Francis DiGiovanni

Patent Litigation

Frank represents defendants and plaintiffs in patent infringement cases related to highly specialized products. His litigation work before judges and juries has secured victories that included lost-profit and enhanced damages awards for automotive parts manufacturers, nutritional supplement manufacturers and chemical companies. In a notable case, Frank led a trial team to victory for a plaintiff who successfully obtained a royalty for sales activity of its competitor during the provisional period of a patent application. In another patent infringement jury trial and subsequent post-trial proceedings, Frank obtained an award of more than $10 million for his client. Frank has won “exceptional case” determinations and attorneys’ fees awards on both the plaintiff and defense sides of patent infringement cases.

Representative Experience

• Lead trial counsel for Vital Pharmaceuticals in a case in which Vital was accused of infringing plaintiffs’ patents on nutritional compositions and methods of use. Vital was one of three defendants, out of 81 original defendants, that refused to settle, and thus took the case to trial. After a five-day bench trial, the Court invalidated all 17 claims of the four asserted patents. Vital then successfully moved to have the case declared exceptional, and Vital was awarded its attorneys’ fees and expenses. ThermoLife Int’l LLC et al. v. Vital Pharmaceuticals, et al., Civ. No. 13-651-JLS (S.D. Cal.).
• Led a trial team to a victory for Parker against a competitor, Champion Laboratories, in a case pertaining to automotive filters. After a 7-day jury trial, the jury found in favor of Parker on all issues, finding that Champion infringed literally and under the doctrine of equivalents, and found the infringement to be willful. The jury awarded Parker its full lost-profits damages, which were in excess of $6.5 million. After trial, and upon Parker’s motions, the court enjoined Champion, awarded Parker an additional $3.3 million in enhanced damages, declared that the case was “exceptional,” and granted Parker its attorneys’ fees. Parker-Hannifin Corporation et al. v. Champion Laboratories, Inc., Civ. No. 07-1375-SJO (N.D. Ohio).
• Led a litigation team on behalf of client Parker against Champion Laboratories, a competitor in the automotive parts market. After defendant conceded infringement, the parties agreed to litigate, as a bench trial, the damages. A key aspect of the litigation related to whether there were acceptable, available, non-infringing alternatives to Champion’s infringing products. Judge Gaughan ruled in Parker’s favor on this and every other issue in the case and returned a judgment in Parker’s favor for nearly $1 million, which included all of Parker’s lost profits as well as a reasonable royalty on Champion’s sales made during the Provisional Rights period. Parker v. Champion is one of the few reported cases in which a plaintiff successfully obtained a royalty for activity during the Provisional Rights period. Parker Hannifin Corporation et al. v. Champion Laboratories, Inc., Civ. No. 06-2616-PAG (N.D. Ohio).
• Defense of Parker against allegations of infringement of two truck transmission patents. Frank, along with Curt Lambert, moved to dismiss this case based on standing. The judge granted the motion, dismissing the case. Brookins v. Parker-Hannifin Corporation, Civ. No. 15-0065 (D.N.D.).
• Lead counsel for plaintiffs in a case wherein the chief issue was patent inventorship. Case resolved prior to trial. Tekni-Plex, Inc. et al. v. Cain et al., Civ. No. 13-4502 (E.D. Pa.).
• Represented plaintiffs in a complex patent infringement litigation pertaining to asphalt compositions and methods. Resolved via stipulation. ALM Holding Co. et al v. Arr-Maz Custom Chemicals Inc., Civ. No. 11-1069-GMS (D. Del).
• Represented a number of financial sector entities against a non-practicing licensing company. Resolution via stipulation prior to trial. Phoenix Licensing, L.L.C. et al. v. ING Bank FSB et al., Civ. No. 10-64-TJW (E.D. Tex).
• Represented defendant Vital in a patent infringement litigation pertaining to nutritional supplements. Favorably concluded (dismissed in its entirety) after claim construction ruling. Natural Alternatives International Inc. v. Vital Pharmaceuticals Inc. et al., Civ. No. 09-626-GMS (D. Del).
• Led the patent infringement action pertaining to processes for reducing microbial contamination on poultry and other meats all the way up to trial, and then tried the case with a senior partner. A successful jury trial, followed by a successful appeal, resulted in the invalidation of all 17 patent claims asserted against client FMC. Ecolab USA, Inc. v. FMC Corporation, Civ. No. 05-831-JMR (D. Minn.).