Practice Areas > Litigation Practice

Our litigators have handled significant cases in courts throughout the United States and have achieved superior results by carefully tailoring litigation strategy to our clients’ business objectives and to the requirements of the case. The efforts of our trial lawyers have enforced important intellectual property rights in key markets, produced multi-million dollar recoveries, and secured emergency injunctive relief.

Our Litigation Practice Group

Litigation Practice Results

Ingenico Inc. v. IOENGINE, LLC

United States District Court of Delaware

Sunstein obtained a sweeping jury verdict win in a patent infringement lawsuit for Ingenico Inc., a global provider of point of sale payment terminals, software, and services. Sunstein also filed multiple petitions for inter partes review (IPR), successfully invalidating over 150 of the patent claims in IOENGINE’s three asserted patents.

The exhaustive discovery process included tens of thousands of documents, 20-plus depositions (including multiple depositions of third parties in Israel), and significant third-party discovery. Notably, Sunstein challenged the methodology by which IOENGINE’s damages expert calculated reasonable royalty damages, prompting the court to exclude the expert’s testimony. After four days of testimony, the jury found that all claims were either not infringed or were invalid.

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.


$16 million judgment

Arendi S.A.R.L. v. Apple Inc., Google Inc., Motorola Mobility LLC

(Federal Circuit 15-2073, appeal of IPR2014-00208.)

Sunstein scored a victory on behalf of its client Arendi by obtaining a reversal of a PTAB decision that had invalidated Arendi’s patent. The court warned against using so-called common sense as a wholesale substitute for reasoned analysis to show how prior art combined with extraneous knowledge or insight might invalidate a patent claim. The Federal Circuit reversed the PTAB’s finding of unpatentability outright rather than remand the case for further consideration because it found no evidence in the record to suggest that Arendi’s technique was obvious.

Softspikes, LLC et al. v. MacNeill Engineering Company, Inc. Trisport, Ltd. et al. v. MacNeill Engineering Company, Inc. et al.

United States District Court for the District of Delaware

In this pair of patent litigations, Sunstein defended MacNeill Engineering against claims of infringing five patents owned by related companies Softspikes and Trisport. In the first litigation Sunstein obtained favorable claim construction rulings that forced Softspikes to drop one of the two patents it had asserted against MacNeill. Faced with these setbacks and a counterclaim for infringement of three of MacNeill’s own patents with a substantial claim for damages, the plaintiffs agreed to a settlement and dismissed their cases.

Kotowski et al. v. Mastronardi et al. (Patent Interference No. 105,890)

United States Patent and Trademark Office, Patent Trial and Appeal Board

We obtained a win for our client American Science and Engineering in an interference proceeding against its competitor Rapiscan Systems. Interference proceedings are instituted before the Patent Trials and Appeals Board to establish priority of inventorship, because, for US patent applications filed prior to March 16, 2013, rights are awarded to the first inventor, irrespective of who first filed a patent application. For more recent applications, early filing is of increased importance. AS&E’s invention concerns backscatter x-ray technology.


Patent Award

Bowers v. Baystate Techs., Inc.

United States Supreme Court; United States Court of Appeals for the Federal Circuit; United States District Court for the District of Massachusetts

Sunstein represented Baystate Technologies in obtaining a reversal of a jury verdict of patent infringement. The patent owner claimed infringement by Baystate’s template, for use with a “digitizer” attached to a computer to assist in operating computer-aided design software. The Federal Circuit agreed with our position that the trial court erred in its claim construction and reversed the infringement ruling on the ground that the claims, properly construed, were not infringed. The case also involved significant copyright and license issues.

Engineered Data Products, Inc. v. GBS Corp

United States District Court for the District of Colorado

Sunstein obtained a confidential settlement of our client’s claims for infringement of a patent covering software for generating color-coded labels after winning summary judgment on defendant’s “intervening rights” defense. GBS had raised this defense on the grounds that EDP’s patent claims, amended during a reexamination proceeding (in which the firm represented EDP), were not substantially identical to the corresponding claims in the original patent. The Court held that the amendment of EDP patent claims during reexamination did not change their scope and that GBS would not be permitted to avoid damages for its alleged infringement of these claims before issuance of the Reexamination Certificate. See Engineered Data Products, Inc. v. GBS Corp., Slip Copy, 2007 WL 915783 (D.Col. 2007)

Areas of Expertise

Patent lawsuits and proceedings

  • Infringement
  • Validity
  • Contested PTO proceedings
  • Licensing rights

Trademark and unfair competition actions

  • Trademark infringement
  • False advertising
  • Deceptive trade practices and consumer protection
  • Commercial disparagement
  • Counterfeiting

Contracts and business conflicts

  • Breach of contract
  • Tortious interference
  • Sales agreements
  • Insurance coverage
  • Professional service relationships
  • Franchising

Copyright cases

  • Publishing and illustrating
  • Assignment and licensing
  • Fair use
  • Software development
  • Work for hire

Trade secrets and employment matters

  • Trade secret misappropriation
  • Non-disclosure agreement breaches
  • Non-competition enforcement
  • Consulting agreements

Internet disputes

  • Cybersquatting
  • Domain-name disputes
  • Online advertising
  • Social media
  • DMCA take-downs

Litigation Practice Articles

  1. Activision Wins the (Trademark) War: First Amendment Protects Depiction of Humvees in Realistic Video Games
  2. Supreme Court Denies Copyright Enforcement to State Legislature
  3. Supreme Court Allows States to Plunder Copyrighted Videos
  4. Court’s Strict Interpretation of Timing Requirement May Force Patent Validity Challenges in Two Forums
  5. Federal Circuit Averts Huge Disruption to the Patent System by Fashioning a Cure to the Status of Administrative Judges
  6. Federal Circuit Astonishingly Invalidates Manufacturing Method Patent under Section 101
  7. In Limited Circumstances, the Supreme Court Permits Businesses to Recover Patent Damages for Sales Made Outside the U.S.
  8. The Federal Circuit Boots Another Patent Case Out of Texas, and Sends a Message
  9. Section 101 Gains a Toehold in IPRs
  10. Big Changes to Canada’s Trademark Laws
  11. Digital Resale: Where New Technology Stumbles Over Old Law
  12. Restricting Keyword Advertising Can be Anticompetitive, holds the FTC
Visual divider

Litigation at Sunstein

Trial strategy is our constant focus. Our trial lawyers have won multi-million dollar recoveries, obtained emergency injunctive relief, and successfully defended bet-the-company cases. Our deep knowledge of patent and trademark law, technology and science enables us to deliver the results that advance our clients’ business goals. We have had equal experience and success in bringing trade secret and copyright matters to trial.

In federal and state courts nationwide, we represent our clients in a broad range of high-stakes commercial litigation as well.

Visual divider

Contact Sunstein

We are ready to speak with you about your legal service needs. For full biographies and contact information please see our Attorneys pages.

We use cookies to improve your site experience, distinguish you from other users and support the marketing of our services. These cookies may store your personal information. By continuing to use our website, you agree to the storing of cookies on your device. For more information, please visit our Privacy Notice.

Subscribe to our Newsletters

Subscribe to: