Joshua C. Krumholz
Joshua Krumholz is a trial attorney who focuses primarily on intellectual property litigation. His practice covers a variety of industries, technologies and jurisdictions. Mr. Krumholz has successfully taken cases to verdict in the Eastern District of Texas, Illinois, Massachusetts, Rhode Island, New York and New Jersey, among other jurisdictions. Technologies that Mr. Krumholz handles include telecommunications, software, hardware, electronics and consumer goods. Mr. Krumholz has been involved in a diverse range of industries, including wireless telecommunications, enterprise software, toys and games, and golf clubs. Mr. Krumholz represents leading companies across those industries, including Ericsson, Verizon, T-Mobile, Hasbro and Acushnet (Titleist), among others. His work focuses on patent, copyright and trademark disputes, but also has taken him into numerous commercial disputes, including inventor and royalty disputes.
Intellectual Asset Management (IAM) Patent 1000 has recommended Mr. Krumholz since 2014. The 2019 publication describes Josh Krumholz and the Boston IP group as "[t]he first choice of an illustrious cadre of innovators, Holland & Knight … 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."
REPRESENTATIVE PATENT LITIGATION MATTERS:
WiLAN v. Ericsson (S.D. Fla.). Lead trial counsel for Ericsson in multiple lawsuits involving patent claims against Ericsson's base stations. The technology involved claims against the manner in which the base stations allocated bandwidth and handed off cellphones from one base station to another. Ericsson achieved a favorable settlement for shortly before trial on one of the matters.
Dialware Communications, LLC v. Hasbro, Inc. (C.D. Cal.).Lead trial counsel for 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 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 by the Federal Circuit.
Cellular Communications Equipment LLC v. AT&T Inc., et. al. (E.D. Tex.). Lead trial counsel for 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 at trial 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). Lead counsel for Avaya in an eight-patent lawsuit brought by Blackberry against dozens of Avaya products. After development of defenses, obtained settlement favorable to Avaya.
Mi-Tile Ltd. v. Hasbro (E.D. Va.). Lead counsel for Hasbro on a patent claim involving interactive blocks that are capable of communicating with each other through radio frequency (RF) technology. Secured summary judgment of noninfringement.
Meyer U.S., Inc. v. Bodum (N.D. Ill). Asked to take over the case as lead trial counsel shortly before trial as plaintiff in a patent dispute against key competitor concerning a consumer product. At trial, 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.). Lead trial counsel for Acushnet against a competitor that 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.
Stragent LLC v. CA, Inc. (E.D. Tx). Lead trial counsel for CA in a multi-defendant lawsuit brought by a patent holding company. The patent purported to cover an application generation tool for the creation of database-related programs. After developing a number of noninfringement and invalidity arguments, the parties entered into a settlement on favorable terms for the client.
BASF v. Cheminova (M.D. N.C.). Lead trial counsel for Cheminova in an action where BASF asserted four patents in 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.). Lead counsel for Sig Sauer, 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 infringed its patent for the retrofit system. The lawsuit was successfully resolved after securing a summary judgment for Sig Sauer.
Sulzer Textile AG v. Picanol N.V. (E.D. Tex.). Lead counsel for a Belgian maker of high speed, high-end weaving machines in a lawsuit brought by its principal. After a 2½-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.). Lead trial counsel for 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 for trial.
Positive Technologies, Inc. v. LG Display Co., Ltd. et al. (E.D. Tex.). Brought in shortly before trial to act as lead trial counsel for LG Display. 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 covered 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.). Lead trial counsel for 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.
OTHER REPRESENTATIVE MATTERS:
Funrise v. Hasbro (D.R.I). Lead trial counsel for Hasbro in royalty dispute with one of its licensees. The licensee manufactured and sold Hasbro's Tonka® line of products, and after an audit, Hasbro learned that the licensee had failed to pay a substantial amount of royalties over a number of years. The matter is pending.
Markham v. Hasbro, Inc. (D.R.I.). Lead trial counsel for Hasbro in a dispute concerning The Game of Life®. The heirs of one of the purported inventors of the game sought to terminate the original transfer of copyrights associated with the creation of the game in 1959. After a five-day bench trial, the court entered judgment in favor of Hasbro, and concluded that the plaintiff could not terminate the transfer. The matter presently is on appeal with the First Circuit.
Avaya Inc. v. SNMP Research, Inc. (D. Del.; Bankr. D. Del.). Lead trial counsel for Avaya, a leading provider of business communication solutions, in a substantial copyright infringement dispute concerning Avaya's use of SNMP code. The parties reached a settlement of all disputes on the eve to trial.
Shapiro v. Hasbro, Inc. (C.D. Cal.). Lead trial counsel for 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. After securing summary judgment on the primary trade secrets claims, the case was settled prior to trial.
Weston v. Hasbro, Inc. (C.D. Cal). Lead trial counsel for 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.). Lead trial counsel for 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. The plaintiff brought two separate preliminary injunction motions to stop Ericsson from selling key hardware and software that was instrumental in sending data over CDMA wireless networks. Two evidentiary hearings ensued. The case settled favorably for Ericsson during the second hearing on preliminary injunction, when it became clear that Airvana's motion was unlikely to succeed.
Kirschner v. Hasbro, Inc. (C.D. Cal). Lead trial counsel for Hasbro in trademark infringement action brought by the well-known producer and purported owner of the Rose-Petal Place mark. After excluding Kirschner's damages expert and successfully resisting 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. The case settled after discovery.
St. Vincent's Hospital v. Fallon Community Health Plan (Mass. arbitration). Lead trial counsel for 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 in 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). Lead trial counsel for 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). Lead trial counsel for 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 Supreme Judicial Court the class of individuals entitled to court-appointed counsel, alleging that the Commonwealth 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.
- Cornell Law School, J.D.
- Johns Hopkins University, B.A.
- American Intellectual Property Law Association
- American Bar Association, Intellectual Property Section
- Boston Bar Association - Intellectual Property Section
- Intellectual Property Organization, Patent (US) Law Committee
- Intellectual Property Owners Association, Litigation Committee
- The Best Lawyers in America guide, Litigation - Patent, 2016-2023; Litigation - Intellectual Property, 2018-2023
- Leading Litigators in America, Lawdragon 500, 2022
- IAM Patent 1000, the World's Leading Patent Professionals - Litigation, International Asset Management magazine, 2014-2022
- Chambers USA – America's Leading Business Lawyers guide, Intellectual Property, 2010-2022
- Massachusetts Super Lawyers magazine, 2004-2007, 2009-2012, 2014-2022
- Holland & Knight Pro Bono All-Star, 2021
- IP Star, Managing Intellectual Property magazine, Patent and Trademark, 2017-2020
- Client Choice Award for Litigation in Massachusetts, 2015
- Cornell Law Review