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Bristol-Myers Squibb v. Mylan Pharmaceuticals

  • Represented Mylan (accused infringer) and counterclaim plaintiff (antitrust claim)
  • District of Columbia/Southern District of New York/Northern District of West Virginia/Federal Circuit/D.C. Circuit/U.S. Supreme Court
  • Antianxiety drug Buspar® (buspirone)
  • Leading case on challenging improper Orange Book listings/metabolite patents
  • Outcome - Summary judgment of noninfringement or, in the alternative, invalidity granted by U.S. District Court for the Southern District of New York ("S.D.N.Y")/Order by the S.D.N.Y. denying Bristol’s motion to dismiss antitrust counterclaims and holding that Bristol had acted in an objectively unreasonable fashion in listing the metabolite patent for buspirone in the Orange Book and suing Mylan on it/Bristol settled the antitrust claims by paying $535 million--including $35M to Mylan (after an initial ruling in favor of Mylan, 29 State Attorneys General and several plaintiff class action groups joined Mylan’s suit)

Webloyalty.com, Inc. v. Consumer Innovations, LLC

  • Represented Webloyalty (plaintiff in copyright action)
  • District of Delaware
  • Copyright action alleging copying of online advertisement
  • Outcome - Following bench trial, the Court held that defendant had engaged in actual copying of Webloyalty’s advertisements, found “willful” copyright infringement, awarded enhanced statutory damages and ordered defendant to pay Webloyalty more than $250,000 in legal fees and costs

Valentino U.S.A., Inc. v. Florence Fashions (Jersey) Limited

  • Represented Valentino, U.S.A., Inc. (Opposer and Petitioner in consolidated action)
  • Trademark Trial and Appeal Board
  • Opposition against two Applications and Cancellation against two Registrations
  • Outcome – After taking over this case from a prominent New York law firm and following extensive discovery, testimony periods, briefing and an oral argument, the TTAB held that Valentino established priority of use and that a likelihood of confusion existed between the Valentino marks and Florence Fashions’ GIOVANNI VALENTINO and GIANNI VALENTINO marks. Therefore, the TTAB sustained the oppositions and granted the petitions to cancel. This was one of the TTAB's longest pending cases, taking sixteen years to bring to resolution.

ITG Software Solutions, Inc. v. Meng Fanning

  • Represented ITG Software Solutions, Inc. (Complainant in Domain Name Dispute)
  • National Arbitration Forum (UDRP action)
  • Outcome - The Panel determined that (1) Respondent’s "itgfx.com" domain name is confusingly similar to Complainant’s ITG mark; (2) Respondent does not have any rights or legitimate interests in the "itgfx.com" domain name; and (3) Respondent registered and used the "itgfx.com" domain name in bad faith. Therefore, the Panel granted the relief sought by ITG and ordered that the "itgfx.com" domain name be transferred to ITG Software Solutions, Inc.

Outdoor Optics Inc. d/b/a Olympic Optical Co. v. Wolf Peak International Inc.

  • Represented Olympic Optical Co. (plaintiff)
  • District of Utah
  • Safety eyewear products
  • False advertising claim under Lanham Act
  • Outcome - Preliminary injunction after hearing and permanent injunction (on consent) prohibiting defendant from marketing safety glasses that are not compliant with industry standards

Schering Corp. v. Mylan Pharmaceuticals Inc. et al.

  • Represented Mylan (accused infringer)
  • District of New Jersey
  • Antihistamine drug Claritin® (Loratadine)
  • Outcome - Summary judgment of invalidity, based on inherent anticipation, granted by the U.S. District Court for the District of New Jersey; Affirmed by the Federal Circuit 

Cephalon, Inc. v. Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., Barr Laboratories, Inc., and Ranbaxy Laboratories Limited

  • Represented Mylan (accused infringer)
  • District of New Jersey
  • Provigil® (Modafinil)
  • Outcome - While Mylan's summary judgment motions were pending, Cephalon gave Mylan a license allowing it to launch its product three years prior to patent expiration

Guardian Industries, Inc. v. AFG Industries, Inc.

  • Represented AFG, accused infringer and counterclaim plaintiff
  • Eastern District of Michigan
  • Glass coating for low-e technology
  • Outcome – Settlement highly favorable to our client following full Markman and summary judgment briefing

Pfizer, Inc. v. Mylan Labs Inc. & Mylan Pharms. Inc.

  • Represented Mylan, accused infringer and counterclaim plaintiff
  • Western District of Pennsylvania/Federal Circuit/D.C. Circuit
  • Antihypertension drug Norvasc® (amlodipine besylate)
  • Leading case on obviousness, 180 day exclusivity and pediatric exclusivity
  • Outcome - Following a bench trial, the district court ruled that Mylan had infringed Pfizer’s patents. Upon appeal, the Federal Circuit granted Mylan’s motion for summary reversal and held Pfizer’s patent invalid as obvious

Bristol Myers Squibb v. Mylan Pharmaceuticals, Inc.

  • Represented Mylan (accused infringer in Hatch-Waxman case)
  • District of New Jersey
  • Taxol® (cancer drug)
  • Infringement/validity
  • Outcome - Summary judgment of invalidity; Federal Circuit affirmed on appeal

E-Data Corporation v. The New York Times Company, et al.

  • Represented the New York Times (accused patent infringer) 
  • Eastern District of Texas/Southern District of New York
  • Patent directed to a system for reproducing information in material objects at point of sale locations
  • Outcome - On the Times' motion, the case was transferred to the Southern District of New York; Following transfer, the Court granted the Times' motion for sanctions; Plaintiff then dismissed the complaint with prejudice in return for the Times forgoing enforcement of the sanctions order

Undisclosed Pharmaceutical Company A v. Undisclosed Pharmaceutical Company

  • Represented Pharmaceutical Company B (accused infringer) engaged in the sale of prenatal vitamins
  • American Arbitration Association (3 member panel)
  • Prenatal vitamin products
  • Patent infringement claims with counterclaims for invalidity, unenforceability and antitrust violations
  • Outcome - Arbitration settled with Claimant: (a) dismissing its claims with prejudice; (b) paying a portion of our client’s legal fees; and (c) providing covenants not to sue on other patents not involved in the arbitration

E-Data v. Cinemark USA, Inc., et al.

  • Representing The New York Times Company (accused infringer)
  • Eastern District of Texas; Southern District of New York
  • Patent infringement litigation relating to patent which purportedly covers a system for reproducing information in material objects at point of sale locations
  • Successfully obtained transfer of litigation from the Eastern District of Texas to the Southern District of New York
  • The litigation is ongoing

Organon Inc. and Akzo Nobel N.V. v. Mylan Pharmaceuticals Inc.

  • Represented Mylan (accused infringer)
  • District of New Jersey 
  • Antidepressant mirtazapine (Remeron®)
  • Inducement of infringement
  • Outcome - Summary judgment of no infringement in favor of Mylan/Appeal to Federal Circuit expected

Schering and Roussel UCLAF v. Zeneca

  • Represented Zeneca (accused infringer)
  • District of Delaware/Federal Circuit
  • Prostate cancer drug (Casodex®)
  • Leading case on right of co-owner of patent to license patent
  • Obviousness
  • Outcome - Summary judgment in favor of Zeneca after lengthy P.I. trial/Affirmance in Federal Circuit

Key Pharmaceuticals (Schering) v. Mylan

  • Represented Mylan (accused infringer)
  • Western District of Pennsylvania
  • Nitroglycerin transdermal patches
  • Invalidity/infringement
  • Outcome – Settlement following full trial – highly favorable to Mylan

Bayer and Pfizer v. Mylan

  • Represented Mylan (accused infringer in Hatch-Waxman case)
  • Western District of Pennsylvania
  • Nifedepine (Procardia®)
  • Infringement/Validity
  • Outcome – Settlement very favorable to Mylan following extensive discovery and indication by judge that Mylan’s motion for S.J. would be granted

Mallinckrodt, Inc. v. Medipart, Inc.

  • Represented Mallinckrodt (patentee)
  • Northern District of Illinois/Federal Circuit
  • A medical device sold with a "single use only" notice
  • Inducing patent infringement by reselling single use only device
  • Outcome - Landmark case in Federal Circuit for label license (single use only) on patented products

Comark Communications v. Harris Corp.

  • Represented Comark (patentee) with Hogan & Hartson
  • Eastern District of Pennsylvania
  • Circuit to correct cross-modulation problems of amplification systems
  • Outcome – Following a six-week trial, the jury found Harris liable for both infringement and willful infringement; the jury awarded $7.7 million to Comark; with doubling and attorneys’ fees, the final award to Comark was $20 million; affirmance in Federal Circuit

Costello Publishing v. Rotelle

  • Represented Episcopal Conferences of Ireland, England, Wales, Australia and New Zealand (intervenors)
  • District of Columbia/Court of Appeals for the D.C. Circuit
  • Catholic Liturgy
  • Copyright/antitrust interface
  • Outcome - Publication outside license was copyright infringement and antitrust could not be applied/Settled favorably to copyright holders

Beverly Hills Fan Co. v. Royal Sovereign Corp.

  • Represented Beverly Hills Fan Co. (patentee)
  • Eastern District of Virginia/Federal Circuit
  • Ceiling fans
  • Patent infringement/validity
  • Outcome - Landmark case in Federal Circuit on the issue of personal jurisdiction for patentees seeking to enforce their patents by exercising personal jurisdiction based on sale in district

D.W. Industries, Inc. v. Safe-Wave Products, Inc. et al.

  • Represented D.W. Industries, Inc. and DENTSPLY International Inc. (which purchased the intellectual property rights involved)
  • Eastern District of Missouri; District of Nevada
  • Patent/trademark infringement suit
  • Outcome – Safe-Wave withdrew the challenged disposable product from market; redesigned its disposable product so it could no longer be used with Dentsply’s adaptors; abandoned accused trademark

Elliot M. Gross v. The New York Times Company et al.

  • Represented with Cahill Gordon & Reindel the New York Times Company, its former Managing Editor A. M. Rosenthal, and three reporters
  • Supreme Court, New York County; Appellate Division (First Dept.); New York Court of Appeals
  • A $540,000,000 defamation suit by former Chief Medical Examiner of the City of N.Y., Dr. Gross, arising from series of articles accusing Gross of favoring the police in custodial death cases
  • Outcome – Prevailed on summary judgment (some counts dismissed on motion to dismiss)

Burroughs Wellcome v. Barr Labs and Novopharm, Ltd.

  • Represented Burroughs Wellcome (patentee)
  • Eastern District of North Carolina/Federal Circuit
  • AIDS drug, AZT
  • Leading case on inventorship
  • Outcome – Following five-week jury trial, directed verdict in favor of Burroughs Wellcome in District Court/Affirmance in Federal Circuit

DuPont v. Abbott Labs.

  • Represented DuPont (patentee)
  • Northern District of Illinois
  • Diagnostic products employing monoclonal antibodies
  • Outcome – Settlement very favorable to DuPont on eve of trial

Burroughs Wellcome v. SmithKline Beecham

  • Represented Burroughs Wellcome (patentee)
  • Eastern District of North Carolina
  • Antiviral drugs (acyclovir/famciclovir)
  • Chemical compound infringement under DOE
  • Outcome – Settlement following Glaxo-Wellcome merger

Augustine Medical v. Mallinckrodt

  • Represented Mallinckrodt
  • Federal Courts in St. Louis and Minnesota/Jury Trial in Minnesota/Appeal to Federal Circuit
  • Patient warming blankets to prevent hypothermia
  • Patent Infringement/validity
  • Outcome - Obtained a stay of an injunction pending appeal/Reversal of multi-million dollar jury award/Prevailed in collateral litigation in Europe

DuPont v. Cetus

  • Represented DuPont (D.J. plaintiff/accused infringer)
  • Northern District of California
  • PCR
  • Obviousness/anticipation
  • Outcome – Jury verdict in favor of Cetus/Settlement before appeal

Genentech v. Burroughs Wellcome

  • Represented Burroughs Wellcome (accused infringer)
  • District of Delaware 
  • Recombinant tissue plasminogen activator
  • Obviousness/antitrust
  • Outcome – Jury verdict in favor of Genentech

Marion Merrell Dow v. Mylan

  • Represented Mylan (accused infringer in Hatch-Waxman case)
  • U.S. ITC/Western District of Pennsylvania
  • Diltiazem (heart drug, Cardizem®)
  • Obviousness/infringement/enforceability/ antitrust
  • Outcome – ITC ruling in favor of Mylan on all issues/Multi-million dollar settlement in favor of Mylan on antitrust counterclaims

SmithKline Beecham v. Mylan

  • Represented Mylan (accused infringer)
  • Eastern District of Pennsylvania
  • Cimetidine (Tagamet®)
  • Patent infringement/trademark infringement
  • Outcome – Settlement following intense discovery – entirely favorable to Mylan

DENTSPLY International Inc. v. Great White

  • Represented DENTSPLY International Inc. (patentee)
  • Middle District of Pennsylvania
  • Disposable air/water syringe tips (SANI-TIP®)
  • Patent infringement, trademark infringement, false advertising and unfair competition
  • Outcome - On September 1, 2000, following a three-day evidentiary hearing, the Court granted Dentsply's motion for a preliminary injunction, holding that Dentsply was likely to succeed on the merits with respect to its claims for patent infringement, trademark infringement, false advertising, and unfair competition, and enjoining further sale of the accused product and use of the infringing trademark

Ferrero U.S.A. v. Ozak Trading, Inc.

  • Represented Ferrero U.S.A.
  • New Jersey Federal Court/Third Circuit
  • TIC TAC candy mints
  • Grey market importation
  • Outcome - U.S. licenses prevailed/Affirmed on appeal except for attorneys' fees

GlaxoWellcome v. Mylan

  • Represented Mylan (accused infringer in Hatch-Waxman case)
  • District of Maryland – transferred to Eastern District of North Carolina on contested motion by Mylan
  • Ranitidine (Zantac®)
  • Infringement/patent misuse/antitrust
  • Outcome – Dismissal of GlaxoWellcome claims with prejudice, settlement favorable to Mylan of Mylan’s antitrust counterclaims

Pierre Culliford a.k.a. PEYO v. CBS Records

  • Represented Pierre Culliford a.k.a. PEYO (famous cartoonist and creator of the Smurfs)
  • District of Columbia
  • SMURF - animated characters
  • Product disparagement under Section 43(a) of Lanham Act
  • Outcome - Preliminary Injunction granted against THE SMURF record/CBS settled damages and stopped selling the record

Pharmacia & Upjohn v. Mylan

  • Represented Mylan (accused infringer in Hatch-Waxman case)
  • Northern District of West Virginia/Federal Circuit
  • Glyburide (anti-diabetic drug)
  • Infringement/validity
  • Outcome – Summary judgment of non-infringement & invalidity (collateral estoppel) in favor of Mylan/Affirmed by Federal Circuit/Dist. Ct. denied Mylan’s motion for attorney fees/Fed. Cir. reversed & remanded

Brassica v. Sproutman

  • Represented Brassica (patentee)
  • District of Delaware
  • High sulforaphane broccoli sprouts
  • Invalidity/infringement
  • Outcome – Settlement in favor of Brassica/Consent judgment with entry of permanent injunction and dismissal of counterclaims with prejudice

Akzo Nobel v. Trinity Biotech

  • Represented Akzo Nobel (patentee)
  • District of Delaware
  • Diagnostic peptides for Epstein Barr Virus
  • Infringement
  • Outcome – Settlement in favor of Akzo Nobel before answer filed

Kaigai Pharmaceuticals v. Bertek

  • Represented Bertek
  • American Arbitration Association in Los Angeles (three arbitrators)
  • Contract dispute concerning Bertek’s termination of a license and supply agreement for nitroglycerin patches in Japan
  • Outcome – After four-week trial and full briefing, arbitration award favorable to Bertek

Warner Lambert v. Shalala & FDA

  • Represented Mylan (intervenor)
  • District of Columbia/Court of Appeals for D.C. Circuit
  • Phenytoin
  • Action by W-L against FDA to revoke approval of Mylan ANDA
  • Outcome – Dist. Ct. upheld FDA’s approval of Mylan’s ANDA/Affirmed by Ct. of Appeals

Pfizer v. Shalala and FDA

  • Represented Mylan (intervenor)
  • District of Columbia/Court of Appeals for D.C. Circuit
  • Nifedepine (Procardia®)
  • Action by Pfizer against FDA to enjoin FDA’s acceptance of Mylan’s ANDA
  • Outcome – Judgment in favor of Mylan (FDA)/Partially vacated on ripeness grounds by Ct. of Appeals; subsequent proceedings withdrawn by Pfizer

Rabbi Avi Weiss v. Howard Univ. et al.

  • Represented Rabbi Weiss (plaintiff)
  • District of Columbia (two-week jury trial)
  • Battery/failure to protect Weiss’ right to protest with respect to speeches by Khalid Abdul Muhammad at Howard Univ. campus
  • Outcome – After two-week jury trial, verdict and judgment for Rabbi Weiss

Dr. Vladislav Sklyarevich v. Center for Remote Sensing, Inc.

  • Represented Dr. Vladislav Sklyarevich and Gyrotron Technology, Inc.
  • American Arbitration Association proceeding (Arbitrator: John Keys, Jr. of Winston & Strawn)
  • Declaratory judgment action regarding allocation of intellectual property rights; counterclaim for injunctive relief
  • Outcome – Prevailed in all respects

Trenwyth Industries v. The Burns and Russell Co.

  • Represented Trenwyth Industries (accused trade secret infringer)
  • Maryland Federal Circuit
  • Trade secrets
  • Outcome - Prevailed on trade secret claims on summary judgment and remainder of case settled favorably for our client

Skechers U.S.A., Inc. v. Superga U.S.A., Inc. et al.

  • Represented Superga S.p.A. et al.
  • Central District of California (Western Div.)
  • An action by Sketchers to enjoin Superga from using encircled S trademark; counterclaim by Superga
  • Outcome – Settlement pursuant to which Superga retained rights to use disputed trademark; Sketchers gave up rights to use disputed trademark; Sketchers paid substantial damages

Netmarket Group Inc. v. Make Us An Offer, Inc.

  • Represented Netmarket Group Inc. (patentee)
  • District of Delaware
  • First business method patent issued by PTO covering online haggling/negotiation
  • Outcome - MUAO admits validity, enforceability, and infringement; ceases operation of infringing activities; entry of consent judgment and permanent injunction

Outdoor Optics, Inc. d/b/a Olympic Optical Co. v. Bacou USA, Inc.

  • Represented Olympic Optical Co. (patent owner)
  • District of Delaware
  • Design Patent on safety glasses
  • Defendant/Competitor Bacou infringed patent by selling infringing products
  • Outcome - Bacou agrees to stop selling infringing products within about six months after suit was filed; a favorable outcome at less than 10% of the estimated cost

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