Patent Litigation

Overview

The complexity of today’s technology systems and the high value of intellectual property make industry disputes inevitable. Successful patent litigation requires broad intellectual resources combined with deep technological knowledge and an understanding of clients’ businesses.

Our more than 60 dedicated Patent Litigation lawyers work with our clients as advisors, helping maximize the value of patent portfolios through licensing and enforcement efforts carefully designed to monetize our clients’ assets. We further work with our clients to strategically anticipate and reduce infringement risks to product lines and business activities, analyze patent landscapes, provide formal opinions of counsel, and, if necessary, defend our clients in patent litigation cases throughout the country. We offer skilled and tested patent litigation advocacy in courts across the United States, in proceedings before the International Trade Commission, and in private mediations or arbitrations. In addition, we have extensive experience in Abbreviated New Drug Applications (ANDA). 
When litigation becomes unavoidable, our time-tested winning formula joins together experienced patent litigators, accomplished jury-trial lawyers, and registered patent attorneys well-versed in technology and science. To form cost-effective legal teams, we draw from our significant bench depth located across the country, from the East Coast, through the Midwest, to the West Coast.

The Patent Litigation team handles actions in courts across the United States, from Delaware to Texas, from Virginia to California, and all places in between. Moreover, our experience has also benefitted clients in the following venues:

  • Inter Partes Review, Post-Grant Review, and Covered Business Method Proceedings in the U.S. Patent and Trademark Office. Spurred by the recent America Invents Act, patent litigation is now increasingly shifting to the U.S. Patent and Trademark Office through proceedings, such as inter partes, post-grant, and covered business method reviews. These new adversarial procedures for invalidating patents differ significantly from the prior inter partes and ex parte reexamination proceedings and include characteristics of a district court bench trial on the issue of validity, albeit before the Patent Office. The new proceedings feature discovery between the parties and culminate in a “trial” before the newly formed Patent Trial and Appeal Board (PTAB). We are widely recognized for our experience and skill in navigating the Patent Office, where members of our prosecution and litigation teams have previously served as patent examiners, including a supervising patent attorney and a member of the Board of Patent Appeals and Interferences.
  • Proceedings before the International Trade Commission (ITC). Patent holders frequently employ ITC actions to prevent product importation by competitors. At BakerHostetler, we bring our ITC experience to bear, whether representing clients who seek relief against infringing competitors or clients who are accused of infringement. We also frequently represent clients in ITC proceedings brought by patent assertion entities. 
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Electrical

We help some of the most innovative companies in the world protect their intellectual property in virtually all areas of electrical engineering, including telecommunications, power distribution, consumer electronic products, computer forensic devices, industrial processes, thermal technologies, e-commerce, POS, and internet systems.

Our firm has many attorneys educated and experienced in electrical engineering, systems engineering, physics, and other science and technology fields. In addition, many have previously worked as in-house counsel for innovative companies such as RCA, IBM, Canon, Motorola, BellSouth, AT&T Mobility, Luxottica, and Microsoft, to name a few. This unique business savvy experience allows us to provide electrical engineering services by fitting the right attorney to the task.

We provide a broad array of services to clients in the electrical engineering field. We counsel clients on strategic use of intellectual property. We also represent our clients in patent infringement actions that are needed to generate licensing revenue, protect intellectual property assets, and protect market share.

Mechanical

BakerHostetler works with mechanical engineering clients to develop intellectual property strategies and relationships that survive the test of time. Our experience covers a broad range of products including metal beverage cans, paper packaging, plastic bottles, balloon angioplasty catheters, computer disk drives, computer connectors, single-use cameras, powered wheelchairs, gas turbines, artificial hearts, air pollution control, semiconductor processing, medical testing equipment, medical imaging equipment, dental technology, water treatment, ship building, and nuclear power.

Our substantial industry experience makes us well-versed in the problems facing clients competing in mechanical engineering markets in the United States and worldwide. Our lawyers are active in the American Society of Mechanical Engineers and various nanotechnology groups in addition to legal organizations.

Computer Software

BakerHostetler protects and enforces intellectual property rights in the field of computer science. We represent clients in matters involving a wide-range of computing technologies, including operating systems, database systems, compilers, computer graphics, computer security, cryptography, virtual machines, microprocessor design, storage media, network architecture, web servers, digital rights management, tamper-resistant software and hardware, and more.

Many of our attorneys have advanced degrees in computer science and worked as engineers and software developers. Our attorneys have served as in-house counsel for Microsoft, Unisys, and Motorola, and have first-hand experience building portfolios in computer-related intellectual property. The breadth of our experience and the depth of our knowledge allow us to comprehend the nuances of any technology quickly and thoroughly. We also frequently enforce and defends intellectual property rights through litigation.

Select Experience

Electrical
  • Represented clients in Internet applications case (Civix DDI LLC v. Motorola Inc, et. Al, (N.D. Ill.))
  • Represented client in case regarding electrical instruments (IPCO, LLC v. Elster Electricity LLC, (N.D. Georgia))
  • Represented client in case regarding electrical instrumentation (ABB Automation Inc. v. Schlumberger Resource Management Services, Inc. (D. Del.))
  • Represented client in case regarding speech coding (AT&T Corporation v. Microsoft Corporation (S.D.N.Y.))
Mechanical
  • Bayer Healthcare LLC v. Abbott Labs, Inc. (D. Del.)
  • Anheuser Bush v. Crown Cork & Seal Co., Inc. (Wis.)
  • LifeScan, Inc. v. Home Diagnostics, Inc. (N.D. Cal.)
  • DePuy Mitek, Inc. v. Arthrex, Inc. (D. Mass.)
Computer Software
  • Representing Microsoft in a patent infringement action involving voice encoder-decoder products (AT&T, Inc. v. Microsoft Corp. (S.D. N.Y.))
  • Representing Microsoft Corp., et al. in a patent infringement case involving Internet-based mapping and location systems and methods (Civix-DDI, LLC v. Microsoft Corp. et al. (D. Colo.))
  • Representing Elster Electricity in patent infringement action involving wireless mesh networking (IPCO v. Elster Electricity LLC, (N.D. Ga.))
  • Successfully represented Guidance Software in an International Trade Commission (ITC) trial to determine whether Guidance Software’s manufacture and sale of certain computer forensic devices, used by such federal agencies as the CIA, Department of Homeland Security, Department of Defense, and Federal Bureau of Investigations, violated section 337 of the Tariff Act of 1930 due to the alleged infringement of two patents. Chief Administrative Law Judge Bullock entered an order in favor of Guidance on both patents determining that no 337 violation had occurred.
  • Representing Visual Technology Applications in a patent infringement case involving computer-based vision testing and therapy software (Visual Technology Applications, Inc. v. Gemstone Educational Management, LLC. (E.D. Pa.))
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Professionals

Name Title Office Email
Associate Chicago
Partner Washington, D.C.
Of Counsel Los Angeles
Partner Washington, D.C.
Partner Philadelphia
Associate Denver
Of Counsel Washington, D.C.
Counsel Washington, D.C.
Staff Attorney Washington, D.C.
Partner Atlanta
Partner Washington, D.C.
Of Counsel Washington, D.C.
Of Counsel Philadelphia
Associate Columbus
Partner Costa Mesa
Associate Atlanta
Counsel New York
Partner Chicago
Partner Philadelphia
Partner Seattle
Associate Atlanta
Associate Philadelphia
Partner Washington, D.C.
Associate Atlanta
Partner Philadelphia
Partner Washington, D.C.
Associate Philadelphia
Partner Washington, D.C.
Partner New York
Partner New York
Partner Cincinnati
Partner Cleveland
Partner Chicago
Associate Philadelphia
Partner Philadelphia
Partner Chicago
Partner Philadelphia
Counsel New York
Partner Philadelphia
Partner Cincinnati
Associate Philadelphia
Partner Cleveland
Counsel Cincinnati
Partner Philadelphia
Associate Philadelphia
Partner New York
Associate Philadelphia
Of Counsel Philadelphia
Partner Washington, D.C.
Partner Washington, D.C.
Partner Atlanta
Partner Philadelphia
Partner Cincinnati
Partner Atlanta
Partner Philadelphia
Partner Chicago
Associate Columbus
Partner Philadelphia
Partner New York
Partner Washington, D.C.
Partner Cleveland
Partner Chicago
Associate Philadelphia
Associate Costa Mesa
Counsel Washington, D.C.
Partner Houston
Partner Seattle
Partner Seattle
Partner Washington, D.C.
Partner New York
Associate Atlanta
Partner New York
Partner Washington, D.C.

Experience

Electrical

We have represented clients in the following cases that involved electrical engineering:

  • Represented clients in Internet applications case (Civix DDI LLC v. Motorola Inc, et. Al, (N.D. Ill.))
  • Represented client in case regarding electrical instruments (IPCO, LLC v. Elster Electricity LLC, (N.D. Georgia))
  • Represented client in case regarding electrical instrumentation (ABB Automation Inc. v. Schlumberger Resource Management Services, Inc. (D. Del.))
  • Represented client in case regarding speech coding (AT&T Corporation v. Microsoft Corporation (S.D.N.Y.))
  • Defended accused infringer, Guidance Software, against patent claims related to computer forensics technologies, obtaining a finding of no violation after trial in August 2012. (In the Matter of Certain Computer Forensic Devices and Products Containing the Same, International Trade Commission, Case No. 337-TA-799)
  • Defended accused infringer against patent claims related to DVD scene selection menus, with case settled on confidential terms after jury trial in December 2012. (Patent Harbor, LLC v. Audiovox Corporation, ED Texas, Case No. 6:10-cv-00361
  • Obtained summary judgment of no liability for accused infringer, Muzak Holdings LLC and Muzak LLC, against patent claims related to programmable messaging system for controlling playback of messages on remote music on-hold. (Info-Hold, Inc. v. Muzak Holdings LLC and Muzak LLC, SD Ohio, Case No. 1:11-cv-283)
  • Represented patent owner against alleged infringer in litigation related to high speed variable printing technologies, with the case settled on confidential terms. (Tesseron, Ltd. v. Konica Minolta Business Solutions U.S.A., Inc., et al., ND Ohio, Case No. 1:2007-cv-02947)
  • Represented accused infringer against patent claims related to telephone encryption technologies, with the case settled on confidential terms. (ISwitch, LLC v. Cincinnati Bell Inc., ED Texas, Case No. 6:12-cv-118)
  • Represented accused infringer against patent claims related to technologies that allow secure financial transactions, with the case settled on confidential terms. (Swipe Innovations, LLC v. Elavon, Inc., ED Texas, Case No. 9:12-cv-0040)
  • Representing patent owner against alleged infringers related to laser technologies (Newport Corporation v. Lighthouse Photonics Inc., CD California, Case No. 8:12-cv-00719)
  • Represented client in case regarding semiconductor-wafer manufacturing (Semcon Tech, LLC v. Ebara Corp., Ebara Technologies Inc., et. al. (D.Del.)) Represented client in case regarding contact voltage detectors (Power Survey, LLC v. L-3 Communications Corp. (D.NJ))
  • Represented client in case regarding cell-phone location equipment (TruePosition, Inc. v. Andrew Corp. (D.Del.))
Mechanical

We have recently represented mechanical engineering clients in the following cases:

  • Bayer Healthcare LLC v. Abbott Labs, Inc. (D. Del.)
  • Anheuser Bush v. Crown Cork & Seal Co., Inc. (Wis.)
  • LifeScan, Inc. v. Home Diagnostics, Inc. (N.D. Cal.)
  • DePuy Mitek, Inc. v. Arthrex, Inc. (D. Mass.)
  • Medtronic, Inc. v. Boston Scientific, Inc. & SciMed Life Sys., Inc. (D. Del.)
  • (Huhtamaki, Inc. v. PWP Industries, Inc., SD Ohio, Case No. 1:09-cv-795 (food packaging technology)
  • Pride Mobility Products Corp. v. Permobil, Inc. (E.D.PA) (power wheelchairs)
Computer Software

Some recent cases include:

  • Representing Microsoft in a patent infringement action involving voice encoder-decoder products (AT&T, Inc. v. Microsoft Corp. (S.D. N.Y.)).
  • Representing Microsoft Corp., et al. in a patent infringement case involving Internet-based mapping and location systems and methods (Civix-DDI, LLC v. Microsoft Corp. et al. (D. Colo.)) Representing Elster Electricity in patent infringement action involving wireless mesh networking (IPCO v. Elster Electricity LLC, (N.D. Ga.))
  • Successfully represented Guidance Software in an International Trade Commission (ITC) trial to determine whether Guidance Software’s manufacture and sale of certain computer forensic devices, used by such federal agencies as the CIA, Department of Homeland Security, Department of Defense, and Federal Bureau of Investigations, violated section 337 of the Tariff Act of 1930 due to the alleged infringement of two patents. Chief Administrative Law Judge Bullock entered an order in favor of Guidance on both patents determining that no 337 violation had occurred.
  • Representing Visual Technology Applications in a patent infringement case involving computer-based vision testing and therapy software (Visual Technology Applications, Inc. v. Gemstone Educational Management, LLC. (E.D. Pa.))
  • Representing WSI Corp. in a patent infringement action involving a weather forecasting presentation system and method (Weather Central, Inc. v. WSI Corporation (W.D. Wis.))
  • Represented client in litigation regarding Android operating system and Barnes & Noble Nook e-reader (In the Matter of Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof, Investigation No. 337-TA-769)
  • Represented client in litigation regarding data security and encryption (Paone v. Microsoft, (E.D.NY))
  • Represented client in litigation regarding database management and object-oriented software programming (Microsoft v. DataTern (S.D.NY))
  • Represented client in litigation regarding data security and encryption (TecSec v. Microsoft (E.D. VA))

Recognition

  • Chambers USA: Nationwide Privacy & Data Security (2013 to 2018)
    • Chambers USA Privacy and Data Security- Healthcare Spotlight Table (2018)
  • Chambers USA: Intellectual Property:
    • Trademark & Copyright in New York (2014 to 2017)
    • Georgia Intellectual Property (2018)
      • Band 4
    • Ohio Intellectual Property (2018)
      • Band 2
    • Pennsylvania Intellectual Property (2018)
      • Band 1
    • Recognized Practitioner: Intellectual Property Litigation in District of Columbia (2018).
    • Recognized Practitioner: Intellectual Property Patent Prosecution in District of Columbia (2018).
    • Recognized Practitioner: Intellectual Property Trademark, Copyright & Trade Secrets in New York (2018). 
    • Recognized Practitioner: Trademark, Copyright & Trade Secrets in the District of Columbia (2015 to 2017)
  • The Legal 500 United States (2015, 2016, 2018)
    • Intellectual property: Patent litigation - full coverage
    • Intellectual property: Patents - prosecution (including re-examination and post-grant proceedings)
    • Intellectual property: Trade Secrets (Litigation and Non-Contentious Matters)
  • Daily Report Intellectual Property Litigation Department of the Year (2017)
  • IAM Patent 1000: The World's Leading Patent Professionals (2016)
    • DC Metro: Patent litigation
    • Pennsylvania: Patent prosecution; Patent litigation
    • Washington: Patent prosecution
  • Recognized as one of the top law firms for client service, we were named to the 2018 BTI Client Service 30 for the fourth consecutive year.
  • U.S. News - Best Lawyers "Best Law Firms" (2017)
    • Litigation - Patent
    • Patent Law

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