Patent Litigation

Patent litigation ranges from suits accusing infringement of a range of generic claims to complex litigation involving business-critical technology. Our patent litigation team works with you to understand your overall business goals and what is at stake in the suit – deciding to evaluate your specific needs for efficient solutions or staunch approaches to achieve desired outcomes.

After obtaining a landmark win at the ITC for client Navico against Garmin, we represented Navico once again in an enforcement proceeding against Garmin. As a result of our strong advocacy, the administrative law judge recommended the largest civil penalty in ITC history ($37 million). In addition, we won a favorable ruling at Customs and Border Protection (CBP) banning future products. The matter is on appeal at the ITC. Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof, Inv. No. 337-TA-921.
We represented Nokia Technologies Oy in a series of patent infringement actions involving 40 Nokia patents relating to video coding and compression. Apple agreed to an upfront cash settlement along with the payment of additional revenues, settling these actions domestically and worldwide. Foreign actions involved 10 countries in Asia and Europe, including Germany, Italy, and Japan. Certain Electronic Devices, Including Mobile Phones, Tablet Computers, and Components Thereof, Inv. No. 337-TA-1039; Certain Electronic Devices, Including Mobile Phones, Tablet Computers, and Components Thereof, Inv. No. 337-TA-1038; Nokia Technologies Oy, et al. v. Apple Inc., No. 2:16-cv-01440 and -01441 (E.D. Tex).
An earlier $106 million jury verdict win was augmented with an additional award of $14 million. In this case, our team won a permanent injunction for clients Mylan Inc. and Mylan Pharmaceuticals in a dispute against GlaxoSmithKline LLC regarding a breach of contract claim over the production and sale of a generic formulation of Paxil CR, a popular antidepressant. GSK had signed an agreement granting Mylan an exclusive right to market and sell paroxetine hydrochloride, the generic name for Paxil CR. Breach of this original agreement led to this new dispute, and after a nine-day trial, the jury found GSK breached that agreement by subsequently allowing a third party, Apotex, to sell generics of the drug. Mylan Inc., et al. v. SmithKline Beecham Corporation, et al., No. 3:10-cv-04809 (D.N.J.).
Alston & Bird filed a patent infringement lawsuit on behalf of Autoliv ASP Inc. against Hyundai Mobis and Mobis Alabama in the Middle District of Alabama. The lawsuit involves two patents, both directed to passenger airbag safety features that prevent injuries when occupants are too close to the airbag when the airbag deploys in an accident. The defendants filed petitions for inter partes review (IPR) of both patents-in-suit. We filed preliminary responses, which resulted in only partial institution of the IPR proceedings. These are both on appeal to the Federal Circuit. Following trials in the IPRs, the Patent Trial and Appeal Board (PTAB) issued a final written decision that the claims of the lead patent are not invalid, even though the vast majority of instituted IPRs end in the invalidation of the challenged claims. Autoliv ASP Inc. v. Hyundai Mobis Co. Ltd., No. 2:13-cv-00141 (M.D. Ala.).
We represented respondent Nokia in this investigation brought by three InterDigital companies, all of which are nonpracticing entities. In the complaint, InterDigital alleges infringement of seven U.S. patents that cover a range of wireless communication technology. The administrative law judge preliminarily determined that Nokia does not violate any of the patents at issue, which the ITC affirmed three months later. Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, Inv. No. 337-TA-868. We represented respondents Nokia Corporation and Nokia Inc. in another significant investigation brought by InterDigital Communications LLC. During the investigation, we obtained an injunction from the Southern District of New York against InterDigital’s pursuit of the case against Nokia due to an arbitration obligation. After the order was reversed on appeal, the ITC found that Nokia did not infringe any of InterDigital’s patents and terminated the investigation. Certain 3G Mobile Handsets and Components Thereof, Inv. No. 337-TA-613.
Alston & Bird achieved a favorable settlement for our client Nokia against Apple in four ITC proceedings and several patent litigation cases pending in federal courts in Delaware and Wisconsin. The patents-in-suit, totaling 47 U.S. patents and more internationally, covered smartphone and touch screen technology. The disputes drew extensive press coverage, dubbed by one publication as the “smartphone smackdown.”
Currently serve as lead counsel in patent disputes for Dell Inc. in many of the key patent jurisdictions in the U.S., including MOSAID Technologies Inc. v. Dell Inc., et al., No. 2:11-cv-00179 (E.D. Tex.); Optimum Power Solutions LLC v. Dell Inc., No. 6:11-cv-00505 (E.D. Tex.); Semiconductor Ideas to the Market BV v. Texas Instruments Incorporated, et al., No. 1:11-cv-00451 (E.D. Tex.); Big Baboon Corporation v. Dell Inc., No. 2:09-cv-01198 (C.D. Cal.); WIAV Networks LLC v. Dell Inc., et al., No. 3:11-cv-02352 (N.D. Tex.).
Represented Southwire Company in a case that was filed the day after the two defendants filed separate declaratory judgment actions against Southwire in the Northern District of Georgia. The actions have been consolidated and transferred to Georgia. The two consolidated cases include Encore Wire Corporation v. Southwire Company, No. 03:10-cv-00086 (N.D. Ga.) and Cerro Wire Inc. v. Southwire Company, No. 03:10-cv-00087 (N.D. Ga). Southwire Company v. Encore Wire Corporation, et al., No. 06:10-cv-00330 (E.D. Tex).
We served as lead counsel in all related district court and ITC litigation before settlement for Navico Inc., a leading provider of underwater sonar technology in the marine navigation industry. Raymarine Inc., et al. v. American GNC Corp., No. 2:10-cv-08077 (C.D. Cal.); Taranis IP LLC v. Garmin International Inc., et al., No. 1:10-cv-07502 (N.D. Ill.); Johnson Outdoors Inc., et al. v. Navico Inc., No. 2:10-cv-00067 (M.D. Ala.); and Certain Components for Installation of Marine Autopilots with GPS or IMU, Inv. No. 337-TA-738.
A group of our intellectual property litigators, working in tandem with our patent prosecution team, obtained a grant of summary judgment of noninfringement for our client UPS. The case, brought by WNS Holdings LLP, accused UPS of infringing two patents relating to aircraft collision avoidance technology. Our team obtained key admissions during discovery that produced this result. WNS Holdings LLC, et al. v. United Parcel Service Inc., No. 3:08-cv-00275 (W.D. Wis.). Following oral arguments at the Federal Circuit, the decision was affirmed.

Two veterinary pharmaceutical companies were found in violation of a court order barring them from infringing our client Merial Ltd.’s patent covering Frontline Plus, a successful flea and tick repellent for pets. The ruling judge found Cipla Ltd., based in India, in contempt of a default judgment; he also held that Velcera Inc. acted in concert with the offending company. An injunction was issued against Cipla, and any parties in concert with it, keeping it from making, selling, or importing in the U.S. any veterinary products containing the active ingredients cited in the patent. BASF Agro BV, et al. v. Cipla Ltd., et al., No. 3:07-cv-00125 (N.D. Ga.).
Defended Georgia-Pacific Consumer Products LLC against a number of defendant/respondents to prevent infringing knockoff paper towel dispensers that are potentially made in numerous countries. After conducting discovery on the named defendants and respondents, and researching other information concerning the industry as a whole and other paper towel dispensers that were not included in the litigation, we moved for summary determination that a domestic industry exists and that there had been violations of Section 337 by certain respondents. We also requested that the administrative law judge recommend entry of a general exclusion order. The judge granted that motion and requested that the ITC enter a general exclusion order banning all infringing products from importation into the U.S. Certain Electronic Paper Towel Dispensing Devices and Components Thereof, Inv. No. 337-TA-718.
We were brought in following trial to assist our client Eastman Kodak Co. through the administrative appeals process within the ITC to obtain reversal of an initial determination of no violation in Kodak’s offensive case against Apple and RIM, and to preserve an initial determination of no violation in Apple’s retaliatory case against Kodak. Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof, Inv. No. 337-TA-703; and Certain Digital Imaging Devices and Related Software, Inv. No. 337-TA-717. The latter case was affirmed in Kodak’s favor.
We represented appellant Merial in its appeal to the Federal Circuit from summary judgment of noninfringement concerning a porcine vaccine for postweaning multisystemic wasting syndrome. Our efforts resulted in the reversal of the claim construction and the summary judgment of noninfringement being vacated, and the case was remanded to determine infringement under the new, correct claim construction. Intervet Inc. v. Merial Ltd. No. 2009-1568 (Fed. Cir.).
We represented an industrial equipment manufacturer before the ITC in this investigation brought by Lincoln Electric Company. The case involved bulk weld wire packaged by our client in Mexico and China. The administrative law judge ruled favorably towards the respondents, including our client. Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire, Inv. No. 337-TA-686.
We represented AGA Medical Corporation against Medtronic Inc., which accused AGA’s innovative and life-saving products of infringing three patents that Medtronic alleged to cover expandable medical devices made of Nitinol and methods for using Nitinol devices. Medtronic had previously asserted its patents against many other medical device makers, all of whom had taken licenses. In this case, the court granted AGA Medical’s motion for summary judgment of noninfringement, ending Medtronic’s infringement claim under one patent and ending a portion of its infringement claim under a second patent. The court also granted AGA’s motion to preclude Medtronic from recovering pre-suit damages on its product claims. For the remaining patents, the case proceeded to a six-week jury trial on issues of alleged infringement and validity over prior art, and later to a 10-day bench trial concerning the issue of whether the product patent claims are invalid for double patenting. (No defendant previously sued by Medtronic had asserted invalidity based on double patenting.) Shortly after the conclusion of the bench trial on double patenting, but before any ruling by the court, Medtronic entered into a settlement agreement with AGA that gives AGA complete freedom to continue its activities without concern over infringement liability. Medtronic Inc. v. AGA Medical Corporation, No. 3:07-cv-00567 (N.D. Cal.).

Contacts

Natalie C. Clayton

Partner

New York

Phone: +1 212 210 9573

Email: natalie.clayton@alston.com

John D. Haynes

Partner

Atlanta

Phone: +1 404 881 7737

Email: john.haynes@alston.com

Highlights

                        Press Release

                        March 6, 2024

                        Alston & Bird Honored Again by Patexia as an ITC Market Leader

Alston & Bird has been ranked the No. 1 best performing firm overall representing complainants and respondents in Section 337 investigations conducted by the U.S. International Trade Commission (ITC).

                        Video

                        February 3, 2020

                        Mike Newton | The Changing Patent Troll Landscape
                    
                            Mike Newton, co-chair of the firm’s intellectual property area and partner in the IP litigation group, discusses the America Invents Act’s impact on non-practicing entity (NPE) litigation.

                        Video

                        July 11, 2018

                        Natalie Clayton | IP Litigation - Best Practices For Trying a Patent Or Technology-Heavy Case
                    
                            Natalie Clayton, partner in the Intellectual Property Litigation group and leader of the Biotechnology, Pharmaceutical & Life Sciences Patent Litigation team, discusses the import factors for making sure your technology-driven case is trial ready.