Experience
Beneficial Franchise Company v. BankOne, et al.
We were lead counsel for defendants Republic Bank & Trust and River City Bank in patent infringement case involving business method patents purportedly covering systems and software relating to tax refund anticipation loan processing. We successfully settled the case after prevailing with respect to novel contractual third-party claims which we brought against an affiliate of the plaintiff patent owner. Beneficial Franchise Company v. Bank One, et al., Civil No. 00 C 2441 (N.D. Ill. 2001).
Daws Mfg. Co., Inc. v. Dee Zee, Inc.
Counsel for Dee Zee which was accused of infringing a patent related to truck storage bins. The case settled.
OPW Fueling Components/PISCES Underground Piping Patent Litigation and Related Cases
We are lead counsel for OPW Fueling Components and its PISCES subsidiary in numerous cases involving underground piping patents. Our victory in the initial case permitted OPW to enter into a substantial new product line. We defeated a preliminary injunction motion, obtained a very expedited discovery and trial schedule per OPW’s need for prompt resolution, and prevailed at trial before the U.S. District Court in Philadelphia over contractual and patent challenges to OPW’s right to purchase certain patents and to enter into this business. Total Containment, Inc. v. Osborne, et al., No. 96 7241 (E.D. Pa. 1997). This led to further infringement and contract litigation in which we have represented PISCES (the OPW affiliate which purchased these patents) against several infringers and licensees, which have also been resolved favorably for PISCES. PISCES By OPW v. Total Containment, No. C-1-01-0063 (S.D. Oh. 2001); Environ Products v. PISCES By OPW, No. 02-865 (E.D. Pa. 2002-2003); PISCES By OPW v. Environ Products, No. C-1-02-292 (S.D. Oh. 2002-03); and PISCES By OPW v. Total Containment, No. CIV-02-0543 (S.D. Oh. 2002-04). This also led to currently pending infringement litigation involving these patents. PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (S.D. Oh. 2004-present).
Patent Infringement Litigation
On behalf of our client, we developed and implemented cost-effective strategies for defending a patent enforcement suit.
Patent Infringement Litigation
Under Section 337 of the Tariff Act of 1930, the ITC investigates claims of unfair trade practices occurring in import trade. An increasing number of intellectual property lawsuits are tried before the ITC because ITC cases proceed faster than cases litigated in federal district courts, where most IP litigation takes place. The ITC also offers a unique set of remedies to companies engaged in patent disputes. The ITC has become a global forum for high-stakes patent cases brought by both U.S. and foreign companies intent on protecting valuable U.S. based IP rights. Dinsmore & Shohl LLP has a great deal of experience successfully representing parties in 337 investigations. For example, on behalf of our client, a $1 billion industrial machinery manufacturer, we reached successful settlements against multiple respondents importing industrial machinery from China, Germany, Italy and France.
Representative IP Litigation Cases
Cascades Publishing Innovation, LLC v. Reed Elsevier, Inc., 3:13-cv-00422-WHR (SD OH 2013)
Cirrex Systems, LLC v. Ocean Optics, Inc., 1:12-cv-1769 (ND GA 2012)
Milacron, LLC, et al. v. Stough Tool Sales, et. al., 1-12-cv-119 (SD OH 2012)
Ball Metal Beverage Container Corp. v. Crown Packaging Technology, Inc., et al., 3:12-cv-0033 (SD OH 2012)
Diba Industries, Inc. v. IDEX Health & Science, LLC, 3:12-cv-01248 (DCT 2012)
AOK Global Products, LTD, et al. v. Ferno-Washington, Inc., 1-12-cv-267 (ED VA 2012)
Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-135 (WD KY 2011)
Ionic Communications Group, Inc v. Ionic Collective, LLC, 1:11-cv-00766 (SD OH 2011)
Chikezie Ottah v. First Mobile Technologies, 1:10-cv-07296 (SD NY 2010)
L.F.P. IP, LLC, et al. v. Hustler Cincinnati, Inc., 1:09-cv-913 (SD OH 2009)
T. Marzetti Company v. Roskam Baking Company, 2:09-cv-584 (SD OH 2009)
The Container Store, Inc. v. Schulte Corporation, et al., 4:08-cv-00410 (ED TX 2008)
Alps South, LLC v. The Ohio Willow Wood Company, 8:08-CV-1893-T-35MAP (MDFL 2008)
Stiefel Laboratories, Inc. v. Pracso, LLC, 07-0781, (SD OH 2007)
Prasco, LLC v. Stiefel Laboratories, Inc., 07-0135, (SD OH 2007)
NCR Corporation v. Abercrombie & Fitch Co., 06-0919, (SD OH 2006)
NCR Corporation v. The ATM Exchange, 05-0383, (SD OH 2005)
Daniel F. Fitzgibbon, Jr. v. Martin County Coal Corporation and Sidney Coal Company, Inc., 05-0036, (ED KY 2005)
Crown Packaging Technology, Inc., et al. v. Ball Metal Beverage Container, Corp., 05-0281, (SD OH 2005)
Pisces by OPW, Inc. v. Advanced Polymer Technology, Inc., 04-0178 (SD OH 2004)
Milacron, Inc. v. Graham Engineering Corporation, 02-2142, (SD OH 2002)
Total Containment, Inc. v. Osborne, et al., No. 96 7241 (ED PA 1997)
PISCES By OPW v. Total Containment, No. C-1-01-0063 (SD OH 2001)
Environ Products v. PISCES By OPW, No. 02-865 (ED PA 2002)
PISCES By OPW v. Environ Products, No. C-1-02-292 (SD OH 2002)
PISCES By OPW v. Total Containment, No. CIV-02-0543 (SD OH 2002)
PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (SD OH 2004)
Cirrex Systems, LLC v. Ocean Optics, Inc., 1:12-cv-1769 (ND GA 2012)
Milacron, LLC, et al. v. Stough Tool Sales, et. al., 1-12-cv-119 (SD OH 2012)
Ball Metal Beverage Container Corp. v. Crown Packaging Technology, Inc., et al., 3:12-cv-0033 (SD OH 2012)
Diba Industries, Inc. v. IDEX Health & Science, LLC, 3:12-cv-01248 (DCT 2012)
AOK Global Products, LTD, et al. v. Ferno-Washington, Inc., 1-12-cv-267 (ED VA 2012)
Paducah River Painting, Inc. v. McNational, Inc., 5:11-cv-135 (WD KY 2011)
Ionic Communications Group, Inc v. Ionic Collective, LLC, 1:11-cv-00766 (SD OH 2011)
Chikezie Ottah v. First Mobile Technologies, 1:10-cv-07296 (SD NY 2010)
L.F.P. IP, LLC, et al. v. Hustler Cincinnati, Inc., 1:09-cv-913 (SD OH 2009)
T. Marzetti Company v. Roskam Baking Company, 2:09-cv-584 (SD OH 2009)
The Container Store, Inc. v. Schulte Corporation, et al., 4:08-cv-00410 (ED TX 2008)
Alps South, LLC v. The Ohio Willow Wood Company, 8:08-CV-1893-T-35MAP (MDFL 2008)
Stiefel Laboratories, Inc. v. Pracso, LLC, 07-0781, (SD OH 2007)
Prasco, LLC v. Stiefel Laboratories, Inc., 07-0135, (SD OH 2007)
NCR Corporation v. Abercrombie & Fitch Co., 06-0919, (SD OH 2006)
NCR Corporation v. The ATM Exchange, 05-0383, (SD OH 2005)
Daniel F. Fitzgibbon, Jr. v. Martin County Coal Corporation and Sidney Coal Company, Inc., 05-0036, (ED KY 2005)
Crown Packaging Technology, Inc., et al. v. Ball Metal Beverage Container, Corp., 05-0281, (SD OH 2005)
Pisces by OPW, Inc. v. Advanced Polymer Technology, Inc., 04-0178 (SD OH 2004)
Milacron, Inc. v. Graham Engineering Corporation, 02-2142, (SD OH 2002)
Total Containment, Inc. v. Osborne, et al., No. 96 7241 (ED PA 1997)
PISCES By OPW v. Total Containment, No. C-1-01-0063 (SD OH 2001)
Environ Products v. PISCES By OPW, No. 02-865 (ED PA 2002)
PISCES By OPW v. Environ Products, No. C-1-02-292 (SD OH 2002)
PISCES By OPW v. Total Containment, No. CIV-02-0543 (SD OH 2002)
PISCES By OPW v. Advanced Polymer Technology, No. C-1-04-178 (SD OH 2004)
Trademark Infringement Litigation
We represented our client’s organization in a lawsuit filed against his brother and his brother’s company for infringement of a trademark. After successfully defending through trial against a counterclaim that our client’s brother was a partner in our client’s business empire, the Court granted summary judgment in our client’s favor on the trademark claims in October 2011. A permanent injunction was entered against our client’s brother and his organization shortly thereafter.
Trademark Infringement Litigation
Enforcement of client trademark rights in U.S. Federal Courts in the food manufacturing and restaurant industries.