Overview

Mayer Brown’s Patent Litigation practice has the breadth and depth of experience to assist clients in all facets of protecting their business processes and patents. Mayer Brown successfully represents both plaintiffs and defendants in patent litigation in a variety of forums. We regularly represent diverse clients from Fortune 500 companies to emerging companies in cases involving patents that cover a wide range of methods and products. We have experience litigating matters in an assortment of industries including: computer software and hardware, financial services, pharmaceutical, information technology, electrical and mechanical engineering, nanotechnology, media, publishing, music, entertainment, biotechnology, and chemistry, among others.

As a result of our long-standing representation of innovators and technologically advanced companies, Mayer Brown’s IP litigators have the breadth and depth of experience to assist clients in all facets of protecting their business processes and patents. Broad-based in scope, our practice is poised to provide aggressive advocacy at both the trial and appellate level. We have brought and defended patent lawsuits and proceedings in federal district and appellate courts throughout the US, including the Court of Appeals for the Federal Circuit and the US Supreme Court, in the US Patent Office Board of Appeals and Interferences, the International Trade Commission, and the Court of Arbitration of the International Chamber of Commerce.

Pharmaceutical and Biotechnology Litigation

Disputes that center on pharmaceutical, chemical, medical device and biotechnology patents are a particular area of strength in our patent litigation practice. We excel at Hatch-Waxman Act and other patent litigation, where we have successfully represented innovator pharmaceutical companies against generic manufacturers and other defendants alleging non-infringement, patent invalidity, inequitable conduct and antitrust violations. In addition, we have a strong focus on business method patents, having represented Fortune 100 companies and other corporate clients in cases involving patents that cover a wide range of methods and products.

Our approach to providing patent strategy, patent portfolio development, and prosecution services is focused on teamwork, both with our clients and within our firm. We work closely with our clients to understand their business needs and goals and to establish a structured process that promotes the development of effective patent strategies. We also work closely with our international offices, including our colleagues in Europe and Asia, to maximize the global scope of our clients’ patent coverage. This is a key strength of our practice.

Technology and Telecommunications Litigation

We represent many of the world’s largest technology and telecommunications companies in patent cases involving a wide range of methods, systems and products. Clients in this area include leaders in computer technology, semiconductors, and telecommunications. We have successfully handled matters involving a wide range of technologies including radio frequency chips, electronic control technology for DVD players and televisions, semiconductor chips used in DVD players and computer peripherals, and smart cards. Our lawyers’ advanced degrees and practical work experience as engineers, technologists and scientists enable us to approach these cases without an extensive learning curve that may otherwise stymie the dispute resolution process.

Appellate Experience

With the nation’s oldest and largest Supreme Court & Appellate practice, Mayer Brown is highly experienced at handling intellectual property cases in the Supreme Court and in the Federal Circuit. The unparalleled scope of our appellate experience means great efficiency and effectiveness for our clients at every level of the appellate process. Reflecting our capabilities, Mayer Brown patent litigators have won precedent-setting cases before the US Supreme Court and in the Federal Circuit Court of Appeals.

Antitrust Experience

Leveraging patent rights for competitive advantage frequently brings about claims for antitrust violations. Our Antitrust & Competition practice works seamlessly with the IP team to assist clients in prevailing against antitrust attacks. Our antitrust and IP teams regularly collaborate to help clients assess options when confronting infringers. In some instances, this integrated team collaborates well in advance of a decision to sue for infringement to determine what antitrust and misuse risks could arise in litigation – not only in relation to the strength of the infringement claim itself, but also arising from patent prosecution or licensing terms. Assessing these risks, and identifying ways to counter them, allows our clients to make fully-informed decisions on whether to pursue enforcement litigation. Because any decision to sue needs to be informed also by consideration of the endgame, we carefully review possible settlement scenarios to ensure any agreement is consistent with our clients’ business goals. Equally important, we are mindful of the potential for raising new antitrust issues – as, for example, through restrictions on the infringer’s conduct or particular terms in a license accompanying the settlement. By carefully navigating the tricky terrain of antitrust exposure, we position clients to make infringement litigation decisions that best accomplish their business goals.

Experience

Avago Technologies Limited, Avago Technologies US, Inc. and Avago Wireless IP (collectively “Avago”) in a litigation relating to bulk acoustic wave filters for use in cellular telephones. Many cellular telephones utilize BAW filters to differentiate between the various signals that a cellular telephone transmits and receives. The case is pending in the District of Arizona and includes 13 separate allegations of patent infringement, allegations of theft of trade secrets and claims against Avago for antitrust violations.
Avago Technologies in two other matters—one pending in the Northern District of California and another pending in the Eastern District of Texas. Both of these matters concern optical sensor and/or optical finger navigation technology which is often incorporated into the latest cellular telephones.
International Game Technology in a case where the Federal Circuit affirmed summary judgment in favor of IGT on patent infringement claims. The competitor Aristocrat's patent disclosed a means-plus-function claim directed to a novel type of slot machine and it claimed that IGT's slot machines infringed that patent. IGT argued on summary judgment that Aristocrat's patent was too indefinite to be valid because its specification failed to disclose sufficient structure. Both the district court and the court of appeals accepted our argument that Aristocrat's disclosure of a "microprocessor-based gaming machine with appropriate programming" was insufficient because it did not set forth an algorithm that would describe the required special purpose computer.
Abbott GmbH, in a case in which we persuaded the Federal Circuit to dismiss an appeal brought by our opponent from a district court decision upholding the validity of Abbott's patent. On remand to the Board of Patent Appeals and Interferences, the Board agreed with Mayer Brown that priority should be awarded to Abbott. The patent covers a novel protein that has substantial commercial potential because it plays a crucial role in fighting infections. The case is important because it is one of the first decisions addressing the question of whether a patent contains an adequate written description of a novel protein, which is a "biological" product, rather than a new drug.

Jackson National Life Insurance Company/Mellon Capital Management Corporation for the second time in two years, we successfully defended Jackson National Life Insurance Company and Mellon Bank in a second case involving a "business methods" patent covering strategies for selecting stocks in institutional investment portfolios. We again won a dismissal of the plaintiff's complaint (as well as a covenant not to sue) after presenting the court with prior art that invalidated the plaintiff’s patent. This was a major victory for both Jackson and Mellon because the patented investment strategy allegedly covered Jackson investment funds comprising hundreds of millions of dollars.
WaveCrest in successfully obtaining the revocation of a long-standing patent owned by Israel organization Aerotel. The patent was for pre-paid telephone calling cards that allow users to make telephone calls from virtually any telephone in the world and charge the costs of the call to the card. The victory was upheld on appeal.
Valeant International (Barbados SRL) in three patent infringement litigations relating to Valeant’s antidepressant, Aplenzin®. Aplenzin® is a new once-a-day bupropion-based drug that has improved characteristics relative to Wellbutrin® XL. It is the subject of a number of patents, ten of which were at issue among the three cases. Three generic companies have sought FDA approval to market generic versions of Aplenzin®.
Vodafone (fifteen entities) and three of Vodafone’s partners in a patent infringement case that had 115 foreign mobile telephone carriers as defendants. We developed and briefed the jurisdictional arguments on behalf of our clients on what was recognized by the court to be a novel legal issue. Based upon our jurisdictional arguments, we were chosen by the other 115 foreign defendants to present oral argument on behalf of all foreign carriers to the court on the personal jurisdiction issue. Our cutting-edge motion persuaded the court that personal jurisdiction was lacking, which resulted in the dismissal of the litigation against all 115 foreign defendants and saved our clients millions of dollars in attorney fees and exposure to damages and injunctive relief.
Mölnlycke Health Care in a claim to revoke a key patent covering Kinetic Concepts, Inc.’s enormously successful V.A.C. system. The system generates more than $1 billion in sales for KCI and several million dollars in royalties for Wake Forest University. The English High Court declared the patent to be invalid both because it was obvious and because the scope of the patent had been extended by an impermissible amendment to its claims. This action, which was part of a multijurisdictional battle, was closely watched by the healthcare industry.