Patent Litigation and Counseling
As one of a company's most valuable assets, patents are frequently the subject of high-stakes disputes. With creativity, strong technical credentials, and unparalleled trial experience, Jenner & Block’s Patent Litigation and Counseling team asserts and defends patents against both competitors and non-practicing entities in courts across the United States.
Outside the courtroom, clients seek our counsel on infringement risks, and we provide opinions on patent rights involving issues of infringement, patent validity, and freedom-to-operate. In the context of transactions, we conduct patent due diligence, and negotiate and prepare patent licenses and other transaction agreements.
Experience
- Represented a leading developer of biosimilar therapeutics on several matters regarding a PEGylated G-CSF drug product, patent portfolio analysis, and preparation of abbreviated biologic license applications. This work included district court litigation under the Biologics Price Competition and Innovation Act (BPCIA), appeal, and numerous inter partes reviews at the PTAB.
- Represented a global pharmaceutical client in multiple Hatch-Waxman patent infringement suits against ANDA filers regarding a ready-to-use formulation for Precedex (dexmedetomine hydrochloride) drug product.
- Represented a manufacturer of endoscopic surgical instruments in an arbitration brought by an inventor.
- Represented a multinational consumer electronics and software company in a patent infringement lawsuit in the Eastern District of Texas. Our client was accused of infringing dozens of patents. After successful transfer to the Northern District of California, our client filed a motion for judgment on the pleadings based on a double patenting defense and filed a motion to stay the case in view of an inter partes review proceeding that our client joined. The case subsequently settled on favorable terms for our client.
- Represented an automobile manufacturer against patent infringement claims from a not-for-profit institute. The plaintiff asserted that nearly all the manufacturers’ vehicles infringed three patents relating to piston configurations in combination with a solid film lubricant coating and a solid film lubricant coating composition for pistons. After a decisive Markman ruling, plaintiff stipulated to a dismissal of all claims with prejudice.
- Successfully secured summary judgment for a client in a design patent infringement case filed by a manufacturer of electrical chargers. The suit alleged that the USB charger for our client’s popular e-reader infringed a design patent. Arguing that our client’s charger was not sufficiently similar to the patented design to permit a finding of infringement, our team moved for summary judgment even before any substantial discovery took place. We successfully defended it upon appeal.
- Defended a security and surveillance technologies company in a patent license arbitration. The case settled highly favorably after the close of testimony, including cross examination of the plaintiff’s fact and expert witnesses.
- Defended global electronics and services provider in significant ITC and district court litigation. Obtained an early favorable settlement for our client where other defendants ultimately were found to infringe in the ITC and the district court, including an eight figure damages award.
- Represented an automobile manufacturer in a patent infringement suit. In its initial complaint, the plaintiff alleged that our client infringed four different patents related to hard carbon film coatings for reducing friction and wear on metal components. Through extensive claim construction, discovery, and attacks on the asserted patents’ validity in inter partes review proceedings before the USPTO, Jenner & Block successfully narrowed the case down to two patents. We won dismissal without prejudice on a standing issue that was affirmed on appeal. The remaining two patents were determined invalid in inter partes.
- Representation of one of the world’s largest hotel chains in a patent infringement lawsuit related to its reservation system and mobile application concerning real-time synchronization of data. Achieved invalidity of three asserted patents in the USPTO and achieved summary judgement of unpatentability for the one remaining asserted patent in the district court.
Co-Chairs
Co-Chairs