WASHINGTON, D.C. (July 8, 2009) — McDermott Will & Emery LLP secured a significant victory for Firm client, Tanita Corporation of America. The Federal Circuit affirmed the rulings by the U.S. District for the Oregon District that granted Tanita's motions for summary judgment that Tanita's accused products do not practice the invention of the accused patents and for its counterclaim of false advertising by Healthport under the Lanham Act (Healthport Corporation v. Tanita Corporation of America).
The dispute started in 2006 when Healthport Corporation, the holder of two U.S. patents involving a tetra polar bio-impedance body monitor, sued Tanita for patent infringement in the U.S. District Court. Tanita moved for summary judgment for non-infringement of the patent claims and counterclaimed for false advertising by Healthport. On April 9, 2007, the District Court granted Tanita's motion for summary judgment for non-infringement.
Tanita also asserted that Healthport's website statements that the company's bio-impedance monitors (ELG) were of "unequaled accuracy" and that its president and chief technical officer, Richard S. Wooten, had received B.S. and M.S. degrees, were false. On April 9, 2008, the District Court granted Tanita's summary judgment and entered a permanent injunctive order requiring Healthport to immediately remove the ELG and Wooten misrepresentations from its website as well as prohibiting the company from publishing advertisements and promotional material with similar misrepresentations.
Healthport appealed both summary judgments to the Federal Circuit. On May 4, 2009, the Federal Circuit heard oral arguments with Joel Freed presenting the argument on behalf of Tanita. On May 11, 2009, the Federal Circuit issued a one- page Judgment under "rule 36" affirming (without an opinion) the grant of each summary judgment motion by the District Court. On June 17, 2009, the Federal Circuit issued its Judgment as a mandate.
The McDermott team led by Washington, D.C. partner Joel M. Freed included partners Natalia Blinkova, Mike Messina, Bonnie J. Warren and counsel Ken Cage.
McDermott is consistently ranked as one of the most active firms for patent litigation (both trial and appellate), ITC litigation, patent prosecution and trademarks. The Firm's intellectual property team includes more than 200 registered patent lawyers and agents. The Intellectual Property, Media & Technology Department is composed of professionals with experience in virtually all fields of technology including telecommunications, computer hardware and software, semiconductor fabrication, robotics and servomechanisms, biotechnology and pharmaceutical chemistry. The department includes numerous lawyers and agents with valuable experience as former administrative patent judges, U.S. Patent Office examiners, petition specialists and government international representatives.