Joshua Krumholz is a trial attorney who focuses primarily on intellectual property litigation, with a particular emphasis on patent litigation. His practice covers a variety of technologies and jurisdictions. Mr. Krumholz has successfully taken cases to jury verdict in the Eastern District of Texas, Illinois, Massachusetts, New York and New Jersey, among other jurisdictions. Technologies that Mr. Krumholz handles include telecommunications, software, hardware, electronics and consumer goods. His complex commercial experience includes partnership tax disputes, escheatment, healthcare disputes and antitrust matters. Mr. Krumholz represents leading companies across a range of industries, including Ericsson, Verizon, T-Mobile, Avaya, Acushnet (Titleist) and Hasbro, among others.
Intellectual Asset Management (IAM) Patent 1000 has recommended Mr. Krumholz since 2014. The 2019 publication describes Josh Krumholz and the Boston IP group as “The first choice of an illustrious cadre of innovators, Holland & Knight does error-free prosecution and acquits itself with distinction in impact patent litigation. Its IP lawyers are very active in terms of thought leadership, too, and are out in the market speaking and writing on hot patent topics and emerging issues, such as blockchain technology. The top dog in Boston is Joshua Krumholz, a “battle-tested trial lawyer” who knows how to fight but who always looks for a business resolution. Work for Avaya, Hasbro, T-Mobile and Verizon has kept him busy of late.”
REPRESENTATIVE PATENT LITIGATION MATTERS:
Dialware Communications, LLC v. Hasbro, Inc. (C.D. Cal.). Represented Hasbro in a patent dispute regarding Hasbro's line of Furby toys. Hasbro moved to dismiss the action, arguing that the patents-in-suit were directed to an abstract idea, thus claiming unpatentable subject matter under the Supreme Court's ruling in Alice Corp. v. CLS Bank Int'l. The court agreed, holding that the patents were directed to the abstract idea of communication between devices, and granted Hasbro's motion to dismiss. The decision was confirmed on appeal.
Cellular Communications Equipment LLC v. AT&T Inc., et. al. (E.D. Tex.). Represented Ericsson, a manufacturer and seller of telecommunications infrastructure equipment to all major cellular providers, in a telecommunications patent dispute involving Ericsson's 4G-Long-Term Evolution Advanced (LTE-A) radio base stations. The technology in dispute included LTE-A's Carrier Aggregation and Power Headroom Reporting features, among others. The parties reached a mutual settlement after Ericsson filed offensive inter partes review petitions and obtained a favorable claim construction ruling.
Cognex Corp et al. v. Microscan and Code Corp. (SDNY). Represented Cognex against a major competitor concerning the sale of direct part mark readers. After a six-day trial, the jury returned a verdict of infringement, validity and willfulness on all claims asserted. The jury also awarded Cognex the full amount of lost profits that it requested. After post-trial motions, the Court issued a permanent injunction and granted Cognex its attorneys' fees.
Blackberry v. Avaya (D. Del). Represented Avaya in an eight-patent lawsuit brought by Blackberry against dozens of Avaya products. After development of strong defenses, obtained settlement favorable to Avaya.
Wi-LAN v. Ericsson (SDFL). Obtained a summary judgment ruling of noninfringement and invalidity on behalf of Ericsson. The case involved accusations of patent infringement brought by Wi-LAN against Ericsson's 4G (LTE) wireless base stations, which connect mobile telephones to wireless carriers' telecommunications networks.
Clouding IP LLC v. CA, Inc. (D. Del.). Represented CA, Inc., a provider of IT management solutions, in patent litigation brought by Clouding IP LLC, a nonpracticing entity. Three CA software products are accused of infringing six patents that allegedly relate to cloud computing technology. The matter has been consolidated for pretrial purposes with 13 other cases Clouding has brought against other defendants on the same (and similar) patents.
Mi-Tile Ltd. v. Hasbro (E.D. Va.). Secured summary judgment on a patent claim involving interactive blocks that are capable of communicating with each other through radio frequency (RF) technology.
Meyer U.S., Inc. v. Bodum (N.D. Ill). 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.). Represented defendant golf club manufacturers against a competitor who has alleged that several Cobra golf club irons infringe a patent. Obtained favorable summary judgment of noninfringement for all golf clubs and claims involved in case. The plaintiff appealed the summary judgment ruling to the Federal Circuit, where the case is still pending.
IBT v. Fujitsu American, Inc. (S.D. Fla.). Represented Fujitsu in patent infringement case involving biometric information and security technology with use of personal computers. The dispute was successfully resolved through a highly advantageous settlement.
Hasbro, Inc. v. Buzz Bee Toys, CA No. 10-10906 (D. Mass.). Represented Hasbro 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. v. Lanard Toys, CA No. 10-30106 (D. Mass.). Represented Hasbro in litigation brought against Lanard for infringement of several of its patents covering its Nerf-N-Strike Disc Shot Blaster. The lawsuit was resolved on favorable terms.
Stragent LLC v. CA, Inc., CA No. 10-225 (E.D. Tx). Represented CA in a multi-defendant lawsuit brought by a patent holding company in the Eastern District of Texas. The patent purported to cover an application generation tool for the creation of database-related programs. Holland & Knight developed a number of noninfringement and invalidity arguments that resulted in a settlement on favorable terms for the client.
Wordcheck Tech, LLC. v. CA, Inc. (E.D. Tx). Represented CA in a multi-defendant lawsuit brought by a patent holding company in the Eastern District of Texas. The patent purported to cover software that automatically checks for appropriate content in electronic messages. The lawsuit settled on favorable terms for CA.
BASF v. Cheminova, CA 10-274 (M.D. N.C.). Represented Cheminova in an action where BASF asserted four patents involving the termite and animal health fields. Two of the asserted patents covered methods for manufacturing fipronil, which is a chemical compound used in termiticides. The remaining patents claimed methods for applying the fipronil in the field. The case settled favorably after claim construction.
Adams Arms v. Sig Sauer (M.D. Fla.). Represented Adams Arms, one of the industry leaders in firearms manufacturing, in a 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 claimed that defendant's new SIG516 rifle infringes its patent for the retrofit system. The lawsuit was successfully resolved after securing a summary judgment for the defendant.
Cacace v. Meyer Corp., CA No. 06-2938 (SDNY). Represented Meyer and its affiliates in an action where the plaintiff had asserted a patent claiming a raised edge sauté pan. The plaintiff claimed that a pan covering a number of the defendant's brands infringed the patent, which purported to claim a pan where the edge opposite the handle was raised to reduce the likelihood of food spillage while cooking. The lawsuit was resolved favorably after securing a disposition claim that was constructed in Meyer's favor.
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 CA in a 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 CA in an 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 Anthurium 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, 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 favorable settlement.
Atico Inc. v. Master Lock Co. (S.D. Fla.). Represented Master Lock in a 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 in a 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 Harlequin 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 Volkl 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, 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 nonenablement.
OTHER REPRESENTATIVE MATTERS:
Markham v. Hasbro, Inc. (D.R.I.). Representing Hasbro in a dispute concerning the Game of Life. The heirs of one of the purported inventors of the game is seeking to terminate the alleged transfer of certain copyrights created when the game was first released. The case has been tried to the court as a bench trial, and a decision is pending.
Avaya Inc. v. SNMP Research, Inc. (D. Del.; Bankr. D. Del.). Represented Avaya, a leading provider of business communication solutions, in copyright infringement, breach of contract and trade secret misappropriation suits against SNMP Research Inc. and SNMP Research International Inc. The case concerned whether Avaya Inc. infringed SNMP Research's copyrights and whether the success of Avaya's products and services was attributable to the alleged infringement. The parties reached a mutual settlement for all disputes on the eve to trial.
Shapiro v. Hasbro, Inc. (C.D. Cal.). Represented Hasbro in an inventor dispute regarding the design of certain dolls in Hasbro's My Little Pony line. The case included claims for trade secret misappropriation under both the California Uniform Trade Secret Act and the Defend Trade Secrets Act of 2016, breach of contract and breach of the duty of good faith and fair dealing. After securing summary judgment on the primary trade secrets claims, the case was settled prior to trial.
Weston v. Hasbro, Inc. (C.D. Cal). Represented Hasbro in a dispute with the inventor of G.I. Joe, who sought to terminate his alleged transfer of copyrights created at the time the toy was invented. Case settled on favorable terms after the deposition of the inventor.
Airvana Network Solutions, Inc. v. Ericsson AB and Ericsson (N.Y. Sup. Ct.). Represented Ericsson, a company that manufactures and sells telecommunications infrastructure equipment to all the major wireless providers, against a supplier in a breach of contract, theft of trade secret and unfair competition action brought in the Commercial Division of the New York State Supreme Court. The crux of the dispute was whether next-generation Ericsson hardware and software was "based on" the plaintiff's hardware design from 2000. The plaintiff brought two separate preliminary injunction motions to stop Ericsson from selling key hardware and software that is instrumental in sending data over CDMA wireless networks. The case settled favorably for Ericsson during a second hearing on preliminary injunction when it became clear that Airvana's motion was unlikely to succeed.
Roth v. Hasbro (C.D. Cal.). Obtained favorable summary judgment for Hasbro on all counts in an inventor dispute over a propulsion system used for Nerf blasters. The case included claims for breach of contract, trade secret and common law torts.
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 Black Paw in a six-week jury trial regarding claims of environmental contamination in a residential home. Secured a defense verdict for the client.
Spector Associates, Inc. v. Grafica, Inc. et al. (N.J. state court). Represented Grafica, an advertising agency, in a contract dispute with a public relations firm regarding large account for New Jersey State Lottery. After a multiweek 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.
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