Jeffrey Andrews: Experience
The following list of cases and other engagements provides examples of the types of cases Jeff has worked on, and includes patent, trade secret, trademark, and copyright litigation, as well as IP counseling to inventors and companies. The descriptions below are examples only, and do not provide a complete listing of Jeff's experience. The outcomes described below are for illustration only, and are not meant to imply that similar results would be achieved in any particular future case or engagement.
Smart Lock, LLC v. Master Lock Company LLC and Fortune Brands Home & Security, Inc.
(Patent) Civil Action No. 2:16-cv-1018 in the U.S. District Court for the Eastern District of Texas (Marshall) Judge Rodney Gilstrap, Magistrate Judge Roy S. Payne (representing Defendants Master Lock Company and Fortune Brands) In this patent infringement case the plaintiff is asserting a single patent (U.S. Patent No. 7,012,503) concerning method and a system for controlling access to a location secured by a lock mechanism controlled by a lock control unit. The case settled on terms favorable to Master Lock Company in the early stages.
The Board of Regents of the University of Houston System on Behalf of the University of Houston System and Its Member Institutions, et al. v. Houston College of Law, Inc., formerly known as South Texas College of Law
(Trademark) Civil Action No. 4:16-cv-1839 in the U.S. District Court for the Southern District of Texas (Houston), Judge Keith P. Ellison (Representing Plaintiffs University of Houston, et al.) This case for trademark infringement, unfair competition, and trademark dilution was brought several days after South Texas College of Law announced the change of its name to Houston College of Law. Jeff was part of the team (comprised of attorneys from SMD and Tony Buzbee of The Buzbee Law Firm) representing the University of Houston, and sought a preliminary injunction to prevent South Texas College of Law from using its new name. U.S. District Judge Ellison ordered that the University of Houston was entitled to a preliminary injunction, finding that there was a substantial likelihood of success on the merits of UH's trademark infringement claim under the Lanham Act and there was a substantial threat of irreparable injury to UH. A copy of Judge Ellison's order can be found here. The case has been covered extensively by the press, and additional information can be found in SMD's news feed here. The case settled with South Texas College of Law agreeing to abandon the name "Houston College of Law" and take other steps, representing a complete victory for the University of Houston.
Four Mile Bay LLC v. Zimmer Biomet Holdings, Inc.
(Patent) Cause No. 3:15-cv-63 in the U.S. District Court for the Northern District of Indiana (South Bend), Judge Philip Simon, Magistrate Judge Michael Gotsch (Representing Plaintiff Four Mile Bay LLC) Jeff serves as lead counsel in this patent infringement case in which five patents are asserted against Zimmer's Trabecular Metal Primary Hip Prosthesis. The patents at issue are U.S. Patents Nos. 8,506,642; 8,821,582; 9,265,612; 9,283,080; and 9,308,093. SMD has partnered with The Buzbee Law Firm on this case, which is in its early stages and is ongoing.
Global Equity Management (SA) Pty., Ltd. v. General Electric Company, Amazon Web Services, Inc. and Vadata, Inc.
(Patent) Civil Action No. 2:16-cv-627 in the U.S. District Court for the Eastern District of Texas (Marshall), Judge Robert W. Schroeder, III (Representing Defendant General Electric Company) Jeff serves as lead counsel in this patent infringement case in which two patents are asserted against GE and its service provider Amazon Web Services. The patents at issue generally concern the use of virtual computing environments and are U.S. Patents Nos. 6,690,400 and 7,356,677. The case is stayed pending the resolution of a declaratory judgment suit filed by Amazon.
Lubrizol Specialty Products, Inc. v. Baker Hughes Incorporated, Baker Petrolite Corporation and Baker Petrolite LLC
(Patent) Civil Action No. 4:15-cv-2915 in the U.S. District Court for the Southern District of Texas (Houston), Judge Nancy Atlas (Representing Defendants Baker Hughes Incorporated, et al.) This patent infringement case was filed in October 2015, in which the plaintiff and competitor Lubrizol asserted asserted four patents concerning method of use of drag reducing agents (DRAs) in heavy, asphaltenic crude oil. The four patents are U.S. Patents Nos. 8,022,118; 8,426,498; 8,450,249; and 8,450,250. Jeff serves as handling counsel and second chair. In 2016, Baker Hughes asserted antitrust counterclaims against Lubrizol. Lubrizol sought to dismiss these antitrust counterclaims, but the court denied Lubrizol's arguments, adopting the arguments presented by Baker Hughes. The Court granted Baker Hughes' motion to stay the case pending the resolution of four instituted inter partes review proceedings filed by Baker Hughes.
Inhance Technologies, LLC v Paul Banks, David Molthen and TMRJ Holdings, Inc.
(Trade Secrets) Cause No. 2015-41670 in the District Court of Harris County, Texas, 269th Judicial Court, Judge Dan Hinde. (Representing Defendants TMRJ Holdings, Inc. et al.) Jeff represented the defendants as second chair at trial in June 2016. SMD was hired to replace original counsel who had overseen the entry of a preliminary injunction against Defendants. SMD immediately began "re-building" the defense and theory of the case. At trial, the jury returned a unanimous verdict of no willful or malicious misappropriation of trade secrets and no breach of fiduciary duty by defendants Banks and Molthen, and no misappropriation of trade secrets by defendant TMRJ Holdings. However, the jury found that defendants Banks and Molthen had misappropriated trade secrets, and a final judgment on the misappropriation count was entered against Banks and Molthen, and wrongly awarded both forward-looking damages and a permanent injunction. SMD is representing Banks and Molthen on appeal.
General Electric Company v. Sealed Unit Parts Co., Inc.
(Copyright) Case No. 2:15-cv-133 in the U.S District Court for the Eastern District of Texas (Representing Plaintiff General Electric Company) Jeff represented General Electric as lead counsel in this copyright infringement case. The defendant, Sealed Unit Parts Co., Inc. ("SUPCO") was selling replacement master control boards for GE refrigerators. SMD conducted an investigation into the SUPCO replacement boards and found that the source code in the replacement boards was at least 99.97% identical to the copyrighted GE source code programmed into the authentic GE master control boards. SMD filed a complaint for copyright infringement and threatened a motion for preliminary injunction against SUPCO. The case settled shortly thereafter.
Stone Basket Innovations LLC v. Cook Medical LLC
(Patent) Case No. 2:15-cv-464 in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap, Magistrate Judge Roy S. Payne (representing Plaintiff Stone Basket Innovations LLC) Jeff was lead counsel on in case in which a single patent, U.S. Patent No. 6,551,327, against a large, privately-held medical devices company. Jeff briefed and argued the claim construction hearing before Magistrate Judge Payne, who entered an order in favor of Jeff's client on all issues is dispute. Subsequent to the claim construction order, the case was transferred to the Norther District of Indiana. The case is ongoing.
Uniloc USA, Inc. et al. v. General Electric Company d/b/a GE Healthcare
(Patent) Case No. 6:14-cv-627 (consolidated to 6:14-cv-625 for pretrial) in the U.S. District Court for the Eastern District of Texas (Tyler) Judge Robert W. Schroeder III (representing GE Healthcare, Inc. and General Electric Company) Jeff served as lead counsel in this patent infringement case where the plaintiff asserted two patents related to electronic medical record systems. The patents were U.S. Patents Nos. 5,682,526 and 5,715,451. Of the twenty-one defendants in the consolidated case, GE was the only defendant that chose not to join the joint defense group established by the other defendants. Using its flexibility, GE was the only defendant to offer an expert witness for claim construction proceedings; GE's expert witness was an M.D. / Ph.D. who was the founder of an early electronic medical records company and the creator of certain prior art electronic medical records systems. GE settled the case on confidential terms shortly after plaintiff took the deposition of GE's claim construction expert witness. The case progressed through claim construction and beyond with regard to the remaining defendants.
NM Conferences LLC v. Ward
(Trademark) Case No. 2:14-cv-222 in the U.S. District Court for the District of Utah, Judge Clark Waddoups (representing Plaintiff NM Conferences LLC) Jeff represented the owner of the federally-registered trademark MOM 2.0 SUMMIT against infringement by the owner of the domain name www.themomsummit.com. The case settled with a complete win for plaintiff after the filing of a complaint and a motion for a temporary restraining order.
Scott Environmental Services, Inc. v. A to Z Mud Co., Inc.
(Patent) Case No. 2:13-cv-701 in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap, Magistrate Judge Roy S. Payne (representing Defendant A to Z Mud Co., Inc.) Jeff was lead counsel for this patent infringement case in which a single patent was asserted (U.S. Patent No. 8,007,581). The case progressed through initial discovery and claim construction, which Jeff argued. The plaintiff dismissed the case (without prejudice) after the Court issued its claim construction ruling.
GE Lighting Solutions, LLC v. AgiLight, Inc.
(Patent) Appeal No. 2013-1267 in the U.S. Court of Appeals for the Federal Circuit (representing Plaintiff GE Lighting Solutions) Jeff represented GE Lighting Solutions as briefing attorney in this case. At issue in the appeal were three of the district court's claim constructions affecting four of GE Lighting Solutions' asserted patents, U.S. Patents Nos. 7,160,140; 7,520,771; 7,633,055; and 7,832,896). Based on these claim constructions, the district court had granted summary judgment of no infringement on the four GE patents, in favor of the defendant. On review, the Federal Circuit rejected the district court's construction of one term, adopted GE's construction, and reversed the grant of summary judgment on two of the four asserted patents. On a second claim term, the Federal Circuit rejected the district court's application of a claim construction agreed by the parties and remanded the case for further proceedings on the genuine issue of fact that was created with regard to the third patent. The Federal Circuit affirmed the third claim construction, which only affected the fourth asserted patent.
Legends, Inc. v. The Upper Deck Co. LLC
(Patent) Case No. 4:09-cv-3464 in the U.S. District Court for the Southern District of Texas, Judge Keith P. Ellison (representing Defendant The Upper Deck Co. LLC) Jeff served as second chair trial counsel in this case. Taking over Upper Deck's defense just two months before trial, SMD obtained a jury verdict of no infringement and no willful infringement of the asserted patent, U.S. Patent No. RE38,044. Legends alleged that Upper Deck infringed a patent concerning a method for authenticating signatures on sports memorabilia, and sought actual damages of over $4 million and enhanced damages.
Frank's Casing Crew and Rental Tools, Inc. and Frank's International, Inc. v. Tesco Corporation and Tesco Corporation (US) v. Robert P. Appleton
(Patent) Cases Nos. 2:07-cv-15 and 2:08-cv-239 in the U.S. District Court for the Eastern District of Texas, Judge John T. Ward (representing Robert P. Appleton) Jeff represented the alleged actual inventor of patents (U.S. Patents Nos. 6,309,002 and 6,431,626) directed to a drill tubing running tool granted to Frank's Casing Crew. When Frank's Casing Crew sued Tesco for infringement of these patents, Mr. Appleton filed suit to claim his inventorship rights. The cases were consolidated, and settled only weeks before trial.
Power-One, Inc. v. Artesyn Technologies, Inc.
(Patent) Case No. 2:05-cv-463 in the U.S. District Court for the Eastern District of Texas, Magistrate Judge John D. Love (representing Artesyn Technologies, Inc., a wholly-owned subsidiary of Emerson Electric Company) SMD's attorneys defended Artesyn in this patent infringement suit concerning digital control of board-level power regulators. Artesyn was accused of infringing four patents, U.S. Patents Nos. 6,936,999; 6,949,916; 7,000,125; and 7,049,798. The first two patents were taken to trial, where the jury returned a verdict of no infringement on one patent ('999 Patent), and Power-One obtained an award of only $100 in damages for infringement of the second patent ('125 Patent). After trial, Power-One dismissed its allegations on the remaining two patents with prejudice.
Example Counseling Engagements
Venture Capital Fund
As IP advisor to a venture capital fund, Jeff provides strategic IP analysis, due diligence, and asset assessment services regarding the analysis of potential new investments as well as the management of current fund investments.
Start-Up Medical Device Company
Jeff provides patent prosecution services and strategic IP counseling to a start-up medical device company, as it takes its products from research and development to market and seeks to monetize its assets and grow its capital resources.
Oilfield Waste Company
An client in the oilfield was disposal industry relied on Jeff's expertise to evaluate and negotiate licensing terms and a joint venture for an advanced waste oil treatment technology from a university spin-off business.
A practicing physician and inventor came to Jeff with help patenting his inventions and protecting his technology from misuse as he worked to commercialize his technology. When a set of commercial negotiations fell through, the physician-inventor was able to rely on Jeff's non-disclosure agreement in court (and on appeal) to ensure that his technology was protected from misuse and improper disclosure.
Fugitive Emissions Measurement Company
A fugitive emissions measurement company relied on Jeff's IP counseling services when navigating a hostile, litigation-ripe operating environment, successfully avoiding litigation and protecting its ability to operate.
Oilfield Waste Company
When Jeff's client in the oilfield services industry was threatened with a patent infringement suit related to a waste disposal method, Jeff's strong response resulted in his client receiving a covenant not to sue from the patent holder.