Mr. Caplan practices in the area of patent litigation, counseling and prosecution as well as in the areas of antitrust litigation and general corporate matters involving the acquisition, sale or licensing of intellectual property rights. Mr. Caplan also is co-chair of the Firm’s China Practice and represents Chinese companies in a variety of corporate, transactional and litigation matters.
Mr. Caplan’s recent litigation experience includes numerous cases defending Sirius XM in patent infringement actions in the Eastern District of Texas and the Central and Northern Districts of California. He recently won a major claim construction decision in an ED Texas patent litigation which led to the plaintiff dismissing the lawsuit with prejudice.
Mr. Caplan’s experience also includes patent cases involving semiconductor wafer inspection equipment, as well as pharmaceutical infringement actions including Hatch-Waxman and conventional non-Hatch-Waxman pharmaceutical lawsuits. He was lead counsel in successfully convincing the Federal Circuit to vacate the claim construction, infringement, damages and injunction judgment from a 14 day jury trial litigated by another firm. He also has obtained a temporary restraining order on behalf of a pharmaceutical client against two competitor drug companies. His litigation experience includes patent infringement actions in various United States District Courts and the Court of Appeals for the Federal Circuit. He also appears in state courts throughout the United States. He recently obtained a summary judgment victory in a Kentucky State court action involving patent ownership and misappropriation of intellectual property rights. Additionally, Mr. Caplan represents several Chinese defendants in a class action antitrust lawsuit involving the export of magnesite from China.
For the last several years, Mr. Caplan has been actively involved in the pharmaceutical industry as a member, and now Board member, of the New Jersey Intellectual Property Law Association (the “NJIPLA”). Mr. Caplan is the past President of the NJIPLA, whose membership includes most of the world’s largest pharmaceutical companies headquartered in New Jersey. Through the NJIPLA, Mr. Caplan regularly speaks on recent developments in patent law to intellectual property practitioners in New Jersey and the New York metropolitan area.
Another significant aspect of Mr. Caplan’s practice is providing counseling to clients on infringement, validity and freedom to operate matters as well as licensing of technology. This also has involved advising corporations with respect to intellectual property issues in connection with acquisition and divestiture matters.
Mr. Caplan has extensive experience prosecuting patents in the United States and foreign patent offices for numerous clients in all fields of technology. This has included obtaining worldwide patent protection in fields such as pharmaceutical, medical device, semiconductor manufacturing and devices, automotive fuel injection, air bag and anti-lock braking systems, wireless telecommunications, consumer products, financial services and business methods. Mr. Caplan has significant experience managing all aspects of worldwide utility and design patent portfolios.
Representative Litigations
- Bluestone Innovations LLC v. Toyoda Gosei (E.D. Tex.) — Representing Toyoda Gosei in a patent infringement action involving fabrication of light emitting diodes (LEDs).
- PACid Group v. Sirius XM et al.(E.D. Tex.) — Successfully represented Sirius XM in a patent infringement action involving encryption technology.
- Personal Audio v. Apple, Sirius XM, et al. (E.D.Tex.) — Successfully represented Sirius XM in patent infringement action involving audio content that can be downloaded and played according to a playlist.
- Consumer Satellite v. Sirius XM (E.D.Tex.) — Successfully represented Sirius XM Radio in a patent infringement action involving interoperable satellite radio receivers.
- August v. Camtek (D. Minn.) — Took over representing Camtek Ltd., an Israeli manufacturer of semiconductor wafer inspection systems, in a patent infringement action after an adverse jury verdict already had been entered. Also representing Camtek on appeal to the Federal Circuit and won a decision vacating the adverse judgment of the district court. Also representing Camtek on appeal to the Federal Circuit.
- Sirius XM v. Alliacense et al. (N. D. Cal) — Successfully represented Sirius XM Radio in a declaratory judgment action involving patents relating to microprocessor design and flash memory chips.
- Animal Science Products, Inc. v. China Minmetals Corp. et.al. (D.N.J.) — Representing Sinosteel Corporation, Sinosteel Trading Co. and Liaoning Jiayi Metals & Minerals Co., Ltd. in class action antitrust lawsuit alleging price fixing for magnesite. Successfully dismissed two complaints asserted by plaintiffs.
- Berger v. Savient Pharmaceuticals (Ky. Cir. Ct.) — Won summary judgment for Savient Pharmaceuticals against a breach of contract claim regarding ownership of patents and multi-million dollar damages.
- 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.
- Katz Tech. v. XM Satellite Radio (C.D. Cal.) — Successfully defended XM Satellite Radio in multi-district patent litigation involving computer telephony technology.
- Broadcast Data v. Sirius Satellite Radio (S.D.N.Y.) — Successfully represented Sirius Satellite Radio in a patent infringement brought by a subsidiary of Acacia Research involving over the air transmission of display data, resulting in the plaintiff dropping the case with prejudice.
- Finisar v. Sirius Satellite Radio (E.D.Tex.) — Successfully defended Sirius Satellite Radio in a patent infringement action resulting in a prolonged stay of the action.
- Gebre v. Sirius Satellite Radio (D. Utah) — Successfully defended Sirius Satellite Radio in a patent infringement action involving navigation system technology, resulting in a favorable settlement.
- ReSeal International Limited Partnership v. Secondo (NYS) — Successfully represented ReSeal Intl., in a breach of fiduciary duty action to take back ownership of patent rights misappropriated from the company.
- Neumark v. Toyoda Gosei Co., Ltd., et al. (S.D.N.Y.) — Represented defendant Toyoda Gosei Co., Ltd., a Japanese company which is one of the world’s largest producers of light emitting diodes, in a patent infringement litigation involving LED technology which concluded in a favorable settlement.
- Scientific Atlanta v. Sirius Satellite Radio (Binding Arb.) — Successfully defended Sirius Satellite Radio in a binding arbitration involving transmission of embedded text in a satellite radio signal.
- Chan v. Canon Inc. et al. (N.D. Texas) — Successfully represented defendant Canon in a patent infringement action involving digital storage and distribution technology which concluded in a favorable settlement.
- GTE Wireless v. Nokia (E.D. Va.) — Successfully represented defendant Nokia in a patent infringement action involving over the air activation technology, obtaining a favorable claim construction from the court which precipitated settlement of the case.
- Plasco v. StarTech (S.D. Tex.) — Successfully defended StarTech Corp., a major innovator of plasma arc technology used for waste management, against a patent infringement action brought in the U.S. District Court for the Southern District of New York, resulting in “walk-away” dismissal by plaintiff-patentee shortly after the case was filed.
- Midsummer Fin. Prods., Inc. v. Rapid Filing Servs., (N.Y. Sup.) — Vacated a crippling temporary restraining order based on alleged theft of trade secrets against a startup Internet-based tax preparation company during the middle of tax season, then obtained an award of costs and dismissal of all claims against our client.