Litigation
Manufacturing Resources International, Inc. v. Civiq Smartscapes, LLC et al.
Dismissed with prejudice1:17-cv-00269
- Filed
- 2017-03-14
- Terminated
- 2020-01-24
Patents at issue (1)
Defender signal. Patent 8854595 has had claims invalidated at PTAB. Those final written decisions are public record and a ready-made § 102 / § 103 ground in district court. See IPR estoppel for what carries over.
Plaintiffs (1)
Summary
MRI sued Civiq Smartscapes and related entities alleging infringement of the '595 patent. The parties filed a joint stipulation of dismissal (settlement), and the case was terminated without any liability determination on the merits.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
Case Overview and Background
Parties and roles. Plaintiff Manufacturing Resources International, Inc. ("MRI") is a Georgia-based operating company (Alpharetta, GA) that designs and manufactures outdoor-rated LCD/digital display systems and their thermal-management components; its CEO and co-founder William Dunn is the named inventor on the asserted patents, and MRI marks and sells its own display products practicing them (D.I. 297/298 declarations; D.I. 290 at 9–10). MRI is therefore an operating company, not an NPE/PAE. Defendants Civiq Smartscapes, LLC, Civiq Holdings, LLC, Comark, LLC, and Comark Holdings, LLC are related Delaware entities behind Civiq's smart-city "personal communication structure" business — most prominently the LinkNYC connected-kiosk network in New York City, which the parties' briefs repeatedly call the "accused Link product" deployed under the LinkNYC contract (D.I. 290 at 8–9; D.I. 232). Comark (represented in part by Leason Ellis) appears to have been the outdoor-digital-display manufacturing entity whose products MRI targeted under indemnification theories (Leason Ellis client alert on the case). MRI alleged that Civiq's/Comark's outdoor kiosk display assemblies infringed MRI's patented approaches to cooling large electronic displays so they can run outdoors year-round.
Asserted patents and technology. Case metadata identifies U.S. Patent No. 8,854,595 as the patent at issue, but public docket records show the litigation actually grew much broader: after amendment, the court construed terms in eight MRI patents — '595, '572, '287, '325, '322, '633, '108, and '917 — and MRI's own summary-judgment briefing references roughly seventeen related MRI patents (D.I. 150; D.I. 290 at n.1). The '595 patent ("Constricted convection cooling system for an electronic display," issued Oct. 7, 2014) is representative: claim 1 covers a system for cooling an electronic display inside a housing by placing a constricted convection plate behind the display's posterior surface, with side panels forming a constricted convection channel through which a fan draws outside (ambient) air to remove heat (D.I. 150 at 4–6). The companion patents cover related display-thermal-management variants: closed-loop isolated-gas cooling with a constricted-convection plate ('572/'287), heat exchangers for back-to-back displays ('325), constricted-convection systems ('322), and expanded heat sinks/thermal plates ('633, '917, '108). MRI's theory was that Civiq's LinkNYC kiosks used MRI's patented air-flow and heat-exchange designs for their outdoor digital displays.
Procedural posture and why it matters. Filed March 14, 2017 in the District of Delaware as C.A. No. 1:17-cv-00269-RGA, the case was assigned to Judge Richard G. Andrews, one of the busiest and most experienced patent judges in the leading U.S. patent venue; the defendants are Delaware LLCs, making venue proper and typical for Delaware, where patent litigants also benefit from the court's well-developed local patent rules (D.I. 1, filed 3/14/2017; D.I. 150). The case progressed through claim construction (memorandum opinion D.I. 150, Sept. 27, 2018; construction order Oct. 5, 2018), extensive expert and summary-judgment practice, and a trial setting for September 9, 2019 that was canceled and rescheduled. On September 4, 2019, Judge Andrews largely gutted MRI's damages case in a notable Daubert ruling excluding its damages expert's lost-profits and reasonable-royalty opinions (D.I. 290), while separately granting summary judgment that MRI could recover no pre-suit damages because its "virtual marking" website failed to associate specific patents with specific products under 35 U.S.C. § 287 — the court's words that a bare patent list "merely creates a research project for the public" became a widely cited statement on virtual-marking compliance (D.I. 290; Lexology/WHIPgroup commentary, Sept. 2019). Rather than proceed to a second trial setting, the parties settled; they filed a joint stipulation of dismissal with prejudice under Rule 41(a)(1)(A)(ii) on January 23, 2020 (D.I. 364), which Judge Andrews so ordered the next day, terminating the case with each side bearing its own costs (D.I. 365; CourtListener docket No. 4618712). Why notable: beyond the virtual-marking and Daubert guidance, the case is a high-profile example of an outdoor-display operating company enforcing its thermal-management patent portfolio against smart-city infrastructure (LinkNYC), with parallel PTAB activity — Civiq petitioned for IPR of MRI's '572 patent in March 2018, and MRI's claim-construction order later surfaced as an exhibit in Samsung IPR petitions against related MRI patents — before the parties resolved the dispute confidentially with no liability determination on the merits (Google Patents file-wrapper citations; Samsung IPR2023-00199/00254 exhibits).
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
MRI v. Civiq Smartscapes — Key Legal Developments & Outcome
Scope correction (important): Although the case metadata lists only U.S. Patent No. 8,854,595 ("'595 patent") as being at issue, the actual docket shows this was a multi-patent case. The complaint originally asserted 17 MRI display-cooling patents (including the '595, '572, '322, '633, '287, '325, '108, and '917 patents), plus trademark and Delaware state-law claims. By summary judgment, the remaining asserted claims were claim 1 of the '595 patent, claims 8, 11, 14–15 of the '572 patent, claims 2 and 6 of the '633 patent, claim 18 of the '287 patent, and claims 1–2 of the '325 patent. The "no liability determination" phrasing in the prior summary is also inaccurate: the court issued substantive Markman, summary-judgment, and Daubert rulings before the case settled on the eve of trial.
1. Filing & initial pleadings (2017)
- 2017-03-14 — MRI filed its complaint for patent infringement (with jury demand) against Civiq Smartscapes, LLC, Civiq Holdings, LLC, Comark, LLC, and Comark Holdings, LLC. D.I. 1; Case 1:17-cv-00269-RGA (D. Del., Judge Richard G. Andrews). Jurisdiction pled under 28 U.S.C. §§ 1331/1332/1338(a) (patent and trademark claims) with supplemental state claims.
- 2017-03-15 — Summonses issued as to all four defendants.
- Counsel of record: MRI — Connolly Gallagher LLP (Arthur G. Connolly III, Ryan P. Newell) and Standley Law Group LLP (Jeffrey S. Standley, James Lee Kwak, F. Michael Speed Jr.). Defendants — Shaw Keller LLP (John W. Shaw, Karen E. Keller, Nathan R. Hoeschen); Goodwin Procter LLP (Douglas J. Kline, Srikanth K. Reddy, Molly R. Grammel); and Leason Ellis LLP (Yuval H. Marcus, Cameron S. Reuber, Matthew L. Kaufman) for the Comark/Civiq display-maker interests.
- Initial answers, defenses, and the parties' early discovery skirmishing occurred through 2017 (protective order, initial interrogatories/RFPs).
2. Amendment, answers, and counterclaims (2018)
- 2018-02 — MRI moved for leave to file a First Amended Complaint (D.I. 66); defendants opposed (D.I. ~69).
- 2018-03/04 — The parties instead stipulated to dismiss with prejudice certain claims in the original complaint and permit amendment; the stipulation was so ordered (D.I. 82), and MRI filed its First Amended Complaint (D.I. 84).
- 2018-04 — Defendants answered the FAC and asserted counterclaims (D.I. 90); MRI answered the counterclaims and moved to strike/dismiss counterclaims 28–30 (D.I. 95, D.I. 105) — counterclaims that implicated Lanham Act and Delaware Deceptive Trade Practice Act theories (per the later summary-judgment opinion describing MRI's motion for judgment on those counterclaims). Defendants then filed an Amended Answer and Amended Counterclaims (D.I. ~102), and MRI again moved to strike/dismiss amended counterclaims 28–30 (D.I. 105), litigated through May–June 2018.
3. Claim construction (Markman)
- The parties exchanged claim terms and filed a Joint Claim Construction Statement and an Amended Joint Claim Construction Statement (spring 2018).
- 2018-09-19 — Markman oral argument before Judge Andrews (D.I. 147); the court had earlier circulated tentative constructions (D.I. 146).
- 2018-09-27 — Memorandum Opinion (D.I. 150) construing disputed terms across eight patents: '572, '595, '287, '325, '322, '633, '108, and '917 (cooling systems for outdoor electronic displays). See MRI v. Civiq Smartscapes, D.I. 150 (D. Del. Sept. 27, 2018).
- 2018-10-05 — Claim Construction Order (D.I. 152) adopting, among others:
- '595 patent: "posterior display surface" = "rear-facing surface of the display assembly"; "constricted convection channel" = "constricted channel through which air may flow to remove heat from the posterior display surface."
- "closed loop"/"closed gaseous loop" ('572, '287, '325) = "gas pathway within a display housing containing gas that is essentially isolated from external air"; "open loop" needed no construction.
- "between" ('322) = "in the space that separates"; "substantially parallel" ('322) held not indefinite, = "approximately parallel."
- "conductive thermal communication" ('633, '917) = "transfer of heat between objects through physical contact."
- "the front surface of the electronic display is coolable by a closed loop of isolated gas" ('287) held not indefinite.
- 2019-03-05 — Memorandum Order (D.I. 181) construing the term "rear surface of the electronic display" ('572 and '287 patents): the court adopted MRI's position and held no construction necessary, rejecting defendants' narrower "rear surface of the backlight" construction as importing impermissible limitations from dependent claims and embodiments (Phillips / Thorner framework).
4. Discovery milestones of strategic significance
- 2018-10-08 — Deposition of Michael Naclerio; MRI also served deposition subpoenas on third parties including Michael A. D'Amelio and Flex/Flextronics International USA (a manufacturer in the supply chain), reflecting the theory that Civiq/Comark's "Smart City" kiosk/display products were built with Flextronics.
- Discovery disputes were handled by letter to Judge Andrews (multiple sealed discovery letters in 2018–2019), and the parties served successive sets of RFPs/interrogatories (e.g., Civiq's First Set of RFPs referencing the '595, '322, '165, '622, '695, '572, '079, '841, and other MRI patents).
- Fact discovery closed 2018-11-30; expert discovery closed 2019-04-05 (per the court's later opinion summarizing the schedule).
- Plaintiff's damages expert was Melissa A. Bennis (lost profits / reasonable royalty); MRI also designated Aris Silzars (secondary considerations/non-infringing alternatives) and damages/valuation expert Mr. Eichmann (forward-citation analysis). Civiq's challenge to these experts became a central battleground.
5. Summary judgment phase (2019)
- 2019-04 — Cross-motions:
- Defendants' Motion for Partial Summary Judgment and to Exclude Certain Expert Testimony (noninfringement of the '325 patent; invalidity of '287 patent claim 18 for lack of written description; no pre-suit damages; Daubert challenges to MRI's experts, including Bennis).
- MRI's Motion for Summary Judgment and Daubert Motion (direct infringement of '595 claim 1, '633 claims 2 and 6, and '325 claims 1–2; induced infringement of '572 claims 8, 11, 14–15; no inequitable conduct; judgment on defendants' Lanham Act and Delaware Deceptive Trade Practice counterclaims).
- 2019-08-28 — Memorandum Opinion (D.I. 282): summary-judgment ruling on the remaining claims described above. (Public version available; the court is reported to have granted summary judgment of infringement as to some claims before trial.)
- 2019-09-04 — Memorandum Opinion (D.I. 290) — second substantive summary-judgment/related ruling.
6. Daubert, motions in limine, and damages-expert showdown (2019)
- 2019-08-22 — Oral argument on the Daubert/motion-in-limine issues (transcript filed 2019-09-06).
- 2019-08-30 — Pretrial conference (transcript filed later).
- 2019-09-05 — Order on Motions in Limine (D.I. 306); same day MRI filed an Emergency Motion for Leave to Supplement MRI's Damages Expert Opinion (D.I. 302) after its damages expert was called into question — briefing ran through late September 2019.
- 2019-09-30 — Memorandum Opinion (D.I. 342) on the Daubert motions. Judge Andrews:
- Excluded Melissa Bennis's lost-profits and reasonable-royalty opinions — her lost-profits analysis improperly relied on confidential settlement communications (FRE 408) and lacked factual support for the "entire kiosk" (entire market value) premise; her reasonable-royalty opinion failed to tie the royalty base/rate reliably to the patented features as the driver of product value.
- Admitted Mr. Eichmann's forward-citation valuation analysis, treating criticisms as going to weight, not admissibility.
- Ruled on the remaining Silzars/secondary-considerations and non-infringing-alternatives challenges.
7. Trial, settlement, and final disposition (2019–2020)
- A jury trial was initially set for 2019-09-09, but the case did not go to trial then (the Daubert opinion issued 2019-09-30 and damages issues remained in flux). The trial was rescheduled to 2020-01-27.
- 2020-01-17 — Telephone status conference before Judge Andrews (counsel for both sides present).
- 2020-01-21 — Defendants' counsel filed a letter regarding settlement (D.I. 362); the court entered an oral order cancelling the 2020-01-27 jury trial (D.I. 363).
- 2020-01-23 — Parties filed a Joint Stipulation for Dismissal With Prejudice (D.I. 364) under Fed. R. Civ. P. 41(a)(1)(A)(ii) — all claims, counterclaims, and affirmative defenses dismissed with prejudice, each party bearing its own costs and fees, with the court retaining jurisdiction to enforce the settlement agreement.
- 2020-01-24 — Judge Andrews so ordered the stipulation; civil case terminated (D.I. 365).
- No verdict was ever rendered; no appeal followed. Final disposition: settlement and dismissal with prejudice — but only after the court had issued merits rulings (claim construction; partial summary judgment on infringement; summary judgment on counterclaims/inequitable conduct issues; and exclusion of MRI's primary damages theory), which shaped the settlement.
8. Parallel PTAB proceedings
- No Civiq-filed IPR/PGR against the '595 patent (or the other asserted patents) appears in the litigation docket or public record. The case was never stayed pending IPR; it proceeded through Markman, summary judgment, and Daubert to the eve of trial.
- Separately (and post-dating this case), MRI's display-cooling patents — including patents sharing the '595 family and the very claim-construction order from this litigation — were later challenged by Samsung in IPR2023-00199, IPR2023-00254, and IPR2023-00255 (petitions filed late 2022), which used the D. Del. Markman order (D.I. 152) and SJ briefing as exhibits. Those proceedings are unrelated to Civiq and had no effect on this case's disposition.
Key caveats on sourcing: This synthesis relies on public docket sources (CourtListener/RECAP, Justia, Unified Patents portal), the D. Del. opinion PDFs on the court's and CourtListener's servers, and secondary summaries (Leason Ellis client announcement, vLex/Studicata case notes). I did not have direct PACER access, so (a) the precise issue-by-issue holdings of D.I. 282 and D.I. 290 and (b) the final order on MRI's emergency motion to supplement its damages expert (D.I. 302) could not be independently verified from the primary text. If you need those specifics, the next step would be pulling D.I. 282, 290, and 342 from PACER (or the public PDFs on CourtListener for D.I. 245/282/342) to confirm each branch of the cross-motions.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Standley Law Group
- Jeffrey S. Standley · lead counsel
- James Lee Kwak · lead counsel
- F. Michael Speed Jr. · lead counsel
- Connolly Gallagher
- Arthur G. Connolly III · local counsel
- Ryan P. Newell · local counsel
- Kyle Evans Gay · local counsel
Plaintiff's Counsel of Record — MRI v. Civiq Smartscapes, LLC, No. 1:17-cv-00269-RGA (D. Del.)
Counsel for plaintiff Manufacturing Resources International, Inc. ("MRI") is publicly identified on the docket, in the Court's opinions, and in the parties' filings. The case settled and was dismissed with prejudice on January 24, 2020 (D.I. 363-64 area; see CourtListener docket 4618712; minute entry of 1/17/2020 status conference). No liability determination was reached on the merits, and no filings relevant to counsel identity are sealed. No in-house counsel for MRI appeared of record; MRI's CEO (William Dunn) was an inventor/witness, not counsel.
Lead patent counsel (out-of-state; prosecuting/arguing lawyers on the merits)
1. Jeffrey S. Standley — Founding partner, Standley Law Group LLP, 6300 Riverside Drive, Dublin, OH 43017.
- MRI's long-time patent litigation counsel. He appears in the signature blocks of plaintiff's substantive filings (e.g., D.I. 246, Declaration of Steve Stoeffler, filed 5/6/2019) and attended the January 17, 2020 status conference as counsel for plaintiff (CourtListener minute entry). Standley Law Group is a boutique IP firm that has represented MRI across its outdoor-display thermal-management patent enforcement matters; Kwak's declaration in the case identifies him as "a partner at the law firm Standley Law Group LLP ('SLG'), counsel for Plaintiff."
2. James Lee Kwak — Partner, Standley Law Group LLP, Dublin, OH.
- Appeared on plaintiff's filings throughout (D.I. 242, 246) and argued the Markman/claim-construction hearing: the Court's opinion identifies "Jeffrey S. Standley, James Lee Kwak (argued), and F. Michael Speed, Jr., STANDLEY LAW GROUP LLP, Dublin, OH" as "Attorneys for Plaintiff" (D.I. 150, filed 9/27/2018). UniCourt lists him as a plaintiff attorney on the case.
3. F. Michael Speed, Jr. — Partner, Standley Law Group LLP, Dublin, OH.
- Of counsel on plaintiff's briefs/declarations (D.I. 246) and listed as plaintiff's attorney in the Court's opinions (D.I. 342, Memorandum Opinion of 9/30/2019). He appeared at the January 17, 2020 teleconference alongside Newell and Standley.
Delaware local counsel
4. Arthur G. Connolly III — Partner, Connolly Gallagher LLP, 1201 North Market Street, 20th Floor, Wilmington, DE 19801 (Delaware Bar No. 2667).
- Senior Delaware litigator serving as MRI's local counsel. Listed in every substantive plaintiff filing and in the Court's opinions: "Arthur G. Connolly III, Ryan P. Newell, and Kyle Evans Gay, CONNOLLY GALLAGHER LLP, Wilmington, DE … attorneys for Plaintiff" (D.I. 342).
5. Ryan P. Newell — Partner, Connolly Gallagher LLP, Wilmington, DE (Delaware Bar No. 4744).
- The primary local counsel of record on the docket — he filed the bulk of MRI's notices, stipulations, and letters (e.g., D.I. 95 motion to strike, D.I. 310, 314, 316, 318) and appeared for plaintiff at the January 17, 2020 status conference (CourtListener minute entry). UniCourt lists him as a plaintiff attorney.
6. Kyle Evans Gay — (Listed in some OCR'd filings as "Kyle Evans Gray" — the correct name is Kyle Evans Gay, Delaware Bar No. 5752) — then-associate (now Of Counsel) at Connolly Gallagher LLP, Wilmington, DE.
- Appears in plaintiff signature blocks beginning in 2019 (D.I. 242, 246, with email kgay@connollygallagher.com) and in the Court's opinion caption in D.I. 342. Her firm bio confirms Delaware Bar No. 5752 and the Connolly Gallagher affiliation. Note: she has since left active firm practice to serve in public office (Delaware State Senate 2020; Delaware Lt. Governor), so her firm-bio practice description (business/government litigation) postdates this case; in this matter she was part of the Delaware local-counsel team.
Sources relied on
- D.I. 150 (Claim Construction Opinion, 9/27/2018): lists Standley, Kwak (argued), Speed; and Connolly, Newell as "Attorneys for Plaintiff" (also available at D. Del. website opinion 17-269).
- D.I. 246 signature blocks (5/6/2019): Connolly Gallagher LLP (Connolly III, Newell, Gay) and Standley Law Group LLP (Standley, Kwak, Speed), "Attorneys for Plaintiff Manufacturing Resources International, Inc."
- D.I. 342 (Memorandum Opinion, 9/30/2019): full plaintiff counsel caption.
- CourtListener docket 4618712 (entries and minute entry of 1/17/2020 showing counsel present: R. Newell, J. Standley, F.M. Speed).
- UniCourt case summary listing plaintiff attorneys: James L. Kwak, Ryan Patrick Newell, Fred Michael Speed, Arthur G. Connolly III, Jeffrey S. Standley.
Caveats
- The docket does not formally designate "lead" vs. "of counsel" for each attorney; the role labels above are inferred from filings and argument appearances. In Delaware practice, Connolly Gallagher is the local firm of record and the Ohio lawyers are out-of-state counsel appearing (typically pro hac vice) as MRI's substantive patent counsel.
- The case metadata lists only U.S. Patent No. 8,854,595, but the operative pleadings asserted several related MRI patents ('595, '572, '633, '325, '322, '287, '108, '917); counsel of record is the same for all.
- No plaintiff in-house attorney appeared of record, and I found no evidence of additional plaintiff-side counsel beyond the six lawyers above. If MRI had indemnity/counterclaim counsel for itself (e.g., for the defendants' Lanham Act counterclaims), none appeared separately on the public docket — the same Connolly Gallagher/Standley team handled those defenses.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Shaw Keller
- John W. Shaw · local counsel
- Karen E. Keller · local counsel
- David M. Fry · local counsel
- Nathan R. Hoeschen · local counsel
- Goodwin Procter
- Douglas J. Kline · lead counsel
- Srikanth K. Reddy · co-counsel
- Molly R. Grammel · co-counsel
- Naomi L. Birbach · of counsel
- Leason Ellis
- Yuval H. Marcus · co-counsel
- Matthew L. Kaufman · co-counsel
- Lori L. Cooper · co-counsel
- Cameron S. Reuber · co-counsel
Counsel of Record for Defendants — Manufacturing Resources International, Inc. v. Civiq Smartscapes, LLC et al., No. 1:17-cv-00269-RGA (D. Del.)
The defendants (Civiq Smartscapes, LLC; Civiq Holdings, LLC; Comark, LLC; Comark Holdings, LLC) were represented by a three-firm team. The court's opinions and filings uniformly caption them "Attorneys for Defendants / Counterclaim Plaintiffs." The lineup below is drawn from the signature blocks of D.I. 150 (Sept. 27, 2018 claim-construction opinion), D.I. 257 (March 13, 2019 reply brief), and D.I. 342 (Sept. 30, 2019 memorandum opinion), plus the January 17, 2020 status-conference minute entry and the Leason Ellis client alert. I did not locate any in-house counsel appearing of record.
Delaware counsel (Shaw Keller LLP) — local counsel for all defendants
- John W. Shaw — Lead Delaware counsel / partner, Shaw Keller LLP, 1105 North Market Street (I.M. Pei Building), 12th Floor, Wilmington, DE 19801. Co-founder of Shaw Keller and one of the most frequently appearing patent litigators in the District of Delaware; he appeared for defendants at the Jan. 17, 2020 status conference and his name appears on the claim-construction opinion and virtually every substantive defense filing (D.I. 150, 257, 342; minute entry 1/17/2020).
- Karen E. Keller — Partner, Shaw Keller LLP (same office). Prominent Delaware IP litigator; named counsel on the Markman opinions and the summary-judgment/Daubert briefing (D.I. 150, 257, 342).
- David M. Fry — Partner, Shaw Keller LLP (same office). Appears on the defense briefs beginning in early 2019 (e.g., D.I. 257, March 2019); UniCourt's case page lists him as a defense attorney of record (D.I. 257; UniCourt case page).
- Nathan R. Hoeschen — Partner (associate at the time), Shaw Keller LLP (same office). The CM/ECF docket shows he was the filing attorney on most defendants' submissions from 2018 through the 2020 dismissal stipulation, including the joint stipulation of dismissal (D.I. 364), and he attended the Jan. 17, 2020 status conference (docket entries passim; CourtListener docket No. 4618712).
Lead/co-counsel on the merits (Goodwin Procter LLP) — patent litigation counsel
- Douglas J. Kline — Partner, Goodwin Procter LLP, 100 Northern Avenue, Boston, MA 02210. Lead Goodwin partner on the case; argued at the September 2018 Markman hearing (designated "argued" in D.I. 150) and appeared for defendants at the Jan. 17, 2020 status conference. Longtime patent litigator with extensive Federal Circuit and district-court experience.
- Srikanth K. Reddy — Partner, Goodwin Procter LLP, Boston (same address). Argued claim construction in 2018 (D.I. 150) and appeared at the January 2020 status conference; active in high-stakes D. Del./ITC patent litigation.
- Molly R. Grammel — Partner, Goodwin Procter LLP, Boston (same address). Argued claim construction in 2018 (D.I. 150) and authored/oversaw multiple defense expert and summary-judgment filings (e.g., declaration in support of D.I. 239 per docket).
- Naomi L. Birbach — Partner, Goodwin Procter LLP, The New York Times Building, 620 Eighth Avenue, New York, NY 10018. Listed as of counsel/co-counsel on the defense signature blocks (D.I. 150, 257, 342); IP litigator handling patent and trade-secret cases.
Co-counsel for the Comark defendants (Leason Ellis LLP) — indemnification-related representation
Per the Leason Ellis client alert, the firm appeared as co-counsel "representing the interest of our client, a manufacturer of outdoor digital displays, who was subject to potential personal liability under an indemnification claim after an asset sale" — i.e., the Comark entities whose products MRI targeted — and resolved the indemnity claims as part of the overall settlement.
- Yuval H. Marcus — Partner, Leason Ellis LLP, One Barker Avenue, Fifth Floor, White Plains, NY 10601. Named on the court filings as defense counsel (D.I. 150, 257, 342); lead Leason Ellis partner per the firm's client alert.
- Matthew L. Kaufman — Partner, Leason Ellis LLP, White Plains, NY (same office). Defense counsel of record (D.I. 150, 257, 342); patent litigation/PTAB practitioner.
- Lori L. Cooper — Associate (then), Leason Ellis LLP, White Plains, NY (same office). Defense counsel of record (D.I. 150, 257, 342); listed on the firm's client alert as part of the team.
- Cameron S. Reuber — Attorney, Leason Ellis LLP, White Plains, NY (same office). Appears in the defense signature blocks on the Markman opinion and later filings (D.I. 150, 257, 342). Note: I did not find a separate Leason Ellis announcement for Reuber; his role is evidenced by the court filings themselves.
Sources and caveats
- Signature blocks: D.I. 150 (claim construction, Sept. 2018), D.I. 257 (defendants' reply, Mar. 2019, with firm addresses/bar numbers), D.I. 342 (Sept. 2019), all available via CourtListener docket 4618712 / Justia / docketalarm (also filed as Samsung IPR exhibits).
- Leason Ellis client alert, "Leason Ellis Obtains Dismissal of Patent Infringement Claims" (leasonellis.com), identifying Marcus, Kaufman, and Cooper and the case number.
- CourtListener docket feed confirming Hoeschen as filer of the dismissal stipulation (D.I. 364) and the Jan. 17, 2020 minute entry listing defense counsel present (J. Shaw, N. Hoeschen, S. Reddy, D. Kline).
- UniCourt's page lists only David M. Fry among "defendant attorneys," which is plainly incomplete; the court opinions and filings themselves are the more authoritative source for the full roster.
- Some biographical claims (e.g., "prominent Delaware IP litigator") reflect general reputation from the cited sources' context; specific past-case lists for each attorney were not independently verified here and would need firm-bio or Law360 confirmation. The court record itself confirms each attorney's appearance and, where noted, who argued.