Certain Microfluidic Systems and Components Thereof and Products Containing Same (ITC Inv. No 337-TA-1100) (representing 10X Genomics, Inc.) (Respondent Bio-Rad Laboratories, Inc.) (August 2019); and IPR Nos. 2019-00565; 2019-00566; 2019-00567; 2019-00568
Tensegrity secured significant victories before the ITC and PTAB on behalf of 10X. The Initial Determination in Inv. No. 337-TA-1100 found each of 10X’s four asserted patents are valid, and that Bio-Rad infringes three patents in violation of Section 337. The ALJ also rejected Bio-Rad’s claims of ownership and its other affirmative defenses and recommended that Bio-Rad be ordered to stop selling and importing its infringing products. In rebutting Bio-Rad’s invalidity challenges of the asserted patents before the PTAB, Tensegrity broke new ground when the PTAB issued its first decisions additionally denying two of Bio-Rad’s petitions as repetitious of Bio-Rad’s arguments before the ITC—an argument that other patent owners had unsuccessfully asserted as recently as July 2019.
Limelight Networks, Inc. v. XO Communications, LLC and Akamai Technologies, Inc., Case No. 3:15-cv-720-JAG (E.D. Va. 2018) and Akamai Technologies, Inc. v. Limelight Network, Inc., Case Nos. 1:16-cv-10253-GOA, 1:16-cv-12624-GAO (D. Mass April 2018)
Days before the first day of trial in Limelight's suit against Akamai and following Tensegrity’s successful motions to limit the trial only to Limelight’s patent infringement claims (staying all of Akamai’s patent infringement counterclaims), Tensegrity secured a settlement including payment to Limelight and resolution of all claims in two ongoing litigations. This resolution marks the end of more than a decade of lawsuits between the competitors.
Wi-LAN USA, Inc. v. Ericsson Inc., Appeal Nos. 2015-1766, -1794 (January, 2017)
The Firm secured victory before the Federal Circuit for the second time in Wi-LAN's patent suit against Ericsson that was pending in the Southern District of Florida. The district court had granted summary judgment of non-infringement as to two of Wi-LAN's three asserted patents, and invalidity as to the third. The Federal Circuit disagreed, finding genuine disputes of material fact as to both infringement and validity, vacating the district court's summary judgment decision, and remanding the case. The Federal Circuit also affirmed the district court's decision against Ericsson on its license defense. After the case was remanded to the district court, the parties reached an agreement settling the matters in controversy.
Arista Networks, Inc. v. Cisco Systems, Inc., IPR2016-00309, IPR2016-00309 (Patent Trial and Appeals Board, June 2017)
The Firm invalidated two Cisco patents at trial before the Patent Trial and Appeals Board in two inter partes review ("IPR") proceedings. Prior to this invalidity ruling, these patents had been found to be infringed in an ITC investigation involving the same parties.
- Certain Flash Memory Devices and Components Thereof (ITC Inv. No. 337-TA-1034)
(representing Complainant Memory Technologies, LLC) (Respondents SanDisk LLC, Western
Digital Corp. Western Digital Techs., Inc., SanDisk Ltd., SanDisk Storage Malaysia Sdn. Bhd.,
and SanDisk SemiConductor (Shanghai) Co., Ltd.) (June 2017)
Following Markman briefing and hearing, the six patent investigation was terminated after execution of a worldwide, perpetual license to MTL's Memory Patents.
Skyhook Wireless, Inc. v. Google Inc. (Civil Action Nos. 1:10-cv-11571-RWZ and 1:13-cv-10153-RWZ) (D. Mass. March 2015)
Following a string of substantial wins defeating Google's summary judgment motions and striking significant portions of Google's expert reports, Tensegrity secured a confidential eve-of-trial settlement for client Skyhook Wireless. The settlement resolved Skyhook's claims against Google for infringement of Skyhook's patents on Wi-Fi location technology. Tensegrity took over as trial counsel for Skyhook in 2013 after Skyhook had suffered several setbacks in litigation, including the invalidation of two patents and judgment in favor of Google on Skyhook's state court claims.
Wake Forest University Health Sciences v. Kinetic Concepts, Inc., et al. (Consolidated Civil Action Nos. 11-cv-163 and 11-cv-713 XR) (W.D. Tex. June 2014)
On the eve of the jury trial, Tensegrity secured a settlement of $280 million for client Wake Forest University Health Sciences, resolving Wake Forest's claims against KCI for infringement of the "wound VAC" patents and for breach of contract claims for KCI's repudiation of the parties' 1993 license agreement.
In re Maxim Integrated Products, Inc. (MDL No. 2354) (W.D. Pa. December 2013)
In patent infringement cases on behalf of Maxim Integrated Products, Inc., in which twenty-five defendants were accused of infringing several of Maxim's patents for secure mobile transactions, Chief Judge Conti of the District Court of the Western District of Pennsylvania issued a claim construction order in which all but two of the 44 disputed terms were decided in favor of Maxim's position. Subsequently, all of the defendants settled and took licenses to Maxim's asserted patents, as did Defendants in related actions in the Western District of Texas and the Southern District of New York. In re: Maxim Integrated Products, Inc. (MDL. No. 2354); Maxim Integrated Products, Inc. v. United Services Automobile Ass'n, et al., Case Nos. 5:14-cv-1028-XR, 5:14-cv-1029-XR, 5:14-cv-1030-XR, 5:14-cv-1031-XR, 1:15-cv-02169-DLC (W.D. Tex.); Maxim Integrated Products, Inc. v. Santander Bank, NA, et al., Case Nos. 15-cv-2167-DLC-AJP,15-cv-2168-DLC-AJP, 15-cv-2169-DLC-AJP.
Wi-LAN USA, Inc. v. Ericsson Inc., Appeal Nos. 2013-1485 & 2013-1566 (Fed. Cir. August 2014)
The Firm secured a victory before the Federal Circuit on behalf of Wi-LAN, when, following Mr. Powers's oral argument, the Court reversed the Southern District of Florida's dismissal of Wi-LAN's patent suit against Ericsson. Ericsson had successfully asserted a license defense based on its interpretation of a prior agreement between the parties. Wi-LAN had prevailed on related issues in a separate suit against Ericsson in the Eastern District of Texas, and Tensegrity was retained to argue the consolidated appeal. The Federal Circuit agreed with Wi-LAN's interpretation of the agreement, reversing the Florida Court and affirming the Texas Court.
- Kinetic Concepts, Inc., et al. v. Smith & Nephew, Inc., Appeal No. 2011-1105 (Fed. Cir. 2012)
The Federal Circuit considered Wake Forest's appeal of the District Court for the Western District of Texas's granting of JMOL of invalidity of Wake Forest's "wound VAC®" patents. Following Mr. Powers's argument to the Federal Circuit on behalf of client Wake Forest, the Federal Circuit overturned the district court's improper judgment, thereby reinstating the jury finding of infringement by Smith & Nephew and the jury finding of no invalidity. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342.
- Certain Mobile Devices and Related Software (ITC Inv. No. 337-TA-750) (representing Complainant Apple Inc.) (Respondent Motorola Mobility LLC) (August 2013)
Following the Federal Circuit Appeal, one asserted patent stood as valid with the Commission's finding of non-infringement vacated and remanded, and one asserted patent stood as infringed with the Commission's finding of invalidity vacated and remanded. The three-patent case was ultimately resolved favorably for Apple as part of a settlement dismissing of all pending actions between the parties.
- Telefonaktiebolaget LM Ericsson v. Wi-LAN USA, Inc., Case No. 1:14-CV-21854-DMM (S.D. Fla. 2015)
The firm won dismissal of all of Ericsson's claims against Wi-LAN on summary judgment. Ericsson sued Wi-LAN seeking to halt Wi-LAN's licensing discussions with certain Ericsson customers based on a cross-license agreement between Ericsson and Siemens. Ericsson asserted claims for declaratory relief, breach of contract, tortious interference, and violation of Florida's Deceptive and Unfair Trade Practices Act. On summary judgment, the court found that Ericsson's intentional tort claims under state law were preempted by federal patent law and dismissed Ericsson's declaratory judgment and breach of contract claims for lack of standing.
- Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (ITC Inv. No. 337-TA-745) (Complainant Motorola Mobility, LLC) (representing Respondent Apple Inc.) (May 2012)
The Commission found that no violation had occurred with respect to three of the four patents asserted against Apple.
- Intellectual Ventures I LLC v. Ricoh Americas Corp. and Ricoh Electronics Inc. (Case No. 13-cv-474-SLR) (D. Del. December 2016)
Days before the first day of trial, following the Court's order stating that an adverse inference on infringement would be applied at trial as a consequence of Ricoh's failure to provide discovery sought in Firm's motion to compel, and while IV's motions for summary judgment of no invalidity were pending, the parties reached a confidential agreement resolving all claims.
- Intellectual Ventures I LLC and Intellectual Ventures I LLC v. Canon, Inc. et al. (Case No. 13-cv-473-SLR) (D. Del. December 2015)
Days before the first day of trial and following substantial wins by Firm to secure summary judgment on key issues and defeating Canon's key motions for summary judgment, the parties reached global resolution of all pending patent infringement claims.