IP Litigation

Patents

• Protected Medical Device Client Against Frivolous Venue and Service Assertions
  Advised client in patent infringement suit filed by two doctors against client and more than 300 hospitals and individual physicians involving an arteriovenous shunt used for medical procedures. Achieved an early dismissal in the Northern District of Illinois based on improper venue, the case was dismissed with prejudice and the ruling was affirmed on appeal.
• Motion to Dismiss Results in Invalidation of Patent Claims
  In response to a non-practicing entity’s claim that our client infringed its patent, we filed a declaratory judgment action of non-infringement. Later, we filed a motion to dismiss the counterclaim of infringement arguing that, inter alia, certain claims were invalid for indefiniteness based on the patent owner’s failure to disclose an algorithm in the patent for a means-plus-function element. Despite the high burden on a motion to dismiss and the clear and convincing evidence required for invalidity, the court agreed with our arguments and held that the means-plus-function claims are invalid and the infringement counterclaim should be dismissed as to those claims.
• Treble Damages Obtained for World Leader in Specialty Binding Materials and Machinery
  Awarded damages in the amount of $1.6M, treble damages in the total amount of $4.8M, and attorney fees and costs in the amount of $300,000 for client in a patent infringement action. After extensive discovery, discovery disputes and Motions for Sanctions, the parties reached a settlement, and the Court entered a Consent Judgment in favor of our client finding the patent is valid and enforceable.

Trademarks

• Logo Protection for Tobacco Manufacturer in California
  Defended well-known cigarette brand by obtaining a preliminary injunction  blocking a cannabis company from using a similar product logo in the Central District of California. 
• Dykema Wins First IP Bench Trial Before Judge Albright in Western District of Texas
  Our client’s terms of agreement provided limited rights to use and display of 11 trademarks and logos, including use of the IP in domain names and content. When the relationship went south, rather than ceasing to use the IP, taking down the URLs, and discontinuing use of the domains, the company registered new URLs, redirected all traffic from prior URLs, and continued to use our client’s trademarks and logos. We filed suit for breach of contract, federal trademark infringement and unfair competition, and cybersquatting. Final judgment was awarded in our client’s favor, including an award of more than $3.6M in damages and granting the requested permanent injunctive relief, and dismissing all of their opponent’s counterclaims.
• Dykema Helps Client with Business-Threatening Trademark Dispute
  Defended a cloud hosting client against a trademark claim in the U.S. District Court for the Northern District of California that threatened to destroy its business. Our team's motion to dismiss was granted to all but a single claim and one defendant. Eventually, with only one remaining defendant and the court denying the requested preliminary injunction, plaintiff dismissed the entire case against our client.

Copyrights

• $100K in Damages Awarded In Settlement in Mediation Stemming from a Copyright and Trademark Suit
  Advised an e-commerce fulfillment technology company that manufactures, sells, packs, and ships personal protection equipment and health and beauty aid products. The lawsuit involved a California company using our client’s product photos and trademarks to sell competing products on Amazon.
• Protects Large Toy Manufacturer in International Counterfeiting Scheme
  Advised a large toy manufacturer that makes dolls regarding an international counterfeiting scheme that involved fifty companies selling counterfeits of our client’s toy on Chinese websites. Obtained relief for client through an extraordinary broad restraining order that turned into a preliminary injunction ordering the third party financial institution to freeze assets.
• Dykema Successfully Takes on Chinese Counterfeiters
  Helped a manufacturer who learned about infringement of its products by attending a major trade show in Las Vegas, where it noticed the defendant, a former customer, selling counterfeit products bearing our clients markings, color, and packaging. In these cases, counterfeiters are usually able to avoid being served; however, we worked diligently to request the court allow an alternative serving process. Although typically an anomaly, the Court allowed the defendants to be served by both email and regular mail. The court eventually granted a default judgment and entered an injunction against the defendants.

Trade Secrets

• Halting New Technology Trade Secrets From Transferring to Competitor
  When a senior executive left our client to join a direct competitor as its chief technology officer, Dykema sued and was successful in enjoining the competitor from hiring the employee who knew of our client’s development of new technology and its strategic plans around it.
• Defense of Manufacturers Against Claims Brought By Suppliers
  Instructing a manufacturer of smart pill bottles which was accused of misappropriating confidential trade secrets from a start-up company for whom it had developed the subject technology. Also, defending a manufacturer of recycling equipment accused of misappropriation of trade secrets from one of its suppliers.