Wiley Rein's Patent Practice has built a record of obtaining successful outcomes for clients from a variety of industries. We have considerable experience in representing both plaintiffs and defendants in high-profile and high-stakes cases. We handle patent infringement litigation and application prosecution and provide strategic counsel on patent enforcement, licensing, and intellectual property portfolio evaluation.
Our Practice garnered national attention following the historic settlement we earned for NTP, Inc. in a patent infringement case against the manufacturer of BlackBerry wireless devices. The settlement was one of the largest of its kind and resolved a fiercely contested case that, as noted by one media outlet, "captured the attention of Wall Street, the Supreme Court and the governments of both Canada and the United States."
Drawing on a significant depth of legal talent, technical experience, and business acumen, Wiley Rein has built a strong record of successful outcomes for clients in a variety of industries, including biotechnology, pharmaceuticals, financial services, software, consumer electronics, medical devices, and semiconductors.
Our clients include numerous Fortune 500 companies such as Verizon Wireless as well as market-leading companies such as TomTom, Mylan Pharmaceuticals, Impax Laboratories, Carl Zeiss, and Openet. As both plaintiffs and defendants in high-profile and high-stakes cases, we litigate patent cases in every major jurisdiction across the country, including the "Rocket Dockets" in Virginia and Texas, district courts in Delaware, California, New York, and New Jersey and the U.S. Court of Appeals for the Federal Circuit.
Many of our attorneys clerked for judges in district courts or the Federal Circuit. While our primary areas of focus are in pharmaceutical/chemical, electrical/software, and financial services litigation, we have technical and legal experience across a broad range of technologies.
We are trial lawyers specializing in patent cases. Our approach is to prepare a case with the expectation that it will go to trial while also pursuing a win for our clients through motions practice.
Our intensive preparation and dedication to staffing matters leanly and efficiently allows us to provide cost-effective representation to our clients.
From our experience, having a small team that is fully immersed in the facts is the most effective strategy for a patent litigation case. With the full resources of the firm behind us, we can increase staffing as needed, but the core team will handle the issues that we believe to be dispositive.
A sample of significant representations includes:
- Obtaining summary judgment of non-infringement on behalf of client Openet Telecom in the Eastern District of Virginia in which competitor and software giant Amdocs alleged that Openet’s products infringed four Amdocs patents.
- Representing a large nationwide telecommunications carrier in numerous multi-defendant patent infringement actions in the Eastern District of Texas, Northern District of California, District of Delaware, and the Eastern District of Virginia in lawsuits pertaining to text messaging, wireless modems, and other cellular phone features. Notable cases include obtaining a jury verdict patent invalidity and non-infringement in the Eastern District of Virginia in a case in which the plaintiff sought $140 million in damages.
- Representing TomTom in numerous infringement lawsuits filed by non-practicing entities in courts across the country, including in the Northern District of Illinois, District of Delaware, Eastern District of Virginia, District of Nevada, and the Eastern District of Texas. In one notable case, we obtained summary judgment of invalidity against a widely licensed patent involving touchscreen keyboards.
- Obtaining successful jury verdicts of willful infringement and validity for Carl Zeiss Vision GMBH and Carl Zeiss International GMBH (CZV) against a major competitor. The process patented by CZV revolutionized progressive eyeglass lenses and the way progressive eyeglass lenses are produced. We also obtained a declaration that the case was exceptional and a permanent injunction. The case was settled prior to appeal.
- Representing ARM in numerous lawsuits where its customers have been sued for using ARM processor cores in their chipsets. Includes, for example, a victory in the Eastern District of Texas and affirmed by the Federal Circuit.
- Securing a victory for Atico International USA, Inc. and Target Corporation in defense of claims of patent infringement pertaining to digital picture frames filed by Digital Spectrum Solutions, Inc. (DSSI) in the Central District of California. The court construed the claims of the asserted patent and simultaneously granted Atico’s motion for summary judgment of no literal infringement and no infringement under the doctrine of equivalents.
- Securing, on behalf of patent holder NTP Inc., a $612.5 million patent infringement settlement with Research In Motion Limited (RIM), the maker of BlackBerry wireless email devices. The settlement, one of the largest ever of its kind, resolved a fiercely contested, high-profile patent case stemming from a 2002 jury trial in which the firm successfully argued that RIM’s core BlackBerry line of wireless email products, software, and services willfully infringed NTP patents.
- Representing plaintiff Cross Atlantic Capital Partners (XACP) in its patent infringement claim against Facebook Corporation that it holds the rights to a patent for an Internet-based “community for users with common interests to interact in” that was invented in 2000.
In the pharmaceutical patent infringement and Hatch-Waxman context, we have been involved in litigations concerning the following products:
- Acetaminophen IV (Ofirmev®)
- Allopurinol (Zyloprim®)
- Carbidopa/Levodopa (Sinemet® CR)
- Cetuximab (Erbitux®)
- Cyclobenzaprine HCl (Amrix®)
- Dextromethorphan/Quinidine (Nuedexta®)
- Doxycycline Hyclate (Doryx®)
- Dutasteride (Avodart®)
- Erlotinib (Tarceva®)
- Fenofibrate (Antara®)
- Gabapentin (Gralise®)
- Interferon (Roferon®-A)
- Levofloxacin (Levaquin®)
- Loratadine (Claritin®)
- Micronized Glyburide (Glynase®)
- Omeprazole (Prilosec®)
- Oxybutynin Chloride (Ditropan XL®)
- Tamoxifen Citrate (Nolvadex®)
- Tolterodine Tartate (Detrol® LA)
- tPA (Activase®)
Representative successes include:
- Securing a victory at trial for clients Mylan and Esteve in their defense of a protracted patent infringement litigation brought by AstraZeneca in the Southern District of New York concerning Mylan/Esteve’s generic omeprazole product equivalent to Astra’s Prilosec® product.
- Securing a victory at trial for Impax Laboratories in a Hatch-Waxman patent litigation involving a generic version of Doryx®. The ruling was affirmed on appeal.
- Securing a victory at trial and subsequent appeal in Alza v. Mylan, a rare obviousness invalidation of a patent protecting a blockbuster drug oxybutynin chloride (Ditropan XL®) in a matter that the Federal Circuit used as a template for explaining its obviousness law.
- Representing ImClone Systems, Inc. in patent actions before the District of Massachusetts and Federal Circuit involving the blockbuster cancer treatment drug Erbitux®.
- Representing Zions Bancorporation, Zions First National Bank, and Amegy Bank of Texas in a multi-defendant patent litigation in the Eastern District of Texas pertaining to secure webpage authentication.
- Representing PPS Data in asserting multiple patents relating to check imaging and processing.
- Representing Zions First National Bank in a patent infringement action brought by NextCard LLC in the Eastern District of Texas involving two patents covering rejection of online credit applications.
- Defending a top-50 financial institution in a patent infringement action brought in the Eastern District of Texas by Mirror Imaging, LLC involving two patents covering electronic storage and retrieval of financial documents. Mirror Imaging dropped the lawsuit against our client shortly after the Markman hearing.
- Representing multiple other financial institutions in patent infringement actions involving electronic imaging, transmission, and presentation of financial documents, bankcard processing systems, encrypting financial transactions, and other Internet and business methods.
- Securing a victory in the District of New Jersey for Molson Coors Brewing Company (MCBC) in defense of claims of patent infringement pertaining to computer-implemented methods and systems for investors to obtain mutual funds in a foreign currency by swapping rights with a willing co-investor in another country. The court granted MCBC’s motions for summary judgment of invalidity and non-infringement, and the case was dismissed on appeal.
The firm files and prosecutes patent applications in the United States and around the world. Our Patent attorneys have experience in a wide variety of technologies, including electrical, chemical, biotechnology, pharmaceutical, software, bioinformatics, Internet, and mechanical, as well as e-commerce and other business methodologies. The firm represents challengers as well as patent holders in patent reexamination proceedings (including ex parte and inter partes proceedings).
Wiley Rein also represents clients in appeals and interference proceedings before the Board of Patent Appeals and Interferences.
Licensing, Due Diligence and Intellectual Property Valuation
The firm assists clients in the licensing, sale, and purchase of patents and technology related thereto. Also, in connection with clients’ purchase of assets, the firm evaluates the intellectual property portfolio, including the validity of the patents being acquired, whether or not others are currently infringing the technology, and the clients’ vulnerability to others’ patented technology, and analyzes potential litigation outcomes.
International Trade Commission Section 337 Proceedings
Our attorneys are experienced in representing clients in patent infringement proceedings before the U.S. International Trade Commission (USITC) under Section 337 of the Tariff Act, which is designed to prevent the entry of infringing goods into the United States and to provide a resolution on an expedited schedule—typically within 12 months. We regularly serve clients in these specialized proceedings by successfully combining our expertise in international trade, intellectual property, and other fields, becoming especially active in bringing 337 actions against parties engaged in selling infringing pharmaceuticals over the Internet. Among our additional successes was a prominent victory in a case involving novel microwave filters on satellites that, based upon their light weight, enabled increased satellite life.
The firm’s capabilities in representing clients during these accelerated proceedings are extensive and widely recognized, with John R. Shane being rated as a “Leading Lawyer” by Chambers USA.
In this arena, we have:
- Represented Lilly ICOS LLC as a complainant in an investigation involving Cialis® (In the Matter of Certain Tadalafil of Salts and Solvates Thereof, and Products Containing Same (Inv. No. 337-TA-539)). Our firm obtained a general exclusion order against infringing importation of the chemical in Cialis®.
- Represented Pfizer Inc. as a complainant in an investigation involving Viagra® (In re Matter of Sildenafil or any Pharmaceutically Acceptable Salt thereof, and Products Containing Same (Inv. No. 337-TA-489)). Our firm obtained a general exclusion order prohibiting all infringing imports, regardless of source, the most favorable outcome possible for a complainant in a Section 337 investigation.
- Represented Atico International USA, Inc., as a respondent, in an investigation involving batteries (In re Matter of Certain Zero-Mercury Added Alkaline Batteries (Inv. No. 337-TA-493)). The case was favorably settled before trial.
- Represented Space Systems/Loral in a patent infringement action before the USITC and obtained the equivalent of a preliminary injunction against Com Dev involving novel dual-mode dielectric microwave filters on satellites that, based upon their lightweight, enabled increased channel capacity and/or fuel storage on the satellites.
- Successfully defended Berwick Industries in patent infringement proceeding brought by 3M regarding gift-package bows that are shipped in flat packages to avoid damage and blossom into perfect bows on arrival when their strings are pulled (In re Pull-String Bows).
- Prepared a 337 complaint for a company owning a food-related patent, which was instrumental in resolving the dispute before an investigation was declared (resolution involved the sale of a product division to the accused infringer).
- Represented a European chemical company that was accused of infringing multiple patents and misappropriating trade secrets relating to plastic food casings; presented antitrust defenses; and subsequently settled the case on a favorable basis.
- Represented a Japanese semiconductor company accused of importing infringing memory devices. After investigation, the complaint was dismissed and refiled as a patent infringement case in U.S. District Court, where our client prevailed on the basis of an antitrust defense.
*Not admitted to the DC bar. Supervised by the principals of the firm.
News & Insights
News & Insights
- May 27, 2015 | Media MentionLaw360, Bloomberg BNA, Forbes, Policy and Regulatory Report
- May 27, 2015 | Press Release
- May 4, 2015 | San Diego, CA | EventINTA Annual Meeting
- April 23, 2015 | Press Release
- April 21, 2015 | Munich | EventMinimizing the Uncertainty Surrounding the Pathway: Insights Into USFDA's Current Initiatives Regarding the First Wave of Biosimilars ApplicationsACI's Summit on U.S. Biosimilars
- April 20, 2015 | Munich, Germany | EventDelving into the Mechanics of the USFDA Biosimilars Approval Process and Section 351(k) Applications Under the PathwayACI's Summit on U.S. Biosimilars
- April 17, 2015 | Baltimore, MD | EventPost-Grant Procedures at the Patent Office: Timely Cure or New Disease?University of Baltimore School of Law
- March 17, 2015 | Article
- March 16, 2015 | Media MentionJames Wallace and Brian Pandya Moderate Panels at Patent Enforcement Conference Sponsored by Wiley Rein and Bloomberg BNABNA's Patent, Trademark & Copyright Journal
- March 12, 2015 | San Francisco, CA | EventImpact of the Supreme Court on Patent Enforcement
- March 5, 2015 | EventBalancing the Costs and Benefits of Patent Litigation from Injunctions to DamagesACI's 5th Advanced Summit on Medical Device Patents
- March 3, 2015 | Webinar | EventAmerican Intellectual Property Law Association
- February 12, 2015 | Alert
- February 12, 2015 | Alert
- February 5, 2015 | Press Release
- January 21, 2015 | Media MentionBloomberg News
- January 7, 2015 | Press Release
- December 24, 2014 | Press Release
- December 15, 2014 | ArticleLaw360
- December 10, 2014 | ArticleAmerican Trade & Manufacturing Blog
- December 5, 2014 | ArticleBloomberg BNA's Patent, Trademark & Copyright Journal
- November 3, 2014 | Press Release
- October 28, 2014 | Press Release
- October 24, 2014 | Press Release
- October 23, 2014 | Plano, TX | EventEastern District of Texas Bench & Bar Conference
- October 15, 2014 | Media MentionLaw360
- October 9, 2014 | Press Release
- September 2014 | ArticleFood and Drug Law Journal
- September 10, 2014 | Media MentionBloomberg News
- August 26, 2014 | EventAttorney Fees and Claim Construction in Patent Litigation: More Federal Circuit Deference to the District Courts?Bloomberg BNA Webinar
- August 18, 2014 | Press Release
- August 7, 2014 | Arlington, VA | EventAmerican Intellectual Property Law Association 2014 Practical Patent Prosecution Training for New Lawyers
- July 29, 2014 | Media MentionForeign Policy
- June 2014 | ArticleIntellectual Property Today
- May 28, 2014 | ArticleLaw360By A. Neal Seth
- April 30, 2014 | Media MentionForbes, Law360
- April 28, 2014 | Media MentionBioWorld Today
- April 24, 2014 | New York, NY | Event22nd Annual Fordham Intellectual Property Law and Policy Conference
- March 25, 2014 | Chicago, IL | EventThe In-House Perspective on Medical Device Patent Litigation: Limiting Liability and Managing and Reducing CostsACI's Advanced Summit on Medical Device Patents: Comprehensive and Practical Patent Prosecution and Litigation Strategies for an Evolving IP Landscape 2014
- March 21, 2014 | EventFCBA's Patent Litigation Committee Webcast
- March 2014 | ArticleThe Rocket Docket News
- March 2014 | ArticleThe Metropolitan Corporate Counsel Vol. 22, No. 3
- February 27, 2014 | Media MentionFinancial Times' Policy and Regulatory Report
- February 26, 2014 | Washington, DC | EventOctane Fitness v. ICON Health & Fitness and Highmark Inc. v. Allcare Management Systems, Inc. - Post Argument DiscussionAmerican University Washington College of Law's Supreme Court Series
- February 24, 2014 | Media MentionLaw360
- February 18, 2014 | Media MentionBioWorld Today
- February 3, 2014 | Press Release
- January 24, 2014 | Media MentionBloomberg BNA
- 2008-2014 (annual editions) | ArticleMedical Device PatentsThompson Reuters WestLaw
- 2003-2014 (annual editions) | ArticleThe Patent Law HandbookThompson Reuters WestLaw
- December 11, 2013 | New York, NY | EventHandling Claims Occurring Along the Chain of Commerce: Extraterritoriality Issues in the Modern EconomyACI's Advanced Forum on Patent Litigation
- November 21, 2013 | Press Release
- November 1, 2013 | Press Release
- November 1, 2013 | Plano, TX | EventSuing and Being Sued. A Cost Benefit Analysis of the System Protecting IP. Would it Benefit from Innovation?2013 Eastern District of Texas Bench Bar Conference
- October 29, 2013 | ArticleLaw360
- October 22, 2013 | Media MentionThe Metropolitan Corporate Counsel
- October 2, 2013 | Media MentionLaw360
- October 2, 2013 | Press Release
- September 23, 2013 | New York, NY | EventComparing & Contrasting the Divergent Litigation Pathways of Small vs. Large Molecule Products: Examining the Impact of Differing Regulatory Schemes, Challenges Created Under the AIA & Lessons Learned from Recent Biosimilars Litigation in the US & AbroadThe International Congress on Paragraph IV Litigation
- August 15, 2013 | Press Release
- August 12, 2013 | Alert
- July 17, 2013 | ArticleWashington Legal Foundation's The Legal Pulse
- June 27, 2013 | Media MentionLaw360
- May 29, 2013 | Press Release
- April 29, 2013 | Press Release
- March 5, 2013 | Chicago, IL | EventProving or Disproving Joint Infringement: Bracing for the Fallout from Akamai in Device Method Prosecution and LitigationACI's Advanced Summit on Medical Device Patents: Comprehensive and Practical Patent Prosecution and Litigation Strategies for an Evolving IP Landscape 2013
- March 4, 2013 | Press Release
- February 21, 2013 | Media MentionLaw360
- January 31, 2013 | Ahmedabad, India | EventAn Interactive Session on Intellectual Property Rights in the U.S.Confederation of Indian Industry
- January 28, 2013 | Bangalore, India | EventAre Business Method Patents Still Alive in the United States?Global IP Convention
- January 24, 2013 | Press Release
- November 29, 2012 | Boston, MA | EventACI's Orphan Drugs and Rare Diseases Conference
- November 28, 2012 | Boston, MA | EventACI's Orphan Drugs and Rare Diseases Conference
- November 1, 2012 | Press Release
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- June 11, 2012 | Press Release
- June 7, 2012 | Press Release
- May 22, 2012 | Media MentionLaw360
- April 27, 2012 | Press Release
- April 16, 2012 | Las Vegas, NV | EventBroadcaster and the Beast: Tales of Copyright and Patent AdventuresThe NAB Show
- March 13, 2012 | Columbia, MO | EventUniversity of Missouri
- January 20, 2012 | ArticleFirst-Inventor-to-File, or First-to-Disclose?-Understanding the America Invents ActBloomberg BNA's Patent, Trademark & Copyright Journal
- 2009-2012 (annual cumulative supplements) | ArticleChapter Five - Infringement Liability: Products Liability, Risk Allocation, and the Transfer of University and Laboratory-Owned TechnologyBloomberg BNA's Intellectual Property Technology Transfer
- December 7, 2011 | ArticleHealth Law360
- December 6, 2011 | Media MentionWashington Legal Foundation's The Legal Pulse
- December 5, 2011 | ArticleLast Gasp for False Patent Marking Cases? The Public Patent Foundation Challenges the Constitutionality of the America Invents ActWashington Legal Foundation's The Legal Pulse
- December 2011 | ArticleThe Metropolitan Corporate Counsel Vol. 19, No. 12
- November 23, 2011 | Press Release
- November 2, 2011 | ArticleBankruptcy Law360
- November 1, 2011 | Press Release
- October 11, 2011 | EventBNA Webinar
- September 22, 2011 | Arlington, VA | EventWill a New Breed of NPEs Change the Role of Patents?Bureau of National Affairs Patent Trademark and Copyright Journal Advisory Board Meeting
- September 19, 2011 | Alexandria, VA | EventCopyright Technology 101United States Copyright Office and the Patent and Trademark Office Conference on Copyright in the Digital Age
- August 30, 2011 | Press Release
- July 19, 2011 | Press Release
- July 13, 2011 | ArticleTask Force Report on Mayo Collaborative Services v. Prometheus LabsABA Section of Intellectual Property Law
- July 7, 2011 | EventThe Intellectual Property Owners Association Webinar
- June 13, 2011 | Press Release
- June 10, 2011 | Press Release
- June 8, 2011 | AlertSupreme Court Holds Bayh-Dole Act Does Not Automatically Vest Patent Rights in Federally Funded Inventions to Federal Contractors
- June 2, 2011 | Press Release
- May 14, 2011 | Las Vegas, NV | EventThere's More Than One Way to Exercise a Cat: The Supreme Court and Inducement of InfringementABA Young Lawyers Division Spring Conference 2011
- May 3, 2011 | Press Release
- March 2, 2011 | Press Release
- February 11, 2011 | Media MentionLegal Bisnow
- January 25, 2011 | Media MentionLaw360
- January 13, 2011 | Press Release
- January 13, 2011 | EventA New World for Indirect Infringement?: The Supreme Court's View of Patent and Copyright Inducement StandardsABA Intellectual Property Law Committee Webinar
- January 11, 2011 | Press Release
- December 29, 2010 | Press Release
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- November 30, 2005 | Press Release
- October 26, 2005 | Press ReleaseSupreme Court Denies RIM's Motion in NTP v. Research In Motion Patent Dispute
- September 28, 2005 | Press Release
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- November 25, 2002 | Press Release