Professional Experience
Mr. Sulzer is a partner in the Litigation group of the firm’s Washington, D.C., office. His practice focuses on patent litigation in the federal courts and in Section 337 proceedings before the U.S. International Trade Commission (“ITC”). For nearly three decades, Mr. Sulzer has been trial counsel in numerous federal court and ITC patent proceedings, including several of the ITC’s most significant Section 337 investigations. He represents clients in a variety of areas, including intellectual property litigation, ITC proceedings, and antitrust counseling and litigation.
Mr. Sulzer is also recognized internationally as an expert in patent licensing and licensing-related antitrust issues. He has also taught a graduate-level class on licensing and related antitrust and misuse concerns for the Swiss Federal Institute of Technology.
His practice involves diverse subject matter, including a wide range of automotive components (e.g., fuel system, vehicle interior, frame reinforcement, and passive restraint system components), medical devices, computer network security systems, e-commerce and data encryption, pharmaceuticals, packaging for pharmaceutical and food products, robotics, machine tools, wireless computer gaming devices, Internet convergence technology, optical disc technology, color electronic prepress computer and imaging equipment, industrial laser control systems, security system control software, satellite technology, power generation equipment, and paper products. He also has significant expertise in design patent litigation.
Representative Matters
Actions in the Federal Courts
Authenex, Inc. v. EMC Corp., et al., Case No. CV 10-01251-MRP (VBKx) (C.D. Cal.) (defense against alleged infringement of patent relating to one-time password token devices).
Henkel Corp. v. Sika Corp., Case No. 2:06-cv-13694-DML-VMM (E.D. Mich.) (enforcement of patents relating to drop-in reinforcements for automotive structural members, settled favorably).
Waldwick Plastics Corp. v. BPG International, Inc., Civil Action No. 06—5601 (WJM) (D.N.J.) (successful defense against request for preliminary injunction involving alleged infringement of patent relating to liquid vaporization devices and refill bottles).
Hydro-Gear LP v. Parker-Hannifin Corp., Civil Action No. 06C 2520 (MF) (N.D. Ill.) (defense against alleged infringement of eight patents relating to hydraulic drive technology, settled favorably).
Park B. Smith, Inc. v. CHF Industries, Inc., Case No. 06 CV 869 (LMM) (S.D.N.Y.) (defense against alleged infringement of two design patents relating to window shades, motion for summary judgment of non-infringement and invalidity pending).
Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006) (affirming district court’s summary judgment of non-infringement).
Honeywell International, Inc. v. ITT Industries, Inc., 330 F. Supp. 2d 865 (E.D. Mich. 2004) (obtained case dispositive, favorable ruling interpreting patent claims relating to electrically conductive fuel filter, followed by entry of summary judgment of non-infringement; lead counsel for defendants TG North America Corp., TG Fluid Systems USA Corp., and A. Raymond, Inc., in Honeywell’s appeal to the Federal Circuit).
Carl Baasel Lasertechnik GmbH & Co. KG, et al. v. GSI Lumonics Corp., Civil Action No. 02-CV-10911 GAO (D. Mass.) (antitrust action challenging acquisition and enforcement of allegedly broad patent relating to laser wafer marking systems; case settled favorably after defeated motion to dismiss antitrust claims).
GSI Lumonics Corp. v. Carl Baasel Lasertechnik GmbH & Co. KG, Civil Action No. 01-70779 (E.D. Mich.) (patent relating to laser wafer marking systems; case settled favorably after defeated motion to dismiss Massachusetts antitrust action supra).
Peer-to-Peer Systems LLC v. Palm, Inc., Civil Action No. 03-115-SLR (D. Del.) (basic patent relating to wireless computer gaming devices and methods; settled favorably).
Peer-to-Peer Systems LLC v. Cybiko, Inc., Civil Action No. 02-1465-SLR (D. Del.) (basic patent relating to wireless computer gaming devices and methods; settled favorably).
Monster Cable Products, Inc. v. Lightning Audio, Inc., Case No. C 99-05416 SBA (MED) (N.D. Cal.) (successfully represented client in a mediation that led to favorable settlement of Monster Cable’s utility and design patent and trade dress claims relating to packaging for audiovisual cabling).
DiscoVision Associates v. Disc Manufacturing, Inc., 25 F. Supp. 2d 301 (D. Del. 1998) (DiscoVision's basic patent on optical discs found infringed and not invalid after bench trial, leading to favorable settlement).
Disctronics Texas, Inc. v. Sony Corp., Case No. 4-95CV-300Y (N.D. Tex.) (antitrust action relating to optical disc patents and licensing, settled favorably).
DiscoVision Associates v. Technicolor Videocassette, Inc., Civil Action No. 94-592-LON (D. Del.) (action brought alleging infringement of DiscoVision's optical disc patents, case settled favorably).
Ultrak, Inc. v. Pelco, Civil Action No. 3-99CV2463-G (N.D. Tex.) (successful enforcement of Ultrak patent relating to computer control for security systems, case settled favorably with Pelco taking a license).
Karl Hassel, Sr. v. Chrysler Corp., 43 U.S.P.Q.2d 1554 (S.D. Ohio 1997) (summary judgment of no infringement entered in clients' favor on patent relating to integrated child seat).
Hoover Universal, Inc. v. Atoma Int’l of America, Inc., Civil Action No. 91 CV76475DT (E.D. Mich.) (method patent and article patent relating to vehicle seats, settled favorably).
Shimek v. Selkirk Metalbestos and Eljer Industries, Inc., Civil Action No. 4-95-198 (D. Minn.) (asked to take over defense and handle trial of infringement claims relating to direct-vent gas fireplace patent after close of discovery, case settled favorably after presentation of summary judgment motion showing no infringement).
Scitex Corp. v. Aldus Corp., Civil Action No. C94-761D (W.D. Wash.) (color electronic prepress system patents, defeated defendant Aldus's motion to bifurcate trial, settled favorably with Aldus taking a license).
Imperial Chemical Industries, PLC v. Danbury Pharmacal, Inc., 745 F. Supp. 998 (D. Del. 1990) (Hatch-Waxman Act litigation, prevailed on two of three pharmaceutical composition and method of use patents relating to blockbuster drug atenolol).
ITC Cases
In Private Practice:
Certain Products Advertised as Containing Creatine Ethyl Ester, ITC Inv. No. 337-TA-679 (unusual action involving allegations of false advertising, settled favorably).
Certain Lens-Fitted Film Packages, ITC Inv. No. 337-TA-406 (first bond forfeiture proceeding litigated before the ITC, settled favorably).
Certain Magnetic Switches for Coaxial Transmission Lines and Products Containing the Same, ITC Inv. No. 337-TA-346 (magnetic switch patent for satellite applications, settled favorably).
Certain Single In-line Memory Modules and Products Containing Same, ITC Inv. No. 337-TA-336 (computer memory board product patents, settled favorably).
Certain Wire Electrical Discharge Machining Apparatus and Components Thereof, ITC Inv. No. 337-TA-290 (apparatus patent, successful representation of complainant in first investigation in which ITC granted a remedy to a foreign owner of a U.S. patent).
While at U.S. International Trade Commission (1983-1988):
Certain Cryogenic Ultra-Microtome Freezing Attachments, ITC Inv. No. 337-TA-256 (mechanical patent).
Certain Electrically-Resistive Monocomponent Toner and “Black Powder” Preparations Therefor, ITC Inv. No. 337-TA-253 (prevailed at trial on antitrust claims and defeated affirmative defense based on alleged infringement of chemical patents).
Certain Dynamic Random Access Memories, ITC Inv. No. 337-TA-242 (semiconductor patents).
Certain Fluidized Bed Combustion Systems, ITC Inv. No. 337-TA-213 (process and apparatus patent).
Certain Motor Graders With Adjustable Control Consoles and Components Thereof, ITC Inv. No. 337-TA-210 (mechanical patent).
Certain Dialyzers Using Telescopic Line Connectors for Fluid Lines, ITC Inv. No. 337-TA-205 (medical device patent).
Certain Stretch Wrapping Apparatus and Components Thereof, ITC Inv. No. 337-TA-191 (mechanical patent).
Certain Foam Earplugs, ITC Inv. No. 337-TA-184 (chemical patent).
Certain Amorphous Metal Alloys and Amorphous Metal Articles, ITC Inv. No. 337-TA-143 (process, chemical, and article patents; prevailed at trial and established principle that respondents' provision of product samples in the United States could prevent establishment of a domestic industry).
Certain Hydrogenerators From Japan, ITC Preliminary Investigation No. 603-TA-9 (investigated allegations of bid rigging in the hyrdrogenerator industry).
Publications
Contributing Author, Michigan Business Torts, 2003.
"Licensing Patents to Exploit Hidden Value," VIEWPOINT, page 10 (Winter 2002).
"Protecting Your Intellectual Property," UNOVATIONS, Vol. 1, No. 2, page 14 (Fall 2000).
"U.S. Courts Re-Write Rules for Interpreting Patent Claims," IP Worldwide, page 27 (Nov./Dec. 1997) (co-Author with L. Jennings).
"Doctrine of Equivalents Is Not Limited to Piracy," 19 National Law Journal C32 (May 12, 1997) (co-Author with L. Jennings).
Editor, Intellectual Property Law Developments column, ITC Trial Lawyers Association 337 Reporter (1990-1993).
"Eastman Kodak v. Image Technical Services: A New Focus on the Economics of Product and Service Aftermarkets," 15 Computer Law Reporter 659 (June 1992).
"Supreme Court Torches Conduit Maker's Noerr-Pennington Immunity in Fire Protection Association Standard-Setting Dispute," 2 Association Law & Policy 5 (June 15, 1988).
"ITC Finds No Violation in Antitrust-Based Toner Investigation," 5 ITC Trial Lawyers
Speaking Engagements
Adjunct Faculty; teaching graduate-level class in U.S. antitrust and intellectual property licensing law, Swiss Federal Institute of Technology, Zurich, Switzerland, 1997-2010.
Lecturer, "Can You Bring Your Technology Dispute to the ITC?," Delaware State Bar and Philadelphia Intellectual Property Law Association joint CLE program, December 10, 2008.
Lecturer, "Dealing with the ITC/Customs Interface," Pennsylvania Bar Institute's Intellectual Property Law Institute, April 13, 2007.
Lecturer, "Patents: Shields and Swords," Michigan's Institute of Continuing Legal Education, 15th Annual Business Law Institute, May 16, 2003.
Lecturer, Patent Resources Group; Practical Patent Litigation and Appellate Practice, Basic Patent Litigation, 1994-1995.