Kirkland & Ellis LLP Secures Defense Victory for Osram
In a major case that will have significant implications for the lighting industry, Kirkland & Ellis LLP scored a significant defense victory for Osram Sylvania, Inc. in a complex patent infringement matter. In a 41-page opinion issued on June 28, 2006, a Northern District of Illinois judge ruled that all 11 patents - relating to electronic ballasts and compact fluorescent lamps - in the suit were unenforceable due to inequitable conduct by the Plaintiff Ole K. Nilssen, a well-known and litigious inventor. Mr. Nilssen alleged that Osram infringed his patents and sought more than $100 million in damages.
The suit, originally filed in the District Court of Delaware in August 2000, accused Osram and Osram Sylvania Products, Inc., of infringing 26 Nilssen patents. Kirkland & Ellis successfully had the case transferred to the Northern District of Illinois in May 2001. Osram then denied all allegations and filed counterclaims asserting non-infringement, invalidity, and unenforceability due to inequitable conduct. Over the next few years, the parties engaged in fact and expert discovery during which Nilssen withdrew 15 of his patents from the case.
Kirkland convinced the Court to hold an early bench trial on the issue of inequitable conduct as to the remaining 11 patents. Kirkland explained to the Court that such a trial could resolve the dispute in its entirety and eliminate the need for a lengthy trial on infringement and validity.
On Feb. 6, 2006, a Kirkland team led by Brian D. Sieve, P.C., and Garret A. Leach began a 10-day bench trial on inequitable conduct. The other members of the Kirkland team were Kal K. Shah, Adam J. Gill, Serena Gondek and Michael I. Cohen.
At trial, the Kirkland team presented five theories of inequitable conduct: (1) Nilssen submitted false and misleading affidavits; (2) Nilssen intentionally misclaimed small entity status; (3) Nilssen improperly claimed priority; (4) Nilssen failed to disclose related litigation; and (5) Nilssen intentionally withheld material references. Sterne, Kessler, Goldstein & Fox of Washington, D.C. assisted the Kirkland team in developing these defenses.
In his opinion, District Court Judge John W. Darrah found that Osram had presented clear and convincing evidence that “Nilssen intended to mislead the PTO (Patent Trademark Office),” and characterized Mr. Nilssen’s testimony at the trial as “not credible.” The Court declared all 11 of the patents remaining in suit unenforceable on one or more grounds.
This case is the first of its kind in the lighting industry and perhaps in patent law. It represents the most significant and successful defense against Mr. Nilssen, who has filed more than 20 lawsuits relating to his patents to date. Nilssen was represented by Jenner & Block LLP.
Kirkland & Ellis LLP is a 1,100-attorney law firm representing global clients in complex litigation, dispute resolution and arbitration, corporate, restructuring, tax and intellectual property and technology matters. The Firm has offices in Chicago, London, Los Angeles, Munich, New York, San Francisco and Washington, D.C.