Intellectual Property

In the digital age, intellectual property is, next to its people, a company's most valuable asset. Protecting an IP portfolio is a critical management task, but not always an easy one. It can be complicated by the increasingly complex legacy of existing technology patents, some lapsed or overlapping, and the rise of non-practicing entities who target patent rights. U.S. patent litigation increased 15% last year, with non-practicing entities filing 69% of claims, up 8% year over year. Companies with international operations must watch patent and trademark law developments in the jurisdictions where they have operations, as IP rules are brought into line with global or regional standards.

Highlights of our
Client Successes

Merck secures trio of patent litigation wins

We led Merck Sharp & Dohme Corp. to complete victory against multiple generic drug companies attacking Merck's patent protecting the discovery of Emend® for Injection (fosaprepitantdimeglumine), an important drug for preventing the nausea and vomiting associated with cancer chemotherapy. First, we won a bench trial against Sandoz in the U.S. Court for the District of New Jersey. That win also applied to a second generic drug company, Accord, which had agreed to be bound by the Sandoz case. Second, we successfully defended an inter partes review (IPR) brought by Apotex before the Patent Trial and Appeal Board (PTAB), with the PTAB reaffirming the rejection of Apotex's petition on its request for rehearing, despite the fact that the PTAB typically institutes IPRs. Finally, we obtained a consent judgment enjoining yet another generic, Fresenius, through expiration of Merck's patent, ending its litigation challenge. In total, Merck defeated four generic companies raising patent challenges in three different litigations.

First-of-its-kind IPR win for big pharma

We guidedAcordaTherapeutics to a first-of-its-kind decision, convincing the Patent Trial and Appeal Board (PTAB) to deny several requests for inter partes review (IPR) filed by organizations with close ties to hedge fund manager Kyle Bass. Mr. Bass has challenged the pharma patents of several drug companies through the IPR process while shorting the manufacturer's stock—a way of betting that shares will decline. Acorda was the first company Mr. Bass challenged before the PTAB. He was unsuccessful thanks to our team, which convinced the PTAB to deny all of his IPR petitions challenging Acorda's patents. We are currently representing Acorda in four additional challenges brought by Mr. Bass, as well as representing Insys Pharma in urging the PTAB to deny three requests for IPRs filed by Mr. Bass challenging its patents.

Oculus launches groundbreaking virtual reality headset

Our lawyers advised Oculus VR, a subsidiary of Facebook focused on developing virtual reality (VR) technology, on the corporate and transactional IP aspects of the highly anticipated launch of its groundbreaking VR headset, the Oculus Rift.

A business-critical patent infringement victory

We represented Fairchild Semiconductor Corp. in a jury trial involving cross allegations of patent infringement against competitor Power Integrations, Inc. The case involved crucial power conversion technology used in chargers for cell phones, laptops, LCD monitors, and other electronic devices. The jury verdict in favor of our client delivered a business-critical litigation victory in a longstanding and complicated series of patent infringement cases that have spanned courts on the east and west coasts for nearly 10 years. Our litigators subsequently advised Fairchild in a separate damages retrial against Power Integrations pending in the U.S. District Court for the Northern District of California and filed motions requesting a new trial based on Power Integrations' uniquely flawed damages theories. We separately have a pending appeal ready to be argued at the U.S. Court of Appeals involving these same parties and a case that we successfully tried in the District of Delaware, and expect that appellate argument to occur in the near future.

#1 We were involved in more post-grant proceedings than any other general practice firm in 2015

—Lex Machina