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, financial services, electronic devices, traditional and new media publishing, online and broadcast news, information and financial services, 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.

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Patent Litigation

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.  Our patent trial attorneys have experience handling cases in many different technical fields, in particular pharmaceuticals, biologics, computer software, electronics, and medical devices. We are fortunate to count among our regular intellectual property clients Fortune Global 250 companies, one of the nation’s largest privately held companies, and a collection of industry-leading mid-size and start-up companies.  In the pharmaceutical space, we represent patent holders as well as generic manufacturers.  We have prosecuted and defended patent infringement cases involving technologies such as pharmaceuticals, biologics, online software, financial trading systems, medical defibrillators, semiconductors, high-pressure mercury vapor lamps, mechanically locking floor panels, and integrated circuit communication protocols.

Licensing and Transactions

Our transactional work includes developing and implementing licensing strategies for patents, trademarks, copyrights, 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.

Copyrights and Trademarks

We are routinely retained to handle complex copyright and trademark issues of all types.  Our trademark practice includes world-wide prosecution and maintenance programs.  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 and trademark attorneys draw upon years of experience to achieve results for our clients.

Our copyright practice focuses on software, traditional and new media publishing and broadcasting, and includes drafting and negotiating licenses, 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.

Domain Names

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 domain 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:  as one client, quoted in Chambers USA, put it, “When we call, they really drop everything to service our needs.”  That same attitude is infused within the firm’s lawyers:  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 on our clients’ intellectual property issues.

For example, we regularly work with our antitrust attorneys when allegations of anticompetitive behavior are involved in patent litigation or standards-setting counseling; the deep bench provided by our general litigation attorneys enables us efficiently to staff patent cases of any 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 the non-IP aspects of corporate transactions; and our telecommunications attorneys in our Washington, Paris, and Frankfurt offices provide experience on transactions, licensing and patent litigation involving issues that are unique to the communications industry.

We routinely coordinate with counsel in Europe and elsewhere on matters that are litigated across multiple jurisdictions.  For example, members of our team recently worked on a large multinational bankruptcy litigation, appearing at a joint trial between the U.S and Canada.  We have deep relationships with several top patent litigation firms in London and Munich that excel in pharmaceutical 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 competition and transactional issues.  We have a robust competition practice in our Paris office that has 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 product rights are involved.

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Highlights

Pharmaceutical Patent Litigation

We represent leading pharmaceutical companies in Hatch-Waxman and other patent litigation, including recent cases on behalf of Hospira, Inc., Orion Corp., Actavis, Teva, and Barr.  We appear regularly in the courts most often associated with Hatch-Waxman patent litigation, including the District of New Jersey, the District of Delaware, and the Southern District of New York, and are quite familiar with the judges and practices in those courts.  We also 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 on a developed product that has not yet been subject to a lawsuit.

In addition to our Hatch-Waxman experience, the Willkie IP Team has been working on biologics patent matters for many years.  Members of the team have worked on litigations involving recombinant human growth hormone and recombinant erythropoietin.

Pharmaceutical Patent Litigation

  • Pernix v. Actavis (D. Del.) (Zohydro ER) (pending)
  • Recro v. Actavis (D. Del.) (Zohydro ER) (pending)
  • Alcon v. Watson (D. Del.) (nepafenac) (pending)
  • Amgen v. Hospira (D. Del.) (EPO) (pending)
  • Orexigen v. Actavis (D. Del.) (Contrave) (pending)
  • Vivus v. Actavis (D. Del.) (Qsymia) (pending)
  • Sanofi v. Actavis (D.N.J.) (cabazitaxel) (pending)
  • Actavis v. UCB (E.D. Tex.) (rotigotine) (settled)
  • Novartis v. Actavis (D. Del.) (fingolimod) (pending)
  • UCB v. Watson (D. Del.) (rotigotine) (pending)
  • Purdue v. Amneal (Fed. Cir.) (oxycodone) (favorable judgment affirmed)
  • Hospira v. Eurohealth (D.Del.) (Precedex) (settled)
  • Hospira v. Intas (M.D.N.C.) (Precedex) (settled)
  • Amarin v. Watson (D. Del.) (Vascepa) (dismissed)
  • Merck v. Hospira (D. Del.) (ertapenem) (favorable judgment after trial, appeal pending)
  • Abbott v. Hospira (D. Del.) (paricalcitol) (favorable judgment after trial)
  • Dow v. Watson (D.N.J.) (Acanya) (settled)
  • Shire v. Neos (N.D. Tex.) (Adderall XR) (settled)
  • Galderma v. Actavis (N.D. Tex.) (EpiDuo) (settled)
  • Hospira v. Sandoz (D.N.J.) (Precedex) (settled on appeal)
  • Hospira v. Caraco (E.D. Mich.) (Precedex) (settled)
  • Nautilus Neurosciences v. Wockhardt (D.N.J.) (diclofenac sachet) (settled)
  • Nautilus Neurosciences v. Edict (D.N.J.) (diclofenac sachet) (settled)
  • Shire v. Watson (S.D.N.Y.) (Adderall XR) (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:   network and telecommunications, financial trading systems, mercury-vapor lamps, digital signal processors, floor panels, integrated circuit communications protocols, automatic external defibrillators, electric shavers, electronic toothbrushes, 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.  For example, we represent 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 is one of the largest creditors in the global bankruptcy proceedings involving the Nortel group of companies.  We work 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.

Computer and other High-Tech Patent Litigation

  • In re Nortel Networks (Del. Bankruptcy) (pending)
  • Arkema v. Honeywell (E.D. Pa.) (stayed pending reexaminations)
  • SASCO v. Reel-O-Matic Inc. (C.D. Cal.) (pending)
  • Daramic, LLC and MP Assets Corporation v. Entek International, LLC (W.D.N.C.) (settled)
  • Melchior v. Hilite International (N.D. Tex) (pending)
  • CDD Technologies, LLC v. GFI USA, 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.) (judgment of invalidity and noninfringement affirmed)
  • ARRIS v. British Telecom.  (N.D. Ga.) (settled)
  • Uniboard Canada, Inc. v. Unilin Beheer B.V. (D.D.C.) (settled)
  • In re Adelphia Commc’ns Corp (S.D.N.Y Bankruptcy) (plan approved)
  • Koninklijke Philips v. Access CardioSystems (W.D. Wash.) (settled)
  • Koninklijke Philips v. Cardiac Science (W.D. Wash.) (settled)
  • Koninklijke Philips v. Defibtech  (W.D. Wash.) (settled)
  • Cardiac Science v. Koninklijke Philips (D. Minn.) (settled)
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Copyright and Trademark Litigation

Our team has experience in trademark/Lanham Act 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

  • 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 ongoing 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 transactions 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), M&A-related technology transactions (e.g., transition services agreements).  We help our clients evaluate and manage intellectual property risks, protect and enforce their intellectual property, restructure their intellectual property assets or acquire intellectual property assets from distressed situations, and evaluate and implement branding and licensing strategies.

Complex Corporate Transactions

  • 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 LLC acquisition of majority shares in BI-SAM Technologies.
  • Aviva plc sale of U.S. life and annuities business and related asset management operations to Athene Holding Ltd for $1.8 billion.    
  • Thales Group 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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