Press Release

Federal Circuit Upholds Victory for Kirkland & Ellis LLP Client Osram Sylvania in Major Lighting Case

Kirkland & Ellis LLP today announced that U.S. Court of Appeals for the Federal Circuit affirmed a lower court's decision for client Osram Sylvania Inc. in the Nilssen, et al. v. Osram Sylvania, et al., a case which was closely watched by the lighting industry.  The court agreed that 15 patents issued to inventor Ole K. Nilssen are unenforceable as a result of Ole Nilssen's inequitable conduct while prosecuting his applications before the U.S. Patent and Trademark Office.

Kirkland initially scored a complex patent infringement trial victory for Osram Sylvania in the U.S. District Court for the Northern District of Illinois in June 2006.  Mr. Nilssen had alleged North American lighting company Osram Sylvania infringed 26 patents relating to electronic ballasts and compact fluorescent lamps.  He sought more than $100 million in damages.

Kirkland convinced the court to hold an early bench trial on the issue of inequitable conduct. 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 partners Brian Sieve and Garret Leach began a 10-day bench trial on inequitable conduct. The other members of the Kirkland team were partner Kal Shah, along with associates Adam Gill, Serena Gondek and Michael Cohen.  The court declared all 11 of the patents remaining in suit unenforceable on one or more grounds.

Also, in January 2007, the Court ruled that the case was "exceptional" and awarded Osram Sylvania more than $300,000 in costs and over $5 million in attorneys' fees.

Mr. Sieve said his client was pleased with the Federal Circuit's decision. "Osram Sylvania defends itself vigorously against specious patent claims.  The Federal Circuit agreed with the district court that it is imperative to follow the rules.  If the court thinks an applicant is breaking the rules intentionally, the court will not hesitate in declaring a patent unenforceable."

About Kirkland & Ellis LLP
Kirkland & Ellis LLP is a 1,300-attorney law firm representing global clients in complex intellectual property and technology, litigation, dispute resolution and arbitration, corporate, restructuring and tax matters.  The Firm has offices in Chicago, Hong Kong, London, Los Angeles Munich, New York, San Francisco and Washington, D.C.