Joshua L. Simmons, P.C.

In addition to Josh’s non-litigation enforcement, prosecution, and counseling matters, he has been involved in the following litigations.

Copyright Litigation

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal./P.T.A.B./9th Cir): Won a complete victory for ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments. Won an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction; and a second motion to dismiss Teradyne’s indirect and willful patent infringement, unfair competition, and prospective economic advantage claims, as well as a motion to dismiss ATS’s parent company due to a lack of personal jurisdiction. Then, invalidated Teradyne’s automatic test equipment patent in an inter partes review proceeding. And finally, secured dismissal of Teradyne’s copyright claim on summary judgment at the district court as ATS’ copying for compatibility with pre-compiled computer programs was a fair use. The finding of fair use was affirmed on appeal.

Oracle Am., Inc. v. Hewlett Packard Enters. Co. (9th Cir.): Obtained reversal for Oracle in appeal of summary judgment order concerning the unauthorized use of software patches for its enterprise operating system, holding that Oracle presented sufficient evidence of copying, intentional interference, and unfair competition to go to the jury. At the remand jury trial, Oracle was awarded $30 million in damages.

Fox News Network, LLC v. TVEyes Inc. (S.D.N.Y./2d Cir./U.S. Supreme Court): Won summary judgment, obtained permanent injunction, and prevailed on appeal for Fox News in a copyright infringement action against a media monitoring service. The Second Circuit held that permitting users to view video clips of telecasts was not fair use and constituted volitional conduct leading to direct infringement liability.

Alexander v. Murdoch (S.D.N.Y./2d Cir.): Obtained dismissal and won appeal for Fox Entertainment Group, along with other defendants, holding that Fox’s Modern Family television series was not substantially similar to the plaintiff’s treatment and proposed pilot script, his idea misappropriation claim was preempted by the Copyright Act, and his defamation claim failed as it was based on statements that did not identify him.

Oracle Am., Inc. v. Google Inc. (Fed. Cir./U.S. Supreme Court): Obtained reversal in Oracle’s highly-publicized appeal of a district court order concerning the copyrightability of software. The Federal Circuit determined that the elements of Oracle’s Java platform copied by Google to create its Android operating system were copyrightable.

Thomson Reuters Enterprise Centre GmbH et al v. ROSS Intelligence Inc. (D. Del.): Won summary judgment for Thomson Reuters and West Publishing in a copyright and tortious interference lawsuit concerning ROSS’s copying of Westlaw’s content to train its competing product’s artificial intelligence model. In the first decision in legal history, the court held that ROSS’s copying was not fair use. It also held that Thomson Reuters’ content was original and infringed by ROSS, and that West’s tortious interference claim based on violating the Westlaw anti-bot and password-sharing provisions was not preempted by the Copyright Act.

Hayden v. 2K Games, Inc. (N.D. Ohio): Won jury trial for 2K Games and its parent company in a lawsuit alleging that they committed copyright infringement by accurately depicting tattoos inked by the plaintiff on certain NBA players in their NBA 2K video game. After only 90 minutes, the jury found that, when LeBron James was inked, he received a license to be depicted and authorize their depiction in media. Prior to the trial, won a motion to dismiss the plaintiff’s claims for unjust enrichment and for a declaratory judgment that Take-Two should have credited the plaintiff for creating the tattoos, and summary judgment dismissing four tattoos due to knowing inaccuracies in the plaintiff’s copyright registrations.

Syntel Sterling Best Shores Mauritius Ltd. v. TriZetto Grp., Inc. (S.D.N.Y.): Won $854 million trade secret and copyright jury verdict and obtained permanent injunction for TriZetto and Cognizant Technology Solutions Corp. in a litigation concerning healthcare software and related software consulting services.

Solid Oak Sketches, LLC v. 2K Games, Inc. (S.D.N.Y.): Won summary judgment on the bases of de minimis use, fair use, and license for 2K Games and Take-Two Interactive Software Inc. in a lawsuit alleging that they committed copyright infringement by accurately depicting NBA players, along with their tattoos, in their NBA 2K video game. Previously won a motion to dismiss statutory damages and attorney’s fees claims and defeated motion to dismiss Take-Two’s counterclaims, including fraud on the Copyright Office.

Alexander v. Take-Two Interactive Software, Inc. (S.D. Ill.): Successfully defended Take-Two and other defendants in a lawsuit alleging that their WWE 2K video game infringed the plaintiff’s copyrights in tattoos she inked on wrestler Randy Orton, including winning motions to dismiss concerning personal jurisdiction and the plaintiff’s lack of a copyright registration. At trial, the plaintiff requested $27.3 million, but the jury awarded only $3,750 in actual damages and none of the defendants’ profits. In post-trial briefing, the court held that the actual damages were unduly speculative, denying the plaintiff any recovery.

Motorola Solutions, Inc. v. Hytera Commc’ns Corp. (N.D. Ill.): Won $764 million trade secret misappropriation and copyright infringement jury trial involving Motorola’s digital radio systems technology and software, in which the jury rejected Hytera’s statute of limitations defense and awarded Motorola its full requested compensatory and punitive damages.

Take-Two Interactive Software, Inc. v. Mod Menu Creators (S.D.N.Y.): Obtained preliminary and permanent injunctions, defeated motions to dismiss, and secured maximum statutory damages, and attorney’s fees in series of copyright, breach of contract, and tortious interference lawsuits involving computer programs that alter Take-Two’s Grand Theft Auto V video game, allowing users to cheat and perform unauthorized actions.

Bitetto v. Rometty (N.D.N.Y.): Obtained dismissal for IBM’s CEO in a copyright and unfair competition action alleging infringement of a book describing a brain-inspired microchip.

Wolstenholme v. Hirst (S.D.N.Y.): Obtained dismissal for prominent artist Damien Hirst and Other Criteria (US), LLC in a copyright infringement, trade dress infringement, and unfair competition lawsuit concerning pharmaceutical pill-inspired jewelry created by Mr. Hirst.

Tetris Holding, LLC v. Xio Interactive Inc. (D.N.J.): Won summary judgment for the makers of the world-famous “Tetris” electronic game in a copyright and trade dress lawsuit against an infringing game maker.

Fairey v. Associated Press (S.D.N.Y.): Won summary judgment for the AP on the issue of fair use in a declaratory judgment suit brought by Shepard Fairey, in which the AP asserted copyright infringement claims, among others, arising out of his unauthorized use of the AP's photo of President Obama to create a poster and commercial merchandise.

IBM Corp. v. Micro Focus (US), Inc. (S.D.N.Y.): Represented IBM in a copyright lawsuit concerning Micro Focus’ copying IBM’s CICS TS Web Services computer program. After Kirkland secured pre-trial victories that significantly expanded the scope and amount of damages, the case was resolved.

Chronicle Books, LLC v. Audible, Inc. (S.D.N.Y.): Brought copyright lawsuit on behalf of seven members of the Association of American Publishers seeking to enjoin a service that provided consumers the entire, machine-generated text of audiobooks. The parties resolved the litigation with a permanent injunction being issued and Audible agreeing that it will obtain permission from AAP’s members before moving forward with the service for their works.

IBM Corp. v. Teraproc Inc. (S.D.N.Y.): Secured permanent injunction for IBM in a copyright, trade secret, and business tort lawsuit concerning the copying by IBM’s former employees of proprietary source code for a high-performance computing program into an open sourced project without IBM’s authorization.

AMO Dev., LLC v. Alcon LenSx, Inc. (D. Del.): Successfully defended Alcon in a patent and copyright lawsuit concerning laser eye surgery technology, including defeating a preliminary injunction motion that sought to enjoin Alcon’s LenSx system sales, winning summary judgment motions based on the copyright statute of limitations and related-J&J entities not being beneficial owners of the asserted works, and defeating J&J’s motion for summary judgment on ownership of the asserted software. The case was settled prior to trial.  

Miller v. Ladson (S.D.N.Y.): Representing artist Cheryl Miller in a copyright infringement lawsuit concerning the use of her photograph Sunglass Corner to create a near-identical painting.

Deloitte Consulting LLP v. Sagitec Solutions LLC (D. Del.): Representing Deloitte in a copyright, trade secret, and unfair competition case concerning use of its unemployment insurance software by a competitor, including defeating Sagitec’s motions to stay the litigation pending the outcome in a related criminal proceeding, to dismiss for lack of personal jurisdiction, and for a more definite statement of Deloitte’s asserted trade secrets.

Controlsoft, Inc. v. The Dow Chemical Co. (N.D. Ohio): Defending Dow in a trade secret, copyright, and breach of contract lawsuit concerning advanced process control technology.

Patent Litigation

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal./P.T.A.B./9th Cir.): Won a complete victory for ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments. Won an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction; and a second motion to dismiss Teradyne’s indirect and willful patent infringement, unfair competition, and prospective economic advantage claims, as well as a motion to dismiss ATS’s parent company due to a lack of personal jurisdiction. Then, invalidated Teradyne’s automatic test equipment patent in an inter partes review proceeding. And finally, secured dismissal of Teradyne’s copyright claim on summary judgment at the district court as ATS’ copying for compatibility with pre-compiled computer programs was a fair use. The finding of fair use was affirmed on appeal.

IngenioShare, LLC v. Epic Games, Inc. (W.D. Tex.): Won motion to dismiss in a multipatent litigation against Epic Games concerning its messaging and communication technology. The court held that the Western District of Texas was an improper venue for the parties’ dispute.

Epic IP LLC v. Sharp Electronics Corp. (S.D.N.Y.): Defended Sharp in a patent infringement litigation concerning web chat technology by moving to dismiss on the basis that Epic’s patent was directed to patent-ineligible subject matter. The patent was invalidated, and the case was dismissed.

IpLearn LLC v. K12 Inc. (D. Del.): Defended K12 and won multipatent infringement action involving computer-assisted learning technology, resulting in the parties stipulating to the dismissal of one patent as not infringed, and the other patent being held invalid on summary judgment because it was directed to unpatentable subject matter. 

[24]7.ai, Inc. v. LivePerson, Inc. (N.D. Cal.): Represented LivePerson in a patent infringement lawsuit brought by 24/7, in which six patents were held invalid because they were directed to unpatentable subject matter.

Digi Portal LLC v. GoodRx, Inc. (D. Del.): Resolved five patent litigation involving website technology patents.

Ericsson Inc. v. Samsung Electronics Co. (E.D. Tex./I.T.C.): Represented Samsung in a multipatent, multiforum litigation—including back-to-back ITC trials—involving GSM, W-CDMA, LTE and 802.11 (Wi-Fi) wireless telecommunication standard essential patents, including claims concerning commitments to license on fair, reasonable and non-discriminatory (FRAND) terms and conditions.

JobDiva, Inc. v. Monster Worldwide, Inc. (S.D.N.Y.): Represented JobDiva in a multipatent infringement action involving resume search technology.

SportsCastr Inc. v. Genius Sports Ltd. (E.D. Tex.): Defending Genius in a multipatent lawsuit concerning video streaming software and systems.

Trademark, False Advertising, and Unfair Competition Litigation

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal./P.T.A.B./9th Cir.): Won a complete victory for ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments. Won an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction; and a second motion to dismiss Teradyne’s indirect and willful patent infringement, unfair competition, and prospective economic advantage claims, as well as a motion to dismiss ATS’s parent company due to a lack of personal jurisdiction. Then, invalidated Teradyne’s automatic test equipment patent in an inter partes review proceeding. And finally, secured dismissal of Teradyne’s copyright claim on summary judgment at the district court as ATS’ copying for compatibility with pre-compiled computer programs was a fair use. The finding of fair use was affirmed on appeal.

Oracle Am., Inc. v. Hewlett Packard Enters. Co. (9th Cir.): Obtained reversal for Oracle in appeal of summary judgment order concerning the unauthorized use of software patches for its enterprise operating system, holding that Oracle presented sufficient evidence of copying, intentional interference, and unfair competition to go to the jury. At the remand jury trial, Oracle was awarded $30 million in damages.

In re Certain Prods. Containing Tirzepatide & Prods. Purporting to Contain Tirzepatide (I.T.C.): Won summary determination for Eli Lilly and Company and obtained issuance of a general-exclusion, as well as multiple limited-exclusion orders and cease and desist orders, by the International Trade Commission due to’ trademark infringement, false designation of origin, and false advertising by sellers and purported sellers of tirzepatide.

Eli Lilly & Co. v. Compounders (D. Az./S.D. Cal./D. Col./D.D.C./M.D. Fla./D. Haw./S,D. Ind./N.D. Ohio/ S.D. Ohio/N.D. Tex./S.D. Tex./W.D. Wash.): Secured permanent injunctions in multiple litigations concerning violations of the Lanham Act and state prohibitions on deceptive trade practices. The cases involve the defendants’ use of Lilly’s MOUNJARO and ZEPBOUND trademarks to market and sell their own, non-FDA approved drugs, as well as promotion of the sale of those drugs by falsely representing them to prospective customers as having the same indicia of safety, effectiveness and quality as Lilly’s medicines. In particular, defeated motion to dismiss in which the court held that Lilly’s false advertising and trademark claims were not precluded or preempted by the Food, Drug & Cosmetic Act.

LivePerson, Inc. v. [24]7.ai, Inc. (S.D.N.Y./N.D. Cal.): Won $30 million trade secret and unfair competition jury verdict for LivePerson in a lawsuit concerning 24[7]’s misappropriation of LivePerson’s chat engagement rule and data trade secrets. After trial, the court awarded more than $4 million in additional pre- and post-judgment interest, as well as rejecting each of [24]7 arguments seeking to overturn the jury verdict. 

Brantley v. Epic Games, Inc. (D. Md.): Obtained dismissal of lawsuit asserting that Epic Games violated the plaintiffs’ rights in a dance step as their state-law claims were preempted by the Copyright Act, their Lanham Act claims were barred by the Dastar doctrine, and their trademark and dilution claims failed to plead the existence of a trademark.

Pellegrino v. Epic Games, Inc. (E.D. Pa.): Represented Epic Games against a claim that Fortnite’s “Phone It In” emote violated Pellegrino’s rights in a dance movement, including winning a motion to dismiss that Pellegrino’s right of publicity claims were barred by the First Amendment, his trademark claims were preempted by the Copyright Act, and he failed to satisfy the elements of his unfair competition and unjust enrichment claims.

Graham v. Take-Two Interactive Software, Inc. (S.D.N.Y.): Obtained dismissal for Take-Two in a trademark lawsuit concerning use of the RWTW acronym on a video game cover depicting LeBron James, with whom the acronym is associated.

Wolstenholme v. Hirst (S.D.N.Y.): Obtained dismissal for prominent artist Damien Hirst and Other Criteria (US), LLC in a copyright infringement, trade dress infringement, and unfair competition lawsuit concerning pharmaceutical pill-inspired jewelry created by Mr. Hirst.

Tetris Holding, LLC v. Xio Interactive Inc. (D.N.J.): Won summary judgment for the makers of the world-famous “Tetris” electronic game in a copyright and trade dress lawsuit against an infringing game maker.

Eli Lilly & Co. v. Adonis Health, Inc. (T.T.A.B.): Achieved a sustained opposition and refusal of Henry Meds’ TIRZAPPETITE trademark application.

Interpride v. Bearsurrection FTL, LLC (T.T.A.B.): Cancelled Bearsurrection’s BEAR WORLD PRIDE trademark registration in view of Interpride’s prior rights in WORLDPRIDE.

Hage v. Shenzhen Xiaohuangfeng Trading Co. (T.T.A.B.): Achieved a sustained opposition and refusal of Shenzhen’s trademark application.

NES Rentals (W.I.P.O.): Obtained multiple transfer orders in domain name disputes under ICANN’s Uniform Domain Name Dispute Resolution Policy.

Bath & Body Works Brand Mgmt., Inc. v. Summit Entm’t, LLC (S.D.N.Y.): Defended BBW against claims by the producer of The Twilight Saga film series that BBW’s Twilight Woods product line infringes Summit’s trademark rights, including defeating Summit’s motion for summary adjudication. 

Verrica Pharm. Inc. v. Dormer Labs. Inc. (E.D. Pa.): Defended Dormer in a false advertising and unfair competition litigation concerning its cantharidin products.

Apex Systems, LLC v. Infostretch, Inc. (T.T.A.B.): Defended Infrostretch against Apex Systems’ opposition to its registration of the mark APEXON.

Yahoo Inc. v. Maesa LLC (T.T.A.B.): Defending Maesa against Yahoo’s opposition to its registration of a mark for one of its beauty brands.

Sterling Comput. Corp. v. IBM Corp. (D.S.D.): Representing IBM in a trademark dispute with SCC concerning the parties’ use of the term “Sterling,” including defeating SCC’s motion to strike IBM’s counterclaim seeking a declaration that IBM has priority in the STERLING mark and SCC’s motion to dismiss IBM’s conditional trademark infringement counterclaims.

Deloitte Consulting LLP v. Sagitec Solutions LLC (D. Del.): Representing Deloitte in a copyright, trade secret, and unfair competition case concerning use of its unemployment insurance software by a competitor, including defeating Sagitec’s motions to stay the litigation pending the outcome in a related criminal proceeding, to dismiss for lack of personal jurisdiction, and for a more definite statement of Deloitte’s asserted trade secrets. 

Samsara Inc. v. Motive Techs Inc. (N.D. Cal./I.T.C./JAMS): Representing Samsara in a multi-forum litigation involving patent infringement, false advertising, trade secret misappropriation, unfair competition, and state-law tort claims concerning Samsara’s and Motive’s internet-of-things and artificial intelligence technologies.

Trade Secrets Litigation

LivePerson, Inc. v. [24]7.ai, Inc. (S.D.N.Y./N.D. Cal.): Won $30 million trade secret and unfair competition jury verdict for LivePerson in a lawsuit concerning 24[7]’s misappropriation of LivePerson’s chat engagement rule and data trade secrets. After trial, the court awarded more than $4 million in additional pre- and post-judgment interest, as well as rejecting each of [24]7 arguments seeking to overturn the jury verdict.

Syntel Sterling Best Shores Mauritius Ltd. v. TriZetto Grp., Inc. (S.D.N.Y.): Won $854 million trade secret and copyright jury verdict and obtained permanent injunction for TriZetto and Cognizant Technology Solutions Corp. in a litigation concerning healthcare software and related software consulting services.

Motorola Solutions, Inc. v. Hytera Commc’ns Corp. (N.D. Ill.): Won $764 million trade secret misappropriation and copyright infringement jury trial involving Motorola’s digital radio systems technology and software, in which the jury rejected Hytera’s statute of limitations defense and awarded Motorola its full requested compensatory and punitive damages.

IBM Corp. v. Teraproc Inc. (S.D.N.Y.): Secured permanent injunction for IBM in a copyright, trade secret, and business tort lawsuit concerning the copying by IBM’s former employees of proprietary source code for a high-performance computing program into an open sourced project without IBM’s authorization.

Unisys Corp. v. Gilbert (E.D. Pa.): Represented Unisys in a trade secret, breach of contract, and tortious interference with contract lawsuit against Atos SE; Atos IT Solutions & Services, Inc.; and two former Unisys employees who Atos hired for misappropriating Unisys’ digital workplace solution technology, including winning motion to dismiss one of the former employees’ counterclaim for breach of his severance agreement.

Deloitte Consulting LLP v. Sagitec Solutions LLC (D. Del.): Representing Deloitte in a copyright, trade secret, and unfair competition case concerning use of its unemployment insurance software by a competitor, including defeating Sagitec’s motions to stay the litigation pending the outcome in a related criminal proceeding, to dismiss for lack of personal jurisdiction, and for a more definite statement of Deloitte’s asserted trade secrets.

Lupin Atlantis Holdings S.A. v. Zeng (S.D. Fla.): Representing Lupin Atlantis and its parent company in a trade secret, breach of contract, and state-law tort lawsuit concerning its inhalation pharmaceutical products, including defeating the defendants’ motion to dismiss.

United States v. Minkkinen (S.D.W. Va.): Representing Deloitte & Touch LLP in a criminal prosecution in which two of its former employees were indicted for misappropriating Deloitte software-related trade secrets.

Advice Interactive Grp., LLC v. Web.com Grp., Inc. (M.D. Fla.): Defended Web.com in a copyright, trade secret, unfair competition, and breach of contract lawsuit concerning web-based analytics software.

Controlsoft, Inc. v. The Dow Chemical Co. (N.D. Ohio): Defending Dow in a trade secret, copyright, and breach of contract lawsuit concerning advanced process control technology.

Samsara Inc. v. Motive Techs Inc. (N.D. Cal./I.T.C./JAMS): Representing Samsara in a multi-forum litigation involving patent infringement, false advertising, trade secret misappropriation, unfair competition, and state-law tort claims concerning Samsara’s and Motive’s internet-of-things and artificial intelligence technologies.

Josh’s pro bono includes representing asylum seekers before the Department of Homeland Security, as well as IP-related matters for the American Theatre Wing, Comic Book Legal Defense Fund, Fashion Law Institute, and various leading LGTBQ nonprofits.