Litigation Representative Cases

Intellectual Property Litigation Representative Cases

Patents

Snap-on, Inc. v. Ronald J. Ortiz and SPX Corp., Civ. No. 97-c-2138 (N.D. Ill.).

Kinney & Lange represented Defendant SPX Corp. in a dispute brought by Snap-on, Inc. on the validity of three basic patents owned by SPX on digital waveform displays for automotive engine analyzers. The dispute originated in U.S. District Court for the Northern District of Illinois, and included decisions on all issues raised by the pleadings, and over 20 days of Markman hearings on multiple patents.

Strategy and Results:

Kinney & Lange continued to represent the defendant over several years of court decisions and appeals, employing knowledge of the technology and multiple patents in question to override arguments by the plaintiff. Eventually, the parties agreed to try all remaining issues to a mutually selected arbitrator. Phase one of the 19-day trial comprised several counts arising out of SPX’s hiring of the former president of Sun Electric (acquired by Snap-on). Phase two related to Snap-on’s infringement of the three SPX patents. By agreement of the parties, the arbitrator selected the “last final offer” of the parties that was closest to the appropriate damages award for the combined phases of the arbitration (sometimes referred to as “baseball arbitration”).

Snap-on’s last final offer was $3 million in its favor and SPX’s last final offer was $44 million in its favor. The Arbitrator found for SPX and awarded the company $44 million.

River Point Resort, Inc. v. Mark and Kathy Zupancich d/b/a/ Zup’s Fishing Resort and Canoe Outfitters, 0:14-cv-1143 (D. Minn.)

Service mark owner River Point Resort, Inc. sued direct competitor Zup’s Fishing Resort and Canoe Outfitters over infringement, unfair competition and deceptive trade practices. Kinney & Lange represented the plaintiff.

Strategy and Results:

After analysis of the facts and merits of the case, Kinney & Lange initiated the lawsuit. We devised an enforcement strategy to pursue cessation of infringement in various print and digital media and provide for past damages. The case moved to settlement, and we negotiated a settlement favorable to our client, the mark owner.

Party Booths, LLC vs. Cornelius Angsuco d/b/a Envy Party Booths, 8:10-cv-01595 (C.D. CA)

Service mark owner Party Booths, LLC sued direct competitor Cornelius Angsuco d/b/a Envy Party Booths for unfair competition, false designation of origin and trademark infringement. Kinney & Lange represented the plaintiff as lead litigation counsel.

Strategy and Results:

Upon analysis of the facts of the dispute, we recommended pursuing an injunction and monetary damages. Our client prevailed in a contested default judgment proceeding and a related UDRP domain name arbitration.

Edward D. Ioli Trust et al. v. Avigilon Corp. et al., 2:10-cv-00605 (E.D. TX)

This multi-party patent infringement action involved automatic license plate recognition systems. The plaintiff was a non-practicing entity patent owner. Kinney & Lange acted as defense counsel for co-defendants Image Sensing Systems and Coban Technologies, Inc.

Strategy and Results:

Kinney & Lange attorneys took an active role in the multi-party litigation and related patent reexaminations, including coordination with counsel for other co-defendants. Plaintiffs came to a settlement with our clients through mediation.

We Care Inc. v. Ultra-Mark International Inc., 741 F. Supp. 743 (D. Minn. ), rev'd, 930 F.2d 1567 (Fed. Cir.).

Plaintiff sued the defendant for infringement of a patent covering an electrical outlet cover with slidable covers, which could be used to prevent children from being harmed by the outlets. Kinney & Lange represented defendant Ultra-Mark Int’l Inc.

Strategy and Results:

The district court granted the plaintiff a preliminary injunction. Upon appealing the case before the Court of Appeals for the Federal Circuit, we obtained a reversal of the district court’s decision. We successfully argued that the district court failed to consider whether the range of equivalents sought by the patentee would encompass the prior art — a key consideration in patent case law.

Aeration Industries Int'l v. Aeromix Systems, Inc., Civ. No. 3-89-752 (D. Minn.).

Plaintiff claimed infringement of a patent involving a process for treating waste water by Defendant Aeromix Systems, Inc.

Strategy and Results:

Kinney & Lange, in representing the Defendant, carefully analyzed the history of the patent-in-suit, and discovered grounds for asserting inequitable conduct on the part of the patentee. After a bench trial, the district court agreed and held the patent unenforceable. We also convinced the district court judge to find that the case was “exceptional” under statutory requirements, resulting in defendant being awarded its attorneys' fees.

Dane Inds., Inc. v. Ameritek Inds. LLC, Civ. No. 03-3488, (D. Minn.).

Plaintiff sued Defendant alleging infringement of two patents relating to electric vehicles for pushing shopping cars. Kinney & Lange represented Defendant Ameritek Indus. LLC.

Strategy and Results:

Both parties filed summary judgment motions. The district court granted summary judgment, holding that Ameritek’s patent was not infringed by the accused products.

Dane Inds., Inc. v. Ameritek Inds. LLC, Fed. No. 04-1142 (Fed. Cir.).

Plaintiff sued Defendant alleging infringement of two patents relating to electric vehicles for pushing shopping cars. Kinney & Lange represented Defendant Ameritek Indus. LLC

Strategy and Results:

Plaintiff filed a motion seeking preliminary injunction. Kinney & Lange worked with Defendant to contest and respond to the motion. The district court denied Plaintiff's motion for failure to establish a likelihood of success on the merits of its patent infringement claims. We also represented Defendant in Plaintiff’s appeal of this decision, where the Federal Circuit affirmed the district court's holding.

Decade Industries, Inc. d/b/a Sanus Systems v. Wood Technology, Inc., 100 F. Supp. 2d 979 (D. Minn.).

Kinney & Lange represented Plaintiff Sanus Systems, who owned design patent rights to a unique ornamental design for a miniature stereo system stand. Defendant sold an accused product and a suit for infringement was filed.

Strategy and Results:

Kinney & Lange attorneys pursued a motion on behalf of Plaintiff for a preliminary injunction. The motion was granted by the district court, enjoining sales by Defendant of the accused product during pendency of the infringement suit.

Decade Industries, d/b/a Sanus Systems v. Wood Technology, Inc., 145 F. Supp. 2d 1075 (D. Minn.).

Defendant in a design patent infringement suit was subject to a preliminary injunction enjoining sales of an accused product. Kinney & Lange represented Plaintiff Sanus Systems, who owned the patent-in-suit that was the subject of the infringement case.

Strategy and Results:

Kinney & Lange helped Plaintiff move for contempt against Defendant for continuing to supply the accused product after the effective date, in violation of the preliminary injunction order. We also showed that a new product offered by Defendant was covered by the preliminary injunction order, and the District Court summarily found that the new product infringed Plaintiff's patent.

Farley v. Minnesota Scientific, Inc., Civ. No. 1:94-00478 (W.D. Mich.).

In the medical device field, Kinney & Lange represented Defendant Minnesota Scientific Inc. against patent infringement claims by the owner and the exclusivee licensee of a patent for a surgical retractor clamp.

Strategy and Results:

We analyzed the history of the patent-in-suit, and challenged its validity. Interpreting the means plus function claim language of the patent, the court granted defendant summary judgment of non-infringement.

Horton, Inc. v. Kit Masters, Inc. et al., Civ. Nos. 08-06-291, 08-06-292, 09-00-912 (D. Minn.).

Plaintiff Horton asserted infringement of a patent, related to two-speed fan clutches, against Defendant Kit Masters, who counterclaimed for infringement of one of its patents.

Strategy and Results:

Kinney & Lange represented Plaintiff Horton, Inc. in both litigation and reexamination proceedings, as well as negotiating a settlement between the parties. Defendants agreed to no longer offer certain products for sale, while Plaintiff prevailed in five reexamination proceedings related to the patents-in-suit.

Lodgenet Entertainment Corp. v. On Command Video Corp., Civ. No. 97-4135 (D.S.D.).

Kinney & Lange represented Plaintiff Lodgenet Entertainment Corp., filing a patent infringement suit against Defendant in the District of South Dakota. Defendant sought to dismiss the suit for lack of personal jurisdiction or, in the alternative to transfer the case to the Northern District of California where other actions between the parties were pending.

Strategy and Results:

We filed the suit for Plaintiff in South Dakota six hours before defendant filed a declaratory judgment action involving the same patent in the Northern District of California. The South Dakota court determined that it had jurisdiction and refused to transfer the case because the South Dakota action was "first filed" and venue was convenient.

Ryko Mfg. Co. v. Nu-Star Inc., 20 U.S.P.Q.2d 1872 (D. Minn.), aff'd, 950 F.2d 1567 (Fed. Cir.).

Kinney & Lange represented Defendant Nu-Star, Inc. against patent infringement claims by Plaintiff, owner of a patent for a keypad entry device used to access a car wash.

Strategy and Results:

We reviewed the facts and merits of Plaintiff’s patent, and put forth a strategy challenging its validity. The District Court granted summary judgment for Defendant that the patent was invalid for obviousness under 35 U.S.C. § 103. The Court of Appeals for the Federal Circuit affirmed grant of summary judgment.

Snap-on, Inc. v. Ronald J. Ortiz and SPX Corp., No. 96-C-2138, 1999 U.S. Dist. Lexis 534 (E.D. Ill).

Kinney & Lange represented Defendant SPX Corp. against allegations of infringement of five patents.

Strategy and Results:

Kinney & Lange attorneys worked to narrow the issues in the case from the outset. During initial proceedings, two of the patents were dismissed from the case. U.S. District Court Judge John Grady then held "Markman" hearings over the course of eight days to construe the patent claims of the remaining three patents. The above-cited decision is Judge Grady's Order with respect to one of the elements of one of the asserted patent claims.

TRADEMARKS, UNFAIR COMPETITION AND DOMAIN NAMES

River Point Resort, Inc. v. Mark and Kathy Zupancich d/b/a/ Zup’s Fishing Resort and Canoe Outfitters, 0:14-cv-1143 (D. Minn.)

Service mark owner River Point Resort, Inc. sued direct competitor Zup’s Fishing Resort and Canoe Outfitters over infringement, unfair competition and deceptive trade practices. Kinney & Lange represented the plaintiff.

Strategy and Results:

After analysis of the facts and merits of the case, Kinney & Lange initiated the lawsuit. We devised an enforcement strategy to pursue cessation of infringement in various print and digital media and provide for past damages. The case moved to settlement, and we negotiated a settlement favorable to our client, the mark owner.

Party Booths, LLC vs. Cornelius Angsuco d/b/a Envy Party Booths, 8:10-cv-01595 (C.D. CA)

Service mark owner Party Booths, LLC sued direct competitor Cornelius Angsuco d/b/a Envy Party Booths for unfair competition, false designation of origin and trademark infringement. Kinney & Lange represented the plaintiff as lead litigation counsel.

Strategy and Results:

Upon analysis of the facts of the dispute, we recommended pursuing an injunction and monetary damages. Our client prevailed in a contested default judgment. We later pursued a related UDRP domain name arbitration and a social media account takedown.

Empi, Inc. v. Iomed, Inc., 38 U.S.P.Q. 2d 1001 (D. Minn.).

In a trade dress dispute, Kinney & Lange represented Plaintiff Empi, Inc. Defendant sold an iontophoresis device that had the same shape, color and overall appearance as plaintiff's iontophoresis device.

Strategy and Results:

Kinney & Lange attorneys pursued, and the District Court granted, a preliminary injunction against defendant's use of the accused device during the pendency of the infringement case.

In The Matter Of Certain Health and Beauty Aids And Identifying Marks Thereon, Inv. No. 337-TA-369 (U.S.I.T.C.).

Redmond Products, Inc., maker of AUSSIE brand hair care products, sought to prevent a Canadian company from importing shampoo and conditioner under the trademark AUSTRALIAN NATURALS.

Strategy and Results:

Kinney & Lange represented Complainant Redmond Products, Inc., and this matter was amicably resolved by the parties.

Luigino's, Inc. v. Stouffer Corp., Civ. No. 5-96-133 (D. Minn.).

Stouffer Corp., owner of the LEAN CUISINE mark accused Plaintiff Luigino's, Inc., of infringing and diluting Stouffer’s mark through use of its mark LEAN 'N TASTY for frozen food entrees.

Strategy and Results:

Kinney & Lange represented Luigino's, seeking a declaratory judgment of non-infringement. The district court granted summary judgment to Luigino's, holding that Luigino's use of LEAN 'N TASTY did not infringe or dilute Stouffer's mark. We also defended Luigino's in Stouffer's appeal to the Eighth Circuit, where the District Court's summary judgment was affirmed.

Master Distributors Inc. v. Pako Corp., 777 F. Supp. 744 (D. Minn.), rev'd, 986 F.2d 219 (8th Cir.).

Kinney & Lange represented Defendant Pako Corp. when Plaintiff sued Defendant for selling blue-colored leader splicer tape (a kind of tape used in developing photographs). Plaintiff claimed exclusive rights in the color blue for leader splicer tape.

Strategy and Results:

We countered Plaintiff’s position, and the District Court granted summary judgment to Defendant, holding that the single color blue could not, as a matter of law, function as a trademark. At the time of this decision, the Courts of Appeal differed as to whether color alone could serve as a trademark. Though the court of appeals reversed, holding that the rationale of the Owens-Corning case should apply in this Circuit, this decision was part of the Supreme Court's motivation for hearing Qualitex Co. v. Jacobson Products, 514 U.S. 159 (1995), in which it was held that color alone was sufficient for a trademark.

Newport Electronics, Inc. v. Newport Scientific Pty. Ltd., Opp. No. 115,002, 2001 TTAB LEXIS 673 (T.T.A.B.).

In opposition proceedings before the Trademark Trial and Appeal Board (TTAB), Opposer Newport Electronics, Inc. challenged Applicant Newport Scientific Pty. Ltd.'s registration of the mark NEWPORT SCIENTIFIC.

Strategy and Results:

Kinney & Lange represented Applicant Newport Scientific Pty. Ltd., and after reviewing the case, presented a case that there was no likelihood of confusion, despite any similarity of the marks. The Trademark Trial and Appeal Board agreed and dismissed the opposition.

On Command Video Corp. v. Lodgenet Entertainment Corp., 976 F. Supp. 917 (N.D. Cal.).

In a patent infringement suit involving video distribution systems, Kinney & Lange represented Defendant Lodgenet Entertainment Corp. Defendant filed a motion with the Magistrate Judge to hold Plaintiff in civil contempt for violating a protective order.

Strategy and Results:

Defendant argued that Plaintiff's filing of another lawsuit based on confidential information obtained in the patent infringement suit was barred by the protective order. The District Court overruled the decision of the Magistrate Judge and held plaintiff in civil contempt.

On Command Video Corp. v. Lodgenet Entertainment Corp., No. C95-546, 1995 U.S. Dist. LEXIS 20192 (N.D. Cal.).

In a patent infringement suit involving video distribution systems, Kinney & Lange represented Defendant Lodgenet Entertainment Corp.

Strategy and Results:

In an effort to limit possible exposure to damages, Defendant moved for summary judgment that Plaintiff would not be entitled to damages for any acts occurring prior to Plaintiff providing actual or constructive notice, pursuant to 35 U.S.C. § 287. The District Court granted Defendant's motion.

William Pordy and Carberry Corporation v. Land O'Lakes, Inc., Civ. No. 01 Civ. 0579, 2002 U.S. Dist. LEXIS 22296 (S.D.N.Y.).

Kinney & Lange represented Defendant Land O'Lakes, Inc. against Plaintiff’s claims that Defendant's Fat Free Half & Half infringed its patent.

Strategy and Results:

Kinney & Lange attorneys defended the claims in a trial on the merits, and moved for judgment as a matter of law. The District Court granted Defendant's motion and entered judgment in favor of Defendant notwithstanding the verdict.

RBC Dain Rauscher v. RBCD Ain Rauscher, D2001-1236 (WIPO, Arb.).

In arbitration under WIPO over ownership domain name rbcdainrauscher.com, Kinney & Lange represented Complainant Dain Rauscher Corporation.

Strategy and Results:

A final decision was entered transferring the contested domain name to the Complainant.

Redmond Products, Inc v. Amino Sabre, Inc.,17 U.S.P.Q. 2d 1386 (C.D. Cal.).

Kinney & Lange represented Plaintiff Redmond Products, Inc., maker of AUSSIE brand hair care products. Defendants sold products under the mark AUSSIE PRO and used a kangaroo design as a trademark on its packaging.

Strategy and Results:

On behalf of Plaintiff, we filed for a temporary restraining order and preliminary injunction against defendants. The district court granted the motions based on a confusingly similar overall appearance of Defendant’s hair care products packaging.

Redmond Products, Inc. v. The Body Shop, Inc., 20 U.S.P.Q.2d 1233 (D. Minn.).

Plaintiff, owner of a trademark registration for the mark AUSTRALIAN HAIR SALAD for use on hair care products, sued Defendant for selling hair care products under the mark HAIR SALAD.

Strategy and Results:

Kinney & Lange successfully represented Plaintiff Redmond Products, Inc., winning a motion for a preliminary injunction against Defendant enjoining use of the accused HAIR SALAD products during pendency of the case.

Woodroast Systems, Inc. v. Restaurants Unlimited, Inc., 793 F. Supp. 906 (D. Minn.), aff'd, 994 F.2d 844 (8th Cir.).

Kinney & Lange represented Plaintiff Woodroast Systems, Inc., who owned a service mark registration for the mark WOODROAST for restaurant services.

Strategy and Results:

We filed for, and the District Court granted, a preliminary injunction against Defendant's use of WOODROAST and WOOD ROASTED on the menu of its restaurants in Seattle and Minneapolis.