IP Litigation

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.