Wiley Rein offers comprehensive intellectual property services for owners and users of patents, copyrights, trademarks, and trade secrets, with a strategic focus on new technologies and dedicated specialists in each of these areas. The firm is known specifically for its infringement litigation capabilities, licensing expertise, analysis and valuation of intellectual property assets, dealings with relevant government agencies, and experience in dealing with music licensing and rights management technology. In recognizing the firm's Intellectual Property Practice, Chambers USA comments that the Practice "is well regarded for its patent litigation work and its track record within copyright and trademark law" and "has long been celebrated for its expertise in litigation of all kinds, while disputes concerning secondary liability are a forte for the team" (2013). The Practice is also ranked by U.S. News & World Report as being among the best in the nation and in Washington, DC.
The Intellectual Property Practice is led by patent litigator James H. Wallace, Jr. and copyright specialist Bruce G. Joseph, both of whom have been named among the DC region's "Leading Intellectual Property Lawyers" by Legal Times and as "Leading Lawyers for Business" by Chambers USA; Chambers USA ranked trademark/unfair competition professional Christopher Kelly; and patent litigator Kevin P. Anderson. The Group also includes more than 35 attorneys skilled in litigation, prosecution, policy development, negotiation, and counseling.
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The Patent Practice
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 Verizon Wireless 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.
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. Section 337 is designed to prevent the entry of infringing goods into the United States and the Act is designed to provide a resolution on an expedited schedule—typically, within 12 months. We regularly serve clients in these accelerated proceedings.
The firm files and prosecutes patent applications in the United States and around the world. Our Patent attorneys have working experience in a wide variety of high tech industries, including electrical, chemical, biotechnology, pharmaceutical, software, bioinformatics, Internet, and mechanical, as well as e-commerce and other business methodologies.
Patent Trial and Appeal Board
The Patent Trial and Appeal Board (PTAB), formed in 2012 as a part of the America Invents Act, decides important issues of patentability. The board replaced the Board of Patent Appeals and Interferences (BPAI), which had previously acted in a similar capacity. The newly formed PTAB introduced several new ways to contest patents, including inter partes reviews (IPRs), post-grant reviews (PGRs), covered business method reviews (CBMs) and derivation proceedings.
These proceedings give parties a more cost-effective method of challenging an issued patent based on prior art patents and printed publications. These are intended to be a less expensive and faster option for post-grant patent challenges, with initial determinations within six months of filing and a final decision within 12 months.
Wiley Rein attorneys and advisors work with clients on a comprehensive patent strategy that spans from inception to well beyond grant. Our attorneys have been deeply involved in the PTAB (and previously the BPAI), and have assisted clients in numerous IPRs, PGRs, and CBMs, and have one of the best-known teams available to assist clients in future PTAB matters.
Since the introduction of IPRs in 2012, the Practice has assisted with more than 20 IPR proceedings, involving technologies such as ringtones, Multimedia Messaging Service, and virtual memory for pipelined processors. This includes advising clients on IPR strategies as part of our comprehensive, business-focused patent strategy.
Our representative IPR experience includes:
- Assisted a major U.S. financial institution in preparing and filing IPR petitions related to data security patents used in connection with online banking.
- Assisted a major U.S. corporation in preparing and filing IPR petitions related to wireless cell phone technologies.
- Assisted our client in preparing and filing IPR petitions related to virtual memory for a processor.
- Assisted our client and co-counsel in preparing and filing IPR petitions related to LED lighting technologies.
Our representative CBM experience includes:
- Drafted and filed, on behalf of a major U.S. bank, the first-ever CBM review filed at the PTAB by a financial institution. The PTAB found the patent-at-issue unpatentable.
- Assisted a major U.S. financial institution in preparing and filing CBM petitions related to data security patents used in connection with online banking.
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 the potential outcomes of litigation.
The Copyright Practice
The firm’s Copyright Practice has broad experience in copyright litigation, copyright and content protection (digital rights management) technology, and music and sound recording licensing.
Copyright Infringement and Related Litigation
Internet- and technology-related litigation is a specialty of the firm. Our attorneys have extensive experience in technology-based infringement litigation, representing alleged infringers and intermediary technology providers and copyright owners. The Copyright Practice has represented Internet service providers and other Internet companies, newsletter publishers, satellite radio broadcasters, computer software developers, as well as more traditional media, in cases involving digital use and infringement of copyrighted works. Significant cases include:
- Stopping the recording industry’s expansive use of a unique ex parte subpoena process contained in the Digital Millennium Copyright Act (DMCA) on behalf of a leading Internet service provider (Verizon v. Recording Industry Association of America (RIAA)).
- Obtaining a jury verdict of willful infringement and an award of “statutory damages” in the amount of almost $20 million in favor of our publisher client for repeated intranet and email infringement of its financial newsletter by a major brokerage house.
- Defending Google against claims by Agence France-Presse (AFP) that the Google News website infringed AFP copyrights in news headlines, story leads, and photographs.
- Participating as amicus curiae on behalf of Internet service providers and consumer electronics manufacturers in several cases involving MP3 recordings and Internet file sharing, including the Grokster case in the Supreme Court and the Rio and Napster cases in the U.S. Court of Appeals for the Ninth Circuit.
- Representing a group of large Internet companies in the U.S. Court of Appeals for the Fourth Circuit in CoStar v. Loopnet to preserve important long-standing defenses to infringement.
Music and Sound Recording Fee Litigation
The Copyright Practice is a leader in the representation of user interests in the litigation, arbitration, and negotiation of license fees payable for musical work and sound recording public performances to organizations including the American Society of Composers, Authors and Publishers (ASCAP), Broadcast Music, Incorporated (BMI), SESAC, Inc., and SoundExchange. The firm has represented satellite radio broadcasters, radio broadcasters, wireless carriers, Internet audio and video service providers, among others, in such fora as the Copyright Royalty Board, ASCAP Rate Court, and BMI Rate Court. Significant cases include:
- Representing Sirius Satellite Radio Inc. in litigation before the Copyright Royalty Board against the recording industry’s efforts to obtain royalties approaching $2 billion for the period from 2007-2012.
- Representing the radio industry in litigation before the Copyright Royalty Board to establish sound recording fees for simulcast Internet streaming.
- Serving as lead counsel to the radio broadcasting industry in its appeal of Internet streaming fees for the period 1998-2002, and representing noncommercial broadcasters in their appeal of the fees for 2006-2010.
- Litigating before the ASCAP Rate Court in the Southern District of New York on behalf of a committee of approximately 400 radio stations seeking reasonable licenses.
Copyright and Content Protection Policy
Wiley Rein’s Copyright Practice has been at the forefront of legislative development in response to the digital environment. The firm has played a central role in recent policy debates and has used that knowledge and experience in a wide range of litigation matters.
Wiley Rein has been involved in the major policy debates on a diverse array of copyright and content protection technology issues in the digital environment. For example:
- The firm played a leading role in the negotiations and legislative debates that resulted in copyright liability limitations for Internet service providers enacted as part of the DMCA. Our attorneys also participated on behalf of service providers in the 1996 diplomatic conference that resulted in new international treaties relating to copyright and content protection technology.
- The firm served as lead counsel to the higher education community in the legislative negotiations leading to the Technology, Education and Copyright Harmonization (TEACH) Act, which expanded copyright exemptions for non-profit digital distance education, and in connection with legislative efforts to create new rights related to databases.
- Starting with its role as lead counsel to the consumer electronics industry in the negotiations leading to the passage of the Audio Home Recording Act in 1992, the firm has been deeply involved in many of the multi-industry efforts to develop approaches to digital content protection. For example, the firm participated actively on behalf of a major consumer electronics manufacturer in the Broadcast Protection Discussion Group, Analog Redistribution Discussion Group, and DVD Copy Control Association for video content and in the Secure Digital Music Initiative for audio.
- The Copyright Practice represented major radio broadcasting and satellite radio interests in the negotiations leading to reform the arbitration process that sets fees paid to record companies for digital performances of sound recordings.
Copyright policy will continue to evolve rapidly as the U.S. Copyright Office, U.S. Patent and Trademark Office (USPTO), and Congress attempt to resolve the multitude of new issues arising from the emergence of digital technologies and their use on the Internet. Wiley Rein’s Copyright Practice is uniquely positioned to assist clients likely to be affected by these debates, which will have a profound effect on the rights of all owners and users of copyrighted works.
More information about the firm’s involvement in digital rights management and content protection technology licensing activities may be found in the Copyright Practice Description.
The Trademark Practice
Wiley Rein’s Trademark Practice provides clients with the benefits of a boutique firm backed by the full resources of one of Washington, DC’s most respected law firms. Our experienced Team—led by a former Trademark Examining Attorney with the USPTO and a former in-house Trademark Counsel to a global entertainment company—works closely with attorneys in the firm’s Copyright, Corporate, Privacy, Franchise, Patent, Media, and Communications practices to provide our clients with complete management throughout the life of a brand, including trademark selection, protection, enforcement, and licensing.
Global Brand Acquisition and Management
A trademark portfolio is a living asset that must keep pace with growth and change in the business. Accordingly, we focus on the building and protection of brand equity around the world. With an in-depth understanding of our clients’ businesses, we conduct comprehensive assessments of their brands and determine how best to protect them based on their value as company assets. Ultimately, protection of a brand may be minimal or extensive, depending on an individual company’s needs.
When filing outside the United States, we examine whether it is in the client’s best interest to utilize international filing conventions such as the Madrid Protocol, or to retain local counsel in individual jurisdictions. We maintain long-standing relationships with local counsel around the world for this purpose. The firm supports state-of-the-art software to assist in the management of global portfolios.
Enforcement, Litigation, and Dispute Resolution
The enforcement of a trademark is essential to its value. We specialize in administrative and court actions to protect our clients’ trademarks from infringement and encroachment by third parties. Recognizing that litigation is not always the best option to settlement of a dispute, we routinely evaluate and promote the possibility of creative settlement options, including alternative dispute resolution (ADR).
Wiley Rein Trademark attorneys routinely appear in inter partes proceedings before the USPTO’s Trademark Trial and Appeal Board in contests regarding the registration of marks. We regularly litigate trademark infringement and Lanham Act actions in federal courts around the United States, and are skilled in USITC and U.S. Customs procedures to stop infringing goods before they cross the border. We also are experienced in the management of complex cross-border cases in the areas of unfair competition, counterfeiting, and seizures.
Our experience in the enforcement of trademarks in electronic commerce is extensive. We routinely defend Internet domain names from misappropriation by “cybersquatters,” analyzing each situation individually and determining the best course of action—whether acquisition of a domain name, arbitration proceedings under the Internet Corporation for Assigned Names and Numbers' (ICANN) Uniform Domain-Name Dispute-Resolution Policy (UDRP), actions under the Anticybersquatting Consumer Protection Act (ACPA), or in rem proceedings—to economically and efficiently achieve our client’s objectives.
Successfully leveraging a trademark through licensing benefits both licensor and licensee. It increases a licensor’s revenue and builds brand recognition, and, from the licensee’s perspective, increases market demand by associating a product with an established brand. Our Team routinely negotiates and drafts agreements for licensors and licensees in such diverse areas as clothing, media, toys, food products, and electronics. We also have assisted with the creation and management of quality control and brand assurance programs, including a multi-million-dollar licensing and merchandising program for well-known animation properties.
Wiley Rein’s Trademark attorneys work closely with the firm’s Corporate Practice in transactional projects to evaluate the scope and coverage of intellectual property in a variety of transactions, including licensing, mergers and acquisitions, public offerings, and private equity and venture capital investments. We assist purchasers, investors, and sellers to evaluate any discrepancies between the information provided by or obtained from the seller and that obtained through the purchaser’s independent search. Our Team is skilled at working with corporate and tax counsel to determine “how” and “where” the intellectual property assets should be acquired, and compliance with the Securities and Exchange Act of 1934. Among our recent experience in this area, we have assisted purchasers in the acquisition and venture capital investment in food companies and automotive parts companies and managed the sale of a sports and entertainment company.
The firm regularly represents varied owner and user interests in the negotiation of trademark, copyright, patent, and trade secret licenses as well as collaboration, strategic technology alliance, and joint venture agreements. Licensed works have included computer software, electronics technology, databases, biotechnology, certification marks, trademarks, and various trade secret technologies.
Strategic Intellectual Property Counseling
Our attorneys regularly counsel clients on key intellectual property matters, including conducting intellectual property audits, assessing the intellectual property positions of competitors, benchmarking industries, evaluating and effecting the transfer of title to intellectual properties, and conducting infringement/validity studies.
The firm advises clients regarding the preservation of trade secrets and litigates trade secret disputes. Wiley Rein attorneys also counsel and assist in preparing corporate documents to preserve trade secrets and competitive positions for our clients.
Lobbying and Legislative Relations
Wiley Rein has represented clients in various matters before Congress, including initiating and lobbying for new legislation or specific amendments to existing legislation, and has represented industry or individual client interests in broad legislative and treaty negotiations. For example, the firm has lobbied on behalf of a client for changes to a patent term extension statute to enable the client to apply for an extension before its patent expired. The firm also played a major role in negotiating provisions of the DMCA and the TEACH Act, among others, and is currently representing a domain name registry in hearings before Congress.
Government Contract Rights
Intellectual property rights involved in dealings with the federal government are subject to a complex series of frequently changing regulations that differ substantially from the laws governing commercial transactions. Unsuspecting contractors, accustomed to the commercial marketplace, can forfeit valuable rights to the public domain. The firm is a leader in representing contractors that wish to protect their valuable data rights and software rights in their dealings with the government. Wiley Rein’s ability to combine commercial intellectual property skills with its knowledge of the arcane rules of government contracting offers contractors and potential contractors a unique perspective on protecting their rights.
ISSUE: JUNE 16, 2014
IN THIS ISSUE
Federal Circuit Patent Bulletin: Apple Inc. v. Samsung Elecs. Co.
By Lawrence M. Sung, James H. Wallace, Jr. and Kevin P. Anderson
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Federal Circuit Patent Bulletin: Lelo Inc. v. Int'l Trade Comm'n
By Lawrence M. Sung, James H. Wallace, Jr. and Kevin P. Anderson
May 15, 2015
Federal Circuit Patent Bulletin: Classen Immunotherapies, Inc. v. Elan Pharms., Inc.
By Lawrence M. Sung, James H. Wallace, Jr. and Kevin P. Anderson
May 15, 2015
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