April 22, 2020

Partners Debbie L. Berman and Wade A. Thomson capped last month’s jury verdict for Hetronic with a worldwide injunction against the defendants that has been the result of six years of litigation.  Granted on April 22, the injunction covers the Hetronic®, its products trade dress and product names; orders the defendants to destroy all infringing products within 21 days; and requires the defendants to return all of Hetronic’s confidential information. 

Hetronic, a subsidiary of Methode, is a leading manufacturer of customizable radio remote control solutions.  Jenner & Block represents Hetronic in a series of interrelated cases concerning the theft of highly confidential and proprietary information by Hetronic’s former president and vice president of accounting as well as unfair competition by one of its major distributors.

This case against the distributor involved claims of Lanham Act violations as well as breach of the parties’ agreements and various torts due to the conspiracy with the former president who improperly shared Hetronic’s confidential information with the defendants.  On the eve of trial in February, our team won a motion for issue preclusion regarding ownership of the disputed intellectual property that stripped the defense of one of their key arguments.   All of Hetronic’s claims then went to trial.   The defendants dismissed their one remaining counterclaim with prejudice during trial.

On March 2, after nearly a three-week trial, a federal jury in the Western District of Oklahoma returned almost $114 million verdict in favor of Hetronic.  The verdict included approximately $102 million in compensatory damages and $12 million in punitive damages.  After the jury verdict, Hetronic moved for a permanent injunction to stop future infringement and to recover its misappropriated confidential information.

“Broadly speaking, the defendants have, for several years, intentionally exploited plaintiff’s intellectual property and proprietary information in violation of the laws of the United States and the State of Oklahoma, and in violation of clearly-established contractual obligations,” reads the injunction.

Ms. Berman and Mr. Thomson were named runners-up for the American Lawyer “Litigator of the Week” recognition for their role in the trial victory as well as for the injunction.

The cross-office team that successfully sought the permanent injunction also included Partners Gianni Servodidio and Matthew S. Hellman and Associates Noah Bokat-Lindell and Miriam J. Wayne.   

They joined others on the trial team that included Partner Laura E. B. Hulce, Senior Paralegal Wendy Kachingwe and Paralegal Julie Hartl.   Staff attorney Sean M. Lopez played an important role throughout the case.  As legal issues arose, Partner Clifford W. Berlow and Associate Grace C. Signorelli-Cassady provided important legal research and analysis as did Associate John J. Frawley.   Mr. Hellman and former associate James Dawson worked on the preclusion motion with legal research support from Associate Christina T. Lopez.  Many other associates have assisted over the six years that this case was pending.