概览

我们多次成功代表原告及被告,在各种审判机构赢得专利诉讼。我们的客户多种多样,既有财富500强企业,也有新兴公司,所涉专利涵盖各类方法及产品。我们在专利诉讼方面的经验广泛,所涉行业包括:计算机软硬件、金融服务、制药、信息技术、电子及机械工程、纳米技术、媒体、出版、音乐、娱乐、生物技术以及化学。

由于长期代理创新者以及先进技术公司,本行专利诉讼律师积累了深厚且广泛的经验,能够协助客户从各个方面保护其业务流程及专利。我们的业务范围广泛,随时做好准备就初审或上诉进行积极辩护。我们曾在全美多个联邦地方法院及上诉法院就专利案件提出诉讼或进行抗辩,包括美国最高法院和联邦巡回上诉法院、美国专利局上诉与干预委员会、美国国际贸易委员会以及国际商会仲裁院。

制药及生物技术诉讼

制药、化学制品、医疗设备以及生物技术方面的专利争议是本行专利诉讼业务的强中之强。我们特别擅长《哈奇•维克斯曼法案》(Hatch-Waxman Act)及其他专利诉讼,曾成功代理创新的制药公司应诉仿制药生产商及其他被告提出的不侵权、专利无效、不公平行为和反垄断指控。此外,我们强烈关注商业方法专利,多次代理财富100强公司及其他公司客户处理诉讼案件,所涉专利涵盖多种商业方法及产品。

我们注重与客户及本行其他部门的合作,齐心协力提供专利策略、专利组合管理和申请服务。我们与客户密切合作,深入了解其商业需求及目标,构建结构化的程序,促进有效的专利策略的制定。我们与本行欧洲和亚洲办事处的同事通力协作,力求使客户的专利保护在全球范围内得到最大保障。这正是我们的核心价值所在。

技术及电信诉讼

我们在专利案件中代理多个全球最大的技术及电信公司,所涉专利涵盖各类商业方法、系统及产品。我们在该领域的客户包括领先的计算机技术、半导体及电信公司。我们成功代理的案件涉及大量各类技术,包括无线电射频识别芯片、用于DVD播放机和电视的电子控制技术、用于DVD播放机和电脑外设的半导体芯片以及智能卡。我们的律师拥有高等学位以及扎实的从业经验,多位律师曾任职工程师、技术人员或科学家,无需花费大量时间学习新知,从而顺利推进争议解决流程。

上诉经验

我们拥有美国历史最悠久、规模最大的最高法院及上诉业务,擅长应对诉至最高法院和联邦巡回法院的知识产权案件,经验极为丰富。我们的上诉经验范围之广是其他律师行无法比拟的,这意味着我们能够在上诉全程的各个层面为客户提供高效率、高效益的法律服务。我们的专利诉讼律师屡次在美国最高法院和联邦巡回法院赢得开创先例的案件,完美印证了我们卓越的业务能力。

反垄断经验

利用专利权取得竞争优势往往导致反垄断违规申诉。本行反垄断及竞争部门与知识产权部门无缝合作,协助客户赢得反垄断指控。两部门亦合作协助客户对打击侵权人的方案进行评估。在某些情况下,这支综合服务团队将事先对诉讼过程中可能产生的反垄断或滥用风险进行判断,再决定是否起诉侵权——风险不仅与侵权索偿的强度有关,也与专利申请或许可条款有关。我们评测上述风险,找出化解风险的方法,使客户在充分知情的情况下决定是否寻求维权诉讼。诉讼决定应在知情的情况下作出,并应将诉讼结果纳入考虑范畴,因此,我们将仔细审查可能的和解方案,确保达成的协议与客户的商业目标一致。同样重要的是,我们对导致新的反垄断事宜(例如,限制侵权人的行为或和解方案附加许可中的特定条款)的可能性保持高度警惕。我们将慎重避开反垄断威胁,确保客户作出恰当的侵权诉讼决策,从而最好地实现其商业目标。

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.

Intellectual Property Practice of the Year 2020

执业经验

  • 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.