Nature of our Practice
Knobbe Martens was founded in 1962 and is one of the nation’s largest and most prominent full-service intellectual property law firms. Much of the firm’s practice consists of representing clients in litigation involving all types of intellectual property disputes before federal and state courts, federal agencies such as the U.S. International Trade Commission and the U.S. Patent and Trademark Office, and private arbitrators. The firm limits its practice to its area of expertise – intellectual property law – and thus all of its litigation involves disputes concerning patents, trademarks, copyrights, trade secrets, acts of unfair competition and false advertising, rights of publicity, and related licensing and antitrust issues.
The firm represents a diverse range of clients, some enforcing their intellectual property rights and others accused of infringing the intellectual property rights of others. Our clients are a diverse group, ranging from individuals to Fortune 500 companies.
We represent companies in all areas of the medical device industry including implantable devices, temporary interventions and related tools, equipment and methods in both the therapeutic and diagnostic and screening environments. Our services in these areas include patentability searches and opinions, preparation, filing and prosecution of patent applications, non-infringement and invalidity searches and opinions, “design around” assistance, patent appeals, interferences, reexaminations and reissues, inter partes reviews, litigation, and intellectual property components of investment diligence. Our lawyers and patent scientists have degrees in biology, mechanical engineering, electrical engineering or closely related fields and many have advanced degrees including Ph.D.s and M.D.s. Many also have work experience in the medical device industry.
The firm prides itself on its outstanding success in litigation. The firm’s clients have prevailed in the vast majority of cases that have proceeded through trial. Moreover, the firm is proud of the numerous cases where its clients have succeeded without the need for a trial, by obtaining preliminary injunctions or summary judgments, or by negotiating a favorable settlement.
Many of the firm’s cases have caused the courts to decide important legal issues in published opinions. Those decisions and opinions, available for public review, show unparalleled success before both trial and appellate courts throughout the country. Below you can find a representative list of certain cases that best show the wide variety of litigation experience accumulated by the firm’s lawyers.
In addition, because many of the firm’s clients are frequently involved in intellectual property disputes in foreign countries, the firm regularly acts as a liaison with foreign lawyers in resolving those disputes abroad. The firm also acts as co-counsel with general practice law firms who desire our firm’s intellectual property expertise.
The lawyers of the firm are committed to approaching each case with an emphasis on achieving the client’s business goals through the litigation process. Thus, the firm is willing to assume whatever role in the litigation that best serves the client’s interests. By advising clients as to the potential benefits and risks of any lawsuit, clients are able to make informed business decisions at every stage of a litigation proceeding. Because clients typically desire to avoid litigation, and the costs normally associated with litigation, the firm routinely explores settlement and alternative dispute resolution as methods to minimize the risks of litigation. Often an out-of-court settlement is the most attractive option for many clients, and we will aggressively seek settlement if settling is in a client’s best interest.
If a case cannot be settled or won by a dispositive motion, with the client’s assent, the firm will aggressively pursue that case through trial and appeal. The firm’s success rate at trial, and in recovering lawyer’s fees from opposing parties, demonstrates our ability to advise clients prudently as to whether a case should be settled or taken to trial.
The Litigation Lawyers
The firm’s success in representing a diverse group of clients lies in the qualifications and abilities of its litigation lawyers. Because all of the firm’s litigation lawyers focus their practice on the litigation of intellectual property disputes, they are specialists in this area of the law, while also having experience prosecuting and licensing patents, trademarks, and copyrights. Additionally, our litigation lawyers have backgrounds particularly suited for intellectual property litigation. For example, the vast majority of our litigation lawyers have undergraduate or even graduate degrees in engineering, the physical or life sciences, or computer science. Virtually all of our lawyers are admitted to practice before the U.S. Patent and Trademark Office.
Before joining the firm, many of the lawyers served as law clerks for federal judges, including several judges of the U.S. Court of Appeals for the Federal Circuit, the court with exclusive, nationwide appellate jurisdiction over patent cases and appeals from the U.S. Patent and Trademark Office. Many senior lawyers in the firm have served as expert witnesses, mediators, or special masters in intellectual property litigation handled by other firms. The firm’s litigation lawyers are frequently asked to present important legal issues to appellate courts by writing amicus curiae (“friend of the court”) briefs on behalf of legal associations or industry trade groups. They also frequently write and speak on a variety of issues pertaining to intellectual property litigation to audiences worldwide.
By limiting their practice to intellectual property, the firm’s lawyers have accumulated vast litigation experience exclusively within the intellectual property field. Because the federal courts have jurisdiction over patent, trademark, and copyright cases, our lawyers have an unmatched degree of experience in the federal courts litigating intellectual property cases. Supporting the litigation lawyers are numerous other lawyers, scientists, and paralegals, enabling the firm to handle intellectual property cases of all sizes, regardless of the technology at issue.
Representative Litigation Clients
The following is a representative list of medical device clients that the firm has represented in IP litigation
- AccessClosure (cardiovascular and peripheral vascular closure)
- Alliance Medical Technologies, Inc. (heart valves and cardiovascular devices)
- Angiotrax (medical devices used in transmyocardial revascularization)
- Applied Medical Resources Corp.
- Atrionix, Inc. (ablation catheters for treatment of atrial fibrillation)
- Bausch & Lomb
- Beckman Instruments (medical analytical instrumentation)
- Biointerfaces, Inc. (bone grafts, implantable prostheses)
- Endologix, Inc.
- Healthdyne, Inc. (home care electronic monitoring and diagnostic devices)
- Hudson Respiratory Care, Inc. (respirators, including nebulizers, humidifiers and related electronics and instrumentation)
- ICU Medical, Inc. (syringes, catheters and related connectors)
- I-Flow Corp. (ambulatory IV infusion pumps)
- Image Analysis, Inc. (CAT scan density analysis software and instrumentation)
- Imagyn, Inc. (ob/gyn devices)
- KFx Medical Corp. (techniques for connecting soft tissue to bone in reconstructive surgery)
- LMA North America
- Loma Linda University Medical Center (minimally invasive surgical devices, proton therapy devices, etc.)
- Masimo Corp. (non-invasive, motion artifact resistant, vital signs monitors)
- Medstone International (lithotripsy devices)
- Nobel Biocare USA, LLC (Dental Implants)
- Össur (non-invasive prosthetics, medical braces and supports)
- Pacesetter Inc. (Subsidiary of St. Jude Medical) (pacemakers and defibrillators)
- Salix Pharmaceuticals
- Smith & Nephew
- The Laryngeal Mask Company Ltd.
- UROS Corp. (urinary tract infusers)
- Venetec, Inc. (catheter securement devices)
The firm has been fortunate to represent numerous clients in many significant cases. The following is a small representative list of specific cases related to the medical device field:
- Abbott Laboratories v. Pacific Biotech, Inc., 19 U.S.P.Q. 2d.1678 (S.D. Cal. 1991)
- Applied Medical Resources Corp. v. United States Surgical Corp., 353 F. Supp.2d 1075 (C.D. Cal. 2004)
- Koepnick Medical & Educational Research Foundation v. Alcon Laboratories, et al. (CV-03-0029) in the District of Arizona
- LifeScan, Inc. v Can-Am Care Corp., 859 F.Supp. 392 (N.D. Cal. 1994)
- Mallinckrodt, Inc. v. Masimo Corp., 254 F. Supp.2d 1140, 292 F. Supp.2d. 1201, and 293 F. Supp.2d. 1102 (C.D. Cal. 2003)
- Meade Instruments Corp v. Merlin Controls Corp., (C.V. 94-407) (D.Col. 1994)
- Nellcor Puritan Bennett, Inc. v. Masimo Corp., 300 F.Supp.2d 923 (C.D. Cal. 2004)
- Practice Management Information Corp v. American Medical Ass’n, 121 F.3d 516, amended, 133 F. 3d 1140 (9th Cir.1997), cert. denied, 524 U.S. 923 & 525 U.S. 810, reh’g denied, 525 U.S. 923 (1998)
- Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332 (Fed. Cir. 2005), aff’g 2004 WL 1398227 (D.N.J. 2004)
- RAS Holding Corp. et al v. SurgiLight, Inc., (M.D. Fla 2000)
- Sontek Industries, Inc. v. Hudson Respiratory Care, Inc., CV 97-11223 (D. Mass.), aff’d, (Fed. Cir. 1998)
- Thermoscan, Inc. v. Safe Design, Ltd. (S.D. Cal. 1995)
- Zimmer Dental, Inc. v. Nobel Biocare, USA, Inc. (March 2004) SACV 04-0687 GLT (RZx)
Selected Client Litigation Victories and Accomplishments
- Masimo Corporation
The firm represented Masimo Corporation in multiple patent infringement cases involving pulse oximeters. After one jury trial and appeal, Masimo settled a case against a primary competitor and received $330 million and additional future royalties. After a subsequent jury trial against another competitor, Masimo received a $466 million award, which the court subsequently upheld.
- KFx Medical Corp.
The firm represented KFx Medical Corporation, which owns patents directed to improved methods for attaching soft tissues to bone, which are widely used in rotator cuff repair. After a liability trial in August 2013, a jury found all three KFx patents were valid and willfully infringed by Arthrex. In October 2013, the same jury awarded $29 million in damages for the infringement. The district court granted additional damages and interest, bringing the total award to $35 million. The Federal Circuit summarily affirmed the district court judgment and the U.S. Supreme Court subsequently denied certiorari. Hundreds of thousands of rotator cuff surgeries are performed each year in the United States utilizing KFx’s patented technique.
On July 14, 2009, the Patent Office completed the reexamination proceeding of I-Flow’s U.S. Patent No. 5,284,481. I-Flow continues to enforce its patent rights against Apex Medical Technologies, Inc. with the legal representation provided by Knobbe Martens.
- Nobel Biocare, USA
The firm successfully defended Nobel Biocare, USA, Inc. in a binding arbitration proceeding involving a dental implant patent dispute where the alleged past damages of $100 million and a possible injunction against future sales were at risk. Additionally, the firm represented Nobel in two district court actions. In the first, it secured a summary judgment of non-infringement of five patents asserted by a competitor against Nobel only six months after the suit was filed. In the second, we achieved summary judgment of invalidity after several other defendant sin the matter settled and after years of reexamination and reissue proceedings.
- Applied Medical Resources Corp.
Applied Medical Resources Corp. prevailed in jury trial earning a verdict of $43.5 million plus willfulness on trocars for laparoscopic surgery.