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
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.
We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.
Sunstein won the appeal for Power-One which upheld a judgment of non-infringement. We also represented Power-One in Federal District Court in Massachusetts in this patent infringement action, which concerned power converters essential for providing a DC voltage to computers or other electronic equipment. Early in the litigation, we forced the plaintiff to narrow its claim brought against hundreds of millions of dollars in sales down to the limited sales of a particular series of power converters, and next forced the plaintiff to drop its claims for lost profits. We then obtained favorable claim construction and judgment of non-infringement as to the remaining series of power converters.
Sunstein obtained a summary judgment ruling in favor of its client, a Sonoma winery, holding that the winery’s trademark licensee, an importer of luxury vodka, breached its license to use the BELVEDERE® trademark, that the winery properly terminated the vodka importer’s license, and, accordingly, that the importer’s continued sales of BELVEDERE® vodka infringed the winery’s trademark rights. The case, which was litigated in the federal court in San Jose, settled shortly after the summary judgment ruling.
Sunstein brought suit in federal district court in Massachusetts against Lone Peak Labeling System on behalf of its client M&M Label Company in an action for breach of contract, trademark infringement, false designation of origin and unfair competition. M&M Label is a leader in the label, decal and nameplate production and printing industry in the United States and the creator of the proprietary label-printing system sold under the trademark THE MERCHANDISER. After seeking a preliminary injunction, we obtained an agreement from Lone Peak to, among other things, immediately cease use of the mark THE MERCHANDISER and to abandon its application with the USPTO.
Sunstein represented NameMedia in a federal court action in the Eastern District of Virginia “rocket docket” brought by AOL, Time Warner, and associated companies. Plaintiffs asserted claims including trademark infringement, cybersquatting, and breach of contract relating to the registration of certain domain names. After vigorous motion practice on numerous issues, including the successful defeat of plaintiffs’ motion to dismiss NameMedia’s reverse domain name hijacking counterclaim (an issue of first impression), and motion practice related to NameMedia’s defense that the agreement underlying AOL’s breach of contract claim was unenforceable due to conflict of interest, a stipulation of dismissal of the action, with prejudice, was entered.
Sunstein won a $20.7 million jury verdict for First Act in this suit for false advertising in violation of the Lanham Act, commercial disparagement and interference with contractual relations. During the five-week trial, we presented extensive expert witness testimony including in-courtroom demonstrations as proof that defendant’s statements about our client’s musical instruments were false. The global aspects of the parties’ manufacture and distribution of the products in issue posed unique challenges involving discovery throughout the United States and in China and Hong Kong. In addition, because of the harm being caused to our client on an ongoing basis, we acted quickly upon filing suit to obtain expedited discovery and a preliminary injunction against the defendant. The case is also of general interest because we established jurisdiction in Massachusetts over the Texas-based defendant by proving (among other facts) the defendant’s contact with Massachusetts through email messages sent to residents of the forum state.
Sunstein represented Ken’s Steak House, a restaurant in Framingham, Massachusetts, in a trademark lawsuit brought by Ken’s Foods. The parties reached an amicable settlement on the second day of trial. The terms of the settlement are confidential.
Sunstein brought suit in federal district court in Massachusetts against a medical marijuana dispensary using the name Sage Naturals (formerly Sage Biotech) on behalf of Sage Therapeutics, a biopharmaceutical company based in Cambridge, Massachusetts, with global activities committed to developing novel medicines to treat patients suffering from CNS disorders. Sage Naturals promoted use of its medical marijuana products to treat the same types of CNS disorders that Sage Therapeutics’ investigational medicines were intended to treat. Sage Naturals subsequently changed its name to Sira Naturals.
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