Patent

The lawyers in Munger, Tolles & Olson’s patent practice handle complex patent matters with a singular focus on helping our clients to achieve their strategic business goals. Our patent experience spans decades of precedent-setting work for companies operating in a range of spaces, including AbbVie, Ericsson, Google, Takeda and Verizon.

Many of our lawyers sharpened their patent expertise while serving as law clerks in the Federal Circuit and a number of our attorneys possess advanced scientific and engineering degrees.

Our lawyers have achieved numerous patent litigation victories in the Federal Circuit as well as in various lower courts. We practice in the most active patent litigation venues in the country, including the Northern District of California, the Eastern District of Texas and the District of Delaware.

Munger Tolles attorneys have experience on both sides of the table in patent disputes and are well positioned to vigorously protect our clients’ IP rights, counseling them through potential and actual patent litigation to obtain a favorable resolution outside of the courtroom and, if necessary, winning their case at trial.

We have substantial experience in patent litigation in the health care and life sciences sectors. Our work with companies in these industries allows us to help clients navigate the complex regulatory environment in which they operate and be one step ahead of the ever-changing patent legal landscape.

Some significant matters include representing:

  • AbbVie (formerly Abbott Laboratories) in:
    • obtaining preliminary injunction orders prohibiting four generic drug makers from selling generic versions of BIAXIN XL. Two of the three orders appealed were affirmed by the Federal Circuit, and ultimately, settlements were achieved in all four cases.
    • a case that marked a major change in patent litigation. Munger Tolles, as co-counsel, won an en banc Federal Circuit ruling that fundamentally altered the standards for determining inequitable conduct before the U.S. Patent and Trademark Office.
    • obtaining judgment of dismissal of a lawsuit filed by Bayer Corp. in District of Massachusetts alleging that Abbott’s largest product, Humira, infringed its patents.
    • prevailing at a jury trial in the District of Delaware, and again on appeal, in patent litigation against Novartis involving Abbott’s cyclosporine product, Gengraf.
  • Alien Technology in:
    • a now-stayed declaratory judgment action in the District of North Dakota involving 14 patents covering different aspects of Radio Frequency Identification technology; and
    • a related inter partes reexamination proceeding and subsequent appeal by the patent holder to the Federal Circuit.
  • Cisco Systems in winning summary judgment in a patent infringement case brought by Autocell Laboratories Inc. in the District of Delaware, relating to wireless network technology.
  • Ericsson in a dispute with Apple in the Northern District of California over Apple’s obligation to pay fair, reasonable and nondiscriminatory (FRAND) royalties for Ericsson’s standard-essential patents used in 2G, 3G and 4G LTE cellular communications.
  • Google in obtaining a take-nothing resolution at the trial level on behalf of Google in a 10-patent matter in the District of Nevada related to products and services for mobile phones and tablets, through a combination of a favorable claim construction order, successful motions for summary judgment of indefiniteness, and successful PTAB proceedings.
  • Medegen, as appellate counsel, in obtaining reversal by the Federal Circuit of an adverse summary judgment decision in a suit involving medical device technology.
  • Microsoft, Dell and Hewlett-Packard in winning summary judgment on behalf of all three defendants in a suit involving software multithreading filed by Walker Digital in the Central District of California, and successfully defending the judgment before the Federal Circuit.
  • Rambus as both plaintiff and defendant against the world’s largest DRAM manufacturers, Hynix, Samsung, Micron Technology and Nanya, in the closely watched battle for rights to the fundamental design of memory chips used in nearly all major computing devices. Highlights of this representation include:
    • obtaining a $306 million jury verdict in a patent trial against Hynix, with a final judgment award totaling $396.8 million.
    • winning a bench trial on Hynix’s allegations that Rambus had spoliated evidence.
    • trying and winning a three-month trial before the Federal Trade Commission’s chief administrative law judge on charges of unfair business practices. After further FTC proceedings, the D.C. Circuit unanimously upheld the ruling for Rambus.
    • obtaining a successful verdict after an eight-week jury trial for Rambus on monopolization and unfair competition claims brought by Hynix, Micron and Nanya.
    • defeating Samsung’s effort to obtain a $400 million patent damages offset through breach of contract counterclaims after a bench trial.
  • Takeda Pharmaceuticals (and affiliates) in:
    • obtaining judgments of infringement and awards of injunctive relief against three companies in a bench trial involving generic versions of the acid reflux drug Dexilant.
    • obtaining a favorable settlement of patent infringement litigation against three generic drug makers with respect to the gout medication Colcrys.
  • Tessera Technologies in numerous cases in the Eastern District of Texas, the Northern District of California and the Federal Circuit involving patents relating to semiconductor packaging technology, which resulted in negotiated settlements.
  • Verizon in obtaining dismissal or summary judgment in the Eastern District of Virginia of all claims in two patent suits filed by Spherix Inc., who had acquired a number of patents formerly belonging to telecommunications equipment manufacturer Nortel.

Contact:
Ted Dane (213) 683-9288
Gregory P. Stone (213) 683-9255
Jeffrey I. Weinberger (213) 683-9127