Cross-border and domestic intellectual property transactions have become standard practice for many businesses. In this competitive global marketplace, technological innovation and name recognition are fundamentals for any company to succeed. To manage this, clients need experienced legal counsel that is well versed in negotiating and closing sales, licensing, outsourcing, technology research and development, and other agreements and contracts.
The technology and outsourcing team at McDermott helps our clients structure and document commercial IP agreements to minimize business and financial risks while achieving short- and long-term objectives. Our team includes lawyers with more than three decades of experience advising national and multinational clients operating in a wide range of industries, including aviation, banking and finance, defense, energy, entertainment, life sciences, natural resources, real estate, technology and telecommunications.
We have represented clients in inbound and outbound IP and related transactions across North America, Europe, the Asia-Pacific region, Latin America and Africa, and have been recognized as leading practitioners by publications and ratings agencies such as Chambers Global, Chambers USA and The Best Lawyers in America.
We advise clients on the purchase, sale and sharing of intellectual property assets, and provide comprehensive counsel on privacy, data security and technology transfers, among other issues. Our lawyers also represent businesses involved in the licensing of technology assets, whether from educational and research institutions, privately held R&D companies and publicly traded corporations, or to their own clients and customers. Our lawyers have significant experience in cloud computing, software as a service (SaaS) and robotics, and frequently negotiate IP transactions and agreements in the life sciences industry, including biomedical and medical devices.
BlackBerry in several patent infringement cases, including:
A complete victory for the client following a two-week trial involving a three-patent suit, which resulted in the jury finding all three patents not infringed and invalid. NXP B.V. v. BlackBerry Limited, et al., Case No. 6-12-cv-00498 (Middle District of Florida).
A successful defense where the case settled favorably for our client the evening before closing arguments. Innovative Sonic Ltd. v. BlackBerry (f/k/a Research In Motion Ltd) et al., Case No. 6-10-cv-00455 (Northern District of Texas).
Brocade, Citrix and Barracuda against Parallel Networks, a non-practicing entity, in patent infringement lawsuits related to web-caching technology, in the District Court of Delaware. We forced Parallel to dismiss all claims with prejudice and with no payment by our clients. Parallel Networks, LLC v. Barracuda Networks, Inc., Case No. 1-13-cv-01412; Parallel Networks, LLC v. Brocade Communications Systems, Inc., Case No. 1-13-cv-01413; Parallel Networks, LLC v. Citrix Systems, Inc., Case No.1-13-cv-01414.
Panasonic in successful outcomes of multiple matters, including:
A favorable settlement for Panasonic and Nintendo in an International Trade Commission (ITC) investigation instituted by non-practicing entity, Optical Devices LLC. Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (USITC 337-TA-897).
A victory in an ITC investigation involving Black Hills Media and accusations of infringing five US patents. In the matter of Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (USITC 337-TA-882)
Seagate Technology in achieving a full summary judgment victory. Convolve and the Massachusetts Institute of Technology sued Seagate and its customer, Compaq Computer Corporation. Convolve asserted misappropriation of no less than 57 trade secrets, infringement of three patents, breach of a nondisclosure agreement and various other business torts, seeking damages in excess of a billion dollars. Convolve, Inc. v. Compaq Computer Corp., No. 00-cv-5141-GBD-JCF (Southern District of New York). This case prompted the landmark Federal Circuit decision, In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), which overturned 24 years of precedent in Seagate’s favor, abolishing the duty of care standard for willful infringement.
Brocade Communications in securing a $112 million judgment from a patent, copyright and trade secret infringement action. The case involved 13 patents on load balancing and high-availability of networking devices, as well as trade secrets and copyright claims. After a three-week trial, the jury returned a unanimous verdict. Following trial, the court issued permanent injunctions barring A10 from making, using or selling devices that infringed Brocade’s patents and trade secrets. Brocade v. A10 Networks, Case No. 5-10-cv-03428-PSG (Northern District of California).
Blackboard, a leading educational technology company, in successfully resolving multiple patent infringement cases, including:
A qui tam false patent marking action in which the North Texas Patent Group sued Blackboard alleging its products were marked with a patent whose independent claims had previously been held invalid and because it was marking a software product with method claims. The court ultimately agreed with Blackboard’s position on every issue and rejected the plaintiff’s theories. North Texas Patent Group, Inc. v. Blackboard, Inc., Case No. 1-10-cv-06161.
Infringement allegations of two patents related to online conferencing and collaboration. The court’s ruling left Spatium with only two of the 39 patent claims it asserted originally. The remaining claims were dismissed with prejudice, with no payment by our client. Spatium Innovations LLC v. Blackboard Inc., Case No. 1-14-cv-00218 (Eastern District of Virginia).
Citrix Systems and Citrix Online in a complete summary judgment victory. Pixion asserted five patents against Citrix related to fundamental aspects of web-based conferencing. The US Court of Appeals for the Federal Circuit affirmed the district court’s judgment. Pixion, Inc. v. Citrix Systems, Inc, Case No. 3-09-cv-03496 (Northern District of California).
Diablo Technologies in a complete jury trial victory against its former development partner, Netlist, who had accused Diablo of eight counts of trade secret misappropriation, two counts of breach of contract, incorrect inventorship of Diablo’s patent and two counts of trademark infringement and false advertising under the Lanham Act. Netlist Inc. v. Diablo Technologies Inc., Case No. 13-cv-5962 YGR (Northern District of California).
Ricoh, in a first-of-its-kind change of venue motion (granted by the presiding judge) in the Eastern District of Texas, which moved the matter to the District of Delaware. As a result of an Alice-based (Sec. 101) motion, all activity in the district court was stayed pending a decision on subject matter eligibility and a settlement was quickly reached that was several orders of magnitude less than Cyberfone’s earlier demands. Cyberfone Systems LLC v. Ricoh Americas Corporation, et al, No. 1-14-cv-01490 (District of Delaware).
Static Control Components, a manufacturer of parts for printer toner cartridges, in the successful representation of a Lanham Act false advertising case involving claims that Lexmark made false statements about Static’s products. Static Control Components v. Lexmark International, Civil Action No. 5-04-cv-84 (Eastern District of Kentucky).