Press Release
September 3, 2009

Holland & Knight Attorneys Successfully Invalidate Patent in Defending Construction Consulting Firms in Patent Infringement Lawsuit

WASHINGTON, DC – September 3, 2009 – Holland & Knight is pleased to announce that attorneys John Moran (WAS), Benjamin Enerson (BOS) and Tom Johnston (BOS) successfully invalidated a patent asserted against several construction consulting firms in a patent infringement lawsuit.

In 2006, Atser Research Technologies, Inc. alleged that four defendants, Raba-Kistner Consultants Inc., Brytest Laboratories, Inc., Lone Star Infrastructure, LLC and Lone Star Infrastructure, had infringed a patent concerning a method for performing quality control on pavement materials. The case focused primarily on proving that the asserted patent was invalid for numerous reasons.

During discovery, Moran and Enerson learned that Atser had used and sold a software system for performing quality control on a large highway reconstruction project, the Interstate 15 project in Utah, prior to filing its patent application. The Holland & Knight attorneys located documents at the Utah Department of Transportation archives that described the sale of the system and showed that the sale took place before the plaintiff filed for a patent.

Based on the documents, Holland & Knight filed for a summary judgment that the patent was invalid because it was previously on sale. A patent is not permitted for ideas embodied in items that were put up for sale more than one year before the effective filing date. Based on this information, the Court granted the summary judgment, invalidated the patent, granted the defendants’ five other motions for summary judgment of invalidity and non-infringement, and denied the plaintiff’s summary judgment motion for infringement.

"We're pleased that our clients prevailed in this case, and that a poor patent was properly invalidated. The very fact that the court granted all six of our motions for summary judgment is unusual and reflects the strength of our clients’ case," said Joshua Krumholz, leader of Holland & Knight’s Intellectual Property group.

Moran is a partner in Holland & Knight’s Intellectual Property group. His extensive experience includes litigating patent, trademark and trade secret cases for clients ranging from local companies to large multi-national corporations. He has represented many clients in Section 337 investigations before the International Trade Commission. Moran has also analyzed and rendered numerous legal opinions on patent portfolios in preparation for patent acquisition, licensing and litigation. Moran's experiences have led him to be called upon to testify as an expert witness on patent issues.

Enerson is an associate in the firm’s Boston office and a member of the Intellectual Property Law Practice Group of the Litigation Section of Holland & Knight. He has worked on matters involving software, medical devices, manufacturing equipment and chemistry, among others.

Johnston is a partner in the firm’s Boston office and focuses his practice on patent prosecution and patent litigation. He has worked on matters involving various mechanical technologies, such as medical devices (e.g., electrosurgical devices, soft tissue repair devices, total knee implants, total hip implants and surgical instruments), ballistic resistant equipment, manufacturing equipment, consumer products and carrier silica.

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