In the News

Ken Parker in the Daily Journal: Trademark Battle Over Skull-Shaped Liquor Bottle Ends in Defense

Lawyers representing the maker of Crystal Head Vodka, a liquor backed by former Saturday Night Live principal and Hollywood comedy luminary Dan Aykroyd, failed to convince a jury that the maker of Kah Day of Dead Tequila – which also bottles its product in a skull-shaped receptacle – infringed upon their client’s signature bottle. >>

Recent Publications

Supreme Court Confirms Broad Reach of Lanham Act False Advertising Claims

Confronted with three different standing tests applied by the Circuit courts to Lanham Act false advertising claims, the Supreme Court has answered the question of which test to apply: “None of the above.” In Lexmark International, Inc. v. Static Control Components, Inc., Slip op. March 25, 2014, Justice Scalia, writing for a unanimous Court, rejected each of the tests employed by the Circuits in favor of a “zone of interests” test. >>

A Desk Guide to Data Protection and Breach Response - Part 6

In this installment of our special series, A Desk Guide to Data Protection and Breach Response, we highlight three relevant federal criminal laws, and outline some practical considerations for making such a referral. >>

gTLD Domain Name Update

On January 23rd, coinciding with the ability of trademark owners to register their brands in many of the new gTLD domain names, Haynes and Boone’s Dallas Office hosted the Dallas/Ft. Worth Metroplex INTA Roundtable on the timely topic “gTLDs: Protecting Your Brand.” >>

Winning a High-Stakes Patent Infringement Case

The Client
A medical technology company focused on the diagnosis and treatment of congestive heart failure

The Challenge
In 2004, our client secured two patents for a unique method of surgically repairing human hearts after a severe heart attack, using a device to resize, reshape and reorient the heart’s left ventricle.  However, two California-based firms introduced their own product that infringed on our client’s patents, claiming that their product was justified by prior art.  Haynes and Boone sued the infringers in U.S. District Court for the Northern District of Texas.

The Haynes and Boone Solution
We faced a major challenge showing to a jury the complex technical issues involved, and relied on a variety of physical exhibits – from videos and complex models of the human heart, to simple demonstrations involving a water balloon. 

Our basic contention was that the prior art involved only size, while our client’s patent involved both size and shape.  The trial team conveyed the importance of shape in dealing with the structure of the heart, the key attribute of our client’s product. 

The Outcome
Following a three-week trial the jury unanimously agreed that the defendants had improperly and willfully infringed our client’s product and should pay lost profits and damages that totaled more than $2.3 million.  The jury found willful infringement on every claim that we asserted for the two patents, and in addition to the monetary award issued a permanent injunction against making or selling the infringing product and ordered all testing of that product to cease immediately. 

This ruling was crucial because our client’s product is still in its infancy, and the defendants had hundreds of infringing products undergoing clinical trials at the time of the decision.  The court’s ruling provided a solid foundation for significant future demand for our client’s product rather than the infringing one. 

By affirming the validity of our client’s patent, the future protection and position that we secured in a highly competitive market of approximately 200 cardiothoracic surgeons ultimately should prove more important than the immediate infringement damages.