Venable has a long record of accomplishment of achieving outstanding results in complex patent disputes. Our attorneys have successfully represented patent holders and defended accused infringers in federal courts, arbitration and mediation across the country, and before the International Trade Commission (ITC).
Our clients include Fortune 500 companies and emerging companies, as well as industrial and consumer product manufacturers. We have handled matters spanning a broad range of technologies, such as visual voicemail, software systems, vaccines, high-frequency digital battery chargers, flashlights, satellite components, targeted cancer therapies, and cryogenic surgical devices.
We work closely with clients to devise the most effective and efficient legal strategy for each case. We are committed to providing exceptional client service and added value as we help clients meet their goals.
A Robust Litigation Team
Venable’s Patent Litigation team is led by seasoned trial lawyers with significant experience handling complex, high-profile patent matters. These talented litigators are supported by Venable’s Patent Prosecution group, which boasts dozens of attorneys with advanced degrees in chemistry, biotechnology, immunology, physics, computer science, and electrical and mechanical engineering.
In addition, we call upon our skilled colleagues in Venable’s Government and Regulatory Affairs practices when issues involving FDA regulations, antitrust, tax, and government contracts, among others, arise. This is all part of our commitment to providing one-stop solutions to our clients.
Experience in Key Venues
Venable’s patent litigators have a proven track record in key "rocket-docket" venues in the Eastern District of Texas and the Eastern District of Virginia, and in federal court in Delaware, an increasingly popular patent venue. We have tried major patent cases before the International Trade Commission, and have extensive experience handling interferences, re-examinations and other post-grant proceedings before the U.S. Patent and Trademark Office. Venable’s litigators have also recorded wins in precedential appeals before the Federal Circuit and filed numerous amicus briefs in notable patent appeals.
Following is a sample of our patent litigation experience:
- Venable attorneys helped secure an ITC Administrative Law Judge ruling for a manufacturer of smallpox vaccines invalidating patent claims covering a particular virus strain. The litigation took place in the midst of bidding on a government contract to supply smallpox vaccine to the U.S. government as part of Project BioShield. In a companion case in federal court in Delaware, the trial judge granted our client’s motion for summary judgment, dismissing related claims for alleged theft of trade secrets and misappropriation of property, allowing our client to continue its vaccine work. Following that ruling, the parties reached a global resolution of the ITC and the federal court litigation.
- Venable took over as counsel for Wal-Mart and its vendor in a design patent case involving athletic shoes after a loss to Nike at trial, and went on to win two appeals before the Federal Circuit, successfully reducing the ultimate damages award from $6 million to $1.4 million. In the first appeal, in a precedential decision, the Federal Circuit agreed with Venable's argument that when a party seeks damages in the form of a defendant's profits, it must prove that the defendant had notice of the patent. In the second appeal, just three days after oral argument, the Federal Circuit affirmed the lower court’s substantial reduction in the damages award on remand. Venable then successfully opposed Nike's petition to the Supreme Court for further review.
- Venable obtained an award of nearly $12.5 million on behalf of fireplace manufacturer Dimplex North American Ltd. in an infringement suit in federal district court in Chicago. At trial, Venable attorneys presented compelling evidence that a competitor had copied Dimplex’s patent on a now widely used technology that simulates flames in electric fireplaces and stoves. Jurors ordered the competitor to pay $8.3 million in damages, and found that the company had willfully infringed the patent, which resulted in additional award of $4.1 million for Dimplex.
- Venable represented a food manufacturer in a patent suit brought by a competitor, which alleged that our client’s new food processing facility infringed a patent claiming the layout of a factory with a combination of food safety features. After intense discovery, expert report preparation, and claims construction activities, the case resolved with a satisfactory business solution.
- Venable represented defendant Summit Entertainment/Lionsgate in a patent infringement suit in which the plaintiff alleged that the process used to author DVDs and Blu-ray discs infringed its patent. The case was one of several cases the plaintiff asserted against many movie studios and DVD and Blu-ray device manufacturers. Venable was successful in securing a positive Markman ruling and winning a summary judgment motion of non-infringement under 35 USC § 271(g). The suit resulted in a favorable settlement for Summit Entertainment and Lionsgate.
- Venable represented plaintiff Software AG in a patent infringement suit against a competitor in a case involving computer network architecture. Venable conducted the pre-lawsuit investigation, headed licensing negotiations, and litigated the infringement lawsuit in the District of Delaware. The parties contested many issues, including venue, claim construction, reexamination and jury instructions, which were briefed and argued before the Court, with Venable winning the vast majority before the case settled. For example, Venable won an issue of first impression in the wake of the U.S. Supreme Court's Knorr-Bremse decision.
- Venable attorneys submitted a joint amicus brief to the Federal Circuit on behalf of the Biotechnology Industry Organization (BIO) and Pharmaceutical Research and Manufacturers of America (PhRMA) in connection with the court’s en banc review in Marine Polymer Technologies, Inc. v. Hemcon, Inc., a case involving whether and when intervening rights arise from post-grant proceedings, such as re-issue and re-examination proceedings.
- Venable attorneys submitted an amicus brief to the United States Supreme Court on behalf of a former U.S. Senator defending the Bayh-Dole Act, the patent law allowing universities to hold title to inventions arising from federally funded research.
- Venable represented a global leader in specialty chemicals and materials in patent litigation involving thermal management devices before the U.S. District Court for Delaware. The case settled on favorable terms following mediation.
- Venable is defending a mobile phone company in a case involving multiple patents related to operating systems used in mobile devices.
- Venable successfully defended the leading global surplus goods marketplace in a patent infringement case concerning Internet searching and sales. Even though the patents had been asserted in several prior litigations and licensed to hundreds of companies, Venable was able to obtain unique license terms favorable to our client.
- A Venable attorney represented a cellular telephone manufacturer in an appeal to the U.S. Court of Appeals for the Federal Circuit related to the scope and propriety of an Exclusion Order issued in a Section 337 investigation at the ITC. The appeal was successful and this landmark case will have a far-reaching effect on the ITC’s ability to issue Exclusion Orders against so-called "downstream products.”
- Venable won an appeal to the Federal Circuit of a lower court invalidity decision on a patent involving inflatable lawn decorations. Venable became counsel in the case after summary judgment had been entered against the client based on the "on sale bar." Upon taking over, Venable appealed the invalidity decision and secured a reversal, resuscitating the patent. The case ultimately settled.
- A Venable attorney represented a leading mosquito trap manufacturer in a series of patent infringement lawsuits, culminating in an action at the ITC and in Federal Bankruptcy Court. At the ITC, one respondent agreed to a consent order, removing its lead product from the marketplace. Another respondent defaulted, but when unable to proceed against it in U.S. District Court due to the respondent’s bankruptcy filing, the attorney pursued claims in Federal Bankruptcy Court. The Bankruptcy Court awarded the mosquito trap manufacturer possession of the respondent’s entire infringing product inventory, all of its intellectual property rights to the infringing product, and a significant cash amount.
- Venable successfully defended a major tool and consumer products manufacturer accused of infringing a patent covering miniature LED flashlight technology. After unearthing evidence that plaintiffs had intentionally withheld and misrepresented critical information during the reexamination of the patent, Venable attorneys convinced the Court to hold a separate bench trial on inequitable conduct. The Court ruled that the patent was unenforceable because of plaintiff’s misconduct, and our client recovered full attorneys’ fees and litigation costs.
- A Venable lawyer represented two major financial institutions in an infringement suit filed by a non-practicing entity in connection with patents for imaging paper checks. The case, which was brought in the Eastern District of Texas, ultimately settled on favorable terms for the financial institutions.