Patent Infringement

Leason Ellis Obtains Complete Victory in East Texas on Summary Judgment

Leason Ellis client Repro Med Systems, Inc. dba RMS Medical Products (OTCQX: REPR) (“RMS Medical”) was awarded summary judgment of non-infringement and costs in a patent infringement action filed in the Eastern District of Texas in 2015. The Complaint filed by EMED Technologies Corporation alleged that RMS Medical’s needle sets, approximately 60 different products, infringe U.S. Patent No. 8,961,476 and sought unspecified damages. On June 24, 2019, United States Magistrate Judge Payne issued a Report and Recommendation that there was no infringement, literally or under the doctrine of equivalents. On June 26, 2019, the patent owner EMED Technologies Corp. filed objections, arguing that the Magistrate Judge made three errors. On June 28, 2019, United States District Judge Gilstrap overruled the objections and adopted the Magistrate Judge’s decision, entering final judgment, awarding costs to RMS Medical, and dismissing the case.  Leason Ellis attorneys Robert Isackson, Matthew Kaufman, Henry Gabathuler and Hoda Rifai-Bashjawish represented RMS Medical.

EMED Technologies Corporation v. Repro-Med Systems, Inc. 2:15-CV-01167-JRG-RSP (EDTX)

Leason Ellis secures complete settlement in patent and trademark infringement suit on eve of trial in the Eastern District of Texas

Leason Ellis secured a complete victory for its clients Cargo Floor B.V. and MagniDrive B.V., defending a patent infringement action in the United States District Court for the Eastern District of Texas.  Cargo Floor, known worldwide as the global leader in the reciprocating floor market, was originally sued by its main competitor Keith Manufacturing Co. and accused of infringing multiple patents covering technologies used in the horizontal loading and unloading of cargo trailers.  Keith’s damages experts calculated its alleged damages to be more than $8.5 billion.  Leason Ellis developed an effective defense strategy, including alleging antitrust violations and patent invalidity and noninfringement, that ultimately provided Cargo Floor the leverage to secure unrestricted access to the U.S. market for its entire product line, freeing both its customers and resellers from future threats of patent and trademark infringement.

Win Leads to Million Dollar Settlement in favor of Patent Owner

Representing two inventors, Dr. Philip Pecorino and Mr. Aldo Medaglia, as well as their exclusive licensee, VisionArt, in a patent infringement case against Vutec Corporation, the firm achieved a major victory in the case.  Judge Pamela Chen of the U.S. District Court for the Eastern District of New York (Brooklyn) issued an Order granting summary judgment that U.S. Patent No. 5,264,765 for a Video Display Screen Cover was valid and enforceable, and that Vutec is liable for patent infringement.   After obtaining Summary Judgment of Validity and infringement from the U.S. District Court for the Southern District of New York, the Defendant filed an appeal and then filed for bankruptcy.  However, Leason Ellis attorneys were able to negotiate a settlement of the case which resulted in a seven figure damages payment by the defendant.

PECORINO ET AL. V. VUTEC CORP. ET AL., 11-CV-6312 (PKC) (E.D.N.Y.)

Markman Victory

In a patent infringement lawsuit pending in the District of Delaware, following Markman determinations, Leason Ellis attorneys analyzed the claims asserted against one of its client’s products, and determined that the Plaintiff’s infringement position was objectively unreasonable.  After notifying the Plaintiff that we would seek sanctions, Plaintiff agreed to voluntarily dismiss with prejudice the patent claims relating to that product.

Out of Light, Out of Mind

Leason Ellis represented Plaintiff Cobalt Light Systems Inc. ("Cobalt"), in defending its proprietary Raman spectroscopy technology.  A pioneer in non-invasive, through-barrier chemical analysis for applications in airport security, hazardous chemical ID and pharmaceutical QC, Cobalt’s proprietary technologies use novel variants of Raman spectroscopy to rapidly and accurately identify materials hidden inside objects or through opaque barriers.  With Matthew Kaufman at the helm, suit was filed in the U.S. District Court for the Eastern District of Virginia against a start-up attempting to misappropriate Cobalt’s patented materials-identification techniques, which prompted the Defendant to quickly agree to settlement discussions.  Matthew successfully negotiated an agreement that protected his client’s interests without necessitating discovery and trial.

COBALT LIGHT SYSTEMS, INC. V. MKS TECHNOLOGY LLc, 15-CV-1566 (e.d.v.a) 

Encore as Good as First Act

After reaching a confidential settlement of a patent infringement action involving U.S. Patent No. 6,332,646 covering folding chairs, our client was concerned to see the accused chairs once again in defendant's stores.  Leason Ellis brought a second litigation against the defendant for alleged willful infringement of the patent.  Shortly thereafter, we negotiated another settlement on terms favorable to our client, and dismissed the lawsuit with prejudice. 

Turning Infringers into Customers

Leason Ellis attorneys Yuval Marcus and Cameron Reuber negotiated a confidential settlement and license agreement after commencing a patent and trademark infringement lawsuit on behalf of JDS Therapeutics, LLC and Nutrition 21, LLC against SuperNutrition Life-Extension Research, Inc.  While the terms of the settlement are confidential, the parties have announced that as part of the settlement, SuperNutrition has agreed to license Nutrition 21’s various chromium polynicotinate patents and its Chromax and Niachrome trademarks, and utilize Nutrition 21’s Niachrome brand of chromium polynicotinate for its applicable formulation needs.

JDS THERAPEUTICS, LLC AND NUTRITION 21, LLC V. SUPERNUTRITION LIFE-EXTENSION RESEARCH, INC., 14-cv-2884 (S.D.N.Y.)

Declaratory Judgement Action leads to Swift Settlement

Leason Ellis represented Plaintiff Blue Box Toys in a declaratory judgment ("DJ") action in the U.S. District Court for the District of New Jersey seeking invalidity of several patents asserted by a notorious patent troll.  In response to threats to sue for infringement, Matthew Kaufman and Henry Gabathuler initiated the DJ action in a move to obtain a finding of unenforceability on the basis of the patent owner violating a Terminal Disclaimer entered into during prosecution.  The action prompted a favorable settlement for our client without the need for discovery. 

Blue Box Toys, inc. v. david joseph catanzaro, 15-cv-01929 (D.N.J.) 

Making Peace

Without having to file an answer, the Leason Ellis litigation group was able to get the plaintiff to drop the suit on the basis of a prior license with an affiliated company.

Blackbird Tech. LLC v. Letian Lighting, 16-CV-01044 (D.Del.)

Patents relating to Fashion

Leason Ellis successfully defended a high-end fashion designer in patent infringement suit brought in the U.S. District Court for the Southern District of New York relating to design of shirt cuffs.  Karin Segall and Henry Gabathuler were able to secure an early stage settlement and dismissal on favorable terms for our client.

Carl DeSantis revocable trust v. Plaza Retail AG, LLC, 15-cv-08258 (S.D.N.Y)

Medical Software Defense

Leason Ellis defended a medical practice accounting company against patent infringement lawsuit brought in the U.S. District Court for the District of New Jersey by a non-practicing entity concerning billing and account management software.  We secured an early stage settlement and dismissal on favorable terms. 

Billingnetwork Patent Inc. v. Doc-tor.com LLC, 11-cv-06486 (D.N.J.)