Timeline

Larry Lerner, Sid David and Joe Littenberg founded the original law firm, Lerner, David & Littenberg, in Newark, New Jersey.

The L.A.S.E.R.

Lerner David represents Gordon Gould in numerous PTO and court proceedings through 1987, obtaining patents on four ground-breaking inventions in laser technology based on his 1959 patent application. The page from Gould’s original notebook in which he coined the acronym L.A.S.E.R. has been displayed in the Smithsonian Institute, and Lerner David’s role was chronicled in "Laser: The Inventor, The Noble Laureate, And The Thirty-Year Patent War" by Nick Taylor (Simon & Schuster, 2000).

Established in 1982 to provide patent expertise for litigants, Lerner David was among the very first to file and successfully argue an appeal representing Elizabeth, NJ giant Thomas & Betts against Litton Systems concerning electrical connector technology.

Enforcement and Licensing of Tremolo Technology

Lerner David takes over enforcement of the Floyd Rose patent portfolio covering his revolutionary technology in guitar tremolos. With Lerner David’s efforts, obtaining other significant patents for Rose around the world, a patent license to Rose’s self-locking tremolo resulted in over $30 million in royalties.

Lerner David obtained a patent for Van Halen guitarist Edward Van Halen.

Overcomes Genericness Ruling at the TTAB to Secure Registration of LA YOGURT

Initially refused by the Trademark Trial and Appeal Board (TTAB) as generic because it was read to mean "the yogurt," Lerner David marshalled substantial evidence and presented arguments to the contrary. On a second appeal, the TTAB took the extraordinary step of hearing the appeal en banc before all eight members, and held the mark LA YOGURT entitled to registration on the Principal Register, where it remains to this day.

Lerner David obtained for Raymond Damadian and his company, Fonar Corporation, U.S. Patent No. 4,871,966, for a major breakthrough in the development of modern MRI imaging. Dr. Damadian’s first full-body MRI scanner — which he named "Indomitable" — was displayed at the Smithsonian Institute.

Protects Trade Dress of Iconic DOVE Lamp

Lerner David succeeds in a very early case involving trade dress in a product shape to protect the iconic DOVE lamp against a “knockoff” imported lamp. Two years later, Lerner David obtains a preliminary injunction and then final judgment against a modified copy.

In 1991, Lerner David began its almost 30 year relationship with medical device giant Stryker Corporation, securing two separate jury verdicts in a hip implant patent case and in a knee implant patent case. Over those years, Lerner David has counseled numerous Stryker divisions in all aspects of IP from procurement, licensing, M&A transactions and litigation.

Defeats Motion for Preliminary Injunction

In one of the earliest cases brought under "The Process Patents Amendment Act," Lerner David defeated a motion for a preliminary injunction brought by Eli Lilly against Zenith Laboratories in Lilly’s hometown of Indianapolis, clearing the way for Zenith to market a generic version of Lilly’s blockbuster drug Ceclor® (cefaclor). The decision was later affirmed by the Federal Circuit.

Obtains Verdict Protecting Patent/Trade Dress of Banquet Chairs

Lerner David secures a verdict protecting the patented bumper edge and the trade dress on the overall look of Gasser Chair Company’s banquet chairs. This $15 million verdict and injunction is upheld by the Federal Circuit.

Making Cancer Drug Available to the Public

Lerner David obtained summary judgment that Bristol-Myers Squibb’s patents on the cancer drug paclitaxel (sold as TAXOL®) were invalid. The ultimate result was to make less expensive, generic versions of Taxol® available to the public.

Fends off Preliminary Injunction and Obtains Summary Judgement

Lerner David wins summary judgment for its client’s slogan, “Florida’s Most Convenient Bank,” does not infringe the slogan, “America’s Most Convenient Bank,” used by Commerce Bank (now TD Bank).”

Defeats TRO to Successfully Launch New Timberland Shoe Line

The Northern District of California agreed with our arguments at an emergent oral hearing, ruling that plaintiff failed to demonstrate a strong likelihood of success on the merits and the requisite irreparable harm for a Temporary Restraining Order against the launch of Timberland’s new MION footwear brand. This allowed Timberland to proceed with its nationwide launch of MION footwear.

Favorable Verdict for Stryker’s External Fixation System

Lerner David secured a jury verdict for infringement by Synthes (now a Johnson & Johnson Company) of a Stryker patent directed to a component of the Hoffmann® clamping system for bone fracture fixation.

Following a strong Markman hearing involving 27 digital camera patents, Lerner David concluded simultaneous litigation involving a total of 58 patents against the Eastman Kodak Company with favorable settlement.

Opens Office in Guangzhou, China

Lerner David becomes the first American intellectual property law firm located in the Pearl River Delta — the most economically dynamic region of China.

Securing Aerospace Patent Rights

Lerner David continues to secure patents for Airbus, including U.S. Patent No. 8,025,253 entitled to a commercial aircraft with a main deck and a lower deck.

Lerner David swiftly stops Wright Medical from infringing Stryker’s GET AROUND KNEE trademark.

One Of the First IPRs To Proceed To Oral Hearing on behalf of St. Jude Medical (now Abbott)

In one of the first Inter Partes Review ("IPR") to go to an oral hearing before the PTAB, the PTAB ruled in favor of Lerner David's client, St. Jude Medical (now Abbott), invalidating claims of U.S. Patent No. 5,756,775 owned by the University of Michigan, directed to a method of making calcification-resistant bioprosthetic tissue.

Avoiding almost $100 million in purported damages, Lerner David obtained a complete win in which the jury found that Sony's PlayStation3 consoles and Blu-ray players did not infringe a single claim of four patents asserted by TV Interactive Data Corporation and that all asserted claims were invalid.

Opens Office in Tokyo, Japan

Expanding its presence in Asia, Lerner David establishes Japanese office to counsel on U.S. IP.

Lerner David won a complete victory for LG Chem by successfully blocking Ube Maxwell's attempt to institute an IPR, preserving LG Chem's U.S. Patent No. 7,709,152 directed to a battery separator.

New Look

Lerner David launches a new logo.

Top 10

Lerner David is ranked for having one of the top 10 highest allowance rates in TC 2100 (computer and software related inventions), TC 1700 (chemical and material engineering related inventions) and TC 3700 (medical instruments, machine and manufacturing devices related inventions) by Juristat in 2015, 2016 and 2017, respectively.

On behalf of clients Bed Bath & Beyond and Harmon Stores, Lerner David prevailed in having a preliminary injunction motion for trade dress infringement denied. Following a hearing, it was found that there was no likelihood of confusion between the trade dresses of the subject products and that the plaintiff had not raised sufficiently serious questions going to the merits to make them a fair ground for litigation.

Prevails in Two IPRs To Invalidate OxyContin® Patent

In companion IPRs, the PTAB issued Final Written Decisions in favor of Lerner David clients Amneal Pharmaceuticals and Kashiv Pharma finding unpatentable the asserted claim of U.S. Patent No. 9,060,976, listed in the Orange Book for OxyContin®, the blockbuster opioid analgesic marketed by Purdue Pharma.

Litigation Department of the Year Award for the 4th Time

Lerner David is named Intellectual Property Litigation Department of the Year by the New Jersey Law Journal.

Lerner David is a Finalist for the Law Firm of the Year honor and a Winner of the Litigation Department of the Year honor for the 5th time by the NJLJ Professional Excellence Awards 2020. Kelly Hwang has received the Mentor honor and Natalie Richer has received the Unsung Hero honor. The managing partner, Keith Gilman, has received the Dealmaker honor in addition to being named Trailblazer of the year.