Patent Litigation

Patent litigation is a primary focus of our Intellectual Property practice. We approach each case as a communication challenge: how to present complex technical and legal issues to a judge or jury in clear, persuasive language. Early in the case, our team develops themes that clarify the key legal and scientific issues. We refine the themes during discovery as we develop a detailed case presentation to the jury and judge. Where appropriate, we make use of focus groups, mock trials, and jury research and take advantage of the latest technology in animation, video, and computer graphics.

Using these approaches, Orrick litigators have won national acclaim for their work in patent litigation, including the following cases:

• ABTOX. Orrick represented a start-up company, ABTOX, in two cases against Johnson & Johnson involving plasma steriles. The trial court granted summary judgment of non-infringement in favor of ABTOX on the two patents asserted by Johnson & Johnson. The summary judgment was affirmed in part and reversed in part on appeal. Subsequently, summary judgment was again granted in favor of our client in ABTOX v. Johnson & Johnson. In MDT Corporation v. ABTOX, Inc., we defended ABTOX against patent infringement charges on two patents relating to plasma steriles. After motions for summary judgment and a mini-trial, the Court held the patents not infringed and dismissed the case. The Federal Circuit affirmed this decision on appeal.
• Advanced Micro Devices, Inc. (AMD). Orrick has represented AMD in a variety of IP matters. In Advanced Micro, et al v. Alliance Semi Int'l, et al, Orrick represented AMD, in a patent action alleging infringement of two patents relating to flash memory devices, an area in which AMD is an industry leader. After a Markman hearing, and after AMD amended the complaint to accuse additional Alliance devices, the parties settled the dispute. The settlement included a payment to AMD for past damages, a royalty provision for future sales by Alliance, and a consent judgment holding that the two AMD patents-in-suit are valid and enforceable and that certain Alliance devices infringed AMD's patents. In Advanced Micro Devices, Inc. v. Altera Corp., Orrick represented AMD in litigation of patent infringement claims involving programmable logic devices.
• Advanced Power Technology (APT). In IXYS Corporation v. Advanced Power Technology, an Orrick IP team won summary judgment on both non-infringement and invalidity in a patent case for client Advanced Power Technology (APT). Plaintiff IXYS Corporation, asserted two patents on power Metal Oxide Semiconductor Field Effect Transistor (MOSFET) technology against APT in the northern district of California. MOSFET is a type of radio frequency transistor often used in wireless microphone receivers. ISYS now faces a trial in January on claims that it infringes two APT patents. APT also has an inequitable conduct claim remaining to be tried against IXYS.
• Affymetrix, Inc. Orrick represented Affymetrix in a variety of matters, defending their GeneChip® product from patent infringement allegations and enforcing Affymetrix's GeneChip® patents against infringement in a variety of locations and forums, including a jury verdict of no literal infringement in Delaware.
• Alcon Laboratories, Inc. Orrick represented Alcon against claims of patent infringement in two cases, one in the Southern District of New York and one in the District of Delaware, involving Alcon's TRAVATAN® product for the treatment of glaucoma. In recently-completed litigation involving Alcon's attempt to market generic brimonidine, Orrick lawyers argued for, and obtained, a Federal Circuit affirmance of a summary judgment in favor of Alcon on a novel issue under the Hatch-Waxman Act, involving method-of-use patents.
• Alpha and Omega Semiconductor, Inc. (AOS). An Orrick team currently represents AOS in patent litigation in which Siliconix, Inc. accuses AOS's Power MOSFET devices of infringing Siliconix's patents. Trial is set for May, 2005.
• American Sign and Indicator Corporation. . An Orrick lawyer defended American Sign in a series of cases in the Federal District Court, the Sixth Circuit Court of Appeals, and the Federal Circuit against patent infringement allegations of Stewart-Warner on computer-controlled scoreboards which displayed moving video images. The American Sign case was won when a key witness for Stewart-Warner changed his testimony on the stand during Mr. Anthony's cross-examination of the witness. That dramatic change in testimony later resulted in the Court reversing its prior ruling in favor of Stewart-Warner. There were two appeals and two trials in this case. On the first appeal, to the Sixth Circuit Court of Appeals, the District Court was sustained with respect to one patent and reversed with respect to a second. A new trial was held with respect to the second patent and we again prevailed at trial. That second trial was appealed to the Federal Circuit who sustained the trial court outcome.
• Applera Corp. Orrick represented the plaintiff Applera Corp. in Applera and Roche Molecular Systems v. MJ Research, a patent infringement, unfair competition, and antitrust suit involving the enforcement of six patents directed to the Nobel Prize-winning gene amplification process called the polymerase chain reaction (PCR) and thermal cycling instruments used to automate PCR. After a four week jury trial in the District of Connecticut, the jury found all six patents infringed, and four of them willfully infringed. In addition, the Court dismissed the defendant's antitrust tying counter-claims.
• Arcom. In Eagle v. Arrow Communication Laboratories, Inc. (doing business as Arcom), Northern CATV Sales, Inc., a matter in which Orrick represented Arcom involving a patent on an electrical filter design, we obtained a judgment denying a preliminary injunction to Eagle and granting summary judgment of non-infringement to defendants.
• Arvesta (formerly Tomen Agro, Inc.). An Orrick three-office integrated team obtained summary judgment on the grounds of non-infringement in a case where BASF was seeking over $100 million from our client. BASF alleged that Arvesta and its manufacturer, Eastman Chemical, infringed a patent covering a process for creating an organic chemical used to make an herbicide. This team also secured an early stay of all damages discovery and a bifurcation of damages and willfulness issues from the liability trial, so that the client's confidential business plans and competitively valuable financial information would be protected from disclosure. Arvesta also secured a very favorable Markman decision. The Federal Circuit recently confirmed the lower Court's summary judgment favoring our client.
• AT&T. In AT&T GIS v. Spectra-Physics, an Orrick lawyer was trial counsel for plaintiff AT&T GIS in a patent infringement suit involving three patents directed to bar code scanning equipment. The case was favorably settled shortly before a scheduled four-week jury trial, and after two years of extensive fact and expert discovery.
• Aureal Semiconductor. In Creative Technology Ltd. v. Aureal Semiconductor, a patent trial, Orrick's efforts resulted in a jury verdict of non-infringement of Aureal's core technology "3D" audio sound card. This case was selected as one of the "Top 10 Defense Verdicts of 1999" by The National Law Journal.
• Barkley Court Reporters and Transcription. An Orrick team served as trial counsel for Barkley. In Stenosync v. Barkley Court Reporters, Orrick defended Barkley against charges of infringement of a patent for court reporting software systems. The case was dismissed following a decision of summary judgment of non-infringement.
• Bay Networks. In 3Com v. Bay Networks, a patent infringement case, Orrick litigators successfully protected the client's Ethernet and networking architecture.
• Bayer Healthcare LLC. Orrick represents Bayer Healthcare LLC in a number of patent and trade secret matters including McNeil LLC v. Bayer, a patent infringement case in the Eastern District of Pennsylvania, concerning Bayer's gelatin coated aspirin products. We also defended Bayer in Care Technologies v. Pfizer and Bayer against claims that the RID® products infringed a patent on nit removals. And in Platt v. Bayer, we defended Bayer against allegations of misappropriation of trade secrets and breach of fiduciary duty regarding Bayer's Aleve Cold & Sinus® product. Orrick also represented Bayer A.G., Bayer's parent, in several matters involving the enforcement of Bayer's patent on Ciprofloxacin. In Bayer v. Carlsbad, we obtained a summary judgment ruling in favor of Bayer regarding a dispute as to the expiration date of its patent on Ciprofloxacin and an order denying Carlsbad's motion for summary judgment on the issue of obviousness. We also represented Bayer A.G. in Bayer v. Schein and Bayer v. Mylan, where we obtained summary judgment upholding the validity of Bayer's Cipro patent.
• Ben Venue Pharmaceuticals. In Novartis v. Ben Venue, an Orrick lawyer represented the defendant, Ben Venue Pharmaceuticals, Inc., a subsidiary of Boehringer-Ingelheim, in a patent infringement action under the Hatch-Waxman Act that involved the pharmaceutical Aredia®. Orrick obtained a summary judgment of non-infringement, later affirmed by the Federal Circuit, that allowed Ben Venue to begin making this important pharmaceutical product.
• Boehringer-Ingelheim Corporation. In Boehringer-Ingelheim Vetmedica v. Schering, Orrick lawyers successfully tried a patent infringement case related to a veterinary vaccine before a jury in the District of New Jersey. These lawyers also represented Boehringer on appeal before the Court of Appeals for the Federal Circuit, where the judgment below was affirmed. In Organon, et al v. Boehringer-Ingelheim Corp., a Hatch Waxman infringement suit, the case was successfully settled after the district court, in a related case, ruled against the plaintiff.
• Bristol-Myers Squibb. In Zenith v. Bristol-Myers Squibb, a declaratory action judgment involving the pharmaceutical cefadroxil, an Orrick lawyer established the principle of infringement by in vivo conversion of a non-patented product into patented pharmaceutical after ingestion. Indeed, infringement by Zenith was established before the district court by designing and conducting experiments to simulate the human digestive system.
• Bruker Daltonics. An Orrick lawyer represented Bruker in Finnigan v. Bruker before the International Trade Commission. After a three-week trial, the ITC Administrative Trial Judge held that the accused ion trap mass spectrometers did not infringe the Finnigan patents-in-suit, and that such patents were invalid. This decision was affirmed by the full commission and, on appeal, by the Federal Circuit. The Orrick lawyer coordinated related litigation between the parties in U.S. district courts and in various foreign countries including, inter alia, Germany and Switzerland. In connection with those litigations, that lawyer appeared before the European Patent Office and the German Patent Office.
• Cadence Design Systems, Inc. and Quickturn Design Systems, Inc. Orrick attorneys successfully defended Quickturn and its parent Cadence in a major patent and trade secret jury trial involving hardware logic emulation systems, where prior to trial summary judgment had been entered that Quickturn infringed two of the six patents asserted against it. Plaintiffs Mentor Graphics Corporation and Meta Systems were seeking $1 billion in damages. After a five week trial and nine days of deliberation, the jury returned a verdict completely in Quickturn's favor, invalidating the Mentor patents on all grounds put forth by Quickturn and finding no trade secret misappropriation. Orrick attorneys have also represented Quickturn in a series of District Court, International Trade Commission (ITC), German and French actions seeking to enforce Quickturn's fundamental hardware logic emulation patents against Mentor, and have won several trials which resulted in injunctions prohibiting Mentor from selling infringing products in the United States. One of Quickturn's ITC proceedings was especially noteworthy in that it produced the first-ever ITC prohibition against importation of infringing software via electronic transmission.
• Cannondale Corp. An Orrick team defended Cannondale against a charge of patent infringement in Robinson v. Cannondale Corp. Orrick won a successful motion for summary judgment of non-infringement of two patents-in-suit. The case is currently on appeal.
• Charles Schwab & Company and CyberTrader, Inc. An Orrick IP team was successful in dismissing with prejudice a patent infringement case against Charles Schwab, CyberTrader, and Terra Nova for a nuisance value settlement that is reported to be the lowest patent settlement in Eastern District of Texas history. The case, Datamize v. Charles Schwab, Cybertrader, and Terra Nova LLC, filed by a Montana-based software company, Datamize, in the Marshall Division of the Eastern District of Texas, included five other defendants, all of whom are directly or indirectly involved in online investment or brokering services. The patents are alleged to broadly cover web-based software platforms providing customizable user interfaces and employing relational databases. The settlement of this high stakes case followed the Orrick team's discovery of invalidating prior art and a demonstrated ability to prove it all in Court. Orrick's work in the case has been characterized by its clients as "Lawyering at its best: creative vision, integrity, and cost effective execution." Orrick also is representing CyberTrader, Inc. in another patent infringement case filed in the Southern District of New York. The case, Lava Trading, Inc. v. Sonic Trading et al., involves a software patent directed to a system for aggregating order book information from multiple alternative trading systems.
• China Southern Glass Holding Company. In AEM Holdings v. China Southern Glass et al. Orrick lawyers defended China Southern and its affiliates in a patent infringement action regarding a manufacturing process for electronic components. The case was favorably settled following defendants' filing of a motion for summary judgment of patent invalidity.
• Cisco Systems. Cisco has been an Orrick client since 1996, when Orrick began representing it in intellectual property matters.
  • Orrick serves as IP counsel for Cisco in Cisco v. Huawei. The Orrick team obtained a worldwide preliminary injunction order on behalf of Cisco Systems, Inc. As a result of Orrick's diligent representation, Cisco was able to obtain preliminary injunctive relief approximately four months after filing its complaint.
  • In Chrimar v. Cisco, et al., Cisco's IPhone products are under attack in patent litigation involving the ability to detect a LAN-connected IP phone and the ability to power it remotely. Orrick is defending Cisco in this ongoing matter. Orrick represented Cisco in the Proxim litigation involving wireless LAN technology. In this litigation, Orrick succeeded in reaching indemnification from a third party co-defendant, and Cisco's liability and lawyers fees were assumed by the co-defendant.
  • In InterWave v. Cisco Systems, Orrick served as lead counsel to Cisco in this trade secret and patent infringement case involving GSM cellular telephone technology and the use of Internet IP/H.323 protocols for the transport of voice data. The Orrick team successfully defeated a preliminary injunction motion brought by InterWave to halt sale of Cisco's billion-dollar ViperCell product and succeeded in dismissing all InterWave patents from the case on summary judgment. The case settled after a recommendation by the Special Master that InterWave had also failed to adequately identify its trade secrets and had instead claimed public domain information as its secrets. The case settled favorably for Cisco on the eve of Cisco's motion for lawyers' fees.
  • In Proxim v. Cisco, we successfully represented Cisco in patent infringement litigation involving wireless LAN technology.
• Compal Electronics. Compal is the world's second-largest laptop PC maker. Orrick represents Compal in a variety of locations and forums, including the Northern District of California, with proceedings relating to their design and manufacture of notebook computers and color display monitors. Recently the Orrick Compal team received an order granting summary judgment on behalf of Compal on four patents in LG Electronics Inc. v. Compal Electronics, Inc., in which Orrick represented Compal and its subsidiaries. The order effectively terminated the plaintiff's case. The plaintiff, LG Electronics, had asserted six patents (two previously dismissed) against Compal and four other Taiwanese notebook computer manufacturers arguing that the defendants notebooks infringed LGE's patents. We also provide Compal with strategic intellectual property counseling, which includes patent portfolio review, strategic patent analysis, licensing matters and litigation avoidance.
• Conductus, Inc. Orrick defended Conductus in a lawsuit for patent infringement regarding superconducting mobile telephone receiver systems.
• Connectix Corp. Orrick lawyers represented Connectix in a dispute over the creation of a PlayStation emulator that resulted in copyright, trade secret and patent claims, which were resolved in part by the Ninth Circuit in Sony Computer Entertainment, Inc. et al v. Connectix Corp.
• Delta Air Lines, Inc. Orrick represents Delta in a number of intellectual property matters including patent infringement. In Process Resources Corp. v. Delta Air Lines, a case concerning on demand baggage tags, Orrick defended Delta against charges that its baggage tags infringed two patents. The case settled on the courthouse steps.
• Diasonics. In Diasonics v. Acuson Corp., an Orrick lawyer represented the plaintiff, Diasonics, in a jury trial on two patents relating to phased array ultrasound imagers. A verdict in favor of Diasonics was returned, but was set aside in part by the trial judge as going beyond the evidence. After the court identified only a narrow issue for retrial, a ruling favorable to Diasonics was obtained and the case settled.
• Dow AgroSciences LLC and Mycogen Plant Science, Inc. Orrick is litigation counsel for Dow AgroSciences and its affiliates Mycogen Plant Sciences, Mycogen Seeds and Agrigenetics ("DAS") in multiple patent litigation matters before different courts in the United States and Australia that involve the technology for making genetically engineered insect and herbicide resistant plants. We have been involved both in enforcing DAS's patents and in defending the company against infringement suits and claims that would impair its intellectual property, and have achieved successful outcomes for DAS both in and out of the courtroom. Orrick has successfully disposed of and settled several patent cases for DAS prior to trial and, recently, Orrick teams obtained two significant trial victories for DAS: one a complete defense verdict in a two week jury trial involving three patents on Bt corn implicating DAS' Herculex(TM)1 Insect Protection Bt corn, and the other a hotly contested battle for rights to a patent on a commercially important gene used in transgenic corn and cotton crops. In another cases, Orrick lawyers argued and won a Federal Circuit reversal of a summary judgment invalidating one of Mycogen's patents on grounds of anticipation by prior invention in Mycogen Plant Science, Inc. v. Monsanto Corp. We also obtained a Federal Circuit affirmance of a trial court victory invalidating a patent asserted against Mycogen in Monsanto Co. v. Mycogen Plant Science. We are currently representing DAS in several matters including, a 291 action, a 146 action and multiple patent infringement actions, before U.S. District Courts in North Carolina, Delaware, Indiana, Missouri, and the Court of Appeals for the Federal Circuit. In one contested proceeding, our representation was sufficiently effective to cause the patent owner plaintiff to withdraw the case before trial. The case involved one of DAS' announced but not yet commercial products.
• eBay Inc. Orrick represents eBay in a variety of Intellectual Property matters involving patent litigation including PayPal's on-line payment system, as well as eBay's Billpoint payment system. We have represented them in infringement suits involving multiple claims on patents disclosing electronic document delivery systems including:
  • Charles E. Hill & Associates v. Amazon.com et. al. Orrick represents eBay in a case brought in Marshall, Texas by Mr. Charles Hill. Mr. Hill has asserted three patents against eBay and 17 large retailers that sell goods over the Internet including eBay. Mr. Hill contends that selling an item over the Internet infringes his patents, which purport to claim "electronic catalogs". Discovery is underway and trial is scheduled for December, 2005.
  • AT&T Corp. v. eBay Inc. and PayPal, Inc. (2003-Present) Orrick was engaged by eBay, Inc. and its subsidiary PayPal, Inc. to defend both companies in a patent infringement action brought by AT&T in Delaware, AT&T Corp. v. eBay, Inc., et al., (D. Del.). The case involves eBay's and PayPal's popular on-line payment mechanisms. Patent litigation involving technologies for sending documents and messages over the Internet. This case settled favorably to the interests of our clients, eBay and PayPal.
  • Tumbleweed Communications v. eBay Inc. and PayPal, Inc. (2002-2004). This similar patent infringement suit to the above was brought in the Northern District of California by Tumbleweed Communications. PayPal's on-line payment system, as well as eBay's Billpoint payment system, were alleged to infringe multiple claims of three related patents disclosing electronic document delivery systems. That case settled and was dismissed in late December 2003.
• eGain Communications. In eGain v. Alcatel, the firm represents eGain Communications in a pre-litigation patent dispute with Alcatel involving email routing and response technologies, some of which include integration with customer service functionality and the use of customer response management features.
• ELA Médical SA. In Medtronic Inc. v. Synthélabo, ELA Medical S.A. and L'Oreal S.A.., Orrick lawyers represented defendants accused of infringing twelve patents involving implantable cardiac pacemaker devices in the U.S. and assisted European counsel in defendants' countersuits on two patents in France and Germany. The case, which concerned mechanical components, circuit hardware, and software control systems and an antitrust counterclaim, settled after a favorable ruling was obtained in the German patent action.
• EMC Corp. Orrick is currently representing EMC Corp. in Hewlett-Packard v. EMC Corp. In Storage Technology Corporation v. EMC Corporation, Orrick successfully defended EMC against Storage Technology Corporation's assertions of patent infringement related to "virtual tape" technology and the case involved enterprise disk storage systems. The case was resolved in favor of EMC by bench trial in eight months and was affirmed at the Federal Circuit approximately one year later. Orrick defeated Storage Technology's efforts to stop sales of a key storage device. The lawsuit alleged infringement of Storage Tek's patent addressing "virtual tape" storage systems, a type of disk system that mimics tape storage devices.
• Enhance Vision Systems. Orrick represents Enhanced Vision Systems in a patent infringement action involving vision enhancement devices for the visually impaired.
• Ericsson. An Orrick lawyer was a member of the team representing Ericsson in a patent infringement action involving digital modulators used in cellular telephones and cellular telephone base stations.
• Fairchild Semiconductor. Orrick counsels Fairchild on a variety of intellectual property related matters.
  • In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. and Fairchild Semiconductor, Corp., we represent Fairchild in a patent infringement action brought in the District of Delaware. On October 20, 2004, Power Integrations filed suit alleging that Fairchild's pulse width modulated devices infringe four Power Integrations patents. Discovery is underway and trial will likely occur during the summer of 2006.
  • In Siliconix Inc. v. Fairchild Semiconductor, we represented Fairchild in a patent infringement action involving Power MOSFET devices. The case was favorably settled for Fairchild following two years of discovery.
• Foxconn Corp. Foxconn is the registered trade name for Hon-Hai Precision Industry a global leader in providing mechanical solutions. It is Taiwan's largest manufacturer of connectors for use in PCs , and a leading global manufacturer of connectors and cable assemblies. Orrick represents Foxconn in a patent infringement suit in the Northern District of California involving seven patents.
• Gemstar. In Gemstar-StarSight v. United Video, a patent case, Orrick defended actions brought by United Video against Gemstar regarding on-screen TV guides and a VCR programmer. As a direct result of this case, the business prospects and stock valuations changed such that Gemstar acquired TV Guide On-line.
• General Surgical Innovations and Tyco International Ltd. In Williams v. General Surgical Innovations Inc., Orrick lawyers represented General Surgical Innovations and Tyco International in a patent suit, which if valid, would have covered nearly the entire product line of Tyco subsidiary General Surgical Innovations (GSI). The potential exposure to Tyco was many millions of dollars. The patent was directed to a device used to create space within a patient's body to facilitate endoscopic surgery, e.g., for hernia repair, removal of femoral artery for use in by-pass surgery, etc. The devices substantially decrease patient trauma and are widely used by doctors. Orrick obtained summary judgment of invalidity in district court which was affirmed by the Federal Circuit. In other recent litigation for GSI, Orrick lawyers successfully enforced GSI patents on its device against Guidant Corp. and successfully defended GSI in a patent infringement suit brought by Guidant as well as prevailed in an interference with Guidant, establishing GSI as having the dominant patent position in this area. Guidant then sold its relevant business to Tyco. Orrick lawyers also represented General Surgical Innovations in several patent infringement cases against Origin Medsystems, Inc. regarding patents for medical devices and methods for a surgical procedure, including jury trial and verdict for General Surgical Innovations, appeals to the Federal Circuit, and subsequent favorable settlement of all matters.
• Gracenote, Inc. Orrick represents Gracenote, Inc. in connection with the patents, trademarks and copyrights of this worldwide leader in information systems over the Internet for digital music and media.
• Harris Corp. In Stanford v. Harris, an Orrick team defended Harris in this case, where the plaintiff asserted a claim of patent infringement against Harris' IGBT power transistors. This case determined the inventor of this class of transistors. Harris filed for reexamination, and the case has since settled on confidential terms.
• HearMe. Orrick represented HearMe in asserting its voice over the Internet (VOIP) patents against Lipstream Corporation. After obtaining a favorable ruling construing the patents, the matter settled.
• Hoechst Marion Roussel. In actions before the International Trade Commission and various district courts, an Orrick lawyer was part of a team that asserted that methods of producing diltiazen (Cardizem® CD) used by various defendants infringed the client's process patent. The lengthy trial before ITC involved examination and cross-examination of witnesses who spoke Japanese, Finnish, Italian, German and Hebrew. The case is particularly significant in that it greatly extended the jurisdiction of the ITC by expanding the definition of "domestic industry."
• Hoffmann-La Roche. Orrick attorneys have represented numerous Roche companies in many patent cases, particularly in the area of biotechnology. They have litigated patents from Roche's extensive interferon-related and PCR-related patent portfolios. In Hoffmann-La Roche v. Promega, for example, Orrick attorneys are representing Roche in a patent action involving Roche's Nobel-prize winning PCR technology. Orrick attorneys also successfully defended three Roche companies against Housey Pharmaceuticals' accusations of infringement of its cell-based assay patents in Housey Pharmaceuticals Inc. v. AstraZeneca UK. Ltd. et al. After a decisive Markman victory, Housey conceded invalidity and non-infringement of its patents. In the lawsuit, filed in 2001, Housey Pharmaceuticals asserted that the Roche affiliates, as well as other leading pharmaceutical companies (including AstraZeneca, Aventis, Bristol-Myers-Squibb, Merck and Wyeth), had infringed four patents directed to cell-based methods used to characterize compounds that influence cellular functions. In ICN Pharmaceuticals et al v. Hoffmann-La Roche Inc., Orrick successfully settled this patent infringement case for Hoffman-La Roche. The district court subsequently held that the patents-in-suit were not infringed.
• Hycor Biomedical. Orrick prosecuted a family of patents in the medical diagnostics field on behalf of Hycor Biomedical, then represented Hycor in a patent infringement suit against its competitors. The cases settled on very favorable terms for Hycor.
• Indivos Corporation. In Indivos Corporation v. Biometric Access Corporation, Orrick represented Indivos Corporation in litigation to enforce their patents on systems and methods for completing financial transactions featuring the use of biometrics to identify the payer. This case was settled pursuant to an agreement between the parties.
• Infineon Technologies AG and Infineon Technologies North America Corp. Orrick represented the Infineon companies in a trade secret, patent, and copyright action in the United States District Court, Central District of California involving the Infineon/DirecTV smart card technology. DirecTV sued NDS Limited (a News Corp. affiliate) for copyright infringement and other claims relating to NDS' alleged acts to facilitate the piracy of the smart card code. NDS countersued the Infineon companies and DirecTV alleging trade secret, copyright, and other IP violations. In addition to the U.S. action, the Orrick team also worked with Infineon's German litigation counsel to defend a parallel action filed against Infineon AG in Munich. The Orrick team also secured the voluntary dismissal of Infineon Technologies North America Corp. from the U.S. action (Infineon Technologies AG was never properly served). The balance of the matter settled, including the proceedings in Germany, after News Corp. purchased a significant portion of Hughes Electronics, the parent of DirecTV.
• Inktomi Corporation, a Yahoo! Company. Orrick has represented Yahoo! in a number of patent suits related to software used for "proxy caching" technology and online tools.
  • Network Caching Technology, L.L.C. v. Novell, et al. Orrick successfully defended Yahoo!'s wholly-owned subsidiary Inktomi Corp. in Network Caching Technology, L.L.C. v. Novell, et al, a multi-defendant/multiple-patent infringement case directed at Inktomi's "web caching" services. In the case, Inktomi obtained favorable rulings on a variety of issues, including interpretations of both the plaintiff's "Rule 11" pre-filing obligations, and the adequacy of the plaintiff's infringement contentions under the unique Patent Local Rules adopted in the Northern District of California.
  • Teknowledge Corp. v. Akamai Technologies, Inc., et al. Orrick defended both Inktomi Corp. and Yahoo! in Teknowledge Corp. v. Akamai Technologies, Inc., et al., a multi-defendant patent infringement case that relates both to Inktomi's web caching technology and its "content delivery suite" software products. The case brought against Yahoo! relates to claims associated with Yahoo! Alerts an "update" system sent across the Internet via proxy caches. The case settled shortly after the Orrick team obtained key summary judgment rulings in favor of Yahoo! holding that two of the claims at issue were non-infringed, and one was invalid as non-enabled.
• Intermedics, Inc. Orrick lawyers represented this maker of cardiac pacemakers and defibrillators in several patent infringement actions against Medtronic, Inc., CPI, and Ventritex, Inc.
• Key Tronic Corp. Orrick filed a declaratory judgment action on behalf of Key Tronic, after they were noticed with infringement by Burroughs (now Unisys Corp.) on a patent relating to electronic keyboards. At the time, Key Tronic was the largest independent producer of keyboards in the world. Essentially, all of their production was alleged to be infringing. This may be the only case affirmed by the Federal Circuit where the patent was held invalid over the identical art considered by the Patent Office Examiner. Key Tronic Corporation v. Burroughs Corporation.
• Logitech Corporation. Orrick has represented Logitech in several patent cases involving computer mouse design and technology, including ergonomic, mechanical, and electrical aspects of different control input devices. Orrick represents Logitech in Chan v. Logitech, et al., a software patent case involving the use of hyperlinks on CD-ROMs.
• Marion Merrill Dow. In Marion Merrill Dow v. Geneva and Marion Merrill Dow v. Par Pharmaceuticals, actions instituted under the Hatch-Waxman Act, an Orrick lawyer asserted infringement of the client's patent covering a metabolite of the antihistamine terfenadine (Seldane®). In the course of both litigations, the Orrick lawyer overcame various motions for summary judgment and invalidity and/or non-infringement and was also involved in related foreign litigations in Germany and England.
• Maytag. In Tridelta Industries and Pitco Frialator v. Frymaster, Orrick served as trial counsel representing Tridelta Industries and Pitco Frialator (a Maytag business). Orrick represented the plaintiffs in a declaratory judgment action, a "bet-the-company" case for Tridelta, concerning five patents on hardware and software for computer controls for deep fat fryers. This complex case involved some 45 witness depositions and over 20 days of expert deposition testimony. The case was favorably settled three days before trial following a Markman ruling on claim construction, which caused the defendant patent owner to concede it could not prevail.
• Megadyne Medical Products. Orrick represented Megadyne in Megadyne Medical Products, Inc. v. Aspen Laboratories, Inc., a jury patent trial against Aspen Laboratories, a subsidiary of ConMed Corporation. The patent related to Teflon-coated electrosurgical blades. The jury returned a verdict in favor of Megadyne finding the patent both valid and infringed. In addition, the jury found a reasonable royalty in excess of 70% of gross sales price. Those damages were doubled in view of a further jury finding that the infringement was willful. The Federal Circuit affirmed the jury's verdict.
• Microsoft Corp. Orrick represents Microsoft in a number of patent and antitrust matters. In InterTrust Technologies v. Microsoft Corp., Orrick successfully represented Microsoft in this complex matter involving over eleven patents claiming to provide Digital Rights Management Software. Described by Forbes Magazine as one of the most complex patent cases in U.S. history, this matter lasted over three years. In addition, an Orrick IP team resoundingly defeated a motion for a preliminary injunction brought against clients Microsoft Corp. and Connectix Corp. in the software patent infringement case VMWare v. Microsoft Corp., which is pending in the Northern District of California. Orrick lawyers won a major victory on July 18, as the court denied VMware's motion in its entirety. In addition, Orrick defended Microsoft in Reiffin v. Microsoft Corp. against infringement claims relating to multiple software patents for Windows 98 and Windows 2000 operating systems involving real-time source code editing and compiling, specifically multi-threading.
• Mitsubishi Electric Corp. Orrick lawyers served as counsel for Mitsubishi in an International Trade Commission action involving patents on semiconductor memory chips.
• Nanya Technology Corp. (NTC). NTC is the high-technology arm of the Formosa Plastic Group, engaging in the research, design, manufacture and sales of semiconductors. NTC is one of the few semiconductor firms in Taiwan dedicated to the development of DRAM technology. We currently represent NTC in a complex patent case involving more than seven patents relating to design features of DRAM semiconductors. In addition, Orrick assists NTC in patent portfolio review, strategic patent analysis, licensing matters and litigation avoidance.
• NCR Corp. Orrick represents NCR Corp. in a number of patent infringement matters. Orrick serves as trial counsel for defendant NCR in Monarch v. NCR, a patent and trademark infringement suit involving three patents directed to bar code printing equipment. The case was favorably settled for NCR following a mini-trial. In Hemstreet v. NCR, Lundy and Banctec, Orrick was trial counsel for defendant NCR in a patent infringement suit involving magnetic ink (MICR) and optical (OCR) character recognition equipment. The case was favorably settled for NCR following extensive fact and expert discovery. Orrick represented the plaintiff NCR in NCR v. Microbilt, a patent infringement suit involving signature capture devices. The case was favorably settled for NCR before the close of fact discovery.
• Nikken Corp. In an action involving magnetic array patents, Orrick represented both the manufacturer and seller of widely utilized therapeutic devices against allegations of patent infringement and unfair competition.
• Optical Recording Corp. In Optical Recording Corp. v. Time Warner, Orrick was trial counsel for plaintiff ORC in a patent infringement suit which involved multiple patents directed to CD and CD-ROM recording and playback equipment. Orrick successfully defended ORC against numerous summary judgment motions and obtained a $30 million verdict and a finding of willful infringement after a five-week jury trial.
• Oratec Interventions, Inc. Orrick represented this medical device manufacturing company in a patent suit involving minimally invasive arthroscopic and spinal treatment modalities utilizing electrothermal technology. The case, Oractec Interventions, Inc. v. Radionics, an infringement case regarding the company's two patents on spine catheters, is now resolved.
• Planet U, Inc. In Coolsavings.com, Inc. v. Planet U, Inc., Orrick defended Planet U against claims that its Internet coupon distribution system infringed a patent.
• Portola Packaging. In the five year case of Portola Packaging v. Scholle Corp., an Orrick lawyer successfully represented Portola Packaging in a patent dispute involving a preliminary injunction, jury trial, bench trial, and appeal to the C.A.F.C.
• Priceline.com. An Orrick lawyer was a member of a the team representing Priceline.com in its action for patent infringement against Microsoft. The patents-in-suit involved a business method for auctioning airline tickets through the Internet.
• Quantum Corp. In Papst Licensing Ltd. v. Quantum Corporation (pending), Orrick is currently defending Quantum and Maxtor Corporation in a multi-district patent action, where the plaintiff has accused Quantum of infringing 26 patents related to hard disk drive motor technology. An Orrick lawyer has been lead counsel to Quantum Corporation in numerous intellectual property disputes over 15 years, including its first infringement dispute involving data masked servo sector technology. In Quantum Corp. v. Western Digital Corp., Quantum Corp. v. NEC, and Quantum Corp. v. Computer Memories Inc., an Orrick lawyer obtained summary judgments of patent infringement and damage awards that totaled $13 million.
• Safety Syringes, Inc. Orrick represents Safety Syringes in a patent infringement case to enforce Safety Syringes' medical device patents. An Orrick IP litigation team effectively enforced the patents of an innovative smaller company against two corporate giants when it successfully completed two related patent infringement actions for client Safety Syringes, Inc., located in Carlsbad, California. Both patent in suits involved a safety device for syringes which shields the needle after the syringe has been used. Each of the cases settled separately in 2004 with both defendants taking licenses on terms that were very satisfactory to our client. The cases were brought in the Southern District of California, in San Diego.
• Seagate Technology LLC. Orrick is defending Seagate in a lawsuit for patent infringement and trade secret misappropriation regarding control systems for computer hard disk drives.
• Seeq Technology. In Level One Communications v. Seeq Technology, Orrick defended Seeq Technology in a patent infringement action involving Ethernet and networking communication protocols. The case involved coaxial and 10BaseT PHY layer Ethernet LAN technology, including all IEEE 802.3 standards up to a gigabit Ethernet.
• SeneGence International. Orrick lawyers defended SeneGence, a cosmetics distributor, and other co-defendants, against charges of patent infringement, trade secret misappropriation, and other claims. After preparing and filing summary judgment motions for patent non-infringement, the case was favorably settled. SeneGence asserted several counterclaims, including trademark infringement, cybersquatting, defamation, and others. Orrick lawyers obtained a monetary sanction on behalf of SeneGence against the plaintiff for its misconduct during discovery in the case, obtained a monetary settlement of the SeneGence's counterclaims, and settled the remainder of the case on extremely favorable terms to SeneGence and its co-defendants.
• Sensormedics, Inc. In Medgraphics Corp. v. Sensormedics, Inc., Orrick defended Sensormedics in an action in Minnesota for patent infringement, antitrust activities, and unfair competition regarding a patent for cardiovascular stress-testing machines. The case settled just prior to trial.
• Spectra-Physics Scanning Systems, Inc. and PSC, Inc. An Orrick lawyer was trial counsel for several patent infringement actions involving bar code scanner technology against AT&T GIS, Symbol Technology, Inc. and Metrologic.
• Terry Bicycles. Orrick represented Terry Bicycles in a design patent infringement action involving bicycle seats. The case settled on favorable terms to Terry Bicycles.
• Universal Instruments Corp. An Orrick team successfully defended Universal Instruments Corporation in a major patent infringement jury trial held in the Southern District of Texas. In Aguayo and Tran v. Universal Instruments Corporation, plaintiffs accused Universal of infringing a patent relating to automated assembly machines for the manufacture of electronic circuit boards. After a three week jury trial in Texas, the Orrick team received a complete defense victory, obtaining judgments of non-infringement and patent invalidity.
• Vascular Solutions, Inc. In Datascope Corp. v. Vascular Solutions, Inc., Orrick defended Vascular Solutions in an infringement action in Minnesota regarding a patent for a vascular wound sealing device. The case was dismissed as premature following grant of defendant's motion for summary judgment.
• Vidamed Inc. In Vidamed, Inc. v. ProSurg, Inc., Orrick represented Vidamed in its litigation with ProSurg, Inc. involving Vidamed's patents to methods for treating benign prostate hyperplasia (BPH). The Vidamed team successfully sought and obtained a ruling of summary judgment of infringement. The case settled on favorable terms to Vidamed. Orrick has also successfully represented Vidamed in a patent interference before the Board of Patent Appeals and Interferences at the United States Patent and Trademark Office.
• Xerox Corp. In Colorocs v. Xerox, Orrick represented Xerox in a patent infringement case involving color copier technology. The plaintiff claimed infringement of several patents purporting to cover a process for making color copies. Before this action, the patents had never been litigated. The case was litigated in federal court in the U.S. District Court for the Southern District of New York for almost a year before it settled.
• Xircom, Inc. Orrick represented Xircom in patent infringement actions in California and Utah regarding each parties' PC Card patents.
• Zoomify, Inc. Orrick defended Zoomify in a patent infringement action regarding a software system for on-line interactive imaging in MGI Software Corp. v. Zoomify, Inc. The case was settled prior to trial.