McAndrews, Held & Malloy Secures Claim Construction Victory and Settlement for VTech Electronics North America, LLC


McAndrews, Held & Malloy announced today that it secured a victory on a crucial claim construction issue for its client VTech in e.Digital Corporation v. VTech Electronics North America, LLC et al.  The U.S. District Court for the District of Colorado recently agreed with the defendants’ construction of certain critical terms found in the asserted patents, and dismissed the case with prejudice.  Shortly after the claim construction victory, the case settled and VTech received a full release and covenant not to sue for the patents-in-suit.

In two separate lawsuits (one in 2008 and one in 2009), Plaintiff e.Digital Corporation charged over 25 different corporations with infringing U.S. Patent Nos. 5,491,774 and 5,742,737.  Both relate to recording audio on flash memory.

McAndrews’ attorneys, in cooperation with other defense counsel in the case, successfully advocated for certain critical claim elements that McAndrews believed the defendants would clearly not be infringing the patent claims in question.  After months of briefing and a Markman hearing, the court ruled in the defendants’ favor on June 28, 2011.  The parties then filed a joint statement in response to the claim construction order on July 28, 2011.  The case settled shortly thereafter under very favorable terms to VTech.

“This case shows that sometimes it pays to take a stand,” said James R. Nuttall, a board member at McAndrews who served as lead counsel on the case for VTech.  “We looked at the claim construction issue and decided that the best strategic move for our client was not to settle the case quickly, but rather to brief and argue claim construction first.  The court agreed with our construction on the critical terms and our strategy paid off handsomely.”

McAndrews attorneys James R. Nuttall, Richard Eugene Dick and Daniel S. Stringfield worked on the briefs and contributed to the preparation of the Markman presentation on behalf of VTech.

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