Joshua Krumholz, a trial attorney and the national Practice Group Leader for the firm’s Intellectual Property Group, focuses primarily upon intellectual property litigation, with a particular focus upon patent litigation. His practice covers a variety of technologies and jurisdictions. Over the past nine years, Mr. Krumholz has been successful in all nine cases he has taken to trial, including successful jury verdicts in the Eastern District of Texas, Chicago, Massachusetts and New Jersey. He also has achieved successful verdicts in a bench trial in Michigan and arbitrations in Sweden and Massachusetts. Mr. Krumholz is a Trial Adviser for Harvard Law School’s Trial Advocacy Program, provides yearly talks on current patent issues at Cowen & Company conferences, and speaks regularly on current topics in the patent field.
Mr. Krumholz’s patent litigation experience covers a variety of technologies including, among other areas, software, hardware, pesticides, computer chip wafer processes, air jet technology and consumer goods. His complex commercial experience includes partnership tax disputes, escheatment, healthcare disputes and antitrust matters.
REPRESENTATIVE PATENT LITIGATION MATTERS:
Meyer U.S., Inc. v. Bodum (N.D. Ill). Mr. Krumholz was asked to take over the case shortly before trial from another firm and, his Holland & Knight team, successfully secured a willfulness finding from the jury on infringement, upheld the two asserted patents after a validity challenge, and received the total amount of the damages requested.
Nassau Precision Casting Co., Inc. v. Acushnet Company, Cobra Golf and Puma North America, Inc. (E.D.N.Y.). Representing defendants in claim brought on patent that claims weight shifting in golf club head.
IBT v. Fujitsu American, Inc. (S.D. Fla.). Represents defendant in patent infringement case involving biometric information and security technology with use of personal computers.
Hasbro, Inc. v. Buzz Bee Toys, CA No. 10-10906 (D. Mass.). Represented plaintiff in litigation brought against Buzz Bee for infringement of several of its patents covering its Nerf-N-Strike Disc Shot Blaster and Nerf Super Soaker. Lawsuit resolved with a consent judgment in Hasbro's favor that enjoined Buzz Bee from selling the accused product in the market.
Hasbro, Inc. Lanard Toys, CA No. 10-30106 (D. Mass.). Represents plaintiff in litigation brought against Lanard for infringement of several of its patents covering its Nerf-N-Strike Disc Shot Blaster.
Stragent LLC v. CA, Inc., CA No. 10-225 (E.D. Tx). Represents defendant in this multi-defendant lawsuit brought by a patent holding company in the Eastern District of Texas. The patent purports to cover an application generation tool for the creation of database-related programs. With its client, Holland & Knight has developed a number of noninfringement and invalidity arguments.
Wordcheck Tech, LLC. v. CA, Inc. (E.D. Tx). Represents defendant in this multi-defendant lawsuit brought by a patent holding company in the Eastern District of Texas. The patent purports to cover software that automatically checks for appropriate content in electronic messages.
BASF v. Cheminova, CA 10-274 (M.D. N.C.). Represents defendant in this action where BASF has asserted four patents involving the termite and animal health fields. Two of the asserted patents cover methods for manufacturing fipronil, which is a chemical compound used in termiticides. The remaining patents claim methods for applying the fipronil in the field. Cheminova has moved aggressively to secure an early trial date.
Adams Arms v. Sig Sauer (M.D. Fla.). Represents defendant, one of the industry leaders in firearms manufacturing, in this lawsuit brought by the holder of a patent on a retrofit system for the replacement of gas impingement systems in M16 rifles with direct drive piston systems. The plaintiff claims that defendant's new SIG516 rifle infringes its patent for the retrofit system.
Cacace v. Meyer Corp., CA No. 06-2938 (SDNY). Represents defendant and its affiliates in this action where the plaintiff has asserted a patent claiming a raised edge sauté pan. The plaintiff claims that a pan covering a number of the defendant's brands infringes the patent, which purports to claim a pan where the edge opposite the handle is raised to reduce the likelihood of food spillage while cooking.
Sulzer Textile AG et al. v. Picanol N.V. (E.D. Tex.). Represented a Belgian maker of high speed, high-end weaving machines in suit brought by its principal competitor in the Eastern District of Texas. After 2 1/2 week trial, the jury returned a defense verdict for the company, finding that Picanol did not infringe either patent.
Symantec Corp. v. CA, Inc. (E.D. Mich). Represented defendant in patent infringement lawsuit involving antivirus software. After the case was remanded from the Federal Circuit, and three months before trial, CA retained Mr. Krumholz and his team to replace the existing law firm. CA was exposed to a substantial nine-figure damage claim. In the span of a few weeks, Mr. Krumholz and his team reviewed and absorbed the voluminous record, worked with CA’s experts to supplement their expert reports, conducted expert depositions, prepared witnesses for trial, and prepared the necessary pretrial papers, including over twenty substantive motions in limine. Based upon that work, CA was able to achieve a favorable settlement without the need to bring the matter to trial.
Juxtacomm Technologies, Inc. v. Ascential Software Corp. et al. (E.D. Tex.). Represented defendant in this east Texas multi-party patent litigation. Juxtacomm asserted a patent claiming extract, transform and load (ETL) technology. After establishing that its accused product constituted prior art, the case settled on terms favorable to CA.
Positive Technologies, Inc. v. LG Display Co., Ltd. et al. (E.D. Tex.). Mr. Krumholz was brought in shortly before trial to act as lead trial counsel for LG Display in this east Texas matter. Positive had sued a number of defendants over patents related to plasma display panel technology. Positive had brought a substantial nine-figure claim. The matter settled shortly before trial.
Anthurium Solutions, Inc. v. MedQuist, Inc. et al. (E.D. Tex.). Represented plaintiff in connection with claims brought against the leading providers of medical transcription services in the world. The patent covers a workflow system used for processing medical transcription jobs around the country and the world. The case settled on favorable terms for Anthurium.
Callaway Golf Company v. Acushnet Company (D. Del.). Represented Acushnet Company, the maker of Titleist golf equipment, in a lawsuit filed by Callaway Golf Company for alleged infringement of patents relating to the design of club heads. Callaway asserted that the design of the club face of certain Titleist and Cobra drivers infringed its patents. Acushnet counterclaimed for infringement of three of its patents against certain Callaway drivers. Ultimately, based primarily upon the strength of its invalidity and unenforceability defenses, and the strength of its counterclaims, Acushnet secured a highly favorable settlement.
Atico Inc. v. Master Lock Co. (S.D. Fla.). Represented defendant in lawsuit brought on patent claiming an illuminated pad lock, where the illumination is triggered by the movement of the combination dial on the lock. Case settled on favorable terms.
Cushion Technologies LLC v. American Sporting Goods Corp. et al. (E.D. Tex.). Represented Tecnica Inc. and Tecnica S.p.A in lawsuit concerning the construction of shoe soles. Case settled on favorable terms.
Electronics for Imaging, Inc. v. Harlequin Limited et al. (N.D. Cal.). Represented a software developer in two related actions, one claiming patent infringement and the other under the Lanham Act involving customer communications. The patents-at-issue claimed methods and structures for software used to control color reproduction by output devices, such as printers and copiers. The case settled on favorable terms.
Skis Rossignol S.A. v. Völkl Sports Gmbh and Co. et al. (E.D. Va.). Represented a ski manufacturer in litigation brought in the “rocket docket” in Virginia on a patent claiming a newer and more efficient structure for the transmission of energy from ski boot to ski. The case settled on favorable terms.
Soitec, S.A. v. Silicon Genesis Corporation (D. Mass.). Working with another law firm, Mr. Krumholz acted as a trial consultant, developing strategy, identifying issues and preparing witnesses. The patent covered a method for manufacturing silicon-on-insulator (“SOI”) wafers. The jury returned a verdict invalidating the patent based upon non-enablement.
OTHER REPRESENTATIVE MATTERS:
Kirschner v. Hasbro, Inc. (C.D. Cal). Represented Hasbro in this trademark infringement action brought by the well-known producer and purported owner of the Rose-Petal Place mark. After Mr. Krumholz excluded Kirschner's damages expert and successfully resisted a subsequent effort to replace that expert, the case settled on very favorable terms.
CA, Inc. v. Richard Cordrey et al. (Del. Chancery). Lead trial counsel in a first of its kind litigation on behalf of CA in a challenge of Delaware’s escheat statute and practices, in which CA alleged constitutional, statutory, procedural and administrative errors by the State of Delaware. The legal claims also involved substantial financial, accounting and statistical errors made by a state agency, which has operated free of any review process in violation of the 14th Amendment.
St. Vincent’s Hospital v. Fallon Community Health Plan (Mass. arbitration). Represented Tenet Healthcare in two related arbitrations against Fallon Community Health Plan regarding a determination of rates to be paid for comprehensive hospital services, securing multimillion dollar awards in both instances for Tenet.
Ericsson Microwave Systems, AB v. Solectron Corporation and Scrantom Engineering, Inc. (International Court of Arbitration). Represented Ericsson through hearing in an international arbitration in Sweden involving radar equipment attached to military aircraft. Matter settled after hearing.
The Trustees of Boston College v. The Big East Conference (Massachusetts, Connecticut, Florida). Represented Boston College in multiple actions against the Big East and other universities regarding Boston College’s decision to withdraw from the conference and join the Atlantic Coast Conference. Secured summary judgment in one action and matters settled shortly thereafter.
Robert Varney and Cheryl Varney v. Janice Scibelli, Black Paw Home Inspection, Inc. and Middleton Real Estate Company, Inc. (Mass. state court). Represented defendant in six-week jury trial regarding claims of environmental contamination in a residential home. Secured a defense verdict for the client.
Faulkner, et. al v. Arista Records (S.D.N.Y.). Representing the former members of the Bay City Rollers in claim for unpaid royalties owed by Arista Records for over twenty-five years.
Spector Associates, Inc. v. Grafica, Inc. et al. (N.J. state court). Represented advertising agency in contract dispute with public relations firm regarding large account for New Jersey State Lottery. After a multi-week jury trial, the jury came back with a de minimis jury award that effectively acted as a defense verdict.
Arianna S., Freesia R., Joab S., and Mikaela R., all minors, by and through their next friend Robert H. Weber, Robert Allen G., and Randall Garside v. The Commonwealth of Massachusetts and the Trial Courts of the Commonwealth of Massachusetts (Mass. Supreme Judicial Court). On a pro bono basis, acted as lead counsel representing before the SJC the class of individuals entitled to court-appointed counsel, alleging that the Commonwealth has failed in its constitutional obligation to provide effective assistance of counsel. That lawsuit, along with other parties’ efforts, resulted in legislation passed in 2005 that substantially revamped the state’s indigent defense system.