Intellectual Property Litigation


IP Counsel to International Furniture Manufacturer

We help our client, a furniture designer and manufacturer, obtain design patents and trademark registrations for its extensive product line. We also litigate when their design patents or marks are infringed upon.

IP Counsel to International Greenhouse Business

Our client, a large, international greenhouse grower, has design and utility patents and hundreds of trademarks. Until recently, there was no strategy for their IP. Mr. Schneider developed and is implementing an ongoing strategy to manage the trademarks and patents on an international basis. He also assists with seed licensing for unique and high value crops. We also enforce the client’s mark in court.

Ohio Willow Wood v. Alps South

John Luken served as lead appellate counsel for The Ohio Willow Wood Company (OWW), a manufacturer of prosthetic products, which came to Dinsmore after it had lost an infringement trial against a competitor, been enjoined from selling new products, held in contempt of the injunction, and ordered to pay nearly $20 million in damages to its chief competitor.

On behalf of OWW, Mr. Luken and the Dinsmore appellate team successfully obtained a stay of the contempt order from the Federal Circuit, which allowed OWW to begin selling its products again. After briefing and argument, the Federal Circuit reversed the lower court’s judgment and dismissed the complaint for lack of standing, thereby overturning the judgment against OWW. Mr. Luken also successfully opposed a petition for rehearing and rehearing en banc.

NPE Experience

We have defended clients in challenges to their patents from a wide variety of NPEs. Several representative examples of patents we have defended are below:

  • Cascades Publishing Innovation, LLC: U.S. Patent 8386484
  • Data Speed Technology LLC: US Patent 5,867,686 – High speed real-time information storage system
  • eTagz: US Patent 7,503,502 – Computer readable hang tag and product
  • eTagz: US Patent 7,703,686 – Consumer computer-readable product label apparatus and method
  • eTagz: US Patent 6,298,332 – CD-Rom product label apparatus and method
  • eWatch: US Patent 6,970,183 – Multimedia surveillance and monitoring system including network configuration
  • Helfrich Patent Licensing: Various US Patents related to mobile device technology
  • Honeywell International, Inc.: Various US Patents related to bar code and QR code technology
  • Infinite Data, LLC: US Patent 5,790,530 – Message passing multiprocessor system)
  • Innovatio IP Ventures: Various US Patents related to local area network radio frequencies and multiple channel wireless access
  • Lemolson Foundation: Various US Patents relating to bar code technologies
  • Lodsys: US Patent 7,222,078 – Interactive applications (smartphone apps)
  • Mobile Logistics: Various US Patents related to transportation yard management systems
  • MPHJ (formerly Project Paperless): Various US Patents related to computer architecture and document management
  • Pragmatus Telecom, LLC: US Patent 6,322,231 – Method and system for coordinating data and voice communications via customer contract channel changing system using voiceover IP)
  • Round Rock: Various US Patents related to radio frequency identification
  • TPQ Development LLC: US Patent 5,412,730 – Encrypted data transmission system employing means for randomly altering the encryption keys)
  • US Ethernet Innovations: Various US Patents related to Ethernet connections and point of sale
  • Wireless Media: Various US Patents related to transportation yard management systems
  • You Technology, Inc.: Various US Patents related to biometric technology

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)

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.