Client Successes

Intellectual Property Litigation

Marshall, Gerstein & Borun Successfully Defends Trademark Infringement Lawsuit On Summary Judgment

Marshall, Gerstein & Borun attorneys caused a trademark infringement lawsuit against client Cabela's, the outdoor equipment and clothing retailer, to be dismissed on summary judgment.  The plaintiff, Dakota Industries, Inc, claimed to have trademark rights in  the name DAKOTA for a variety of clothing and charged Cabelas.com with trademark infringement and state and federal unfair competition, among other claims, as a result of Cabela's sales of clothing using "Dakota Vest" and "Dakota Jacket."   By obtaining tax returns and other business documents and through the deposition of the plaintiff's principal, MGB substantiated its suspicion that the plaintiff had abandoned any trademark rights in DAKOTA years earlier and briefed and argued summary judgment on that basis.  The court adopted the position advocated by MGB in its ruling dated July 1, 2008, finding that the plaintiff had abandoned any rights in DAKOTA and granting summary judgment in favor of MGB's client with dismissal of the case on the merits and with prejudice.  The MGB attorneys were Thomas I. Ross and Gregory J. Chinlund.  [Second Judicial District South Dakota CIV 06-581].

Marshall, Gerstein & Borun Successful in Amgen v. Roche Patent Infringement Trial

On October 23, 2007, after a six-week trial, a jury in the U.S. District Court in Boston returned a verdict in favor of Marshall, Gerstein’s client, Amgen Inc. (“Amgen”), against the defendants F. Hoffman-La Roche Ltd., Roche Diagnostics GmbH, and Hoffman-La Roche Inc. (“Roche”).

The case involved Amgen patents relating to the recombinant forms of human erythropoietin (“rEPO”), a hormone that stimulates the production of red blood cells. Amgen’s rEPO product, EPOGEN®, is one of the most successful biotechnology products ever (in 2006, Amgen’s annual U.S. sales for EPOGEN® totaled more than $2.5 billion).

The jury found that the production, importation and proposed sale of Roche’s pegylated form of rEPO, referred to as MIRCERA™, would infringe all of the asserted claims-in-suit, and that all of those claims are valid (the district court had earlier granted summary judgment of infringement with respect to one of the claims-in-suit). After a subsequent bench trial, the district court also rejected Roche’s inequitable conduct defense.

Marshall, Gerstein partner Dr. Kevin Flowers served as trial counsel for Amgen along with his co-counsel from Day, Casebeer, Madrid and Batchelder and McDermott, Will & Emory. Dr. Flowers’s in-court trial team consisted of Marshall, Gerstein partner Matthew Nielsen and associates Mark Izraelewicz, Cullen Pendleton, and Jennifer Flory. Many other Marshall, Gerstein litigation partners, associates, and professional staff also worked tirelessly on the pre-trial and trial aspects of the case.

Dr. Flowers and other Marshall, Gerstein attorneys also successfully represented Amgen in two prior patent infringement trials in the Boston federal district court in 2000 and 2003 that prevented Transkaryotic Therapies, Inc. and Hoechst Marion Roussel, Inc. from invalidating Amgen’s patents and marketing another form of rEPO in the United States. That case is currently awaiting a decision by the Federal Circuit on the defendants’ third appeal.

Marshall, Gerstein & Borun Attorneys Succeed in Patent Infringement Suit Dismissal 

MGB attorneys were instrumental in causing a four-year old patent infringement suit to be dismissed by the patent owner, after the federal district court’s decision on patent claim construction made proving infringement impossible.  The patents were directed to the manufacture and use of photograph-based camouflage designs on clothing.  Charged with infringement were outdoor equipment and clothing retailers Cabela’s, represented by MGB, and Bass Pro Shops and the developer of RealTree® camo designs, Jordan Outdoor Enterprises, among others.  The MGB attorneys briefed and argued at the Markman Hearing that the patent claims could not cover garments bearing a repeating pattern.  The fabric from which camo garments are made bears a repeating pattern.  The court adopted the position advocated by MGB in its ruling dated January 11, 2008, whereupon the patentee consented to a voluntary dismissal of the case with prejudice.  The MGB attorneys were Thomas I. Ross and Michael R. Weiner  [So. District of Ohio Case No. 2:03-cv-895]  

Marshall, Gerstein & Borun Wins Reversal on Appeal

Working on behalf of DSI Ground Support Inc. (formerly Dywidag Systems International USA, Inc.), Marshall, Gerstein & Borun secured a favorable result from the U.S. Court of Appeals for the Federal Circuit in a patent infringement dispute involving DSI’s cable bolt device, which is used to reinforce and support the rock formation above a mine roof. 

Gillespie, the owner of two patents directed to a particular type of mine roof bolt, sued DSI for infringement.  The Gillespie patents are licensed to Excel Mining Systems, Inc., a competitor of DSI.  DSI requested an expedited claim construction hearing, on the basis that under a correct construction of the patent claims, there could be no infringement by DSI. 

After conducting the hearing, the District Court issued a claim construction order that interpreted Gillespie’s claims in an overly-broad manner, such that there would be infringement by DSI.  To obtain an expedited resolution, DSI stipulated to infringement under the District Court’s construction and appealed to the U.S. Court of Appeals for the Federal Circuit. 

The Federal Circuit agreed with DSI’s claim construction position and concluded that, under the correct construction, there was no infringement by DSI.  Consequently, the Federal Circuit reversed the District Court’s decision and awarded judgment of no infringement in favor of DSI.

Thomas I. Ross, Michael R. Weiner and Cullen Pendleton represented DSI.

Gillespie v. Dywidag Systems Intern., 501 F.3d 1285, 2007 WL 2493339 (Fed. Cir. 2007)