Information

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.

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 (6^th 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 (6^th 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.

Income Tax

Successfully represented taxpayer in refund suit based on unitary income tax filing.

Patent Review & Analysis

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.

Class Action, Telecommunications, Public Utility, Taxation & Consumer Protection

Class Action, Telecommunications and Consumer Protection

Patent Applications for Designs & Inventions

Trademark Registration