As technological innovation continues to increase, so do the risks associated with developing, launching and protecting new products and processes. Judicial rulings (including the US Supreme Court’s Alicedecision), the revamped inter partes review process, and the passage of the America Invents Act—along with a growing reliance on outsourced and joint-venture research activities—means that the potential for patent disputes has grown exponentially.
McDermott’s intellectual property litigation team is well known for managing and conducting complex patent litigation worldwide. Our IP litigators have extensive experience in the practices and procedures involved in pursuing cases in US district and appellate courts, the US Supreme Court, and the courts of Europe and China.
We have represented clients of varying sizes and from a wide range of industries in numerous matters heard before the International Trade Commission (ITC). In conjunction with lawyers in our European offices, we regularly coordinate pan-European litigation, including advising on opposition proceedings in the European Patent Office. We have developed and actively maintain a network of foreign associates focused on intellectual property law and, as a result, are able to protect clients’ rights in international tribunals and agencies around the world.
We have also achieved key successes in cases against non-practicing entities (NPEs), and have specific experience in disputes involving technologies such as semiconductors, telecommunications, pharmaceuticals, medical devices and other life sciences products.
We have argued more than 100 appeals before the US Circuit Court of Appeals for the Federal Circuit and its predecessor, the Court of Customs and Patent Appeals, helping clients win significant victories. Even in cases where clients have been successful in lower courts, they often turn to our IP lawyers to defend their appeals to our extensive experience and knowledge with regard to the practices, procedures and judges at the Federal Circuit. Our IP litigators are regularly involved in programs during the Federal Circuit Judicial Conference and the Giles S. Rich Intellectual Property Inn of Court. Members of our IP litigation team, a group which includes former clerks, are also active in the Federal Circuit Bar Association and often teach and lecture about appellate IP decisions, with particular emphasis on decisions of the Federal Circuit.
Active in High Profile Patent Districts
The Central District of California, Northern District of California, District of Delaware, Northern District of Illinois, District of New Jersey, Eastern District of Texas, Eastern District of Virginia and Western District of Wisconsin, among others, are widely recognized among US district courts as the most active jurisdictions for patent litigation filings, generally because they are the most favorable to patent holders (based on recent studies of time-to-trial, success rates and median damages awards). McDermott’s patent litigation team is familiar with the practices and procedures in these venues. We also have a longstanding record of achieving favorable outcomes in these courts on behalf of our clients.
Delaware: McDermott has significant experience litigating in the District of Delaware, with more than 35 representations in the district in the past five years. As a result, our patent litigators know the judges, local counsel and communities. We also know how to utilize the local practice to our clients’ strategic advantage. We work closely with clients to determine whether or not to pursue cases in this key venue. Moreover, McDermott’s patent litigation team, which includes a number of former clerks, also features trial lawyers who have successfully pursued infringement claims or defended our clients’ rights in Delaware district court.
Eastern District of Texas: The US District Court for the Eastern District of Texas remains the most active jurisdiction in the country. On average, one out of every four patent cases in the United States is filed in this court. In the past five years, McDermott has handled more than 65 representations in the district. Consequently, we understand the unique challenges parties face before the court and are deeply familiar with the processes and procedures necessary to move a case through this extraordinarily busy docket. Our patent litigators, a group that includes former clerks, have successfully represented numerous clients in patent disputes, including in matters involving the infringement claims of NPEs. We are also active participants in the Eastern Texas Bench & Bar Conference and the Federal Circuit Bar Association, which has provided us with additional opportunities to develop relationships with the local judges.
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).
Ambry Genetics in its successful defense against a 16-patent suit and a preliminary injunction, which led to the subsequent defeat of Myriad Genetics’ 15-year patent-protected monopoly on BRCA gene testing, a process that assesses a woman’s risk of developing breast or ovarian cancer. University of Utah Research Foundation et al. v. Ambry Genetics Corporation, Case No. 2-13-cv-00640-RJS (District of Utah). Six of those patents to stop Ambry resulted in a Federal Circuit opinion In Re Brca1- and Brca2-Based Hereditary Cancer Test Patent
Panasonic in successful outcomes of multiple matters, including:
A favorable settlement for both 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).
Biomet (k/n/a Zimmer Biomet) in a favorable settlement of a 15-patent infringement action involving spinal, hip and knee implants and surgical methods brought by non-practicing entity, Bonutti Skeletal Innovations, a subsidiary of Acacia. Biomet Inc. v. Bonutti Skeletal Innovations LLC, Civil Case No. 13-00176-JVB-CAN (Northern District of Indiana).
Citrix Systems and Citrix Online in a complete summary judgment victory after Pixion asserted five patents against Citrix relating 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).
Tolmar and Sandoz in a complete victory of a patent infringement case under the Hatch-Waxman Act involving a generic substitute of Dovonex®, a $100 million-a-year branded medication for treatment of a skin condition known as psoriasis. LEO Pharma A/S v. Tolmar Inc., Case No. 1-10-cv-00269 (District of Delaware).
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).
Depomed, a specialty pharmaceutical company focused on developing and commercializing products to treat pain and other central nervous system conditions, in successful outcomes of multiple matters, including:
A case involving 29 patent claims from seven patents. After a seven-day bench trial, the court ruled the defendants could not market the generic drug until the expiration date of the last of the patents-in-suit in February 2024. Depomed, Inc. v. Actavis Elizabeth LLC et al., Case No. 3-12-cv-01358 (District of New Jersey).
The first Hatch-Waxman generic drug litigation case in the Northern District of California. We helped the client prevail on all 10 claim construction issues presented to the court. Depomed, Inc. v. Lupin Pharmaceuticals, Inc., et al.
Diablo Technologies in a complete jury trial victory against former development partner, Netlist, which 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).
Seagate Technology in full a summary judgment victory in a case that spanned more than 14 years. In 2000, 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. Seikagaku Corporation and Zimmer in securing a verdict of non-infringement on all asserted claims filed by Genzyme Corporation. Genzyme filed a lawsuit against Seikagaku and Zimmer alleging that Seikagaku’s product,Gel-One®, distributed by Zimmer, infringed Genzyme’s patent related to the method of using a single injection of hyaluronic acid to treat osteoarthritis of the knee. Genzyme Corp. v. Seikagaku Corp., et al., Case No. 1-11-cv-10636-DPW (District of Massachusetts).