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We have successfully represented both plaintiffs and defendants in a variety of recent jury and non-jury cases:

  • Photocure ASA v. Kappos

    Case No. 2009-1393, 603 F.3d 1372 (2010).  Kenyon & Kenyon successfully represented Photocure before the U.S. Court of Appeals for the Federal Circuit in connection with Photocure's application for a patent term extension on its patent relating to the Metvixia® drug product. Photocure applied for the extension to compensate for the patent life that was lost while it was obtaining FDA approval for Metvixia®, which is used to treat a precursor to skin cancer. In 2008, the PTO denied the request. In 2009, Judge Liam O'Grady of the U.S. District Court of the Eastern District of Virginia reversed the PTO’s ruling, granted summary judgment in Photocure's favor, and ordered the PTO to grant the extension. On May 10, 2010, the Federal Circuit affirmed the district court’s ruling.

  • ALZA Corporation and McNeil-PPC v. Andrx Pharmaceuticals et al.

    Case No. 2009- 1350 (2010) Kenyon & Kenyon represented two subsidiaries of client Watson Pharmaceuticals, Inc. (“Watson”) before the Court of Appeals for the Federal Circuit in a patent infringement litigation brought by ALZA Corporation and McNeil-PPC over generic versions of Concerta® developed by those subsidiaries, Andrx Corporation and Andrx Pharmaceuticals LLC. In March 2009, Judge Joseph Farnan, Jr., of the United States District Court for the District of Delaware ruled that the proposed generic versions of Concerta®, which treats Attention-Deficit/Hyperactivity Disorder (“ADHD”), would not infringe United States Patent No. 6,919,373 (the '373 Patent) and that the '373 Patent is invalid. On April 26, 2010, the Court of Appeals for the Federal Circuit affirmed Judge Farnan’s ruling by concluding that the asserted claims of the ’373 patent are invalid for lack of enablement. Given the affirmance on grounds of invalidity, the Federal Circuit did not address Judge Farnan’s alternative finding of non-infringement of the asserted claims.

  • Robert Bosch LLC v. Pylon Manufacturing Corp.

    Case No. 08-cv-00542 (2010) Kenyon & Kenyon won a jury verdict for Robert Bosch LLC against Pylon Manufacturing Corp. in a patent infringement suit involving patents related to a particular type of windshield wiper blade known as the beam blade. A District of Delaware jury found two out of three of Bosch's patents valid and infringed. The verdict followed a claim-construction ruling in the case, in which Judge Sue Lewis Robinson found infringement with regard to one of Bosch's patents and determined that a patent which Pylon asserted in a counterclaim was not infringed, leaving for trial only Pylon's liability on three of the asserted Bosch patents, one of which Pylon had already been found to infringe. Judge Robinson also denied Pylon's motion for summary judgment that two of the Bosch patents were invalid over the prior art. Trial began on April 15, with a verdict handed down on April 23, 2010. Issues pertaining to damages and willfulness were previously bifurcated. The case will proceed to trial on issues pertaining to willfulness and damages.

  • Banco Bradesco S.A. and Alvorada Cartões, Crédito Financiamento e Investimento v. Future Media Architects, Inc.

    Case No. D2009-1780 (2010). Kenyon & Kenyon LLP successfully defended a UDRP domain name proceeding before WIPO for client Future Media Architects (FMA) against the Brazilian banks Banco Bradesco S.A. and Alvorada Cartoes, Credito Financiamento e Investimento. FMA is one of the largest private owners of domain names in the world and is the frequent target of domain name related actions. WIPO found in favor of our client FMA, finding that FMA had not acted in bad faith and had a legitimate purpose for its domain name.

  • Osbourne v. Iommi

    Case No. 1:09-cv-04947 (2010). Kenyon & Kenyon LLP successfully represented our client Ozzy Osbourne ("Ozzy") against Black Sabbath bandmate, Anthony Iommi, in defending a motion to dismiss. The case concerns the ownership of the BLACK SABBATH trademark.

    On May 26, 2009, Ozzy filed a complaint for declaratory judgment seeking a declaration that he is at least a joint owner of the BLACK SABBATH mark on the basis that Ozzy, and his wife and manager, Sharon Osbourne, acting on his behalf, have controlled the nature and quality of BLACK SABBATH goods and services (i.e., concert tours and merchandise) since 1997 when Ozzy rejoined the Black Sabbath band. Iommi argued that Ozzy’s claims relating to the BLACK SABBATH mark should be dismissed for failure to state claim on the basis of an agreement from 1980 that allegedly transferred his rights to the BLACK SABBATH name to Iommi and other Black Sabbath bandmates.

    Ozzy asked the court to deny Iommi’s motion to dismiss, as it was improper for the court to consider documents outside of the scope of the complaint, such as the 1980 agreement.

    Judge Koeltl stated that in a Rule 12(b)(6) context, a court may only consider a document not referenced in the complaint, if the complaint relies heavily on the document so that it is integral to the complaint, citing Chambers v. Time Warner, 282 F.3d 147, 153 (2d Cir. 2002). Iommi unsuccessfully claimed that extrinsic materials should be considered by a court on a dismissal motion if they undermine plaintiff’s allegations. Judge Koeltl did not agree, and ruled that Iommi did not show that Ozzy's complaint relied on the 1980 agreement in any manner.

  • MHL Tek, LLC v. Nissan Motor Co.

    Case No. 2:07-cv-289-TJW (2009). Kenyon & Kenyon LLP obtained summary judgment of non-infringement for our clients Volkswagen AG, Audi AG, and Volkswagen Group of America, Inc. in the U.S. District Court for the Eastern District of Texas. Plaintiff MHL Tek, LLC had accused nine automakers of infringing U.S. Patent Nos. 5,663,496, 5,731,516, and 5,741,966, which relate to tire-pressure monitoring systems. In March 2009, the court granted motions to dismiss MHL’s claims for infringement of the ’496 and ’966 patents for lack of standing. The only patent that remained in suit was the ’516 patent, entitled "System and Method for Monitoring a Pneumatic Tire". According to the claims, the tire-pressure sensor must be contained within a housing that is “cylindraceous,” which the court construed to mean "generally cylindrical." Volkswagen and Audi argued that their tire-pressure sensors were not “generally cylindrical," and also argued that narrowing amendments made during prosecution prevented MHL from asserting infringement under the doctrine of equivalents. The district court agreed.

  • Intellectual Science & Technology, Inc. v. Sony Electronics Inc. et al

    Case No. 09-1142, (Fed. Cir. 2009). Kenyon & Kenyon LLP and client Sony Electronics Inc. prevailed at the U.S. Court of Appeals for the Federal Circuit, which affirmed the grant of summary judgment of non-infringement in Sony's favor.

    Intellectual Science & Technology (IS&T) asserted five patents against Sony dual CD players/recorders in the Eastern District of Michigan.  After the district court granted summary judgment of non-infringement, IS&T appealed the decision for one of the patents to the Federal Circuit.  At issue in the appeal was the sufficiency of IS&T's expert declaration in showing a genuine issue of material fact.  In its opinion, the Federal Circuit recognized the fundamental insufficiency of IS&T's expert declaration, and held that Sony's products did not infringe the patent as a matter of law.

  • Sony Electronics Inc. v. Guardian Media Technologies, Ltd.
    Case No. 05-cv-1777 (2009). Kenyon & Kenyon LLP successfully represented Sony Electronics Inc. in the patent litigation suit against Guardian Media Technologies, Ltd. related to V-chip and parental control technology.

    The U.S. District Court for the Southern District of California ruled in favor of Sony and other consumer electronics companies granting summary judgment of non-infringement on one of two patents-in-suit in consolidated actions against Guardian. Guardian had asserted the now expired patents-in-suit, U.S. Patent Nos. 4,930,158 and 4,930,160, against televisions and DVD players having the capability to block programs based on their ratings. The Court ruled that Sony and the other companies did not infringe the '158 patent literally or under the doctrine of equivalents based on two separate grounds.

    Sony initially filed its declaratory judgment action against Guardian in 2005 and, at the same time, requested that the Patent Office reexamine the patents. The district court case became active in mid-2008 after the Federal Circuit reversed the district court's previous dismissal of the case for lack of declaratory judgment jurisdiction, and after the district court's stay pending completion of the reexaminations by the Patent Office, where a majority of the claims were cancelled.

  • Illinois Computer Research LLC v. Harpo Productions Inc., et al.
    Case No. 08-cv-7322 (2009). Kenyon & Kenyon LLP obtained a voluntary dismissal for Sony Electronics Inc. of a patent infringement suit filed against it by Illinois Computer Research, LLC (ICR). ICR had alleged that Sony infringed several claims of U.S. Patent No. 7,111,252. According to ICR's complaint, the patented invention allows reviewing of excerpts from a digital book for preview prior to purchase, but prevents the reader from obtaining and reviewing the entire book prior to purchase. With a motion by Sony for summary judgment of non-infringement pending, ICR dismissed its claims against Sony with prejudice.

  • DC Comics and Marvel Characters, Inc. v. Michael Craig Silver
    Opposition No. 91176744 (TTAB August 21, 2009). Kenyon & Kenyon LLP, acting for our clients DC Comics and Marvel Characters, Inc., successfully opposed an application for registration of the mark SUPERHERO for skin care products by Michael Silver. The Trademark Trial and Appeal Board ruled that Silver lacked a bona fide intent to use the mark at the time he filed his application and entered summary judgment against him.

  • Intervet, Inc., v. Merial Limited and Merial SAS
    Case No. 1:06cv00658 (2009). The United States District Court for the District of Columbia granted a summary judgment in favor of Kenyon & Kenyon's client Intervet, ruling that Intervet's accused swine vaccine did not infringe a patent owned by Merial Limited and Merial SAS. After previously rejecting Merial's broad interpretation of the patent's claims, the Court found that Intervet did not literally infringe Merial's patent because the DNA of the virus that Intervet used in the manufacture of its vaccine was not one of the strains that Merial had patented. The Court also held that Merial was estopped from asserting infringement under the Doctrine of Equivalents.

  • Jim Beam Brands Co. v Tequila Cuervo La Rojena S.A. de C.V.

    New York Civil Supreme, No. 600122 (2009). Kenyon & Kenyon LLP was successful on behalf of its client Jim Beam Brands Co. in maintaining jurisdiction over Tequila Cuervo La Rojena S.A. de C.V. ("Tequilla Cuervo") in a breach of contract dispute over Tequila Cuervo's use of a crow design on product packaging and marketing materials. Jim Beam is the owner of the famous OLD CROW brand whiskey. Tequila Cuervo, the Mexican trademark holding company for all of the Jose Cuervo trademarks in the United States, vigorously contested jurisdiction in New York and appealed the denial of their motion to dismiss to the Appellate Division, First Department. The five judge panel unanimously held that specific jurisdiction was proper based on the allegations that (i) the trademark owner permitted its licensee to sell nonconforming products in New York; (ii) where the agreement regulates defendant's use of the subject trademark throughout the entire United States; (iii) the agreement was negotiated in New York by defendant's long-standing New York counsel; (iv) the agreement contains a New York choice-of-law clause and extends to "all those acting in concert or participation with [defendant] or under [its] direction and control."

  • Alza Corporation and McNeil-PPC, Inc., v. Andrx Pharmaceuticals, LLC, and Andrx Corporation
    Case No. 05-642-JJF (2009). Kenyon & Kenyon LLP obtained a favorable ruling for Watson Pharmaceuticals, Inc. ("WPI") in a patent infringement case brought by ALZA Corporation and McNeil-PPC relating to a generic version of Concerta. Concerta is used in the treatment of Attention-Deficit/Hyperactivity Disorder ("ADHD") and has annual sales in excess of one billion dollars.

    After a full trial, the United States District Court for the District of Delaware on March 30 ruled that Watson's proposed generic version of Concerta does not infringe United States Patent No. 6,919,373 (the '373 Patent) and that the asserted claims of the '373 Patent are invalid. The opinion was issued by Judge Joseph Farnan, Jr., and applies to Watson's generic versions of Concerta in the 18 mg, 27 mg, 36 mg and 54 mg strengths.

  • Photocure ASA v. Dudas
    Case No. 1:08-cv-00718-LO-JFA (E.D. Va. March 31, 2009). Kenyon & Kenyon LLP successfully represented Photocure at the district court level in connection with Photocure's application for a patent term extension. Photocure applied for the extension on the basis of FDA approval of its Metvixia drug product, which is used to treat a precursor to skin cancer. The PTO denied the request for extension. Judge Liam O'Grady of the U.S. District Court of the Eastern District of Virginia adopted Photocure's interpretation of the statute, granted summary judgment in Photocure's favor, and ordered the PTO to grant a patent term extension to Photocure.

  • Agere Systems Inc. v. Sony Corporation et al.
    Case No. 2:06-cv-00079-TJW (2008). Kenyon & Kenyon LLP obtained a summary judgment of invalidity in the Eastern District of Texas on behalf of client Sony Corporation in a patent litigation brought by Agere Systems, Inc. The patent, U.S. 5,448,585 patent, entitled "An Article Comprising a Quantum Well Laser" was alleged to read on the blue laser diode used in Sony's Blu-ray Disc players, PlayStation3, VAIO computers and other Sony products containing Blu-ray disc drives. The courts decision eliminated the vast bulk of the damages claim being asserted against Sony.

  • Aventis Pharmaceuticals, Inc. and AMR Technology v. Teva Pharmaceuticals, USA, Inc. and Amino Chemicals
    Case No. 04CV1078 (2008). Kenyon & Kenyon represented Teva Pharmaceuticals in these litigations brought by Sanofi-Aventis in the New Jersey District Court on Sanofi-Aventis's ALLEGRA antihistamine product. In early 2006, The Court denied Sanofi-Aventis's motion for a preliminary injunction, thereby allowing Teva to remain on the market with a generic version of Allegra. The market for Allegra was $1.5 billion at the time Teva launched its product. Teva, Aventis and AMR settled the ongoing litigations between them concerning ALLEGRA in late 2008.

  • Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation , Inc.
    Opposition No. 91180789 (2008). Kenyon & Kenyon LLP successfully represented Ballet Tech Foundation in a long, hard-fought Trademark Trial and Appeal Board cancellation proceeding against The Joyce Theater Foundation. The case went all the way to trial and the Board ruled, in a 38-page decision, that Ballet Tech is the rightful owner of all trademarks associated with the world famous JOYCE dance theater, located in New York City.

  • Calmedica, LLC v. Best Vascular, Inc.
    Case No. 1:04-cv-02646-RWS (N.D. Ga. June 19, 2008) After a Markman hearing, Judge Richard Story issued a Claim Construction Order that established that Best Vascular's brachytherapy device did not infringe Calmedica's patent, which directly led to Calmedica dropping the case.

  • Future Media Architects v. Equifax, Inc.
    Case No. D2008-1243 (2008). Kenyon & Kenyon LLP announced a favorable arbitration decision for its client, Future Media Architects (an Internet development company) in what it considered to be a reverse domain name hijacking dispute with credit reporting company Equifax, Inc. At issue was the domain name, which Future Media Architects had purchased and registered in 2004. Equifax claimed to own trademark rights in the name EFX as its stock symbol. The National Arbitration Forum Panel held that Equifax failed to prove that Future Media Architects registered and was using in bad faith. Refusing to transfer the domain name to Equifax, the Panel's decision reiterated the Uniform Dispute Resolution Policy (the "UDRP") requirement that a complainant must prove each of the three elements:
    • the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
    • Respondent has no rights or legitimate interests in respect of the disputed domain name; and
    • the disputed domain name has been registered and is being used in bad faith.

    Equifax brought the dispute pursuant to the UDRP, claiming that it owned superior rights to the domain name despite having failed over the years to obtain it for itself. The Panel stated that "[f]rom its review of the evidence the Panelist does not believe that Respondent targeted Complainant or its unregistered EFX mark at the time the disputed domain name was registered." The Panel did not go so far as to find reverse domain name hijacking, but did consider it.

  • Hebei Sukerui Sciences and Technology et al. v. Tate & Lyle PLC
    Case No. 337-TA-604 (2008). Kenyon & Kenyon LLP obtained a favorable ruling for client Hebei Sukerui Science and Technology Co., Ltd. before an Administrative Law Judge at the United States International Trade Commission (ITC). The ruling was in a closely watched patent infringement case brought in April 2007 by Tate & Lyle Technology Limited, the company that produces and sells sucralose, a sugar substitute, under the Splenda brand. The ITC Administrative Law Judge rejected Tate & Lyle's patent infringement claims against Kenyon & Kenyon's client, a Chinese manufacturer of sucralose, as well as numerous other distributors. The Judge also found that the Tate & Lyle patent asserted against Sukerui was invalid.

  • IS&T v. Sony Electronics Inc.
    Case No. 2:06-cv-10406-AC-SDP (2008). Kenyon & Kenyon LLP obtained a summary judgment of non-infringement in IS&T v. Sony Electronics Inc. IS&T had asserted five patents against five Sony dual CD recorders. The case proceeded with respect to two representative patent claims and two representative Sony products, which the Court held did not infringe as a matter of law.

  • International Flora Technologies, Ltd., v. Clarins U.S.A., Inc.
    Case No. WL 4300621 (2008).Kenyon & Kenyon LLP successfully obtained a dismissal of the patent infringement case filed against Clarins, the famous French cosmetics company, by International Flora Technology ("Floratech"). Floratech had brought claims of patent infringement relating to certain Clarins facial creams. Kenyon convinced the court that Floratech had failed to provide adequate notice of the patent claims it was asserting, and the court granted Clarins's motion for summary judgment, dismissing the case in its entirety without reaching the merits.

  • Iovate Health Sciences, Inc., University of Florida Research Foundation, Inc. and Flamma Spa., v. Bio-Engineered Supplements & Nutrition, Inc., d/b/a BSN Inc. and Medical Research Institute.
    Case No. 9:07-cv-0046-rc Eastern District of Texas (August 29, 2008). Kenyon & Kenyon won a Daubert motion for our client Iovate Health Sciences, which is significant for patent damages analysis, specifically for a reasonable royalty analysis. This is believed to be the first case in which a court squarely held that when a patent has assigned while the infringement is ongoing, a different reasonable royalty rate can be used for the new patent owner/licensor, than was used for the period of time prior to the assignment. Thus, there can be different royalty rates for infringement of the same patent by the same product sold by the same defendant.

  • ITC Ltd. and ITC Hotels Ltd. v. Punchgini Inc. et al.
    482 F.3d 135 (2d Cir. 2007). Kenyon & Kenyon and clients, the proprietors of the BUKHARA GRILL restaurant chain, prevailed on all state and federal claims of trademark and trade dress infringement, and unfair competition, at the United States Court of Appeals for the Second Circuit in a series of decisions regarding the availability of the "Famous Marks Exception" for owners of foreign trademarks with no use of the marks in the United States. In March 28, 2007, the Second Circuit affirmed that Plaintiffs ITC Limited and ITC Hotels Limited (collectively "ITC"), the owners of a restaurant in India, had abandoned any rights they had to the name Bukhara in the United States, and rejected their argument that the decision should be overturned because it owned a foreign mark that it alleged to be "famous" in the United States. The Court's rejection of the "famous marks" doctrine as a basis for federal unfair competition claims by foreign trademark owners under the Lanham Act creates a split between the Second and Ninth Circuit Court of Appeals on the same issue of law. On February 26, 2008, the Second Circuit separately affirmed the dismissal of all state claims after referring two questions of state law to the New York Court of Appeals. The Supreme Court denied Plaintiffs' Petition for Certiorari.

  • Lottotron, Inc. v. GTECH Corp.
    Case No. 3:05-cv-0462-FLW-JJH (2008).Kenyon & Kenyon LLP received a favorable summary judgment decision for its client, GTECH Corp., in a patent litigation brought by Lottotron. Lottotron had alleged that GTECH's E-Scratch system infringes Lottotron's patent, which is directed to a computerized remote lottery wagering system. The District Court agreed with Kenyon & Kenyon's arguments and granted GTECH summary judgment of noninfringement of all of the asserted claims of Lottotron's patent.

  • Ottis v. Fisher-Price, et al.
    Case No. 07CV379, 2008 WL 2276938 (D. Neb. May 30, 2008). In a copyright infringement and breach of contract case, Kenyon & Kenyon obtained a dismissal of all claims against Dwayne "The Rock" Johnson and his charitable organization The Rock Foundation, for failure to state a claim and lack of jurisdiction.

  • In re Rubber Antidegradants.
    Case No. 5:05-cv-00156-SL (2007). Kenyon & Kenyon LLP successfully obtained a judgment terminating an ITC investigation concerning rubber antidegradants for our client Sinorgchem Co., Shandong. After extensive briefing and argument, the Administrative Law Judge granted Sinorgchem's motion to terminate the investigation based on claim preclusion and to stay discovery. This Section 337 investigation was initiated on July 10, 2008, and is the second ITC investigation against Sinorgchem. Termination of a Section 337 investigation at such an early stage of the proceedings, without any discovery, is extremely rare at the ITC. Kenyon is also representing Sinorgchem in Investigation No. 533 that was instituted in 2005 in which the Federal Circuit reversed the Commission's finding of infringement and remanded to the ITC for consideration of infringement under the doctrine of equivalents.

  • In re Wal-Mart Stores Inc.
    Claim Number: FA0805001195133 (2008). Kenyon & Kenyon LLP successfully represented Wal-Mart in an ICANN case concerning eight Domain Names. The complaint was filed with the World Intellectual Property Organization. The Administrative Panel ordered that all of the the disputed Doman Names be transferred to Wal-Mart and found that the Domain Names registered by the Respondent were identical or confusingly similar to several Wal-Mart trademarks and service marks. The Panel also found that the Respondent had no rights or legitimate interests in the disputed Domain Names, and that the disputed Domain Names had both been registered and used in bad faith.

  • Zimmer v. CooperNeff Advisors, Inc.
    Case No. 2:04-cv-03816-RK (2008). Kenyon & Kenyon LLP successfully obtained a favorable ruling for our client CooperNeff Advisors in the U.S. District Court for the Eastern District of Pennsylvania. The court granted the motion for our client to compel arbitration of claims brought against it by a former employee (Zimmer). In a hotly contested matter, the court ruled that CooperNeff had not waived its right to compel arbitration of Zimmer's federal court claims even though CooperNeff had initiated litigation and sought injunctive relief against Zimmer in state court. This case is important, since it confirms an employer's right to seek preliminary injunctive relief to protect key intellectual property rights while maintaining the ability to arbitrate employment claims. This follows an April 2008 favorable ruling for CooperNeff at the Third Circuit Court of Appeals. In that case, the Third Circuit held the arbitration clause to be enforceable and reversed and vacated the U.S. District Court's denial of arbitration, remanding for consideration as to whether the right to arbitration had been waived. The case involved a software program to trade securities that was being developed while Steven A. Zimmer was employed at CooperNeff, which Zimmer intended to take to a competitor and use there. To stop that misappropriation, CooperNeff obtained a temporary restraining order against disclosure of the program to the competitor.

  • American Girl, Inc v. Battat, Inc.
    Case No. 1:06cv566 (November 2006). Kenyon & Kenyon obtained a preliminary injunction for its client American Girl, requiring that Battat not only cease offering for sale or distributing an infringing doll product, but also that Battat be required to recall and remove existing product from the market. American Girl is the source of the well-known American Girl doll, doll accessories, and children's clothing products. Among its marks, is one of its very first doll products - Molly, which was the subject of a made for television movie released in November 2006. In late August or early September 2006, Battat began offering its own doll marked as Molly, refused to cease doing so voluntarily, and American Girl then sought and obtained the preliminary injunction. In May 2007, Battat settled with American Girl, agreeing to a permanent injunction against use of Molly or other American Girl trademarks. Battat was ordered to make sure that all Battat "Molly" dolls are off the shelves at Target by October 22, 2006.

  • JetBlue Airways Corporation v. Pacific Blue Holdings Pty Ltd., TTAB
    Opposition No. 91176517 (November 2007). Kenyon & Kenyon LLP, acting for our client, JetBlue Airways, successfully opposed an application for registration of the mark PACIFIC BLUE filed by Pacific Blue Holdings Pty. Ltd., an affiliate of the Virgin Group. After considerable motion practice and discovery, Pacific Blue withdrew its application, resulting in a Dismissal with Prejudice in favor of JetBlue.

  • Leapfrog Enterprises v. Fisher-Price, Inc.
    (Fed. Cir. May 9, 2007). Kenyon & Kenyon and clients Fisher-Price, Inc. and Mattel, Inc. prevailed at the Court of Appeals for the Federal Circuit in that court's first application of the obviousness standard since the Supreme Court's April 30, 2007 decision in KSR Int'l Co. v.Teleflex Inc. The Federal Circuit affirmed a district court ruling that Fisher-Price’s PowerTouch System, which helps children learn to read through phonics, does not infringe a patent owned by LeapFrog Enterprises, Inc., and that the asserted claim of the patent is invalid for obviousness.

  • MuscleTech Research & Development, Inc. v. East Coast Ingredients LLC
    Case No. 00cv753 WDNY (2007). Kenyon & Kenyon successfully represented MuscleTech and obtained, on summary judgment, an award of $5.7 million, plus attorneys' fees, in a trademark and copyright counterfeiting case in the U.S. District Court for the Western District of New York. Plaintiff MuscleTech is a producer of sports nutrition supplements whose products were counterfeited and sold under the MuscleTech label. Two former employees played integral roles in the counterfeiting scheme, which took place in 2000, using the company's copyrighted labels and creating packaging virtually indistinguishable from MuscleTech's products. They also provided product formulations to Sho Me Natural Products, a Florida company which manufactured the counterfeit products. Four of the defendants pleaded guilty to criminal counterfeiting charges, which the US Attorney in Connecticut brought as a direct result of the investigation Kenyon & Kenyon initially launched through a private investigator.

  • OnLine Technologies v. Perkin-Elmer Corporation, et al.
    Case No. 99cv2146 D.Conn. (January 2007). Kenyon successfully represented defendants Applera, Inc. (formerly Perkin-Elmer Corp.) in obtaining summary judgment of invalidity on the only asserted independent claim in the action, which along with other pending motions brought Kenyon, led to a favorable settlement of all remaining claims in the action. The suit involved both patent infringement counts and state law claims for breach of contract, misappropriation of trade secrets, and unfair trade practices, among others. Dismissal of all but the patent claims was affirmed by the CAFC in October 2005, leaving only the patent claims. Following Markman briefing, the motion for summary judgment of invalidity was filed and a decision rendered in October 2006. Rather than go to trial solely on the remaining claims, the plaintiff elected to settle all claims on what was considered to be favorable terms to avoid the cost of trial.

  • Pilot Corporation of America v. Fisher-Price, Inc. and Mattel, Inc.
    Case No. 04CV977 Dist Ct CT. (July 24, 2007). Kenyon & Kenyon successfully obtained for our clients, Mattel and Fisher-Price, summary judgment on all trademark, trade dress and federal unfair competition claims in July 2007. Fisher-Price had for many years sold a very successful toy called MAGNADOODLE, a trademark licensed to Fisher-Price by Pilot. After the license expired, Fisher-Price commenced sale of a virtually identical toy, but under the trademark DOODLE PRO. Pilot claimed both that it owned all of the trade dress in the toy and its packaging, and that use of DOODLE PRO was likely to cause confusion among consumers with the products of its new licensee for MAGNADOODLE, Ohio Art. Following extensive briefing and argument over the course of over six months, in July of this year, the Court granted Kenyon's motion on behalf of the defendants and dismissed the claims.

  • Wellnx Life Sciences Inc. v. Iovate Health Sciences Research Inc. et al.
    Case No. 1:06-cv-07785 SDNY (September 2007). Kenyon & Kenyon LLP successfully represented Iovate Health Sciences Research, Inc. ("Iovate"), a leading nutritional supplement company, in a false advertising and antitrust lawsuit brought by a competitor, Wellnx Life Sciences, Inc. The suit, filed in September 2006 by Wellnx (formerly known as NxCare, Inc.) against Iovate, alleged that the Iovate had violated 43(a) of the Lanham Act by engaging in false and misleading advertising practices. Judge Kevin Castel of the U.S. District Court for the Southern District of New York, dismissed the entire lawsuit under Rule 12(b)(6) of the Federal Rules of Civil Procedure.

  • Abbott Labs v. Andrx Pharmaceutical
    Case No. 05APP1433 (June 22, 2006). In a 31-page opinion, the Federal Circuit vacated the Northern District of Illinois's preliminary injunction against Kenyon & Kenyon client Teva USA's marketing of its generic equivalents of Abbott's Biaxin XL tablets, which have annual sales of more than $250 million. The court rejected the district court's conclusion with respect to the validity of two Abbott patents that cover the drug, holding that Teva USA had raised a "substantial question" with respect to the whether the patented inventions "would have been obvious."

  • Aventis Pharmaceuticals, Inc. and AMR Technology v. Teva Pharmaceuticals, USA, Inc. and Amino Chemicals
    Case No. 04CV1078 (May 2006). Kenyon & Kenyon represented Teva Pharmaceuticals in these litigations brought by Sanofi-Aventis in the New Jersey District Court on Sanofi-Aventis's ALLEGRA antihistamine product. The Court denied Sanofi-Aventis's motion for a preliminary injunction, thereby allowing Teva to remain on the market with a generic version of Allegra. The market for Allegra was $1.5 billion at the time Teva launched its product.

  • Boston Scientific Scimed v. Cordis Corporation
    Case No. 03cv1138 (June 2006) In a significant victory for Kenyon & Kenyon client Boston Scientific Corporation, the U.S. District Court in Delaware issued a ruling upholding a July 2005 jury verdict in a patent case against Johnson & Johnson ("J&J"). The ruling denies J&J's motion to overturn the verdict, in which the jury had found Boston Scientific's U.S. Patent 6,120,536 valid and infringed by J&J's Cypher stent. The ruling also denied J&J's request for a new trial. Stents are metallic scaffolding used to hold open coronary arteries of patients after they have been cleared of blockages through angioplasty. The patented stent is coated to deliver a drug to the coronary arteries to prevent reclosing of the arteries.

  • Federal Treasury Enterprise Sojuzplodoimport et al v. Spirits International NV et al.
    Case No. 1:04cv8510 (March 31, 2006). In the Southern District of New York, Judge George B. Daniels granted a motion by Kenyon & Kenyon and dismissed a trademark infringement lawsuit against the owner of the STOLICHNAYA brand vodka, ruling that Kenyon's client Allied Domecq has incontestable rights to the STOLICHNAYA trademark. In issuing the order, the Court turned away claims by a Russian organization, Federal Treasure Enterprise Sojuzplodoimport (FTE) that the trademark rights belong to FTE, holding that FTE had raised no basis to challenge Allied Domecq's ownership. The Court also dismissed a copyright infringement allegation contained in the lawsuit. FTE claimed to have obtained rights from the Russian government, and was joined in the case by a would-be competitor of Allied Domecq.

  • Goss International Americas, Inc. v. MAN Roland, Inc. and MAN Roland Druckmaschinen AG
    Case No. 03-CV-513, D. N.H. (2006). Kenyon & Kenyon obtained a favorable claim construction ruling and summary judgment of infringement for plaintiff Goss International in this patent infringement litigation. In addition, Kenyon & Kenyon obtained summary judgments dismissing MAN antitrust defenses and successfully opposed seven motions for summary judgment brought by MAN Roland seeking rulings from the court of non-infringement, invalidity and unenforceability of Goss's patents. The patent technology in this case is offset lithographic printing presses.

  • Harold G. Abbey v. Bill Ussery Motors, Inc. et al.
    Case No. 04-80136 (October 19, 2006). In 1999, the U.S. District Court for the Southern District of Florida granted Kenyon & Kenyon clients Robert Bosch GMBH, Mercedes-Benz of North America, Inc., Mercedes-Benz A.G. and a Mercedes-Benz dealership summary judgment of non-infringement of the plaintiff's patent. Kenyon & Kenyon represented Bosch and the Mercedes-Benz companies in two appeals by the plaintiff before the Federal Circuit, which ultimately affirmed the lower court decision per curiam. In subsequent related litigation, Harold G. Abbey v. Mercedes-Benz of North America, Inc., a patent infringement suit in which Kenyon represented Robert Bosch Corp., Mercedes-Benz of North America, Inc., Volvo Cars North America Corp. and Jaguar Cars North America; we obtained summary judgment of res judicata.

    In 2005, Kenyon & Kenyon represented Robert Bosch, Volvo and Jaguar in an appeal by the plaintiff before the Federal Circuit, which ultimately affirmed the lower court dismissal of two of three claims asserted by the plaintiff. In October 2006, the court granted our motion to dismiss, with prejudice the remaining claims of the plaintiff in the litigation.

  • Impax Laboratories, Inc. v. Aventis Pharmaceutical, Inc.
    Case No. 05-1313 (November 29, 2006). Kenyon & Kenyon LLP client Impax Laboratories, Inc. announced that the United States Court of Appeals for the Federal Circuit ruled that the district court had erred in deciding, after trial, that the patent relating to the use of riluzole in treating ALS (Pat. No. 5,527,814) was valid. Thus, the Federal Circuit vacated that decision and remanded it back to the district court for further proceedings related to the validity issue of anticipation. Rilutek, marketed by Aventis for the treatment of amyotrophic lateral sclerosis (ALS), also known as Lou Gehrig's disease, had U.S. sales of approximately $37 million for the 12 months ended August 31, 2006, according to Wolters Kluwer Health.

  • Leapfrog Enterprises v. Fisher-Price, Inc.
    Case No. 03cv927 (April 3, 2006). Kenyon & Kenyon LLP client Mattel, Inc. prevailed in a patent infringement lawsuit brought against it by LeapFrog Enterprises, Inc. In the suit, LeapFrog alleged that one of its patents was infringed by the PowerTouch Learning System sold by Mattel's wholly-owned subsidiary, Fisher-Price, Inc. The U.S. District Court in Wilmington, Delaware, found that Mattel and Fisher-Price did not infringe the patent and that the asserted patent claim was invalid. The case, filed in October of 2003, was tried before a jury in May of 2005. The Court made several rulings during trial in favor of Mattel and Fisher-Price, including the exclusion of infringement under the Doctrine of Equivalents and certain damages theories. After seven days of testimony before the Honorable Gregory M. Sleet and three days of deliberation, the jury was unable to reach a unanimous decision and the case was submitted to Judge Sleet for decision.

  • Medtronic Vascular, Inc., et al. v. Boston Scientific Corporation
    Fed Cir 05APP1281 (May 26, 2006). In a major victory for Kenyon & Kenyon LLP and client Boston Scientific Corporation, the Court of Appeals for the Federal Circuit upheld a lower court ruling that the company does not infringe four Medtronic patents relating to coronary stents. In the suit, Medtronic asserted infringement by the NIR stent sold by Boston Scientific. Medtronic was seeking hundreds of millions of dollars in damages based on U.S. sales of the NIR stent. In 2005, Judge Robinson of the U.S. District Court in Delaware granted summary judgment of non-infringement, finding that the NIR stent does not infringe the Medtronic patents. Medtronic appealed that decision. In May 2006, the Court of Appeals for the Federal Circuit upheld Judge Robinson's ruling in all respects, agreeing that Boston Scientific's product was not within the scope of the Medtronic patents.

  • Paice LLP v. Toyota Motors Corp et al.
    Case No. 2:04cv211 (August 16, 2006). The U.S. District Court for the Eastern District of Texas denied plaintiff, Paice LLC's request for a permanent injunction in a patent infringement suit against the hybrid cars of Kenyon & Kenyon client, Toyota Motor Corporation. Plaintiff claimed that Toyota's hybrid cars infringed ten claims in three of Plaintiff's patents, U.S. Patent Nos. 5,343,970 (the "'970 patent"), 6,209,672 (the "'672 patent") and 6,554,088 (the "'088 patent"). The jury found that none of the ten claims were literally or willfully infringed, and that only two of the claims in one patent, claims 11 and 39 of the '970 patent, were infringed under the doctrine of equivalents. The jury also found that Paice was only entitled to a small fraction of the damages it sought for the two claims found infringed by equivalents. Toyota has appealed from the judgment finding two claims infringed, and plaintiff is expected to appeal the denial of its request for an injunction.

  • In re Marigny Corporation
    Serial No. 76294975 (June 22, 2006). The Trademark Trial and Appeal Board (TTAB) reversed a decision by the Trademark Examiner who had refused Kenyon & Kenyon client Marigny Corporation's registration of the mark WORLD CLASS GOURMET COFFEES and design, on the grounds that it resembled the mark WORLD CLASS COFFEES FOR WORLD CLASS PEOPLE. The Trademark Examiner had earlier refused the registration pursuant to Section 2(d), based on Registration No. 1486303 for WORLD CLASS and No. 1506184 for WORLD CLASSICS for coffee. Only one out of ten decisions pursuant to Section 2(d) is reversed by the TTAB.

  • In re Metoprolol Succinate Patent Litigation
    MDL-1620-RWS E.D. Mo. (Jan. 17, 2006). AstraZeneca accused our client KV Pharmaceutical Company of infringing two patents by filing an ANDA seeking approval to market a generic version of the blockbuster drug Toprol-XL (metoprolol succinate extended-release tablets), which in 2005 had U.S. sales of almost $1.3 billion. The district court ruled on summary judgment that both AstraZeneca patents were invalid for non-statutory (obviousness-type) double patenting, the one of the patents was further invalid as anticipated, and that both patents were unenforceable for inequitable conduct committed by AstraZeneca in failing to disclose to the P.T.O. an inventorship dispute in which, among other things, AstraZeneca told the Swedish Patent Office that metoprolol succinate had been invented by someone other than the named inventors.

  • Wireless Agents, LLC v. Amoi Electronics, Inc. et al.
    Case No. 1:06-cv-00492-SS (2006). Kenyon & Kenyon successfully represented Sony Electronics Inc. in the U.S. District Court for the Western District of Texas, dismissing the patent claims by Wireless Agents, LLC against our client with prejudice. While other defendants still remain in the case or paid to settle the case, our dismissal was granted without any payment to plaintiff. The technology involved in the case is related to handheld electronic communication devices.