In presenting this gift of Samurai armor to Marshall, Gerstein & Borun LLP, a grateful client explained that he chose the gift because Marshall Gerstein’s team of trial lawyers had “represented him as loyally and fiercely as any Samurai warrior.” Also, he added, he feared he could not have carried an actual Samurai sword through the building security.
Our client, a pioneer in reconstructive surgery, invented a revolutionary device known as a differential tissue expander. This balloon-like device, when implanted beneath the skin and inflated in stages over time, permitted a surgeon to expand a patient’s skin—in fact prompting the body to grow new tissue—for use in reconstructing adjacent wounds or defects. The invention, for the first time, permitted surgeons to tailor this skin expansion to more easily perform truly anatomic surgical reconstructions.
A professor of surgery who had devoted his career to academic medicine, the client faced the deliberate infringement of his patent by one of the largest manufacturers of these silicone devices. Despite relentless assaults by the defendant and its expansive team of attorneys, we did not waver, shrink or give ground. Through such tenacity, we successfully achieved a highly favorable result for the client.
Whether our client is an individual or corporation, patentee or defendant, we approach each engagement with the same commitment, the same fierce dedication, the same tenacity and the same focus and resolve which prompted this particular grateful client to liken us to Samurai warriors.
Illumina Continues Critical Work in Human Genomics
Working at the cutting edge of science and medicine, Marshall, Gerstein & Borun LLP's client, Illumina, Inc., created its Genome Analyzer, HiSeq, and MiSeq instruments to sequence DNA at extremely high speeds. When Life Technologies Corp. claimed that the sequencers infringed three of its DNA amplification patents, Marshall Gerstein's trial attorneys led a three-year defense of Illumina. Ultimately, the district court granted our motion for summary judgment disposing of the infringement claims, later affirming its ruling on Life Technologies’ motion for reconsideration. As a result, Illumina can continue with its critical work in the field of human genomics.
Eliminating Spillover via an Inter Partes Victory
The Firm secured a complete victory for SSW Holding Company, Inc., in an inter partes review proceeding challenging the validity of an SSW patent, making its client one of just a handful to emerge from the newly established inter partes review process with every challenged patent claim fully intact.
Inter partes review (IPR) is a streamlined process for challenging patents created through the Leahy-Smith America Invents Act of 2011 and, to date, has proven favorable to those challenging patents. Of the 78 decisions issued in IPR proceedings through June of 2014, the Patent Trial and Appeal Board cancelled or invalidated nearly 80 percent of the patent claims before it. In only 14 percent of such cases did the board find in favor of the patent owner with respect to all of the patent claims under consideration, as it did in Schott Gemtron Corp. v. SSW Holding Company, Inc. The Patent Trial and Appeal Board’s decision rejected arguments that SSW’s patent—which covers spill-containing refrigerator shelving technology used by major appliance manufacturers—was “obvious” and therefore invalid. Oral argument in the case took place on June 23, 2014.
Protecting Carbon-Capture Technologies
Marshall, Gerstein & Borun LLP obtained a successful result for CO2 Solutions, Inc., in an Inter Partes Review (IPR) of one of CO2 Solutions’ patents covering its enzyme-based technology for capturing carbon dioxide from exhaust gas. The Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office ruled in favor of CO2 Solutions on four of the five grounds of review, upholding CO2 Solutions’ commercially significant claims of the challenged patent.
CO2 Solutions’ proprietary carbon-capture technologies, as covered by the upheld patent claims and by other patents in CO2 Solutions’ portfolio, provide environmentally-friendly, efficient, and cost-effective methods for reducing carbon emissions. As stated by Evan Price, President and CEO of CO2 Solutions, “We believe this confirms CO2 Solutions’ possession of the least expensive and most environmentally friendly carbon capture technology available on the market.”
Vanguard Approach to Protect IP Rights in Bankruptcy
Marshall, Gerstein and Borun LLP’s Maureen Beacom Gorman, Julianne M. Hartzell, and Tiffany D. Gehrke are forging new law in a recent intellectual property counterfeiting case. After the team had obtained a multi-million dollar judgment and an injunction, two of the defendants sought discharge of the injunction and financial judgment in bankruptcy court. Finding no published decisions, the team successfully argued that the injunction could not be discharged, analogizing intellectual property injunctions to environmental protection injunctions that prevent further pollution. The team argued that the IP injunctions should be excluded from discharge in bankruptcy because they do not constitute debts. The California bankruptcy court agreed with this novel argument and entered summary judgment in favor of the Firm’s client, ruling that the injunction entered in the district court would be unaffected by the opposing party’s bankruptcy filing and any resulting discharge.
This innovative application of bankruptcy law is Marshall Gerstein’s most recent example of its vanguard approach to intellectual property enforcement. Over 50 years, Marshall Gerstein has had highly regarded experience in complex intellectual property litigation, enjoying a distinguished history before courts, including the United States Supreme Court in the landmark cases Blonder-Tongue Labs, Inc. v. University of Illinois Foundation, establishing the fundamental principle of offensive collateral estoppel, and Walker Process Equipment, Inc. v. Food Machinery & Chemical Corporation, setting forth the basic principles for antitrust liability under the patent laws.
IPR Win for ACCO’s ClickSafe® Locks
Marshall Gerstein successfully represented ACCO Brands Corporation and ACCO Brands USA LLC in Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB), appeal of that decision to the U.S. Court of Appeals for the Federal Circuit, and in related infringement litigation in the Eastern District of New York, in which Think Products accused ACCO’s ClickSafe® line of computer locks of infringing two Think Products patents.
Marshall Gerstein petitioned for IPR of each asserted patent, arguing that the Think Products patents were obvious over combinations of prior-art references, and anticipated by a published video disclosing the accused ClickSafe® product.
In both IPRs, the PTAB ruled in favor of ACCO on all grounds of review, cancelling all challenged claims of the patents, and these decisions were upheld on appeal to the Federal Circuit.
Patentee Prevails: Complete Victory Achieved for Ergonomics Manufacturer’s Infringement on Amazon
Through the guidance of Marshall, Gerstein & Borun LLP a leading home and office ergonomics manufacturer secured a complete victory for patent infringement. Through Amazon’s Neutral Patent Evaluation Process Program, which works to determine the invalidity of infringement allegations, Marshall Gerstein was able to prevail and all infringing items were removed from Amazon following the decision.
Intellectual Property Infringement Lawsuit filed by CureVac Against BioNTech
Marshall, Gerstein & Borun LLP represents CureVac, a global biopharmaceutical company developing a new class of transformative medicines based on mRNA, in an intellectual property infringement lawsuit filed originally in June 2022 relating to COVID-19 variant adapted vaccines, including the Omicron and XBB1.5 variants and EP4023755, relating to split poly A tail mRNA vaccines.
In May 2023, CureVac filed a counterclaim in the U.S. that alleges infringement of nine U.S. patents, expanding the scope of the case beyond the three patents originally named by Pfizer/BioNTech. These nine patents have now been extended by a tenth patent (US11667910), which relates to mRNA purification methods, a critical part of the overall mRNA manufacturing process.
Partner Mark Izraelewicz represents CureVac in the U.S. and Oliver Jan Jüngst from Bird & Bird and Andreas Graf von Stosch from Graf von Stosch Patentanwaltsgesellschaft represent CureVac in Germany.