Intellectual Property Litigation

Wiggin and Dana’s Intellectual Property Practice Group has decades of experience providing Japanese companies with comprehensive IP services in all aspects of patent, copyright, trademark, trade secret, and proprietary technology protection and enforcement. We also know Japanese corporate culture, communication styles, and how to deftly navigate complicated issues, whether external or internal. Two of the partners leading our Japan practice spent over a year living in Japan, working at the IP and licensing department of one of our Fortune500 clients headquartered in Japan. Our team also has several Japanese-speaking attorneys, and we have consulting counsel located in Japan that works closely with the firm.

Our team helps clients develop strategies to identify, secure, and enforce patent rights on their innovations and discoveries, including preparing and prosecuting the U.S. and foreign patent applications across a broad spectrum of technologies. Our lawyers also help clients with trademark selection and availability as well as with copyright and trademark registration, protection, enforcement and defense, licensing, and transfers worldwide.

Our litigators and licensing attorneys execute strategies that provide creative solutions to disputes, both in and out of the courtroom. We have litigated all types of intellectual property disputes in courts throughout the United States, before the International Trade Commission, at the U.S. Patent and Trademark Office, and in arbitration. We pride ourselves on our wins in high-stakes, complex patent cases and our cost-efficient handling of all matters, big or small. Our patent experience spans cutting-edge technology, telecommunications, media, life sciences, financial services, medical devices, chemistry, and other rapidly evolving industries such as blockchain, NFTs, gaming, and the metaverse. We regularly advise clients on high-value licenses and cross-licenses.

As intellectual property expands in importance as a corporate asset, our team advises clients along the life cycle of their patents, copyrights, trademarks, rights of publicity, trade secrets, and know-how. We rely on our prominent litigation, antitrust, and transactional expertise in all types of IP rights.

Saito International IP Firm & Squall IP LLC. – Our Global Reach

Wiggin and Dana regularly partners with Saito International IP Firm & Squall IP LLC., a Japanese-based consultancy firm that focuses on patent licensing, transactions, and litigation matters. Their experience includes a large number of patent cases in a variety of high-tech fields, including consumer technology, electronics, computers, semiconductors, smartphones, and medical devices.

For more information, please contact Takao Saito, TSaito@wiggin.com.

ウィギン&ダナの知的財産グループは、特許権、著作権、商標権、トレードシークレット、及び技術資産の保護と権利行使について、あらゆる面で広範囲な知的財産法務サービスを数十年に亘り日本企業様へご提供してきました。弊事務所は、日本企業の企業文化、コミュニケーションの取り方を熟知し、また社内外の複雑な課題を正しい方向へ導く方法を理解しています。日本案件を主導している２名のパートナー弁護士は、日本に１年以上の駐在経験があり、フォーチュン５００の１社であるクライアント様の本社知財部門ライセンス部にて勤務した経験があります。知的財産グループには、日本語が出来る弁護士も所属しており、また日本にはコンサルティングカウンセルが常駐し、米国の同グループ弁護士と密接に業務を遂行しています。

知的財産グループは、クライアント様の自社のイノベーションや発明について、広範囲な技術分野に渡り、米国及び外国特許出願の書面準備、出願手続きを含め、特許権の範囲を明確化し、保護し、そして権利行使をする戦略策定の支援を致します。また、弊事務所の米国弁護士は、商標権の選択・登録可能性に関して、また著作権及び商標権の全世界での登録、保護、権利行使、防御、ライセンス、移転についてもクライアント様をご支援致します。

弊事務所の訴訟弁護士及びライセンス弁護士は、裁判所内外での紛争に対し、創造的な解決策を提供する戦略を実行致します。私達は、米国全土の裁判所、ITC（米国国際貿易委員会）、USPTO（米国特許商標庁）、また仲裁において、あらゆる形態の知的財産紛争を解決してきました。私達は、大小にかかわらず、高い費用対効果にて全案件を遂行し、またハイリスクで複雑な特許事件に勝訴してきていることに誇りを持っております。私達の特許事件に関する実績は、先端技術、通信、メディア、ライフサイエンス、金融サービス、医療機器、化学、そしてブロックチェーン、NFT、ゲーム、メタバースのような現在急速に進化している産業分野にも及びます。私達は、高い付加価値を生み出すライセンスやクロスライセンス案件でのソリューションを常にクライアント様にアドバイスしています。

知的財産が企業資産として重要な位置づけを担うようになってきている中、知的財産グループは、クライアント様の自社特許権、著作権、商標権、バブリシティ権、トレードシークレット、ノウハウのライフサイクルに沿ってクライアント様に対しアドバイスをしています。また、私達は、あらゆる形態の知的財産権における訴訟、独占禁止法、および商取引に関する卓越した専門性に依拠し業務を遂行しています。

齊藤国際知財事務所/Squall IP合同会社 当事務所のグローバル窓口

ウィギン&ダナは、日本を拠点とする特許のライセンス、取引、訴訟事項に焦点を当てたコンサルタント会社である齊藤国際知財事務所/Squall IP合同会社と常時提携関係にあります。同事務所・会社の実績は民生品技術、エレクトロニクス、コンピュータ、半導体、スマートフォン、医療機器等広範囲なハイテク分野における多くの特許係争を手掛けた実績をもっています。

詳しくは, Takao Saito,　コンタクト先 TSaito@wiggin.com.

Wiggin and Dana regularly partners with outside Special Counsel on complex patent and litigation matters.

Maria Granovsky, Special Counsel

mgranovsky@wiggin.com

Maria Granovsky focuses her practice on patent litigation and complex technology disputes. She has represented clients ranging from individual inventors to Fortune 500 companies in a wide variety of industries, including pharmaceuticals, biotech, medical devices, telecommunications, semiconductors, and financial services. She has litigated matters in jurisdictions across the United States, including, Delaware, Texas, California, Wisconsin, New Jersey, and New York.

Prior to attending law school, Maria earned a Ph.D. in molecular genetics. Her research was published in leading scientific journals, including Nature, Nature Medicine, and Science.

Education

• Georgetown University Law Center (J.D., 2005)
• University of Toronto (Ph.D., Molecular Genetics, 1999)

Bar Admissions

• New York
• Delaware

Court Admissions

• US District Court (Delaware)
• US District Court (Eastern District of Michigan)
• US Court of Appeals for the Federal Circuit

Steven R. Hansen, Special Counsel

shansen@wiggin.com

Steven Hansen focuses his practice on patent litigation.  He has extensive experience litigating patent cases and was previously a patent litigation partner at Quinn Emmanuel Urquhart & Sullivan LLP and special counsel at LTL Attorneys LLP.  Prior to attending law school, Steve was a process engineer and process control engineer for Amoco Oil Company.  He was selected to Thomson Reuter’s “Super Lawyers” list in 2013, Michigan’s “Super Lawyers” list for IP for 2023 and 2024, and Southern California’s “Super Lawyers” list for IP for 2023.

Steve has experience in a wide variety of technologies, including 3D printing,  smart TVs, surgical headlamps and cameras, nerve stimulation devices, hot surface igniters, marine propulsion systems and ballast controls, spinal implants, telemedicine, lubricant chemistries, polyalkylene glycols, alkylene oxide production processes, oil refining, exhaust aftertreatment, nucleic acid isolation and purification, molecular diagnostic testing, protein chemistry, biosensors, nanotechnology, transdermal drug delivery,  immunoassays, pet toys, cellular networks, bicycle components, vehicle lifts, polymers, pressure sensitive adhesives,  scanning electron microscopy, vehicle safety systems, remote controls, and business methods. He has also prepared and prosecuted numerous utility and design patent applications, requests for reexamination, and reissue applications.

Education

• Harvard Law School (J.D., magna cum laude, 1998)
• University of Michigan (B.S.E., Chemical Engineering, summa cum laude, 1988)

Bar Admissions

• California
• Michigan

Court Admissions

• Registered to practice before US Patent and Trademark Office
• US Court of Appeals for the Federal Circuit
• US District Court (Central and Northern Districts of California)
• US District Court (Eastern and Western Districts of Michigan)
• US District Court (Eastern District of Texas)

Takao Saito, Consulting Counsel

tsaito@wiggin.com 

Takao Saito is consulting counsel for Wiggin and Dana, LLP and is also the sole proprietor of Saito International IP Firm & Squall IP LLC.

Takao’s practice focuses on representing clients in patent licensing matters and patent infringement litigation. Takao also counsels clients on patent portfolio management, intellectual property strategy developments, patent monetizing negotiations, and other IP related matters in cross-border M&A and strategic business and technology alliances. Prior to joining Wiggin, Mr. Saito worked for more than 18 years at Panasonic Corporation. Takao Saito’s keen understanding of patent licensing, transactions and litigation has made him a valuable resource for clients facing the most complex IP challenges. His experience includes a large number of patent cases in a variety of high-tech fields, including consumer technology, electronics, computers, semiconductors, smartphones, and medical devices.

Education

• LL.B., Doshisha University, Japan
• Goteborg University, Sweden
  • Intellectual Capital Management for lawyers
• PhD., Kyoto University

Bar Admissions

• Japan Patent Attorney
• California

Awards and Recognition

• IAM Strategy 300 – The World’s Leading IP Strategists (2017-2023)

Arbitration

• Ovonic Battery Co. et al. v. Matsushita Electric Industrial, Co. Ltd. et al., International Chamber of Commerce. After a three-week arbitration, a comprehensive settlement was achieved for our client.
• Represented aTelo in an international arbitration with a Polish telecom company. Arbitration award granted all requested relief.
• Roche Diagnostic Operations, Inc. et al. v. Bayer Corporation et al., Civil Action No. 07-753-JJF. This suit was filed in the District of Delaware and involved blood glucose meters and test strips. Bayer successfully moved to have the matter resolved in arbitration which was successfully resolved after a trial before a panel of three arbitrators.

Appellate

• Inventio v. ThyssenKrupp: Successfully represented client in the Federal Circuit.
• Movea v. Hillcrest Labs (2016): Represented successful PTAB patent challenger. Succeeded in having Federal Circuit affirm PTAB decision of invalidity.
• Movea v. Hillcrest Labs (2018): Represented successful PTAB patent challenger in defeating a Cert Petition at the US Supreme Court.
• Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117, Northern District of California. In this medical device case, a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent was obtained on behalf of Bayer Corporation, including an award of attorneys’ fees. The current standards for inequitable conduct were established in the en banc decision by the Federal Circuit in this case.
• Successfully defended appeals for the Optimum Power, Burnett and Typhoon cases below.

Inter Partes Review and Post Grant Review

• Represented Visionsense Corp., a medical device start-up, in successfully initiating an inter partes review against a competitor who had asserted patents that were interfering with its funding and eventual acquisition.
• Represented The Mangrove Partners Fund before the U.S. Patent Office in inter partes review proceedings brought to challenge the validity of certain Virnetx Patents that are the subject of ongoing litigation against Apple, where Virnetx is seeking $700M in damages. The PTAB originally ruled in favor of Mangrove’s petitions, finding the challenged VirnetX claims to be invalid. After VirnetX appealed to the Federal Circuit and the Federal Circuit remanded, the PTAB recently affirmed their invalidity decision on these Virnetx Patents.
• Brought and won a series of inter partes and ex parte reexaminations against patents held by Kimberly Clark.

Patent Litigation

• Lufthansa Technik AG v. Astronics Advanced Electronic Systems Corp., Case No. 2:14-CV-1821, Western District of Washington. In this avionics industry case, firm client Astronics obtained a successful claim construction and summary judgment of patent indefiniteness.
• Genovis AB et al. v. Promega Corp., Case No. 3:15-CV-00206, Western District of Wisconsin. In this biotech case, firm client Genovis asserted its key patent against a competitor ending a hard found litigation with a beneficial settlement.
• Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117, Northern District of California. In this medical device case, a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent was obtained on behalf of Bayer Corporation, including an award of attorneys’ fees. The current standards for inequitable conduct were established in the en banc decision by the Federal Circuit in this case.
• Roche Diagnostic Operations, Inc. et al. v. Bayer Corporation et al., Civil Action No. 07-753-JJF. This suit was filed in the District of Delaware and involved blood glucose meters and test strips. Bayer successfully moved to have the matter resolved in arbitration.
• Matsushita Electric Industrial Co., Ltd. et al. v. Inverness Medical Technologies, Inc. et al., Civil Action No.: 00-143-SLR. This case was filed in the District of Delaware and involved medical devices. Our team represented the patentee (Panasonic) and the case concluded when the alleged infringer agreed to stop production of its generic product.
• Matsushita Battery Industrial Co., Ltd. et al. v. Energy Conversion Devices, Inc. et al., Civil Action No.: 96-101-SLR. Panasonic filed a declaratory judgment action in the District of Delaware. The matter was resolved when the patentee agreed to a covenant not to sue.
• Eveready Corporation v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No.: 1:01CV877, filed in the Northern District of Ohio. The case settled after the patent-in-suit was challenged by our client on the ground of inequitable conduct.
• International Control Systems, L.L.C. v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No. 3:00 CV 00537, filed in the District of Connecticut. After our team pressed for Rule 11 sanctions, the Plaintiff withdrew the case in its entirety.
• Typhoon Touch Technologies, Inc. v. Nova Mobility Systems, Inc. et al., Civil Action No. 6:07cv546, Eastern District of Texas. We pursued a successful Markman strategy that resulted in a stipulation of non-infringement and successful appeal.
• Sony Electronics, Inc. et al. v. Soundview Technologies, Inc., Case No.: 3:00-CV-754, District of Connecticut. We filed summary judgment of non-infringement, and was successful before the district court and was affirmed by the Federal Circuit.
• In Re Compression Labs, Inc. Patent Litigation, Case No. MDL 05-01654, Eastern District of Texas. We pursued a transfer strategy that resulted in one of the first cases involving a non-practicing entity that was transferred out of the Eastern District of Texas. Our team developed the key prior art defense for the group and took the lead at depositions dealing with prior art and inequitable conduct defenses. Based on the prior art defense and a successful Markman hearing, the case was successfully resolved.
• Technology Licensing Corporation v. JVC Americas Corporation, Civ. Action No. 1:12-cv-1444, Northern District of Illinois. Firm client JVC moved for summary judgment on the ground of non-infringement due to license and was successful. The plaintiff did not appeal.
• Digital Corporation v. JVC Kenwood Corporation et al., Case No. 3:13-cv-00356, Southern District of California. Firm client JVC moved for collateral estoppel on claim construction, which eliminated two patents from the case before any discovery was allowed. Thereafter, the matter was quickly resolved by settlement.
• Optimum Power Solutions, LLC v. Panasonic Corporation of North America, Case No. 3:12-cv-03123 SI, Northern District of California. Our client moved for summary judgment of non-infringement, which was granted and affirmed on appeal.
• Carl M. Burnett v. Panasonic Corp. et al, Case No.8:17-cv-00236-PX, District of Maryland. Our client successfully won a motion to dismiss on the elusive issue of patentability under 35 U.S.C. 101 which was upheld by the Federal Circuit after it had decided Berkheimer, which toughened the standard for prevailing on such strategy.
• Trial counsel to YKK in a patent infringement and false advertising case in the Southern District of New York. Devised successful strategy to reduce the multi-million dollar false advertising claim, and after a bifurcated trial, the case settled on favorable terms.
• Represented Soverain Software LLC in patent infringement case in the Eastern District of Texas involving e-commerce technology against a number of defendants including J.C Penney, Victoria’s Secret, Avon and other online retailers. Obtained jury verdict of infringement, validity, and millions in damages.
• Represented Symantec Corporation in several patent cases in the Northern District of California and District of Delaware regarding backup and recovery software. Cases settled favorably after filing summary judgment motions.
• Defended Symantec Corporation in patent litigation in the Northern District of California, regarding anti-virus software. Case settled favorably after winning a key motion that gutted Plaintiff’s damages case.
• Represented various brand pharmaceutical companies against generic companies in Hatch Waxman ANDA litigation including against Teva, Amneal Pharmaceuticals and others in separate unrelated matters, reaching successful settlements or summary judgment.
• Represented INVISTA, a subsidiary of Koch Industries, in a breach of contract and patent infringement litigation in the Southern District of New York. Case settled favorably after filing an early motion for summary judgment.
• Wikeshire v. Kapsch (2022): Represented manufacturer of RFID electronic tolling equipment in patent infringement suit.
• mCom v. CSI (2021/Ongoing): Represent developer of electronic banking system in patent infringement suit.
• RFID ITC case (2020): Represented manufacturer of RFID electronic tolling equipment in ITC case.
• Sipco v. Streetline (2016): Represented manufacturer of electronic parking system in patent infringement suit.
• T-Rex v. Interactivation Health (2015): Represented developer of medical electronic programming systems in patent infringement suit.
• Schindler Elevator Corp. v. Otis (2008 to 2013): Represented Swiss elevator manufacturer in patent infringement suit.
• Inventio v. ThyssenKrupp (2008 to 2015): Represented Swiss IP holding company asserting elevator technology patents in patent infringement suit.
• Lochner v VIZIO – Represented VIZIO.  Invalidated a patent directed to a wireless dummy terminal/base station system that Lochner tried to read on tablet computers based on the plaintiff’s broad claim construction.  CAFC reversed on the grounds that the claim construction should have been narrowed, and the case settled after filing a motion for summary judgment of non-infringement.
• Oplus v. VIZIO – Obtained summary judgment of anticipation based on prior art in case involving high-definition TV signal processing.  Wrote and argued the motion and took the expert deposition that got us the admissions we used.
• DNP v. Natural Alternatives International – Argued Markman hearing and obtained favorable constructions on behalf of DNP in nutraceutical patent case.
• Blu-Ray Disc Players (ITC) – Obtained favorable walk-away settlement of ITC matter and related district court case on behalf of VIZIO in case brought by Walker Digital against entire Blu-Ray player industry.

Trademark Litigation

• Represented PGA of America in confidential arbitration successfully resolving a trademark and breach of contract dispute.
• Defended Legal & General (insurance/financial services) in a breach of contract and trademark infringement matter in District of Connecticut against The Travelers Companies successfully resolving the case, involving use of their respective logos on favorable terms.
• Represented Deckers Outdoor Corporation in various trademark matters in the Central District of California, regarding protection of the Deckers famous “Uggs” trademark and the trade dress of its footwear designs. Resolved the cases on favorable terms.
• Represented small start-up with the rights to Unicorn trademark for beverages against one of the largest convenience store chains, successfully resolving the case without trial.
• General Mills Specialty Products, LLC v. Raw-Bite ApS, Civ. Action No.  17-cv-03625, D. Minn., represented defendant for trademark and trade dress infringement on a preliminary injunction, crafting a settlement after the hearing.

Copyright

• Shpisman v. Envisiontec – Obtained favorable settlement on behalf of Envisiontec against former employee’s 3D printer software copyright claims after filing for summary judgment.
• Representing Mystic Seaport Museum—one of the world’s foremost maritime museums—as lead counsel in a federal copyright and contract lawsuit brought by a private party seeking to nullify a decades-old donation of thousands of historically significant yacht-design drawings. The district court granted summary judgment on all of plaintiffs’ copyright and contract-based copying claims and further held that the donated drawings—described as the “yacht-world equivalent of holding the original sheets where Beethoven drafted his symphonies”—must remain with the museum.
• Represented The Authors Guild Inc. and other artists’-rights organizations as amici curiae in a landmark U.S. Supreme Court decision raising an important issue of copyright law infringement in Warner Chappell Music, Inc. v. Nealy. In its 6-3 ruling in favor of our client, the court held that a copyright owner can recover damages “no matter when the infringement occurred” and with “no time limit on monetary recovery”, permitting copyright owners to obtain relief for claims without imposing an artificial cutoff on recovery.
• Defended Iron Maiden in a copyright case related to album cover art. Case No. 3:10-CV-1782 (RNC)” Ensley v. Iron Maiden Holdings Ltd., Case No. 3:10-CV-1782 (RNC), (D. Conn. Mar. 30, 2012).
• Defended Pharrell Williams in copyright claims related to a song with the Neptunes. Currin, et al. v. Arista Records, Inc., et al. 724 F. Supp. 2d 286 (D. Conn. 2010)
• Defended Capcom CO., LTD. in copyright claims related to images in Resident Evil video game. Judy A. Juracek,v. Capcom CO., LTD. and Capcom USA, Inc.

Trade Secrets

• Obtained $3.5 million judgment for a global industrial leader as part of a business dispute in federal court involving trade secret misappropriation claims and counterclaims.
• Successfully defended and resolved theft of trade secret, violation of non-disclosure agreements, and related claims in federal action against emerging technology company and principals arising out of business dispute over mobile vending technology.
• Defeated a preliminary injunction application in a federal court proceeding involving claims for breach of restrictive covenants and misappropriation of trade secrets thereby freeing up highly successful sales executive to take on key high-level role with our clients after leaving position with direct competitor.
• Successfully resolved a federal trade secret litigation on behalf of a financial services company against an employee who stole confidential client lists and other trade secrets to start his own company.
• Assisted several companies in conducting internal investigations concerning the theft of intellectual property through insider threats or cyber intrusions.
• After filing suit alleging employee stole trade secret customer list and started competing business with infringing trademarks, obtained a settlement forcing new company to change its name, admit to the theft of trade secret, and enjoin further access to the customer list.
• Successfully counseled client who received allegations of trade secret misappropriation in connection with hiring new employee, resulting in de-escalation of the dispute.
• Successfully assisted client in pursuing federal trade secret theft claims against a Chinese company that stole the design of aircraft windows from a US glass manufacturer.