February 2013
Russ August & Kabat Obtains $20 Million Judgment in Patent Case Affirmed by Federal Circuit
Russ, August & Kabat attorneys Marc A. Fenster, Jules L. Kabat, Alexander C.D. Giza, Adam S. Hoffman, and Benjamin T. Wang won a $20 million judgment after a jury trial that was affirmed by the United Sates Court of Appeals for the Federal Circuit, on February 8, 2013, in favor of their client, Clear With Computers, LLC against Hyundai Motor America, Inc.
Hyundai appealed an $11.5 million jury verdict finding that its website and related systems infringed U.S. Patent No. 7,606,739, and that the patent was neither invalid in light of the prior art nor for lack of written description. The patent generally relates to systems and methods for preparing customized sales proposals.
The jury verdict was the result of a week-long trial in the Eastern District of Texas before Chief Judge Leonard Davis. Clear With Computers was represented by Russ August & Kabat attorneys Fenster, Kabat, Giza, Hoffman, and Wang. Hyundai was represented by a team of 10 attorneys primarily from the international law firm of Winston & Strawn and led by Gene Schaerr, chair of the firm’s appellate practice.
On appeal, Hyundai challenged the jury’s verdict of numerous grounds. Hyundai argued that Clear With Computers failed to present any evidence that Hyundai’s website was of “particular interest to the customer” as required by the claims, and that Hyundai performed all of the steps of the claims. Hyundai also argued that prior art systems from the Ford Motor Co. and Buick, supported by evidence and testimony from the designers of those systems, invalidated the patent, and that the patent was invalid for lack of written description. Hyundai also challenged the damages verdict as based on evidence with no nexus to the patented technology. And Hyundai challenged the jury instructions on invalidity and the District Court’s rejection of its attempt to impugn the character of a Clear With Computer witness at trial.
Oral argument on the appeal took place on February 5, 2013, before Circuit Judges Moore, Clevenger, and O’Malley. Fenster argued for Clear With Computers, and Schaerr argued for Hyundai. Three days later the Court affirmed the jury verdict on all grounds in favor of Russ August & Kabat client Clear With Computers in a per curiam judgment. The Court also awarded Clear With Computers costs on appeal. All told, the Court’s decision results in a $20 million award consisting of the $11.5 million trial verdict awarded by the jury, royalties going forward for the life of the patent, interest, and costs.
Listen to the recording of oral argument.
July 2012
Russ August & Kabat Attorneys Alexander C.D. Giza, Andrew D. Weiss, Adam S. Hoffman, Benjamin T. Wang, Irene Y. Lee, Michael S. Brophy, Nathan D. Meyer and Robert F. Gookin Recognized as 2012 Southern California Rising Stars.
Rising Stars are the top 2.5% percent of attorneys in each state, under 40 years old and/or who have been practicing for 10 years or less, as chosen by their peers and through an independent research. Thomson Reuters performs the polling, research and selection of Rising Stars in a process designed to identify lawyers who have attained a high degree of peer recognition and professional achievement. Rising Stars is a comprehensive and diverse listing of outstanding attorneys, representing a wide range of practice areas, firm sizes and geographic locations.
Alexander C.D. Giza’s practice encompasses high technology and intellectual property matters, including patent and trade secret litigation, patent prosecution/due diligence/licensing and appellate matters. Mr. Giza earned a Bachelor’s Degree in Electrical Engineering at the University of Virginia and worked as an electrical engineer for Westinghouse, IAI America and Eaton. Mr. Giza has represented clients regarding technologies across the spectrum, including digital video recorders, semiconductor design, videoconferencing, liquid crystal displays, computer hard drives, digital watermarking, laptop computer modems, random number generators, music channel broadcasting, ATSC television receivers, video encoding/decoding and MEMS technology. He received his J.D. from UCLA School of Law and is registered to practice in the U.S. Patent and Trademark Office.
Andrew D. Weiss’ practice focuses on intellectual property and litigation matters, primarily patent litigation. He has represented a variety of clients, including technology, internet, semiconductor, manufacturing and apparel companies. Mr. Weiss also assists clients in non-litigation intellectual property-related matters, such as identifying and patenting inventions. He is a graduate of the University of Southern California Gould School of Law and has an undergraduate degree in Computer Science.
Adam S. Hoffman’s practice focuses on complex business and intellectual litigation, with a special emphasis on damages and other remedies. He has represented plaintiffs in patent litigation resulting in tens of millions of dollars in settlements, against a wide range of high-tech companies, including Microsoft, Apple, RIM, HP, Barnes & Noble, Dell, Sony, HTC, and Sanyo, among others. Mr. Hoffman graduated from Duke University School of Law (magna cum laude), where he was articles editor of the Duke Law Journal.
Benjamin T. Wang’s practice focuses on complex business and intellectual property litigation at both the trial court and appellate court levels. In 2009, Mr. Wang was appointed to a three year-term on the California State Bar’s Committee on Federal Courts. Mr. Wang earned his law degree from USC Gould School of Law, where he graduated as a member of the honor society Order of the Coif.
Irene Y. Lee’s practice focuses on intellectual property matters, with an emphasis on patent and trademark enforcement and licensing. As a registered patent attorney licensed to practice before the U.S. Patent and Trademark Office, she brings her patent prosecution experience to strategizing litigation matters and licensing issues. Through patent, trademark and Internet-related litigation, she has enforced intellectual property rights of some of the world’s largest medical device, computer software and apparel companies, as well as small to medium-sized businesses and individuals. She provides preventative counseling through rendering opinions and reviewing potential investments concerning intellectual property. Ms. Lee received her J.D. from Loyola Law School, where she served as the Vice President of St. Thomas More Honor Society. She earned her Bachelor of Science in biochemistry from UCLA.
Michael S. Brophy’s practice focuses on probate litigation, intellectual property, entertainment and employment matters. He has extensive experience in trust and estate litigation, copyright, Lanham Act, trade secret, patent, unfair competition, contract, and wrongful termination matters. In addition to litigation matters, his experience includes risk assessment and counseling, alternative dispute resolution, and administrative proceedings. Mr. Brophy received his J.D. from Harvard Law School.
Nathan D. Meyer’s practice focuses on general litigation and intellectual property matters, with an emphasis on general business litigation and soft IP. His experience includes copyright, apparel, contract and real estate litigation. Mr. Meyer is a graduate of Harvard Law School and Harvard College.
Robert F. Gookin’s practice focuses on intellectual property, complex commercial litigation and probate litigation. Mr. Gookin has been extensively involved in all aspects of patent, trademark, securities, probate and complex business litigation. He received his B.A. from Columbia College and his J.D., cum laude, from Loyola Law School, where he was elected Order of the Coif. Mr. Gookin was a staff member on the Loyola of Los Angeles Law Review and a member of the St. Thomas More Law Honor Society.
Russ August & Kabat attorneys Marc A. Fenster, Jules L. Kabat, Alexander C.D. Giza, Adam S. Hoffman, Benjamin T. Wang, Michael S. Brophy, and Stanley H. Thompson, Jr. won a unanimous jury verdict of $11.6 million in favor of their client, Clear With Computers, LLC (“CWC”), on June 17, 2011.
CWC sued Hyundai Motor America, Inc. in the Eastern District of Texas for infringement of U.S. Patent No. 7,606,739, which relates to customized sales proposals. After a week-long trial, the jury found infringement of all asserted claims of the patent, and rejected Hyundai’s defenses of invalidity by anticipation, obviousness and inadequate written description. In addition, the jury awarded CWC more damages than the $10 million CWC requested in its closing arguments, awarding $11.6 million in damages through trial. Hyundai was represented by Gene C. Schaerr, Peter McCabe III, and John Moss of the international law firm of Winston & Strawn LLP, and Douglas R. McSwane, Jr. of Potter Minton P.C.
See Article.
