Lerner, David, Littenberg, Krumholz & Mentlik, LLP is especially proud of the cases our firm has won for our clients which are reflected in published opinions. While we have included the citations for ready reference, should you wish to obtain copies of any of these decisions, please contact one of our attorneys.
THE JOHNS HOPKINS UNIVERSITY v. DATASCOPE CORPORATION, 543 F.3d 1342 (Fed. Cir. 2008). In a trial before a federal court jury in Baltimore in 2007, a verdict was rendered holding that our client Datascope infringed fifteen claims of three patents owned by Johns Hopkins relating to methods for mechanically fragmenting blood clots. On appeal, the U.S. Court of Appeals for the Federal Circuit reversed the judgment of infringement and remanded the case to the district court for entry of a judgment of noninfringement. Based on our cross-examination of the plaintiffs' expert, and the absence of any other evidence to support the verdict regarding a claim limitation which was narrowly construed in accordance with our arguments, the Federal Circuit overturned the verdict of infringement as to all asserted claims.
HOWMEDICA OSTEONICS CORP. v. WRIGHT MEDICAL TECHNOLOGY, INC., 540 F.3d 1337 (Fed. Cir. 2008). In November 2005, in this patent infringement action involving artificial knee implants, the district court construed a phrase in our client's asserted patent claim to require that each of the two "condyles" in the "femoral" component of the implant meet certain geometric limitations, relying in large measure on deposition testimony of a named inventor. On appeal, the U.S. Court of Appeals for the Federal Circuit concluded that the claim construction was in error, vacated the judgment of noninfringement which resulted from that claim construction, and remanded the case to the district court. Recognizing that an inventor's understanding of his invention may not reflect an understanding of the claims, which are typically drafted by patent counsel, the Federal Circuit held that testimony as to an inventor's subjective intent is irrelevant to the issue of claim construction in a patent case.
DIGITAL TECHNOLOGY LICENSING, LLC v. CINGULAR WIRELESS, LLC, 2007 WL 2300792 (E.D. Tex. Aug. 7, 2007). This was a patent infringement action we filed on behalf of our client involving a transducer system for communicating acoustic signals by digital means, which we alleged was being infringed by the Cingular GSM cellular telephone network. Following a Markman claim construction hearing, the court construed virtually all limitations of the patent claim at issue consistent with our client's contentions. Although the defendant subsequently moved for summary judgment, shortly before trial, the defendant and several of its handset and infrastructure vendors agreed to settle with our client.
HOWMEDICA OSTEONICS CORP. v. TRANQUIL PROSPECTS, LTD., 482 F. Supp. 2d 1045 (N.D. Ind. 2007), aff'd mem., 260 Fed. Appx. 297, 2008 WL 110966 (Fed. Cir. Jan. 10, 2008). This action began in May 2002 when, on behalf of our client, Howmedica, we filed suit seeking a declaratory judgment of noninfringement and invalidity with respect to two patents owned by an offshore company, Tranquil Prospects, both entitled "Implantation Of Articulating Joint Prosthesis." In March 2007, the U.S. District Court for the Northern District of Indiana granted summary judgment of noninfringement in favor of our client, concluding that there was a failure of proof to support Tranquil's infringement assertions. Abandoning its claim as to one of its patents, Tranquil appealed the noninfringement decision to the Federal Circuit. However, on January 10, 2008, the Federal Circuit issued a per curium affirmance of the summary judgment as to the one remaining patent. Tranquil's petition for rehearing was subsequently denied without Howmedica having been asked to respond.
RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE CHICKEN, 2007 WL 446910 and 2007 WL 4081737 (D.N.J. Feb. 6, 2007 and Nov. 15, 2007). The patent owner RTI had filed two patent infringement actions against customers of our client, Oilmatic Systems, LLC, alleging that the customers were infringing a patent relating to systems for supplying and draining cooking oil. We then filed a declaratory judgment action against RTI on behalf of Oilmatic. We initially sought and obtained a favorable claim construction. Thereafter, in a 50-page opinion, the Court granted summary judgment that the Oilmatic system did not infringe any of the seven asserted claims of RTI's patent.
RUTGERS COUNCIL OF AAUP CHAPTERS v. RUTGERS, THE STATE UNIVERSITY, 381 N.J. Super. 63, 884 A.2d 821, 2005 WL 2665461 (N.J. Super., App. Div., Oct. 20, 2005). This case involved the patent policy of our client Rutgers, The State University of New Jersey, described by the court as "among the premiere research universities in the nation." The faculty union had asserted that several aspects of the Rutgers patent policy were subject to mandatory negotiation. In an administrative proceeding before the New Jersey Public Employment Relations Commission, without Rutgers having the benefit of intellectual property counsel, several issues were resolved in favor of the union. Rutgers appealed, and our firm was asked to assist Rutgers in briefing and oral argument. This resulted in the Appellate Division of the Superior Court of New Jersey reversing the Commission, holding that certain key aspects of the patent policy relating to ownership of laboratory notebooks and the requirement of prompt disclosure of inventions were prerogatives of the University management and not subject to mandatory negotiation.
STRYKER TRAUMA S.A. v. SYNTHES (USA), 2005 WL 2245385 (D.N.J. Sept. 8, 2005) and 2007 WL 1959231 and 2007 WL 1959233 (D.N.J. Jun. 29, 2007). This is an action in which our client Stryker has asserted infringement of a patent relating to a clamp that holds a bar or rod in place to fix bone fractures. The defendant Synthes had asserted a defense of invalidity based upon anticipation by a product of Synthes itself. Synthes moved for summary judgment of invalidity. In its first ruling, the court not only denied the motion by our adversary; the court also granted the cross-motion we had filed on behalf of our client Stryker to remove the anticipation defense from the case altogether. Thereafter, a jury found the asserted claim of the Stryker patent valid and infringed, and the court subsequently denied Synthes' motions for judgment as a matter of law or a new trial.
MEDPOINTE HEALTHCARE, INC. v. HI-TECH PHARMACAL CO., INC., 115 Fed. Appx. 76 (Fed. Cir. 2004), cert. denied, 1256 S. Ct. 1991 (2005). We were asked to represent the defendant Hi-Tech after the district court had entered a preliminary injunction against Hi-Tech based on alleged infringement of a patent relating to cough/cold remedies involving a combination of tannates. After familiarizing ourselves with the record, we pursued an appeal of the preliminary injunction, which resulted in the Federal Circuit vacating the injunction based on three separate errors by the district court. The patentee's efforts to obtain en banc review by the Federal Circuit were unsuccessful, as was the patentee's petition for certiorari to the U.S. Supreme Court.
COLLAGENEX PHARMACEUTICALS, INC. v. IVAX CORPORATION, 375 F. Supp. 2d 120 (E.D.N.Y 2005). Our client IVAX sought FDA approval to market a generic version of a drug product employing doxycycline. However, FDA approval was initially prevented by a preliminary injunction entered in the U.S. District Court for the District of Columbia. Prior to our involvement, CollaGenex had convinced that court to enter the injunction under a theory that the drug in question was entitled to the protections of the Hatch Waxman Act, notwithstanding the FDA's decision that the product was an antibiotic drug which was not eligible for Hatch Waxman treatment. Along with co-counsel, we intervened in the DC action and ultimately obtained summary judgment against CollaGenex and a lifting of the preliminary injunction. CollaGenex Pharmaceuticals, Inc. v. Thompson, 2005 WL 256561 (D.D.C. Jan. 19, 2005). Thereafter, CollaGenex moved for a preliminary injunction in a separate patent infringement action which it had filed in the Eastern District of New York. We initially obtained a favorable ruling for our client before a Magistrate Judge, who concluded that there was substantial issues of noninfringement and invalidity and an insufficient showing of irreparable harm by CollaGenex. CollaGenex sought and obtained further review in which the district court adopted and affirmed the Magistrate Judge's decision based not only on the merits of the case but also on the court's conclusion that CollaGenex's contentions of irreparable harm could not be reconciled with statements made by CollaGenex in SEC and other filings.
TEVA PHARMACEUTICALS USA, INC. v. PFIZER, INC., 395 F.3d 1324 (Fed. Cir. 2005), reh'g denied, 405 F.3d 990 (Fed. Cir. 2005). In this case, our client IVAX had filed the first ANDA seeking to market a generic version of the drug HYTRIN. After extensive litigation with the patentee Pfizer, IVAX had obtained a settlement under which IVAX would be able to launch its product prior to the expiration of all of Pfizer's patents. Teva subsequently filed its own ANDA and filed a declaratory judgment suit against Pfizer, contending that the 2003 Medicare Amendments entitled Teva to pursue a declaratory judgment action notwithstanding the absence of threatening conduct by Pfizer. After the district court dismissed Teva's action, Teva appealed, and we filed an amicus brief on behalf of IVAX, urging affirmance. After a divided panel of the Federal Circuit affirmed the dismissal, Teva sought rehearing en banc, supported by amicus briefs, including one from the Federal Trade Commission and one from three prominent U.S. Senators. We filed a second amicus brief urging denial of rehearing. In a 9-3 decision, the Federal Circuit denied rehearing.
PRINCETON BIOCHEMICALS, INC. v. BECKMAN COULTER, INC., 223 F.R.D. 326 (D.N.J. 2004). This was a patent infringement action in which a liability trial had resulted in a jury verdict in favor of the plaintiff. Our client, Rutgers, The State University of New Jersey, subsequently learned that the plaintiff had obtained the patent from a former graduate student at Rutgers who had made the invention while he was subject to the Rutgers Patent Policy, under which Rutgers had a right to ownership of the alleged invention. On behalf of Rutgers, our firm moved to intervene in the action on the basis of Rutgers' claim of ownership in the patent at issue. In granting the motion to intervene, the court held it was brought on a timely basis, notwithstanding the fact that the motion was filed approximately six years after the suit was commenced and after a liability trial had proceeded to verdict. The court also concluded that Rutgers had demonstrated a sufficient interest in the litigation which was not adequately represented by the existing parties, such that Rutgers could intervene as of right under Fed. R. Civ. P. 24(a).
SMITHKLINE BEECHAM CORP. v. ZENITH GOLDLINE PHARMACEUTICALS, INC., 2000 WL 963165 (E.D. Pa.) and 210 F.R.D. 547 (E.D. Pa. 2002), aff'd per curiam, 71 Fed. Appx. 64 (Fed. Cir. 2003). Our client Zenith was sued for infringement under the Hatch Waxman Act regarding certain patents relating to paroxetine hydrochloride. Zenith filed a counterclaim seeking a declaratory judgment as to certain other related patents owned by the patentee. We first persuaded the district court to deny the patentee's motion to dismiss the counterclaim for lack of a case or controversy. Thereafter, the patentee gave our client a covenant not to sue on the related patents. Apotex, which held the first filed ANDA, sought to intervene to prevent the dismissal of Zenith's declaratory judgment counterclaims. The district court denied Apotex's motion to intervene; and in response to Apotex's appeal, the Federal Circuit affirmed the denial per curiam.
AMERICAN BIOSCIENCE, INC. v. BAKER NORTON PHARMACEUTICALS, INC., 2002 WL 54627 (C.D. Cal. 2002), reconsideration denied, 2002 WL 655272 (C.D. Cal. 2002). In connection with our client's efforts to market a generic version of the cancer drug TAXOL®, a company which was not marketing the branded drug had succeeded in obtaining a ruling that its patents had to be listed in the FDA Orange Book, thus requiring our client to successfully address the patents before obtaining FDA approval. See American Bioscience, Inc. v. Thompson, 269 F.3d 1077 (D.C. Cir. 2001). Two months later, we obtained summary judgment that all of the asserted claims were invalid over the prior art. The patentee's request for reconsideration was subsequently denied.
SEALMASTER, L.L.C. v. SILVER LINE BUILDING PRODUCTS CORP. ET AL., 199 F. Supp. 2d 783 (E.D. Tenn. 2001), aff'd, 32 Fed. Appx. 587, 2002 WL 519811 (Fed. Cir. 2002). In this action, the plaintiff sued our client Silver Line and its customer Home Depot for infringing two patents relating to a window frame. We obtained summary judgment that all asserted claims of the two patents were invalid based upon the sale and public use of a similar Silver Line product beginning in the 1970s. After the district court denied a motion for reconsideration, our adversary appealed. The Federal Circuit affirmed the summary judgment without opinion and thereafter denied our adversary's petition for rehearing.
BRISTOL-MYERS SQUIBB CO. v. BEN VENUE LABS., INC. ET AL., 246 F.3d 1368 (Fed. Cir. 2001). In this case, our client (as well as other generic competitors) sought the right to market a generic version of the cancer drug Taxol®. We succeeded in obtaining summary judgment that the asserted claims of two Bristol-Myers Squibb method of use patents were invalid for anticipation by the prior art reference which had been the principal focus of prosecution in the Patent and Trademark Office. On appeal, the Federal Circuit affirmed the invalidity of all but two claims, and invited the district court on remand to consider granting summary judgment as to those two claims on a more complete record. The case was subsequently settled.
DATASCOPE CORP. v. ARROW INTERNATIONAL INC., 2001 WL 1045524 (D.N.J. 2001). In this case, a competitor of our client sought and obtained a broadened reissue patent seeking to cover our client's product, and thereafter successfully prosecuted a reexamination proceeding in which the claims were held patentable over additional prior art. The patent was then asserted against our client. We filed a declaratory judgment action and subsequently filed a motion for summary judgment. The court agreed with our contention that all of the asserted claims of the patent were invalid for "recapture" because, during the reissue, the patentee had deleted from its claims one of the features which had been the subject of an amendment and several arguments in favor of patentability during the original prosecution. Although the patentee had stressed two features during original prosecution, the court agreed with our contention that both of those features were essential limitations, such that the subsequent deletion of one of the two limitations was held to be an improper recapture.
NEWELL WINDOW FURNISHINGS, INC. v. SPRINGS WINDOW FASHIONS DIVISION, INC., 53 U.S.P.Q.2d 1302 (N.D. Ill. 1999), aff'd as to invalidity, 2001 WL 744460 (Fed. Cir. July 2, 2001). Newell filed suit in early 1998 alleging that a cellular window shade product which our client Springs had been selling for some time infringed two newly issued patents. Newell had been prosecuting these patents for the purpose of suing Springs, and had procured a consent judgment from a third party on a related patent in an effort to buttress its planned suit against Springs. We succeeded in convincing the district court that the patent was invalid based upon prior art which had been considered by the Patent and Trademark Office and which had been of record in the prior suit against the third party. On appeal, the Federal Circuit affirmed the judgment of invalidity and vacated the district court's holding of infringement in Newell's favor.
GASSER CHAIR CO v. INFANTI CHAIR MFG. CORP., 60 F.3d 770 (Fed. Cir. 1995), and 943 F. Supp. 201 (E.D.N.Y. 1996), aff'd, 47 U.S.P.Q.2d 1208 (Fed. Cir. 1998). We brought this action alleging that a line of chair with bumper edges sold by the defendants infringed our client's patent and trade dress. After the district court initially granted summary judgment against our client on the basis of laches and estoppel, we obtained a reversal at the Federal Circuit, based in part on our having demonstrated that the defendants' egregious conduct (intentional copying) altered the equities on the laches and estoppel defenses. Thereafter, in a bench trial before the same judge who had previously granted summary judgment, the court ruled in our client's favor on both the patent and trade dress claims, awarding $15 million in damages plus our client's attorneys' fees, holding both the corporate defendant and the individual principal jointly and severally liable, and issuing a broad injunction protecting our client's trade dress in its line of stacking chairs, arm chairs and casino seating. The district court's judgment on the merits was upheld on appeal.
MARION MERRELL DOW, INC. v. BAKER NORTON PHARMACEUTICALS, INC., 948 F. Supp. 1050 (S.D. Fla. 1996). We took over this case, in which the plaintiff sought to prevent our client from marketing a generic version of SELDANE®, from a large firm in New York. A Magistrate Judge had issued four decisions adverse to our client recommending that summary judgment be rendered against our client. We subsequently obtained summary judgment of noninfringement in favor of our client.
GLEBAR CO. v. ROYAL MASTER GRINDERS, INC., 39 U.S.P.Q.2d 1692 (D.N.J. 1996). In this action, Glebar sued our client Royal Master Grinders for patent infringement by its machines used to grind guide wires for catheters. We defeated a motion for preliminary injunction by demonstrating that Glebar did not have a reasonable likelihood of success in establishing infringement and that actions taken by Royal Master Grinders as soon as Glebar's patent issued prevented irreparable injury to Glebar.
ELI LILLY & CO. v. AMERICAN CYANAMID CO. ET AL., 896 F. Supp. 851 (S.D. Ind. 1995), aff'd, 82 F.3d 1568 (Fed. Cir. 1996). Eli Lilly sued our client Zenith Laboratories and three other defendants for importation of the drug cefaclor under 35 U.S.C. § 271(g). Lilly contended that Zenith's supplier utilized in Italy a patented method of producing a chemical intermediate, which was thereafter further processed into cefaclor and imported into the United States. The district court denied Lilly's motion for a preliminary injunction, and the Federal Circuit affirmed, with both courts concluding that the product of the patented method was materially changed before the importation. The patents at issue expired shortly after the Federal Circuit denied Lilly's request for rehearing en banc.
ABBOTT LABORATORIES v. ZENITH LABORATORIES, INC., 35 U.S.P.Q.2d 1161 (N.D. Ill. 1995) and 36 U.S.P.Q.2d 1801 (N.D. Ill. 1995). Abbott sued our client Zenith for patent infringement under 35 U.S.C. § 271(e)(2)(A) on the basis of Zenith's filing of an Abbreviated New Drug Application with the Food and Drug Administration ("FDA"). We obtained dismissal of this suit on behalf of Zenith on the basis that Abbott had not listed the patent at issue in the FDA's "Orange Book," which is a prerequisite to such a lawsuit. Abbott thereafter listed the patent in the "Orange Book," and filed a second suit against Zenith. We obtained a dismissal of the second suit on the basis that Abbott's listing with the FDA was untimely. Abbott initially sought to appeal both decisions, but ultimately abandoned its appeals.
ZENITH LABORATORIES, INC. v. BRISTOL-MYERS SQUIBB CO., 19 F.3d 1418 (Fed. Cir.), cert. denied, 115 S. Ct. 500 (1994). In this declaratory judgment action, Bristol-Myers Squibb contended that our client Zenith infringed and induced infringement of a patent on a certain crystalline form of the drug cefadroxil. Bristol convinced the trial court that there was a transitory change to the patented crystal structure of Zenith's product which occurred after ingestion, from which the trial court concluded that Zenith induced infringement. Our firm (working with Zenith's outside general counsel) obtained a reversal on appeal and a holding that Bristol had not proven literal infringement or infringement under the doctrine of equivalents.
KATZ v. AIWA AMERICA, INC., 818 F. Supp 730 (D.N.J. 1993). In this action, our clients Aiwa America, Inc. and The Wiz Distributors Ltd. were accused of patent infringement relating to their sale of automobile radio/cassette players having a security system to discourage theft. The Court granted our motion for summary judgment, holding that there was no literal infringement, no infringement under the doctrine of equivalents, and that resort to the doctrine of equivalents was barred by both prosecution history estoppel and the prior art.
AMERICAN CERAMICRAFT, INC. v. EISENBRAUN REISS, INC., 28 U.S.P.Q.2d 1241 (D.N.J. 1993). In this declaratory judgment action we filed seeking to invalidate a patent, the Court first denied the defendant's attempt to stay the litigation pending the outcome of a reexamination proceeding. Thereafter, on the basis of prior commercial products and publications, we obtained summary judgment that all twelve claims of the defendant's patent were invalid.
DRAGAN v. L.D. CAULK CO., 12 U.S.P.Q.2d 1081 (D. Del. 1989), aff'd, 897 F.2d 538 (Fed. Cir. 1990) (Table). After the plaintiff had obtained a substantial money judgment following a jury trial, we were called in to represent the plaintiff on post-trial motions to set aside the money judgment and on the appeal. We succeeded in having the money judgment for patent infringement upheld by the district judge on the basis of evidence in the record relating to a reasonable royalty. On appeal, we successfully dealt with challenges to the validity of the patent and the evidence of infringement under the doctrine of equivalents.
ACOUSTICAL DESIGN, INC. v. CONTROL ELECTRONICS COMPANY, INC., 932 F.2d 939 (Fed. Cir. 1991). We were asked to take over the representation of the patent owner in this case after it had been pending for over a year with no discovery having been taken and no resolution in sight. We ultimately obtained a jury verdict that the patents (which related to sound masking equipment) were valid, enforceable, and had been willfully infringed, resulting in an award of treble damages, attorneys' fees and prejudgment interest totaling over $1.4 million. The judgment was affirmed in every respect by the Federal Circuit.
SEALED AIR CORP. v. INTERNATIONAL PACKAGING SYSTEMS, INC., 5 U.S.P.Q.2d 1001 (E.D. Va. 1987). Sealed Air owned four patents for foam-in-place delivery systems which were being infringed by its principal competitors. We represented Sealed Air in a trial, which resulted in all four of our client's patents being held valid and infringed, plus an award of damages and attorney's fees. As a result of this decision, Sealed Air obtained a Consent Judgment against another competitor forcing it to stop infringing Sealed Air's patents and the agreement of all other competitors to honor its patents.
LIBBEY-OWENS-FORD CO. v. THE BOC GROUP, INC., 655 F. Supp. 897 (D.N.J. 1987). In this decision, after a non-jury trial, the Court upheld the validity of our client's patent on the planar magnetron. Subsequent to this decision, our client has extensively and favorably licensed its patent.
THE LANG CONCRETE TENDON PATENT LITIGATION
Over a period of approximately a decade, we enforced against substantially the entire concrete industry a patent directed to a tendon for strengthening concrete. In the first round, in both LANG v. THE PRESCON CORP., 545 F. Supp. 933 (D. Del. 1982), and LANG v. VSL CORP., 219 U.S.P.Q. 625 (E.D. Va. 1982), after full trials, our client's patent was held valid and willfully infringed by two of the largest companies in the industry. As a result of these decisions, our client was able to license virtually the entire industry. In the second round, we successfully established that a modified process used by a licensee to try to avoid our client's patent infringed under the "doctrine of equivalents". AMICUS, INC. v. AMERICAN CABLE CO., INC., 660 F. Supp. 161 (E.D. La. 1987), aff'd, 848 F.2d 1245 (Fed. Cir. 1988)(Table). We obtained a preliminary injunction against another company trying to use this modified process in AMICUS INC. v. POST-TENSION OF TEXAS, INC., 686 F. Supp. 583 (S.D. Texas 1987), aff'd (unpub.), 848 F.2d 1245 (Fed. Cir. 1988). In the third round, we pursued officers of bankrupt infringers who had induced their companies to infringe. We defeated a summary judgment motion against one officer's personal liability in AMICUS, INC. v. ALOSI, 723 F. Supp. 429 (N.D. Cal. 1989). In AMICUS INC. v. ROBINSON, 18 U.S.P.Q.2d 1730 (N.D. Texas 1991), we obtained a judgment against two officers and owners of a bankrupt infringer. Overall, in licensing and judgments, enforcement of this patent has accounted for extremely significant royalties.
THOMAS & BETTS CORP. v. LITTON SYSTEMS, INC., 720 F.2d 1572 (Fed. Cir. 1983). In one of the earliest decisions of the Federal Circuit, and one which has been cited on numerous occasions, our client's patent on an electrical connector was held infringed under the doctrine of equivalents. In a subsequent accounting, the District Court awarded approximately $6 million in damages and prejudgment interest.
TRANS-WORLD MANUFACTURING CORP. v. AL NYMAN & SONS, INC., 750 F.2d 1552 (Fed. Cir. 1984). In this case, we obtained judgment notwithstanding the verdict in favor of our client, upholding the validity of our client's design patent on a display case. After this decision was upheld by the Federal Circuit, the District Court awarded damages and prejudgment interest to our client. TRANS-WORLD MANUFACTURING CORP. V. AL NYMAN & SONS, INC., 633 F. Supp. 1047 (D. Del. 1986).
REFAC INTERNATIONAL, INC. v. IBM CORP., 689 F. Supp. 422 (D.N.J. 1988), aff'd, 13 U.S.P.Q.2d 1991 (Fed. Cir. 1989), on remand, 710 F. Supp. 569 (D.N.J. 1989). We represented Diebold, Inc. (a manufacturer of automatic teller machines) in this multi-defendant suit in which the Court initially invalidated the patent in suit on summary judgment. We had obtained an injunction against the plaintiff's harassment of Diebold's customers, and this contributed to the District Court's decision to award attorneys' fees to the prevailing defendants.
In addition to decisions on the merits, we have also had considerable success in obtaining prompt dismissal of suits against our clients, and in staving off efforts by adversaries to do the same. For example, in WRIGHT MEDICAL TECH., INC. v. OSTEONICS CORP., 914 F. Supp. 1524 (W.D. Tenn. 1995), and CARROT COMPONENTS CORP. v. THOMAS & BETTS CORP., 229 U.S.P.Q. 61 (D.N.J. 1986), we obtained dismissal of declaratory judgment suits brought against our clients based upon the lack of a justiciable controversy. In GILLEY v. PROJECT STRATEGIES CORP., 38 U.S.P.Q.2d 1491 (D.N.J. 1995), we defeated a summary judgment motion which sought dismissal of claims that our adversary's patents had been procured through inequitable conduct and fraud. In GILLETTE CO. v. WARNER-LAMBERT CO., 690 F. Supp. 115 (D. Mass. 1988), we defeated a summary judgment motion filed against our client, Warner-Lambert, which ultimately led to a favorable settlement of that suit. The patent involved in the case, directed to the use of a lubricating strip on a razor, was subsequently held by a jury to be valid and infringed by American Safety Razor, with an eight-figure award to our client. Similarly, in KLEARFOLD, INC. v. SICHT PACK FALT BOX, INC., 15 F.R.Serv.3d 521 (S.D.N.Y. 1989), our client, the wronged third party beneficiary of a patent and know-how license, was held not to be bound by the arbitration clause in the license, and was thus entitled to pursue its claim in Federal Court. This decision, too, ultimately led to a favorable settlement.
