Firm News and Recent Decisions
Interprets patent venue statute 28 U.S.C. § 1400(b)
February 6, 2017
TDR partner Meredith Martin Addy and associates Ashley Crettol Insalaco and Kelly O’Neil filed an amicus brief at the U.S. Supreme Court on behalf of the American Intellectual Property Law Association (AIPLA) in TC Heartland LLC v. Kraft Foods Group Brands LLC, U.S., No. 16-341 (2017).
The American Intellectual Property Law Association (AIPLA) brief argues that the Federal Circuit correctly interpreted the general venue statute at 28 U.S.C. 1391(b) as providing a definition of "resides" applicable to the patent venue statute at 28 U.S.C. 1400(b). Although the Supreme Court in 1957 held the two statutes worked independently, Congress changed the law in 1988 by adding to the general venue statute "for purposes of venue under this chapter." And, Congress rewrote section 1391(b) in 2011 to provide a definition of "resides" specifically applicable "for all venue purposes."
The Supreme Court will hold argument in Heartland on May 27, 2017.
The TDR attorneys who filed this brief are part of TDR's patent litigation and appellate practice areas.
November 23, 2016
TDR partners Gino L. DiVito and John M. Fitzgerald and TDR associate Ashley Crettol Insalaco, along with their co-counsel, won an impressive victory in the Illinois Appellate Court in Koenig & Strey GMAC Real Estate v. Renaissant 1000 South Michigan I, LP, 2016 IL App (1st) 161783. TDR represented three individuals who signed a guarantee of a real estate loan. The lender sued the guarantors and recovered a judgment against them in excess of $18 million.
Working with co-counsel Kenneth Nemec, William Hrabak and Sara Spitler of Goldstine, Skrodzki, Russian, Nemec & Hoff, Ltd., TDR argued that the judgment should be reversed because it included an enormous amount of statutory post-judgment interest, which was not covered by the guaranty agreement. The Illinois Appellate Court agreed, vacated the judgment against the guarantors, and remanded the case to the Circuit Court of Cook County for further proceedings.
Please see here for additional information about TDR’s appellate practice.
Singles Out Specialties in Litigation, Patent Law
November 9, 2016
Tabet DiVito & Rothstein has been designated a top-tier law firm by U.S. News and World Report and Best Lawyers in their recently released 2017 “Best Law Firms” rankings. The firm received a Tier 2 designation in the categories of Litigation-Patent and Patent Law.
To be eligible for a Best Law Firms ranking, a firm must have a lawyer listed in The Best Lawyers in America, which recognizes the top four percent of practicing attorneys in the U.S. based on assessments submitted by clients and peers.
Meredith Martin “Mimi” Addy, an accomplished patent litigator and Federal Circuit appellate attorney joined Tabet DiVito & Rothstein as a partner in May 2016. Addy is recognized in the current edition of The Best Lawyers in America for her work in patent law and patent litigation. She has been named to Best Lawyers every year since 2007.
According to Best Lawyers, firms included in the 2017 “Best Law Firms” list are recognized for professional excellence with consistently impressive ratings from clients and peers. The publication notes that achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.
More information about the 2017 “Best Law Firms” rankings is at http://bestlawfirms.usnews.com/.
October 20, 2016
On October 20, 2016, TDR partner Caesar Tabet was quoted by the Chicago Daily Law Bulletin in an article about the Illinois Appellate Court opinion in People ex. rel. Beeler, Schad and Diamond, P.C. v. Relax the Back Corp., 2016 IL App (1st) 151580. The Appellate Court’s opinion exonerated TDR’s client of all liability under the Illinois False Claims Act in connection with allegations that TDR’s client improperly did not pay sales tax on Internet and mail-order catalog sales. At trial, the court rejected approximately 95% of the claims against TDR’s client, and on appeal the Appellate Court rejected the remaining 5%, leaving TDR’s client with no liability whatsoever.
Regarding the Appellate Court’s opinion, Tabet states that it is “thorough, comprehensive and consistent with well‑established federal and state law under the federal False Claims Act and the Illinois False Claims Act and constitutional principles that limit taxation on the internet,” and that it “will be very helpful to the trial courts that are still dealing with potentially hundreds or thousands of similar cases that essentially are tax cases brought by private attorneys under the False Claims Act,” because it will “help those courts substantially narrow and limit these hundreds or thousands of other pending cases.”
TDR partners Caesar Tabet and Daniel Konieczny tried the case and argued the appeal.
October 17, 2016
On October 17, 2016, the Illinois Appellate Court issued an opinion that exonerated TDR’s client of all liability in connection with allegations that TDR’s client violated the Illinois False Claims Act by not collecting sales tax on Internet and mail-order catalog sales. The lawsuit was one of hundreds filed by an Illinois law firm against out-of-state retailers who did not collect sales tax on Internet and catalog sales. At trial, the Circuit Court of Cook County found that TDR’s client conducted a reasonable investigation of the relevant law in connection with its tax obligations and was not liable under the False Claims Act for approximately 95% of the contested sales, but the Circuit Court found liability for 5% of the contested sales. TDR appealed the finding of liability on the remaining 5%. The Illinois Appellate Court affirmed the trial court’s finding that TDR’s client conducted a reasonable investigation, and it reversed the finding of liability for the remaining 5% of the sales, leaving TDR’s client with no liability whatsoever.
The Appellate Court’s opinion establishes an important precedent for False Claims Act litigation nationwide, and it will make it easier for courts to identify and put an end to future lawsuits that do not meet the basic requirements of the False Claims Act as early as possible. TDR partners Caesar Tabet and Daniel Konieczny tried the case and argued the appeal.
October 14, 2016
TDR partners Meredith Martin Addy and Daniel Konieczny successfully defended key patent claims against an invalidity challenge in an inter partes review proceeding concerning motion tracking technology with applications to the helmet mounted displays used in military aircraft. On October 14, 2016, the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office issued its final written decision in Elbit Systems of America, LLC v. Thales Visionix, Inc., Case IPR2015-01095. In the decision, the PTAB held that TDR client Thales Visionix, Inc. overcame Elbit Systems of America’s contentions that several claims of Thales Visionix’s patent were invalid based on obviousness.
The claims on which Thales Visionix prevailed cover systems and methods for tracking the orientation or position of an object, such as a pilot's helmet, relative to a moving reference frame, such as an aircraft. Thales Visionix has brought an action in the U.S. Court of Federal Claims, asserting that Elbit incorporated this patented technology as part of the helmet mounted displays supplied to the United States Government for the F-35 fighter aircraft. That action was stayed pending the PTAB’s ruling, and it was independently dismissed based on Elbit’s contention that Thales Visionix’s patent was not directed to patent-eligible subject matter under 35 U.S.C. § 101. Thales Visionix has appealed the § 101 decision to the United States Court of Appeals for the Federal Circuit, and on November 2, 2016, TDR partner Meredith Martin Addy argued that case before the Federal Circuit.
Chambers (Band 1 Ranking) and Best Lawyers Rocognize Addy's Accomplishments
August 24, 2016
Chambers USA, an annual guide to the legal market in the United States, has again ranked Tabet DiVito & Rothstein partner Meredith Martin “Mimi” Addy as a Leading Individual in Band 1 for her accomplishments in intellectual property law in Illinois. Band 1 is Chambers’ highest designation for an individual attorney.
Chambers noted that Addy is “praised for her federal circuit appeals practice” and that she has “become a favorite of clients in the pharmaceutical and electrical engineering sectors.” The publication has recognized Addy each year since 2006.
Chambers bases its rankings on a combination of extensive interviews with clients and peers and a comprehensive assessment of recently completed deals and cases. Its researchers evaluate individual attorneys on their technical legal ability, professional conduct, client service, commercial astuteness, diligence, commitment, and other qualities valued by clients. You can find more information at www.ChambersandPartners.com.
In addition, Addy was recently selected by her peers for inclusion in the 23rd edition of The Best Lawyers in America for her work in patent law and patent litigation.
Best Lawyers is the oldest peer-review publication in the legal profession. It employs a survey process designed to elicit meaningful and substantive evaluations from leading lawyers about the professional abilities of their colleagues within the same geographical and legal practice areas. More information is at www.BestLawyers.com.
Addy has two decades of experience in complex litigation on behalf of entrepreneurial and innovative companies in sectors ranging from software to pharmaceuticals. She has served as first- or second-chair trial counsel in nearly 30 cases in federal district court, and has handled more than 40 appeals to the U.S. Court of Appeals for the Federal Circuit.
Addy is a member of the Federal Circuit Bar Association’s board of directors, and she has been a member of the Federal Circuit’s Advisory Council for more than a decade. Because of her knowledge of patent litigation and the Federal Circuit, she has also testified before Congress on the state of the Federal Circuit and patent appeals. Addy writes the blog BusinessDeNovo on issues relating to innovation, business, and patent law.
August 17, 2016
TDR partners Caesar Tabet, Mark Horwitch and John Fitzgerald recently obtained the dismissal of an accounting malpractice suit in Indiana state court filed against one of the country’s largest public accounting firms.
The plaintiffs were seeking millions of dollars in damages, and the lawsuit had been pending for about two years when TDR stepped in as counsel for the accounting firm. TDR immediately filed a motion to dismiss the plaintiffs’ entire amended complaint with prejudice. Following briefing and oral argument, the Indiana trial court dismissed the claims against TDR’s client with prejudice, thus ending long-running litigation against TDR’s client.
This dismissal came only five months after TDR became involved in the matter.
TDR has an impressive track record of successfully representing public accounting firms accused of professional malpractice.
August 16, 2016
TDR partners Caesar Tabet, Daniel Stanner, and John Fitzgerald, and TDR associate Uri Abt successfully represented a minority owner of a Delaware Limited Liability Company. The controlling members planned to sell the assets of the company and then to file for Chapter 11 bankruptcy. The controlling members scheduled a shareholder meeting to approve that transaction.
The minority owner requested information regarding the proposed action. The controlling members refused that request. They attempted to dismiss the minority shareholder's concerns by claiming that the bankruptcy was in the best interests of the minority owner because it would save him from further liability. The controlling members then expedited the date for the shareholder meeting to vote on the proposal.
TDR filed an arbitration with the American Arbitration Association to resolve the dispute as required by the Operating Agreement. TDR then filed an action in the US District Court for the District of Arizona seeking a temporary restraining order to preserve the status quo pending arbitration. The District Court granted the temporary restraining order prohibiting the company from entering into the stalking horse agreement or from filing for bankruptcy. In securing the temporary restraining order, TDR was able to preserve the minority owner's rights to full information, an informed vote, and a meaningful dispute resolution process.
TDR often represents minority shareholders in corporate governance and shareholder oppression lawsuits and, as in this case, TDR obtains victories in litigation and successfully obtains emergency injunctive relief when necessary to accomplish our clients’ goals.
TCPA Class Actions Provide Backdrop for Illinois Courts’ Struggle with the Adequacy Requirement for Both Counsel and Plaintiff
July 19, 2016
TDR attorney Jordan Wilkow authored an article in the June 30 edition of the Chicago Daily Law Bulletin. The article examines conflicting views among Illinois state and federal courts regarding the severity of the adequacy requirement in class certification analysis as applied to both class counsel and the class plaintiff. Class actions brought under the Telephone Consumer Protection Act, which have become rather ubiquitous in Illinois in recent years, have provided the vehicle through which these views have been expressed. The article unpacks the tension between more ideological and more practical understandings of the adequacy requirement, and the notion of decertifying a class in the name of protecting it.