Patent and Technology

HBD’s Patent and Technology Group has attained exceptional results for its clients in an array of factual scenarios. The following list describes some of our notable successes:

  • Acacia Media Technologies Corporation.  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 proceeding.
  • AdVantage Partners, LLC v. Salton, Inc. and related actions.  Ron Popeil, known for his 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.
  • Baxter Int’l, Inc. v. McGaw, Inc.  Prior to joining HBD, a member of HBD’s Patent Litigation team 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 needle-less 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).
  • Dey, L.P. v. Ivax Pharmaceuticals, Inc., et. al.   HBD represented Dey, L.P. in a patent infringement action under the Hatch-Waxman Act against six major pharmaceutical companies, all competing for the ability to manufacture the generic version of Dey’s product.  HBD litigated the case for approximately three years, defending Dey’s patent against the generics and protecting Dey’s highly profitable revenue stream generated from its branded inhalation solution used to treat Chronic Obstructive Pulmonary Disorder.  HBD obtained a favorable settlement with all six of the generics.
  • Experian Holdings v. MOVE.  HBD represented its client in an arbitration where the claimant sought a multi-million dollar indemnification award.  After succeeding on several issues during the first phase of arbitration, thereby significantly reducing the possible indemnification award, HBD was able to reach a favorable settlement for its client through mediation.
  • MGM v. Grokster.  In 2007 HBD concluded the defense of the world’s then-largest copyright infringement suit.  HBD’s client Sharman Networks Limited 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.  HBD represented Sharman in the post-Napster copyright wars over peer-to-peer file sharing brought by the recording and motion picture industries against Sharman.  In addition to defending Sharman against the copyright infringement charges, HBD represented Sharman in its antitrust and copyright misuse counterclaims against the record labels and movie studios.
  • Microprocessor Enhancement Corporation and Michael H. Branigin.  HBD represents the owner and exclusive licensee of a patent regarding microprocessor design.  HBD was able to obtain a reversal in the Federal Circuit of the trial court’s order that the patent-in-suit was invalid.  HBD continues to represent its clients in enforcing their patent rights against a variety of microprocessor manufacturers and sellers.
  • 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 (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.
  • Ronald A. Katz Technology Licensing, L.P. v. General Electric Capital Corp., et. al.  HBD successfully represented Ronald A. Katz Technology Licensing, L.P. (“Katz”) in a lengthy and complex litigation against General Electric Capital Corp. and other GE entities, obtaining a very favorable settlement for Katz.  This particular litigation against GE was consolidated with more than forty other cases in a multi-district litigation in the Central District of California, and HBD, on the behalf of Katz, asserted approximately eight separate patents and more than forty patent claims against GE.  Katz’s claims survived claim construction and multiple validity determinations, as well as reexaminations by the United States Patent Office. 
  • SpeedTrack, Inc. v. Wal-Mart.com USA, LLC.  HBD represents SpeedTrack in enforcing its patent regarding methods for accessing computer files.  HBD successfully settled litigation against companies who make and sell GPS devices and is currently litigating against Wal-Mart.com and its supplier, Endeca Technologies, Inc.  In its Markman ruling in this matter, the District Court essentially adopted HBD’s proposed constructions for all ten claim terms at issue and rejected defendants’ proposed constructions. 
  • 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.
  • 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.
  • Verizon v. UltraRPM and related actions.  HBD successfully resolved a cyber-squatting case brought against its client in the Central District of California.  Plaintiffs sought a multi-million dollar judgment from HBD’s client for the alleged registration of numerous domain names that Plaintiffs contended were confusingly similar to Plaintiffs’ trademarks.  HBD was able to settle the dispute early in the litigation on terms favorable to his client.