Practice Areas

Litigation

Representative Clients

Marshall Gerstein & Borun attorneys are armed with a depth of technical skills across a wide array of disciplines. Many of our lawyers hold doctorates or other advanced degrees in fields as varied as microbiology, biochemistry, molecular and cellular biochemistry, physiology, tumor cell biology, molecular and reproductive endocrinology, biomechanical engineering, chemistry, chemical engineering, electrical engineering, and nuclear engineering. This additional understanding of complex subject matter, coupled with our extensive jury trial experience, enables us to convey the significance of technological innovation clearly, precisely and without ambiguity.

We approach litigation with a high regard for efficiency and sensitivity to costs. We believe litigation is a means to an end and not the end itself. We have litigated cases valued in the billions of dollars, but devote the same intensity to cases where the amount of damage recovery is secondary.

In addition to representing clients in litigation, we also offer guidance on dispute resolution mechanisms such as mediation and arbitration in conjunction with or as an alternative to litigation.

Our substantial experience in both jury and bench trials has involved some of the most significant issues and landmark decisions in intellectual property law. 

Amgen Inc. v. F. Hoffmann-LaRoche Ltd. et al., Civ. Action No. 05-cv-12237 (D. Mass.)  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 M. 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 partners Mark H. Izraelewicz and Matthew C. Nielsen, and associates Cullen N. Pendleton and Jennifer J.E. 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.

Appellate Practice

The firm’s appellate practice enjoys an especially long and distinguished history in courts of appeals throughout the nation, including the United States Supreme Court in such landmark cases as Blonder-Tongue Labs, Inc. v. University of Illinois Fndn., 402 U.S. 313 (1971), and Walker Process Equip., Inc. v. Food Mach. & Chem. Corp. 382 U.S. 172 (1965).  Recent highlights include the following:

• The South Dakota Supreme Court affirmed judgment in favor of Marshall, Gerstein & Borun client Cabela's, the outdoor equipment and clothing retailer, against claims of trademark infringement brought by the plaintiff Dakota Industries, Inc. In the trial court, the plaintiff claimed rights in DAKOTA for a variety of clothing and charged Cabelas.com with trademark infringement and state and federal unfair competition based on Cabela's sales of clothing  labeled "Dakota Vest" and "Dakota Jacket."  After  targeted discovery on plaintiff's tax and business records aimed at substantiating the suspicion that the plaintiff had abandoned any rights in DAKOTA, MGB moved for and prevailed on summary judgment with the trial court finding abandonment of the DAKOTA mark due to non-use. 
  
  On appeal to the state Supreme Court, the plaintiff claimed that the trial court erred by (1) granting summary judgment while simultaneously denying a motion to compel discovery from Cabela's, (2) imposing the summary judgment burden on the non-movant, and (3) finding abandonment of the South Dakota state trademark registration due to non-use.  On May 20, 2009, the South Dakota Supreme Court issued its opinion agreeing with Cabela's defense of the appeal on each issue.
  
  In the trial court, Cabela's had opposed the plaintiff's motion to compel sales information for the accused products on the basis that such information was not relevant to the question of abandonment and therefore not essential to opposing the motion for summary judgment. In addition to confirming Cabela's position regarding the non-essential nature of the requested information, the South Dakota Supreme Court noted that Cabela's correctly argued that sales information would necessarily be limited to sales within South Dakota despite the plaintiff's demand for nationwide sales information since the plaintiff had not plead infringement of its federal registration for DAKOTA. MGB  also successfully cancelled the plaintiff's federal registration for DAKOTA before the TTAB in response to the South Dakota state lawsuit as part of its strategy to preempt a possible subsequent federal court trademark infringement lawsuit by the plaintiff. Regarding the parties respective burdens on summary judgment, the Supreme Court found that the trial court correctly applied the initial burden to establish a prima facie case of abandonment on Cabela's and that Cabela's had satisfied that initial burden with its targeted discovery but that the plaintiff had failed to rebut the prima facie case with any evidence of continued used of DAKOTA. The Supreme Court also agreed with the arguments advanced by MGB on abandonment. The plaintiff claimed that the trial court improperly adopted the Lanham Act presumption that three (3) years of non-use results in a presumption of abandonment. In response, MGB argued that even though there was no defined period of non-use for a finding of abandonment in the South Dakota trademark statute, the trial court  had only sought guidance from the federal law and found abandonment on the much longer period of non-use of six (6) years established during discovery. The South Dakota Supreme Court agreed with MGB and affirmed summary judgment on the issue of abandonment.
  
  The MGB attorneys in both the trial court and on appeal before the South Dakota Supreme Court were Thomas I. Ross and Gregory J. Chinlund.  [Supreme Court of the State of South Dakota #24950 (2009 SD 39)] 
  
  

• Gillespie v. Dywidag Systems Int'l, Inc., 501 F.3d 1285, 2007 WL 2493339 (Fed. Cir. 2007).  Marshall, Gerstein client, Dywidag Systems, was accused of infringing a patent for a special bolt used in underground mining.  The trial court construed the patent broadly to cover multiple structures, including the structure used by Dywidag.  On appeal, Marshall, Gerstein attorneys argued that the lower court’s judgment was irreconcilable with arguments that the inventor made to the Patent Office during the course of obtaining the patent.  In reversing the trial court and ruling for our client, the United States Court of Appeals for the Federal Circuit expressly adopted Marshall, Gerstein’s reasoning, emphasizing that “[t]he patentee is held to what he declares during the prosecution of his patent.”  The MGB attorneys were Thomas I. Ross, Michael R. Weiner and Cullen N. Pendleton. 

• Franklin Electric Co., Inc. v. Dover Corp., 2007 WL 634430 (Fed. Cir. 2007).  Franklin Electric retained Marshall, Gerstein after the trial court held that its patent on an improved fuel sump was not infringed. On appeal,  Marshall, Gerstein attorneys argued that the district court’s narrow view of the patent was inconsistent with its broader language.  In reversing the trial court and ruling for our client, the Federal Circuit expressly adopted the firm’s reasoning, rejecting “the . . . limitation imported into the [patent] claim by the district court’s claim construction.”  The MGB attorneys were Thomas I. Ross and Thomas K. Stine.

• Bass Pro Trademarks, L.L.C. v. Cabela’s, Inc., 485 F.3d 1364 (Fed. Cir. 2007).  Our client, Cabela’s, was accused of selling an outdoor hunting garment in violation of a consent judgment.  The district court agreed and held Cabela’s in contempt.  On appeal, Marshall, Gerstein attorneys argued that there was no infringement, much less contempt, because the scope of the patent was constrained by statements made to the Patent Office by the inventor in the course of obtaining the patent.  In reversing the trial court and ruling for our client, the Federal Circuit expressly adopted Marshall, Gerstein’s reasoning, holding that it was “clear that this patentee procured the patent based on [a unique combination of features] stressed in the prosecution history” and that infringement could not be “reasonably found.”  MGB partner Thomas I. Ross argued for defendant-appellant. With him on the brief was partner Matthew C. Nielsen.
  
  
• Canady v. ERBE Elektromedizin GmbH and ERBE , 194 F.3d 1335 (Fed. Cir. 2006).  The firm successfully defended ERBE’s flexible catheters used in endoscopic surgery, presenting a case for  summary judgment that the trial court found “overwhelmingly persuasive.”  On appeal, the Federal Circuit summarily affirmed the district court and ordered Canady to pay ERBE’s costs.  MGB partner Michael R. Weiner was the lead attorney on the case.
  
  
• Golden Voice Techn. & Training, L.L.C. v. Rockwell FirstPoint Contact Corp., 141 Fed. Appx. 912 (Fed. Cir. 2005).  Marshall, Gerstein successfully defended on appeal a jury verdict that we obtained on behalf of our client, Golden Voice, for willful infringement of its patented telephone call center technology. Rockwell’s appeal sought to overturn both the jury’s verdict and a number of the trial court’s orders, including its award of enhanced damages and attorneys fees, its construction of the patent’s claims, and its holding that Rockwell’s activities were not licensed.  After hearing argument, the Federal Circuit summarily affirmed the verdict and all related awards and rulings. The MGB attorneys were Thomas I. Ross and Mark H. Izraelewicz.
  
  
• Christopher J. Stevens v. Shigeru Tamai, 366 F.3d 1325 (Fed. Cir. 2004).  Marshall, Gerstein successfully represented inventor Stevens on an appeal from an adverse judgment in an interference proceeding held before the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences.  The Board held that Tamai, a patent applicant who claimed to have invented the same subject matter as Stevens, was the first to invent and the only one entitled to a patent based on Tamai’s earlier filed Japanese application.  On appeal, Marshall, Gerstein attorneys argued that the Board erred because Tamai failed to comply with Patent Office rules for obtaining the benefit of a foreign application.  The Federal Circuit agreed, holding that Tamai was not entitled to such benefit because PTO rules were not followed.  The case was remanded to the Board with instructions to enter judgment in favor of Stevens.  MGB partner Carl E. Moore, Jr., argued for appellant.  With him on the brief were partners Sandip H. Patel, Michael R. Weiner, and James P. Zeller.
  
  
• Eltech Systems v. PPG Industries: Marshall Gerstein, representing Eltech Systems, won the first-ever award of fees against a patentee for bad faith in asserting infringement.  

We have litigated matters ranging from patent, trademark, trade dress and copyright cases to trade secrets, unfair competition, contract and patent-related antitrust matters. We have successfully litigated cases involving biotechnology, pharmaceuticals, chemistry, computer software, computer-related and other electrical devices, consumer products, Internet commerce, and a wide variety of mechanical and medical devices.

Antitrust

The interplay between intellectual property law and antitrust law has never been more critical to patent owners. Marshall, Gerstein & Borun has been at the forefront through our involvement in cases that significantly impact and define this relationship. We are skilled in applying sophisticated techniques for the benefit of our clients in the construction of licenses and technology transfers that avoid consequences under the antitrust laws.

Additionally, our attorneys successfully represented clients in numerous leading patent/antitrust cases, including:

• Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp.
• Moraine Products v. ICI America, Inc.
• Cataphote Corp. v. De Soto Chemical Coatings, Inc

Representative Clients

• Amgen Inc. 
• The Board of Trustees of the University of Illinois
• Charter Communications  
• FMC Corporation; Faurecia SA 
• GE Energy
• GE Licensing
• GE Security     
• Hasbro, Inc.
• Hospira, Inc.
• IRECO, Inc.
• Jenn-Air Corp.
• Loyola University Chicago
• Monsanto Company
• Newell Rubbermaid Inc.  
• Novartis AG
• Pfizer Inc.
• The Procter & Gamble Company  
• Russell Industries, Inc. 
• Walgreen Co.