Wiley Rein's Patent Practice has built a solid record of obtaining successful outcomes for clients from a variety of industries involving a broad cross-section of matters. We have considerable experience in representing both plaintiffs and defendants in high-profile and high-stakes cases. We handle patent infringement litigation, 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."
Widely recognized for their ability to handle complex patent matters, our attorneys draw on an uncommon combination of legal knowledge, technical expertise and litigation skill to assist clients in achieving their business objectives related to patent law matters. Our team members boast extensive and diverse academic and professional backgrounds that enable them to represent clients in virtually all applicable fields of science and engineering. Particularly, we possess strong expertise in technology related to the Internet, satellite and wireless communications, computer software and hardware, consumer electronics, semiconductors, biotechnology, pharmaceuticals and medical devices.
The team is led by James H. Wallace, Jr., a renowned patent litigator with more than 30 years of experience litigating in the fields of technology and pharmaceuticals. Mr. Wallace has been recognized by Legal Times as a leading lawyer within the DC region, as one of "The Best Lawyers in America" in Intellectual Property Law, and as a "Top Lawyer" by Washingtonian magazine, which has called him "Washington's go-to patent guy."
Wiley Rein's Patent Practice has handled matters in legal forums throughout the United States where patent issues arise. Our team regularly obtains favorable verdicts or settlements for clients in jury trials, arbitration proceedings, Section 337 proceedings before the International Trade Commission (ITC) and Hatch-Waxman pharmaceutical litigation.
While we routinely help obtain favorable settlements on behalf of our clients before verdicts are rendered, we have the resources and expertise to litigate successfully in a wide variety of forums, including in U.S. district courts throughout the country. Our litigators handle infringement actions in so-called "Rocket Dockets" throughout the United States, including the 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, and several of our patent attorneys previously clerked at the Federal Circuit.
A sampling of our patent litigation successes includes:
- Secured a victory in the Eastern District of Texas for ARM Ltd. in defense of claims of patent infringement pertaining to its microprocessor cores. Won a defendant-dispositive Markman claim construction which was summarily affirmed by the Federal Circuit.
- Secured 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.
- Secured a significant victory in the Central District of California for clients Atico International USA, Inc. and Target Corporation in defense of claims of patent infringement pertaining to digital picture frames, where 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.
- Secured, on behalf of 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 of its kind, resolved a fiercely contested, high-profile patent case stemming from a 2002 jury trial in which our team successfully argued that RIM's core BlackBerry line of wireless email products, software and services willfully infringed NTP patents.
- Represented St. Jude Medical in the Eastern District of Pennsylvania in defense of claims of patent infringement by Siemens Medical Solutions, Inc. for patents relating to transvascular ultrasound methods and systems. The case was settled under favorable terms.
- Secured a victory in the Southern District of New York for clients Mylan and Esteve in their defense of a protracted patent infringement litigation brought by AstraZeneca. The case concerned Mylan/Esteve's generic omeprazole product equivalent to Astra's Prilosec® product. Mylan/Esteve prevailed at trial and on appeal at the Federal Circuit.
- Successfully obtained summary judgment for our pharmaceutical client invalidating the patents for Claritin® (loratadine). The summary judgment was affirmed on appeal.
- Successfully obtained a ruling on behalf of our pharmaceutical client that Johnson and Johnson's Alza Corporation patent on Ditropan® (sustained-release oxybutynin chloride) is invalid and not infringed. The ruling was upheld on appeal.
- Successfully represented a pharmaceutical client in an Eastern District of Pennsylvania infringement action involving the drug Sinemet® CR (sustained release carbidopa/levodopa), one of our client's top-selling products for a number of years. Summary judgment of non-infringement was obtained and affirmed 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 ITC 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 twelve 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 ITC 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: FEBRUARY 26, 2013