Morgan Miller Blair

Challenges:  (1) Defending hardware manufacturing client from multiple defense obligations arising out of industry-wide patent infringement claim against client customers. (2) Halting the potentially draconian expense to client of the six law firms which had lined up, potentially at client’s expense.

Approach:  The Company retained Morgan Miller Blair as counsel after being hit with four (4) demands to pay for the customer’s patent infringement defense in two non-California federal courts, and the threat of being made a direct defendant.

Solution:  Morgan Miller Blair’s IP and indemnity teams analyzed its client’s options and recommended all three defenses be consolidated under one firm; foreign product suppliers were pursued in a separate California state court action, while a motion to stay was filed to deter the impact of plaintiff’s split forum strategy.

Success:  Morgan Miller Blair’s stay in the federal courts was granted, the first phase of discovery was conducted in the more efficient International Trade Commission (ITC), leveraging the existence of the client’s IC supplier’s firm, which had refused indemnity and defense. Eventually, Morgan Miller Blair was able to achieve supplier settlements paying cash to the client while avoiding any payment in the patent case in chief, which settled after two years. Importantly, Morgan Miller Blair’s client paid no customer indemnity fees, and avoided a slew of customer law firm bills with the prompt action, while substantially defraying the consolidated defense costs through the supplier settlements.