Taylor Brands, LLC v. Columbia River Knife and Tool Company (E.D. Tenn.)
Klarquist Sparkman, LLP attorneys obtained summary judgment for our client, Columbia River Knife and Tool (“CRKT”) on claims of patent infringement raised by Taylor Brands, LLC related to assisted opening knives. The case was filed in the Eastern District of Tennessee on December 12, 2008. On April 10, 2009, before the initial case scheduling conference and any discovery, CRKT’s Klarquist attorneys moved for early summary judgment of non-infringement. In conjunction with this motion, CRKT moved for – and the Court subsequently granted – a stay of all discovery other than that necessary to resolve the summary judgment motion. The Court heard oral arguments on October 26, 2009. On November 19, 2009, Magistrate Judge Dennis H. Inman of the United States District Court for the Eastern District of Tennessee granted CRKT’s motion for summary judgment of no literal or equivalents infringement as to all 22 models CRKT included in its motion, which were representative of every assisted opening knife in CRKT’s product line alleged to infringe. On December 9, 2009, Plaintiff Taylor Brands consented to entry of a final judgment disposing of the case and dismissing its infringement claims with prejudice.
|
|
RCT v. Microsoft (D. Ariz.)
After choosing the Jury for trial, the District of Arizona (the Honorable Clive Jones presiding) ordered a Stipulation of Dismissal, signed by both parties, holding one of the twelve asserted patent claims invalid and that no Microsoft product accused of infringement infringes the other eleven asserted claims. The parties stipulated to dismissing the case based on the Court’s previous ruling that three of the asserted patent claims were invalid because they were not directed to patent-eligible subject matter, and the Court’s previous ruling and subsequent party stipulation that the remaining nine asserted claims of the later-filed patents were not entitled to the earlier effective filing date and therefore invalid over intervening prior art.
|
|
MEI, LLC v. Integral Applied Technology, Inc. et al (D. Or.)
Klarquist Sparkman, LLP attorneys obtained a complete summary judgment victory for our client MEI, LLC on its copyright infringement, DMCA and Lanham Act claims. Defendants Integral Applied Technology, Inc. and Gustavo Martinez were found liable for unauthorized copying and modification of MEI’s IDX software. The case was filed in the District of Oregon in February 2008. Chief Judge Ann Aiken of the United States District Court for the District of Oregon granted summary judgment on MEI’s claims and awarded MEI compensatory damages as well as the maximum statutory damages permitted for violations of the DMCA. On September 15, 2009, the Court also issued an injunction against further acts of copyright infringement, or violations of the DMCA or Lanham Act, and ordered the return or destruction of unauthorized software and devices used to circumvent access controls for the IDX software. The defendants had filed counterclaims for alleged trade secret misappropriation, breach of contract and tortious interference with contract. Completing the victory, MEI was granted summary judgment dismissing each of the counterclaims with prejudice.
|
|
Biosig Instruments Inc. v. The Nautilus Group Inc. (S.D.N.Y.)
Biosig, a Canadian-based company, sued Nautilus in August 2004 alleging that various heart rate monitor devices sold by Nautilus with its exercise equipment infringe U.S. Patent Number 5,337,753. Klarquist Sparkman assumed the defense of the case from Ropes Gray in 2008, and promptly moved to put the patent in reexaminination. Following the grant of the reexamination request, the parties agreed to dismiss the case without prejudice on March 26, 2009.
|
|
Veritas Operating Corp. v. Microsoft Corp. (W.D. Wash)
Klarquist Sparkman helped our client Microsoft Corporation win two summary judgment motions in a patent litigation in the Western District of Washington involving the deployment and restoration of certain Microsoft Windows® operating systems. The case against Microsoft was filed by Veritas Operating Corporation, a subsidiary of Symantec Corporation. On behalf of Microsoft, Klarquist Sparkman brought both a Motion for Summary Judgment that Veritas' deployment and restoration patent was invalid over prior art products and publications, and a Motion for Summary Judgment that Veritas' patent was not indirectly infringed by Microsoft. On February 20, 2008, U.S. District Judge John C. Coughenour granted both Motions. These decisions represent the 14th and 15th summary judgment wins Klarquist Sparkman has obtained for Microsoft.
|
|
Anascape Ltd. v. Microsoft Corp. (E.D. Tex.)
In a case in which Anascape alleged that Microsoft infringed twelve patents regarding video game controllers, Klarquist Sparkman strategically employed both litigation and reexamination as tools to achieve a successful outcome for our client Microsoft. The Firm filed reexamination requests for all twelve asserted patents, which caused the Court to stay the litigation on six of the twelve patents, effectively cutting the case in half. Klarquist Sparkman then helped Microsoft win its proposed claim construction on most of the remaining six patents. After the Court also granted Microsoft’s partial summary judgment motions on both non-infringement and no willful infringement, the case settled before trial.
|
|
International Automated Systems, Inc. v Microsoft Corp. (D. Utah)
Klarquist Sparkman helped our client Microsoft win summary judgment in the District of Utah that the patent asserted against it by International Automated Systems, Inc. was invalid. In an Order dated January 3, 2008, the district court held that the patent, which relates to fingerprint identification technology, was invalid for failure to comply with three patentability requirements: enablement, written description, and regards as the invention. This represents the 13th case in which Klarquist Sparkman has won summary judgment for our longstanding client Microsoft.
|
|
Aristocrat Technologies, et. al. v. International Game Technology and IGT (N.D. Cal.)
On June 13, 2007, the Honorable Martin J. Jenkins of the Northern District of California found U.S. Patent Nos. 7,056,215 and 7,108,603 invalid under 35 U.S.C. § 371, § 133 and § 102(b). The District Court ruled that IGT proved by “clear and convincing evidence” that the two patents in suit are invalid, because the ‘215 patent improperly issued from an abandoned patent application that was not lawfully revived, and the ‘603 patent was barred by the prior published ‘215 patent application. On appeal, the Federal Circuit held that abandonment and unlawful revival of a patent application is not a defense in litigation, and so reversed the summary judgment and remanded for further proceedings. Aristocrat’s two asserted patents related to electronic gaming machine technology.
|
|
Motionless Keyboard Co. v. Microsoft Corp. (D. Or.; Fed. Cir.)
Klarquist Sparkman successfully obtained summary judgment in the District of Oregon that Microsoft’s Sidewinder joysticks and game controllers did not infringe two patents owned by Motionless Keyboard Company ("MKC"). The district court further ordered that the two MKC patents were invalid. MKC appealed the case to the Court of Appeals for the Federal Circuit. On appeal, Klarquist Sparkman successfully defended the District Court's decision which the Federal Circuit affirmed in a decision published on May 29, 2007. (See 486 F.3d 1376(Fed. Cir. 2007)).
|
|
Frank T. Buckley, Jr. v. Freightliner LLC (D. Md.)
On September 25, 2006, the District of Maryland granted summary judgment of patent invalidity and entered final judgment of dismissal of Dr. Frank T. Buckley, Jr.’s patent infringement suit against Klarquist Sparkman’s client Freightliner LLC. Dr. Buckley subsequently agreed to surrender his right to appeal. Dr. Buckley claimed the invention of a drag-reducing fairing for highway use on heavy duty trucks (U.S. Patent No. 4,245,862). Dr. Buckley’s patent, which issued in 1981 and expired in 1998, had been the subject of six different lawsuits against a dozen different defendants over the last 25 years. Represented by Klarquist Sparkman, Freightliner was the first to prove that the Dr. Buckley’s patent was invalid.
|
|
|
|
Shakespeare Company, LLC v. Silstar Corporation of America, Inc., et al (W.D. Wash.)
Klarquist Sparkman helped its client Shakespeare Company, LLC obtain a permanent injunction against Silstar Corporation of America and LFS, Inc. Shakespeare alleged trademark infringement, trade dress infringement, unfair competition, and false advertising against Silstar relating to Shakespeare’s famous trademark of a “clear tip” on its Ugly Stik® fishing rods. In March 2006, Silstar and its distributor LFS agreed to a consent judgment that permanently enjoined them from using Shakespeare’s trademark and trade dress.
|
|
CollegeNET, Inc. v. ApplyYourself, Inc. (D. Or.)
Klarquist Sparkman helped its client CollegeNET win a jury verdict of infringement against a principal competitor, ApplyYourself, in 2003. The jury found that ApplyYourself infringed two of CollegeNET’s patents for online college application systems and awarded damages to CollegeNET. Part of the jury verdict was set aside by the district court. Represented by Klarquist Sparkman, CollegeNET prevailed on appeal with the Court of Appeals for the Federal Circuit reinstating the full jury verdict. The case subsequently settled.
|
|
Network Commerce v. Microsoft Corp. (W.D. Wash.)
Klarquist Sparkman obtained summary judgment that Microsoft did not infringe a patent asserted by Network Commerce against Microsoft’s Windows Media® software. See 260 F. Supp. 2d 1042 (W.D. Wash. 2003); 260 F. Supp. 2d 1034 (W.D. Wash. 2002). Network Commerce appealed. Klarquist Sparkman argued the appeal on behalf of Microsoft, and the U.S. Court of Appeals for the Federal Circuit affirmed Microsoft’s summary judgment victory. See 422 F.3d 1353 (Fed. Cir. 2005).
|
|
Shaw v. Microsoft Corp. (N.D. Tex.)
Klarquist Sparkman successfully obtained summary judgment of non-infringement that Microsoft’s Windows Media® NetShow, and NetMeeting software did not infringe a patent owned by Venson and Stephen Shaw. See 2005 WL 2095770 (N.D. Tex. August 30, 2005).
|
|
Kassab Jewelers, Inc. v. C Kassab Designs, LLC (D. Or.)
Klarquist Sparkman helped its client, Kassab Jewelers, obtain a permanent injunction against a local competitor to prevent it from using the name “C Kassab Designs.” Kassab Jewelers alleged that C Kassab Designs, LLC was infringing Kassab Jewelers’ KASSAB and KASSAB JEWELERS trademarks and brought a motion for a preliminary injunction. After a hearing on Kassab Jewelers’ motion, the Court ordered that a preliminary injunction be entered against C Kassab Designs. The case then settled with a consent judgment and permanent injunction entered against C Kassab Designs.
|
|
TransLogic Technologies, Inc. v. Hitachi Corp. (D. Or.)
In this case regarding semiconductor technology, Klarquist Sparkman, LLP aided its client, TransLogic, in obtaining a jury verdict in 2003 that TransLogic's patent is valid over the prior art cited by Hitachi. The Firm then obtained summary judgment of infringement. In a separate trial on damages, the jury returned a verdict of $86.5 million dollars in TransLogic's favor. The trial court entered a permanent injunction and final judgment, with prejudgment interest, awarding TransLogic over $106 million. On appeal, the Federal Circuit affirmed a Patent Office reexamination decision that the patent is invalid, and vacated the trial court judgment in light of that.
|
|
Slocum Enterprises v. New Generation Devices (D. Or.)
Klarquist Sparkman succeeded in having an Oregon patent infringement case brought against out-of-state client New Generation Devices dismissed for lack of personal jurisdiction. See 2004 WL 1879886 (D. Or. 2004). The Federal Circuit affirmed the dismissal a mere three days after the oral argument in the Federal Circuit.
|
|
Barenbrug USA Inc. v. Agrono-Tec Seed Co., et al (Oregon Circuit Court)
In this case involving a trademark dispute in the grass seed industry, Klarquist Sparkman, LLP aided its client Barenbrug USA in obtaining summary judgment based on the Statute of Frauds on counterclaims asserted by Barenbrug's former distributer, Agrono-Tec, alleging an oral trademark agreement. The case was settled shortly hereafter.
|
|
Reiffin v. Microsoft Corp. (N.D. Cal.; Fed. Cir.)
Klarquist Sparkman successfully obtained summary judgment of patent invalidity in 2003 as to one of Plaintiff’s patents on preemptive multithreading software. The invalidity ruling also eliminated Plaintiff’s claimed patent priority date on a second asserted patent—resulting in the Patent Office granting a reexamination request regarding the validity of the second patent. All claims of the second patent were found invalid by the Patent Office.
|
|
Palo Alto Software, Inc. v. Nova Development Corp. (D. Or.)
Klarquist Sparkman helped its client Palo Alto Software obtain a preliminary injunction against competitor Nova in 2003. Palo Alto Software alleged that Nova was engaging in false advertising in its packaging of business plan software. At the preliminary injunction hearing, the Court ordered that an injunction be entered against Nova, after which the case settled.
|
|
Netscape and Microsoft Corp. v. Konrad (N.D. Cal.; Fed. Cir.)
In this declaratory judgment action involving WWW database searching, Klarquist Sparkman helped prevent the case from being transferred and consolidated with a previously pending suit naming 39 “customers.” After succeeding in bifurcating and limiting discovery to the issue of patent invalidity, Klarquist Sparkman took the lead in obtaining partial summary judgment that the named inventor’s own system was on sale and in public use prior to the critical date. The Federal Circuit affirmed on appeal. See 295 F.3d 1315 (Fed. Cir. 2002).
|
|
Innovad v. Microsoft Corp., et al. (N.D. Tex.; Fed. Cir.)
Klarquist Sparkman obtained summary judgment that Microsoft did not infringe a patent asserted against Microsoft’s software See 99 F. Supp. 2d 767 (N.D. Tex. 2000). The Federal Circuit affirmed on appeal. See 260 F.3d 1326 (Fed. Cir. 2001).
|
|
Goldtouch v. Microsoft Corp. (W.D. Tex.; Fed. Cir.; W.D. Wash.)
In the Western District of Texas, Klarquist Sparkman obtained summary judgment that Microsoft did not infringe a patent asserted against Microsoft’s IntelliMouse® Pro and IntelliMouse® Explorer computer mice. See 102 F. Supp. 2d 722 (W.D. Tex. 2000). The Federal Circuit affirmed on appeal without opinion. In the Western District of Washington, Klarquist Sparkman obtained summary judgment that the Goldtouch mouse infringed two Microsoft patents.
|
|
Forcier v. Microsoft Corp. (N.D. Cal.)
Klarquist Sparkman obtained summary judgment dismissing Plaintiffs’ claims against Microsoft for misappropriation of trade secrets and unfair competition related to Microsoft’s digital ink processing software. See 123 F. Supp. 2d 520 (N.D. Cal. 2000). Plaintiffs also asserted claims for patent infringement. The case subsequently settled.
|
|
Leatherman Tool Group v. Cooper Industries, Inc. (D. Or.; 9th Cir.)
Leatherman asserted claims for trade dress infringement and false advertising relating to Cooper’s multipurpose tool. The District Court entered a preliminary injunction against Cooper. At trial, the jury found in favor of Leatherman on both the trade dress and false advertising claims. The jury awarded $50,000 in compensatory damages and $4.5 million in punitive damages for the false advertising claim. On appeal, Klarquist Sparkman obtained a reversal in the Ninth Circuit of the judgment of trade dress infringement and the injunction because Leatherman’s asserted trade dress was functional. See 199 F.3d 1009 (9th Cir. 1999). The false advertising claim was affirmed, but on further appeal (handled by another Firm) the Supreme Court vacated and remanded the punitive damage award, which the Ninth Circuit then reduced to $500,000.
|
|
Enpat, Inc. v. Microsoft Corp. (E.D. Va.)
Klarquist Sparkman obtained summary judgment that Microsoft did not infringe a patent asserted against Microsoft’s project management software in 1998. The Firm also obtained for Microsoft an award of part of its attorney fees.
|
|
CD Solutions, Inc. v. Tooker, et al. (D. Or.)
In an early domain name dispute pitting an acronym against and abbreviation, Klarquist Sparkman and cocounsel won summary judgment that their client did not infringe the defendant’s registered trademark. See 15 F. Supp. 2d 986 (D. Or. 1998).
|
|
|
|
Levine v. Compaq and Microsoft Corp. (E.D. Va.; Fed. Cir.)
Klarquist Sparkman defended Microsoft against a claim that Microsoft’s Windows and Schedule+ software infringed a patent on an electronic calendar. The Court granted Microsoft’s motion for summary judgment invalidating the asserted patent. The decision was affirmed on appeal without opinion. See table at 91 F.3d 169 (Fed. Cir. 1996).
|
|
|
|