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Representative Cases and Technologies

REPRESENTATIVE CASES and TECHNOLOGIES  (clients in italics)

  • Neuroptics, Inc. v. Brightlamp, Inc. (S.D.Ind. 2019).  Patent infringement action relating to pupilometers.  Won Motion to Dismiss, affirmed on appeal to the Court of Appeals for the Federal Circuit.  (Brightlamp was formally represented by the Indiana University Maurer School of Law IP Clinic.  I was counsel of record, but the case was researched and prepared, under my direction, by students at Indiana University and the University of Arizona James E. Rogers College of Law).
  • The Wonderful Company LLC v. Earthwonderful LLC (TTAB, 2017).  Trademark opposition over the mark PALMWONDERFUL.  Won dismissal of the opposition based upon trial briefs and TTAB record. (Earthwonderful was formally represented by the University of Arizona James E Rogers College of Law IP Clinic.  I was counsel of record, but the case was researched and prepared, under my direction, by students at the University of Arizona).
  • In the Matter of Certain Vision-Based Driver Assistance System Camera, Components Thereof, and Products Containing Same; TRW Automotive US, Respondent (U.S. International Trade Commission, 2015); unfair trade practices involving claims of patent infringement relating to vehicle vision systems, won in ITC trial and before full Commission.
  • TRW Automotive US v. Magna Electronics (W.D.Mi. 2013). Patent infringement action relating to vehicle vision systems; settled.
  • Arvegenix LLC v. Pennycress Energy Co (C.D.Ill. 2013). Tortious interference, unfair competition, deceptive business practices case relating to biofuel technology and, in particular, field pennycress; settled.
  • Scholle Corp. v. Rapak (N.D.Ill.) 2013). Patent infringement action relating to collapsible bags and associated spout, settled after obtaining/winning preliminary injunction.
  • Intellectual Ventures v. Fifth Third Bank (C.D. Ohio 2013). Patent infringement action under five patents relating to software and/or Internet methods of operation; obtained dismissal with prejudice on all patents.
  • Traffic Information v. Fifth Third Bank (E.D.Tx. 2013). Patent infringement action relating to software and/or Internet methods of operation; settled.
  • Unified Messaging Solutions v. Fifth Third Bank (N.D.Ill. 2013). Patent infringement action relating to software and/or Internet methods of operation; settled.
  • Magna Electronics v. TRW Automotive US (W.D.Mi. 2013). Patent infringement action relating to vehicle vision systems; settled.
  • Magna Electronics v. TRW Automotive US (W.D.Mi. 2012). Patent infringement action relating to vehicle vision systems; settled.
  • Tellabs v. Fujitsu (N.D.Ill.) – Mediator; obtained settlement
  • Phoenix v. Fifth Third Bank (E.D.Tx. 2012). Patent infringement action relating to software and/or Internet methods of operation; settled.
  • Scholle Corp. v. Liqui-Box (N.D.Ill. 2012). Patent infringement action relating to collapsible bags; settled.
  • Liqui-Box v. Scholle Corp. (D.Del. 2012). Won dismissal for lack of personal jurisdiction.
  • Stambler v. Fifth Third Bank (E.D.Tx. 2012). Patent infringement action relating to software and/or Internet methods of operation; settled.
  • TuitionFund v. Fifth Third Bank (M.D.Tenn. 2011). Patent infringement action relating to software and/or Internet methods of operation; settled.
  • Data Treasury Corp. v. Fifth Third Bancorp et. al. (E.D.Tx. 2011). Patent infringement action relating to image-based check processing; settled.
  • Body Science LLC v. Boston Scientific Corp, Philips Electronic N Amer., et. al. (N.D.Ill. 2011). Patent infringement action relating to wireless medical monitors, settled.
  • Linde LLC v. Cryogenic Systems Equipment, Inc. (N.D.Ill. 2010). Patent infringement action relating to refrigeration conveyor belt; settled.
  • GeoTag, Inc. v. Fifth Third Bancorp, et. al. (E.D.Tx. 2010). Patent infringement action relating to online systems for associating identified locations with geographic areas; settled.
  • Elite Outdoors LLC v. Strother Archery, Inc. et al. (W.D. N.Y. 2009), misappropriation of trade secrets action relating to archery bows, settled.
  • Furtsperson, Inc. v. Iscopiea Software, Inc. (N.D. Ill. 2009), misappropriation of trade secrets action relating to software platform for interview testing processes; settled after filing counterclaims seeking preliminary injunction
  • Restricted Spending Solutions, LLC v. Fifth Third Bancorp, et al (N.D.Ill. 2009), patent infringement action relating to credit card systems and method of processing same; settled.
  • TSERA, Inc. v. Bang & Olufsen America, Inc. et al (E.D. Tx. 2009), patent infringement action relating to touchpad controls for electronic systems; settled.
  • Scholle Corp. v. Rapak Corp. (N.D. Ill. 2009), patent infringement action relating to plastic bags; settled.
  • Bemis Manufacturing Co. v. Centoco Plastics Ltd. (E.D. Wis. 2008), patent infringement action relating to manufacturing processes; settled.
  • In the Matter of Certain Silicon Microphone Packages and Products Containing Same, Knowles Electronics LLC, Complainant (U.S. International Trade Commission, 2008), unfair trade practices involving patent infringement relating to silicon microphones used in cell phones, won in ITC trial, affirmed by full Commission.
  • FM Industries, Inc. v. Citicorp Credit Services, Inc. et al. (N.D.Ill. 2007), copyright infringement action relating to software processing.
  • ADC Communications, Inc. v. Panduit Corp. (D.MN, 2007), patent infringement action relating to fiber and electronic cable routing products.
  • Phoenix IP, LLC v. Square D Company, et al. (E.D. Tx. 2007), patent infringement action relating to software used in power meters.
  • Meyer Corp. v. Bodum, Inc. (N.D. Ill. 2006); patent infringement action relating to milk frothers.
  • Square D Company v. E.I. Electronics, Inc. (N.D. Ill. 2006), patent infringement action involving 15 patents relating to power meters; settled after favorable Markman ruling.
  • Knowles Electronics, LLC v. American Audio Components, et al. (N.D. Ill. 2006), misappropriation of trade secrets action relating to silicon MEMS microphones for cell phones; settled.
  • Textron Innovations Inc. v. Fairplay Electric Cars (S.D. Georgia 2006), design patent infringement action relating to golf carts; settled.
  • Calphalon Corp. v. Meyer Corp. (E.D. Calif 2005), design patent infringement action relating to cookware, won jury trial.
  • Motorola, Inc. and GMP/Wireless Medicine, Inc. v. Nonin Medical, Inc. (N.D. Ill. 2004), patent infringement action relating to wireless medical monitors; settled.
  • Optivus Technology, Inc. and Loma Linda University v. Ion Beam Applications S.A. (C.D. Calif. 2004), patent infringement action relating to proton beam therapy systems.
  • Motorola, Inc. and GMP/Wireless Medicine, Inc. v. Welch-Allyn Protocol, Inc. (N.D. Ill. 2004), patent infringement action relating to wireless medical monitors; settled.
  • Manitowoc Cranes, Inc. v. Liebherr-America, Inc. (E.D. Wis., 2003); patent infringement action relating to a control and hydraulic system for liftcranes; settled.
  • A.L. Hansen Manufacturing Co. v. Bauer Products, Inc. (N.D.Ill. 2003); patent infringement action relating to support arm for lids over pick-up truck beds; settled.
  • Optobionics v. Peyman (N.D. Ill. 2002); misappropriation of trade secrets, breach of contract, Lanham Act violation relating to artificial retina devises; settled.
  • Peyman v. Optobionics (E.D. La. 2002); declaratory judgment breach of contract action relating to artificial retina devices; won dismissal of case on motion for abuse of Declaratory Judgment Act and in favor of later filed Illinois action.
  • Technical Concepts v. Zurn (W.D.Pa. 2002); patent infringement action relating to automatic flush valve assemblies; settled.
  • Technical Concepts v. Zurn (W.D.Pa. 2002); declaratory judgment action relating to automatic flush valve assemblies, and corresponding patent infringement action, Zurn v. Technical Concepts (W.D.Pa. 2002); settled.
  • Zurn v. Sloan Valve Company (W.D.Pa. 2002); patent infringement action relating to automatic flush valve assemblies; settled.
  • Borg-Warner v. New Venture Gear (N.D. Ill., 2000); patent infringement action relating to 4WD automobile transfer cases; settled.
  • Multi-Tech v. VocalTec Communications Inc. (D. Minn., 2000): patent infringement action relating to voice over Internet technology; settled.
  • Prototype Equipment v. Fallas Automation (N.D. Ill., 2000); patent infringement action relating to equipment for positioning and placing articles in containers; won temporary restraining order and preliminary injunction leading to settlement.
  • Panduit v. Band-It Idex (N.D. Ill., 2000; patent infringement action relating to bundling straps; won preliminary injunction, affirmed on appeal; permanent injunction obtained on summary judgment.
  • Coca-Cola v. Liqui-Box (N.D. Georgia, 1999); patent infringement action relating to collapsible containers; obtained permanent injunction after arbitrator’s decision of patent valid and infringed.
  • Varis Corporation v. Scitex Digital Printing, Inc., (S.D. Ohio, 1999): patent infringement action relating to high speed printing equipment and processing; settled.
  • Champion International Corporation v. Honeywell-Measurex Corporation (mediation, 1999): mediator for patent infringement action relating to monitoring systems for continuous manufacturing processes
  • FF Acquisition Corp. v. Icon Fitness Corp. (N.D. Miss. 1999): patent infringement and antitrust action relating to treadmills; settled.
  • Smiths Industries Aerospace & Defense Systems Inc. v. Simmonds Precision Products, Inc. (S.D. Calif., 1999): declaratory judgment action for misappropriation of trade secrets, breach of contract, copyright infringement relating to Health and Usage Management Systems (HUMS) for helicopters; settled.
  • Lund Industries, Incorporated v. Auto Ventshade Company (D. Minn., 1998): patent infringement action relating to vehicle shield; settled.
  • S.C. Johnson Commercial Markets, Inc. v. The B.F. Goodrich Company (W.D. Wis., 1998): patent infringement action relating to graphic arts polymer coatings; settled
  • Simmonds Precision Products v. Global Associates, Ltd. (D. Md., 1998): misappropriation of trade secrets, breach of contract, copyright infringement relating to Health and Usage Management Systems (HUMS) for helicopters; settled.
  • Circadian Pharmaceuticals (Australia) Pty Limited v. Eli Lilly and Company (The Supreme Court of Victoria at Melbourne, 1997): expert witness on United States patent practices.
  • Autonomous Technology Corp. v. VISX, Inc. et al. (D. Del., 1996): patent declaratory judgment action relating to excimer laser system and processes for Photorefraction keratectomy (PRK) eye surgery; settled.
  • Discovision Associates v. Disc Manufacturing Inc., and DLC Manufacturing, Inc., v. Pioneer Electronic Corp. et al. (D. Del., 1995): consolidated cases of patent infringement and antitrust violations relating to compact discs and CD encoding and mastering system; settled.
  • Square D Company v. Power Measurement Ltd. (D. Del., 1995): patent infringement action relating to power monitors, with antitrust and unfair competition counterclaims; settled.
  • Viskase Corp. v. American National Can Company (N.D. Ill., 1993): patent infringement action relating to heat shrinkable plastic films; prepared and presented damages case, winning record setting $102.3 million jury verdict, increased to $164.9 million judgment including enhanced damages and prejudgment interest.
  • Carabillo v. Norm Thompson Outfitters  [Hartmarx Corp.] (D. Oregon, 1993): patent infringement action relating to trouser construction; case won/dismissed on summary judgment.
  • Herman Miller, Inc. v. Teknion (N.D. Ill., 1993): patent infringement action relating to office wall panels; settled.
  • Facility Management Systems v. DataFlo (D. Neb., 1993): patent infringement action relating to security monitoring devices; settled.
  • Wolverine v. NIKE  (W.D. Mich., 1993): patent infringement action relating to shoe design; case won/dismissed on summary judgment.
  • Haworth v. Herman Miller, Inc. (W.D.  Mich., 1992): patent infringement action relating to office wall panels; settled.
  • BFGoodrich Flightsystems v. Insight Instruments (S.D. Ohio, 1992): patent infringement action relating to stormscope radar devices; settled.
  • Laser Pacific v. Encor Video (C.D. Calif., 1991): patent infringement action, with antitrust, RICO, Lanham Act counter-claims; settled.
  • Kelsey-Hayes v. Motor Wheel Corp. (W.D. Mich., 1990): patent declaratory judgment action relating to steel wheel construction; settled.
  • W. R. Grace & Company v. Viskase Corp. (N.D. Ill., 1990): patent infringement action relating to patched bags; settled.
  • ALCOA v. Reynolds Metals Co. (N.D. Ill., 1988): patent infringement action relating to aluminum formulations; patent held valid and infringed after jury trial.
  • Thomas & Betts v. AMP  (D. N.J., 1988): patent infringement action relating to electrical connectors; settled.
  • Atari v. Taito (N.D.  Ill., 1987): copyright infringement action; settled.
  • Kasper v. I-Tech (N.D.  Ill., 1987): patent infringement action relating to hockey helmets; case won/dismissed after motion for lack of personal jurisdiction. 
  • Rolls-Royce, Renishaw v. Daishowa Seiki Co. (E.D. Mich., 1987): patent infringement action relating to machine sensors; settled.
  • Kaken v. Eli Lilly (S.D. Ind., 1986): breach of contract action; settled.
  • Williams & Humbert v. Ruiz Mateos (D. D.C., 1985): trademark valuation and ownership; won at trial.
  • Baxter v. Abbott Laboratories  (N.D. Ill., 1985): patent infringement action relating to peritoneal dialysis procedure; settled.
  • M.I.T. v. Abbott Laboratories (D. Mass., 1983): patent infringement action relating to amino acid feeding procedures; settled.
  • Information International Inc. v. Compugraphic (C.D. Calif., 1983): patent infringement action relating to computerized photo-typesetters; settled.
  • Moore v. Stewart (W.D. Ark., 1982): design patent infringement action relating to toy train whistle; won at trial with finding of patent validity and infringement.
  • Precision-Cosmet v. Surgidev (D. Minn., 1982): patent infringement action relating to intra-ocular lenses; settled.
  • Rockwell v. Eltra (C.D. Calif., 1981): patent infringement action relating to computerized photo-typesetters; settled.
  • W. R. Grace & Co. v. Union Carbide Corp. (N.D. Ill., 1978): patent infringement action relating to layered, oriented polymer bags; settled.
  • Schumann v. IPCO (Ill. Circuit Court, 1978): trade secrets; case won/dismissed on summary judgment, affirmed on appeal.
  • EMI v. Ohio Nuclear (N.D. Ohio, 1976): patent infringement action relating to CAT scanners (EMI’s inventor and Ohio Nuclear’s expert witness later shared Nobel prize in Medicine); settled.