Our intellectual property litigation practice covers intellectual property, including patents, trademarks and copyrights, the protection of trade secrets, and the unfair competition and antitrust issues so frequently involved in intellectual property matters. We are also called upon in significant commercial disputes with intellectual property overtones, such as disputes involving licensing, the transfer of intellectual property rights, or technology-related transactions. Irell & Manella recently obtained a $500 million jury verdict – including $200 million in punitive damages – on behalf of City of Hope National Medical Center in an action against Genentech arising from Genentech’s failure to pay royalties owed on patents relating to fundamental technology that helped to create the biotechnology industry. The depth of our experience with intellectual property issues, our facility with handling technical matters, and our legal innovations have all contributed to our successful representation of our clients in these matters. The attorneys in our intellectual property litigation practice are adept at handling the most technically and legally challenging matters. Many have advanced technical degrees; all have extraordinary academic records.
Irell & Manella’s patent litigation practice is bounded by neither geography nor technical subject matter. As lead counsel, we have litigated patents from every technology discipline, including software, semiconductors, computer peripherals, visual effects, biotechnology, pharmaceuticals, medical products, telecommunications, industrial machinery, video games and e-commerce. We are proud to have been selected to litigate patent matters on behalf of well-known, industry-leading companies such as TiVo, eBay, Novellus, Broadcom, St. Jude Medical and Western Digital, as well as many younger, growing corporations. We also represent a number of leading academic institutions, including Columbia University and the University of Illinois.
Some of our recent engagements illustrate the depth and breadth of our patent litigation practice. For example, we won a $74 million patent infringement verdict for DVR market leader TiVo; we obtained a settlement of $80 million in up front payments and significant future royalty payments for Tessera, Inc. in a patent and antitrust litigation involving semiconductor packaging; we obtained an $82 million verdict against Sony Computer Entertainment in a patent infringement matter involving Immersion’s “force feedback” technology, which ultimately led to more than $150 million being paid by Sony to Immersion; we represented Hewlett-Packard in a nationwide series of cases against Xerox relating to inkjet and laser printer technology; the firm obtained a dismissal on summary judgment of a patent infringement suit against visual effects leader Lucas Digital Ltd. (Industrial Light & Magic) relating to special effects employed in the film Forrest Gump; we successfully represented the Ireland-based pharmaceutical company Elan Corporation in defending claims of patent infringement asserted by Bayer A.G. relating to high blood pressure drugs; and we represented biotech leader Affymetrix in cases relating to genetic sequencing and nucleic acid array technology.
We also represent clients in litigation in the U.S. Patent and Trademark Office Trademark Trial and Appeal Board and the Court of Appeals to bring and defend oppositions and petitions to cancel. We represent plaintiffs and defendants in copyright and trademark litigation, seeking and defending temporary restraining orders, preliminary injunctions, and trials on the merits. We have represented clients in high-profile copyright and trademark litigation. For example, David Nimmer and Jane Shay Wald successfully represented Dastar on the briefs of a case before the U.S. Supreme Court in which Fox claimed a Lanham (Trademark) Act violation for omission of its name on public domain videos of President Eisenhower’s memoirs. We represented publisher Matthew Bender in a copyright action successfully challenging West Publishing Company’s claim to copyright in “star pagination,” in judicial decisions collected in West reporters; we represented video game publisher Activision in a trademark action against MicroProse involving rights to the mark “Civilization”; and we represented Intel against Cyrix and AMD in trademark litigation involving Intel’s MMX™ technology.
The following is a selection of patent-related litigation matters that Irell & Manella has handled:
TiVo Inc. v. EchoStar. Irell & Manella represented TiVo, the developer of the first commercially available digital video recorder and leader in developing and licensing the technology that allows television viewers to control their viewing experience. TiVo sued EchoStar for patent infringement, asserting TiVo’s patent covering digital video recording systems. After a two-week jury trial – and with only two hours and fifteen minutes of deliberations – the jury concluded that EchoStar had willfully infringed TiVo’s patent on its “time-warp” technology for digital video recorders and awarded TiVo $74 million in damages.
AmberWave v. Intel. Irell & Manella represented AmberWave in its patent infringement lawsuits related to AmberWave's strained silicon technology, which is critical to current and future microprocessors. After protracted litigation, the case settled with Intel taking a license to all of AmberWave's patents and patent applications.
Tessera v. Micron and Infineon. Irell & Manella successfully represented Tessera, Inc., a global leader in the development and licensing of semiconductor packaging technology. Tessera alleged patent infringement by Micron and Infineon, two of the world's largest manufacturers of DRAM, which is used as main memory in computer systems. Tessera further alleged that the defendants anticompetitively colluded to forestall widespread adoption of Tessera's patented technology, as part of their efforts to monopolize and then fix prices in the DRAM market. Shortly before jury selection, both Micron and Infineon agreed to resolve the case for $30M and $50M, respectively, in up front payments, and royalty-bearing licenses to Tessera's patents on confidential terms.
Ultratech Stepper, Inc. v. Canon, Inc. and ASM Lithography, Inc. Irell & Manella represented ASM Lithography, a leading manufacturer of photolithographic equipment, which is used to make semiconductor chips. Ultratech sued ASML as well as Nikon and Canon, the other two top photolithographic equipment manufacturers, for patent infringement of “step and scan” machines. Nikon and Canon settled with Ultratech early on in the case. ASML went to trial, arguing that its own “step-and-scan” machine constituted prior art. After a four-week jury trial, the jury returned a verdict for ASML, finding all asserted claims of the patent at issue invalid.
Microprocessor Enhancement Corporation v. Texas Instruments Incorporated. Irell & Manella represented Texas Instruments in an infringement action filed by patent holding and enforcement company Acacia Research Corporation and its subsidiary Microprocessor Enhancement Corporation. Acacia is one of the largest and most aggressive serial filers of patent litigation in the country – the company claims to control some 58 separate patent portfolios. Acacia claimed that sales of TI's high-performance C6000 line of Digital Signal Processing chips infringed a patent relating to architectures for high speed microprocessors. Acacia also asserted the same patent against Intel's Itanium 2 and XScale processors in a parallel case trailing the case against TI. Acacia sought over $94 million in damages from TI plus a permanent injunction barring future sales of all C6000 products (which have annual sales well in excess of $200 million). In 2006, Irell & Manella filed a number of summary judgment motions, seeking a ruling that TI did not infringe and that the patent was invalid. On February 9, 2007, Judge Alicemarie H. Stotler, Chief Judge of the U.S. District Court for the Central District of California entered rulings representing a complete victory for TI. Judge Stotler ruled that Texas Instruments did not infringe any claims of Acacia's patent (on two separate grounds) and that all of the claims of the patent are invalid (again for two separate reasons). Judge Stotler also awarded TI its costs of suit.
Stac Electronics v. Microsoft Corp. Irell & Manella represented a relatively small, independent, computer software developer, Stac Electronics, in this bet-the-company lawsuit against software giant Microsoft. The suit asserted that Microsoft had infringed Stac’s patented data compression technology. After an intense year of pretrial conflict, in which Microsoft devoted enormous resources to the litigation, the case concluded in a month-long jury trial. The jury found that Microsoft infringed two Stac patents and awarded Stac $120 million. After the firm secured a sweeping post-verdict injunction requiring Microsoft to recall infringing products worldwide, the case settled, with more than $80 million to be paid to Stac and with a variety of mutually beneficial cross-licenses.
Immersion v. Sony. Irell & Manella represented Immersion in this patent infringement litigation regarding complex tactile sensation technologies used in the popular Playstation videogame system. After trial in August and September 2004, the jury awarded $82 million to Immersion, and the trial court subsequently entered a permanent injunction against Sony’s sale of the infringing product (which was stayed pending appeal, conditioned on Sony’s payment of a royalty for the duration of the appeal). Ultimately, Sony's appeal was dismissed and Immersion received more than $150 million.
Immersion v. Microsoft et al. In an earlier action in which Immersion asserted the same patents against Microsoft with respect to the Xbox videogame system, Microsoft settled shortly after the claim construction hearing. Under the settlement, Microsoft agreed to pay Immersion $26 million for certain license rights to Immersion’s patent portfolio and an equity stake in the company. Microsoft also agreed to lend Immersion up to $9 million in convertible debt.
In re Certain Electronic Products, Including Semiconductor Products, Manufactured by Certain Processes. (effectively Texas Instruments Inc. v. Samsung Electronics Co.) Irell & Manella represented Texas Instruments before the International Trade Commission in a patent infringement action against Samsung that involved several Texas Instruments patents. This action was one of many patent infringement actions brought by Texas Instruments against Samsung when Samsung refused to renew its patent licensing agreement with Texas Instruments. After extensive litigation, Samsung settled with Texas Instruments by entering into a new patent licensing agreement worth more than $1 billion.
City of Hope National Medical Center v. Genentech, Inc. Irell & Manella represented City of Hope, a non-profit bio-medical research institute and hospital against Genentech, one of the largest biotechnology companies in the world. The suit alleged that, in an effort to deprive City of Hope of hundreds of millions of dollars in royalties, Genentech fraudulently concealed numerous third-party licenses it had granted to patents that City of Hope had assigned to Genentech under a 1976 agreement. The patents at issue arose from early groundbreaking inventions discovered by City of Hope scientists in the field of recombinant DNA technology. After a six week trial, the jury returned a compensatory damage award of $300.1 million and an express finding “of clear and convincing evidence that there was malice or fraud in Genentech’s conduct.” In a second phase of the trial, the jury awarded City of Hope an additional $200 million in punitive damages.
Grayzel v. St. Jude Medical, Inc. Irell & Manella successfully defended St. Jude Medical, Inc. in a patent case relating to vascular closure devices. These devices are used at the end of angioplasty and other cardiac catheterization procedures. The number of cardiac catheterization procedures increased by 400 percent from 1979 to 2002; there are now over 1.5 million such procedures each year in the United States alone. Dr. Joseph Grayzel, a director of one of St. Jude’s vascular closure device competitors, sued St. Jude for patent infringement, seeking to enjoin St. Jude’s AngioSeal vascular closure device and recover a portion of the more than $1 billion in AngioSeal revenue. After discovery closed, St. Jude moved for and was granted a summary judgment of patent invalidity, and the lawsuit was dismissed.
Conner Peripherals v. Western Digital Corp. Irell & Manella represented Western Digital Corporation, a premier maker of hard disk drives, in a case referred to by the Federal District Court for the Northern District of California as possibly “the largest patent litigation in history.” The action involved Conner, Western Digital, and IBM, and more than 20 electrical and mechanical patents relating to disk drive technology. The case against Western Digital was dismissed with prejudice in 1995.
Novellus Systems v. Applied Materials. Irell & Manella represented patent owner Novellus in this lawsuit concerning physical vapor deposition tools and methods for depositing metal onto semiconductor wafers. In 1999, as Novellus was in the process of acquiring the PVD assets of Varian, Applied Materials sued Novellus on four patents related to semiconductor manufacturing equipment and methods. Novellus brought a counter-suit against Applied Materials. Over the seven year period before negotiating a favorable global settlement between the parties, Irell & Manella, on behalf of Novellus, precluded Applied Materials from relying upon various invalidity contentions, defeated in whole or in part three summary judgment motions brought by Applied Materials, and succeeded in having all four of the patents asserted against Novellus dismissed entirely.
Xerox v. Hewlett-Packard. Irell & Manella represented Hewlett-Packard in seven different intellectual property cases against Xerox that were brought in Rochester, New York; San Jose, California; Idaho; and Kansas. After the firm obtained summary judgment in favor of Hewlett-Packard in the initial case filed by Xerox, the parties settled all litigation between them.
Bloomstein v. Lucas Digital, et al. Irell & Manella represented defendants Lucasfilm and Lucas Digital in a patent infringement litigation concerning techniques used to create visual effects in a number of films, including Star Wars Episode I: The Phantom Menace, Star Wars Episode II: Attack of the Clones, and Forest Gump. The firm obtained a dismissal of all claims on a summary judgment of noninfringement and a ruling that one of two asserted patents was invalid. The firm also obtained an affirmance in the Federal Circuit.
Amstrad plc v. Western Digital Corporation and Western Digital U.K., Ltd. Irell & Manella represented Western Digital against the British computer manufacturer’s $200 million contract and warranty claims concerning Western Digital’s hard disk drives. The matter was tried to two juries and ended in a complete defense verdict. The National Law Journal named the result, which was affirmed on appeal, one of the Top Fifteen Defense Verdicts of 1999.
Hewlett-Packard Co. v./adv. Repeat-O-Type Stencil Mfg. Corp. Irell & Manella represented Hewlett-Packard in two separate actions against Repeat-O-Type involving Hewlett-Packard ink-jet cartridges for ink-jet printers. In the first action, Hewlett-Packard sued Repeat-O-Type for trademark infringement and state law tort claims. At trial, we obtained compensatory and punitive damages, plus an award of attorneys’ fees. In the second action, Repeat-O-Type sued Hewlett-Packard for antitrust violations relating to its ink-jet cartridges. We obtained a complete dismissal of Repeat-O-Type’s complaint.
Affymetrix v. Incyte Genomics; Hyseq v. Affymetrix. Irell & Manella represented DNA microarray manufacturer Affymetrix in a series of high-stakes patent litigations in the Northern District of California. First, the firm asserted Affymetrix’s microarray patents against Incyte Genomics, Synteni, and Hyseq. The firm also defended Affymetrix against Hyseq’s claims that Affymetrix’s DNA microarrays infringe Hyseq’s “sequencing by hybridization” patents. The firm also represented Affymetrix against Incyte Genomics’ claims of patent infringement based on Affymetrix’s preparation of genetic sample materials for analysis.
Sonus Pharmaceuticals v. Molecular Biosystems, et al. Irell & Manella represented Sonus, a Bothell, Washington-based pharmaceutical company in patent litigation relating to “ultrasound contract agents,” drugs used to enhance the results of ultrasound scans. The firm represented Sonus in asserting its patents against Molecular Biosystems and Mallinckrodt Medical in the Western District of Washington. After the client obtained a summary judgment finding literal infringement, rejecting various invalidity challenges to the asserted patents and dismissing all counterclaims, the matter was favorably settled. The firm also represents Sonus in the Western district of Washington and the District of Massachusetts in litigation against DuPont involving the same patents.
Bayer AG v. Elan Corporation plc. Irell & Manella represented Elan, the Ireland-based pharmaceutical company, in a series of patent infringement suits brought by Bayer relating to drugs used to treat high blood pressure. In one of the actions, the firm obtained a summary judgment of noninfringement and an affirmance of that summary judgment in the federal circuit. We also represented Elan in other suits brought by Bayer under the same patents, which ended in a settlement.
Pfizer, Inc. v. Elan Pharmaceutical Research Corp., et al. This case involved the interplay of patent law and the law governing FDA approval of new drugs. Pfizer filed a patent infringement lawsuit against Elan in federal court in Delaware, seeking an injunction to block FDA approval of Elan’s once-daily version of the cardiovascular drug nifedipine, which would compete with Pfizer’s Procardia XL (a blockbuster drug with more than $1 billion in annual sales). Irell & Manella, representing Elan, succeeded in persuading the court to dismiss the suit.
Chou v. The University of Chicago, et al. Irell & Manella successfully represented vaccine company Aviron in a multi-party litigation in the Northern District of Illinois relating to inventorship of several genetic engineering patents. The firm obtained dismissal of all damage claims against Aviron, and the United States Court of Appeals for the Federal Circuit affirmed that decision.
Oklahoma Medical Research Foundation v. Eli Lilly & Company. Irell & Manella represented pharmaceutical company Eli Lilly in a high-stakes patent infringement and licensing litigation in Oklahoma relating to Lilly’s blockbuster drug for sepsis, Xigris. After the firm filed summary judgment papers asserting that the plaintiff’s patent was not infringed and invalid, the parties reached a settlement.
AIDS Healthcare Foundation v. GlaxoSmithKline, plc. Irell & Manella represented pharmaceutical company GlaxoSmithKline in a patent and antitrust case relating to its blockbuster AIDS drug AZT and various AIDS combination therapies. The firm obtained dismissal of all the plaintiff’s claims, including claims that GlaxoSmithKline’s AZT patents were invalid and procured by fraud, and the plaintiff ultimately agreed to dismiss its claims.
Medical Analysis Systems, Inc. v. Biopool International, Inc, et al. Irell & Manella successfully represented a Southern California biomedical products company in a complex trade secret litigation. The case involved allegations that individual defendants and Biopool International misappropriated portions of proprietary chemical formulae and techniques.
Candle Corporation v. Boole & Babbage, Inc. This was the first trial ever involving any patent on computer software. Irell & Manella represented Candle Corporation in attacking the validity of a patent issued on software performance monitors for large mainframe installations. Irell & Manella won the case, which was concluded after a two-month jury trial.