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IP and Trial Attorneys Win Two Patent Infringement Cases, Save Clients a Combined $95M

November 28, 2006

HOUSTON (Nov. 28, 2006) – Bracewell & Giuliani LLP recently won two patent infringement cases in the span of one week, saving the firm's clients a combined total of $95 million.

In the first case, VAE Nortrak North America, Inc. v. Progress Rail Services Corporation, partners John F. Luman III, Glenn A. Ballard Jr. and Albert B. Kimball Jr., along with associates Andrew W. Zeve and Christopher L. Dodson, obtained a complete summary judgment victory.  They defended Progress Rail against patent infringement claims pertaining to railroad track devices used to assist trains in switching tracks.  In addition, they filed antitrust counterclaims on behalf of Progress Rail.  The plaintiff sought damages for alleged willful infringement totaling $70 million, plus an injunction.  The court dismissed all patent infringement claims against Progress Rail.  In addition, the court ruled that the plaintiff’s patent was unenforceable and allowed Progress Rail to proceed with its antitrust claims against the plaintiff.

Five days later Bracewell's Intellectual Property Practice learned that a summary judgment was granted in favor of the firm's client Overstock.com. On Oct. 30, 2006, in Furnace Brook LLC vs. Overstock.com, Inc., the United States District Court for the Southern District of New York granted summary judgment that Overstock.com did not infringe US Patent No. 5,721,832 as a matter of law.  Bracewell partners John H. Barr, Jr., Mr. Luman and associate Chris Shield defended Overstock.com.  Furnace Brook filed suit against Overstock.com in New York in 2005, shortly after Overstock.com sued Furnace Brook in Utah for a declaratory judgment of non-infringement of a patent purchased by Furnace Brook at a bankruptcy auction in 2003.  Overstock.com filed its suit against Furnace Brook in response to demands by Furnace Brook that Overstock.com purchase a license to the disputed patent. 

Furnace Brook sought approximately $25 million for alleged willful infringement, claiming  that its patent titled "Method and Apparatus for an Interactive Computerized Catalog System" applied to retailers selling products over the Internet.  Furnace Brook contended that its  patent covered Internet shopping involving both computers and Internet-enabled cellular telephones. Overstock.com vigorously litigated the case rather than pay any license fees. 

“As a high profile internet retailer, Overstock.com has been the target of this type of claim before,” said Jonathan Johnson, Overstock.com's senior vice president of legal. “Overstock.com will never be bullied into purchasing licenses of patents that it does not infringe and will vigorously defend itself from any unfounded allegations of patent infringement.”