Media Mentions
2012
“Firm Life”
Chicago Lawyer, February 1, 2012
Erin Arnold, Kevin Miller, Brett Johnson and Maureen O’Brien, Amol Parikh and Adam Sherman were cited as the six McDermott Chicago office lawyers among 29 recently named to the Firm’s partnership.
Erin Arnold, Brett R. Johnson, Kevin L. Miller, Maureen O'Brien, Amol Parikh, Adam Sherman, Airport & Aviation, Employee Benefits, Health, Intellectual Property, IP Litigation, Private Client, Trial
“Court of Appeal Dismisses William Hill’s 32Red Appeal”
The Lawyer.com, January 25, 2012
Hiroshi Sheraton was noted for his role in the successful Appeal Court defense of a High Court infringement ruling that involved an online gambling website.
Hiroshi Sheraton, Intellectual Property, IP Litigation
“Louboutin Presses 2nd Circ. to Reverse Red Sole Mark Ruling”
Law360, January 24, 2012
Robert Zelnick, commenting on a high-profile effort by French fashion goods maker Louboutin to seek trademark protection for its use of red as shoe sole color, said that the company has “created a new mouse trap … by making the sole of a shoe such an enormous source identifier.” However, Mr. Zelnick added, getting trademark exclusivity for a color may be difficult because “there are concerns about color depletion. There are only so many primary colors.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“McDermott Moves to Jamboree”
Orange County Business Journal, January 23, 2012
Fay Morisseau called the move of McDermott’s Orange County, CA office to larger quarters “a sign of very significant growth in our client demands.” The office during the past 12 months has had the biggest increase in attorneys of any Orange County law firm, with a particularly strong intellectual property performance. “We’re happy to be moving into much bigger quarters,” said Mr. Morisseau. “We have grown out of the (prior) office."
Fay Morisseau, Intellectual Property, IP Litigation
“Kappos Guides PTO As It Revs Up for New Law”
National Law Journal, January 23, 2012
Leigh Martinson praised Patent & Trademark Office director David Kappos as “doing a fantastic job,” adding of Mr. Kappos that “his communication has been clear, concise and on-point.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Inventor of Method for Making Compound Is Joint Inventor of Compound’s Patent Claim, Federal Circuit Rules”
National Law Journal, January 23, 2012
Paul Devinsky warned that a Federal Circuit decision finding the inventor of a process to synthesize a compound to be co-inventor of the compound itself means that patent applicants should be wary of over-broad claims that avoid prior art. If a patent genus (class) is innovative, Mr. Devinsky said, “You have to look to people who either devised a method of making the genus, [or] developed compounds that fall within the genus because they are inventors.”
Paul Devinsky, Intellectual Property, IP Litigation
“McKesson’s Bid to Revive Pill Dispenser IP Suit Nixed”
Law360, January 12, 2012
Blair Jacobs, Charles Hawkins, Christina Ondrick and Christopher May were noted as co-counsel to McKesson Automation Inc. in seeking to overturn a Delaware federal court’s ruling that a Swiss logistics company had not infringed two McKesson patents.
Charles J. Hawkins, Blair M. Jacobs, Christopher L. May, Christina A. Ondrick, Intellectual Property, IP Litigation
“Adidas Exits Lodsys’ Product Patent Data Suit”
Law360, January 11, 2012
Michael Shanahan and John Low represented Adidas America Inc. in exiting through settlement a patent infringement lawsuit brought by a patent licensing company against Adidas and a number of other companies.
John C. Low Ph.D., Michael E. Shanahan, Intellectual Property, IP Litigation
“Area Intellectual Property Firms Hungry for Talent”
Boston Business Journal, January 6, 2012
Sarah Chapin Columbia assessed the strong demand for intellectual property services in the Boston area, noting that McDermott has “added several people in the IP group here in Boston, and I know in looking at the firms I deal with on a regular basis that others have expanded staffing as well.” Ms. Columbia, who is pictured in the article, said that for McDermott, “We have seen increased hiring in all areas, but life sciences remains particularly strong in this market.”
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Interview: Common Misperceptions About Monetizing Patents”
Thomson Reuters “Legal Current,” January 6, 2012
Yar Chaikovsky stated in this podcast interview that, for “producing companies in the business of making products,” monetizing a patent involves completely new issues once the patent is prosecuted. “You really need to focus on, are you willing to back it up with litigation, because you cannot monetize through licensing without being willing to incur the risk of litigation,” Mr. Chaikovsky explained. “If you are not willing to put up a fight, everyone else knows that therefore you cannot monetize your patent.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Amazon Resolves Kindle Patent Feud”
Law360, January 4, 2012
Yar Chaikovsky, Michael Martin and David Beckwith were co-counsel to Amazon.com Inc. in settling a dispute over claims that Amazon’s Kindle e-reader violated several digital communication and network patents.
David M. Beckwith, Yar R. Chaikovsky, Michael F. Martin, Intellectual Property, IP Litigation
2011
“ITC to Probe Rovi’s IP Claims Against Vizio, Haier”
Law360, December 16, 2011
Joel Freed, David Larson, Hong Lin, Yar Chaikovsky, Jeremiah Armstrong, Cary Chien, Christopher Paulraj and Alexander Ott were listed as representing Rovi Corporation in an International Trade Commission claim that two importers of televisions and Blu-ray players infringe Rovi’s patents for interactive program guides and parental control technology.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Alexander P. Ott, Christopher G. Paulraj, Intellectual Property, IP Litigation
“On the Move: New Partners”
The Recorder, December 2, 2011
Eric Levinrad (Los Angeles), Lynne Boisineau and Ahsan Shaikh (both Orange County) were noted as California office lawyers among the 29 attorneys firm-wide elected to McDermott’s partnership effective January 1, 2012.
Lynne Boisineau, Eric Levinrad, Ahsan A. Shaikh, Intellectual Property, IP Litigation, Patent Prosecution
“Washington’s Best Lawyers”
Washingtonian, December 2011
Included in this assessment of “Washington’s very best legal talent” were McDermott DC office partners Margaret Warner (insurance litigation), Stephen Becker and Joel Freed (both intellectual property) and Blake Rubin (tax).
Stephen A. Becker PC, Joel M. Freed, Blake D. Rubin, Margaret H. Warner, Insurance, Intellectual Property, IP Litigation, Patent Prosecution, Tax
“Despite Judges Reining in Damages Awards, Patent Litigation Shows Growth”
Corporate Counsel, December 1, 2011
Sarah Chapin Columbia noted that the Federal Circuit, attempting to reduce damages awards in patent suits, has “made it a mission to get the word out about how damages should be calculated, and that’s had an impact on recoveries.” However, despite the new postgrant review process provided in the patent reform law to reduce patent litigation, Ms. Columbia said “I don’t think there will be the rush to postgrant review that some people are claiming, because the cost of giving up later court arguments is pretty high.” As a result, she doubted that the law “is going to have too much of an effect on [litigants] and the volume and frequency with which they file.”
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“A New Mother of Invention: After Years of Setbacks, Patent Reform Finally Makes It Through”
ABA Journal, December 2011
Yar Chaikovsky said that, although the America Invents Act patent reform law made many patent system changes that had long been sought, it is unlikely to satisfy the business and patent communities for long. “Within two to three years, we will be talking about patent reform again. You can bank on it,” Mr. Chaikovsky asserted.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Power Circuit: Morgan Lewis Loses One Partner, Gains Another”
Washingtonian, November 30, 2011
Christopher May, Rita Weeks, David Crump, Alison Levin Nadel, Nathaniel Dorfman, Caroline Hong Ngo, Timothy Shuman, Amy Hooper Kearbey, Joanna Kerpen were cited as the Firm’s ten new Washington, D.C. partners effective January 1, 2012. The article also said that the Firm welcomed a new partner from Morgan Lewis & Bockius, Karol Lyn Newman who has joined the Energy Advisory practice.
David O. Crump, Nathaniel J. Dorfman, Amy Hooper Kearbey, Joanna C. Kerpen, Christopher L. May, Alison Levin Nadel, Karol Lyn Newman, Caroline Hong Ngo, Timothy S. Shuman, Rita Weeks, Employee Benefits, Energy Advisory, Health, Intellectual Property, International Tax, IP Litigation, Patent Prosecution, Tax
“Chinese Wheel Co. Fights ITC Secrets Ruling in Fed. Circ.”
Law360, November 29, 2011
Joel Freed, Geoffrey Vance and Steven Hoeft were noted as McDermott co-counsel to a Chinese importer of railway wheels in appealing to the full Federal Circuit Court of Appeals for a rehearing of an International Trade Commission trade secrets ruling.
Joel M. Freed, Steven H. Hoeft PC, Geoffrey A. Vance, Intellectual Property, IP Litigation, Trial
“Rovi Launches ITC Suit Over TV Guide, V-Chip Patents”
Law360, November 16, 2011
Joel Freed, David Larson, Hong Lin, Yar Chaikovsky, Jeremiah Armstrong, Cary Chien, Christopher Paulraj, and Alexander Ott represent client Rovi Corp. in an International Trade Commission complaint against two electronics manufacturers for importing televisions and Blue-Ray players that infringe patents covering on-screen program guides and parental controls.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Alexander P. Ott, Christopher G. Paulraj, Intellectual Property, IP Litigation
“Networking Co. Extreme Didn’t Violate Switch IP, Jury Says”
Law360, November 8, 2011
David Dolkas said he and his client, Extreme Networks, were “delighted” that a Wisconsin federal court jury found Extreme did not infringe a patent covering network switches. Calling the lawsuit “years’ worth of meritless litigation,” Mr. Dolkas added that “charges of patent infringement against a large product family can be particularly harmful to any company’s bottom line.” Margaret Duncan, David Larson, Keith Stolte, Terrence McMahon and Ryan Phelan were other McDermott counsel for Extreme.
David Henry Dolkas, Margaret M. Duncan, David L. Larson, Terrence P. McMahon, Ryan N. Phelan, Keith M. Stolte, Intellectual Property, IP Litigation
“Patent Reform Seen Reducing Multi-Defendant Suits”
WSJ.com/Dow Jones Newswires, November 8, 2011
Yar Chaikovsky expressed the belief that, although some critics say the America Invents Act did not do enough to restrain costly patent infringement litigation by plaintiffs, “No matter what, I think we’re going to see statistically fewer suits in the next few months.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“McDermott Helps Extreme Networks Defeat Patent Infringement Claims”
The Recorder, November 8, 2011
David Dolkas, who led a McDermott team that successfully defeated patent infringement claims in Wisconsin federal court against client Extreme Networks, attributed the good courtroom result to “the importance of effective teaching in patent cases. I really do believe these cases come down to who teaches best, because it’s complicated and jurors’ eyes roll when they realize they’re on a patent case.” Other lawyers on the McDermott team included Terrence McMahon, Margaret Duncan, David Larson and Keith Stolte.
David Henry Dolkas, Margaret M. Duncan, David L. Larson, Terrence P. McMahon, Keith M. Stolte, Intellectual Property, IP Litigation
“Administration Says America Invents Act Will Address Software Ban Petitioners’ Concerns”
BNA’s Patent, Trademark & Copyright Journal, November 4, 2011
Leigh Martinson called the Obama Administration’s response to an online petition to halt and void software patents “very well done. They said all the right things.” The response cited provisions in the new America Invents Act and other initiatives to keep overly broad patents from inhibiting innovation. Saying he appreciated the focus on patent quality, Mr. Martinson summarized the administration’s view as, “If there is a problem with software patents, it’s up to the Congress or the Supreme Court to figure that out. And that’s the way it should be.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“America Invents Act Overhauls U.S. Patent System”
Inside Counsel, November 2011
Yar Chaikovsky said that the new inter partes review contained in the patent reform law to allow patent challenges is “a big difference” from the previous inter partes re-examination because it requires showing a “reasonable likelihood” of invalidity. By contrast, the former system had “a pretty broad standard” that Mr. Chaikovsky said made it “easy to get a review.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Farewell, False Markings”
Inside Counsel, November 2011
Yar Chaikovsky identified as a major positive the new patent reform law’s substantial narrowing of false patent marking claims that plaintiffs can bring against companies. Mr. Chaikovsky called this provision “a win for all companies that make products, … a win for the American economy.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Patent Reform Aims to Take Toll on Trolls”
Silicon Valley/San Jose Business Journal, October 28, 2011
Yar Chaikovsky stated that since the signing of the patent reform law he has not seen any instances of non-practicing entities filing the kind of multi-defendant infringement claims that the law aimed to reduce. However, this litigation increased right before the law took effect – Mr. Chaikovsky noted that Apple Inc. received18 such lawsuits in early September compared to eight in the two prior months.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“If the Don Can’t Get ‘You’re Fired,’ and Paris Hilton Can’t Get ‘That’s Hot,’ Then ‘OWS’ Will Probably Stay Free”
Forbes, October 28, 2011
Robert Zelnick noted that parties seeking to trademark what he called “fads and phrases” often have “a fundamental misunderstanding” of their ability to do so, because they “won’t have actual rights – or the ability to prevent others from using the mark – until the mark is actually used in a commercial way.” For that reason, Mr. Zelnick added, “What’s hot now might be gone by the time the trademark registration is granted or the goods can be merchandised on a large scale.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“Q&A with Intellectual Property Lawyer Robert Zelnick”
Bloomberg Law Reports Student Edition, October 27, 2011
Robert Zelnick advised law students considering a career in intellectual property (IP) law that, while boutique firms offer advantages, “A general practice firm opens the door to so many more client relationships.” Speaking of his career at McDermott, Mr. Zelnick explained that “my opportunities to represent so many amazing brands came in many cases from my partners who had established relationships with the brand owners in some way.” He added that a large firm like McDermott “offers a much more comprehensive view of a client’s business objectives, and how IP matters fit into major corporate transactions.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“ITC Adopts New Public Interest Rule for Patent Cases”
Law360, October 19, 2011
Robert Walters said that “time will tell” if a new International Trade Commission rule, which allows the agency to gather information on potential public interest issues involved in a Section 337 patent infringement complaint, is “an indication of change” in previous ITC policy. Mr. Walters noted that public interest concerns have rarely outweighed other considerations in ITC exclusion orders, but the new rule may signal the agency’s interest in reviewing them.
Robert J. Walters, Intellectual Property, IP Litigation
“Sharp, Rovi Make Peace in Patent Suit, ITC Action”
Law360, October 5, 2011
Joel Freed, Yar Chaikovsky, David Larson, Hong Lin, Jeremiah Armstrong and Cary Chien represented client Rovi in securing a settlement with Sharp Corp. over allegations that some of Sharp’s products infringe three of Rovi’s programming guide technology patents.
Jeremiah Armstrong, Yar R. Chaikovsky, Cary Chien, Joel M. Freed, David L. Larson, Hong S. Lin, Intellectual Property, IP Litigation
“Genzyme Gets Rival Pain Med Barred For Now In IP Row”
Law360, October 4, 2011
Melissa Nott Davis and Sarah Chapin Columbia represent Seikagaku Corp. in a patent infringement case brought on by Genzyme Corp.
Sarah Chapin Columbia, Melissa Nott Davis, Intellectual Property, IP Litigation
“New Patent Law Highlights the Need for Speed”
CFO.com, October 1, 2011
Yar Chaikovsky, referring to the first-to-file system under the America Invents Act said, “Under the new law, companies may file less-expensive provisional applications that essentially save their place in line for up to a year before they submit a full patent application. But the provisional application is not a magic pill. Mr. Chaikovsky continues, “If companies do not spend enough time (and money) producing detailed provisional documents, their subsequent , more comprehensive applications may be so far removed from their initial proposals that they may lose their rights to the earlier filing date.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Global View”
World Trademark Review, October/November 2011
Robert Lundie-Smith commenting on the European Commission's blueprint for IP right's, which has been designed to boost creativity and innovation in Europe, said that "A review of the proposal shows that the commission sees the fragmentation of IP rights across the Community as having negative implications for Europe's growth, job creation and competitiveness and, therefore, is likely to press for an ever more harmonised rights system within Europe".
Robert Lundie-Smith, Intellectual Property, IP Litigation, IP, Media & Tech - London
“Yahoo Denied Atty Fees After Beating Patent Suit”
Law360, September 30, 2011
Yar Chaikovsky, Fay E. Morisseau, Christopher D. Bright and Natalie A. Bennett successfully represented Yahoo Inc. against Bedrock Computer Technologies in an infringement lawsuit over a patent covering Linux data storage. A Texas federal judge ruled that Bedrock will not have to pick up Yahoo Inc.’s legal fees.
Natalie A. Bennett, Christopher D. Bright, Yar R. Chaikovsky, Fay Morisseau, Intellectual Property, IP Litigation
“President’s We the People Website Includes Well Supported Software Patent Ban Petition”
BNA’s Patent, Trademark & Copyright Journal, September 30, 2011
Leigh Martinson, commenting on a September 28 petition that received more than twice the minimum required to force the administration to provide a response, said “While this is an old debate, the passing of the new patent reform laws seems to have sparked interest in the topic again.” Mr. Martinson continued, “Certainly arguments can be made for both pro- and anti-software patent positions. However, a close review of the new legislation could lead one to believe Congress is actually encouraging the ‘individual inventor’ to protect his patentable software ideas by substantially lowering the official patent office fees associated with the prosecution of patent.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“The Long-Awaited Patent Reform is Now Law. This Week, We Look at its Ramifications”
Boston Business Journal, September 30, 2011
Leigh Martinson, commenting on the patent reform law’s effect on the first-to-file system, said, “I think it will force some companies to change the way they do things. Now there’s a risk every time you decide not to file for something because someone else could.” Mr. Martinson continued, “We might see companies streamline their patent review process and maybe even force people like me to have tighter deadlines.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Anti-Software-Patent Petition Makes White House’s Top 10”
Computerworld, September 28, 2011
Leigh Martinson, commenting about the large number of signatures on a petition to ban software patents that has been submitted to the White House, said that while it is hard for the solo software developer to know if the program they are working on is already patented, a software patent overall provides “a competitive advantage, and it keeps people employed.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Petitioners Ask White House to End Software Patents”
Law360, September 26, 2011
Leigh Martinson said that, despite the fact that thousands of signatures appear on a petition calling for abolition of all software patents sent to the White House, “I can’t imagine the government is going to go out of its way to make a statement with regard to this.” Mr. Martinson noted that the new patent reform law did not address software patents, and that it would be highly impractical to void such patents. “Hundreds of man-hours of labor can go into creating software,” he added. “Why should you not be able to protect that work?”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Patent Bar in Mass. Split on Impact of New Law”
Massachusetts Lawyers Weekly, September 20, 2011
Leigh Martinson predicted that the new patent reform law’s impact on infringement claims will mean “fewer defendants in each multiple-defendant case, but won’t slow down the pace of filing” of such cases by non-practicing entities (NPEs) who sue in the hope of getting licensing agreements for patents they hold. He added that the law will thus likely slow down NPE licensing revenue because “it messes with their strategy.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Patent Reform Faces Final Hurdles in Senate”
National Journal, September 5, 2011
Yar Chaikovsky called the current version of a patent reform bill before the Senate “significantly controversial,” saying that “small businesses, corporations and individual inventors are significantly opposed” to the measure. “Some estimate the reform could create as many as 2 million jobs, but when you look under the covers, there does not appear to be any support for this,” Mr. Chaikovsky added.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Senate Set to Vote Yes on Patent Reform Bill”
Law360, September 2, 2011
Yar Chaikovsky said the patent reform bill nearing a final vote in the Senate was a step in the right direction but not a “transformational reform,” and expressed the opinion that “even with this passing, we’re going to be talking next year about what’s broken in the patent system.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Ruling Leaves Silicon Valley Lawyers Wondering Whether ‘Practicality’ Means ‘Patentable’”
The Recorder, August 30, 2011
Yar Chaikovsky observed that a new Federal Circuit ruling invalidating broad business method software patent claims is “one of the few instances ever where a ruling has come out of the Federal Circuit that’s negatively impacted both nonpracticing entities and traditional corporations,” the former being patent holders sometimes referred to as patent trolls.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Shire Patent Suit Over Generic Intuniv Survives”
Law360, August 29, 2011
William Gaede III, Joseph Robinson and Heather Ettinger, representing Irish drugmaker Shire PLC as plaintiff in a patent infringement lawsuit against two U.S. companies over an attention deficit hyperactivity disorder drug, successfully secured a California federal judge’s denial of the defendants’ attempt to dismiss the suit.
Heather Morehouse Ettinger Ph.D., William Gaede, Joseph R. Robinson, Intellectual Property, IP Litigation
“McDermott Will & Emery Names Houston Partner-in-Charge”
Houston Business Journal, July 14, 2011
Steven Spears was recognized for his appointment to head the Firm’s Houston office. An intellectual property lawyer focused on the chemical, biotechnology and petrochemical sectors, Mr. Spears is responsible for oversight and implementation of McDermott’s strategic regional goals.
Steven G. Spears, Intellectual Property, IP Litigation
“Patent Holding Company Targeting App Developers Faces Backlash”
American Lawyer, June 13, 2011
Michael Shanahan declared in seeking a declaratory judgment against a patent holder who had threatened infringement action against his client’s Internet service provider’s customers that the infringement claims “are without merit.”
Michael E. Shanahan, Intellectual Property, IP Litigation
“Supreme Court Ruling Seen as a Win for Patent Trolls”
Computer World, June 9, 2011
Sarah Columbia noted that the Microsoft v. i4i patent infringement lawsuit made it to the US Supreme Court over the burden of proof issue – namely, when a patent holder makes an infringement claim, the burden is on the alleged infringer to prove with “clear and convincing evidence” that the patent is invalid. Microsoft had argued for a lower standard, but the Court upheld the higher burden of proof test.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Invalidity Must Be Clear and Convincing: High Court”
Law360, June 9, 2011
Yar Chaikovsky asserted regarding the US Supreme Court’s ruling to uphold the “clear and convincing” standard for patent infringement, “The effect is that clear and convincing is here to stay for quite some time. The only way you can change it is through congressional action, and that’s not going to be happening anytime soon.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Is McDermott Will App Developers’ (Accidental) White Knight?”
Thomson Reuters News & Insight, June 8, 2011
Michael Shanahan explained his filing for a declaratory judgment in Chicago federal district court on behalf of Internet services company ForeSee Results against a patent holder who has been suing mobile device application developers and demanding that ForeSee’s customers take out licenses or face an infringement suit. “Rather than have our business disrupted and placed in doubt by these baseless threats, we have taken offensive action,” Mr. Shanahan said, adding the he believes the patents are both invalid and un-infringed.
Michael E. Shanahan, Intellectual Property, IP Litigation
“McDermott Joins Backlash Against Patent Holding Company Targeting App Developers”
Am Law Litigation Daily, June 8, 2011
Michael Shanahan, representing web analytics company ForeSee Results in seeking a declaratory judgment that a patent holder’s patents are invalid and not infringed by his client’s products, said that the patent holder had sent ForeSee’s customers letters accusing them of infringement. “ForeSee believes these allegations are without merit,” Mr. Shanahan stated.
Michael E. Shanahan, Intellectual Property, IP Litigation
“With Some Changes, Patent Reform Bill Cruising Toward House Passage”
Genetic Engineering & Biotechnology News, May 25, 2011
Leigh Martinson predicted that if the House of Representatives passes its own version of patent reform, “On the big issues such as first-to-file, processes for improving quality and addressing opposition, as well as supplemental examinations, the House and Senate bills will not be that far apart.” Robert Underwood said the Patent & Trademark Office “isn’t well equipped” to enforce a proposed House patent reform bill amendment that would bar examination of patents where fraud was attempted.
Leigh J. Martinson, Robert H. Underwood Ph.D., Intellectual Property, IP Litigation
“When a System is Used, Who is Responsible for the ‘Use’?”
National Law Journal, May 9, 2011
Leigh Martinson and Brett Bachtell authored this bylined article assessing the Federal Circuit’s Centillion patent infringement decision, which held that even if a party does not have direct physical control over all elements of a system, use (and infringement) can be shown if its customers use it. This means, the authors wrote, that patent drafters should now “ensure the[ir] claims are formatted in a way that will allow the proper target to be identified as a defendant in any future litigation.” Also, plaintiffs must now “sue customers of the defendant in combination with the corporate defendant … to identify and include as many users as possible in the litigation.”
Brett E. Bachtell, Leigh J. Martinson, Intellectual Property, IP Litigation
“Top Intellectual Property Lawyers: Jorge Arciniega”
Daily Journal, April 6, 2011
Jorge Arciniega, Yar Chaikovsky, Mark Itri and Terrence McMahon were selected for the publication’s annual rankings of the “Top 75 California IP Litigators” and “Top 25 California Portfolio Managers and Patent Prosecutors” for 2011. All four partners were profiled in this issue.
Jorge R. Arciniega, Intellectual Property, IP Litigation, Patent Prosecution
“Tech Market: Frothy, But No Bubble”
TheStreet.com, March 9, 2011
Yar Chaikovsky stated his belief that, although several well-known technology startup companies have filed for IPOs in 2011, investor enthusiasm has yet to reach the levels seen when Netscape’s initial offering helped trigger the Internet stock boom. “Maybe when Facebook goes public it’ll be like a Netscape,” Mr. Chaikofsky added. “But then again, not even Google … created that level of craziness.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Open for Business”
Corporate Counsel, March 1, 2011
Blair Jacobs noted that foreign companies that own U.S. patents were major contributors to the record number of IP cases heard in 2010 by the International Trade Commission (ITC). “Ten years ago, foreign companies were being dragged to the ITC,” Mr. Jacobs said. “Nowadays, a good number of filers are foreign companies.”
Blair M. Jacobs, Intellectual Property, International Trade Commission, IP Litigation
“NTP Faces Crucial Patent Challenge”
National Law Journal, February 7, 2011
Leigh Martinson, commenting on NTP Inc.’s appeal to the Federal Circuit on Patent Office rulings that invalidated a number of patents that it holds and has used to sue other companies for infringement, observed that losing at the circuit court level would likely affect NTP’s “ability to extract royalties from others going forward on those patents.”
Leigh J. Martinson, Intellectual Property, IP Litigation, Patent Prosecution
“En Banc Decision Allows Rejected Patent Applicants to Introduce New Evidence”
Inside Counsel, February 1, 2011
Paul Devinsky assessed an en banc Federal Circuit decision that removes limits on new evidence that patent applicants can enter in a Section 145 civil action to challenge a Patent & Trademark Office (USPTO) decision to deny patent rights. “The USPTO, for years now, has been trying to weed [Section]145[cases] out of the jurisprudence to avoid having to deal with new evidence,” Mr. Devinsky said. “I think it was becoming disruptive and a waste of time…” He added that district court applicants should not “leave any gray area in connection with the issue of whether or not you introduced new evidence and turned it into a de novo review.”
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
"McDermott's Columbia Offers Expertise, a Steady Hand and Wry Wit to Lead a Strong IP Litigation Group"
Of Counsel, January 2011
Sarah Chapin Columbia, in an extensive interview, said the McDermott IP Litigation Group's "real focus, particularly through the recession, has been clients, clients, clients, and we've really targeted our resources and our energies at client service and client attention." She enjoys her practice, saying, "It's intellectually challenging, it's stimulating, it's fun, it's cutting edge," but noted that "the biggest thing [we'll] continue to be challenged by through the next several years is ... the demand by our clients for alternative billing structures." Ms. Columbia also expressed pride that "here at McDermott within the IP Litigation Group we have three very senior and prominent women partners who are genuine trial lawyers... That's ... helped us a lot in recruiting [and] in client pitches ..."
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“US Supreme Court Expected to Weaken Patent Validity”
Intellectual Property Watch, January 12, 2011
Paul Devinsky predicted that the Supreme Court’s eventual ruling in Microsoft Corp. v. i4i Ltd. Partnership could create a “sea change” in U.S. patent law that would “affect what patent applications are filed, how patent applications are prosecuted, … and how patents are litigated.” The case focuses on whether a jury can strike down a patent as invalid, and Mr. Devinsky foresees that a Supreme Court decision “reducing the presumption of validity would make patents less powerful and more likely to be overturned.”
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
“PricewaterhouseCoopers Study Finds Jury Trials from 1995 to 2009 Yielded Higher Patent Damages Awards”
National Law Journal, January 11, 2011
Texas Lawyer, January 17, 2011
Sarah Chapin Colubmia said of the 14-year Pricewaterhouse Coopers study that, although lawyers have “all known for some time that juries are more generous than judges” in patent litigation cases, the report “demonstrates that very clearly over an extended period of time.” She added that this trend may change because the Federal Circuit “has been sending clear messages about damages awards and trying to put the pressure on patent holders to prove their damages.”
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Newegg GC Shops for Bargains at Small Firms”
The Recorder, January 10, 2011
Yar Chaikovsky was identified as one of several high-profile IP litigators serving as outside counsel to Newegg Inc., a seller of technology products that is the second largest online-only retailer in the U.S.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“IP Legislation to Watch in 2011”
Law360, January 1, 2011
Yar Chaikovsky predicted that the conflicting interests that have previously stalled patent reform legislation, such as between technology and life sciences companies, will continue to do so in 2011. “There will be patent reform legislation proposed as always,” he said of the new Congressional session, “but I don’t see any chance of that passing. I don’t care how it’s cut up. It’s not happening.” Mr. Chaikovsky added that while Congress is “burnt out on the patent side … there may be a push from the House or Senate to move on the copyright side,” but “in the IP world, legislation usually does not pass in the first instance even if the Senate and House are in agreement. Let’s look for 2012.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
“Patently Successful”
American Lawyer, January 1, 2011
Sarah Chapin Columbia, head of McDermott’s Intellectual Property Litigation Practice Group, is noted as one of the few top female IP litigators and practice group leaders at major U.S. law firms.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
2010
“On the Move – New Partner”
The Recorder, December 27, 2010
Jessica Thomas (Los Angeles office, complex litigation) was noted as a California lawyer named to McDermott’s partnership.
Jessica J. Thomas, IP Litigation, Trial
“Power Circuit”
Washingtonian.com, December 15, 2010
Matthew Leland (complex litigation and political law), Christina Ondrick (intellectual property litigation) and David Ransom (regulatory and government) have all been elected to McDermott’s partnership from the Firm’s Washington, D.C. office.
Matthew M. Leland, Christina A. Ondrick, David Ransom, Energy Advisory, Government Strategies, IP Litigation, Trial
“Welcome to Patent Law’s Hottest Venue”
The National Law Journal, December 13, 2010
“International Trade Commission Flooded With Cases”
Broward Daily Business Review, December 20, 2010
Blair Jacobs noted that foreign companies that own U.S. patents were major contributors to the record number of IP cases heard in 2010 by the International Trade Commission (ITC). “Ten years ago, foreign companies were being dragged to the ITC,” Mr. Jacobs said. “Nowadays, a good number of filers are foreign companies.”
Blair M. Jacobs, Intellectual Property, International Trade Commission, IP Litigation
"Decision of the European Court of Justice concerning e-commerce"
Financial Times Deutschland, December, 7, 2010
Boris Uphoff is quoted referring to the dispute, wether internet presence comes with the risk of foreign litigation if firms provide their services to international consumers.
Boris Uphoff, Germany, Intellectual Property, IP Litigation
“Wanna Buy a Watch?”
Corporate Counsel, November 1, 2010
Robert Zelnick assessed the controversy over whether “gray market” resale in the U.S. of products made for sale abroad constitutes infringement, saying that the issue of provenance is especially important in today’s global economy. “If you are already manufacturing a product for a foreign market,” he explained, “you don’t have to drastically amend your business model to send some of that product to the U.S.”
Robert W. Zelnick, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
“Patent Litigation Survey 2010: An Unexpected Turn”
Corporate Counsel, October 28, 2010
Yar Chaikovsky commented that the Federal Circuit’s greater reliance on the entire market value rule for plaintiffs with infringement claims is having “a noticeable effect on the high-tech side” in patent litigation. “The ‘entire market value’ rule is applied much more vigorously,” he explained. “It’s causing plaintiffs to search for other methods, and be much more creative in their damage theories.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
"A Sedona Award Winner Discusses the Future of IP Law"
National Law Journal, October 22, 2010
Ray Lupo, honored with the 2010 Sedona Conference Lifetime Achievement Award, sees "the enormous number of patent applications" and the re-examination process in which the Patent Office must "determine whether the technology should have been issued," as major impacts on IP law. "From the filing [of a case] to knowing whether there is a valid patent that’s being infringed, if that’s going to take years because of re-examination, that’s going to slow down corporations from investing money," Mr. Lupo said. The combined effect, he warned, is that "a very important patent system and a judiciary that patent system are in trouble, in that the technology is not being judged quickly."
Raphael V. Lupo, Intellectual Property, IP Litigation
“Zelnick Discusses Brand Protection via Social Media”
Bloomberg Law Podcast, October 11, 2010
Robert Zelnick talks with Bloomberg Law's legal analyst Spencer Mazyck about business strategies for protecting and communicating brands via social media. Click here to watch the full segment.
Robert W. Zelnick, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
“A common defense: Recession pushes cooperation”
Boston Business Journal, September 24, 2010
Leigh Martinson was quoted regarding the trend of defendants who are sued by patent-holders to pool their resources and advance a common defense. Mr. Martinson noted that in such instances there is a risk that one or more defendants will settle before trial, leaving fewer parties to bear defense costs. The result among defendants, he said, “is a lot of striving for price competition from law firms. If you have a flat fee for a case of, say, 10 defendants, and each pays $500,000, that may make sense, but what happens if two of the 10 settle?” For this reason, Mr. Martinson added, a joint defense “needs to be carefully planned out and accounted for. But in most cases, working together is at least worth a long look.”
Leigh J. Martinson, Intellectual Property, IP Litigation
“Boston Bar housing affinity bars to boost diversity”
Boston Business Journal, September 24, 2010
Sarah Chapin Columbia discussed how increased fines for companies that mark products with expired or incorrect patent numbers have spurred a rash of damage claims against those companies. “No one stops to think that those patents have expired and we have to change our packaging.… That has attracted a lot of attention from plaintiffs and plaintiff attorneys who smell the money,” Ms. Columbia said regarding companies caught in this bind. She added that it behooves companies to properly label products with the correct patent numbers in order to alert potential infringers of patented status, so they know they cannot legally copy the product; by contrast, intentionally using an expired or incorrect patent number could be viewed as unfairly stifling competition.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
"Q & A With McDermott’s Sarah Chapin Columbia"
Law360, September 13, 2010
Sarah Chapin Columbia, spoke about key trends in infringement litigation. Noting efforts to "reform" the litigation process, she stated: "I don't think we need reform or legislation; rather, we need clear guidance from the Federal Circuit to help the district court judges and the parties gain some predictability around patent litigation cases. I would also be in favor of greater deference to the district courts on issues of claim construction." Ms. Columbia, in assessing future litigation trends, predicted a "wave" of life sciences cases "resulting from the follow-on biologics -- either as a result of legislative changes or not. In the electrical/mechanical fields, the next wave will be the plethora of cases that are yet to be filed by the growing number of very sophisticated patent-holding companies around the country."
Sarah Chapin Columbia, Intellectual Property, IP Litigation
“Lawsuits allege copyright violations in posting of newspaper's articles on Web sites”
Washington Post, September 13, 2010
Robert Zelnick commented about a Las Vegas firm that purchased the rights to articles from a newspaper in that city and had filed copyright infringement lawsuits against organizations that quote those articles on their websites. “I’m not sure the amount sought or settled for is a direct reflection of the quantum of guilt or the egregiousness of conduct,” Mr. Zelnick said of the cases. “But from what I’ve been reading, many of the parties are settling for a number that’s around a few thousand dollars. I think from their perspective, it would cost more to hire a lawyer with expertise to evaluate the claims and pull together defenses.”
Robert W. Zelnick, Intellectual Property, IP Litigation
Karen Pak Laub spoke to Law360 (August 30) about dangers for companies that outsource computer hardware and software to third-party providers of so-called "cloud computing"services. Ms. Laub said such arrangements may subject businesses to infringement litigation because "if patent claims are directed to a method of operating and the only way to show infringement is through customers, not a competitor, a provider may bring them into a suit.” She added that there is greater risk when such plaintiffs are "patent holders that don’t make or sell anything because they have a patent they want to enforce and they don’t have any customers." Ms. Laub advised cloud computing customers to negotiate indemnity protection with providers: "Customers that are using a lot of services should ask for a warranty of noninfringement. If you’re a big customer, your risk is higher and you should be in a better bargaining position."
Soyeon (Karen) Laub, Computer Hardware/Networking, Intellectual Property, IP Litigation
Steven Spears was cited in an August 1 Inside Counsel / insidecounsel.com review of the TiVo Inc. v. EchoStar Corp. litigation involving allegations of repeat patent infringement by the same defendant. In March a Federal Circuit Court of Appeals panel granted district court judges wide latitude to use contempt proceedings to handle allegations of repeat infringement, but the full Court vacated that ruling in May and will rehear the case en banc this fall. Mr. Spears said he expects that the Court will clarify the standards for using contempt proceedings against repeat infringers. “My expectation is they will give some guidance regarding a more bright line standard for when contempt citations are appropriate,” he stated.
Steven G. Spears, Intellectual Property, IP Litigation
Blair Jacobs addressed for Law360 (July 23) the most effective approach for defense attorneys to bring a Daubert admissibility challenge to exclude expert testimony. Such a challenge applies standards set by the U.S. Supreme Court in its 1993 Daubert decision, and Mr. Jacobs advised laying the groundwork for such a challenge early and amply preparing for depositions. “You can’t treat Daubert as something to look at at the end,” he stated. “You have to look at [it] as soon as the expert process begins to make sure you develop a record so that you can show the judge” if the expert is being speculative.
Blair M. Jacobs, Intellectual Property, IP Litigation
Blair Jacobs spoke to Law360 on July 23 regarding the challenges of mounting a joint defense among competing companies that are sued by a patent-holding company. Although one law firm can represent multiple defendants, Mr. Jacobs advised carefully considering the business and legal implications of such representation. "Two companies may have diametrically opposed business objectives, so it may not make sense to represent both," he stated, adding that the largest companies with the most at stake, and companies that are suppliers to each other may most likely fall into this category. However, Mr. Jacobs said that if a joint defense is undertaken, it should be carefully planned from the start. "Planning for different scenarios ahead of time makes sure everyone is on the same sheet of music," he noted, adding that over the next five years "there will be more and more of these [cases], and there will be a more developed body of law for handling them."
Blair M. Jacobs, IP Litigation
Joseph Robinson spoke to PharmaWire on July 13 about a bill passed by the House of Representatives that gives the FTC the authority to prosecute pay-for-delay settlements in patent infringement disputes between brand name and generic pharmaceutical companies. Mr. Robinson said that the legislation will make it difficult to determine if such settlements will withstand FTC scrutiny, and he added that there will likely be more large generic drug companies doing at-risk launches of new products because, in the absence of a settlement, any possible infringement litigation will be prolonged.
Joseph R. Robinson, Intellectual Property, IP Litigation, Life Sciences - IP
Yar Chaikovsky commented (June 28) regarding the U.S. Supreme Court's Bilski ruling, which found the business method patent application at issue too abstract to be patent eligible, but held 5-4 that business methods themselves are not excluded from patent protection. For Law360 he said, "It was hoped that the case would end business method patents. Instead, the Court effectively punted the issue while relying on its past precedent." For The New York Times he said of Justice Stevens (whose dissenting opinion in the 5-4 ruling called for finding that business methods are not patentable), "He was swinging for the fences to have something to be remembered for many, many decades to come." For The Recorder he called the opinion by Justice Stevens "a pretty strong rebuke to the majority opinion," adding: "It appears Stevens does think that business method patents are a problem, but he couldn't convince a fifth member of the Court to agree."
Yar R. Chaikovsky, Intellectual Property, IP Litigation
On May 25 Enhanced Online News reported that Firm client Zumbox, Inc. announced that the United States District Court for the Central District of California granted its Motion to Stay a patent infringement litigation brought by Pitney Bowes, Inc. The Stay was issued after the USPTO commenced a reexamination of the Pitney Bowes patents. Furthermore, Zumbox filed a motion to stay the litigation with the United States District Court pending the outcome of the reexaminations. On May 20, 2010, the Court issued an order granting Zumbox's motion to stay the litigation. Partner Yar Chaikovsky, lead attorney for Zumbox, commented, "As a result of this order, the patent litigation will not proceed while the reexaminations are moving forward. Zumbox is very pleased with this result." Click here to view the full release.
Terry W. Ahearn, Yar R. Chaikovsky, Intellectual Property, IP Litigation
Steven Spears spoke to Law360 on May 18 concerning the U.S. Court of Appeals for the Federal Circuit’s decision to rehear en banc the infringement dispute between Echostar Corp. and TiVo Inc. over a digital video recorder patent. Saying that the case “will be on everyone’s list of the top five Federal Circuit decisions of the year,” Mr. Spears believes that the so-called colorable difference standard for deciding whether a redesigned product infringes is at the heart of the dispute, noting that, given its lack of clarity, “how to put meat on that standard is the issue the Federal Circuit will be wrestling with.” He added that “this is an area that could use clarification, and clarification is always good.”
Steven G. Spears, Intellectual Property, IP Litigation
David Beckwith discussed for the Daily Transcript (May 7) the substantial increase in litigation filed by plaintiffs alleging that companies have falsely marked a product with an incorrect or expired patent number. “In the past manufacturers would mark products and packaging with the patent numbers and forget about it,” Mr. Beckwith noted, but several federal court decisions imposing per-item fines for false marking with expired patent numbers have prompted numerous individual lawsuits because “it doesn’t cost [plaintiffs] anything to figure out what the patent is for and when it expires.” He advised companies that “if you review your patents periodically then you can mount a defense,” adding that “it’s better to do so before a lawsuit is brought on.”
David M. Beckwith, Intellectual Property, IP Litigation
Terrence McMahon and Peter Sacripanti were quoted (April 26) in stories covering the U.S. Court of Appeals for the Federal Circuit's reversal of a federal district court's imposition of sanctions and fees against McDermott for the Firm's handling of a patent infringement lawsuit. Mr. McMahon, lead attorney in lawsuit, expressed pleasure in the Federal Circuit's finding that "we engaged in proper and zealous advocacy on behalf of our client, Medtronic." As co-chair of the Firm, Mr. Sacripanti added that "we believe in giving 100 percent for our clients, but always within legal and ethical guidelines," and praised McDermott's Medtronic team as "excellent trial lawyers who are committed to giving our clients the best possible representation within the bounds of ethical advocacy..." The stories appeared in Above the Law, AmLaw Daily, Blog of Legal Times, Law.com, The National Law Journal and The Recorder.
Terrence P. McMahon, Peter John Sacripanti, Intellectual Property, IP Litigation
Terrence McMahon was quoted on April 28 by JD Journal concerning the Federal Circuit Court of Appeals reversal of a district court’s sanctions against McDermott for litigation tactics in a 2008 patent infringement representation of Medtronic. “This is a complete vindication of the trial work that we did for Medtronic, and I’m pleased that the Federal Circuit has concluded that we engaged in proper and zealous advocacy,” Mr. McMahon said. In an April 29 Broward Daily Business Review summary of the matter, Mr. McMahon added that he was “delighted” by the Federal Circuit Court’s decision.
Terrence P. McMahon, Intellectual Property, IP Litigation
Terrence McMahon commented on the Federal Circuit’s reversal of a federal district court’s sanctions against McDermott in April 27 interviews. Mr. McMahon, lead attorney in the Medtronic patent infringement lawsuit that was the target of the district court’s action, told Law360 that the Federal Circuit’s ruling was “a vindication for all trial lawyers who assertively and fairly advocate on behalf of their clients.” To Law.com he added of the Federal Court’s action, “This is a complete vindication of the trial work that we did for Medtronic, and I’m pleased that the Federal Circuit has concluded that we engaged in proper and zealous advocacy.”
Terrence P. McMahon, Peter John Sacripanti, Intellectual Property, IP Litigation
Leigh Martinson was quoted in an April 15 National Law Journal story about a streamlined review process at the U.S. Patent & Trademark Office (PTO). Mr. Martinson said that the new procedures should help keep patent lawyers from receiving “notices over the most stupid things and that really slows you down.” He added that patent appeals have become more critical as the number of patents approved has dropped. “If you think you cannot make any headway with a patent examiner, your only option is to appeal,” Mr. Martinson stated, “and the speed in which you can have your appeal heard and reversed or confirmed is important.”
Leigh J. Martinson, Intellectual Property, IP Litigation, Patent Prosecution
David Dolkas was quoted in an April 12 Law360 assessment of effective project management strategies for law firms. Mr. Dolkas suggested that both law firms and litigation clients should “do a really aggressive analysis of the case at the front end, so they know what’s important and have a good idea of the risk.” He also said lawyers should have “a very good sense of who’s doing what, and what needs to be done” on a case, so they can keep clients “dialed in on where you are that the start of the month, or the middle of the month, in terms of fees and costs.” Mr. Dolkas also urged open communication between lawyers and clients about a matter, and said that should continue after a case is completed in an “afteraction” review – “not to assess blame,” he said, “but to foster improvement” and to give clients attention that they will appreciate.
David Henry Dolkas, Intellectual Property, IP Litigation
Yar Chaikovsky commented for Law360 about the uncertain prospects for patent reform legislation that has passed the House of Representatives and is now before the Senate. Mr. Chaikovsky said he was hopeful that the legislation, the first major reform in patent law in 55 years, would move forward, but added a note of caution: “It’s nice that the bill came out of the Senate Judiciary Committee, but that’s still a long way from it pushing through different constituencies and interests, let alone meshing with the House bill.”
Yar R. Chaikovsky, Intellectual Property, IP Litigation
John Lee was mentioned in a February 8 item in The Recorder concerning his return to McDermott as a partner in intellectual property litigation. He previously had been with the Firm from 2004 to 2008, and rejoined after practicing with another Firm.
John A. Lee, Intellectual Property, IP Litigation
Yar Chaikovsky was mentioned in a February 4 story on major lateral moves by attorneys in 2009, as carried by the Broward Daily Business Review. Mr. Chaikofsky, one of the first patent lawyers at Yahoo!, left another major law firm to join McDermott late in the year.
Yar R. Chaikovsky, Intellectual Property, IP Litigation
Sarah Columbia told Law360 on January 29 that she sees changes in the way that companies are approaching intellectual property litigation. Given the bad economy in 2009, Ms. Columbia said, “What we were seeing was companies more inclined to resolve IP litigation when it involved one commercial company suing another. … [W]aging a huge patent fight costing millions of dollars just didn’t make sense.” However, she added, when companies were sued by patent-holding firms, they often chose not to back down, a trend that (along with more lawsuits between competitors) she expects to continue in 2010. “Companies that are being chronically sued are starting to say, ‘Let’s not just pay off patent holders in settlements. Let’s make these guys work to prove their case,’” she declared.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
John Lee was quoted in a January 29 Law360 story about his return to McDermott as a partner in the Silicon Valley office, where he had worked for four years as an associate. Mr. Lee joined McDermott shortly after Yar Chaikovsky came to the Firm. “The Firm’s robust, internationally ranked IP practice was always a strong draw for me,” Mr. Lee said. “Yar is an outstanding lawyer and I am delighted to be able to continue to work with him, as well as the talented attorneys across the firm.” Both lawyers focus on patent litigation, with Mr. Lee working mostly in the pharmaceutical and technology industries.”
Yar R. Chaikovsky, John A. Lee, Intellectual Property, IP Litigation
Leigh Martinson commented for The National Law Journal (January 28) concerning a small company’s federal court victory against the U.S. Patent & Trademark Office. The win reinstated the company’s patent for safety protection equipment seven years after the PTO ruled the patent had expired after the company’s lawyer at the time missed paying a maintenance fee on the patent application. Mr. Martinson (who was not directly involved in the case) said that “[i]t’s a high hurdle” for a plaintiff to win reinstatement by proving that the PTO acted in an arbitrary and capricious manner, and elaborated: “It’s something that is typically not easy to overcome. But I think in this case, when you look at the record, I’m not surprised that they won.”
Leigh J. Martinson, Intellectual Property, IP Litigation
Blair Jacobs spoke extensively to Law360 on January 4 regarding intellectual property litigation trends. He cited a perceived decrease in the importance of copyright litigation, saying that "in-house counsel was looking at prioritization of litigation needs and where the company should place its time and money during the year, and...copyright litigation in 2009 was viewed as a lower priority than patent and trademark litigation." Mr. Jacobs noted that in the latter cases, "Damages are helpful, but gathering market space and protecting market power are important as well." He added that trademark infringement suits "are more likely to get a settlement fairly quickly than patent ones...[I]f you have a good claim, you likely will be able to stop the infringement." Looking to 2010, Mr. Jacobs predicted "a fairly robust year for IP litigation, [n]ow that in-house and outside counsel have agreements and strategy planning in place."
Blair M. Jacobs, Intellectual Property, IP Litigation
2009
Terrence McMahon was quoted in The Recorder on November 23 concerning a U.S. Magistrate Judge’s reversal of his own preliminary injunction, which initially went against his client in a patent infringement case. The judge said that after more briefing by both sides he decided against issuing the injunction, leading Mr. McMahon to comment: “We said we were going to pursue this vigorously and we did. We are extremely pleased.”
Terrence P. McMahon, Intellectual Property, IP Litigation
Paul Devinsky and Robert Walters were featured in Law360 (September 15) examining the unique procedures for U.S. ITC cases. Compared to patent litigation in U.S. district courts, Mr. Walters said, ITC proceedings move much quicker: "There's an extremely short discovery period, and you get to the trial very quickly. None of the [district courts] will get you to trial that quickly." Mr. Devinsky added that ITC complaints must be much more detailed than those filed in federal court. "A very well prepared team for a district court case would be a very poorly prepared team for an ITC case," he observed," adding that if there is not sufficient documentation when seeking to bar a class of product imports, "your chance of getting a general exclusion order diminishes to near zero." In short, Mr. Devinsky said, lawyers who approach ITC cases like district court ones "are going to find themselves in some difficult spots."
Paul Devinsky, Robert J. Walters, Intellectual Property, International Trade Commission, IP Litigation
Leigh Martinson commented for Law.com (July 6) on the decrease in patent allowance rates and resulting sharp increase in patent appeals at the U.S. Patent & Trademark Office. Mr. Martinson noted a growing reluctance by patent examiners to suggest changes that address concerns about a patent application. “You stopped getting that negotiating feeling with examiners,” he said. “The only way you can get past them is to go to the [appeals] board.” Mr. Martinson added that appeals are more expensive than continuing an application: “It becomes a much more involved response. You’ve really got to point out everything the examiner has done incorrectly.”
Leigh J. Martinson, Intellectual Property, IP Litigation
William Gaede and Paul Devinsky were both quoted in Law360 on June 1 concerning the U.S. Supreme Court's decision to hear an appeal of In re: Bilski, in which the Federal Circuit Court limited business method patentability. "The position the Supreme Court will have to address," Mr. Gaede said, "is whether the test for patentability of processes or methods defined by the Federal Circuit is too rigid a reading of Supreme Court precedent that could result in stifling innovation in emerging industries." Mr. Devinsky noted that a key question was whether the Court would let the Federal Circuit "down easy" or deliver a strong reversal, adding: "The patent world will soon learn just how high a threshold Section 101 presents to patent-eligible subject matter."
Paul Devinsky, William Gaede, Intellectual Property, IP Litigation, Patent Prosecution
Sarah Columbia was quoted in Law360's 2009 Litigation Almanac in an article regarding patent trends. Ms. Columbia noted that the Federal Circuit's decision in In Re Bilski could significantly impact both patent prosecution and litigation. "I think that it is first going to have an impact on patent prosecution, in terms of what patents are getting through the patent office, but then it will have an impact on patent litigation in terms of what kinds of claims patent holders are going to be able to assert," she said.
Sarah Chapin Columbia, Intellectual Property, IP Litigation, Patent Prosecution
2008
David H. Dolkas was quoted in the November 17 issue of Lawyers USA in an article regarding the important role case visuals can play in the early stages of a case and even before a complaint is filed. Mr. Dolkas has used his case visuals at pre-trial client presentations, hearings and meetings with experts. "Cases move at such a fast pace, and lawyers often don't stop to think about the visual part of the story until close to trial, but using visuals early on helps you build the story," said Mr. Dolkas.
David Henry Dolkas, Intellectual Property, IP Litigation
Margaret Duncan was quoted on November 5 by Law360 in an article regarding a ruling from Judge Barbara B. Crabb in which she granted part of Extreme Networks' request for a permanent injunction against Enterasys Networks. The court ordered Enterasys to stop selling three types of routers that were found to infringe Extreme patents. Although Judge Crabb narrowed the scope of Extreme's request for an injunction, Ms. Duncan noted that it was still fairly wide. "We were extremely pleased that the judge in her judgment [confirmed] the jury's verdict and denied [the defendant's] post-trial motions and entered and respected the jury's verdict here," she said.
Margaret M. Duncan, Intellectual Property, IP Litigation
Terrence P. McMahon was quoted on November 5 by Law360 in an article regarding a ruling from Judge Barbara B. Crabb in which she granted part of Extreme Networks' request for a permanent injunction against Enterasys Networks. The court ordered Enterasys to stop selling three types of routers that were found to infringe Extreme patents. "That was our real focus, so we're delighted with the judge's ruling in that regard, and this was indeed a hard-fought case on both sides," said Mr. McMahon.
Terrence P. McMahon, Intellectual Property, IP Litigation
Blair M. Jacobs was mentioned in the October issue of Intellectual Property Today in an article regarding his move to McDermott. Mr. Jacobs joins the Firm as a partner in the Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation.
Blair M. Jacobs, Intellectual Property, IP Litigation
Robert J. Walters was mentioned in the October issue of Intellectual Property Today in an article regarding his move to McDermott. Mr. Walters joins the Firm as a partner in the Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation and counseling on intellectual property matters.
Robert J. Walters, Intellectual Property, IP Litigation
Fay E. Morisseau was quoted on October 14 by Law360 in an article regarding a federal appeals court's order to move a product liability case against Volkswagen of America Inc. out of the plaintiff-friendly Eastern District of Texas and into the Dallas Division of the Northern District of Texas. Lawyers with interests in patent litigation are watching the case closely as many view the Eastern District of Texas as a district where patent plaintiffs can win favorable verdicts. Mr. Morisseau noted that the appeals court's decision likely won't affect pending cases, but that it may affect new cases. "Most of the new cases will have motions to transfer. Some of them will be granted. It's going to change how people do business, but it's not going to completely change," he said.
Fay Morisseau, Intellectual Property, IP Litigation
On October 6, McDermott Will & Emery was profiled in the Houston Business Journal in an article titled, "Firm Forms East Texas Group to Focus on Litigation Hotbed." The article highlights McDermott's East Texas Patent Litigation Group, which includes partners Fay E. Morisseau and David M. Stein. Mr. Morisseau commented, "We've had so much litigation in East Texas, both from a plaintiff's side and defendant's side, we've had a lot of expertise in representing clients there, and we thought we could add to the expertise by bringing these attorneys together."
Fay Morisseau, Intellectual Property, IP Litigation
Robert J. Walters was mentioned in the September 29 issue of The Washington Post in an article regarding his move to McDermott. Mr. Walters joins the Firm as a partner in its Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation and counseling on intellectual property matters.
Robert J. Walters, Intellectual Property, IP Litigation
Blair M. Jacobs was mentioned in the September 29 issue of The Washington Post in an article regarding his move to McDermott. Mr. Jacobs joins the Firm as a partner in its Intellectual Property, Media & Technology Department where he focuses his practice on intellectual property litigation and related antitrust disputes.
Blair M. Jacobs, Intellectual Property, IP Litigation
Anthony de Alcuaz was quoted on September 23 by Law360 in an article regarding Aristocrat Technologies Australia Party Ltd.'s appeal of a U.S. District Court for the Northern District of California decision which rendered Aristocrat's patents relating to slot machines invalid based on an improperly revived patent application. The federal appeals court, however, ruled that the improper revival of a patent application is not a cognizable defense and remanded the case back to the district court. "For the clients, we're extremely happy because the [district] decision wasn't a correct one," said Mr. de Alcuaz, one of Aristocrat's lawyers in the case.
Anthony de Alcuaz, Intellectual Property, IP Litigation
McDermott Will & Emery's Intellectual Property, Media & Technology Department was featured in IP Law360 on September 3. The article discusses the Intellectual Property Department, highlights some of the Firm's recent accomplishments and includes comments on some of the trends of IP. To view the entire article click here.
Terrence P. McMahon, Intellectual Property, IP Litigation, Patent Prosecution
On September 1 McDermott Will & Emery was profiled in The National Law Journal in an article titled, "McDermott's IP litigation team tallies jury trial wins." The article highlights McDermott's intellectual property litigation team including, Sarah Columbia, Joel Freed, Terry McMahon and Fay Morisseau, "rack[ing] up five mainly favorable jury trial verdicts in the course of five months in five different federal districts." The article notes, "...[I]t's an unusual string of results in an era when most cases don't even go to trial. The trials took place in federal courts in California, Delaware, Massachusetts, Texas and Wisconsin." Mr. Morisseau commented, "What we do better than anyone else in the country is we work across offices to pull the people with the skills needed and we are not hesitant to take a case to trial."
Sarah Chapin Columbia, Joel M. Freed, Terrence P. McMahon, Fay Morisseau, Intellectual Property, IP Litigation
Terrence P. McMahon was quoted in the August 4 issue of The Recorder in an article regarding the U.S. Court of Appeals for the Federal Circuit's removal of U.S. District Judge Manuel Real from a patent infringement case. The Federal Circuit threw out Microsoft's 2006 win over Research Corporation Technologies (RCT), reversing Real's decision declaring RCT's patents unenforceable and tossing his orders that found the patents invalid and non-infringing. Mr. McMahon, who represented RCT before Judge Real, said he was happy to get a new judge on the case. "It was clear that he had a point of view and we disagreed with it – we tried the case and he cut us off at every pass. I've never had something like this in my whole career, and I hope I never do again," he said. "A new day has dawned. Everything that Judge Real did has been erased," he added.
Terrence P. McMahon, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the June 2008 issue of Inside Counsel in an article regarding the Federal Circuit's ruling in the case of David Barstow, a former employee of Schlumberger Technology Corporation who invented software while employed by the company. The court ruled that Schlumberger must prove that the patents at issue were related to or suggested by David's work for the company in order to gain ownership. "This was a huge signal to the district court judge that unless Schlumberger did something to make people think the inventions belonged to the company, the inventions belong to David Barstow," Mr. Devinsky said. As for whether companies should create internal review processes for determining whether they own employees' inventions, Mr. Devinsky noted that "most companies will not be happy to make a decision on whether or not they own something."
Paul Devinsky, Intellectual Property, IP Litigation
Joel M. Freed was recognized in the 2008 issue of the Legal Times Almanac of Leading Lawyers. Mr. Freed was noted for his work in Intergraph Corp. v. Intel Corp., a case that struck the balance between intellectual property and antitrust in favor of intellectual property.
Joel M. Freed, Antitrust - IP, Intellectual Property, IP Litigation
Sarah Chapin Columbia was quoted in the June 6 issue of the Boston Business Journal in an article regarding the decreasing number of IP-related lawsuits going to trial in Massachusetts due to the belief that other venues offer speedier resolution. Some Massachusetts companies are opting to file in other federal courts where, for example, the court may have a record of being plaintiff-friendly or may offer a faster trial. "There's a lot of venue shopping going on," Ms. Columbia said.
Sarah Chapin Columbia, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the May 1 issue of CFO Magazine in an article regarding whether business-process methods should be protected by patent law. On May 8, the U.S. Court of Appeals for the Federal Circuit will hear In Re Bernard L. Bilski and Rand A. Warsaw and may deliver a decision that clarifies where to draw the line on patentable subject matter. Mr. Devinsky noted, however, that if Bilski doesn’t decide the matter, the business-method patent issue will be "all teed up for the Supreme Court."
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
William Gaede is quoted in The Recorder on March 23 (as presented on Law.com), speaking about the patent infringement litigation impact of the Federal Circuit's In re Bilski decision. Bilski held that methods are not patentable unless they are tied to a machine or can transform an article. Concerning the use of the decision by defendants in infringement claims, Mr. Gaede says: "Is Bilski the killer defense? I think the answer is no, because you may face other claims."
William Gaede, Intellectual Property, IP Litigation, Life Sciences - IP
2007
William Gaede was quoted in an October 23 article published by IP Law360 regarding a federal jury's ruling that Amgen Inc.'s patents were infringed by Roche Holding AG's generic drug Mircera. Mr. Gaede represented Amgen in the case along with others from McDermott. "We're thrilled with it…It's a terrific victory for Amgen," Mr. Gaede commented.
William Gaede, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences & Medical Products Litigation, Life Sciences - IP
Paul Devinsky was quoted in a September 11 article by Technology Daily regarding patent holding firm NTP's decision to sue several of the nation's largest wireless carriers for alleged patent infringement. Mr. Devinsky's prediction is that the defendants would move for an immediate stay pending conclusion of the re-examination and that the stay would be granted. He suggested that NTP may be concerned about pending patent litigation on Capitol Hill and that NTP "is seeking to be certain their damage claim is calculated under the current statute."
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
Vera M. Elson was quoted in the July 20 issue of The Recorder in an article regarding law firms expanding their practice in the area of accelerated patent cases before the International Trade Commission. Ms. Elson explains that it is very difficult for firms to enter the practice of accelerated patent cases. "It's the kind of thing where you can't make a halfhearted effort....It's a hard thing to dabble in," Ms. Elson said.
, Intellectual Property, International Trade Commission, IP Litigation
Mark Wine was quoted on May 15 in IP Law360 in regards to Microsoft’s move to seek patent royalties from open source distributors and users. “It was a surprise last Fall when they signed [an agreement] with Novell….You had to figure at some point they’d engage in some kind of marketing attempt that would steer people towards their licensed Linux provider…. This may simply be the beginning of that effort,” commented Mr. Wine. He continued, “There are several big contracts up for consideration…. By threatening users and distributors with a lawsuit, they could [be using] this announcement to steer customers towards licensed software instead of unlicensed Linux providers, such as Red Hat.”
, Intellectual Property, IP Litigation, Licensing, Patent Prosecution
Mark P. Wine was quoted in a May 15 article published by IDG News Service regarding Microsoft’s move to seek patent royalties from open source distributors and users in an attempt to use legal threats to deflect attention from company problems. Mr. Wine agreed that Microsoft is hoping companies will pay without a fight rather than engage them in a legal battle. He also said Microsoft may be trying to drive open source software users to migrate to its products. "I think it's as much a marketing move as anything else," he said. "If you're really serious, you sit down and have a discussion, and you tell [open-source users] which patents, or you sue them." This article appeared in MacWorld and Computer World.
, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
Mark Wine was quoted in IP Law360 on April 20 in regard to Hewlett-Packard's filing of a patent infringement suit against Acer Inc. and its American subsidiary, Acer America Corp. "It's a compliment of sorts to Acer, which has made up a lot of ground and is beginning to challenge its competitors," commented Mr. Wine. He continued by commenting that, "And when a competitor starts nipping at your heels you start to look at IP more critically." This article also appeared on March 28.
, Intellectual Property, IP Litigation
Stephen Becker was quoted by Reuters on February 23 regarding the $1.52 billion patent verdict against Microsoft Corp. "This is one that impacts on everyone that has an MPS," commented Mr. Becker. "It's not only impacting on makers of esoteric technology."
Stephen A. Becker PC, Intellectual Property, IP Litigation
Terrence P. McMahon and William Gaede were featured in the February 2007 issue of IP Law & Business in a two-page article, "Trial Tips: In the race to develop a new drug for juvenile growth disorder, did Insmed rely on Genentech's patents?" This article discusses the closely watched biotechnology case, Genentech Inc. et al. v. Insmed Incorporated et al., the history of the patent battle for co-plaintiffs Genentech and Tercica, and the trial strategies employed by the McDermott team for Firm client Tercica.
William Gaede, Terrence P. McMahon, Intellectual Property, IP Litigation, Trial
2006
Terrence P. McMahon was profiled in the November issue of American Lawyer in regard to his representation of Creative Technology, Ltd. in its lawsuit against Apple Computer, Inc. The article, "Top of the Docket: McDermott's Jury Master," was part of the Big Suits column which also featured the litigation.
Terrence P. McMahon, Intellectual Property, IP Litigation
On June 22, Marc E. Brown was quoted in InformationWeek in the article, "Supreme Court Sidesteps Deciding Key Patent Case." The article discussed the Court’s ruling on a patent infringement case that had the potential to invalidate business-method patents. Regarding the Court’s decision to dismiss an appeal by Laboratory Corporation of America because it addressed issues not dealt with by lower courts, Mr. Brown suggested a decision could have removed one of the clouds hanging over business method payments. "This case had the potential of seriously disrupting the status quo, but the Court's inaction signaled that a change is no longer immediately on the horizon as the Federal Circuit has been very pro business-method patents, so contrary to a decision by the Supreme Court, the right to a business-method patent is pretty secure."
Marc E. Brown, Intellectual Property, IP Litigation
David Beckwith was quoted in the May 19 issue of the San Diego Daily Transcript in an article discussing the recent decision by the U.S. Supreme Court in eBay v. MercExchange: "The District Court really put a lot of focus on the fact that MercExchange was willing to license and wasn't practicing an invention themselves."
David M. Beckwith, Intellectual Property, IP Litigation
Paul Devinsky was quoted by Globe and Mail on April 11 regarding China Unicom Ltd.’s. new push mail service called "RedBerry" and its possible trademark infringement of the "BlackBerry" name. Mr. Devinsky commented that the consumers' likelihood of confusion would be strong enough for Research in Motion (RIM) to have a persuasive case. Mr. Devinsky also said "RIM's position would probably be enhanced in a Chinese court if China Mobile joined any action against RedBerry. Ultimately, any legal fight would hinge on who registered the trademark and service mark for BlackBerry first in China…"
Paul Devinsky, Intellectual Property, IP Litigation
Paul Devinsky was quoted by the National Journal's Technology Daily on January 23 in the article, "Supreme Court Declines Review of Blackberry Dispute." Mr. Devinksy commented, "Basically, RIM has to figure out a way of either getting [U.S. District] Judge [James] Spencer to issue his injunction, and put it on stay pending Patent and Trademark Office developments, or they're going to have to settle..."
Paul Devinsky, Intellectual Property, IP Litigation
2005
An article entitled "Express Route" from the August 2005 issue of IP Law & Business features the success that Tracey Thomas, American Express's Chief IP Counsel, has had in developing American Express's IP program. The article notes that in the five years that Tracey has been American Express's Chief IP Counsel, he has increased the number of patents in American Express's patent portfolio from 10 to 50, launched a patent licensing program that has generated millions of dollars in revenue and successfully defended the company in several patent infringement cases. McDermott is mentioned as American Express's patent litigation counsel.
Intellectual Property, IP Litigation
Mauricio Flores was quoted in The Wall Street Journal on June 14 in regard to the U.S. Supreme Court's decision, vacated and remanded, in Merck KGaA v. Integra LifeSciences (03-1237), in which Mauricio argued before the Court on behalf of Integra. Mauricio was also quoted in the Associated Press, Law.com, Washington Post,Los Angeles Times, The New York Times, San Diego Union-Tribune and San Francisco Daily Journal.
, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP, Trial
Mauricio Flores was quoted in the June 14 issue of the ABA Journal regarding the U.S. Supreme Court's decision in Merck KGaA v. Integra LifeSciences (03-1237). Mr. Flores said the running "won't have a dramatic impact" on drug companies' research practices.
, Intellectual Property, IP Litigation
Cathryn Campbell and Mauricio Flores were quoted in the June 13 issue of the San Diego Daily Transcript in regard to the U.S. Supreme Court's decision, in Merck KGaA v. Integra LifeSciences (03-1237). "We would've been disappointed if they came out with a bright line that said everything in pre-clinical research is exempt, and they didn't do that," commented Dr. Campbell. "In fact the Supreme Court in effect adopted the interpretation of the law that Mauricio Flores and his team proposed at the trial." Mr. Flores commented: "This issue has to be approached on a case-by-case basis."
, Intellectual Property, IP Litigation
Mauricio Flores was quoted in the June issue of Corporate Legal Times in an article reporting on Merck KGaA v. Integra LifeSciences, et al. which was argued before the U.S. Supreme Court this spring. Integra argued that Scripps was conducting research for a lot of commercial reasons unrelated to a FDA application. "We think that the evidence show that what was going on at Scripps was not FDA related, that they were just trying to come up with some FDA justification after the fact," commented Mr. Flores, who argued the case before the Supreme Court on behalf of Integra. "They were doing it to generally strengthen the scientific premise of Merck's drug program. The premise is that if you inhibit a particular receptor with anything, whether its' an RGD peptide or something completely different, you can inhibit the growth of blood vessels. So that's a non-FDA related purpose."
, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP
Mauricio Flores was quoted in the April 21 issue of the San Diego Union-Tribune in regard to representing Integra LifeSciences before the U.S. Supreme Court.
, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP
Cathryn Campbell was quoted in the New York Times on April 19 and the Boston Globe and Los Angeles Times on April 20 regarding our representation of Integra LifeSciences in Merck RGaA v. Integra Life Sciences before the U.S. Supreme Court.
, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP
Mauricio Flores was quoted, "Justices to Review Patent Safe Harbor," an article that appeared in the April 11 issue of The National Law Journal regarding Merck KGaA v. Integra LifeSciences. Mr. Flores commented on the case which is scheduled to be argued before the U.S. Supreme Court on April 20. The article examined the Merck case and questioned "how far down the chain of research and experimentation into new drugs does a federal safe harbor statute reach to protect drug manufacturers from liability for patent infringement."
, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP
Cathryn Campbell and Mauricio Flores were quoted in the April 1 issue of San Diego's The Daily Transcript in the article, "Patent disputed leads local law firm to the U.S. Supreme Court." Mr. Flores will present the case for Integra LifeSciences, which is charging Merck KGaA with patent infringement. Mr. Flores states, "it's always exciting to argue something in front of the highest court in the land, especially something this important." Dr. Campbell notes that "this is a very important case and it's been recognized as such," and "everyone from big pharmaceutical companies and biotech firms to bar associations and law professors will be watching the proceedings."
, Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP
2004
Chambers USA 2004, states clients were quick to commend [the IP group] as one that is "focused on cost control, easy to work with and understanding of all the technology issues." The firm dedicates a huge amount of resources to the IP arena, with over 40 attorneys in the Washington, D.C. office covering patent litigation, for example. Peers and clients alike praised its work at the ITC as "an example of real expertise." Operating on a cross-office basis, the firm uses the expertise of colleagues in California for its hi-tech clients.
Intellectual Property, International Trade Commission, IP Litigation
Terry McMahon was recognized as one of the "Best in the West," in an article published in the August 2004 issue of California Lawyer. The article which featured California's leading business lawyers in a range of practice areas was a result of a collaboration between California Lawyer and Chambers & Partners, the London-based publishing company that annually ranks lawyers by practice as a result of in-depth interviews with clients and peers. Mr. McMahon was one of three lawyers recognized in the area of IP.
Terrence P. McMahon, Intellectual Property, IP Litigation
Ray Lupo and Paul Devinsky were quoted in the National Law Journal on February 9 on the Federal Circuit's shifting views on how to define the words or claims that describe the scope of a patent. In Texas Digital Systems it ruled that dictionary definitions are the first source for construing the meaning of a claim. "The court backed off on Texas Digital," commented Mr. Lupo. It has tried to harmonize Texas digital with a 1996 decision (Vitronics) where it established tools courts should use to evaluate claim constructions. In the Vitronics decision specifications in the patent were considered the most important tool. "In Judge Richard Linn's view, you go to the dictionary first, and only if the specification is inconsistent with the dictionary need it be considered," commented Mr. Devinsky. "In Judge Michel's view, the specification has to be consulted in every claim construction."
Paul Devinsky, Raphael V. Lupo, Intellectual Property, IP Litigation
2003
Stephen Becker was quoted in the Wall Street and Technology on October 1 regarding Reuters lawsuit against Bloomberg. Mr. Becker stated that "If Reuters prevails in this litigation there may be retroactive damages, future payments, or even an order prohibiting Bloomberg from using the patented technologies". Mr. Becker continued by stating, "During litigation there’s a huge war chest available to redo whatever research the patent examiner has already done." Mr. Becker notes if the precedent prevails, the most likely outcome would be either payment or settlement.
Stephen A. Becker PC, Intellectual Property, IP Litigation
McDermott Will & Emery was mentioned in the August 2003 issue of Intellectual Property Today for successfully representing Burnham Institute and Integra LifeSciences, by obtaining a significant victory related to patent infringement in the context of biomedical research.
Intellectual Property, IP Litigation, Life Sciences & Medical Products, Life Sciences - IP
McDermott Will & Emery's Intellectual Property Department was recognized in IP Law & Business' (formerly IP Worldwide) third annual report on who's winning all the business, "Swords & Shields," published in its May 2003 issue. McDermott Will & Emery ranked as one of the Top 10 defense firms in the U.S. and was 11th among the top 41 law firms to be recognized as counsel hired by plaintiffs and defendants involved in patent cases filed in 2002. The Firm's IP Department filed a total of 30 patent cases on behalf of Firm clients and defended 22 cases in 2002.
Intellectual Property, IP Litigation
McDermott Will & Emery was mentioned in the March issue of Intellectual Property Today in regard to the Firm's IP victory for CIBA Vision in the U.S. Court of Appeals for the Federal Circuit and the victorious multi-patent litigation settlement on behalf of Three Rivers Pharmaceutical.
Intellectual Property, IP Litigation
Terry McMahon was listed as one of California's top intellectual property lawyers in the cover story, "Think Big," which ran in the Daily Journal EXTRA on February 24. Mr. McMahon, who was among 25 IP lawyers recognized, was noted for both his success in the courtroom on big ticket IP litigation and his efforts to help build the Firm's IP practice. Click here to see an excerpt.
Terrence P. McMahon, Intellectual Property, IP Litigation
McDermott Will & Emery was mentioned as counsel for Wesley Jessen in its patent infringement case against Bausch & Lomb's PureVision contract lenses. On February 20, the Asia Intelligence reported on the Federal Circuit Court's decision to uphold the lower court decision which prevents the sale of PureVision contact lenses in the United States.
Intellectual Property, IP Litigation
Ray Lupo was quoted extensively on February 11 in a IDG News Service wire, which appeared as an article on February 11 in InfoWorld. The article reported on the SCO Group and the Linux legal war. Mr. Lupo commented that a weak economy can open the doors for revenue-starved vendors to file intellectual property claims.
Raphael V. Lupo, Intellectual Property, IP Litigation
McDermott Will & Emery was mentioned in the January issue of Intellectual Property Today in regard to the success of the Firm's IP litigation team representing Roxio, Inc. in Caffarelli v. Adaptec.
Intellectual Property, IP Litigation
2002
McDermott's patent victory for CIBA Vision, identified as a "high-stakes patent suit" was mentioned in the July 8 issue of Legal Times. The Firm's legal team included partners Ken Cage, Ray Lupo, Tom Steindler and Chuck Work, and associates Pascale Bishop and Dan Bucca.
Intellectual Property, IP Litigation, Trial
The Firm's Intellectual Property Practice on behalf of client Medtronic in Cordis Corp. v. Medtronic AVE was named the "Defense Win of the Month" in the April 22 issue of The National Law Journal. On December 21, 2000, a jury awarded Cordis Corp. $271.1 million in damages in a consolidated civil action against Medtronic AVE. Following this adverse verdict, Medtronic asked McDermott Will & Emery to step in and handle the post-trial briefs. MW&E's legal team led by Ray Lupo and included Natalia Blinkova. Mr. Lupo argued the motion and successfully convinced Chief Judge Sue Robinson of the District Court of Delaware that Medtronic AVE had not infringed the Palmaz-Schatz patents, resulting in the overturning of the jury's verdict and damages award.
Intellectual Property, IP Litigation, Trial
Terry McMahon and the Firm's West Coast IP Group were profiled on the front page of the March 14 issue of the San Francisco Daily Journal. Mr. McMahon, whose continued success in the courtroom is expounded upon by multiple third parties, was called the "Go-To Guy in the Valley for Intellectual Property." The article highlights McDermott's IP practice by mentioning the Firm's recent successes, client-base and recruitment of leading lawyers.
Terrence P. McMahon, Intellectual Property, IP Litigation, Trial
Ray Lupo was mentioned as counsel for the appellants in Aptix Corp., et. al. v. Quickturn Design Systems Inc., which was ranked by in the March 4 issue of Legal Times as one of the top 10 patent decisions from the U.S. Court of Appeals for the Federal Circuit from October 2001 through January 2002.
Raphael V. Lupo, Intellectual Property, IP Litigation, Trial
McDermott Will & Emery was listed in the May 2 issue of Corporate Counsel as one of top law firms that global companies call when they need U.S. patent litigation and patent prosecution.
Intellectual Property, IP Litigation, Patent Prosecution
Terry McMahon was profiled in "A New Meaning for 'Win-tel'" in the March issue of American Lawyer. Included with the Big Suits report on the Intel v. Broadcom case, the article focused on Terry's 3-0 patent litigation record against Intel.
Terrence P. McMahon, Intellectual Property, IP Litigation, Trial
Intellectual Property Practice was recommended as one of "Six Strong IP Law Firms" in an article published in the March issue of Washington Business Forward. The article, "Smart Moves on Intellectual Property," lists three IP boutique firms and three general practice law firms. The article addresses the benefits and sales pitch of general practice firms like McDermott arguing they can offer clients a broader range of services. Ray Lupo agreed commenting, "Patent and IP boutiques don't have some of the broader range of expertise that comes up in patent cases. We sell that we have both." McDermott was also mentioned as having 140 IP lawyers, as well as currently handling 60 patent infringement cases in federal courts and at the International Trade Commission.
Intellectual Property, IP Litigation, Patent Prosecution
Terry McMahon was profiled as one of the "biggest ripples in the lateral pond" (2001) in the February 2002 issue of American Lawyer.
