Representative Cases

Representative Matters Handled by Michael R. Reinemann

ARAM Systems Ltd. v. NovAtel Inc.

We assisted Canadian counsel in representing NovAtel Inc. of Calgary, Canada, a manufacturer of GPS solutions, in an inventorship dispute brought by ARAM Systems Ltd. The case was filed by ARAM in the Court of Queens Bench in Calgary, Canada. ARAM alleged that its employee was either the sole inventor or a co-inventor of a US patent that we obtained on behalf of NovAtel. The patent is directed to the use of GPS in a seismic measuring system. We worked with Canadian counsel preparing both fact and expert witnesses, including experts on US patent law as well as an expert in GPS. The case was tried over 18 days with over 20 witnesses taking the stand. The court issued a 40 page ruling, rejecting ARAM’s contentions, and dismissing ARAM’s charges against NovAtel. As a result, inventorship of the patent was confirmed in the name of NovAtel. ARAM is currently appealing the decision.

Cricket Productions, Inc. v. Various distributors of consumer products

We represented Cricket Productions, Inc. of Marlborough, MA in eight patent infringement cases against various distributors and sellers of consumer products, including Excalibur Electronics, Inc., E. Mishan & Sons, Inc., Emson, Inc., RSGA Internat’l, Inc., Freedom Flashlights, LLC, Lentek Internat’l, Inc. and Koolatron Corp., among others. In each of these cases, Cricket alleged that the distributors and sellers were infringing two of Cricket’s patents, which were directed to batteryless flashlights. In every instance, the accused infringer settled, agreeing to take a license to Cricket’s patents or agreeing to destroy or sell-off its current inventory, and agreeing not to infringe the patents again in the future.

Lexmark International, Inc. v. Static Control Components, Inc. et al.

We represented NER Data Products, Inc. of Glassboro, NJ in a patent infringement action brought by Lexmark International, Inc. of Lexington, KY against several re-manufacturers of toner cartridges, including our client. The case was brought in the United States District Court in Lexington, KY before Judge Van Tatenhove. Lexmark claimed that our client was infringing 23 of Lexmark’s patents, was interfering with Lexmark’s contractual relations, was intentionally interfering with Lexmark’s prospective economic advantage, and was violating the Digital Millennium Copyright Act (DMCA). The patents were directed to various features of toner cartridges. We worked with our client to seek insurance coverage for the lawsuit, and to obtain indemnity from the company that supplied the parts used in the toner cartridge remanufacturing business. Lexmark’s claims were based on its sale of toner cartridges under a single-use patent license. We negotiated a favorable settlement for our client prior to trial, saving the client significant expenses.

NPC, Inc. v. International Precast Supply, Inc.

We represented International Precast Supply of Haverhill, MA, a manufacturer and distributor of construction supplies, in a patent infringement suit brought by NPC, Inc. of Milford, NH. The case was filed in Concord, New Hampshire before Judge Muirhead. The patents were directed to clamps for securing pipes to concrete manhole risers. An investigation uncovered that the invention of one of NPC’s patents had been on-sale for more than a year before the application for patent had been filed. As a result, NPC was forced to publicly disclaim this patent. We then prepared, filed and argued a motion for summary judgment asserting that our client did not infringe the second patent as a matter of law. The court, in a published decision, agreed. See NPC, Inc. v. International Precast Supply, Inc., 337 F.Supp.2d 378 (D. NH 2004). By avoiding a trial on NPC’s patent infringement claims, we were able to save our client significant expense. Shortly after the court’s ruling, the parties settled with NPC making a payment to our client International Precast Supply.

Measurement Computing Corp. and SoftWIRE Technology LLC v. National Instruments Corp.

We represented Measurement Computing Corp., a data acquisition and instrumentation company, and SoftWIRE Technology LLC, a software developer, both located in Middleboro, MA in a patent infringement dispute with National Instruments Corp. of Austin, TX. National Instruments had threatened suit against our clients for allegedly infringing eight patents relating to graphical programming systems. In response to these threats, our client filed a declaratory judgment action against National Instruments, seeking a ruling that our client did not infringe any of National Instruments’ patents or that the patents were invalid. The case was filed in the United States District Court in Massachusetts before Judge Keeton. National Instruments countered by suing our clients in Texas, and seeking to have the case transferred there. We opposed National Instruments’ efforts to transfer the case, and convinced the court that the case should remain in Massachusetts. During the course of the litigation, we identified two patents owned by Fluke Corp. of Everett, WA, also related to graphical programming systems for data acquisition. We then acquired those two patents from Fluke on behalf of our client, and asserted them against National Instruments. Specifically, we alleged that National Instruments’ LabVIEW product infringed these two patents, which had earlier filing dates than the National Instruments’ patents. Shortly thereafter, the case resolved favorably for our client with National Instruments acquiring the assets of Measurement Computing Corp. and SoftWIRE Technology for approximately $33 million.

Measurement Computing Corp. v. General Patent Corporation (GPC)

We represented Measurement Computing Corp. against patent infringement charges brought by General Patent Corporation International of Suffern, NY, a patent-holding company, and its subsidiary, Acticon Technologies LLC also of Suffern, NY. In response to General Patent’s repeated demands for a license to its patents, our client chose to file a declaratory judgment action in Massachusetts against General Patent and Acticon. General Patent sought to have the case dismissed for lack of personal jurisdiction. We discovered, through our investigation, that General Patent had misstated its intentions of suing our client to the Court during a hearing before Judge Young of the United States District Court in Massachusetts. Judge Young convened a special hearing and ordered that, even though the case would be dismissed, if General Patent were ever to sue our client, it had to do so in Boston before Judge Young. To date, General Patent has never sued our client again.

Shawn Henry v. National Geographic Society

We represented the National Geographic Society of Washington, DC in a breach of contract, conversion and unfair practices action brought by Shawn Henry, a photographer of Gloucester, MA. Mr. Henry was hired by the National Geographic Society to photograph New England for a Driving Guide published by the Society. In the lawsuit, Mr. Henry alleged that the Society did not have the right to use the photographs in a subsequent CD-based travel guide program. We moved for summary judgment on all three causes of action asserted by Mr. Henry. The court, agreeing with our arguments, dismissed two of the three causes action asserted by Mr. Henry. The case settled during trial before Judge Tauro of the United States District Court in Massachusetts.