court for the Eastern District of Texas; took lead in preparing pretrial filings and assisted with trial witness preparation; case was settled after the third day of trial for a fraction of the original demand.

Patent Litigation: Video Monitoring Software

Represented company that provides intelligent video monitoring products who sued larger competitor for infringement of patent related to video monitoring and for theft of trade secrets in U.S. District Court for the Central District of California; case settled favorably during fact discovery after Mr. Stern took key deposition of engineering employee of defendant.

Patent Litigation: VoIP

Defended three telecommunications networking companies in E.D. Tex. against accusation of infringement of patents relating to VoIP technology; lead responsibility for witness who testified at trial about key prior art; case settled the next day for a fraction of the original demand.

Copyright Litigation: Software

Defended large manufacturer and reseller of telecommunications equipment against copyright infringement, breach of contract and misappropriation of trade secret claims involving Simple Network Management Protocol (SNMP) in numerous cases filed in U.S. District Court for the District of Delaware and U.S. Bankruptcy Court for the District of Delaware; was responsible for the day-to-day conduct of all cases, took and defended numerous fact and expert depositions, and was instrumental in filing summary judgment and Daubert motions, as well as numerous other pretrial motions; all cases were settled within days of trial of lead case.

Trade Secret & Unfair Competition Litigation: Healthcare

Defended national healthcare consulting firm on misappropriation of trade secrets and contract claims brought by competitor in Texas state court; defended against preliminary injunction, argued numerous discovery and pretrial; settled weeks before trial.

Trade Secret & Unfair Competition Litigation: Telecommunications

Represented large international manufacturer and seller of telecommunications equipment to all major wireless providers against a supplier in a breach of contract, theft of trade secrets and unfair competition action brought in the Commercial Division of the New York State Supreme Court, a case in which the plaintiff brought two separate preliminary injunction motions to stop our client from selling key hardware and software that is instrumental in sending data over Code-Division Multiple Access (CDMA) wireless networks; the case was settled favorably during a hearing on second preliminary injunction when it became clear that plaintiffs motion was unlikely to succeed.

Firm Highlights

Matter

Patent Litigation: Telecommunications

Defended national telecommunications provider in patent dispute involving patents related to standard-essential DSL technology. Developed unenforceability defense as well as defense based on patent troll’s failure to offer fair, reasonable, and non-discriminatory royalty rate...

Matter

Patent Litigation: LED Lighting

Represented national lighting manufacturer in Section 337 investigation before the International Trade Commission. Developed early invalidity position, which resulted in early (and favorable) settlement prior to summary determination.

Matter

Patent Litigation: Telecommunications

Defended regional telecommunications provider against non-practicing entity with patents related to modem design and operation. Developed exhaustion argument based on prior licensing activity. Also successfully opposed non-practicing entity’s motion to consolidate cases under Multi-District...

Matter

Patent Litigation: LED Lighting

Defended national lighting manufacturer against non-practicing entity on patents relating to TLED design. Developed early non-infringement positions which resulted in early (and favorable) settlement.

Matter

Trademark Litigation: Consumer Goods

Represented three defendants against trademark owner in long-running dispute. Successfully briefed early motion to dismiss on all non-trademark claims against the defendants. First-chaired trial of trademark claims leading to a successful decision invaliding all...

Matter

Patent Litigation: Electronic Health Records

Defended electronic health record (“EHR”) software producer in patent dispute involving a non-practicing entity and patents related to database design and operation. Filed an early motion to dismiss based upon subject matter eligibility under...

Matter

Patent Litigation: LED Lighting

Defended national lighting manufacturer against competitor with patents relating to LED lighting and driver design. Briefed Markman . Also filed successful IPR petitions against asserted patents (each petition instituted on all challenged claims). Case...

Matter

Patent Litigation: Software

Defended semiconductor designer in patent dispute involving patents related to user authentication systems. Briefed and argued Markman . Case settled shortly thereafter on favorable terms.

Matter

Trademark Litigation: Hospitality

Represented trademark owner in litigation with direct competitor. Successfully defeated summary judgment motion by defendant. Case tried to a jury who returned a verdict in favor of trademark owner, which ultimately resulted in defendant...

Matter

Patent Litigation: Software

Defended integrated design environment (“IDE”) producer in patent dispute involving patents related to user authentication systems. Briefed and argued Markman . Case settled shortly thereafter on favorable terms.

Contact Verrill at (855) 307 0700