Our specialists in U.S. law are located in New York, Washington, D.C., and Los Angeles. They include a growing team of experienced litigators who are also patent attorneys registered to practice before the U.S. Patent and Trademark Office. Milbank’s practice includes representation in patent infringement cases of a wide variety of manufacturing and financial service companies in many diverse technologies. Our attorneys routinely advise clients on the validity and infringement of patents held by others – essential preparation for doing business in the U.S. markets today.
Milbank’s attorneys also include experienced and licensed patent and trademark prosecutors who advise clients on all aspects of intellectual property portfolio protection, maintenance and development. Our patent attorneys have technical training and experience in a wide variety of fields, including electronics, semiconductors, aerospace, telecommunications, computer software, chemistry, pharmacology, physics, mechanical design and biotechnology. Our trademark specialists draw on deep experience in varied markets, categories of goods and services and methods of protection and enforcement of trademark rights.
The London intellectual property team has the agility and intellectual capability to handle the most technically complex litigation in London and Europe, especially where there are cross-border elements, complementing Milbank’s expertise in the United States. We also have broad experience in EU law, competition and antitrust issues, pharmaceutical regulation and general commercial litigation. According to Chambers and Partners 2007, ”Milbank cannot fail to make an impact with an extraordinary partner leading it like David Perkins.”
Apple Computer -- Milbank represents Defendant Apple Computer in this patent litigation matter in the Eastern District of Texas. In the lawsuit, MedioStream alleges that Apple's line of Macintosh computers infringe MedioStream's patent related to video conversion. The case is currently in the discovery phase. MedioStream v. Apple Computer et al., (E. D. Tex. 2:07-CV-376).
AstraZeneca -- Milbank has represented AstraZeneca, a major international healthcare business engaged in research, development, manufacturing and marketing of prescription pharmaceuticals and supplier for healthcare services in several recent cases. Recently, Milbank completed a 42-day bench trial over a period of three months in the Southern District of New York representing AstraZeneca against four groups of generic pharmaceutical companies. These patent cases related to the drug PRILOSEC®, one of the most widely prescribed medicines in history. The Court found that two patents for PRILOSEC® both valid and infringed by two manufacturers and distributors of generic omeprazole (PRILOSEC®). Appeals are pending. In re Omeprazole Patent Litig., M-21-81 (BSJ), MDL Docket No. 1291.
Digene -- Milbank filed suit on behalf of Digene against Third Wave for infringement of a patent directed to a type of high-risk HPV, which causes cervical cancer. Third Wave brought antitrust counterclaims alleging that Digene’s contracting practices and terms are anticompetitive. The case is in discovery and set for a February 2008 trial. Third Wave Techs., Inc. v. Digene Corp., 05-C-0594 C and 07-C-0022 (W.D. Wisc.).
Fisher-Price and Mattel -- Milbank won two trial victories for Fisher-Price and Mattel in the United States District Court for the District of Delaware. After appeal, the court awarded a $5.7 million judgment against Safety 1st, a division of Dorel, Inc., for infringing three Fisher-Price patents covering portable infant bassinets during the period beginning in 2003 and that the infringement was willful. It also found Safety 1st in contempt for violating a 2003 injunction. Fisher-Price, Inc. v. Safety 1st et al., N. 01-0510GMS (US Dist Ct D. Del.).
Fujitsu Computer Products of America -- Milbank represented defendant Fujitsu Computer Products of America in this multi-defendant patent infringement litigation against plaintiff Compression Labs, Inc. ("CLI"). CLI asserted its patent covered the JPEG standard and products that encode or decode JPEG, such as computers, digital cameras, and scanners. After a favorable claim construction order CLI and defendants settled on terms favorable to defendants. In re Compression Labs, Inc., Patent Litig., Nos. C 05-1654, C 05-1567 (N.D. Cal.).
Fujitsu Limited -- Milbank represents Fujitsu in this patent infringement action in the Northern District of California. In this case, Fujitsu accuses Nanya of infringing five Fujitsu patent related to semiconductor manufacture, while Nanya accuses Fujitsu of infringing three Nanya patents also related to semiconductor manufacture. Discovery is on-going, and scheduled to close in late 2007. Fujitsu Limited et al. v. Nanya Tech. Corp. et. al., No. C 06-00613 (US Dist Ct N.D. Cal.)
Fujitsu Network Communications -- Milbank represented declaratory judgment plaintiff, Fujitsu Network Communications, in a patent infringement case brought by Author Collins. Collins had asserted that Fujitsu's Add-Drop Multiplexer ("ADM") equipment directly infringed Collins patent and that Southwestern Bell Telephone’s (“SWBT”) use of Fujitsu's ADMs in combination with other equipment also infringed. On summary judgment, the court agreed with Milbank, holding that Fujitsu's ADM devices, by themselves, did not infringe Collins's patents in any way, and holding that the combination of Fujitsu's ADMs in SWBT's networks did not literally infringe. Fujitsu was also successful in obtaining a summary judgment order holding that all but two of the asserted claims of Collins's lead patent were invalid. The case later settled. Southwestern Bell Tel., L.P. ("SWBT") v. Collins, (N. D. Tex. 3:04-CV-0669-B).
ImClone -- Milbank client ImClone successfully appealed to the United Kingdom High Court overturning the Patent Office's decision permitting Yeda to amend its section 37 joint entitlement claim to an RPR patent of which ImClone is the exclusive licensee. Yeda appealed to the United Kingdom Court of Appeal attempting to overturn the High Court's decision denying Yeda permission to amend its patent entitlement claim. The unanimous decision by the Master of the Rolls, Keene and Jacob LJJ upheld ImClone's earlier successful appeal from the Patent Office heard by Mr. Justice Lewison of the High Court. Rhone-Poulenc Rorer Int’l Holdings Inc. and ImClone Systems Inc. v. Yeda Research and Dev. Co Ltd., [2006] EWHC 160 (CH), [2006] RPC 24
Yeda Research and Dev. Co Ltd. v. Rhone-Poulenc Rorer Int’l Holdings Inc. and ImClone Systems Inc., [2006] EWCA Civ 1094, [2007] RPC 9.
International Securities Exchange -- Milbank represents International Securities Exchange, LLC as it asserts U.S. Patent No. 6,618,707 against CBOE’s Hybrid Trading system. ISE brought an infringement action against CBOE in the Southern District of New York in November 2006. Discovery is underway. Int’l Secs. Exch., LLC v. Chicago Bd. Options Exch., Inc. (SDNY 06 CV 13445) and Chicago Bd. Options Exch. Inc. v. Int’l Secs. Exch., LLC (ND Ill 07 CV 623).
Invitrogen -- Milbank scored a victory for client Invitrogen Corporation before the Federal Circuit. The U.S. District Court in Maryland had issued a summary judgment invalidating Invitrogen's three patents for genetically engineered reverse transcriptase enzyme. The district court did, however, also rule on summary judgment that if the patents were valid, at least one of them was infringed by the defendant Clontech Laboratories. On appeal, the Federal Circuit reversed the summary judgment of invalidity. The Federal Circuit denied Clontech's cross-appeal and thus affirmed the District court's judgment on the other issues. On remand, Invitrogen received a unanimous jury verdict finding Clontech guilty of willful infringement of all of the patent claims. Invitrogen Corp. v. Clontech Labs., Inc., Nos. 04-1039, -1040 (US Ct App. Fed. Cir.).
Lockheed Martin -- Milbank represents Lockheed Martin in this patent litigation against Advanced Technologies Group which is pending in the Central District of California. Lockheed Martin seeks a judicial determination that its engineers invented the technology claimed in the Defendants' patents, which relate to a hybrid air vehicle with an air-cushioned landing system. The case is currently in the discovery phase.
Lockheed Martin Corp. v. Advanced Technologies Group et al., (C.D. Cal. CV-07-1792).
MetLife -- Milbank successfully represented MetLife in a trademark infringement action against retail bank Metropolitan National Bank. MetLife alleged Metropolitan National Bank, by using the confusingly similar “MetBank ” trademark, infringed and diluted MetLife’s famous and distinctive family of “Met” trademarks. Milbank obtained a preliminary injunction for MetLife that proscribed certain uses of the “MetBank” trademark. Metropolitan National Bank has since completely ceased using the “MetBank” trademark. MetLife, Inc. and Metro. Life Ins. Co. v. Metro. Nat’l Bank, 05-3960 (S.D.N.Y.).
New York Stock Exchange -- Milbank is defending the NYSE in this patent infringement action brought by Papyrus which is pending in the Southern District of New York. Papyrus alleges that NYSE’s use of certain hand-held devices for securities trading infringes its patents. Discovery has closed and a claim construction hearing is scheduled. Papyrus Technology Corp. v. NYSE Inc., No. 04 CV 00625 (US Dist Ct S.D.N.Y.).
Renesas Technology -- Milbank is representing Renesas Technology Corp., a joint venture of Hitachi and Mitsubishi, in a series of five related cases involving DRAM chips and controllers. Discovery is ongoing. e.g., In the Matter of Certain Dynamic Random Access Memory Devices and Products Containing Same, Inv. No. 337-TA-595 (U.S. I.T.C.); In the Matter of Certain Semiconductor Devices, DMA Systems, and Products Containing Same, Inv. No. 337-TA-607 (U.S. I.T.C.); Renesas Technology Corp. v. Samsung Electronics Co., Inc., C.A. No. 07-53 (JJF).
Research In Motion (“RIM”) -- Milbank represents Research in Motion (“RIM”), a leading designer, manufacturer and marketer of innovative wireless solutions for the worldwide mobile communications market (including the popular BlackBerry device), in a series of trademark infringement actions. For example, Milbank successfully represented RIM in a trademark infringement action against electronics conglomerate Samsung. RIM alleged Samsung, by using the confusingly similar “ BlackJack” and “Black Carbon” trademarks for wireless handheld devices, infringed and diluted RIM’s famous and distinctive “BlackBerry” trademark. On the eve of the court’s hearing RIM’s motion for preliminary injunction, Samsung agreed to a confidential settlement regarding the “BlackJack” mark. RIM’s trademark infringement and related claims concerning Samsung’s “Black Carbon” wireless handheld device are pending. Research In Motion Ltd. v. Samsung Telecomm. Am., LP and Samsung Elecs. Co., Ltd., Case No. 06-7797 (C.D. Cal.).
Station Casinos -- Milbank represented Station Casinos in the successful defense of Harrah’s Entertainment’s patent-infringement allegations. Harrah’s asserted various casino-patron-rewards patents against Station Casino’s “Boarding Pass Rewards Program.” Milbank obtained a pre-trial summary judgment that the patents were invalid. Harrah’s Entm’t, Inc., et al. v. Station Casinos, Inc., et al., 321 F. Supp. 2d 1173, aff’d, 154 Fed. Appx. 928 (Fed. Cir. Nov. 15, 2005) (per curiam).
Tyco International -- Milbank represents five Tyco entities in this patent infringement action in the Central District of California. Stanford and Litton Systems have accused a group of defendants, including the Tyco defendants, of infringing a patent directed to optical fiber amplifiers. Discovery is on-going. The Board of Trustees of the Leland Stanford University et. al. v. Tyco International Ltd. et al., No. CV-00-10584 (US Dist Ct. C.D. Cal.).
Zuffa -- Milbank represented Zuffa, LLC which owns the Ultimate Fighting Championship ("UFC"). UFC produces and promotes mixed martial arts ("MMA") events as well as the popular reality show "The Ultimate Fighter". Zuffa sued Total Fighting Alliance in the Central District of California for trademark infringement, unfair competition under the Lanham Act, and trademark dilution. Zuffa won a motion for preliminary injunction finding that Zuffa was likely to succeed on its trademark infringement claim and its unfair competition claim and also obtained summary judgment of liability. A damages trial is pending. Zuffa, LLC v. Total Fighting Alliance et al., No. CV 06-3337 (DDP).