Press Releases
Sydney Iglitzen
siglitzen@brinkshofer.com
312.840.3163
CHICAGO - Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the United States, today announced a final judgment entered on a jury verdict in favor of its clients, ZF Friedrichshafen AG (ZF), ArvinMeritor, Inc. and ZF Meritor LLC, distributors of the FreedomLine™ heavy duty truck transmission systems, in a patent infringement case begun in 2003. The jury verdict marks the last step in a complete victory in defending against eleven patents originally asserted by Eaton Corporation.
Eaton, an Ohio-based manufacturer of automotive and truck parts, filed the lawsuit in the U.S. District Court for the Eastern District of Michigan. Judge George C. Steeh presided over the trial, which began on September 23, 2008. Brinks clients, ZF and ArvinMeritor, challenged Eaton's assertion that the FreedomLine transmission infringed claims 8 and 9 of U.S. Patent No. 5,624,350, which relates to a method of automated clutch control and calibrations and also challenged the validity of those claims, as well as claims 1, 3-6, 12 and 14-17 of U.S. Patent No. 5,664,458, which relates to a rolling-start control system for semi-automated mechanical transmissions.
After a seven-day jury trial, the jury found for ZF and ArvinMeritor on all counts. On October 16, the court entered final judgment that: 1) claims 8 and 9 of U.S. Patent No. 5,624,350 not infringed; 2) claims 8 and 9 of U.S. Patent No. 5,624,350 invalid; and, 3) claims 1, 3-6, 12, and 14-17 of U.S. Patent No. 5,664,458 invalid. The court had previously entered summary judgment that a third patent, U.S. Patent No. 4,899,279 is invalid.
"We are pleased to have been able to obtain this victory for our clients in this hard-fought litigation," said Gary M. Ropski, president of Brinks. "Eleven patents were asserted in the district court litigation and our clients successfully defended against each of them."
This case was the next phase in a dispute which began in December 2003. Eaton asserted that the FreedomLine heavy duty automated mechanical transmission infringed eleven different Eaton patents. Eaton also requested an International Trade Commission (ITC) patent infringement investigation involving 76 claims from six of the patents under Section 337 in Washington, D.C.
In January 2005, after a ten-day hearing, an administrative judge at the ITC ruled in favor of ZF and ArvinMeritor on all but one of the asserted claims. In response, ZF engineers redesigned the FreedomLine system in compliance with the ITC's decision and ZF continued to import the redesigned transmissions.
Eaton subsequently filed an enforcement proceeding at the ITC, asserting that the redesigned FreedomLine system still infringed and seeking penalties in excess of $40 million. The ITC ultimately found that there was no continuing infringement and denied Eaton's request for penalties.
According to Mr. Ropski, this was the first time in the 75-year history of the ITC's Section 337 investigations that an administrative law judge ruled in favor of a respondent in an enforcement proceeding.
The Brinks attorneys representing ZF and ArvinMeritor are Gary M. Ropski, Laura Beth Miller, Thomas J. Filarski, Charles M. McMahon, Mircea A. Tipescu, Timothy J. Le Duc and James K. Cleland.
Based in Germany, ZF Friedrichshafen AG is one of the world's leading automotive industry suppliers specializing in driveline and chassis systems. ZF has almost 60,000 employees worldwide in more than two dozen countries, including the United States. For more information, visit the company's Web site at www.zf.com.
ArvinMeritor is a premier global supplier of a broad range of integrated systems and components to the motor vehicle industry serving light vehicle, commercial truck, trailer and specialty original equipment manufacturers and certain aftermarkets. Headquartered in Troy, Michigan, ArvinMeritor employs more than 20,000 people in about two dozen countries, including the United States. ArvinMeritor's common stock is traded on the New York Stock Exchange under the ticker symbol ARM. For more information, visit the company's Web site at www.arvinmeritor.com.
Founded in 1917, Brinks Hofer Gilson & Lione is based in Chicago with five additional offices across the country, including Ann Arbor, serving the intellectual property needs of clients from around the world. The firm is one of the largest IP law firms in the country, with more than 170 attorneys, scientific advisors and patent agents specializing in intellectual property litigation and all aspects of patent, trademark, copyright, trade secret, unfair competition, intellectual asset management, and technology and licensing agreements. Brinks routinely handles assignments in fields as diverse as electrical, chemical, mechanical, biotechnology, pharmaceutical, nanotechnology, Internet and computer technology, as well as in trademarks and brand names for a wide variety of products and services.
