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.
Our Approach | Selected Experience | Contact Us
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.
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.
ISSUE: DECEMBER 5, 2013
IN THIS ISSUE
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