Trials and Litigations in Court


As Lead Counsel

Morrison & Foerster, LLP.

• Otto Bock Healthcare LP v. Össur Hf et.al, 8:13-cv-00891 (C.D. Cal 2013).

Lead counsel for Otto Bock in a patent infringement case against Otto Bock's competitor in the field of orthotics. Ms. Martone continued to consult on the case, and an associated appeal and IPR proceeding after she retired from Morrison & Foerster. The case settled with a cross-license. Reported decisions at 2013 U.S. Dist. LEXIS 128966 (August 22, 2013) (denial of Otto Bock's motion for preliminary injunction); 2013 U.S. Dist. LEXIS 188428 (December 16, 2013) (denial of Össur's motion for a stay); and 2014 U.S. App. LEXIS 2879 (February 18, 2014) (non-precedential affirmance of district court's denial of preliminary injunction.)

• Stemina Biomarker Discovery Inc. v. Metabolon Inc., 3:12-cv-000494 (W.D. Wisc. 2012); Metabolon, Inc. v. Stemina Biomarker Discovery, Inc., 3:12-cv-00618 (W.D. Wisc 2012).

Lead counsel for Metabolon in dispute over infringement of Metabolon patents. Licensing negotiations instituted by Metabolon lead to separate declaratory judgement and infringement actions. The Metabolon patents at issue relate to methods for creating, compiling and identifying metabolic data indicative of disease states. Ms. Martone successfully pared down the number of patents in dispute from sixteen to three. The case settled with a license to Stemina Biomarker Discovery.

· Ricoh Company, Ltd. v. Eastman Kodak Company, 1:12-cv-1202 (S.D. N.Y. Bankruptcy Court 2013).
Lead patent counsel for Ricoh in this adversarial proceeding in bankruptcy court for infringement of eight Ricoh patents relating to printing technology. The case settled together with the district court case brought by Eastman Kodak listed below.

· Eastman Kodak Company v. Ricoh Company, Ltd., 1:12-cv-03109 (S.D. N.Y. 2012).
Lead counsel for Ricoh in Kodak's suit alleging breach of a patent license agreement and seeking significant royalties claimed to be owed by Ricoh to Kodak as a result of Ricoh's acquisition of Pentax Imaging Systems. In May of 2013, Ricoh management decided to substitute other counsel for Morrison & Foerster. Represented by successor counsel, Ricoh lost the trial, and Kodak was awarded a judgement in the amount of $76 million. The case was ultimately settled together with the bankruptcy case.

 

Ropes & Gray, LLP./Fish & Neave, LLP.

· Realtime Data, LLC, D/B/A IXO v. Packeteer, et al., CA No. 6:08-CV-00144-LED – Co-lead counsel for Realtime Data in a patent infringement suit against four manufacturers of equipment for WAN Optimization and Application Delivery and their customers.  Markman decision largely favorable to Realtime Data. 2009 WL 2960621 (E.D. Tex.), adopted 652 F. Supp. 2d 791 (E.D. Tex. 2009).  Defendant’s motions for summary judgement of non-infringement denied. Defeated defendant’s attempts to limit damages proofs. 2009 WL 6340057 (E.D. Tex. 2009). Cases scheduled for trial in January of 2010 were settled on the eve of trial, and in one case on the first day of trial. 

· In reHalftone Color Separations (‘809) Patent litigation, CA No. 8:08-ML-01926 CJC – Multidistrict litigations involving a patent owned by Screentone Systems (Acacia subsidiary) covering printing technology.  Lead counsel for Ricoh Americas.  Successfully settled case against Ricoh Americas after bringing a third party indemnity complaint against Adobe Systems, which caused Adobe to file its own litigation against Screentone.

· Aisin AW v. TomTom N.V. et al., CA No. 9:08-CV-000 70 RC (E.D. Tex) – Patent infringement action brought on three patents relating to global positioning systems.  This case, and a companion case brought by TomTom, where Ms. Martone also represented Aisin AW, settled favorably for Aisin AW in a global agreement covering litigation in the United States, Germany, and Japan.

· Sanyo Electric Co., Ltd. v. MediaTek, Inc., CA No. 05-2580 (C.D. Cal.) – Patent infringement action brought against MediaTek for infringement of two patents relating to CD-ROM decoder chips.  Obtained dismissal of MediaTek's counterclaim for patent infringement on summary judgment.  Successfully defeated defendant’s motions for non-infringement winning all claim construction issues.  2006 WL 4542736 (C.D. Cal); 2006 WL 5450232 (C.D. Cal); 2006 WL 5450231 (C.D. Cal).  The case settled as part of a global settlement of this case and the Texas case between the same parties.

· MediaTek, Inc. v. Sanyo Electric Co., Ltd., CA No. 6:05 CV 323 (E.D. Tex) – Patent infringement action brought against Sanyo for infringement of three patents relating to digital signal processing chips.  Decision on motions to transfer reported 2006 WL 463 871 (E.D. Tex).  Markman decision was largely favorable to Sanyo.  513 F. Supp. 2d 778 (E. Tex. 2007).  The case settled on the eve of trial as part of a global settlement of this case and the Los Angeles case (above) between the same parties

· Combined Logic Co. v. Avid Tech., Inc., No. 96 CV 4038 (RO), (S.D.N.Y.) – Patent infringement action brought against Avid for infringement of a patent on an interactive video system.  Ms. Martone successfully argued motion to dismiss the case for failure to prosecute.  2004 U.S. Dist. LEXIS 23875 (SDNY Nov. 22, 2004)

· Guardian Industries v. Sanyo Electric Co. Ltd. et al, No. 03-934-SLR (D. Del.) – Patent infringement action brought against Sanyo Electric and other Asian manufacturing of flat panel displays.  Case settled.

· Sherman & Reilly v. British Telecommunications, No. 1:03-CV-206 (E.D. Tenn.), Arnco v. British Telecommunications, No. 1:03-CV-1584 (N.D. Ohio), Level 3 v. British Telecommunications, No. 03-526-SLR (D. Colo.) – Declaratory judgment litigations arising out of British Telecommunications patent infringement suits in Delaware against telecom companies (see below).  Ms. Martone successfully transferred the Arnco and Level 3 cases to Delaware, where they were consolidated with the other actions.  All were settled at varying stages.

· British Telecommunications v. Verizon, SBC Communications, Level 3, Broadwing, Qwest, Touch America, CA 03-528 et al. (D. Del.) – Six patent infringement suits brought by BT against telecom companies for infringement of patents covering the installation of fiberoptic cable.  Touch America declared bankruptcy.  The five remaining cases were settled at various stages.

· Plasma Physics and Solar Physics v. Fujitsu, et al. (CA 99-8593 (EDNY)) – Patent infringement action brought against fourteen major Japanese and Korean manufacturers of semiconductors and flat panel displays.  All cases settled. Ms. Martone was Plasma Physics' and Solar Physics' lead negotiator in the settlement discussions

· Plasma Physics v. IBM, (CA 02-3463, E.D.N.Y.). – Six cases against IBM, AMD, TI, STMicroelectronics, Analog Devices, and Conexant were filed in June, 2002.  All of these were settled, some on the eve of trial. Ms. Martone was lead negotiator for Plasma Physics in the settlement negotiations.

· Applied Materials v. Plasma Physics, et al. (CA 00-02199 (EDNY)) – Action for declaratory judgment of patent invalidity and non-infringement brought by equipment maker whose customers were defendants in case brought by Plasma Physics.  Case settled with no license rights granted to Applied.

· EL v. Sanyo (CA 00-01 (D. Del.) – Suit for infringement of patents alleged to cover liquid crystal displays in popular Sanyo cell phones.  Case settled.

· Yamaichi v. Enplas (C97-04388 (ND Ca.)) – Patent infringement action brought by Japanese corporation and its U.S. subsidiary against a Japanese corporation and its U.S. subsidiary.  Successfully opposed defendant’s motion to dismiss the case on forum nonconveniens grounds.  Ms. Martone successfully argued the hearing on claim construction.  Case settled.

· Allied-Signal v. Allegheny Ludlum, 132 FRD 134 (D.Conn. 1990)), 29 USPQ 2d 1039 (D. Conn. 1993) – Bench trial of action brought in 1989 to challenge result of interference in the patent office.  Successfully defeated Allegheny Ludlum’s efforts to dismiss the case, as well as its motion for summary judgment.  The case was tried in May, 1995.  No decision was rendered.  The case was settled in 1998.

· Crossland Savings Bank v. Fleet/Norstar (CA 91-5096 (SDNY)) – Preliminary injunction hearing in trademark infringement action brought in 1991.  The case settled after Ms. Martone successfully opposed Crossland’s motion for a preliminary injunction.

· American Hospital Supply et al. v. Fisher Scientific Company (84-5405 (CD Ca.)) – Jury trial of patent infringement action.  The case, which was tried to a jury in January of 1987, settled during trial.

· Pino v. Dalsheim (605 F. Supp. 1305 (SDNY 1984)) – Bench trial of prisoner’s rights action in 1984.  Plaintiff was awarded injunctive relief, expungement of his record and damages.  Fish & Neave received its attorneys’ fees.  Fish & Neave received an award from the Legal Aid Society for its work on the case.


As Co-counsel

· NBA v. Motorola & STATS (939 F. Supp. 1071 (SDNY 1996); rev’d in part, vacated in part and aff’d in part; 105 F.3d 841 (2 Cir. 1997)) – Bench trial of trademark, copyright and unfair competition action in April of 1996.  Ms. Martone handled the bulk of the courtroom work and made the closing argument after trial.  Motorola won on all but the unfair competition claim in the District Court, and won on unfair competition in the Second Circuit.

· Motorola v. Rockwell, No. 95-575-SLR (D. Del.) – Action for patent infringement of Motorola Modern patents.  Ms. Martone was responsible for Motorola's damages case and its response to Rockwell’s defenses based upon Motorola’s participation in ITU standard setting process. The case settled.

· AMD v. Altera Corp., 1996 WL 119482 (N.D. Cal.) - Ms. Martone represented Altera in a multi-patent infringement case where core issue was Altera's defense that it had a license to the patents in suit as a result of AMD's purchase of MMI, who had a patent cross-license with Altera. Altera won on its license defense in the district court but the decision was reversed on appeal.

· Scripto-Tokai Corp. v. Gillette Co. (788 F. Supp. 439 (CD Ca. 1992); 1994-2 Trade Cases 70, 821 (CD Ca. 1994)) – Jury trial of action for declaratory judgment of patent invalidity and non-infringement.  Ms. Martone was in charge of Gillette’s damages case and examined many witnesses in the liability trial on direct and cross examination.  In late October, 1993, the jury found Gillette’s patents infringed but invalid.  The case settled, and no judgment of patent invalidity was entered. In the antitrust phase, Court found the patents enforceable and dismissed Scripto-Tokai’s antitrust case on summary judgment.

· Polaroid Corp. v. Eastman Kodak Co., 641 F. Supp. 828 (D. Mass. 1985), aff'd, 789 F.2d 1556 (Fed. Cir. 1986) (liability); 16 U.S.P.Q.2d 1481 (D. Mass. 1990), modified, 17 U.S.P.Q.2d 1711 (D. Mass. 1991) (damages) – Bench trial of patent infringement case.  Seven Polaroid patents were found valid and infringed after the 1981-1982 liability trial. At the liability trial, Ms. Martone, who was still an associate, was heavily involved in case strategy and major brief writing, and argued evidentiary motions and examined two witnesses at trial.  As a partner, she had a major courtroom role in the 1989 damages trial, focusing on marketing issues, and examined many fact and expert witnesses on direct and cross-examination. The Court awarded Polaroid about 900 million dollars.  The case was settled for 925 million dollars.

· Facet v. Osmonics & Celanese, State Court, Minnesota - Trade secret case brought against Osmonics and Celanese claiming that Celanese unlawfully disclosed to Osmonics  Facet's trade secrets as part of its spin-off and sale of one of its divisions to Osmonics. A major issue was whether Celanese had the right assign to Osmonics its trade secret license from Facet.

· Pignons SA de Mecanique v. Polaroid Corp. – Trademark infringement case.  Polaroid won  summary judgment dismissing the case on the first day of trial.  657 F.2d 482 (1st Cir. 1981).

· Clairol v. Saveway (214 USPQ 1270 (SD Fla. 1980)) – Bench trial of action for patent and trademark infringement and unfair competition.  After trial, Clairol’s patent and trademark were found valid and infringed.  Treble damages and attorneys’ fees were awarded to Clairol.

• Black v. Riker-Maxson Corp., 401 F. Supp. 693 (SDNY 1975) – Jury trial of shareholders derivative action.  Riker-Maxson won the trial