Thomas D. Rein

Representative Patent Cases

JOHNSON & JOHNSON

• BTG International and Janssen v. various generics (D.NJ) — lead trial counsel for plaintiffs in a Hatch-Waxman case directed at the blockbuster drug ZYTIGA®, a drug for the treatment of advanced prostate cancer. Prevailed at trial on infringement and written description, but lost on obviousness following the PTAB’s obviousness determination in IPRs. The Federal Circuit affirmed the obviousness determinations of the Patent Office and declined to reach the district court decisions. (2018/2019)
• Ethicon Endo-Surgery, Inc. v. Crescendo Technologies, LLC. (S.D. Ohio) — prevailed as lead trial counsel for Ethicon in a 10-day jury trial over ownership of patent applications relating to ultrasonic shears; jury found breach of invention assignment clause, non-compete and agreement not to use confidential information; court then upheld monetary damages and re-assigned patent applications (1:07cv1016, 2009 WL 2707805 (S.D. Ohio Aug. 24, 2009)).
• Medtronic AVE, Inc. v. Cordis Corporation (E.D. Tex.) — co-lead counsel for defendant in patent infringement case relating to balloon catheters; favorably settled on the eve of the pre-trial conference. (2007)
• Ethicon Endosurgery, Inc. — lead trial counsel for Ethicon in arbitration over patent infringement claim relating to medical device. (2006)

SYNQOR, INC.

• SynQor, Inc. v. Artesyn (E.D. Tex.) — lead counsel for SynQor in patent infringement action against 11 of the largest suppliers of DC-DC power converters. Successes included:
  • Prevailing before a jury in Marshall, Texas. The jury ruled for SynQor on each of its patent infringement claims and awarded SynQor the entirety of what it sought from each of the 11 defendants. In total, SynQor was awarded more than US$95 million, which included lost profits and price erosion damages. (Jury Verdict 12/21/10)
  • Obtaining a permanent injunction after a two-day evidentiary hearing directed at whether and when a permanent injunction should issue. In granting an immediately effective permanent injunction, the U.S. district court rejected the defendants’ request for a lengthy transition period in which they could continue to sell the infringing products to certain end-customers, including Cisco Systems, Inc. (2011 WL 238645 (E.D. Tex., January 24, 2011))
  • Obtaining supplemental damages and sanctions against certain defendants for infringing sales not included in the jury verdict. (2011 WL 2683181 and 2011 WL 2683184 (E.D. Tex., July 11, 2011))
  • Final judgment affirmed in full by the Federal Circuit. (March 13, 2013) Petitions for en banc review and to stay the mandate denied in May and June 2013, and cert. denied in November 2013.
• SynQor, Inc. v. Artesyn (E.D. Tex.) — lead counsel for SynQor in a four-day bench trial against some of the defendants in the earlier case for continuing to induce infringement after the entry of a permanent injunction and for allegedly violating the permanent injunction. Prevailed in part. (3/31/14). Established liability and obtained additional damages; case settled on appeal in November 2015.
• Lineage Power Corp. v. SynQor, Inc. (E.D. Tex.) — lead counsel for SynQor in patent infringement action involving nine patents relating to power converters; case settled on favorable terms. (August 2011)
• SynQor, Inc. v. Cisco, et al. (E.D. Tex.) — lead counsel representing SynQor in patent infringement action involving same patents asserted in Artesyn case; settled with Ericsson on favorable terms on the eve of the preliminary injunction hearing, with Ericsson agreeing to the entry of a permanent injunction; settled with Cisco on favorable terms on the eve of trial; the longstanding stay of SynQor’s case as to Vicor has now been lifted. (2011–Present)
• SynQor, Inc. v. Vicor (Federal Circuit) — argued for SynQor in three separate appeals of inter partes reexamination decisions by the PTAB. Prevailed on one and prevailed in-part on other two.

LONGI SOLAR

• In The Matter Of Certain Photovoltaic Cells and Products Containing Same, Investigation No. 337-TA-3369 (ITC) — lead counsel for respondent LONGi Solar in patent infringement action brought by competitor. Secured a dispositive claim construction ruling for respondent LONGi Solar, resulting in a rare order by the ALJ staying the scheduled trial indefinitely pending the issuance of the initial determination finding non-infringement. On June 3, 2020, the Commission affirmed the non-infringement determination. Additionally, the asserted patent was found invalid in IPR. Both decisions are now on appeal.  

CALAMP CORP.

• Omega v. CalAmp (M.D. Fla) — lead trial counsel representing CalAmp in retrial after obtaining remand on appeal. Obtained a jury verdict of no induced infringement, and therefore no liability, on two patents and no willful infringement on any patent. One patent that was found to be valid and infringed in the first trial (where Sidley was not counsel) was found by jury to only have one infringing unit and damages of US$1.00. One patent that was found to be infringed had damages reduced to US$5/unit. Previous award, which included treble damages and attorneys’ fees and totaled more than US$20 million, reduced to US$4.6 million. In a further appeal, the case was remanded yet again for a new trial on damages. 
• ORBCOMM v. CalAmp (E.D. VA) — lead counsel for CalAmp in five patent suits directed at systems for tracking, monitoring and controlling remote assets. Invalidated one patent on 101 grounds, obtained voluntary stipulations of dismissal with prejudice on three additional patents, and obtained a stipulation of non-infringement regarding the one remaining patent following claim construction. The case, along with an affirmative case CalAmp brought accusing ORBCOMM of infringing two of CalAmp’s patents, settled and was dismissed in May 2017.

NATIONAL PASTEURIZED EGGS, INC.

• National Pasteurized Eggs v. Michael Foods (W.D. Wisc.) — prevailed as lead trial counsel in patent infringement suit involving two of National’s patents directed at the pasteurization of eggs in their shells and three of Michael Foods' patents directed at the same. The jury ruled for National on each of its patents and invalidated all of Michael Foods patents on written description and enablement grounds. The jury also awarded approximately US$6 million in damages, primarily for lost profits and price erosion. The court entered a permanent injunction on 6/19/12 and denied all post-trial challenges on 3/29/13. Case settled while on appeal.

AIRCELL, INC./GOGO, LLC

• Ambit v. Aircell (D. Mass.) — prevailed as lead trial counsel for defendants Aircell and Delta Air Lines in a three-week jury trial before Judge Young; plaintiff alleged that Aircell’s Gogo® inflight internet service infringes plaintiff’s patent; jury found no infringement and all patent claims invalid for anticipation, obviousness, lack of enablement and insufficient written descriptions. (Verdict 07/28/10)
• Advanced Media Networks v. Gogo, Delta AirLines, et al. (C.D. Ca.) — lead counsel for Gogo and other defendants for alleged patent infringement directed at the Gogo® inflight internet service. Obtained a favorable Markman ruling on 6/14/13 leading to settlement.

OWENS CORNING

• Fast Felt v. Owens Corning (N.D. Ohio) — lead counsel for Owens Corning in a patent infringement suit directed at Owens Corning’s SureNail® product and process. After prevailing at a Markman hearing in the district court, prevailed in the Federal Circuit on an appeal of an IPR ruling, which resulted in the asserted patent being invalidated. District court case was then dismissed. (2017)
• Certainteed v. Owens Corning (D. Del.) — lead counsel for Owens Corning in a patent infringement suit involving five patents directed at laminated shingles. Patents all invalidated in IPRs. (2016) 

MAGNA

• Panasonic v. Magna (W.D.TX) – lead counsel for Magna in competitor suit involving patents on radar and camera systems in vehicles. (2022) 
• Magna Mirrors of America v. SMR (W.D. MI) — lead counsel for Magna in a patent suit against a competitor relating to rearview mirror systems that reduce the driver’s blind spot. Defeated institution of SMR’s 10 petitions for inter partes review of Magna’s patents. Prevailed on all claim construction and indefiniteness issues, and obtained summary judgment of infringement. (2022)
• Wildcat Licensing v. Magna International, Inc. et al. (D. Del.) — lead counsel for Magna in a patent suit directed to manufacturing methods and assembly systems; case stayed after IPRs were instituted. (2021)

GENUS/ABS

• Inguran v. ABS Global and Genus (W.D. WI) — lead trial counsel for defendants in a suit originally asserting seven patents and a claim for trade secret theft. The case follows Sidley’s successful claim on behalf of ABS and Genus against Inguran for monopolization under Section 2 of the Sherman Act in a 2014 litigation in the Western District of Wisconsin. In this case, Sidley obtained summary judgment dismissing plaintiffs’ claims on four patents. One patent was invalidated on indefiniteness grounds, one on written description grounds, and two on non-infringement grounds. Plaintiff dismissed its claims on a fifth patent with prejudice. The court also dismissed plaintiffs’ trade secret allegations as precluded by the previous litigation. Trial was completed on September 10, 2019 on the two remaining patents from the present case and one patent that was remanded for re-trial from the first case, resulting in a design around option being cleared as non-infringing, willfulness being dropped, and plaintiff being awarded a royalty half of plaintiff’s original damages request. Awaiting rulings on post-trial briefing.
• Inguran v. ABS Global and Genus (W.D. WI) — lead counsel for defendants in new suit alleging that additional activities infringe the previously asserted patent; plaintiff also sought a preliminary injunction.  Defeated the motion for preliminary injunction and obtained a dismissal of Plaintiff’s complaint.  Plaintiff is now seeking to assert two new patents in yet another suit. (2022) 

MEDLINE

• Medline Industries v. CR Bard (N.D. Ill.) — lead counsel for Medline in three patent infringement cases relating to various aspects of a single-layer catheter assembly. (2022)

BAXTER

• Millenium v. Baxter (N.D. Ill.) — lead counsel for Baxter in a patent infringement suit relating to synthetic bone material for use in bone substitution. Patents invalidated in IPRs. (2014)

MERCK

• Merck Sharp & Dohme Corp. v. Actavis (D. NJ) — lead counsel for Merck in a Hatch-Waxman case directed at antibiotic Dificid®. Case settled in 2021.

Representative Trade Secrets Cases

• ATOS, LLC v. Allstate Insurance Company (N.D. IL.) – lead counsel for Allstate in case involving claims of patent infringement and trade secret misappropriation; filed motions to dismiss and to stay discovery. (2022)
• Inguran, LLC v. ABS Global, Inc. and Genus PLC (W.D. Wi.) — lead counsel for defendants in a case involving claims of patent infringement and trade secret misappropriation; obtained dismissal of trade secret claims on summary judgment. (2019)
• Stoneridge Control Devices, Inc. v. Intier Automotive Closures (D. Mass.) — lead trial counsel in a jury trial for defendant Intier; obtained dismissal of trade secrets claims and settled breach of contract claims during trial after cross-examining plaintiff’s lead witness. (2005)

Representative Licensing Disputes

• Applied Medical v. Ethicon Endosurgery (C.D. CA and arbitrations) — represented Ethicon in disputes over licensing agreement and patent infringement; disputes settled.
• Akorn v. John Hopkins University (N.D. IL) — lead counsel for exclusive licensee Akorn in dispute over termination of license; dispute settled after complaint filed.