District Court Patent Infringement Actions

From 1988 to present, litigated actions throughout the country including Texas, California, Delaware, Wisconsin, Ohio, Florida, and Utah involving diverse technologies ranging from semiconductors, flash memory, home appliances, flexible polyurethane foam, and downhole oilfield tools and systems.  Most recently, lead counsel in the following actions representing Plaintiffs and Defendants noted in bold:

Carson et al. v. Flexible Foam Products, Inc. (N.D. Ohio) – Representation of Patent Owners enforcing a polyurethane foam process patent.

Applica Consumer Products, Inc. v. PetSmart, Doskocil, PetCo, and OurPets (E.D. Tex.) – Representation of Patent Owner in multiple suits enforcing a home appliance patent.

Azure Networks v. Microchip Technology Inc. et al. (E.D. Tex.) – Representation of Defendant in a suit involving an encryption patent.

Commonwealth Research Group v. Microchip Technology Inc. et al. (E.D. Tex.) – Representation of Defendant in a suit involving a patent directed to a system for conserving energy in integrated circuits.

Smart Foundry Solutions L.L.C. v. Microchip Technology Inc. (C.D. Cal.) – Representation of Defendant in a suit involving a semiconductor manufacturing patent.

Precision Energy Services, Inc. v. ThruBit L.L.C. (S.D. Tex.) – Representation of Defendant in a patent suit involving a downhole tool conveyance system.

Schlumberger Technology Corporation v. Weatherford International, Inc. et al. (E.D. Tex.) – Representation of the Patent Owner enforcing a downhole telemetry system patent.

Keranos L.L.C. v. Silicon Storage Technology Inc. et al. (E.D. Tex.) – Representation of Defendants in a multiple patent suit involving flash memory architecture, manufacturing and programming.

Schlumberger Technology Corporation v. BICO Drilling Tools, Inc. (E.D. Tex.) – Representation of Patent Owner to enforce a patent on a downhole mud motor and stator.

Charge Lion, L.L.C. v. Microchip Technology Inc. (E.D. Tex.) – Representation of defendant in a suit involving a patent on an alkaline battery charging method and battery charger.

Gordium Innovations v. Standard Microsystems Corporation (D. Del.) – Representation of defendant in a suit involving a patent on a method and an apparatus for reducing latency delay associated with converting asynchronous serial digital data to packet data.

Parallel Separations Innovations, L.L.C. v. Schlumberger N.V. et al. (E.D. Tex.)  – Representation of defendants in a suit involving a patent on a shale shaker apparatus.

MCU Clocking Solutions, Inc. v. Microchip Technology, Inc. (N.D. Cal.) – Representation of defendant in a suit alleging infringement of a patent on a circuit and method of detecting and selecting clock sources.

Paone v. Microchip Technology Inc. (E.D.N.Y.) – Representation of defendant in a suit alleging infringement of a patent on an encryption method utilizing a block cipher.

International Trade Commission Proceedings

Litigation of multiple ITC Section 337 actions throughout career, including as an associate, partner and as lead partner involving such diverse technologies as chemotherapy pharmaceuticals to home appliances. Most recently, lead partner in ITC action involving the enforcement of a home appliance patent assigned to Applica Consumer Products, Inc. now Spectrum Brands, Inc. One respondent agreed to cease importation before the hearing with the action proceeding against two respondents. Successfully obtained an Exclusion Order barring the further importation of infringing appliances into the United States.

Federal Circuit Appeals

Appearance in multiple appeals to the Court of Appeals for the Federal Circuit, most notably as the lead in two winning first chair appearances in Doyle et al. v. Crain Industries, Inc. involving a patent for the manufacture of polyurethane foam.

Worldwide Product Clearances

• Involved in multiple product line clearances covering the United States and Europe including varied technologies, most notably in fields of medical devices, explosives, fracturing systems and automotive systems.

US/Worldwide Patent Portfolio Management

• Managed worldwide patent portfolios in the semiconductor and home appliance fields.
• Managed United States patent portfolios in the automotive, telecommunications, medical device, and semiconductor fields.

Representative Clients

• Covidien Ltd. (medical devices) – Counsel regarding patent enforcement and infringement defense strategies and risks (U.S. and Europe); management of domestic and international patent application preparation and prosecution; patent portfolio management; acquisition IP due diligence.
• Infineon Technologies AG (semiconductors) – Counsel regarding patent enforcement and infringement defense strategies and risks; negotiation of patent portfolio licenses; and management of U.S. patent application filings and prosecution.
• Applica Consumer Products Inc. (home appliances) – Management of patent enforcement and infringement defense (Federal District Court actions and International Trade Commission proceedings) for Black and Decker® and George Foreman® branded products; management of domestic and international patent application filings and prosecution for Black and Decker® and George Foreman® branded products; management of worldwide trademark portfolio.
• Siemens AG (automotive/automation) – Counsel regarding patent enforcement and infringement defense strategies and risks; management of U.S. patent application filings and prosecution.
• Microchip Technology Incorporated (microcontrollers) – Management of patent infringement defense; counsel regarding patent enforcement and infringement defense strategies (U.S. & Europe); management of domestic and international patent application preparation and prosecution; patent portfolio management.
• Conoco (production systems) – Counsel regarding patent infringement defense strategies.
• Volkswagen AG (automotive) – Counsel regarding patent infringement defense strategies; management of U.S. patent application filings and prosecution.
• Schlumberger Technology, Corp. (oilfield services) – Management of patent enforcement and defense suits.
• Amylex Corporation (biodegradable materials) – Founder and Manager of domestic and international intellectual property assets.