Jeanne M. Heffernan, P.C.

Patent

• Represented a software company in a patent infringement lawsuit involving five patents related to agriculture data collection systems that record farming data in real time during farming operations. Three weeks prior to trial, Kirkland obtained a summary judgment ruling that all five patents asserted against our client were invalid.
• Lead trial and appellate counsel for leading telecommunications carrier in litigation brought by patent assertion entity seeking more than $200 million in damages for alleged infringement of patent on network encoding scheme. Plaintiff argued its patent covered schemes standardized by industry members, including client. The court granted summary judgment of non-infringement, noting in part that plaintiff’s own expert “put the kibosh” on its alternative infringement theory through damaging admissions Kirkland obtained at deposition. Argued for and obtained affirmance on appeal.
• Defended mobile device and electronics manufacturer against company formed by individual for whom term “patent troll” was coined. Major industry players, including developer of accused technology, had taken licenses to plaintiff’s portfolio. Plaintiff touted licenses as proof patented technology was valuable and infringed by entire industry, including client. Kirkland painted licenses as proof of aggressive enforcement strategy and desire by industry to avoid high cost of litigation. Jury agreed, rendering verdict of non-infringement in client’s favor.
• Defended world's largest medical device maker in suit brought by patent assertion entity in rocket-docket district. Patent related to a medium access control protocol for wireless network devices and was asserted against client's remotely-monitored defibrillators, pacemakers, and insulin pumps. Plaintiff sought over $1 billion in damages and trial was set just one year from filing. Weeks before trial, court granted client’s Daubert motion against plaintiff's damages expert, striking the opinion in its entirety, and granted client’s motion for summary judgment that two of three asserted claims were not infringed. On motion for reconsideration that third claim was not infringed, court acknowledged the “extraordinary” nature of the requested relief and granted summary judgment of non-infringement of remaining claim just days before trial, resulting in final judgment in client's favor on all asserted claims.
• Defended leading mobile device company in patent infringement suit in E.D. Tex. based on technology allegedly developed by plaintiff before it became a publicly traded patent assertion entity. Plaintiff had previously obtained licenses from more than 130 technology companies for portfolios including its home-grown patent. Just prior to trial, all other defendant-manufacturers had taken licenses. Plaintiff sought $250 million in damages from client and enhancement based on alleged willfulness. After a seven-day trial, jury deliberated an hour and returned a complete defense verdict, finding no infringement on all claims and all claims invalid as anticipated.
• Defended global communications client and three other defendants in patent infringement suit in E.D. Tex. involving four patents related to WCDMA wireless technology. Obtained two Daubert rulings in client's favor, substantially reducing plaintiff's damages claims prior to trial. After a six-day trial, jury deliberated for less than an hour and returned a complete defense verdict, finding no infringement on all claims and all claims invalid as anticipated and obvious.
• Brought suit in D. Del. on behalf of medical device maker against key competitor concerning drug-eluting stents for use in small coronary arteries. Court granted summary judgment that competitor willfully infringed patent. Parties proceeded to damages trial, where the medical device maker proved its mixed lost profits and reasonable royalty theory to the jury. Jury awarded almost $20 million in damages. Court affirmed and amended award to include damages ‎through date of verdict, awarded an ongoing royalty of 32 percent, and doubled damages for willful infringement.
• Defended worldwide pharmaceutical companies in action brought by Italian patent holding company in S.D.N.Y. over key ingredients in blockbuster drugs. Obtained dismissal with prejudice on one patent. Just prior to trial, obtained summary judgment of invalidity on one of two asserted claims in remaining patent. Following three-week jury trial, court granted judgment as a matter of law that second claim was invalid, resulting in complete victory for clients. On appeal, the Federal Circuit summarily affirmed judgment as a matter of law.
• Successfully litigated patent infringement suit in S.D. Cal. against personal computer and software makers on patents relating to video-, speech-, and perceptual audio-coding, user interface, and caller id technologies. Litigation was divided into multiple trials according to technology and two separate juries returned verdicts for client. At remand trial on patent damages for user interface patent in July 2011, jury returned verdict of $70 million, the precise amount requested by client.
• Defended patent infringement suit brought against client and 12 other co-defendants in E.D. Va., alleging infringement of 11 patents in the field of encryption. Case stayed as to all co-defendants pending outcome of case against client. After close of discovery, plaintiff dropped 5 patents but sought more than $500 million in damages on remaining patents. Obtained summary judgment of noninfringement on all remaining patents, which was affirmed on appeal.
• Defended national cable service provider in patent infringement suit relating to data-over-cable service. After five-day jury trial, and only half hour of deliberation, jury returned verdict of no infringement, the third defense verdict ever in a patent infringement case in E.D. Tex.
• On remand, defended patent infringement suit in E.D. Va. relating to semiconductor technology in which plaintiff asserted patents filed at same time plaintiff participated in industry standards organization. Successfully pierced attorney-client privilege under crime-fraud exception and discovered widespread document destruction and litigation misconduct as part of overarching plan to sue industry on adopted standards. Won bench trial on affirmative defenses of spoliation and litigation misconduct in advance of patent infringement trial and obtained dismissal with prejudice of plaintiff's patent infringement claims.
• Defended household goods company in patent infringement suit in E.D. Tex. related to chemical composition. Uncovered potential antitrust and unfair competition violations, leading to favorable settlement.

Copyright and Trade Secret

• Defended case in which plaintiffs sought preliminary injunction to shut down client's $300 million business. Counterclaimed against plaintiffs for trade secret misappropriation, copyright infringement, and breach of contract. Defeated motion for preliminary injunction at evidentiary hearing and successfully moved for summary judgment on plaintiffs' claims, forcing favorable settlement one week prior to trial.

Trademark

• Nationwide anti-counterfeiting initiative: led detailed undercover investigations, obtained ex parte seizure orders and supervised raids, coordinated with federal and state law enforcement, assisted with criminal prosecutions, pursued civil actions, participated in anti-counterfeiting coalition of brand owners, obtained destruction of counterfeit goods and restitution, conducted online policing and take-downs, led education and training programs for customs and law enforcement officers.
• Defended declaratory judgment action of no trademark or trade dress infringement on behalf of aviation clients, regarding the unauthorized use of famous helicopter trade dress and trademarks in plaintiff’s video game series. In a bid for a quick win, videogame-maker moved to dismiss the case it filed, claiming that its unauthorized use was protected free speech and nominative fair use. Court denied the motion on grounds advanced by clients, leading to favorable settlement.
• Action brought on behalf of luxury goods client for breach of parties' prior settlement agreement, trademark infringement, trademark dilution, and defamation. Uncovered widespread litigation misconduct committed by defendant. In rare move, court granted (from the bench) motion to strike answer and counterclaims as sanction for litigation misconduct.With motions for default judgment and sanctions against defendant pending, case settled favorably for client.
• Defended against trademark, trade dress, and patent infringement claims related to client's packaging design. Counterclaimed for tortious interference with prospective business advantage based on fact investigation. Successful motion practice led to favorable settlement for client, with no change to packaging.
• Hired by plaintiff as trial counsel two months prior to trial in trademark infringement action related to defendants' use of marks associated with client’s TV show. Mid-trial, obtained favorable settlement and permanent injunction. Defeated defendants' motion to set aside settlement agreement and for new trial at district court, which was affirmed by Second Circuit.
• Litigated trademark infringement action concerning knockoff of client’s famous handbag. Obtained temporary restraining order and preliminary injunction following evidentiary hearing, leading to favorable settlement, dismissal, and permanent injunction.
• Defended against declaratory judgment action related to knockoffs of client’s famous handbag and brought affirmative trademark infringement and unfair competition claims. Secured contempt ruling following discovery of renewed infringement and obtained attorney's fees and compensation.
• On behalf of luxury goods client, obtained jury verdict of willful trademark infringement and unfair competition in action related to knockoffs of client’s famous handbag and leather-goods designs.