Patent Litigation

Patent litigation is high-stakes, typically with millions of dollars in issue, and the legal, technology and damages issues that arises are usually very complex.

Our team of patent litigators has nearly two hundred years of collective experience representing both plaintiffs and defendants handling such complex matters, including as partners at some of the largest international law firms.  They have successfully tried and settled dozens of high-stakes patent suits for clients of all sizes in numerous industries, including life sciences (including both Hatch-Waxman and medical devices cases), chemical, electronics, mechanical, software, business methods, telecommunications, manufacturing, and consumer goods.  Several of our lawyers have scientific and engineering degrees from top universities, and two of our lawyers have PhDs in scientific fields.

At the same time, our attorneys are very business-oriented and are focused on achieving results efficiently and in ways that optimize our clients’ business objectives.  We litigate patent disputes in the federal district courts (such as the Southern District of New York, District of New Jersey, District of Delaware, E.D. Texas, W.D. Texas, E.D. Virginia, E.D. Wisconsin, N.D. Cal., C.D. Cal., and others), as well as in the Federal Circuit Court of Appeal, the International Trade Commission (ITC) and the U.S. Patent & Trademark Office (USPTO).  We also handle disputes involving patents in alternative dispute fora such as JAMS, WIPO, AAA (including the ICDR), and the ICC.

Representative patent matters handled by our attorneys include:

Patent Ownership, Inventorship and Licensing Disputes

• Arbitrated patent inventorship dispute involving medical device and procedure relating to human reproductive system (JAMS).
• Represented major retailer in litigation alleging breach of a patent license and patent licensee estoppel; established important Second Circuit precedent in Rates Technology, Inc. v. Speakeasy and Best Buy (establishing that a clause in a settlement agreement that bars a patent licensee from later challenging the patent’s validity is void for public policy reasons if the settlement was entered into prior to the initiation of litigation between the parties).
• Arbitrated patent inventorship and ownership dispute (also involving trade secret and breach of contract claims) between a Canadian biopharmaceutical company and a U.S. biopharmaceutical firm involving inventorship and ownership of patent applications for methods of treating Alzheimer’s disease (ICC).
• Negotiated resolution of patent indemnification provisions between generic manufacturer and supplier of critical active ingredients.

Hatch-Waxman & Biotechnology Cases

• Tried pharmaceutical patent case between a Japanese pharmaceutical company and a Canadian generic pharmaceutical company under the Hatch-Waxman Act involving drug for treating ear infections.
• Defeated motions for temporary restraining order and a preliminary injunction brought by patent holder against large generic drug manufacturer.
• Won ANDA patent infringement trial in S.D.N.Y. involving $1.5 billion pharmaceutical product, resulting in favorable post-trial settlement.
• Handled several Hatch-Waxman cases for branded manufacturer relating to smoking cessation and anti-depressant drug.
• Handled several Hatch-Waxman cases for branded manufacturer relating to oral syrup drug for gastroesophageal reflux disease and gastic ulcer treatments.
• Handled patent litigation involving pharmaceutical compositions for the treatment of hair loss

• Prevailed on invalidity challenge on the basis of a lack of written description, anticipation and non-obviousness in matter involving patent for the improvement of DNA sequencing and PCR-based methods, affirmed by the Federal Circuit.

• Represented diagnostics company in multi-district patent infringement litigation involving patents for genetic-based tests to detect genes linked to hereditary cancer and obtained a dismissal of all claims.
• Represented a UK-based inventor in a lawsuit seeking declaratory judgment of non-infringement and invalidity of patent claims covering testing methods for Down syndrome during pregnancy.
• Represented a Japanese laboratory in a patent infringement lawsuit involving genetically engineered mice.
• Represented a domestic agricultural biotechnology company in a patent infringement, patent licensing, and antitrust lawsuit involving genetically modified agricultural products.
• Represented a Swiss pharmaceutical company in a patent infringement jury trial and subsequent appeal in a case involving analogs of recombinant therapeutic proteins.
• Represented a domestic biotechnology company and Boston-area universities in a patent infringement jury trial and subsequent appeal in a case involving immune system treatment methods.
• Represented domestic pharmaceutical companies in a patent litigation involving methods for the recombinant expression of proteins.
• Provided freedom to operate opinions and pre-litigation counseling for a large domestic biotechnology company concerning therapeutic antibodies.
• Represented a large domestic biotechnology company in a patent litigation involving bacterially-produced recombinant therapeutic proteins.

Medical Devices

• Handled multiple patent infringement actions involving cardiovascular stents for various manufacturers, including several trials and appeals.
• Defended patent infringement claims on behalf of three major manufacturers of MRI machines, including two trials.
• Handled patent litigation involving ophthalmic lens manufacturing equipment.
• Handled patent litigation involving joint motion devices for use in MRI diagnostics.

Chemical

• Handled patent infringement action involving polymer masterbatches containing silanized titanium dioxide pigments.
• Tried liability and damages phases of patent infringement action involving catalysts for processing petroleum resulting in a $120 million damages award.
• Defeated motion for preliminary injunction for patent infringement brought against manufacturer of colored sunscreen.

• Handled patent litigation for oil company involving patents for isotactic polypropylene.

• Handled patent litigation involving patents for rubber-modified polyphenylene ether.

• Handled patent litigation involving patents for high impact engineering resins.

• Handled patent litigation involving patents for polyglycolic acid absorbable surgical sutures.

• Handled patent litigation involving patents for supercritical fluid chromatography.

• Handled patent litigation involving patents for endotoxin test kits.

• Handled patent litigation involving patents for silver lithography.

Electrical & Mechanical and Other Manufacturing

• Represented a Danish manufacturer in patent litigation involving laser transponders.
• Obtained summary judgment of non-infringement in the defense of a patent litigation lawsuit brought by a former employee of major manufacturer involving technology for computer numerical controlled milling machines.
• Represented sprinkler system manufacturer in multiple patent litigations relating to industrial sprinkler head manufacturing and design.
• Won a Federal Circuit appeal for an international semiconductor equipment manufacturer, vacating the lower court’s judgment of patent infringement and a multimillion dollar jury verdict.
• Handled several patent infringement actions directed to personal watercraft technology.
• Handled patent litigation involving sub-atmosphericion implant gas delivery systems used in the fabrication of semiconductor chips.
• Handled district court and ITC litigation involving 33 patents directed to personal watercraft.
• Secured $0 pre-answer dismissal of patent infringement complaint against U.S. subsidiary of Global 100 technology company.
• Won motion to transfer declaratory judgment patent action from S.D.N.Y. to E.D.TX.
• Successfully defended a major semiconductor chip manufacturer against a multimillion dollar patent infringement action; settled favorably during trial.
• Successfully defended a major automobile manufacturer in a multimillion dollar patent infringement action relating to vehicle navigation system, resulting in a favorable pre-trial settlement.
• Represented a manufacturer of factory automation systems in a patent infringement appeal to the Federal Circuit and successfully resolved the subsequent damages phase in the district court.
• Obtained summary judgments of indefiniteness and non-infringement in patent litigation involving five patents directed to engine ignition timing and fuel injection control systems.
• Obtained dismissal of patent litigation after successful patent reexamination challenge in the U.S. Patent and Trademark Office involving snowmobile suspension system.
• Handled patent litigation regarding high performance snowmobile chassis.
• Obtained summary judgment of non-infringement in patent litigation regarding diesel engine combustion processes.

• Handled patent litigation involving patents for numerical-controlled measuring machines.

• Handled patent litigation involving patents for linear guides.

• Handled patent litigation involving patents for magnetic writing panels.

• Handled patent litigation involving patents for ionomer resin-covered golf balls.

• Handled patent litigation involving patents for machine vision and auto i.d. in textile manufacturing.

• Handled patent litigation involving patents for process for making polyester tire cord.

• Handled patent litigation involving patents for [patent infringement hydrofluorocarbon refrigerants.

• Handled patent litigation involving patents for containers for storing and transporting silicon wafers used for making semiconductors.

• Handled patent litigation involving patents for laptop computers.

Business Methods and Software

• Handled damages portion of two multimillion dollar patent infringement cases for pioneering e-signature company.
• Represented a European telecommunications company in patent litigation involving international text messaging.
• Handled infringement portion of large patent and trade secret case on behalf of leading media and marketing analytics company.
• Handled patent litigation involving incentive marketing programs.
• Handling patent litigation regarding electronic tickets
• Represented company in connection with patent licensing and monetization efforts concerning two-factor authentication of text messages and other communications methods used for appointments, various sharing economy applications, and payments applications.

Consumer Goods and Services

• Handled patent infringement action involving disposable diapers resulting in a $178 million damages award.
• Handled several patent cases involving kitchen utensils and mechanical product designs.
• Handled patent litigation for franchisor of game trucks for special events resulting in patentee disclaiming its patent and cancelling patent with PTO.
• Rendered non-infringement opinion in matter involving design patents and trade dress in shoe industry.

International Trade Commission Investigations

• In the Matter of Certain Snowmobiles With Engines Having Exhaust Temperature-Controlled Engine Technology and Components Thereof (U.S. ITC Inv. No. 337-TA-940 (2014).  First chair counsel for Bombardier in ITC investigation involving three Arctic Cat patents directed to engine control systems.  Investigation terminated following favorable claim construction hearing.
• In the Matter of Certain Semiconductor Devices, DMA Systems, and Products Containing Same (U.S. ITC Inv. No. 337-TA-607 (2008)).  Represented 15 non-parties that received subpoenas served by complainant Samsung; successfully quashed all 15 subpoenas.
• In the Matter Of Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets (U.S. ITC Inv. No. 337-TA-543 (2007)):  Represented Research In Motion in Federal Circuit appeal of ITC limited exclusion order against non-respondents.  Federal Circuit vacated limited exclusion order on grounds that the ITC lacked authority to issue a limited exclusion order against non-respondents.
• In The Matter Of Certain Personal Watercraft and Components Thereof (U.S. ITC Inv. No. 337-TA-452 (2002): Lead counsel for Bombardier in ITC investigation involving 11 Yamaha patents directed to personal watercraft.  Obtained dismissal of five of the patents before ITC hearing through motions for summary determination of noninfringement, invalidity, and lack of jurisdiction (no domestic industry).  The matter was favorably settled after the hearing on the remaining five patents.

• In the Matter of Certain Polyethylene Terephthalate Yarn and Products Containing Same. (ITC proceeding under 19 U.S.C. § 1337 from 2001 to 2003 by Honeywell International against Hyosung Corporation) [alleged infringing importation of polyester tire cord].

Counsel For Amicus Curiae

• Lighting Ballast Control v. Philips Electronics, (Fed. Cir. 2013): Co-authored Amicus brief on behalf of the American Intellectual Property Law Association.
• Symbol Technologies, Inc. et al. v. Lemelson Medical Education & Research Foundation, LP; (Appeal to Federal Circuit from D. Nev.)[suit for declaratory judgment of patent prosecution laches: prepared and submitted amicus curiae brief on behalf of the Ass’n of the Bar of the City of New York].
• Integra LifeSciences I, Ltd. et al. v. Merck KGaA et al. (Appeal to Federal Circuit from S.D. Cal.) [suit for patent infringement; prepared and submitted amicus curiae brief on behalf of the Ass’n of the Bar of the City of New York in support of Merck KGaA’s petition for rehearing en banc].
• Tafas et al. v. Doll (Appeal to Federal Circuit from E.D. Va.) [suit to enjoin promulgation of certain USPTO rules; prepared and submitted amicus curiae brief on behalf of the New York Intellectual Property Law Association in support of appellees in appeal from summary judgment against USPTO].
• Hyatt v. Kappos (Petition to Federal Circuit for en banc rehearing of panel decision affirming summary judgment by D.D.C. in favor of the USPTO) [suit in U.S. district court for de novo judicial review of USPTO’s rejection of patent application on computer imaging technology; prepared and submitted amicus curiae brief on behalf of the New York Intellectual Property Law Association in support of neither party in rehearing en banc].
• Microsoft Corp. v. i4i Limited Partnership (Appeal by Microsoft to U.S. Supreme Court on writ of certiorari to the Federal Circuit) [suit by i4i for infringement of patent on computer software; prepared and submitted two (2) amicus curiae merits briefs on behalf of IP Advocate and the New York Intellectual Property Law Association in support of affirmance].
• Kappos v. Hyatt  (Appeal by USPTO to U.S. Supreme Court on writ of certiorari to the Federal Circuit) [suit for de novo judicial review in U.S. district court of USPTO’s rejection of patent application on computer imaging technology; prepared and submitted amicus curiae merits brief on behalf of the New York Intellectual Property Law Association in support of neither party].
• Merck & Co. v. Louisiana Wholesale Drug Co. (Petitions by defendants Merck and Upsher-Smith Laboratories Inc. to U.S. Supreme Court on writ of certiorari to the Third Circuit) [class action suit for violation of antitrust laws arising from “reverse-payment” settlement agreement in Hatch-Waxman Act ANDA Paragraph IV patent infringement litigation; co-authored and submitted amicus curiae brief on behalf of the New York Intellectual Property Law Association in support of petitions].
• Federal Trade Commission v. Actavis Corp. (On Petition to the U.S. Supreme Court for writ of certiorari to the U.S. Court of Appeals for the Third Circuit) [action for violation of anti-trust laws arising from “reverse-payment” settlement agreement in Hatch-Waxman ANDA Paragraph IV “K-Dur” patent infringement litigation; authored and submitted amicus curiae brief on behalf of the New York Intellectual Property Law Association in support of neither party].
• Alice Corp. v. CTV Bank (On Petition to the U.S. Supreme Court for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit) [patentability under 35 U.S.C. § 101 of computer-related inventions as “abstract ideas”; contributed to and submitted amicus curiae brief on behalf of the Association of the Bar of the City of New York in support of neither party].
• EN BANC BRIEF OF THE ASSOCIATION OF AMICUS COUNSEL, REALVIRT, LLC, ISSHIKI & CO., AND HIRAIDE & TAKAHASHI AS AMICI CURIAE IN SUPPORT OF PLAINTIFF-APPELLEE NANTKWEST, INC., filed January 23, 2018 in the U.S. Court of Appeals for the Federal Circuit in  NantKwest, Inc. v. Matal,  No. 2016-1794. The court’s en banc decision is reported as NantKwest, Inc. v. Iancu, 898 F.3d 1177, 127 U.S.P.Q.2d 1497 (Fed. Cir. 2018).  
• BRIEF OF AMICUS CURIAE THE ASSOCIATION OF AMICUS COUNSEL IN SUPPORT OF NEITHER PARTY, filed August 31 2017 in the U.S. Supreme Court in Oil States Energy Servs. LLC v. Greene’s Energy Group, LLC, No. 16-712. The Court’s decision is reported at 138 S.Ct.1365, 126 U.S.P.Q.2d 1293 (2018).
• AMICUS CURIAE BRIEF OF THE ASSOCIATON OF AMICUS COUNSEL IN SUPPORT OF PETITIONER AND URGING CONSOLIDIATION WITH IANCU V. NANTKWEST, INC., NO. 18-801 FOR JOINT ARGUMENT AND DECISION, filed May 16, 2019 in the U.S. Supreme Court in Booking.Com B.V.v. United States Patent and Trademark Office et al., No. 18-1309. The petition for writ of certiorari to the Fourth Circuit on the attorney fee award issue was granted and a GVR to that court was ordered on July 7, 2020. The court’s ruling on remand is pending.   
• BRIEF OF AMICUS CURIAE THE ASSOCIATION OF AMICUS COUNSEL, INFOTECH LAW OFFICES, ISSHIKI & CO., AND LAW OFFICES OF HIRAIDE & TAKAHASHI IN SUPPORT OF RESPONDENT, filed July 22, 2019 in the U.S. Supreme Court in Peter v. NantKwest, Inc., No. 18-801. The Court’s decision was issued December 11, 2019 and is reported at 589 U.S. ___ (2019). 
• BRIEF OF AMICUS CURIAE THE ASSOCIATION OF AMICUS COUNSEL IN SUPPORT OF RESPONDENT, filed February 19, 2020 in the U.S. Supreme Court in United States Patent and Trademark Office, et al. v. Booking Com B.V., No. 19-46. The Court’s decision was issued June 30, 2020 and is reported at 591 U.S. ___ (2020).  
• BRIEF OF UNITED STATES SENATOR THOM TILLIS, HONORABLE PAUL R. MICHEL, AND HONORABLE DAVID J. KAPPOS, AS AMICI CURIAE IN SUPPORT OF PETITION BY AMERICAN AXLE MANUFACTURING, INC. FOR A WRIT OF CERTIORARI TO THE U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT, filed March 1, 2021 in the U.S. Supreme Court in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al. No. 20-891. The Court’s decision is pending.    
• LETTER OF KELLY L. MORRON, ESQ. ON BEHALF OF THE ASSOCIATION OF AMICUS COUNSEL TO THE NATIONAL INSTITUTE OF STANDARDS AND TECHNOLOGY RE PROPOSED CHANGES TO 37 C.F.R. 401.6 GOVERNING BAYH-DOLE ACT MARCH-IN RIGHTS UNDER 35 U.S.C. 293 filed March 24, 2021.