W|N Intellectual Property Litigation

by Tom Vuksinick

W|N has a litigation group of over 20 attorneys with experience in litigating complex intellectual property cases. Our litigation experience spans all aspects of intellectual property including patents, trademarks, copyrights and trade secrets as well as peripheral issues that stem from these cases, such as unfair competition. We have successfully litigated claims involving design and utility patents, false patent marking, trademark infringement, trademark dilution, false advertising, copyright infringement of books and works of art, breaches of covenants not to compete, unfair competition and misappropriation of trade secrets. In addition to favorable settlements and successful trials, some of which are described below, in appropriate cases the W|N litigation group has obtained immediate relief for clients through preliminary injunction and resolution without trial through summary judgment. On the other hand, we have also succeeded in defeating numerous motions for preliminarily injunction or for summary judgment of infringement against our clients.

W|N litigates in federal district courts and tribunals throughout the United States. We have litigated trademark opposition and cancellation proceedings before the Trademark Trial and appeal Board, as well as exclusion order proceedings before the United States International Trade Commission.

Although our core practice is domestic intellectual property litigation, at W|N we also have extensive experience managing foreign intellectual property disputes and judicial proceedings on behalf of its clients. That experience includes both patent and trademark litigation in such diverse places as the United Kingdom, France, Germany, Italy, the Netherlands, Spain, Canada, Mexico and China. For example in Italy, W|N coordinated the defense of a cross-border patent infringement action and implemented ex parte seizure proceedings in cases involving chemical inventions. In addition, we have overseen opposition proceedings in Europe and Japan.

W|N’s experience in multinational litigation in Latin America, Europe and Asia places us in an excellent position to advise and assist our many clients with an international presence. We have developed an extensive network of IP law firms located in virtually every country in the world with which we can work to enforce our clients’ intellectual property rights worldwide. Our experience enables us to provide not only advice to our U.S. clients contemplating enforcement of intellectual property rights in foreign countries, but to assist foreign counsel in the preparation of successful litigation strategies.

Members of our litigation group have been invited to participate locally, nationally and internationally as presenters on intellectual property topics such as patent enforcement and prosecution, patent damages and managing international litigation, and have taught patent law and patent litigation and counseling courses at our local law schools for a number of years.

The following is a representative list of our complex litigation cases:

• Finisar Corporation v. DIRECTV Group, Inc., No. 1:05-CV-0264 (E.D. Tex. 2006) (patent infringement) (the jury awarded $78 million and the judge enlarged to $125 million in damages for willful infringement to our client).
• 3Com v. Xircom, Inc., No. 2:00CV04363 (D. Utah 2002) (patent infringement) (preliminary injunction entered in favor of our client, which resulted in settlement of $15 million).
• Baxter Healthcare v. Spectramed, Inc., No. 2:91-cv-00288 LGB (C.D. Calif. 1994) (patent infringement) (jury verdict of infringement and validity resulting in settlement in eight figures).
• ICON Health & Fitness, Inc. v. The Nautilus Group, Inc., No. 1:02-CV-019 TC (D. Utah 2006) (false advertising and false patent marking) (the jury awarded $7.8 million damages to our client in addition to the highest false patent marking decision ever reported).
• Ultradent Products, Inc. v. Life-Like Cosmetics Inc., Civil No. 95-C-163 W (D. Utah 1996) (patent infringement) (jury awarded nearly $1.5 million in damages which was trebled by the court for a total award of almost $4.5 million).
• The Nautilus Group, Inc. v. ICON Health & Fitness, Inc., No. C-02-2420-RMS (D. Wash. 2004) (patent infringement) (the Court granted summary judgment of non-infringement for our client eliminating plaintiff’s approximately $150 million damage claim. This ruling was summarily affirmed by the Court of Appeals for the Federal Circuit).
• Boynton v. Headwaters, Inc., No. 02-1111 (W.D. Tenn. 2005) (patent infringement, civil conspiracy and constructive trust) (the Court granted summary judgment in favor of our client dismissing plaintiffs’ $50 million claim).
• Lifetime Products, Inc. v. GSC Technology, No. 1:03-CV-00062 TC (D. Utah 2004) (design patent infringement) (the Court entered two preliminary injunctions and a finding of summary judgment of infringement in favor of our client. A favorable settlement was obtained in light of these rulings).
• Lisa Hancock v. Richard Paul Evans, No. 1:99CV00068B (D. Utah 1999) (copyright infringement) (summary judgment granted dismissing copyright claims against our client).
• EMC Corp. v. Columbia Data Products, Inc., No. 2:01-CV-00312TC (D. Utah 2005) (patent infringement) (a favorable settlement obtained after a finding of summary judgment of infringement in favor of our client).
• Wilson Electronics, Inc. v. Powercam, Inc., No. 2:01-CV-973 TS (D. Utah 2004) (copyright and trade dress infringement) (preliminary injunction entered in favor of our clients against the defendants, which was violated resulting in a contempt citation against defendants).
• International Commission for Accreditation of Professional Genealogist v. Know Your Heritage Organization, Proceeding No. 90032963 (TTAB 2003) (successful trademark opposition and cancellation).
• Seiko Epson Corporation and Epson America, Inc. v. Eyecon Marketing Inc., FA0512000609195 (Nat’l Arb. Forum 2006) (enforcing trademark holder’s rights in the named dispute).