Representative Matters
REFERENZMANDATE
代表事项
Appeals
- Williamson v. Citrix, 792 F.3d 1339 (Fed. Cir.) (en banc), represented IBM, made new law concerning presumptions applicable to means-plus-function claims. Obtained summary judgment of patent invalidity because the claims were computer implemented means-plus-function claims without a supporting disclosure of an algorithm.
- Picture Patents v. Aeropostale, 788 F.Supp.2d 127 (S.D.N.Y.), aff’d, 469 Fed. Appx. 912 (Fed. Cir.), cert. denied, 133 S. Ct. 652, represented IBM, obtained summary judgment of ownership of patents obtained by a former employee after leaving IBM. The court determined that the IBM employee agreement “clearly applies to” the invention and rejected arguments that the work of the former employee was excluded from the agreement. The court also determined that the statute of limitations did not prevent IBM from asserting its ownership and rejected defenses of laches, equitable estoppel, waiver and modification. The decision was affirmed by the Federal Circuit and the U.S. Supreme Court denied cert.
- Dollar Shave Club v. Gillette (3d Cir.), defended Gillette in interlocutory appeal of denial of motion to stay.
- Certain Ground Fault Circuit Interrupters, Inv. No. 337-TA-615, 2009 WL 962585 (ITC), aff’d-in-part, 619 F.3d 1303 (Fed. Cir.), represented patentee in asserting patents against China-based manufacturers of GFCIs and their U.S. distributors. All six asserted patents were held valid, enforceable and infringed after trial, and the decision was affirmed-in-part resulting in the exclusion of 15 of 16 respondents from the market.
- Stryker v. Intermedics Orthopedics, 96 F.3d 1409 (Fed. Cir.), represented patentee in asserting patent relating to hip implants. Secured $72 million in damages, increased damages and attorney fees after trial, and created new law regarding patent damages.
- Braun v. Dynamics Corp., 975 F.2d 815 (Fed. Cir.), represented DCA on appeal in a design patent and trade dress infringement case relating to hand-held blenders. Obtained reversal of jury verdict of willful infringement, trade dress infringement and unfair competition, and created new law regarding patent damages.
- North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571 (Fed. Cir.), represented patentee in case involving human infant vaccine.
- Mobil Oil v. Amoco Chemical, 779 F. Supp. 1429 (D. Del.), aff’d without opinion, 980 F.2d 742 (Fed. Cir.), represented patentee in case involving zeolite catalysts. The case settled after trial for $120 million.
Litigation Against Non-Practicing Entities
- CellCast v. United States (Ct. Fed. Cl.), defending IBM in a patent infringement suit involving system for providing public warnings over the cellular telephone network.
- Arunachalam v. IBM (D. Del. & N.D. Cal.), defending IBM in patent infringement suits involving patents concerning Internet commerce.
- Disaster Warning Network v. United States (Ct. Fed. Cl.), defended IBM in patent infringement suit involving computer systems for providing disaster warnings.
- Globalprivateequity.com v. Debt Exchange (S.D.N.Y.), defended accused infringer in patent infringement suit involving online electronic trading platforms and evaluation tools.
- Williamson v. Citrix (C.D. Cal.), aff’d, (Fed. Cir.), defended IBM and obtained summary judgment of patent invalidity under 35 U.S.C. § 101 because the claims were directed to an abstract idea.
- Fenner Investments v. Dell (E.D. Tx), defended Hewlett-Packard against allegation that its media access controllers infringed patents.
- Compuware v. IBM (E.D. Mich.), defended IBM against claims of trade secret theft, copyright infringement and antitrust violations and in asserting counterclaims of infringement of six patents relating to graphical user interfaces.
- Digital Development v. IBM (S.D.N.Y.), defended IBM against claims of infringement of patents relating to computer virus detection.
- TM Patents et al. v. IBM, 72 F. Supp. 2d 370 (S.D.N.Y.), 121 F. Supp. 2d 349 (S.D.N.Y.), 136 F. Supp. 2d 209 (S.D.N.Y.), defended IBM against claim of infringement of four patents relating to RAID storage, memory control and data routing. Successfully argued at Markman hearing in what was then a case of first impression that a prior district court ruling on claim construction was entitled to collateral estoppel; after discovery and claim construction ruling, patentee withdrew two patents, and summary judgment of non-infringement was granted as to the remaining two patents.
- MPR Assocs. v. General Electric (E.D. Va.), defended GE in “rocket docket” against claim of infringement of patent relating to repair of nuclear reactors; defeated motion for preliminary injunction.
ITC Investigations
- Certain Dimmable Compact Fluorescent Lamps, Inv. No. 337-TA-830 (ITC), defended General Electric against allegations of infringement of patents on compact fluorescent lamp ballast circuitry.
- Certain Light-Emitting Diodes, Inv. No. 337-TA-784 (ITC), represented patentee in asserting patents involving LED light conversion and packaging technology; patent was held valid, enforceable and infringed after trial.
- Certain Ground Fault Circuit Interrupters, Inv. No. 337-TA-739 (ITC), represented a respondent distributor accused of violating a Cease and Desist Order and its manufacturer intervener in enforcement and advisory actions. This investigation raised issues of first impression as to whether a manufacturer could intervene in an enforcement action against its distributor and initiate an advisory action.
- Certain Display Devices Including Digital Televisions And Monitors, Inv. No. 337-TA-713 (ITC), represented world’s largest manufacturer of digital televisions and flat screen monitors defending against allegation of infringement of 10 patents.
- Certain Hard Disk Drives, Inv. No. 337-TA-616 (ITC), defended Hewlett-Packard against allegation of infringement of patents relating to disk drive manufacturing.
- Certain Ground Fault Circuit Interrupters, Inv. No. 337-TA-615, 2009 WL 962585 (ITC), aff’d-in-part, 619 F.3d 1303 (Fed. Cir.), represented patentee in asserting patents against China-based GFCI manufacturers and their U.S. distributors. All six asserted patents were held valid, enforceable and infringed after trial.
- Certain Wireless Communication Devices, Inv. No. 337-TA-583 (ITC) and Certain Wireless Communication Equipment, Inv. No. 337-TA-577 (ITC), represented Ericsson in asserting patents and defending against claims of patent infringement relating to cellular telephones.
- Certain Male Prophylactic Devices, Inv. No. 337-TA-546 (ITC), represented patentee on appeal to the International Trade Commission; overturned ALJ holding of no domestic industry.
- Certain Personal Watercraft, Inv. No. 337-TA-452 (ITC), represented Bombardier in action alleging infringement of 11 patents. Successfully obtained dismissal of six patents before trial through motions for summary determination of non-infringement, invalidity or lack of domestic industry. Case settled after trial.
Competitor Litigation
- Leviton Mfg. v. Pass & Seymour (E.D.N.Y.), defended Pass & Seymour in suit filed by its principal competitor involving patents on electrical devices. Obtained summary judgment of noninfringement as to one of the asserted patents. Validity of another patent was tried to a jury. The jury returned a verdict that all asserted claims were invalid because they would have been obvious, an exceedingly rare outcome.
- Gillette v. Dollar Shave Club (D. Del.), represented Gillette in a suit involving patents on razor blade edge coatings, obtained favorable claim constructions and defeated summary judgment and Daubert motions. The case settled favorably for Gillette on the eve of trial.
- Gillette v. Edgewell (ITC & D. Conn.), represented Gillette in a suit involving a patent on a razor cartridge connector.
- Dorco v. Gillette (D. Del.), represented Gillette in a suit involving a patent on a razor cartridge connector.
- SecureBuy v. CardinalCommerce (D. Del.) and SecureBuy v. CardinalCommerce (D. Miss.), represented patentee in suits involving patents on systems for facilitating credit card authentication during Internet transactions.
- Augme Techs. v. Tacoda (S.D.N.Y.), represented patentee in case involving software for delivery of targeted advertising over the Internet.
- Pass & Seymour v. Hubbell, 2011 WL 32433, 2009 WL 7296903 (N.D.N.Y.), obtained claim construction rulings favorable to patentee on 10 patents relating to ground fault circuit interrupters.
- Pass & Seymour v. General Protecht Group (N.D.N.Y.), represented patentee in alleging infringement of six patents by Chinese-based manufacturers of GFCIs and their U.S. distributors.
- Edisync Systems v. Genesys Conferencing (D. Col.), defended Genesys against claims of infringement of a patent relating to computer systems for collaborative editing and video conferencing.
- ISCO v. Conductus (D. Del.), represented patentee in patent infringement case relating to cellular telecommunications.
- Data General v. IBM, 93 F. Supp. 2d 89 (D. Mass.), defended IBM against claim of infringement of 11 complex computer patents and in asserting counterclaims of infringement involving seven patents relating to RAID storage, computer manufacturing and graphical user interfaces.
- Smith Nephew-Richards v. Stryker (E.D. Tenn.), represented patentee in declaratory judgment action on hip implant patent.
- Advanced Cardiovascular Systems v. C.R. Bard, (N.D. Cal.), defended Bard against claim of infringement of a patent relating to balloon dilation catheters; obtained summary judgment of noninfringement.
Patent Trial And Appeal Board
- Dorco v. Gillette, successfully opposed institution of IPR on patent on razor blade edge coatings.
- SecureBuy v. CardinalCommerce, successfully opposed institution of three petitions for Covered Business Method review. This case made new law and resulted in the first precedential decision of the Patent Trial and Appeal Board.
- Gillette v. Shavelogic, represented Gillette in challenging patent relating to shaving system.
- IBM v. CellCast, represented IBM in challenging patents relating to a system for providing public warning over the cellular telephone network.
Amicus Briefs
- American Axle & Mfg. v. Neapco Holdings (Fed. Cir.) and Athena Diagnostics v. Mayo Collaborative Servs. (S.Ct.), authored amicus briefs of IPO concerning subject matter eligibility.
- Limelight Networks v. Akamai Techs., 134 S. Ct. 2111, eBay v. MercExchange, 126 S. Ct. 1837 and Lab Corp. v. Metabolite Labs, 126 S. Ct. 2976, authored amicus briefs of IBM.
- Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir.), authored amicus brief of NYIPLA, which was adopted by the Federal Circuit and affirmed by the U.S. Supreme Court.
- Festo Corp. v. Shoketsu, 234 F.3d 558 (Fed. Cir.) and 535 U.S. 722, authored amicus briefs of IBM, Ford and Kodak, which were cited by the Federal Circuit and followed by the U.S. Supreme Court.
Professional Activities
Mr. Abate is a past-President of the NYIPLA, a past-President of the NJIPLA, a former member of the Federal Circuit Bar Association Board of Directors, a member of the Federal Circuit Historical Society Board of Trustees, a Fellow of the American Bar Foundation, a member of the NYU Engelberg Center on Innovation Law and Policy Advisory Board, and a member of the U.S. Court of Federal Claims Advisory Council.
