A Ropes & Gray team helped its client, JVL Corporation, avoid the threat of an injunction against its current line of countertop video game machines by persuading a federal jury that none of the Toronto-based company's current products infringes any patent held by rival Merit Entertainment of Bristol, PA.

In 2003, Merit filed a patent infringement suit against JVL asserting that its entire product line of infringed three Merit patents. The suit was filed while Merit was losing its dominant market share to JVL and JVL’s innovative products and games. Merit sought a permanent injunction to prevent JVL from marketing its products. In response to the complaint, JVL immediately redesigned its products and continued to redesign its products as Merit changed its infringement theories.

On June 13, 2008, a federal jury in Philadelphia agreed that none of JVL’s current products infringed any Merit patent and denied Merit's demand for nearly $24 million in lost profits, awarding instead approximately $1.6 million in reasonable royalties for infringement by JVL's past products, all of which were discontinued by 2006.

"This a major victory for JVL because its current products were not held to infringe any of the patents, and therefore there is no possibility of injunction," said Mark Bloomberg, a partner on the Ropes & Gray team representing JVL. "The verdict enables the company to continue to conduct their successful business with their innovative and popular products and to introduce new products as planned."

JVL CEO Peter Guterres said in a press release that the company is "gratified by the jury's verdict." He added that the jury verdict demonstrates that the product redesign the company undertook in 2003 was completely successful. "We appreciate that Merit is not entitled to injunctive relief and that the jury rejected Merit's exorbitant lost profits demand," he said.

Meanwhile, the parties are scheduled to go back to court to argue post-trial motions, including whether Merit is entitled to any enhanced damages based on the jury’s finding of willful infringement.

The Ropes & Gray team representing JVL also included partners Jesse Jenner and Bill McCabe and associates Francisco Villegas, Michael Kahn, Alisha Feustel, Marina Len, Doug Chin and Crystal Lohman.

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