From The Am Law Litigation Daily

Joshua Raskin, a partner at Bernstein Litowitz Berger & Grossmann, told ABC News back in 2008 that in his entire career he’d “never seen a more clear-cut case of patent infringement” than what Nikon Corp. allegedly did to his client, University of Illinois professor Kanti Jain. Manhattan federal district court judge Alvin Hellerstein clearly doesn’t agree. In a brief order issued on Tuesday April 3, Judge Hellerstein invalidated patents relating to LCD technology that Jain’s company, Anvik Corp., has been asserting against Nikon for close to seven years. Siding with Nikon’s lawyers at Morrison & Foerster, Hellerstein ruled that Jain undermined his own case during a deposition.

Raskin brought the case for Anvik in 2005, while at now-defunct WolfBlock. Bernstein Litowitz signed on to represent Anvik the following year, and Raskin eventually joined the firm in 2009. The complaint alleges that Jain, an accomplished inventor, told Nikon in the early 1990s about his idea for a lithographic machine that makes LCD panels more cheaply and efficiently. The case stalled for years because the judge who was initially assigned to the case retired.

Good Morning America ran a sensationalist segment on the case in 2008, titled “Who Invented the Flat Screen TV?” ABC seemed to love the idea of a Japanese company stealing a US inventor’s idea. LCD manufacturing might have been an American industry, the segment implies, had Nikon not stolen Jain’s idea.

Nikon, we should note, doesn’t even make LCDs. It does manufacture equipment that companies like Samsung (based in South Korea) and Toshiba (in Japan) use to make LCDs. But even if Jain’s claim that he beat Nikon to the punch is true, it strikes us as a little far-fetched to think he could have had such a major impact on the entire industry.

That point may be moot now. At a summary judgment hearing on Friday, Judge Hellerstein invalidated Jain’s patents on the grounds that he ran afoul of the rarely cited “best mode” requirement of the Patent Act, which requires patentees to disclose the best known method of practicing their claimed invention. The judge agreed with Morrison & Foerster that Jain had admitted on cross-examination that he failed to disclose in patent filings the best mode of making an illumination system in his machine. The real “best mode” had actually been disclosed in Jain’s application for an earlier patent not at issue in the case, the judge ruled.

We reached out to Tokyo-based Morrison & Foerster partner Jack Londen to ask about his deposition of Jain, but the time difference was too much for our deadline. His co-counsel, MoFo’s Harold McElhinny, spoke to us from California instead. McElhinny told us that he thinks Jain made the admission because he got trapped in between two contradictory positions.

“Jain thought that [Londen] was trying to get him to admit that his claimed illumination system was limited to the specific illuminated system he patented. Jain was trying for broad claim coverage so he testified that… his patent illumination system was simply ‘the best he had thought of’ as of the time of his applications,” McElhinny wrote in an email. “He thought he had a problem on the left and told the truth about an issue he didn’t see on the right.”

Raskin declined to comment except to say in an email that “this decision is wrong on the facts and the law. Anvik is taking an immediate appeal to the Federal Circuit where the issue will be reviewed de novo.” According to McElhinny, Anvik had pegged damages in the case as high as $1.8 billion.

Email: jwolfe@alm.com