Patent Litigation

Kramer Levin Naftalis & Frankel LLP's Intellectual Property Department attorneys have extensive experience with patent litigation on behalf of patent owners as well as alleged patent infringers. We regularly work with patent owners to develop litigation strategies to maximize returns on a cost effective basis and pursue such litigation in federal courts throughout the country. We also have represented numerous clients charged with patent infringement in avoiding unfavorable litigation results and, as appropriate, asserting various defenses, such as fraud on the Patent and Trademark Office and antitrust counterclaims, as well as assisting clients in inventing around such patents. In jury cases, our lawyers work with litigation consultants to evaluate likely jury responses and to develop effective case presentations. We have litigated patent cases involving myriad industries and technologies including automotive products, biotechnology, medical devices, fiber optics, chemicals, pharmaceuticals, sporting goods, electronics, mobile telecommunications, computers, textiles, toys, machinery and consumer goods.

Trademark Litigation

Department attorneys enjoy widespread expertise in trademark, service mark, domain name and trade dress litigation. We possess broad knowledge about survey design, investigative techniques and various other methods to prove or disprove likelihood of confusion and secondary meaning. Some of the industries in which we have handled trademark litigations are telecommunications, computers, finance, food, cosmetics, alcoholic beverages, bicycles, lighting, pharmaceuticals, musical instruments, real estate, home furnishings, insurance, hotel services, paper goods and apparel.

Patent and Trademark Office Proceedings

In addition to prosecuting patents, Kramer Levin has participated in patent interference, reexamination and reissue proceedings before the PTO. We counsel clients on such related matters as whether to seek a reexamination of a patent before the PTO (where party participation ordinarily is relatively limited) versus resolving patent issues through federal court litigation.

Litigation on Behalf of Copyright Owners

The firm has handled various copyright infringement actions on behalf of copyright owners. Clients for whom actions have been prosecuted include owners of such diverse works as computer software, fabric designs, toys, advertisements, music and greeting cards. For example, we prevailed before the U.S. Supreme Court in a pivotal decision within the music industry, Mills Music v. Snyder.

Litigation Defending Against Copyright Infringement Claims

We work regularly with clients to avoid possible copyright infringement and to defend against copyright infringement claims.

Assistance in Avoiding Copyright Infringement

Kramer Levin has helped develop and are proficient in the use of “clean room” and other techniques to facilitate new product development without undue risk of charges of copyright infringement. These techniques have been especially important in the computer software area.

Litigation on Behalf of Trade Secret Owners

We are highly skilled in prosecuting trade secret cases and possess broad experience with the expedited discovery and preliminary injunction motion practice with which trade secret litigation typically is commenced. We are adept in developing litigation strategies that will most effectively maximize a client's return of investment in its trade secrets.

Litigation Defending Against Trade Secret Claims

Our lawyers are experienced in the defense of trade secret lawsuits, especially in establishing — through discovery and expert testimony — that no trade secrets exist, and in raising various defenses or counterclaims such as violation of federal and/or state antitrust laws.

 Recent Intellectual Property Litigation Successes

Bracco Diagnostics Inc. v. GE Healthcare (D.N.J.)
Kramer Levin in March 2009 won a major false advertising victory for Bracco Diagnostics Inc. The U.S. District Court for the District of New Jersey awarded Bracco extremely broad relief against false advertising defendant GE Healthcare, including a permanent injunction barring GE’s false claims of superior safety for its Visipaque x-ray contrast agent, an order requiring GE to issue a corrective press release and corrective advertisements and to re-train its sales and marketing personnel, together with $11.4 million in compensatory damages (one of the largest awards to date in a false advertising action). GE, which had asserted a broad counterclaim against Bracco, was awarded no legal or equitable relief. Central to the dispute were false claims that GE’s promotional materials and its sales representatives made to customers regarding the purported superior safety of GE’s x-ray contrast agent Visipaque over Bracco’s competing Isovue product. Bracco and GE are arch-competitors in the market for x-ray contrast agents, which are one of the largest-selling prescription pharmaceuticals by volume in the U.S.

Keystone Autonics v. Sirius Satellite Radio (E.D. Tex.)
Successfully defended satellite radio service provider Sirius XM Radio Inc. against a patent infringement action relating to radio devices, brought in the U.S. District Court for the Eastern District of Texas, resulting in “walk-away” stipulation of dismissal by plaintiff-patentee after a decisive claim construction ruling.

Lear Corporation v. TS Tech USA Corp., et al. (E.D. Tex.)
Currently representing defendants in a patent infringement litigation involving active headrest technology for automobiles. Recently succeeded in obtaining from the Federal Circuit a grant of defendants' petition for writ of mandamus ordering the district court to transfer the case from the E.D. Texas to the S.D. Ohio.

U.S. Electronics, Inc. v. Sirius Satellite Radio Inc., American Arbitration Association
In August 2008, an AAA Arbitration Panel issued a 149-page Award dismissing with prejudice all claims of U.S. Electronics, Inc. ("USE") against our client Sirius XM Radio Inc. ("Sirius”). USE was licensed for a three-year term to develop and market radio receivers and accessories compatible with the Sirius broadcast service. In an arbitration lasting over two years and consuming 20 days of hearings, USE alleged that Sirius breached the parties' contract in bad faith (so as to overcome limitation of liability provisions) and tortiously interfered with USE's relationships with retail stores and manufacturers of the receivers. As reflected in the length of the hearings, USE leveled dozens of allegations against Sirius, such as wrongfully withholding from USE a fair allocation of the core chip sets required to make a receiver; favoring another licensee of Sirius; denying USE access to Sirius' latest technology; and improperly denying type acceptance approval for USE's proposed products. USE sought up to $133 million in damages, mostly claimed lost profits attributable to lost sales allegedly caused by Sirius' supposed wrongdoing. The Panel's Award -- which closely tracked Sirius' proposed findings of fact and conclusions of law -- found in great detail that none of the factual allegations was proved and that Sirius acted in good faith; rejected each claim for liability; and concluded that Sirius' central legal argument was correct such that the claim for lost profits was also barred by the limitation of liability provisions.

For more recent IP successes, please click on the link:

Recent Intellectual Property Litigation Successes