Joseph A. Loy, P.C.

iFIT Inc. against Peloton Interactive, Inc. (ITC, D. Del.) in several cases involving offensive and defensive patent infringement claims related to connected fitness, on-demand leaderboard and remote control technology. The cases, which also included unfair competition and false advertising claims, were resolved by confidential settlement, as reported in Law360, Peloton, NordicTrack Maker Settle Fitness Tech Patent Spats (May 16, 2022).

Frymaster, LLC, et al. against Sherwood Sensing Solutions (W.D. La.; USPTO): Lead trial counsel for Frymaster, a Welbilt company, in litigation brought by Sherwood Sensing Solutions, alleging patent infringement by Frymaster’s innovative FilterQuick® and Low Oil Volume (LOV) fryer technology. Frymaster challenged all claims of the asserted patent in an inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB), and obtained a stay of the Western District of Louisiana action. Based on the strength of the original IPR petition, Sherwood explicitly disclaimed the granted patent claims during oral argument at the PTAB. In 2021, the PTAB issued its Final Written Decision (IPR2020-00752) granting Sherwood’s motion to amend the claims but nevertheless determining that none of the proposed amended claims overcame the asserted prior art, as featured in Law360, Frymaster, Henny Penny Score PTAB Win On Fryer Patent (Aug. 24, 2021).

Purple Innovation against Tempur-Sealy (M.D.N.C.) in a patent infringement action related to Purple’s innovative mattress technology.

The Delfield Company LLC against Duke Manufacturing Co. (E.D. Mich.) in a defensive patent infringement action related to Delfield’s FlexiTop food display system.

Samsung Electronics against Dynamics Inc. (S.D.N.Y.) in a patent infringement and breach of contract defense involving alleged infringement of magnetic stripe emulation technology.

Corel Inc. in putative class action lawsuit (W.D. Tx.) alleging violation of the Computer Fraud and Abuse Act, Unfair Competition, and False Advertising related to Corel’s anti-piracy software. Following initial discovery, Plaintiff dismissed all claims with prejudice.

Emburse, Inc. against Bright Capture LLC (S.D.N.Y.) in a multipatent infringement defense; sought early dismissal of entire complaint for failure to state a claim based on 35 U.S.C. Sect. 101 and obtained voluntary dismissal of all claims and covenant not to sue for complete defense victory.

Certain Beverage Dispensing Systems (ITC): Trial counsel for Heineken against its rival Anheuser-Busch InBev in a Section 337 patent investigation. Heineken accused AB InBev of infringing Heineken’s patent related to a drink dispenser for carbonated beverages meant to preserve the taste of beer and improve hygiene over prior art systems. On Sept. 5, 2019, after a five-day trial in April 2019, the ITC ALJ found that AB InBev’s NOVA system infringed Heineken’s patent, that Heineken’s patent was not invalid or unenforceable, and that Heineken had proven a domestic industry through its licensee Hopsy. On March 11, 2020, the Commission issued a limited exclusion and cease-and-desist orders, affirming the ALJ’s September ruling that AB InBev violated Section 337 of the Tariff Act. The win was featured in the following articles: Law360, Anheuser-Busch Facing Import Ban For Infringing Heineken IP (Oct. 7, 2019); World IP Review, USITC Judge Recommends Ban on Stella Artois Draught System (Oct. 8, 2019); and Law360, Heineken Gets ITC to Ban Anheuser-Busch Dispenser Imports (Mar. 12, 2020).

Medidata Solutions, Inc., et al. v. Veeva Systems Inc. (S.D.N.Y., 2nd Cir., Cal. Sup. Ct.): Represented Medidata Solutions, Inc. in lawsuit against Veeva Systems, Inc. arising out of Veeva’s misappropriation of trade secrets relating to Medidata’s Electronic Data Capture (EDC) and Clinical Trial Management System (CTMS) SaaS products. Defeated Veeva’s motion to dismiss trade secret misappropriation claims before the district court and Veeva’s motion to compel arbitration before the district court and on appeal to the Second Circuit, as featured in Law360, Cloud Co. Can’t Beat Suit Over Drug-Testing Software IP (Nov. 26, 2018). 

Dollar Shave Club, Inc. v. Edgewell Personal Care Co., et al. (Cal. Sup. Ct.); Edgewell Personal Care Co. v. O’Malley et al. (Conn. Sup. Ct.): Lead counsel for Dollar Shave Club and employee Michael O'Malley in lawsuits in Connecticut and California state courts concerning an alleged breach of Edgewell’s noncompete and confidentiality agreements. Defeated temporary injunction motion filed against Mr. O'Malley in Connecticut action following full-day evidentiary hearing; and defeated motions to quash for lack of personal jurisdiction and motion to dismiss for forum non convenies in California matter. Won motion to strike certain causes of action because noncompete claims the Connecticut Court held Edgewell’s noncompete provisions were invalid and unenforceable.

Telular Corp., et al. against PerDiemCo (E.D. Tex.; Fed. Cir.; USPTO): Lead trial counsel for Telular, an Avista Capital Partners portfolio company, in litigation brought by PerDiemCo, alleging the infringement of 115 claims of seven patents regarding vehicle and asset tracking technology. Telular challenged those and three other patents in inter partes review (IPR) proceedings before the USPTO Patent Trial and Appeal Board (PTAB). In 2017, the PTAB invalidated three patents as to all challenged claims, determinations that stand final after PerDiemCo dropped its appeals at the Federal Circuit. In six of the other IPRs, PerDiemCo surrendered its patent claims, sought adverse judgment, and granted covenants not to sue Telular. In 2018, PerDiemCo dismissed all of its claims pursuant to a favorable settlement agreement with Telular.

Frymaster, LLC against Henny Penny Corp. (USPTO; Fed. Cir.): Lead counsel in rare victory before U.S. Patent Trial and Appeal Board (PTAB) which upheld Frymaster’s patent claims related to its oil quality sensor technology. Henny Penny filed an inter partes review (IPR) seeking to invalidate all 23 claims of Frymaster’s patent. In its final written decision, the PTAB upheld the claims’ validity in Frymaster’s favor. According to U.S. Patent Office statistics, only 4.5 percent of total petitions at this time resulted in a such a win where no instituted claims were found unpatentable. The Federal Circuit affirmed the PTAB’s findings and conclusions of law in a unanimous, precedential opinion in 2019 as featured in the Law360 article: Fed. Circ. Says PTAB Rightly Upheld Deep Fryer Patent (Sept. 12, 2019).

Certain Semiconductor Devices, Wireless Infrastructure Equipment Containing the Same, and Components Thereof (ITC Inv. No. 337-TA-1254): represented Samsung Electronics and Samsung Austin Semiconductor against Ericsson in International Trade Commission investigation involving infringement of four patents related to semiconductors used in base stations and modems deploying 5G technology as featured in the Law360 article: ITC Probes Samsung Semiconductor Claims Against Ericsson (Mar. 5, 2021).

Droga5, LLC against Dov Seidman and LRN Corp. (S.D.N.Y.): Trial counsel for Droga5 in litigation involving trademark infringement, unfair competition, and misappropriation claims arising out of the “How Matters” advertising campaign that Droga5 created for co-defendant Chobani LLC’s Greek Yogurt products, that launched with a Super Bowl spot that featured a grizzly bear ransacking a country store looking for Chobani Greek Yogurt. The case settled shortly before trial.  

Certain Electronic Devices For Capturing and Transmitting Images, and Components Thereof (ITC Inv. No. 337-TA-831): Trial counsel for a leading computer, mobile device and media player company against Kodak involving digital camera transmission technology. Just prior to filing for bankruptcy, Kodak sued the client for patent infringement. Joseph led the technical defense and played a lead role in developing the client’s winning strategies that led to a favorable dismissal. As widely reported in the press, Kodak sold its patent portfolio to a consortium of buyers, including Intellectual Ventures and RPX Corp.

Virgin Cruises against Colin Veitch, the former CEO of Norwegian Cruise Lines (S.D. Fla.) who sought more than $300 million for Virgin Cruises’ alleged misappropriation of Veitch’s business idea to launch a Virgin-branded cruise line with two “Ultra Ships”. Virgin Cruises denied the allegations stating that its business plan was independently developed by a team of industry veterans and that the “trade secrets” were publicly known. Virgin Cruises also emphasized that its business plan was not sufficiently similar to Veitch’s, as Virgin Cruises intends to set sail with a fleet of new mid-sized ships that differ substantially from those Veitch proposed. The parties settled and Veitch dismissed the claims in February 2016.

K12 Inc. against IpLearn LLC (D. Del.) in a multipatent infringement defense; obtained early dismissal of all indirect infringement claims, argued successful claim construction that led to stipulation of dismissal of noninfringement of one patent; obtained summary judgment of invalidity pursuant to 35 U.S.C. Sect. 101 of another patent for complete victory as featured in the Law360 article: Alice Dooms Computer Education Patent, Judge Says (Dec. 18, 2014).

TIBCO Software Inc. against Vasudevan Software, Inc. (N.D. Cal., Fed. Cir.) in a defensive patent infringement action regarding business intelligence and database software; argued pretrial discovery disputes, summary judgment and Daubert motions; obtained summary judgment of noninfringement and invalidity for failure to meet the written description and enablement requirements as featured in the Law360 article: MicroStrategy, TIBCO Get Vasudevan Database Patents Nixed (Oct. 18, 2013); claim construction and noninfringement affirmed by Federal Circuit on appeal as featured in the Law360 article: Fed. Circ. Upholds Processing Patent Noninfringement Ruling (Apr. 4, 2015). This appellate victory helped Kirkland & Ellis nab the top spot for firms that argued before the Federal Circuit in 2015, as featured in the Law360 article: These Law Firms Crushed it at the Federal Circuit in 2015 (Mar. 9, 2016).

Converse Inc. against numerous shoe retailers in a Section 337 investigation before the International Trade Commission validating Converse’s intellectual property rights in the iconic Chuck Taylor All Star as featured in the Law360 article: Converse Claims ITC Win Against Wal-Mart Over Chuck Taylors (Nov. 17, 2015).

C.R. Bard, Inc., Davol, Inc., and Medafor, Inc. against CryoLife, Inc. (D. Del.) in a declaratory judgment patent infringement action; obtained dismissal of C.R. Bard and Davol on jurisdictional ground; won preliminary injunction barring sales of CryoLife's PerClot® blood-clotting product, as featured in the Law360 article: Judge Issues Rare Injunction in CR Bard Unit's Patent Case (Mar. 11, 2015).

Heritage of Pride, Inc. against Matinee NYC Inc., et al. (S.D.N.Y.) in a trademark and unfair competition matter for NYC Pride resulting in a preliminary injunction against defendants shortly after which the case settled.

Alcatel-Lucent against Wi-LAN Inc. (S.D. Fla.) in a multipatent infringement litigation involving LTE wireless technology; argued motion to dismiss and discovery motions, including successful opposition of motion to compel deposition of a senior executive; elicited technical expert testimony during Markman hearing resulting in a favorable claim construction ruling and settlement shortly thereafter.

Welbilt Corp. against f’real Foods, LLC (D. Del., S.D.F.L) in its defense of a multipatent infringement action related to Welbilt’s innovative beverage platform and next-generation blend-in-cup technology. As lead trial counsel, successfully moved to intervene in a related Southern District of Florida action where f’real sued Welbilt’s business partner, Fresh Blends North America, for alleged infringement of the same patents; also successfully moved to stay the duplicative Delaware action. Following a Markman hearing in the South Florida action, the case settled.

Valeo and Connaught Electronics against Magna Electronics (E.D. Mich.) in their defense of a multipatent consolidated infringement action related to vehicle imaging systems that included lane-departure warnings, object detection and other driver-assistance and semi-autonomous vehicle systems.  

Samsung Electronics against WiNet Labs LLC (S.D.N.Y.) in its defense of a patent infringement action related to ad-hoc network methods.

Dick’s Sporting Goods against Rogue Fitness (S.D. Oh.) as lead counsel in its defense of alleged infringement of one utility patent and three design patents related to a weightlifting rack assembly and wall mount.

Argued on behalf of leading computer, mobile device and media player company, as lead counsel in IPR before the U.S. Patent Trial and Appeal Board (PTAB) that resulted in unpatentability decision of 35 claims related to techniques for securely communicating over the Internet based on a protocol called the “Tunneled Agile Routing Protocol.” (IPR2017-0037).

IBM against Vasudevan Software, Inc. (N.D. Cal.) in its defense of a multipatent infringement action involving business intelligence and database software.

Arendi S.A.R.L. against Microsoft Corp. (D. Del.) in a consolidated multipatent infringement action involving desktop and mobile software applications.

Schlumberger Technology Corp. (E.D. Tx.) in a multipatent infringement litigation involving oil drilling services technology.

Alcatel-Lucent against Microsoft Corp., Dell Inc., and Gateway, Inc. (S.D. Cal.) in a multipatent trial involving perceptual audio coding resulting in a jury verdict for plaintiff Alcatel-Lucent. Joseph was subsequently mentioned in the article Big Suits: Lucent v. Microsoft in the May 2007 issue of The American Lawyer.

Cisco Systems, Inc. against Fenner Investments, Ltd. (E.D. Tx.) in a multipatent infringement litigation involving mobile data technologies resulting in a favorable settlement on the eve of trial.

Transkaryotic Therapies, Inc. ("TKT") (S.D. Cal.) in its defense of inventorship claims regarding its pioneering targeted gene activation technology; obtained dismissal of the case on jurisdictional grounds.

United States Peace Corps Volunteer, The Gambia, West Africa