|
 The
Patent and Technology Group at HBD is a nationally recognized leader
in successfully representing major corporations and entrepreneurs
to acquire, maximize and enforce their intellectual property asset
portfolio. HBD lawyers have also enjoyed extraordinary success in
defending clients in technology and trade secret disputes. HBD's
senior members have been and continue to be lead trial counsel in
major, high stakes patent, copyright, trademark and trade secret
litigation for major corporations like Avery Dennison Corporation,
and also for well-known inventors and entrepreneurs, like Mr. Ron
Popeil.
The most senior member of the Group, Roderick
G. Dorman, served as national lead trial counsel, throughout
the 1990's, in intellectual property litigation matters for Gemstar
Development Corporation-a company that acquired a $7 billion market
cap during that period by the successful acquisition, licensing
and enforcement of its patent portfolio directed to interactive,
on-screen television program guides and VCR-Plus technology.
The partners of the Patent and Technology Group at HBD have been
lead trial counsel in over 170 patent, copyright, and trade secret
cases. We also repeatedly and successfully have handled important
patent matters before the Federal Circuit Court of Appeals.
Patent litigation on behalf of a patent owner is a strategic, collaborative
enterprise. HBD lawyers are uniquely qualified to assist in formulating
litigation and licensing strategies for our clients. Selection of
the optimal enforcement approach for a client's intellectual property
rights turns on a number of factors including: the client's business
objectives; the client's desire to commercialize the invention itself,
to license others to commercialize it, or both; the breadth of the
patent claims; whether a single patent or multiple patent portfolio
will be asserted; whether new patents of valuable scope can issue
based upon open continuation applications of the client then pending
before the United States Patent and Trademark Office; and the identity
and nature of the infringers and their conduct. HBD ably assists
its clients in this complex calculus of decision making.
Whether engaged to assist an owner of intellectual property or
to defend against charges of infringement or misappropriation, the
attorneys in HBD’s Patent & Technology Group strive to
achieve the business goals of the client as effectively and quickly
as possible.
Representative Engagements:
The following is a representative sample of some of the major intellectual
property cases and strategic engagements in which the Patent and
Technology Group and its principals have been involved during the
last several years:
MGM v. Grokster. In 2007, HBD concluded the defense
of the world’s then-largest copyright infringement suit. In
the post-Napster copyright wars over peer-to-peer file sharing brought
by the recording and motion picture industries against Sharman Networks
Limited, Sharman, the owners of Kazaa, turned to HBD for its defense.
Sharman distributes the Kazaa Media Desktop, which allows the “peer-to-peer”
exchange of computer files over the Internet. In mid-2003, Sharman’s
Kazaa Media Desktop became the most downloaded software of all time.
Besides defending Sharman against the copyright infringement charges,
HBD represented Sharman in its antitrust and copyright misuse counterclaims
against the record labels and movie studios.
Acacia Media Technologies. HBD represents Acacia
Media Technologies Corporation in enforcing Acacia's patent rights
for Digital Media Transmission (DMT) -- the transmission of compressed,
digital audiovisual or audio information over various communication
channels, including the Internet, satellite, and cable television
systems. HBD was instrumental in formulating the business plan and
licensing strategy for Acacia’s DMT patent portfolio. Those
effects have resulted in recurring, multi-million dollar annual
royalties to the client, and the continued prosecution of twenty-five
separate actions against cable television companies, satellite television
companies, Internet companies, and distributors of in-room entertainment
to hotel properties that were consolidated in a federal Multi-District
Litigation (MDL) proceeding.
Storage v. Xiotech and Seagate Technology LLC.
Seagate Technology and its subsidiary, Xiotech Corporation, retained
HBD after Storage Computer Corporation filed suit for alleged infringement
of a portfolio of RAID (Random Array of Independent Disks) patents.
Xiotech is one of the largest manufacturers of RAID systems. After
answering the complaint, HBD represented Seagate in asserting patent
infringement counterclaims against Storage Computer. Prior to discovery,
HBD assisted in resolving the matters in mediation.
Union Oil Company of California v. Valero Energy Corporation.
After UNOCAL successfully asserted its clean fuels patents against
the major oil companies, recovering $90 million dollars in royalty
damages, it sued Valero Energy Corporation, the largest independent
refiner in the United States. Valero engaged HBD for its defense.
HBD successfully obtained a stay of all litigation while the Patent
and Trademark Office reexamined the validity of UNOCAL’S patents
and assisted Valero and other refiners in persuading the Federal
Trade Commission to investigate UNOCAL’s efforts to obtain
its gasoline patents while it participated in standard setting activities
of the California Air Resources Board. Unocal abandoned its patents
as a result of the FTC investigation.
Baxter Int'l, Inc. v. McGaw, Inc. Prior to joining
HBD, counsel successfully preserved a $400 million sales per year
product line for B. Braun, formerly McGaw, Inc. in the defense of
a major patent infringement case. Baxter Healthcare and Baxter Int'l
had sued McGaw for patent infringement on thirteen claims in three
different patents arising from McGaw's manufacture and sale of needleless
injection sites for IV sets, intended to avoid accidental needle
sticks and resulting HIV exposure. Baxter sought a preliminary injunction
and the court specially set the case for trial only four months
after the case was filed. A senior member of the firm acted as lead
trial counsel and the jury found non-infringement on the majority
of asserted patent claims and further found the remaining asserted
patent claims invalid. Additionally, the trial court was persuaded
by clear and convincing evidence that Baxter had committed inequitable
conduct in the prosecution of the patents. Baxter Int'l v. McGaw,
Inc., 1996 U.S. Dist. LEXIS 3768 (N.D. Ill. March 26, 1996). The
Federal Circuit Court of Appeals affirmed these determinations.
149 F. 3d 1321 (Fed. Cir. 1998).
StarSight Telecast, Inc. v. General Instrument.
In a three judge arbitration in San Francisco, two senior members
of the firm acted as co-trial counsel for StarSight Telecast and
successfully secured an arbitration award against General Instrument
in connection with a substantial trade-secret dispute involving
electronic program guide technology. The amount of the award is
subject to a confidentiality agreement.
Rexam v. Avery Dennison Corp. HBD was Avery's
trial counsel and patent appeals counsel in a number of related
patent infringement actions pending in Charlotte, North Carolina,
involving dry, automotive paint film and related technology. A senior
member of HBD was lead trial counsel for Avery in a priority of
invention dispute won by Avery at both the trial level and before
the Federal Circuit Court of Appeals.
Rodime PLC. v. Seagate Technology, Inc. After
a favorable trial court's order granting Seagate Technology, Inc.'s
summary judgment motion of non-infringement was reversed by the
Federal Circuit Court of Appeals (reported at 174 F. 3d 1294 (Fed.
Cir. 1999)), Seagate sought and engaged lawyers now with HBD to
handle the jury trial in which Rodime accused Seagate of infringement
of a form factor patent allegedly covering all 3-inch hard disk
computer drives. Since the case involved $1.6 billion in allegedly
infringing sales of 3-inch disc drives, Rodime sought hundreds of
millions of dollars in reasonable royalty damages. Five months after
being engaged, the HBD lawyers successfully resolved the matter
on Seagate's behalf.
AdVantage Partners, LLC v. Salton, Inc. and related actions.
Ron Popeil, known for his Pasta Maker, ShowTime™ Rotisserie,
Pocket Fisherman™, and Food Dehydrator, among many other inventions,
has sold over one billion dollars worth of products through infomercials,
catalog sales and retail distribution. For the last 10 years, a
senior member of HBD has represented Mr. Popeil and his affiliated
business entities in connection with all major patent litigation
and strategic patent counseling. AdVantage Partners, LLC, a client
of HBD, owned all rights and title to the patents directed to Popeil's
highly, successful ShowTime™ Rotisserie technology. HBD represented
Ron Popeil and AdVantage in a number of patent infringement actions
against Salton, Inc. and its retailers/distributors, in which AdVantage
sought injunctive and compensatory relief for Salton's allegedly
infringing sales of the George Forman Jr. rotisserie and the Baby
George rotisserie. These matters were favorably resolved by HBD
on behalf of AdVantage and Mr. Popeil.
Complex Litigation
Corporate Reorganization
and Bankruptcy
|
