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, its public policy advocacy, its licensing expertise, its analysis and valuation of intellectual property assets, its dealings with relevant government agencies and its experience in dealing with music licensing and rights management technology. In recognizing the firm’s Intellectual Property Practice, Chambers USA noted that “the highly impressive litigation work undertaken by Wiley Rein spans patent, trademark and copyright IP.” 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; trademark/unfair competition professional Christopher Kelly and patent specialist Floyd B. Chapman. The group also includes more than 35 attorneys skilled in litigation, prosecution, policy development, negotiation and counseling.
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The Patent Practice
Wiley Rein has an extensive Patent Litigation Practice—particularly in the fields of the Internet, satellite communications, semiconductors, biotechnology, pharmaceuticals, computer software and hardware (including Internet applications) and medical devices. We have obtained successful verdicts or settlements for clients in jury trials, arbitration proceedings and International Trade Commission proceedings and have developed “enforcement strategies” for clients including litigation and patent licensing.
The firm has the resources and expertise to litigate successfully in a wide variety of forums, including in U.S. district courts around the country. We have experience in handling infringement actions in so-called “Rocket Dockets” throughout the U.S., including the nearby Eastern District of Virginia, the Eastern District of Texas and the Western District of Wisconsin. Additionally, we regularly represent clients in appeals before the U.S. Court of Appeals for the Federal Circuit, which hears all appeals in patent cases.
Recent patent successes include:
- Secured a victory in the Eastern District of Texas for client ARM Ltd. in defense of claims of patent infringement pertaining to the design of microprocessors. Under the judge’s construction in the district court, Plaintiff Technology Properties Ltd. stipulated that ARM’s microprocessor designs and products did not infringe the asserted patents and appealed the claim construction to the Federal Circuit. The Federal Circuit summarily affirmed ARM’s victory on May 9, 2008.
- Secured a victory for client 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 patent infringement case was filed in the United States District Court for the District of New Jersey, which granted MCBC’s motions for summary judgment of invalidity and non-infringement. The court’s decision was appealed to the Federal Circuit, but was dismissed upon MCBC’s motion to dismiss for lack of jurisdiction.
- Secured a significant victory for clients Mylan Inc. (formerly Mylan Laboratories Inc.), Mylan Pharmaceuticals Inc., Laboratorios Dr. Esteve, S.A., and Esteve Quimica, S.A. in their defense of a protracted patent infringement litigation brought by AstraZeneca. Astra filed an action in the U.S. District Court for the Southern District of New York in September 2000. The complaint alleged that Mylan/Esteve’s submission of an application for FDA approval of their generic omeprazole product equivalent to Astra’s Prilosec® product infringed two Astra patents claiming pharmaceutical formulations and methods of treatment. After extensive discovery, a 42-day bench trial concluded in June 2006. On May 31, 2007 the district court issued a 368-page opinion ruling that Mylan/Esteve and one other defendant did not infringe the asserted patents. The decision was affirmed on appeal.
- Secured a significant victory for clients 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. After brief discovery, 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. The summary judgment also applies to products supplied by Atico to Kodak (another named co-defendant).
- Secured, on behalf of client NTP Inc., a $612.5 million patent infringement settlement with Research In Motion Ltd. (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 we successfully argued that RIM’s core BlackBerry line of wireless email products, software and services willfully infringed NTP patents.
- Representing drug companies, the firm obtained summary judgments invalidating the patents for Claritin® (loratadine) and finding non-infringement for a patent on Simemet® CR (sustained release carbidopa-levodopa). Additionally, we successfully obtained a ruling that Johnson and Johnson’s Alza Corporation patent on Ditropan® (sustained release oxybutynin) is invalid and not infringed.
- Successfully defended microprocessor design client by winning a defendant dispositive claim construction ruling in the Eastern District of Texas leading to stipulation of non-infringement.
- Defending large consumer products company against patent, copyright and trademark infringement allegations for a wide variety of diverse consumer household products such as blenders, fans, coolers, folding chairs and toys.
- Defending clients against lawsuits seeking to displace ownership or inventorship interests vested in our clients.
International Trade Commission Section 337 Proceedings
Our attorneys are experienced in representing clients in patent infringement proceedings before the International Trade Commission 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 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 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 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, 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, & 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 their 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 Digital Millennium Copyright Act (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 Copyright Office, Patent and Trademark Office 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 Group 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 U.S. Patent and Trademark Office 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.
Wiley Rein trademark attorneys routinely appear in inter partes proceedings before the United States Patent and Trademark Office’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 International Trade Commission 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 ICANN’s 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, bench-marking 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 Technology, Education, and Copyright Harmonization (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: FEBRUARY 26, 2013
IN THIS ISSUE
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