Intellectual Property

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At Willkie Farr & Gallagher, we pride ourselves on results, working collaboratively with our clients and each other to achieve pragmatic and successful outcomes, whether in high-stakes disputes or critical business opportunities.  We represent U.S. and non-U.S. clients in litigation, transactions, counseling, licensing, and lobbying involving patents, trademarks, copyrights, domain names and trade secrets.

Our experience covers most industries and technologies, including pharmaceuticals, biologics, computer hardware and software, semiconductors, medical devices, consumer products, information and financial services, electronic devices, traditional and new media publishing, e-commerce, energy, sports, insurance, and music rights. Our capacity to handle transnational matters is enhanced by our offices in the European business centers of Paris, London, Frankfurt, Milan, Rome, and Brussels. We collaborate with our colleagues across all offices on matters involving antitrust, cybersecurity and privacy, energy, and other issues. 

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Patent Litigation and Other Adversarial Proceedings

Our patent trial lawyers have represented technology leaders in jury and non-jury cases in federal courts across the United States. We also regularly appear in other patent forums, including the U.S. Court of Appeals for the Federal Circuit and the U.S. Patent & Trademark Office Patent Trial and Appeal Board. Our patent trial attorneys have experience handling cases in many different technical fields, in particular pharmaceuticals, biologics, computer software, electronics, and medical devices. In the pharmaceutical space, we represent patent holders as well as developers of biosimilar and generic drugs.

Copyrights, Trademarks, and Trade Secrets

We are routinely retained to handle complex copyright, trademark, and trade secret issues. We represent clients in cases involving trademark infringement and dilution, counterfeiting, cyber-squatting and false advertising. We handle oppositions and cancellations before the Trademark Trial and Appeal Board. We counsel clients on the strategic management and enforcement of their trademark portfolios in the United States and abroad. We negotiate and draft trademark licenses and naming rights agreements. Our copyright practice focuses on software, traditional and new media publishing, and broadcasting, and includes drafting and negotiating licenses and publishing agreements, and counseling clients concerning data use, rights clearance, and fair use issues. We also represent clients in copyright infringement litigation in federal courts. Our trade secret practice involves counseling clients on strategies to protect and defend their trade secrets, as well as representing clients in trade secret litigation under state law and the Defend Trade Secrets Act of 2016.

Licensing and Transactions

Our transactional work includes developing and implementing licensing strategies for patents, trademarks, copyrights, and trade secrets across a variety of technologies. Our licensing and transactional IP attorneys counsel clients on a wide spectrum of agreements, including those related to joint ventures, application development, outsourcing, R&D, licensing, and distribution to name a few. Our transactional experience includes the intellectual property aspects of mergers, acquisitions, divestments, initial public offerings, financings, securitizations, joint ventures and other monetizations.

We regularly counsel clients on the acquisition, maintenance and related strategies regarding domain name registrations. We have assisted clients in registering top-level and country top-level domain names in over 115 countries. Additionally, we have successfully prosecuted numerous ICANN (Internet Corporation for Assigned Names and Numbers) proceedings and civil actions to recover domain names in more than a dozen countries. Our practice also includes the negotiation and acquisition of strategic domains from third-party registrants.

Integrated Part of a Global, World-Class Firm

Our clients benefit not only from our superior legal skills and resources but from something more: when faced with mission-critical matters, we are “One Willkie” -- a firm that adapts into efficiently organized and collegial teams of attorneys who enjoy practicing together and combining their legal skills to best serve the comprehensive needs of our clients around the world. We bring to bear the full resources and experience of a general practice firm to handle our clients’ most challenging and complex matters. As one client, quoted in Chambers USA, put it, our team offers "tremendous strategic advice and a high caliber of legal skills" to clients seeking advice on IP issues.

For example, we regularly work with our antitrust attorneys when allegations of anticompetitive behavior are involved in patent litigation, settlements, or standards-setting; the deep resources provided by our general litigation attorneys enable us to staff efficiently cases of any level of complexity; our tax attorneys advise us concerning the U.S. and non-U.S. tax implications in structuring settlement agreements; our corporate attorneys provide unequalled capabilities in handling transactions; and our privacy attorneys provide advice on issues involving privacy and cybersecurity.

We routinely coordinate with counsel in Europe and elsewhere on matters that are litigated across multiple jurisdictions. For example, members of our IP team worked on a large multinational bankruptcy litigation, appearing at a joint trial between the U.S and Canada. We have deep relationships with top firms in London and Munich that excel in patent litigation. We know the importance of keeping all cases “on the same page,” while accounting for the different approaches that are required in different jurisdictions. We also call on our Willkie colleagues in our European offices for their insight in litigation, competition, and transactional issues. We have robust competition practices in our Paris and London offices that have worked on investigations and compliance issues in the pharmaceutical industry, including in the context of patent litigation settlements. The group also advises on competition issues that arise in transactions outside the litigation context, where pharmaceutical or other product rights are involved.

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Highlights

Pharmaceutical and Biologics Patent Litigation

We represent leading pharmaceutical companies in Hatch-Waxman and BPCIA patent litigation and Patent Office proceedings, including recent district court cases, appeals, and inter partes reviews on behalf of Hospira, Actavis, Allergan, Amneal, and Array Biopharma. We appear regularly in the courts most often associated with Hatch-Waxman and biologics patent litigation, including the District of New Jersey and the District of Delaware, and are quite familiar with the judges and practices in those courts. We regularly handle appeals in the Federal Circuit, and have a track record of success at the district and appellate level.

We have a robust practice counseling clients in pharmaceutical patent matters, from advising on product development and patent clearance matters to navigating the interface of patent and regulatory exclusivities to preparing for litigation or adversarial Patent Office proceedings on a developed product that has not yet been subject to a lawsuit.

The Willkie IP Team has been working on biologics patent matters for many years. We are currently handling one of the first cases to be litigated under the BPCIA, involving recombinant erythropoietin, and are at the forefront of this actively developing area. We also provide strategic advice and patent counseling to clients on confidential matters involving pending biosimilars. 

Pharmaceutical Patent Litigation

  • Confidential matters providing opinions and strategic advice on biosimilar patents
  • Amgen v. Hospira (D. Del.) (Epogen) (erythropoietin) (split decision in first U.S. jury trial under BPCIA; post-trial briefing pending)
  • Amgen v. Hospira (Fed. Cir.) (Epogen) (erythropoietin) (favorable decision upholding district court on BPCIA issue of first impression)
  • Hospira v. Genentech (USPTO) (Avastin) (bevacizumab) (IPR instituted, pending)
  • Hospira v. Genentech (USPTO) (Protein A chromatography) (IPR instituted, pending)
  • Takeda v. Array Biopharma (USPTO) (appeal pending after favorable IPR decision)
  • Merck v. Hospira (D. Del.) (Invanz) (ertapenem) (appellate decision affirming favorable trial decision)
  • Par v. Hospira (D. Del.) (Adrenalin) (epinephrine) (pending)
  • Belcher v. Hospira (D. Del.) (Epinephrine Injection USP) (epinephrine) (pending)
  • Vivus v. Actavis (D. Del.) (Qsymia) (pherntermine/ topiramate) (settled)
  • Merck v. Amneal (Fed. Cir.) (Nasonex) (mometasone) (judgment of non-infringement affirmed)
  • Millennium Pharms. v. Sandoz and Hospira (Fed. Cir.) (Velcade) (bortezomib) (pending)
  • Purdue v. Amneal (Fed. Cir.) (OxyContin) (oxycodone) (judgment of invalidity affirmed)
  • Allergan v. UCB (E.D. Tex.) (Neupro) (rotigotine) (settled)
  • Hospira v. Eurohealth (D. Del.) (Precedex) (dexmedetomidine) (settled)
  • Hospira v. Intas (M.D.N.C.) (Precedex) (dexmedetomidine) (settled)
  • Abbott v. Hospira (D. Del.) (Zemplar) (paricalcitol) (favorable judgment of non-infringement)
  • Shire v. Neos (N.D. Tex.) (Adderall XR) (mixed amphetamines) (settled)
  • Galderma v. Actavis (N.D. Tex.) (EpiDuo) (adapalene/benzoyl peroxide) (settled)
  • Hospira v. Sandoz (D.N.J.) (Precedex) (dexmedetomidine) (settled)
  • Hospira v. Sun Pharm. (E.D. Mich.) (Precedex) (dexmedetomidine) (settled)
  • Nautilus Neurosciences v. Wockhardt (D.N.J.) (Cambia) (diclofenac sachet) (settled)
  • Nautilus Neurosciences v. Edict (D.N.J.) (Cambia) (diclofenac sachet) (settled)
  • Shire v. Watson (S.D.N.Y.) (Adderall XR) (mixed amphetamines) (settled)
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Computer and Other High-Tech Patent Litigation

We represent clients in patent litigation in a variety of diverse areas, including: online software, encryption algorithms, network and telecommunications, financial trading systems, digital signal processors, automated external defibrillators, and other medical devices.

We also handle more than just patent litigation. For example, we have significant experience in bankruptcy litigation for high-tech companies involving IP. We represented the Board of the UK Pension Protection Fund and the trustees of the Nortel Networks UK Pension Trust Limited, which is a pension plan involving 40,000 former employees of Nortel with a funding deficit in the billions of dollars. As such, our client was one of the largest creditors in the global bankruptcy proceedings involving the Nortel companies. We worked with our bankruptcy and litigation departments in this multi-jurisdictional bankruptcy that was the subject of an unprecedented joint US/Canadian trial. Our team focused on the allocation of proceeds from the sale of Nortel’s assets, including a $4.5 billion portfolio of telecommunications patents. We received favorable trial decisions from the Delaware and Canadian courts, and settled the case favorably on appeal.

Computer and other High-Tech Patent Litigation

  • In re Nortel Networks (Del. Bankruptcy) (settled on appeal after favorable trial decision)
  • Arkema v. Honeywell (E.D. Pa.) (stayed pending reexaminations)
  • CryptoPeak Solutions v. Commonwealth Annuity & Life Ins. Co. (E.D. Tex.) (dismissed)
  • CryptoPeak Solutions v. Forethought Financial Group, Inc. (E.D. Tex.) (settled)
  • Qonduit v. Aviva Life and Annuity (E.D. Tex.) (dismissed)
  • Qonduit v. Forethought Life Ins. Co. (E.D. Tex.) (dismissed)
  • Verified Hiring LLC v. HealthCareSource HR, Inc. (E.D. Tex.) (settled)
  • Display Technologies, LLC v. Display Industries, LLC (S.D.N.Y) (favorable judgment)
  • SASCO v. Reel-O-Matic Inc. (C.D. Cal.) (dismissed after favorable reexamination ruling)
  • Daramic, LLC and MP Assets Corporation v. Entek International, LLC (W.D.N.C.) (settled)
  • CDD Technologies, LLC v. GFI Software, Inc. (E.D. Tex.) (settled)
  • Lodsys, LLC v. Brother International Corporation and GFI Software, Inc. (E.D. Tex.) (settled)
  • Lodsys Group, LLC v. AVG Technologies USA, Inc. and GFI Software, Inc. (E.D. Tex.) (settled)
  • Gemini IP, LLC v. Computer Sciences Corporation and GFI Software Ltd. (E.D. Tex.) (settled)
  • Gemini IP LLC v. Citrix Systems Inc. and GFI Software Ltd. (E.D. Tex.) (settled)
  • Uniloc USA, Inc. et al. v. Abbyy USA Software House, Inc. and GFI USA, Inc. (E.D. Tex.) (settled)
  • Achates Reference Publishing, Inc. v. Symantec Corporation and CommonTime, Inc. (E.D. Tex.) (settled)
  • Annuitek LLC v. Forethought Life Insurance Company (E.D. Tex.) (settled)
  • WordCheck Tech, LLC v. Alt-N Technologies, Ltd. and GFI USA, Inc. (E.D. Tex.) (settled)
  • Realtime Data, LLC v. Thomson Reuters Corp. and Bloomberg L.P. (S.D.N.Y.) (E.D. Tex.) (settled)
  • ARRIS v. British Telecom.  (N.D. Ga.) (settled)
  • Cardiac Science v. Koninklijke Philips (D. Minn.) (settled)
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Copyright, Trademark, and Trade Secret Litigation

Our team has experience in copyright, trademark, and trade secret litigation, including the cases below.  We also handle additional matters for clients before the U.S. Patent & Trademark Office Trademark Trial and Appeal Board. We have also coordinated the handling of trademark infringement litigation abroad for clients such as Bloomberg L.P. and GFI.  The Willkie IP Team has also worked on copyright litigation, including significant victories at the trial and appellate level.

Copyright and Trademark Litigation

  • Insurent Agency Corp. v. Hanover Ins. Co. (S.D.N.Y.) (copyright, state law trade secret, and Defend Trade Secret Act claims)
  • Swatch Group Mgmt. Servs. v. Bloomberg L.P. (S.D.N.Y) (2d Cir.) (summary judgment granted on behalf of client and affirmed by Second Circuit)
  • Agence France Presse v. Daniel Morel v. Getty Images, Inc., et al. (S.D.N.Y.) (favorable jury award)
  • Arista Records LLC, et al. v. Lime Wire LLC (S.D.N.Y) (favorable settlement in jury trial)
  • Lead counsel for defendant in trademark licensing arbitration in the apparel industry.
  • Verizon Directories Corp. v. Yellow Book USA, Inc. (E.D.N.Y.) (favorable decision in bench trial)
  • Bloomberg L.P., et al v. Bloomberg Developers Private Limited a/k/a Bloomberg Group a/k/a Bloomberg Groups a/k/a Bloomberg Worldwide, et al.. 1 (S.D.N.Y.) (obtained permanent injunction for client)
  • Warburg Pincus & Co. v. Warburgpimcus.com (E.D.Va.) (favorable order in cyber squatting case)
  • AgriCapital Corporation v. agri.capital GmbH (USPTO Trademark Trial and Appeal Board) (favorable decision in opposition)
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Complex Corporate Transactions

In many transactions, the intellectual property and the related products, services and technology are often the most crucial asset.  Maximizing the value and minimizing business risk requires an understanding of the technology and the business. Our intellectual property lawyers counsel clients on a full range of legal services related to the acquisition, development, commercialization, protection, and enforcement of intellectual property rights and related technology assets.  We have a diverse client base, for whom we regularly handle complex intellectual property transactions world-wide that often necessitate cutting edge and novel approaches in order to get the deal done.  We act as trusted counsel and strategic advisors to our clients on patents, trademarks, copyrights, trade secrets and other issues related to high-technology, such as outsourcing, cybersecurity, and management of open source software.  

Our intellectual property transactional services include the negotiation and drafting of all major documents affecting the use, acquisition, and disposition of intellectual property, including joint ventures, joint-development and strategic alliances, inbound and outbound license agreements, development agreements (e.g., application development and related support), vendor agreements from both a vendor and customer perspective, outsourcing, offshoring and shared services agreements, R&D agreements, co-promotion and marketing agreements, IP acquisition/disposition agreements, commercial-facing IP agreements (e.g., manufacturing, sourcing/supply, service provider and distribution agreements), and M&A-related technology agreements (e.g., transition services agreements). We help our clients evaluate and manage intellectual property risks, develop and implement strategies to protect and enforce their intellectual property to achieve their business goals, restructure their intellectual property assets or acquire intellectual property assets from distressed situations, and evaluate and implement branding and licensing strategies. 

Complex Corporate Transactions

  • Voya Financial’s agreement to sell its Closed Block Variable Annuity segment (with account value of approximately $35 billion) and fixed and fixed indexed annuities business (with account value of approximately $19 billion) to an Apollo-led Investor Consortium.
  • Insight Venture Partners’ majority recapitalization of GraphPad Software, Inc.
  • Apex Group Ltd. and Genstar Capital in Apex’s agreement to acquire the Deutsche Bank Alternative Fund Services business.
  • eVestment’s $705 million sale from Insight Venture Partners to Nasdaq.
  • Centerbridge Partners’ acquisition of a majority stake in Davis Vision and a minority stake in Visionworks.
  • Melinta Therapeutics, Inc. and Vatera Healthcare Partners, Melinta’s majority shareholder, in Melinta’s merger with Cempra, Inc., forming a leading, vertically integrated commercial-stage anti-infectives company.
  • Kinnser Software’s and Insight Venture Partners’ sale of Kinnser to TPG Capital-backed Mediware Information Systems, Inc.
  • FIS, a global leader in financial services technology, in its $477 million sale of a majority stake in Capco, its management consulting business, to private investment firm Clayton, Dubilier & Rice.
  • SmartBear Software’s acquisition by Francisco Partners.
  • Moore Frères & Company’s acquisition of Opera TV, the global leader in enabling the TV and media industry's transition to over-the-top (OTT) content.
  • FIS in its agreement to sell SunGard’s Public Sector and Education businesses to Vista Equity Partners for $850 million.
  • E2open, an Insight Venture Partners portfolio company, in its acquisition of Orchestro, a leading provider of demand signal repositories and preemptive analytics for retail and omni-channel fulfillment.
  • Liberty Oilfield Services, a Riverstone Holdings portfolio company, in its acquisition of the U.S. fracturing, coiled tubing and cementing assets of Sanjel Corporation.
  • Aquiline Capital Partners’ agreement to acquire Simply Business, the U.K.’s biggest business insurance provider.
  • Insight Venture Partners’ acquisition of Diligent Corporation, a take-private transaction valued at approximately $624 million.
  • Syncsort, a global Big Data enterprise software provider, in its acquisition by Clearlake Capital Group.
  • Appriss Inc., a leading provider of data, risk assessment and analytic solutions for government, health information and the consumer industries, in its acquisition of The Retail Equation, a provider of predictive analytics for retail businesses.
  • FIS in its agreement to acquire SunGard, a leading financial software company, in a deal valued at $9.1 billion.
  • Insight Venture Partners in its $84 million investment in Checkmarx, a developer of software solutions.
  • Vatera Healthcare Partners, as part of the investment consortium led by CVC Capital Partners, in the acquisition of a controlling stake in Alvogen, a high-growth pharmaceutical company, from Pamplona Capital Management.
  • Insight Venture Partners in its $92 million control investment in Virgin Pulse, a designer of technology that cultivates good lifestyle habits for employees and is part of Sir Richard Branson’s Virgin Group.
  • HealthcareSource in its agreement to be acquired by private equity firm Francisco Partners.
  • Insight Venture Partners’ acquisition of FireMon, a provider of proactive security intelligence solutions.
  • GFI Software’s sale of TeamViewer, a leading global provider of secure remote support software and online meetings, to Permira, one of Europe’s largest private equity funds.
  • AirWatch investors Insight Venture Partners and Accel Partners in the $1.54 billion sale of AirWatch, the leading provider of enterprise mobile management and security solutions, to VMware, Inc.
  • Seven Mile Capital Partners’ acquisition of Microporous Products from Polypore International Inc.
  • Insight Venture Partners in its significant investment in Kaseya, a leading global provider of IT Service Management software.
  • Men’s Wearhouse $1.8 billion acquisition of Jos. A. Bank.
  • Protective Life Insurance Company’s $1.06 billion acquisition of MONY Life Insurance Company from AXA S.A.
  • Agreement by Par Pharmaceutical Companies, Inc. to acquire JHP Pharmaceuticals for approximately $490 million. 
  • Aquiline Capital Partners' acquisition of majority shares in BI-SAM Technologies.
  • Aviva plc's sale of U.S. life and annuities business and related asset management operations to Athene Holding Ltd for $1.8 billion.    
  • Thales Group's acquisition of LiveTV from JetBlue Airways for approximately $400 million in cash.    
  • Advised on response and remediation of cybersecurity breaches for several technology clients.
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