Patent

We have won trials and summary judgments for our clients in matters involving billions of dollars in damages. Our experience includes:

• Google in:
  • obtaining dismissal, with prejudice, of a patent infringement lawsuit brought by CTD Networks LLC in the Western District of Texas. CTD alleged that Google’s cloud service and cybersecurity products—including Google Chronicle, Siemplify SOAR, Google Web Risk and Google Cloud Armor—infringed four of CTD’s network monitoring and security system patents. CTD filed a notice of appeal with the Federal Circuit, which was dismissed after CTD abandoned the appeal.
  • obtaining a complete victory over Arendi S.A.R.L. at trial in an infringement suit concerning several patents related to entering contact information into a document. MTO provided legal and briefing support at trial.
  • obtaining a complete victory over Data Engine Technologies in an appeal regarding six patents related to the use of tabbed interfaces in Google Sheets. After Google’s initial win was reversed by the Court of Appeal for the Federal Circuit, we obtained a favorable construction of a disputed claim term – “three-dimensional spreadsheet” – in Data Engine’s patents and won summary judgment on all claims before the Federal Circuit.
  • obtaining an unusual decision from the USPTO Patent Trial and Appeal Board denying the institution of IPR proceedings but finding that its software does not infringe on a patent for CAPTCHA software, as claimed by Defenders of the American Dream LLC.
• Intel in obtaining a favorable settlement to patent infringement suits filed in the U.S. and Japan by a Japanese professor seeking royalties for alleged infringement of his patents by Intel’s programmable logic devices, which have billions of dollars in annual sales. After the U.S. Patent Trial and Appeal Board issued an institution decision finding a reasonable likelihood that all the claims were unpatentable, the parties settled.
• Dell in obtaining a favorable settlement and dismissal of patent litigation brought by Atlas Global Technologies LLC, a subsidiary of Acacia Research Group, claiming eight infringements to Atlas’ portfolio of Wi-Fi 6-related patents.
• Flex Logix in successfully defeating long-running litigation in state and federal court brought a rival inventor who contends that Flex Logix’s technology is based on trade secrets he originally developed. After MTO obtained final dismissal of the plaintiff’s claims in Santa Clara Superior Court, the Sixth Circuit upheld the ruling.
• Ericsson in successfully settling a dispute with Apple in the Northern District of California over Apple’s obligation to pay fair, reasonable and non-discriminatory (FRAND) royalties for Ericsson’s standard-essential patents used in 2G, 3G and 4G LTE cellular communications. The matter was settled with a new seven-year agreement between the telecommunications companies.
• Google and its subsidiary YouTube, in successfully challenging five patents asserted by Realtime Adaptive Streaming LLC for compressing and streaming digital video, in which the court invalidated two patents, issued favorable claim constructions for two more and dismissed the last as directed to ineligible subject matter.
• Intel Corporation in obtaining dismissal of infringement claims brought against it in a broad litigation campaign targeting wireless networks, broadband internet providers and network equipment suppliers.
• Amgen subsidiary Immunex in litigation claiming that Sanofi and Regeneron’s pharmaceutical treatment Dupixent infringed on Immunex’s patents for Dupilumab. After the U.S. Patent and Trademark Office returned an adverse ruling in an inter partes review, which was handled by another firm, the action was dismissed.

We have won against-odds victories on appeal and helped set precedents that reshaped patent law. Our experience includes:

• Google in:
  • not only winning a new trial for damages in a rare en banc proceeding in the U.S. Court of Appeals for the Federal Circuit, in EcoFactor, Inc. v. Google LLC, but also clarifying the role of trial courts as gatekeepers for excluding unreliable damages expert testimony.
  • an appeal establishing that Longitude Licensing Ltd.’s image processing patents were directed to an abstract idea. The decision reaffirms that even where the patent’s written description asserts technological improvements, the patent claims may still be directed to ineligible subject matter.
• Kite Pharma,, a subsidiary of Gilead Sciences, in invalidating the plaintiff’s patents during infringement litigation over an innovative cancer therapy and defeating a claim for $1.2 billion and future royalties estimated at over $1 billion.
• Google, Samsung and Google subsidiary Waze in setting an important precedent for obtaining mandamus relief for patent infringement matters, by successfully arguing for a change of venue from the Eastern District of Texas to a more convenient venue in the Northern District of California. The petition was granted just two weeks before the scheduled start of trial. AGIS and Google later stipulated to dismiss the case.
• Flex Logix in defeating long-running litigation in state and federal court brought a rival inventor who contends that Flex Logix’s technology is based on trade secrets he originally developed. After MTO obtained final dismissal of the plaintiff’s claims in Santa Clara Superior Court, the Sixth Circuit upheld the ruling.

Our attorneys’ work in government service includes briefing and/or arguing:

• Alice Corp. v. CLS Bank International, in which the Supreme Court unanimously ruled that simply implementing an abstract idea on a computer does not make it eligible for a patent.
• Mayo Collaborative Services v. Prometheus Laboratories, Inc., in which the Supreme Court established a test to govern patent eligibility of claims incorporating a law of nature, including drug treatment claims.
• Assoc. for Molecular Pathology v. Myriad Genetics, Inc., in which the Supreme Court held that isolated DNA is not patentable.
• Commil USA, LLC v. Cisco Systems, Inc., in which the Supreme Court held that a defendant’s belief regarding a patent’s validity is not a defense to an induced infringement claim.
• Samsung Electronics Co v. Apple, in which the Supreme Court held that design patent damages may be calculated based on a component of the end product.
• Microsoft v. i4i, in which the Supreme Court held that invalidity challenges are evaluated under the clear and convincing evidence standard of proof.
• Limelight v. Akamai, in which the Supreme Court held that a party may be liable for induced infringement only if a different party committed direct infringement by performing all steps of a method patent.
• Hyatt v. Kappos, in which the Supreme Court established the standards governing district court challenges to PTO decisions.

We have defeated claims of monopolization, “sham litigation” and “pay-for-delay” arrangements brought by competitors, federal agencies and wholesalers, by achieving precedent setting verdicts and favorable settlements. Our work includes:

• AbbVie Inc. and Solvay Pharmaceuticals, as lead counsel in the landmark FTC v. Actavis, Inc. matter, where the U.S. Supreme Court ruled that “reverse payment” patent settlements between brand-name pharmaceutical companies and generic manufacturers are not presumptively unlawful, but should be evaluated under the “rule of reason.”
• Amgen in defending against litigation brought by purchasers of Enbrel, Amgen’s top-selling autoimmune treatment, alleging that, through an exclusive license agreement with another pharmaceutical company, Amgen unlawfully obtained patent rights that have prevented FDA-approved biosimilar versions of Enbrel from being marketed.
• Takeda Pharmaceuticals in defeating certification of two proposed classes of indirect purchasers who alleged that Takeda’s conduct in licensing and enforcing patents delayed the market entry of a generic version of its muscle relaxant, Skelaxin®.
• AbbVie Inc. in obtaining dismissal of Perrigo Company’s claim that AbbVie had filed “sham litigation” to keep generic versions of AndroGel® off the market. The District of New Jersey also found that Perrigo’s litigation against AbbVie and co-defendant Besins Healthcare was barred under Perrigo’s 2011 settlement agreement with AbbVie, a decision that was upheld by the U.S. Court of Appeals for the Third Circuit.