Patent Infringement, False Advertisement & Antitrust
Lexmark International, Inc. v. Impression Products, et al., Case No. 10-564-MRB (S.D. of Ohio)
SKO, along with Sidley Austin LLP and Banner & Witcoff, represented Lexmark in a closely-watched patent case at the Federal Circuit Court of Appeals. In a dispute brought by Lexmark over remanufactured printer cartridges, the Federal Circuit held in Lexmark’s favor on domestic and international patent exhaustion issues. The case is now pending before the United States Supreme Court and will be argued on March 21, 2017.
Shareholder Class Action
Margie Elstein v. Lexmark International, Inc., et al., Civil Action No. 16-CI-02380 (Fayette Circuit Court)
SKO represented Lexmark in successfully dismissing a proposed class action lawsuit filed by a shareholder claiming Lexmark’s merger agreement with a consortium of investors was unfair to shareholders. The lawsuit was filed less than a month before Lexmark’s scheduled shareholder vote. After the lawsuit was filed, the plaintiff sought a temporary injunction enjoining the shareholder vote. Steven argued that the case should be dismissed because Lexmark’s bylaws require the case be heard in the Delaware Chancery Courts. A mere three days before the scheduled shareholder vote, the Court dismissed the lawsuit and the shareholder vote occurred as scheduled.
Patent Infringement
Lexmark International, Inc., et al. v. Pitney Bowes Inc., et al., Case No. 001-237-JMH (E.D. Ky.)
Successful litigation involving patent infringement claims against Lexmark relating to print quality enhancement technology. Lexmark obtained summary judgment, dramatically limiting the products at issue on the basis of failure to mark or provide actual notice under 35 U.S.C. § 287. The case was settled after the Court’s ruling.
Patent Infringement
Lexmark International, Inc. v. Laserland, Inc., 304 F.Supp.2d 913 (E.D. Ky. 2004)
Represented Lexmark in a patent infringement lawsuit, and established new personal jurisdiction law in the Sixth Circuit relating to interactive websites; case settled.
Recapitalization and Restructuring of Financial Services Compliance Firm
Represented financial services compliance firm in all aspects of recapitalization and sale of multiple series of securities to private equity firm and other stockholders.
Federal and State Regulation, Telecommunications
Obtained favorable ruling in interconnection dispute between major telecommunication carriers, prevailing before Sixth Circuit, District Court, and Kentucky Public Service Commission. BellSouth Telecomms., Inc. v. Goss, 142 Fed. Appx. 886 (6th Cir. 2005).
Antitrust, Telecommunications
Successfully defended telecommunications carrier in Sixth Circuit and District Court against antitrust and related claims in suit brought by prison inmates. Daleure v. Kentucky, 269 F. 3d 540 (6th Cir. 2001); Daleure v. Kentucky, 119 F. Supp. 2d 683 (U.S.D.C W.D. Ky. 2000).
Information Technology Agreements
Since 1994, SKO has been involved in reviewing and negotiating the agreements relating to many clients’ information technology systems, including providing for data security, privacy protections and incorporating service level agreements.
Patent Infringement, False Advertisement & Antitrust
Static Control Components, Inc., et al. v. Lexmark International, Inc., et al., Case No. 04-84-GFVT (Consolidated with Action No. 02-571) (E.D. Ky) (multiple published decisions)
This multi-party, complex litigation involved Lexmark, a major provider of printing and imaging products and services. Lexmark asserted claims for, among other things, patent infringement and inducement to commit patent infringement. The lead opposing party, Static Control Components, asserted claims against Lexmark for, among other things, antitrust violations under the Sherman Act and Clayton Act and false advertising claims under the Lanham Act. Lexmark obtained dismissal of the Sherman Act and Clayton Act antitrust claims and a favorable ruling upholding Lexmark’s single-use restriction on its printer cartridges under the Uniform Commercial Code. On June 3, 2013 the United States Supreme Court granted Lexmark’s petition for writ of certiorari to resolve a circuit split on the proper test for standing to assert Lanham Act false advertising claims. Steven argued the case in front of the Supreme Court on December 3, 2013.
Income Tax
Successfully represented taxpayer in refund suit based on unitary income tax filing.
Class Action, Telecommunications, Public Utility, Taxation & Consumer Protection
SKO represented a class of more than 450,000 members in U.S. District Court challenge to overcharges/tariff violations by regulated telecommunications carrier. We obtained summary judgment on federal overcharge claims for class members and protected class certification by defeating an interlocutory appeal to the U.S. Sixth Circuit Court of
Appeals. We also prevailed for class members in a collateral state utility commission proceeding on issues referred by the District Court. Settlement approved by District Court in November 2013 included cash
refunds to all class members.
Bowers v. Windstream Ky. East, LLC, 2013 U.S. Dist. LEXIS 157242 (W.D. Ky. 2013).
Class Action, Telecommunications and Consumer Protection
SKO acted as counsel for a 175,000-member plaintiff class in U.S. District Court to challenge sales tax collection on broadband Internet access services provided by incumbent local exchange carrier. The Court approved settlement agreement in August 2007 that provided class members full refunds of overpayments plus interest, totaling $8.2 million.
Clark v. BellSouth Telecommunications, Inc., 461 F.Supp.2d 541 (W.D. Ky. 2006).
Patent Applications for Designs & Inventions
SKO prepared, filed and prosecuted patent applications for clients' inventions and designs in a wide variety of subject matter areas. Examples include exercise apparatus; floor treating machines; electronic monitoring systems; gardening systems; shelving designs; tool designs; and various mechanical, electrical and electromechanical systems, devices and methods.
Trademark Registration
SKO prepared, filed and prosecuted trademark applications for clients in a variety of industries including manufacturing, healthcare, equine, restaurants and other service-based businesses, and nonprofit organizations.
Venture Capital Investments
Represented a fund that makes convertible debt or preferred equity investments in numerous early-stage Kentucky business entities to facilitate the commercialization of innovative ideas and technologies.
Patent Review & Analysis
SKO regularly represents clients in the artificial turf surfaces industry regarding the review and analysis of patents in that industry. This representation involves performing detailed analyses and providing advice about whether our clients' and their competitors’ products are covered by the claims of various patents in the industry, as well as negotiating agreements with the owners of several of those patents.
