Keker & Van Nest LLP

Keker & Van Nest represents plaintiffs and defendants in patent, trade secret, trademark, and copyright cases. Our clients include companies in the fields of semiconductors, medical equipment, biotech, software, networking, the Internet, and consumer goods such as wineries, and include many of the most innovative companies in the world. While we are a small firm, we have been involved in a disproportionate share of the most interesting and important IP disputes throughout the country. Representative matters the firm has handled are described below. We would be pleased to provide client references for these as well as other matters upon request.

PATENT INFRINGEMENT CASES

Patent Enforcement, Licensing, and Inventorship

We represent a major maker of chips for cellular telephones in district court and ITC litigation seeking to exclude the products of a significant competitor and its downstream customers. The ITC found that the competitor's products infringed and ordered the exclusion of both the competitor's and the downstream products from the United States. The case is on appeal.
We represent a medical device company in enforcing a patent involving cardiac stents against other manufacturers.
We represent one of the world's largest manufacturers of integrated circuits in defending its patents relating to flexures for aligning fiber optic cable against an individual who claims to be the true inventor of the patents. After a bench trial, the judge rejected every one of our opponent's claims of invention and granted summary judgment in our favor on all of plaintiff's state law causes of action. The case was remanded for a jury trial on the state claims.
We represent a major biotechnology company in defending its patent rights covering monoclonal antibodies against a licensee and defending against antitrust claims related to the client's patent licensing practices. Both the antitrust claims and the challenge to the patent were summarily dismissed and the Federal Circuit affirmed the judgment in all respects. The Supreme Court remanded the case for consideration of the patent challenge, and that challenge is ongoing.
We represent both the parent and U.S. subsidiaries of the world's leading manufacturer of semiconductor wafers for the "fabless" segment of the market in patent and trade secret litigation against a foreign competitor. We obtained a settlement of $175 million, restrictions on the use of our client's technology, and rights to monitor future compliance. We are currently enforcing that settlement in court.
We represented a major provider of online video rental services in enforcing key business-method patents against another national rental company. The case settled on confidential terms.
We represented the owner of a medical diagnostic process patent in defending the patentability of medical processes before the United States Supreme Court. The Supreme Court dismissed the appeal, a complete win for our client.
We represented five large information technology companies in an amicus brief before the en banc Federal Circuit regarding the proper standards for claim construction.
We represented a developer of digital rights management and security solutions, asserting eleven patents against the world's largest developer of operating systems. In 2004, that litigation resulted in a $440 million license payment to our client.
We represented University inventors of a maternal vitamin formulation against a major pharmaceutical company that stole the invention and patented it in its own name. We obtained a judgment of $58.1 million. The Federal Circuit affirmed the judgment on appeal, and the Supreme Court denied certiorari.
We represented one of the world's largest manufacturers of integrated circuits in a number of actions claiming infringement of nine patents covering various aspects of DRAM and SRAM circuitry and processing. Several of these cases have settled with the defendants paying up to eight figures for a paid-up license.
We won a $7 million patent infringement verdict in federal court in Dallas, Texas, on behalf of a major electronics and telecommunications manufacturer against a well-known television manufacturer. The patents involved circuitry for display of characters on video screens. The Federal Circuit affirmed the judgment.
We tried a patent infringement case against one of the largest manufacturers of semiconductor-processing equipment, obtaining immediate entry of a permanent injunction against further manufacture, use or sale of the infringing devices, a finding of willful infringement and an award of attorney fees.
We won a six week patent infringement jury trial on behalf of the largest manufacturer of programmable logic devices against its primary competitor. The asserted patents cover the fundamental architecture for these devices. The jury found all asserted patent claims valid and infringed. The case was subsequently settled on terms favorable to our client.
We tried a patent infringement action involving a device that tests integrated circuits for semiconductor doping levels and manufacturing defects by means of laser induced thermal and plasma waves. The jury returned a verdict of infringement and validity in favor of our client on five patents.
We prosecuted a patent infringement case against the world's largest manufacturer of wet-cell batteries for infringement of several of our client's patents relating to battery manufacturing equipment. A jury trial resulted in a verdict in favor of our client which, with prejudgment interest, exceeded $6.5 million. The highest settlement offer was $2 million.
We represented the assignee and licensor of a patent for a hydrophilic co-polymer used in the manufacture of extended wear contact lenses and other products. Our client received a multi-million dollar payment in settlement of its claims.

Patent Defense

We represent a maker of computer emulation software defending against patent claims brought by the largest maker of mainframe computers and asserting antitrust claims against the patentee.
We represent one of the world's largest manufacturers of integrated circuits in seeking declaratory judgment that patents held by a licensing entity are invalid and not infringed.
We represent a maker of software for processing insurance claims in defending patent and trade secret litigation filed by a competitor, and in asserting antitrust counterclaims against that competitor.
We represent a major cable service provider in handling all of their patent litigation, including defending a number of patent claims brought by different companies claiming to own video on demand and digital video recorder technology and seeking declaratory relief against other patent owners.
We represent a manufacturer of Internet-based biometric recognition devices in defending a patent lawsuit over security protocols brought by a competitor.
We represent a manufacturer of generic drugs in defending a patent litigation action and pursuing antitrust counterclaims based on evergreening. Just before trial, the patentee agreed to drop all its infringement claims, leaving only our antitrust claims in the case. We defeated a motion to dismiss our antitrust claims in a case of first impression, and the case is awaiting trial.
We represent a manufacturer of generic drugs in challenging the validity and prosecution of a patent covering a major painkiller. The case is awaiting trial.
We represent a maker of flash memory devices in defending against an ITC action brought at the instigation of a competitor.
We represent a maker of ASICs in defending a patent lawsuit based on circuit-level designs for voltage regulator features.
We represent one of the world's largest manufacturers of integrated circuits in defending against patent litigation brought against its core product. The Eastern District of Texas held the patent invalid on summary judgment.
We represent one of the world's largest manufacturers of integrated circuits in defending against patent claims brought by a licensing entity over wireless Internet technology.
We represent a maker of wrinkle creams in defending patent and trade dress claims brought by a competitor.
We represented a major cable service provider in defending against a suit by a small company that claims to have invented VoIP. After we won a claim construction ruling in the Eastern District of Texas, the plaintiff stipulated that our client did not infringe. The Federal Circuit affirmed the ruling in our client's favor.
We represented a maker of task-scheduling software in defending against patent litigation brought by a failed competitor. The case settled on extremely favorable terms.
We represented an innovative file-server company in the network storage industry in defending against patents asserted by a competitor. The district court granted summary judgment in our client's favor on more than 50 different patent claims, and our competitor stipulated that our client did not infringe the only two claims remaining in the case. The Federal Circuit affirmed in all respects.
We represented almost two dozen cellular telephone companies in defending patent litigation brought by a company claiming to own the rights to prepaid cellular telephone cards. The case settled on appeal.
We represented a manufacturer of speaker phones in defending a patent suit brought by a competitor. The case settled with no restriction on the client's use of the technology."
We represented a group of cable television companies in an amicus brief before the Federal Circuit on the novel legal issue of divided infringement. The case settled on appeal.
We represented a Taiwanese designer of CMOS sensor technology, including chips for optical mouse applications, in defending against patents asserted by a company in the optical mouse market. The case settled on confidential terms.
We represented a major provider of online video rental services in defending against patent claims brought by an established computer company. The case settled on extremely favorable terms.
We represented the world's largest search engine in defending patent claims related to data compression technology. The case settled on favorable terms.
We represented an Internet networking company in defending against patent suits brought in several jurisdictions by its largest competitor, the owner of patents relating to distributed systems for delivery of Internet content. The case settled when the competitor purchased our client. The merged company hired us to defend litigation brought by other patent owners.
We represented five major information technology companies in filing an amicus brief before the en banc Federal Circuit regarding the proper standards for claim construction. The Federal Circuit adopted our proposed approach and used language from our brief.
We represented a major provider of online video rental services in defending against a business method patent relating to affiliate advertising programs. The case settled on extremely favorable terms.
We represented a leader in the audio- and video-conferencing industry in defending a patent infringement lawsuit. The suit settled on favorable terms with no restriction on the client's use of its products.
We represented the world's largest search engine in defending against an Internet business method patent asserted by its major competitor. The case settled with no restrictions on our client's use of its products.
We represented one of the world's largest manufacturers of integrated circuits against a major manufacturer of communications chips in defending against patents purporting to read on the graphics architecture of our client's extensive line of chipsets. The plaintiff was seeking hundreds of millions of dollars in damages. Summary judgment was granted for the defense as to all patents.
We defended a major biotechnology company in a half-billion dollar patent infringement lawsuit. After a five week trial, the jury reached a defense verdict, finding that the plaintiff's patent was invalid. Our successful defense was noted as one of the top 10 defense verdicts of that year by the National Law Journal. The Federal Circuit affirmed the judgment on appeal.
We represented a well-known Internet browser company in a patent infringement action based on pre-Internet networking technology. We won summary judgment of non-infringement, which was subsequently affirmed by the Federal Circuit.
We successfully defended a company that designed and sold catheters for use in interventional neuroradiology. Based on tests that we arranged by leading physicians around the country, the Federal Circuit held plaintiff's patent was likely not infringed.
We represented a medical laser equipment manufacturer in defense of a patent infringement case involving slab laser technology. We were brought into the case when a trial appeared imminent. We were able to discover evidence of certain anti-competitive practices by the plaintiff and the case settled promptly and favorably to our client.
We were retained on the eve of trial to defend our client against claims of patent infringement involving three patents directed to urethane chemicals for trans-dermal pharmaceutical applications. It was alleged that twelve compounds infringed. In a bench trial, six of the compounds (those having the greatest commercial significance) were found not to infringe.
We represented an individual accused of patent infringement by a medical diagnostic laboratory. The case against the individual was dismissed.

TRADE SECRET CASES

We represent a maker of popular dolls in defending against copyright and trade secret claims brought by its largest competitor.
We represent a maker of software for processing insurance claims in defending patent and trade secret litigation filed by a competitor, and in asserting antitrust counterclaims against that competitor.
We represent a maker of satellite communicators defending against claims for preliminary injunctive relief based on alleged misappropriation of trade secrets.
We represent an Internet software company and a group of its employees in defending a lawsuit brought by an Internet search engine seeking to prevent the employees from changing jobs.
We represent a maker of semiconductor photomasks in defending a trade secret misappropriation claim.
We represent a skin care research company who won a trial verdict for misappropriation of trade secrets against a competitor. We were hired to defend the verdict on appeal.
We represent a maker of semiconductor fabrication machines in a lawsuit alleging the theft of trade secrets. The defendant is a company founded by one of our client's former key technical employees. The case is set for trial November 7.
We represent both the parent and U.S. subsidiaries of the world's leading manufacturer of semiconductor wafers for the "fabless" segment of the market in patent and trade secret litigation against a foreign competitor. We obtained a settlement of $175 million, restrictions on the use of our client's technology, and rights to monitor future compliance. We are currently enforcing that settlement in court.
We represented a biotechnology company in defending against claims of misappropriation of trade secrets by a former employer of the founder. We persuaded the trial court to dismiss all the trade secret claims against our client on summary judgment, leaving only breach of contract claims for trial. The parties entered into a business deal that resulted in the case being dismissed with prejudice during trial.
We represented a major creator of sports video games in defending against claims that one of its core products copied features from an individual plaintiff. We defeated the plaintiff's motion for a preliminary injunction, and the plaintiff later voluntarily agreed to withdraw his case.
We represented the world's leading search engine in seeking to invalidate a noncompete agreement imposed by a new employee's former employer. At the preliminary injunction hearing, the judge agreed to let the employee go to work for our client despite the noncompete agreement.
We represented a company in the semiconductor industry in connection with a theft of its trade secrets. Within forty-eight hours of being retained, we obtained a temporary restraining order against two of the client's former employees. Subsequently, we negotiated a stipulated injunction that was entered by the court and that placed substantial limits on the activities of the former employees.
We represented the leading provider of computer-aided chip design software in trade secret and copyright claims against its primary competitor, resulting in recovery of nearly $465 million and criminal convictions.
We represented a medical equipment manufacturer in a suit that alleged multiple claims of patent infringement and misappropriation of trade secrets involving integrated-circuit designs for implantable arrhythmia control devices. The patent case was resolved and a first trial on the trade secret claims resulted in a defense verdict in favor of our client. The trade secret judgment was affirmed by the Federal Circuit.
We represented a company and several of its founders on charges that they misappropriated trade secrets involving multiplexers from their former employer. A jury found that our clients had not misappropriated any trade secrets.
We tried and won a trade secret case pertaining to a proprietary production process on behalf of a major winery. This was the first known case applying statutory and common law trade secret principles to the wine industry and establishing trade secret protection for a proprietary process.
We defended our client against claims of trade secret and business opportunity-misappropriation involving computer-network file-server technology. After we successfully moved for summary judgment on the major claims involved, the case settled on favorable terms on the eve of trial.
We represented the leading supplier of computer software systems for use in the management of high-technology product manufacturing processes. The action alleged misappropriation of trade secrets and breach of fiduciary duty in connection with the defendants' hiring of four of our client's employees. We obtained a preliminary injunction and successfully settled the case.
We represented 14 engineers of a major software database company, who were accused by our clients' primary competitor of misappropriation of trade secrets. In the midst of a preliminary-injunction hearing, the case was settled with an apology from the plaintiff. The plaintiff has since retained the firm to represent it in other litigation.
We obtained a temporary restraining order based on reports that the defendant had unlawfully acquired and examined a proprietary medical device manufactured by our client. The parties engaged in expedited discovery leading to informal resolution of the case.
We represented a major securities broker-dealer in a suit to redress a competitor's wrongful acquisition of our client's customer lists and account information. After obtaining a preliminary injunction and the return of customer information, we negotiated a state-wide protocol for the recruitment of employed account executives as well as a monetary payment to our client.

We are providing copyright advice to a well-known maker of digital video recorders.
We represent the world's largest search engine in defending the legality of its image search engine against copyright claims brought by pornographers. We won a precedent-setting victory in the Ninth Circuit.
We represent the developer of a Web site in copyright and contract litigation against the company that ordered the site.
We represent the developer of an open-source operating system kernel in copyright litigation challenging the propriety of open source licenses.
We represent a maker of popular dolls in defending against copyright and trade secret claims brought by its largest competitor.
We are advising an internationally famous computer programmer on copyright, DMCA, and interoperability issues.
We represent an individual accused of reselling on eBay promotional records he acquired from third parties.
We represented a major provider of payment systems in defending against allegations that it has contributed to copyright infringement by permitting its customers to use their credit cards at allegedly infringing Internet sites. We persuaded the district court to dismiss the claims, and the Ninth Circuit affirmed.
� We represented a maker of mapping software accused of copyright and DMCA violations in contesting the plaintiff's damages claim. At trial, the court awarded the plaintiff less than 1% of what it was seeking.
We represented a well-known venture-capital firm against allegations of contributory and vicarious copyright infringement based on alleged infringement by users of a file-sharing system in which our clients invested. After we brought antitrust counterclaims against the music labels that survived a motion to dismiss, the case settled on extremely favorable terms.
We represented an English professor seeking declaratory judgment that she has the right to quote from letters involving a famous author in a biography of a member of the author's family. We defeated the defendant's motion to dismiss, at which point the family agreed not to sue our client or restrict her rights. We were awarded attorney's fees as a prevailing party.
We represented one of the leading peer-to-peer software companies in copyright litigation against 29 major picture studios and record companies. We obtained summary judgment in our client's favor. The Ninth Circuit affirmed the judgment in our client's favor. The Supreme Court vacated the judgment and remanded the case for consideration under a new legal standard. The case settled on confidential but favorable terms shortly thereafter.
We represented a consortium of yoga studios defending their rights to use particular poses against a claim of copyright infringement by a well-known yogi. The case settled on very favorable terms.
We obtained a temporary restraining order and preliminary injunction against further sales of a defendant's handheld computer, based on infringement of our client's software copyrights for its proprietary operating system.
We represented a major provider of broadband Internet service in a challenge to the subpoena provisions of the Digital Millennium Copyright Act. The music industry ultimately withdrew the subpoenas.
We represented three major video-game manufacturers in copyright and trademark litigation concerning sales of infringing and illegal goods by an on-line auction service. The case settled on favorable terms.
We successfully defended an individual facing criminal charges under the Digital Millennium Copyright Act for distribution of information concerning decryption algorithms.
We successfully defended our client against copyright and partnership claims concerning a leading Windows MP3 audio player.
We defended a major winery in a suit alleging misappropriation of trade secrets and copyright violations. We arranged a technology audit in lieu of formal discovery, leading to a voluntary dismissal of the suit with prejudice and an apology to our client.

TRADEMARK CASES

We represent the world's leading search engine in defending against a class action suit brought by trademark owners challenging the practice of domain name "parking."
We represent a maker of t-shirts and bumper stickers defending a lawsuit brought by a competitor asserting rights to political campaign slogans.
We represent a consumer electronics company bringing a claim against a competitor who adopted a similar mark.
We represent a maker of wrinkle creams in defending patent and trade dress claims brought by a competitor.
We represent the world's leading search engine in five cases defending the legality of its use of Internet keywords to trigger advertising against attack by trademark owners. In the first of those cases ever to go to trial, the district court ruled as a matter of law that our clients are not directly infringing. In one of those cases, other search engines have hired us to coordinate the defense. We also represent the search engine in the first of those cases to be appealed.
We represented a maker of video games accused of trademark infringement for permitting the plaintiff's product to appear in one of its games. The plaintiff dropped its claim.
We represented the world's largest video file sharing company in defending trademark claims by an unrelated company that has a web site it claims is confusingly similar. The plaintiff dropped its claim.
We represented a manufacturer of integrated circuits in defending a trademark suit brought by a company in a different field. We persuaded the court that there was no likelihood of confusion despite the fact that the marks were identical.
We represented the world's largest search engine in filing an amicus brief urging the Second Circuit to reverse a district court decision concerning the legality of pop-up advertisements. The Second Circuit reversed.
We represented a consortium of yoga studios defending their rights to use particular poses against a claim of trademark infringement by a well-known yogi. The case settled on very favorable terms.
We represented the world's largest search engine against a cybersquatter who was selling goods at a closely related domain name. We obtained a favorable settlement requiring the cybersquatter to change its name.
We represented a major consumer-products manufacturer in a trademark infringement action. The case was settled favorably to our client after a hearing on a motion for preliminary injunction. The competing product is no longer being sold.
We represented a maker of implantable tracking chips for pets in false advertising litigation against a multi-billion dollar competitor. We took the case over after summary judgment had been entered against our client. We persuaded the Ninth Circuit to reverse the grant of summary judgment, and obtained an injunction on remand. The case settled on very favorable terms for our client.
We represented a vineyard in a common law trademark infringement case against a competing winery. We prevailed in securing a preliminary injunction and a jury verdict awarding compensatory and punitive damages. The damage award is one of the largest ever in a common law trademark infringement case.