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Overview | Patent Litigation | Representative Patent Litigation Matters | Trademark Litigation | Copyrights | Representative Copyright Matters | Representative Trade Secrets and Unfair Competition Matters | Technical Litigation | Technical Litigation Representative Matters
Overview
Vinson & Elkins has established a record of success in obtaining, protecting, exploiting and enforcing our clients’ intellectual property rights, including patents, trademarks, trade dress, trade secrets and copyrights.
Our lawyers have successfully litigated patent, trademark, copyright and trade secret cases in state and federal district courts throughout the United States. And while the results of course depend on the facts of each matter, we also have obtained highly favorable judgments for our clients in a variety of appellate courts, including the Federal Circuit. Our clients regularly entrust us with matters covering a wide variety of complex technologies and a diverse range of business enterprises.
Our lawyers also represent clients in matters involving the laws of unfair competition, false advertising, non-competition covenants, related antitrust matters, e-commerce, Internet and domain name-related issues, computer-related contracts, franchising agreements, licensing agreements, outsourcing agreements, non-disclosure agreements, distributorship arrangements and other technology-related transactions.
Patent Litigation
Vinson & Elkins has a proven record of success in patent litigation for our clients—in trial courts across the country and in appeals before the Federal Circuit. We have experience with sophisticated technology in diverse fields such as aerospace, biotechnology and the bio-sciences, chemical compounds and processes, computer hardware and software, electronics, Internet systems and services, lumber processing, medical devices and products, oil and gas exploration and production, pharmaceuticals and semiconductors.
We attribute our success to our knowledge and experience in patent litigation and to our familiarity with clients’ technology. Modern patent litigation is often won or lost at the claim construction stage of proceedings—the Markman hearing. Since 1995, our lawyers have conducted over 50 Markman hearings—achieving a successful and decisive claim construction from the courts in the vast majority of these cases. Our success before the Federal Circuit is no different—we have obtained favorable decisions for our clients in nearly every appeal we have handled.
We represent clients seeking to enforce their patent rights as well as clients defending against the assertion of another’s infringement claims. We consider a wide spectrum of fee arrangements with our clients, including contingent fee representation, fixed fee, hourly rates and innovative combinations of the above.
While the results of course depend on the facts of each case, we list below some representative successes for our clients:
Representative Patent Litigation Matters
Our lawyers have a broad base of successful patent litigation experience, including Markman hearings, jury trials and appeals to the Federal Circuit. Our lawyers have successfully represented:
- ProstaLund, a Swedish medical device company, in a dispute in Milwaukee involving two patents related to microwave technology for the treatment of benign prostatic hyperplasia. The plaintiff sought to prevent our client from entering the U.S. market by filing two preliminary injunction motions in early 2002. We attacked by not only opposing the preliminary injunctions but by also filing three summary judgment motions. The court denied the preliminary injunctions, invalidated one of the patents and provided a favorable claim construction on the other patent in October 2002.
- Motorola, Inc. in a lawsuit filed by the inventors of a patent that covered a system for preventing human error in the loading of component parts in the high speed robotic assembly machine that manufactures circuit boards. The lawsuit, which also implicated several other manufacturers, resulted in a summary judgment on all 28 patent claims. Motorola was awarded its legal costs.
- Dow Chemical in major patent litigation in May 2002, when Sumitomo capitulated and paid Dow over $45 million to settle the case shortly before trial. Trial was set after Dow was successful in having the Federal Circuit reverse several adverse claim constructions on appeal, and remand the case for trial. The litigation lasted over 5½ years and was fought in Bay City, Michigan and Wilmington, Delaware. Dow was also successful in four reexaminations filed by Sumitomo during the litigation.
- Internet service provider Prodigy Communications Corporation in a patent infringement litigation brought in White Plains, New York, by British Telecommunications PLC. BT accused Prodigy of infringing BT's claimed "hypertext patent" by providing access to the Internet for Prodigy's customers. BT reportedly expected to recover several billion dollars from the U.S. Internet service providers after successfully suing Prodigy. However, after obtaining a case dispositive construction of the claims in a Markman hearing in March 2002, Prodigy secured a summary judgment of non-infringement in August 2002. BT decided not to appeal the district court's decision.
- Chesapeake Energy Corporation against allegations by Union Pacific Resources Company that Chesapeake had infringed on a patent, misappropriated trade secrets and tortiously interfered with a contract. The technology in question involved computerized logging methods for determining the location of a well borehole within the earth. The judge granted summary judgment on all of Union Pacific's state law claims, and after a lengthy trial on the patent claim, found it invalid.
- Minnesota Mining and Manufacturing Company ("3M") on appeal of an infringement case against Canadian corporation Chemque, Inc. before the Federal Circuit The dispute centered on chemical encapsulation technology for use in the telecom industry. A finding of invalidity at the district court below was successfully reversed on appeal in August 2002 and the case was remanded to the district court for purposes of a damages determination. Upon remand, the district court entered an injunction for 3M against Chemque, prohibiting any further sales of Chemque's infringing encapsulent for use with signal transmission devices. The case subsequently settled on terms very favorable to 3M.
- A major family-owned lumber company in Louisiana in a dispute over lumber processing and drying techniques and related equipment used to minimize or eliminate certain types of stains in processed hardwood lumber. A favorable settlement in early 2002 was reached just prior to trial based in large part on our client's strong invalidity and unenforceability position. The highly favorable settlement terms for our client were a fraction of the estimated costs of conducting the jury trial itself.
- Auto Wax Co., Inc. in a two week jury trial in July 2001 in Dallas TX. The jury found for our client Auto Wax on all counts, upholding the validity of Auto Wax's patent and finding that the defendant willfully infringed both Auto Wax's patent and trademark. Following the jury's verdict, the Court also awarded Auto Wax treble damages and its lawyers' fees.
- A major semiconductor manufacturer in a patent infringement suit in the U.S. District Court for the Northern District of California. The dispute was over methods of testing for "hot spots" in semiconductor chips or wafers. The case was favorably settled for our client in June 2001.
- Cyrix Corporation in a dispute with Intel over microprocessor technology. Cyrix sought a declaration that it had not infringed upon Intel patents, and that Intel had violated antitrust laws and tortiously interfered with Cyrix's business relations. In a bench trial over Cyrix's math co-processors, Cyrix prevailed. Two weeks into a jury trial a second case involving Cyrix's microprocessors settled, with Intel paying Cyrix $20 million. Intel also withdrew its patent infringement claims and licensed additional microprocessor technology to Cyrix.
- 3M in a patent infringement case against Desco Industries, Inc. The dispute was over the type of disposable wrist grounding straps included in a do-it-yourself kit common in the computer industry. Shortly after filing the suit, Desco admitted it had infringed upon a valid patent and agreed to an injunction.
- 3M in a dispute involving patents embodied in medical devices used by 3M customers in bypass surgeries. Our client was originally accused of both antitrust violations and patent infringement by International Biophysics Corporation, but we turned the tables in litigation. The antitrust claim against 3M was dismissed through summary judgment and 3M was realigned as plaintiff after we filed an infringement counterclaim in the original litigation. (This case was settled favorably for 3M immediately before the trial commenced in Los Angeles.)
- Western Atlas International in reaching a highly favorable settlement of claims for patent infringement related to offshore seismic data analysis and imaging.
- A major biochemical company in patent litigations in Delaware involving several key patents in the biochemical field, obtaining a jury verdict of non-infringement and invalidity for all patents involved and defeating damages claims approaching $200 million.
- Gambro (formerly COBE Laboratories), a manufacturer and provider of blood apheresis equipment, as defendant in an extended patent litigation in Chicago involving seven patents asserted by one of the major healthcare equipment providers. Issues included interference, collateral estoppel, Walker process claims, unclean hands, inequitable conduct and damages claims approaching $900 million; summary invalidation of one key patent based on prior use was affirmed by the Federal Circuit; success in every Markman hearing led to either a stipulation or a summary judgment of no infringement of any of the asserted patents; these successes, coupled with a successful reversal, without remand, by the Federal Circuit of all adverse findings of the district court in Denver, in a countersuit we filed for Gambro Lundia AB for infringement of its patent relating to dialysis equipment, led to an extremely favorable settlement of all issues in 1997.
- Agricultural biotechnology corporations in complex litigation regarding transgenic plant technology
- A major semiconductor manufacturer in multi-patent litigation in the Western District of Texas seeking injunction and damages
- Chemical companies in patent infringement, trade secrets, and departing employee litigations in district courts in Chicago, Houston, Wilmington and Bay City relating to various chemical processes and resins
- Numerous clients in appeals to the Federal Circuit from cases handled in district courts, including securing a favorable reversal, without remand, of an adverse district court judgment on derivation, obviousness, and inequitable conduct
- A substantial group of machine tool companies as defendants in a significant patent infringement case in Delaware, involving flexible manufacturing systems and claims of several hundred million dollars (district court awarded lawyers' fees and found litigation misconduct, inequitable conduct and unenforceability of all patents asserted by plaintiff; affirmed by Federal Circuit)
- A large oil company, one of its subsidiaries, and a licensee in a number of patent litigations in district courts in Houston, Chicago and Kansas City relating to various catalyst systems and chemical processes
- An energy company defending against a claim of patent infringement in connection with methods for analyzing geological information from oil and gas wells
- A manufacturer of touch screens and related equipment, defending against claims of infringement of various touch screen patents
Trademark Litigation
Defense and enforcement of rights is a vital component in maintaining a valuable trademark portfolio. We are experienced in conducting negotiations and, when necessary, all phases of litigation in the state and federal courts, defending clients’ trademark investments and enforcing clients’ rights against wrongdoers who threaten them. In addition to state and federal court actions, our lawyers represent clients in proceedings before the Trademark Trial and Appeals Board and in ICANN dispute proceedings.
Copyrights
Vinson & Elkins routinely advises clients in copyright and related matters and has a proven litigation record in the area of copyright law. We have successfully represented a variety of software companies, computer companies, Internet content providers, performing arts societies, museums and various corporations regarding copyright issues.
Representative Copyright Matters
A few representative copyright matters handled by our lawyers are shown below:
- represented major record label in licensing dispute involving Tejano music; obtained partial summary judgment on majority of causes of action and case settled favorably after mediation
- defended cable television company in copyright infringement suit
- restored copyrights and trade secrets on behalf of BMC Software, Inc. At trial the jury found that CDB Software, Inc. had infringed upon a copyright and misappropriated trade secrets, and the court entered judgment on the jury's verdict
- defended a chemical company from claims of copyright infringement, misappropriation of trade secrets and the like in connection with a dispute over custom software
- represented a film distributor in a dispute with the film producer
- obtained a summary judgment in federal court on behalf of major licensor of copyrighted seismic materials
Representative Trade Secrets and Unfair Competition Matters
Our lawyers have proven expertise in the law of trade secret misappropriation, unfair competition, covenants not to compete, nonsolicitation agreements and "departing employee" disputes. We have successfully litigated a wide variety of cases involving such issues. Additionally, we frequently counsel clients regarding their transactions and business activities that relate to these areas of the law.
In trade secret and unfair competition matters, our lawyers have:
- obtained judgment and lawyers' fees for defendant corporation in trade secret litigation
- obtained favorable settlement for Mylan Laboratories in trade secrets case
- represented several major companies in trade secrets and departing employee litigations in courts in Texas
- represented Fortune 100 companies in trade secrets litigations in various district courts
- represented major companies in departing employee litigations in courts in California, Texas, and Idaho
- litigated on behalf of an insurance brokerage company in an employee raiding/non-solicitation of customers and employees suit against competitor and four former employees; obtained temporary injunction regarding nonsolicitation of customers and employees which was affirmed in published opinion as to all but one former employee on appeal
- represented oil field services company in covenant not to compete/trade secrets case (defeated request for injunction against enforcement of covenant not to compete after evidentiary hearing and case settled on favorable terms)
- defended chemist sued by former employee based on a covenant not to compete and trade secrets misappropriation; negotiated prompt settlement allowing chemist to work for competitor
- represented former equipment manufacturer in false advertising and trade secrets case; case settled after successfully transferring case to manufacturer's forum
- defended a major oil field chemical company in a covenant not to compete dispute involving client's hiring of employees; obtained ruling that covenants not to compete were invalid
- obtained a temporary restraining order, temporary injunction and permanent injunction in state court on behalf of a manufacturer asserting misappropriation and theft of trade secrets
- obtained the dissolution of an ex parte temporary restraining order that had been entered against a contractor and obtained a dismissal of the case
Technical Litigation
Our technical litigation practice at V&E; includes lawyers with substantial experience in understanding complex technologies combined with the litigation skills necessary to develop clear and understandable trial presentations and strategies. Our technology knowledge covers a broad spectrum of processes and industries, from computers and telecommunications to biotechnology and nuclear reactors. Our litigation experience includes trials of disputes related to contract issues, tort, products liability, intellectual property, and construction issues, where technology is often at the heart of the dispute.
V&E; is ranked among the world's top trial firms by Commercial Litigation magazine, and The Texas Lawyer has listed V&E; as the firm named most often as outside counsel to Texas-based Fortune 500 companies.
Our technical litigators include trial lawyers experienced in all areas of technology-related disputes, including contracts, tort, products liability, intellectual property, construction, trade secret and unfair competition claims.
Technical Litigation Representative Matters
We list below some matters illustrating our experience. Results depend upon the facts of each case.
For Plaintiffs, our lawyers have:
- Represented Cyrix Corporation in a dispute with Intel over microprocessor technology. Cyrix sought a declaration that it had not infringed upon Intel patents, and that Intel had violated antitrust laws and tortiously interfered with Cyrix's business relations. In a bench trial over Cyrix's math coprocessors, we prevailed. Two weeks into a jury trial a second case involving Cyrix's microprocessors settled, with Intel paying Cyrix $20 million. Intel also withdrew its patent infringement claims and licensed additional microprocessor technology to Cyrix.
- Secured a multi-million dollar verdict for the Life Insurance Company of Georgia against Electronic Data Systems in a software dispute. The Fifth Circuit later affirmed the judgment.
- Restored copyrights and trade secrets on behalf of BMC Software, Inc. At trial the jury found that CDB Software, Inc. had infringed upon a copyright and misappropriated trade secrets, and the court entered judgment on the jury's verdict.
- Preserved the patent rights of Minnesota Mining and Manufacturing Company in an infringement case against Desco Industries, Inc. The dispute was over the type of disposable wrist grounding straps included in a do-it-yourself kit common in the computer industry. Shortly after filing the suit, Desco admitted it had infringed upon a valid patent and agreed to an injunction.
- Turned the tables in a case in which defendant 3M was originally accused of both antitrust violations and patent infringement by International Biophysics Corporation. This involved patents embodied in medical devices used by 3M customers in performing bypass surgery. The antitrust claim was dismissed through summary judgment and 3M was realigned as plaintiff due to our filing of an infringement counterclaim in the original litigation. (This case was settled favorably for 3M immediately before the trial commenced in Los Angeles.)
For Defendants, our lawyers have:
- Defended Motorola, Inc. in a lawsuit filed by the inventors of a patent that covered a system for preventing human error in the loading of component parts in the high speed robotic assembly machine that manufactures circuit boards. The lawsuit, which also implicated several other manufacturers, resulted in a summary judgment on all 28 patent claims. Motorola was awarded its legal costs.
- Defended Chesapeake Energy Corporation against allegations by Union Pacific Resources Company that Chesapeake had infringed on a patent, misappropriated trade secrets and tortiously interfered with a contract. The technology in question involved computerized logging methods for determining the location of a well borehole within the earth. The judge granted summary judgment on all of Union Pacific's state law claims, and, after a lengthy trial on the patent claim, found it invalid.
- Protected several technology clients in the face of breach of contract, fraud, misappropriation of trade secrets and patent infringement claims. For Ascom Hasler Mailing Systems, Inc., allegations of breach of contract, fraud and other torts were dismissed after extensive discovery. For Mylan Laboratories, we obtained a settlement in the face of accusations of trade secret misappropriation. We also reached a favorable settlement on behalf of Western Atlas International on claims of patent infringement.
- Freed NEC Electronics Corporation from what became a multi-billion dollar class action litigation on behalf of owners of Toshiba laptop computers. They alleged that the computer's floppy disk controller could cause data to be corrupted or lost when written to floppy disks. Toshiba had copied that controller, without permission, from an NEC design in the mid 1980's, and NEC was the original target defendant in this case. After demonstrating that NEC had discovered, corrected and publicized the flaw in its original design years ago, NEC was dismissed as a defendant.
- Eliminated a controversy over contraceptive technology developed by a research scientist at Baylor College of Medicine. The scientist sued Baylor, investors and a prominent Houston law firm seeking $80 million in damages and rescission of a 1983 agreement to commercialize the technology. We obtained summary judgment on limitations grounds and settled the case on favorable terms while it was on appeal.
In Governance Matters, our lawyers have:
- Prevailed when the Department of Defense accused Science Applications International Corporation of defaulting on a contract to integrate the medical and pharmaceutical records of all of its institutions worldwide. As the Defense Department attempted to terminate the contract we filed a protest and a $250 million counterclaim. The matter was settled favorably for the company and the contract was extended by five years.
- Balanced the tax rates charged to wireline and wireless telecoms providers by the state of Texas in the funding of what is known as the Telecommunications Infrastructure Fund. The fund was created to provide educational technology, distance learning and telemedicine programs in the state. Wireless carriers were required to pay more than four times the amount required of wireline providers. Hired by GTE, the firm assisted in convincing the court to strike down the disparate tax rates.
- Petitioned successfully against a plan by the Texas Public Utilities Commission that would have restricted wireless carriers to a new wireless-only area code in Dallas and Houston. We petitioned in state court for judicial review and worked with GTE wireless in-house counsel in a companion proceeding before the FCC. The FCC issued a declaratory order that directly resulted in the PUC agreeing to abandon the wireless-only area code proposal.
- Intervened, on behalf of GTE Wireless, with the Texas 9-1-1 Commission after it had enacted rules requiring wireless carriers to pay 9-1-1 fees even though legislation intended to require the fees had failed in the previous legislative session. As the matter was pending before the Third Court of Appeals, we reached an agreement on proposed new legislation that resolved the controversy.
- Turned back an attempt by the IRS to access all of the software source code belonging to BMC Software. In conjunction with BMC and other software companies, we worked for a change in the Internal Revenue code that makes it more difficult for the IRS to obtain software source code.
- Repeatedly refuted claims against Shell Oil Company filed by municipalities and/or water supply corporations over the alleged failure of cold water service pipes made from polybutylene resin. In each case we applied polymer chemistry and demonstrated the inaccuracy of technical claims that the pipe oxidizes prematurely in certain applications. Although some claims are still pending, approximately 15 have been successfully resolved.
- Overcame allegations by the San Antonio water system that our client, software developer EMA, Inc., was guilty of misrepresentation and breach of contract. We also prosecuted cross-claims against a database developer. Our motion to dismiss was granted, in part, and the rest of the claims subsequently settled on terms favorable to EMA.
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