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Hugh A. Abrams

Partner

HUGH A. ABRAMS applies his nearly 30 years of litigation, prosecution and counseling experience in analysis of complex litigation, clearance and transactional issues. He has served as lead trial counsel in several cases (including four-week bench trial and four-week and three-week jury trials) as well as part of a larger trial team in dozens of litigated patent matters (including nine week jury trial and four-week and three-week bench trials). He has successfully tried patent cases to juries, district court judges, arbitrators, and administrative law judges involving diverse technologies such as medical devices, pharmaceutical products, metallurgical processes, chemical processes, automotive technology and complex electronics. He has also successfully argued appeals before the Court of Appeals for the Federal Circuit. Although his current practice focuses on litigation work, Mr. Abrams has written and prosecuted several hundred patent applications, as well as handled complex reissues, reexaminations and appeals in the Patent and Trademark Office. Mr. Abrams has spent substantial time in Japan working on matters on behalf of and adverse to Japanese companies and has a limited working knowledge of the Japanese language.

Representative Patent Cases

Alma Lasers

  • Alma Lasers, Ltd. and Alma Lasers, Inc. v. Thermage, Inc. (D. Del.) -- lead counsel for plaintiffs in declaratory judgment action involving method patents concerning the use of aesthetic medical devices utilizing radio-frequency technology.
  • Alma Lasers, Ltd. and Alma Lasers, Inc. v. Palomar Medical (D. Del.) -- lead counsel for plaintiffs in declaratory judgment action involving laser device for skin treatment

Arcelormittal

  • PilePro LLC v. Skyline Steel LLC and ArcelorMittal S.A. (E.D. Tx.) -- lead counsel for defendants Skyline Steel and ArcelorMittal in case involving connectors for steel pile wall components.

Edwards Lifesciences

  • Edwards Lifesciences et al. v. Medtronic, Cook and W.L. Gore (N.D. Calif.) -- counsel for plaintiff in patent infringement suit involving endovascular graft for treatment of abdominal aortic aneurysms; obtained settlement from one defendant of $37.5 million
  • Medtronic Inc., et al. v. Dr. Geoffrey H. White (N.D. Calif.) -- lead trial counsel for defendant in two week jury trial involving contract dispute over ownership of patents; case settled after successful jury verdict in favor of defendant on all counts

Johnson & Johnson

  • Medtronic MiniMed et al. v. Animas Corp. (C.D. Calif) -- counsel for defendant J&J/Animas in case involving nine patents on insulin pump technology; responsible for development of invalidity and noninfringement defenses
  • Boston Scientific Corp., et al. v. Johnson & Johnson, et al. (N.D. Calif.) -- counsel for defendant J&J/Cordis in case involving nine patents on balloon angioplasty catheters; after three-week jury trial in 2007, jury returned verdict finding BSC patents invalid and finding that BSC infringed a Cordis patent asserted in a counterclaim.
  • Boston Scientific Corp. and Target Therapeutics v. Cordis Neurovascular (N.D. Calif.) -- lead trial counsel for defendant Cordis Corporation in case involving neurocatheter devices
  • Medtronic AVE, Inc. v. Cordis Corp. (D. Del.) -- counsel for defendant Cordis in patent infringement suit concerning balloon angioplasty stent device; defeated motion for preliminary injunction
  • Medtronic AVE, Inc. v. Cordis Corp. (arbitration) -- counsel for defendant Cordis in case involving martensitic transformation of nitinol wire for stents

Jackson National Life Insurance

  • Lincoln National Life Insurance v. Jackson National Life Insurance (N.D. Ind) – lead trial counsel for defendant Jackson in case involving patent relating to variable annuity benefit riders

Royal Mouldings Limited (F/K/A Marley Mouldings Limited)

  • Marley Mouldings Limited v. Mikron Industries Inc. (N.D. Ill.) -- lead counsel for plaintiff Marley in patent infringement suit involving processing polymer/wood fiber composite; case settled after ruling of summary judgment of literal infringement in favor of plaintiff; Reported at: Marley Mouldings, Ltd. v. Mikron Indus., No. 02 C 2855 , 2006 U.S. Dist. LEXIS 874, January 10, 2006.
  • Gossen Corp. v. Marley Mouldings, Inc. (E.D. Wisc.) -- co-lead counsel for defendant Marley in patent infringement suit involving processing of polymer extrusion; case settled after ruling of summary judgment based on laches and equitable estoppel in favor of defendant; Reported at: Gossen Corp. v. Marley Mouldings, 977 F. Supp. 1346 (E.D. Wisc. 1997).

United States Steel Corporation

  • Inland Steel v. USX Corporation (N.D. Ill.) -- co-lead counsel for defendant U.S. Steel in patent infringement suit involving process and composition of motor lamination steel; obtained favorable ruling of invalidity of two patents in which patentee sought $200 million in damages; case involved complicated reexamination before Patent Office and Federal Circuit appeal; Reported at: In re Inland Steel Co., 265 F.3d 1354 (Fed. Cir. 2001); subsequent appeal reported at: Inland Steel Co. v. LTV Steel Co., 364 F.3d 1318 (Fed. Cir. 2004).
  • Schofield v. U.S. Steel Corporation (N.D. Ind.) -- lead trial counsel for defendant U.S. Steel in patent infringement suit involving use of pneumatic actuators in processing of steel sheet

BorgWarner

  • Hitachi, Ltd., et al. v. BorgWarner Inc. et al. (D. Del.) -- lead trial counsel for declaratory judgment defendant- patentee in patent infringement case involving electronic control of variable camshaft timing system in automotive engine; settlements/licenses obtained from Hitachi, Aisin Seiki, Hilite and Nippondenso.

Baxter Healthcare

  • Abbott Laboratories, et al. v. Baxter Pharmaceutical, et al. (N.D. Ill) -- counsel for defendant Baxter in patent infringement suit involving inhalant anesthetic product (sevoflurane)

Pro Bono Death Penalty Appeal

  • Willie B. Smith, III v. State of Alabama (Crim. App. Ala.) -- pro bono lead counsel for defendant Smith on collateral appeal of conviction and death sentence; evidentiary hearing in Alabama involving claim of mental retardation and subsequent appeals; Reported at: Smith v. State, -- So.3d --, 2012 WL 1890750 (Ala.Crim. App. 2012).

Patent Prosecution and Counseling Experience

  • Prepared and prosecuted numerous patent applications in the complex mechanical and electromechanical arts, including automotive transmissions and components, automotive control systems and electromechanical solenoid valves
  • Handled patent prosecution and opinion matters involving metallurgy, steel processing, medical devices, credit card services, e-commerce, polymer extrusions, pharmaceuticals, and electronics, including microcomputer controlled camera flash systems, photocopiers and digital electronic automotive controls
  • Assisted Japanese trading company with joint venture in construction and operation of new steel minimill; preparation, negotiation and review of joint venture agreements and license agreements; provide advice on patent and technology transfer issues relating to proposed steelmaking process
  • Assisted United States steel company with venture relating to development of new steel making process; provide advice on patent and technology transfer issues
  • Assisted Japanese companies (Minolta, Mazda Motors) in litigation and opinion matters

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