Exemplary Cases In Which The Firm Represented The Patent Owner

Haemonetics Corp. v. Baxter Healthcare Corp. et al.
We partnered with the firm of Sherin and Lodgen to represent Haemonetics in this patent infringement action. The Haemonetics patent related to a compact centrifuge device for separating blood into its constituent components. The Baxter defendants were represented by Foley Hoag and by Skadden, Arps, Slate, Meagher & Flom, LLP. The case was tried to a jury, and on January 30, 2009, the jury returned a verdict in Haemonetics' favor, awarding it approximately $15.7 million in patent infringement damages. Martin O'Donnell handled the liability phase of the trial.

Pellegrini v. Texas Instruments, Inc.
We represented an individual patent holder against Texas Instruments (TI) in this case. The patent-in-suit related to a motor drive circuit for brushless permanent magnet synchronous motors. Jones, Day represented TI in the case. TI was charged with inducing others to infringe the patent by virtue of its publication of various Application Notes which teach the programming of its digital signal processor (DSP) chips for motor control applications. The case settled during a court-ordered mediation shortly before trial with a substantial payment to our client. Tom O'Konski was lead counsel, joined by John Capone.

Cognex Corporation v. Electro Scientific Industries, Inc.
We represented Cognex in this patent infringement action brought in Massachusetts. The Cognex patent related to a machine vision system for the automatic positioning and placement of surface mount integrated circuit devices on printed circuit boards. Late in the course of discovery in the case, we uncovered a "smoking gun" document that directly contradicted a sworn interrogatory answer regarding the defendant's first awareness of the patent-in-suit. The delayed production of that document, and the delayed correction of the false interrogatory answer resulted in monetary sanctions being imposed by the Court against the defendant. After we successfully defended against a motion for summary judgment of non-infringement, the case settled about one month before trial with a substantial payment to Cognex. Tom O'Konski was lead counsel for the firm, joined by Michael Attaya and John Capone.

Cognex Corporation v. Nikon Corporation
Cognex initiated an International Trade Commission (ITC) proceeding and parallel district court action against Nikon alleging infringement of Cognex patents relating to the positioning and placement of semiconductor wafers in wafer processing equipment. Both actions settled after a few months of discovery with a substantial payment to Cognex. Tom O'Konski was lead counsel, joined by Duane Dreger.

NovAtel Inc. v. Trimble Navigation Ltd.
We represented NovAtel in this patent infringement action which was litigated primarily in the Northern District of California. We also defended NovAtel in a related countersuit brought by Trimble before the International Trade Commission (ITC). Trimble was represented by Cravath, Swaine & Moore as well as separate patent counsel. The technology was digital signal processing used by GPS receivers to search for and lock onto signals from satellites. The case was settled shortly after we successfully opposed Trimble's motion for summary judgment of invalidity in the District Court, and filed our own motion for summary determination of non-infringement and invalidity of Trimble's patent in the ITC. Martin O'Donnell was lead counsel in the case, assisted by Pat Sheehan.

Zi Corporation of Canada, Inc. v. Tegic Communications, Inc.
We represented Zi in this infringement action in the Western District of Washington (Seattle) seeking to invalidate Zi's patent on text input software which allows a user to compose messages by entering ideographic (Chinese) characters on a stroke-by-stroke basis. Shortly after service of process, the defendant moved for summary judgment of non-infringement. After expedited discovery, including a two day deposition, we opposed the motion. The district court granted the motion but was reversed by the Court of Appeals for the Federal Circuit which held that, in view of the proper claim interpretation and the deposition testimony we elicited, Zi had in fact established infringement of its patent on the basis of the single deposition. Martin O'Donnell was lead counsel in the case, joined by Michael Attaya.

Exemplary Cases In Which The Firm Represented The Accused Infringer

Cognex Corporation v. Acacia Research Corporation et al.
On May 19, 2008, the U.S. District Court for the District of Minnesota granted Cognex's motions for summary judgment that a patent asserted by Acacia against various Cognex customers was both invalid in view of prior art and unenforceable due to inequitable conduct by the patentee during the procurement of the patent. Cognex filed the declaratory judgment action against both Acacia and the Acacia unit holding rights to the patent to protect Cognex customers from Acacia's demands for license fees under the patent. Cognex resisted Acacia's efforts to remove itself from the action, successfully persuading the court that the Acacia unit was the alter ego of Acacia for purposes of the assertion of the patent. The Court also denied a motion for summary judgment by Acacia on a claim for business defamation Cognex filed against Acacia based on allegedly false statements made by an Acacia representative regarding Cognex after the action was filed. The action subsequently settled. Tom O'Konski led a team of Cesari and McKenna lawyers handling the case including Martin O'Donnell, Michael Attaya and Kevin Gannon.

Phonetel Communications, Inc. v. Yamaha Corporation of America
In this patent infringement suit in the Northern District of Texas against a large class of music synthesizer manufacturers, we represented Korg, Inc. and USA, Inc. Shortly after the district court denied a motion to dismiss various counterclaims that we had filed, we were able to settle the case for our clients on very favorable terms. Martin O'Donnell was lead counsel, joined by Michael Attaya.

Measurement Computing Corp. and SoftWIRE Technology LLC v. National Instruments Corp.
We represented Measurement Computing and SoftWIRE in a declaratory judgment action brought in Boston against National Instruments (NI), which had asserted eight patents relating to graphical programming against our clients. NI was represented by Fish & Richardson. We prevailed in a venue contest in which NI sought to have the case moved to Texas. During the course of the litigation, we acquired on behalf of our client two patents formerly owned by Fluke Corp. and asserted those patents against NI. The case resolved with NI acquiring the assets of Measurement Computing for approximately $33 million. Martin O'Donnell was lead counsel in the case, assisted by Michael Reinemann, Michael Attaya, and Tom O'Konski.

NPC, Inc. v. International Precast Supply, Inc.
We represented International Precast Supply, a Massachusetts manufacturer of construction supplies, in a patent infringement suit brought in New Hampshire. The technology involved expandable clamping rings. An investigation revealed that the invention of one of NPC's patents had been on-sale for more than a year before the application for patent had been filed. NPC was forced to publicly disclaim this patent. We then prepared, filed and argued a motion for summary judgment asserting that our client did not infringe the second patent as a matter of law. The court, in a published decision, agreed. See NPC, Inc. v. International Precast Supply, Inc., 337 F.Supp.2d 378 (D. NH 2004). Shortly thereafter, the parties settled with NPC making a payment to International Precast Supply. Michael Reinemann was lead counsel in this action.

Massachusetts Institute of Technology and Hologic, Inc. v. Norland Medical Systems, Inc. and McCue PLC
We represented the defendants McCue and Norland in this suit for patent infringement. The patents in suit related to a sonometer, a medical device that uses ultrasound waves to obtain and process measurements to assess a patient's bone condition, and to a device that is used to calibrate the sonometer. We filed a motion for summary judgment of non-infringement and/or invalidity on behalf of defendants and, after a Markman hearing before Judge Young, were able to convince plaintiffs to effectively drop the suit. Martin O'Donnell was lead counsel in this case.

Lexmark International, Inc. v. Static Control Components, Inc. et al.
We represent a defendant in this action pending in the Eastern District of Kentucky. The defendant is a re-manufacturer of toner cartridges used in printers manufactured by Lexmark. Lexmark has asserted 23 of its patents against the defendants in the case. Our client and the other defendants are challenging Lexmark's so-called prebate program which requires purchasers of its printers to use its toner cartridges only once and to return the used cartridges only to Lexmark. Michael Reinemann and Tom O'Konski are lead counsel in the case.

Nitinol Medical Products, Inc. v. AGA Medical, Inc.
We represented the defendant in this case when it was originally pending in Boston. It involved a patent directed to a medical appliance for occluding aperture defects in a cardioseptum. The plaintiff was represented by Wilmer, Cutler, Hale and Dorr. We were brought into this case as trial counsel by a law firm in Minneapolis due to our patent trial experience. The original action was dismissed without prejudice after the plaintiff sought reexamination of its patent and that reexamination was delayed. The suit has since been refiled and is currently pending. Tom O'Konski was lead counsel in the original action, assisted by John Capone and Kevin Gannon.

JumpSport, Inc. v. Hedstrom Corporation et al.
We represented Hedstrom in this patent infringement action pending in the Northern District of California. The patents related to safety enclosures for trampolines. The case was tried to a jury during the month of November 2003. JumpSport was seeking straight damages from Hedstrom in excess of $2.5 million for infringement of its patents, and a trebling of those damages for alleged willfulness. At the conclusion of the trial, the jury returned a verdict against Hedstrom in the amount of $13,000. The case was appealed to the Federal Circuit. Tom O'Konski was lead counsel for Hedstrom in the case, with assistance provided by Kevin Gannon and John Capone. The case has since been settled.

Young Chang Akki Co., Ltd. v. Lucent Technologies Inc.
We represented Young Chang, a Korean manufacturer of acoustic pianos and the Kurzweil line of synthesizers, in this declaratory judgment action litigated in Boston. The technology involved digital signal processing circuitry used in music synthesizers. Lucent was represented by Baker Botts. After completion of fact discovery and a Markman hearing, Judge Woodlock issued a lengthy opinion in which Young Chang's claim interpretation was essentially adopted in its entirety. Immediately thereafter, in response to our motion for summary judgment of non-infringement, Lucent admitted that there was no infringement of most of its claims. While that motion was pending, Judge Woodlock ordered that Young Chang's laches defense be tried to the court. Before a decision was rendered, the parties settled on very favorable terms. Martin O'Donnell was lead counsel in this action, joined by Michael Attaya.

GenRad, Inc. v. Hewlett-Packard Company
We represented GenRad, a major supplier of automatic test equipment (ATE), in this declaratory judgment (DJ) action litigated in Boston. HP first sued GenRad in Colorado, but we were successful on GenRad's behalf in having the litigation transferred to Boston for consolidation with our DJ case. The technology involved an in-circuit testing technique. HP was represented by Pennie & Edmonds. We raised serious charges of inequitable conduct before the Patent and Trademark Office and were successful in compelling production of numerous documents withheld by HP on a claim of privilege. Shortly after such documents were produced, in the late stages of a multi-week bench trial before a magistrate judge, the parties settled on very favorable terms to GenRad. Tom O'Konski was lead counsel in this action.

Teknekron Information Systems, Inc. v. Stratus Computer, Inc.
We represented Stratus Computer in this action brought in the Western District of New York. The patent related to a distributed computing network involving subject based addressing. Teknekron was represented by the law firm of Cooley, Godward. Toward the end of the discovery phase of the case discovery, a settlement favorable to Stratus was obtained. Tom O'Konski was lead counsel in this action, joined by Michael Reinemann.

Radiometer v. Alko Diagnostics
We defended Alko Diagnostics against suits in the United States and in Germany alleging infringement of Radiometer's patents on diagnostic reagent containers, as well as unfair competition charges in connection with advertising of the containers. In the United States, we assisted the client in developing a "design-around" which avoided infringement, resulting in settlement of plaintiff's suit without payment of damages of any kind, and enabling the client to continue its business without interruption. In Germany, we successfully defended the charges and obtained an award of costs against the plaintiff. Martin O'Donnell was lead counsel for defendant.