Cardiocom, LLC (now Medtronic Care Management Services, LLC) v. Robert Bosch Healthcare Systems, Inc. Lead trial counsel on litigations, reexaminations, and Inter Partes Review Proceedings brought at the Patent Trial and Appeal Board (PTAB) on behalf of a company accused by Bosch Healthcare of infringing 12 patents related to remote health care monitoring systems. Following institution proceedings and trials regarding four patents, the PTAB found all claims in three patents invalid and all claims at issue in the fourth patent invalid. PTAB IPR2013-00431, -00449, 000451, -00468). Bosch’s appeal is pending.
Several other proceedings are pending at the Patent and Trademark Office challenging the 12 patents asserted by Bosch Healthcare against Cardiocom in litigation. Every claim currently stands rejected in reexaminations involving all six patents asserted against Cardiocom in a 2012 lawsuit, which is stayed pending the final outcome of the reexaminations. Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. 12-3864, Dkt. 43 (N.D. Cal. Dec. 3, 2012). Bosch brought a second case in Texas against Cardiocom, which we successfully moved to transfer to California and which is also stayed pending Patent Office proceedings. Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. 14-1575, Dkt. 51 (E.D. Tex. Mar. 10, 2014); Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. 141575, Dkt. 145 (N.D. Cal. July 3, 2014).
Rudolph Technologies Inc. v. Camtek, Ltd., Civil No. 05-1396 (D. Minn.) 2015 U.S. Dist. LEXIS 15017 (D. Minn. Feb. 9, 2015). Lead counsel for plaintiff, a semiconductor inspection system manufacturer and owner of U.S. Patent No. 6,826,298. Summary judgment of infringement granted, injunction issued, and $14.5 million judgment for lost profits damages and interest entered. Camtek is appealing the judgment.
The judgment was entered following a limited remand after an appeal. Rudolph Technology and August Technologies Inc. v. Camtek Inc., 655 F.3d 1278 (Fed.Cir. 2011). After a month-long trial, a jury found in favor of the plaintiff on infringement, validity, and prior art issues, and awarded lost profits of $6.8 million. An $8 million judgment and permanent injunction entered August 2009. The Court later awarded supplemental damages, found willful infringement post-trial. In 2011 the Federal Circuit affirmed the findings of patent validity and enforceability and remanded for a limited retrial due to a claim construction issue, resulting in the $14.5 million judgment described above. A copy of the transcript of the oral argument in the appeal before the CAFC is available here.
Cooper Notification Inc. v. Federal Signal et al., No. 2012-1615, 2013 WL 4611752 (Fed. Cir. Aug. 30, 2013) (D. Del. Judge Stark). Mr. McDonald was lead counsel for defendant Federal Signal which, along with three other companies including Twitter, was sued by Cooper Notification for allegedly infringing a communications system patent. The defendants sought reexamination of the patent; this led the plaintiff to agree to dismiss certain claims from the infringement case. The reexam also provided a springboard to a claim construction that Mr. McDonald used to prevail on summary judgment of noninfringement as to the remaining claims. The plaintiff appealed the summary judgment and the dismissal. The Federal Circuit affirmed all aspects of the summary judgment and dismissal of the claims in August 2013.
Integrated Tech. Corp. v. Rudolph Techs., Inc.,734 F.3d 1352 (Fed. Cir. 2013)(D. Az. Judge Finesilver). After one product Rudolph sold was found to infringe on summary judgment, well after discovery closed, and shortly before trial, Mr. McDonald and his team from Merchant & Gould were asked to substitute as counsel and try the issues that remained as well as handle any appeals. While the case initially resulted in an infringement verdict and judgment, Rudolph scored two important wins at trial: infringement as to the three other accused systems was found only under the doctrine of equivalents, and the damages award was well under the amount sought by plaintiff. Mr. McDonald argued the appeal. Rudolph prevailed on virtually all issues raised on appeal, where the CAFC reversed the findings of infringement as to the three products at issue at trial, reversed findings of willful infringement, vacated the treble damages award, and remanded for further proceedings.
ePlus, Inc. v Lawson Software, 764 F. Supp.2d 807 (E.D. Va. 2011)(Judge Payne). Mr. McDonald was lead trial counsel for the defendant, a business software provider. The plaintiff owned patents involving electronic commerce, and had collected over $54 million from other software companies, following two previous jury trials. The case was tried to a jury in January 2011 in the "rocket docket" of the Eastern District of Virginia federal court. The jury returned a split verdict on infringement. Importantly, $0 damages were awarded as the result of favorable pre-trial discovery rulings including sanctions against the plaintiff under Federal Rule of Civil Procedure 37 (see above cite). Lawson was later acquired by Infor. Decisions by the Federal Circuit Court of Appeals affirmed the award of no damages, and otherwise were favorable to Lawson/Infor.
For Your Ease Only, Inc v. Calgon Carbon Corp. et al (No. 07-4034, 7th Cir. March 31, 2009) Mr. McDonald is lead trial counsel for For Your Ease Only, Inc., whose president is Lori Greiner, a “shark” on the ABC-TV show Shark Tank. Ms. Greiner, known as the “Queen of QVC,” created anti-tarnish jewelry boxes successfully sold on QVC. For Your Ease Only (FYEO) sued competitors Calgon Carbon Corp., Product Concepts Company (PCC), and Mark Schneider for tortious interference with business relations arising from the defendants' false assertions of patent infringement.
The patent owner dismissed its patent infringement claim in view of the Federal Circuit's affirmance of the PTO's rejections of all of the original claims issued in its patent. Even though Calgon was the owner of the (now invalid) patent at issue, with FYEO's claims still pending, the case settled with a payment by Calgon to FYEO of $4.3 million.
Another defendant, Mark Schneider, moved to Costa Rica before a final judgment was entered against him and his company, PCC. The Northern Illinois District Court found that PCC fraudulently transferred its main asset-the right to $382,000 in payments from the Home Shopping Network for sales of competing jewelry boxes- to an entity called Sevenquest, LLC, also owned by Schneider, but denied relief. On appeal the Seventh Circuit, Wood, J., found in favor of For Your Ease Only, and remanded the case to the district court for further proceedings, paving the way for FYEO to recover the $382,000 sought.
Snap-Saver LLC v. Rubbermaid (E.D. Wis. Judge Shabazz). Mr. McDonald was lead trial counsel for the plaintiff, then a small company and the exclusive licensee for a patent on a food storage system involving lids that connect to bowls. Plaintiff brought the case against Newell Rubbermaid and Rubbermaid Inc. Following a favorable summary judgment decision regarding infringement, and on the eve of trial, the case settled. The confidential settlement included a consent judgment in which the patent's validity was conceded. Rubbermaid's Premier and Easy Find Lids product lines were involved. The case was filed in the Western District of Wisconsin, one of the nation's fastest jurisdictions for patent cases.
SoundBite Communications Inc v. Universal Recovery Systems, Inc. (D. Mass. 2007 (Judge Young) & D. Minn. 2008, (Judge Kyle)) Represented patent owner sued for tortious interference for sending letter regarding infringement received by plaintiff about to launch IPO seeking trebled damages of $60 million. Following countersuit for infringement and seeking to rescind statement of non-liability, case settled.
Mostly Memories Inc. v. For Your Ease Only Inc. and QVC Inc. (N.D. Ill 2005, Judge Castillo) Represented defendant FYEO. Client was sued for 47 counts of copyright infringement and several related claims. During my deposition of plaintiffs' president, the president recanted several allegations of the complaint which she had verified under oath. Plaintiffs' counsel stopped the deposition and moved to voluntarily dismiss all of the plaintiff's claims with prejudice in view of the admissions. The motion was granted. When the district court initially denied our request for fees and dismissed our counterclaims without prejudice to refiling in Missouri, we appealed to the Seventh Circuit and won a reversal with instructions to award fees under the Copyright Act and reinstate our counterclaim. Mostly Memories, Inc. v. For Your. Ease Only, Inc., 526 F.3d 1093 (7th Cir. May 27, 2008). The Seventh Circuit found that For Your Ease Only was entitled to attorney's fees as the prevailing party even though the plaintiff voluntarily dismissed its claims. The case continued regarding For Your Ease Only's counterclaims and settled.
Advantus Capital Management et al. v. Aetna, Inc., (0:06-cv-02855, D. Minn., Judge Rosenbaum). Represented plaintiff owner of ADVANTUS trademark for investment-related services. Moved for preliminary injunction to stop Aetna from using ADVANTUS for health plan-related services. Secured immediate and complete preliminary injunction in August 2006.
Susan Maxwell v. J. Baker, Melville Corp. K-Mart, Meijer Inc., Pamida, Angel-Ettes of California, Dollar General, Family Dollar, et al. Represented individual inventor of patented shoe connection system used on billions of dollars’ worth of shoes sold at discount stores. Secured several licenses and settlements following litigation efforts over several years including two jury trials which returned willful infringement verdicts and exceptional case findings leading to enhanced damages and attorney fees recovery.
Malt-O-Meal v. Quaker and Rubbermaid (3-96-cv-104, D. Minn., Judge Magnuson). Represented plaintiff in tortious interference/unfair competition case. Following jury verdict (in excess of actual damages requested) of $9.2 million, and second trial resulting in $22.5 million verdict for punitive damages, the case settled favorably.
PrimeVest Financial Services, Inc. (division of ING) v. Partnervest Financial Group, Inc. (0:05-cv-189, D. Minn., Judge Tunheim). Represented plaintiff asserting infringement of PRIMEVEST trademark. Following depositions of the executives of defendants, defendants agreed to stop using the PARTNERVEST mark and the case settled.
National Graphics, Inc. v. Travel Tags, (04-cv-0023, E. D. Wis., Judge Adelman). Represented defendant in case involving five patents for digital imaging technology. Case settled after Markman hearing involving special master.
Brandtjen & Kluge, Inc. v. Weidhaas Group Corp., (04-3421, D. Minn., Judge Tunheim). Represented plaintiff in trade dress case involving printing presses. Case settled favorably.
Protel, Inc. v. Gateway Cos., Inc. and Gavel & Gown Software (No. C 301-443, S.D. Ohio, Judge Rose). Represented defendants in patent infringement case involving software. Case resolved favorably following settlement and denial of plaintiff's motion to reopen dismissed action.
Reg Oklahoma (later Advanced Card Technologies div. of General Patent Corp.) v. Taylor Corp., (No. Civ-02-981-T, W. D. Okla., Judge Thompson). Represented defendant in patent infringement and trade secret case involving two patents on phone cards. Case stayed pending reexamination in which all reexamined claims of the original patents were rejected, eliminating past damages. After stay lifted, case settled following deposition of inventor regarding declarations filed at PTO.
Jeff Anderson and www.mnschools.com v. Advanced Access, Inc., et al., (03-2908, D. Minn., Judge Rosenbaum). Represented defendant in copyright infringement case involving website framing. Case settled during summary judgment motion hearing.
B.F. Goodrich and Rosemount Aerospace v. Auxitrol SA. and Esterline Technologies (00-cv-43, D. Minn., Judge Davis). Represented plaintiffs in trade dress case involving total air temperature sensors for jets. Defeated motion to dismiss for lack of jurisdiction despite no sales of infringing product in forum state. Case settled favorably.
Compression Labs v. Jasc Software et al. (2:04-cv-158, E.D. Tex., Judge Folsom). Represented one of several defendants in patent case involving image compression technology. Case settled favorably.
M.I.T. v. Jasc Software et al. (5:01-cv-344) E.D. Tex., Judge Folsom). Represented one of several defendants in case involving color printing patent. One of three counsel presenting argument on behalf of dozens of defendants at Markman hearing. Case settled favorably after Markman hearing.
Have represented Calvin Klein Cosmetics Corp.'s OBSESSION perfume and Major League Baseball/Minnesota Twins in matters involving preliminary injunctions and Temporary Restraining Orders (TROs) including John Doe TRO during World Series.
Represented client regarding 50+ patent portfolio of Ronald A. Katz Licensing, LLP, related to automated telephone answering systems.
Lead counsel in software license dispute in ICC arbitration for Canadian software company and Japanese distributor.
The (British) Post Office vs. Portec Inc., (D.Col. Judge Finesilver, trial conducted by Judge Seay of Oklahoma, sitting by designation). Represented plaintiff in trade secret misappropriation jury trial against Colorado-based defendant in Colorado. Judgment entered on jury award of $1.5 million+ in compensatory and punitive damages. Court also awarded attorney's fees as "exceptional case." Appeal remitted part of punitive damages award as excessive, and affirmed all other aspects of award.
Selected Articles, Books Authored
Recovery of Expert Fees Driven by More Than Octane, co-authored with Linhda Nguyen, ABA Intellectual Property Litigation, Winter 2016, Vol. 27, No. 2, January 11, 2016
MPHJ Case Is Good News For Downstream Tech Users, Law360, co-authored with William D. Schultz, September 4, 2013
E-book, Protecting Your Company from the New Era of Patent Infringement Suits, ExecSense, Dec. 2012, available at amazon.com (ASIN B00AOBIOM6)(Also available in Japanese)
“Business forum: Stemming the tidal wave of patent claims,” co-authored with William D. Schultz, Minneapolis StarTribune, August 4, 2012
LexisNexis® Intellectual Property Law Center Podcast featuring Dan McDonald of Merchant & Gould on In re: Bilski, Published on Apr 28, 2009 in Politics, available here
Beyond Rule 11: The Case For Full Early Assessment, co-authored with Joseph E. Lee, IP Law360 - December 4, 2007
Does Phillips v. AWH Corp Take the Life Out of the "Life and Meaning" Test for Whether Claim Preambles All Limitations? AIPLA Quarterly Journal, June 2007, with H. Kliebenstein
MedImmune: More Leverage, co-author, Law Week Colorado (May 14, 2007)
Fighting the Modern Patent Wars, IP Today, January 2007, page 7
Supreme Court Decision Gives Licensees Leverage, IP360, March 2007
Copyright Infringement: Risks Are Increasing Online, Forbes - April 18, 2005
The power of patent reexams: An underused weapon in the accused infringer's arsenal, The Patent Lawyer - May 2004; APLF Roundtable - 2004
Practical and Legal Issues in Utilization of Non-attorney Technologists: A Litigation Perspective, 2004 AIPLA Spring Meeting Presentation
Smart Pills: Setting Rules After Rambus, IP Law & Business - October 2003
Presentation on Trade Dress Protection in the Wake of the Supreme Court's Traffix Decision , APLF Roundtable - July 2003
Protect the Better Mousetrap, Minneapolis Star Tribune - January 2003
Why Aren't Experts Fees Recoverable in Patent Cases? Journal of Patent Office Society, Vol 84, No. 4, April 2002
Trade Dress Law, Aspen Law & Business (chapter regarding litigation from plaintiff's perspective)