United States: Intellectual Property Litigation

Milbank secures summary judgment victory for Apple for patent infringement claims

Milbank represents Apple in a patent infringement suit brought by NetAirus Technologies, LLC, a non-practicing entity. NetAirus accused the Apple iPhone of infringing its patent that requires transmission of voice and data over cellular and Wi-Fi. We successfully argued on summary judgment before the United States District Court for the Central District of California that these features were enabled by the Apple Newton prior art long before the inventor conceived of the patent-in-suit. The court agreed and invalidated two of the major claims of the patent-in-suit, effectively gutting the plaintiff ’s case. Apple also filed a request for reexamination before the USPTO. We continue to represent Apple as to those amended claims and anticipate additional motion practice on the invalidity of these claims.

In jury trial, Milbank successfully defends Canon U.S.A. from patent infringement claims

Milbank represented Canon U.S.A., Inc., a wholly owned subsidiary of Canon Inc. of Japan, in a patent infringement litigation filed by Tarkus Imaging, Inc. Tarkus brought suit in January 2010 against Canon and its co-defendants in the United States District Court for the District of Delaware. The lawsuit asserted infringement of a patent directed to a pictorial digital image processing method incorporating adjustments to compensate for dynamic range differences. Canon’s accused products included certain inkjet printers, all-in-one printers, and related software.

After a two-week jury trial in June 2012, Milbank obtained a favorable verdict from the Delaware jury, which determined that Canon did not infringe any of the asserted claims of the patent. The jury also ruled that Canon’s codefendant, Adobe Systems, Inc., did not infringe Tarkus’s patent. Canon and Tarkus brought an end to the litigation by resolving all claims and defences over the digital imaging patent and dismissing the case with prejudice.

Milbank defeats protective order and wins important motions in accelerated discovery

Milbank represents SI Group, Inc., a leading maker of rubber resins used in tire manufacturing, in a major trade secret misappropriation investigation in the United States International Trade Commission under Section 337 of the Tariff Act. In May 2012, SI Group filed a complaint against Sino Legend (Zhangjiagang) Chemical Co., Ltd. and related entities and individuals alleging that the respondents misappropriated SI Group’s trade secrets concerning its rubber resin manufacturing process when they hired SI Group’s plant manager and almost immediately began manufacturing admittedly identical rubber resin products. We are seeking an injunction against the continued importation of respondents’ rubber resin products manufactured using the misappropriated process. We defeated respondents’ motion for a protective order, forcing respondents to disclose important information about their manufacturing process, and we were successful on important motions seeking discovery into respondents’ communications with SI Group’s former plant manager. Leading up to an evidentiary hearing in April 2013, the parties have concluded rigorous expedited discovery, which included conducting 25 depositions in less than one month’s time.

Milbank defends Fujitsu in critical patent litigation involving telecommunications

Milbank is defending Fujitsu Network Communications in a patent infringement litigation filed by Cheetah Omni, LLC against FNC and others. Cheetah accuses the defendants of using its patented technology in their Reconfigurable Optical Add Drop Multiplexer products. ROADMs allow optical signals to be switched by service providers such as Verizon and AT&T without converting those signals to electrical currents. ROADMs are widely deployed to handle the growth of high-bandwidth telecommunications generated by smartphones and tablet computers. FNC is a major player in the $4.5 billion North American market for ROADM products.

This case is of great significance as it involves a multi-billion dollar product line at the heart of the U.S. telecommunications industry, and involves all of the major ROADM providers in the North American market. Milbank and other defendants in the case set forth multiple invalidity and non-infringement arguments, and are preparing for claim construction briefing and a hearing in the early part of 2013.

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