Practice Areas & Industries: Jenner & Block LLP

Practice/Industry Group Overview

Intellectual Property is one of the most complex and interconnected areas of the law. In today's business climate, corporations and their shareholders recognize the long-term value of intellectual property assets such as patents, trademarks, copyrights and trade secrets. These assets require consistent and comprehensive protection. The Practice significantly expanded its intellectual property capabilities with the recent addition of attorneys who previously practiced at Roper & Quigg, Pennie & Edmonds and Pryor Cashman. Today, Jenner & Block has more than 60 professionals with significant experience in patent, trademark and copyright matters.

We provide our clients with sophisticated intellectual property capabilities¿ from high-stakes, bet-the-company patent, trademark and copyright infringement litigation, complex outsourcing and licensing counseling to cutting-edge representation in the digital realm and beyond. Some of the world's largest and most respected companies such as The Dow Chemical Company, Johnson & Johnson, Phillips Petroleum Company, SPX Corporation, Hitachi, Ltd., Commonwealth Edison Company, SkillSoft plc., Pechiney Rolled Products, Llc., Mitsubishi Electric Corporation and Universal Music Group regularly depend on the skills of the attorneys in our Intellectual Property Practice.

Our Intellectual Property Practice focuses on the following areas:

Services Available

We offer services in the following areas:

Patent Litigation and Transactions

Many major international corporations retain Jenner & Block's high-stakes Intellectual Property Practice to represent them in bet-the-company patent litigation matters. We have more than 40 attorneys who focus on patent litigation in a wide variety of technical areas and we have garnered an impressive record of wins in District Courts, the Court of Appeals for the Federal Circuit, interference proceedings before the United States Patent and Trademark Office, and arbitration proceedings. Most recently, our attorneys represented Union Carbide Corporation in obtaining a $152 million judgment against Shell Oil Company in a patent infringement case.

We also have a strong history of creating opportunities for very favorable settlements for clients as a result of positive summary judgment rulings and claim constructions in Markman rulings. Recently, a team of attorneys saved a product with $100 million in annual revenue that was developed by Johnson & Johnson's new biotechnology subsidiary, Alza, by obtaining a favorable Markman ruling entirely disposing of the case without a trial. Through favorable Markman and summary judgment rulings our attorneys have also won damages awards and established license agreements with payments totaling approximately $40 million with the expectation that future royalties will exceed an additional $60 million.

The technology involved in recent cases includes:

• Electronic ballasts
• Electronic storage devices including DRAM chips and mass storage devices
• Cathode ray tubes (CRTs)
• Text-comparison algorithms in computer software
• On-line learning technology
• Liposomal drug delivery systems
• Blood filter equipment
• Laser eye surgery, intraocular lenses, and contact lenses
• Gelcap technology used on Tylenol® products
• Catalysts for making ethylene oxide
• Polymers and catalysts for making polymers
• Agroscience involving canola seeds and oils

Our practitioners come from diverse educational backgrounds, many of whom have degrees in the fields of science and engineering. We are knowledgeable about the myriad intellectual property issues facing industries as varied as biotechnology, pharmaceutical, medical device, chemical, petrochemical, plastics and electronics¿hardware and software. Our patent practice also includes counseling and rendering opinions on patent rights, as well as patent due diligence, and negotiating and preparing patent licenses and other transaction agreements.

Trademark and Unfair Competition

Jenner & Block has a high-profile and dynamic trademark, unfair competition and trade secret practice. We have more than 20 attorneys who focus on trademark, unfair competition, trade secret and false advertising litigation, as well as trademark prosecution and the counseling and due diligence aspect of corporate transactions. In recognition of the growing intellectual property needs of our clients, Jenner & Block has significantly expanded its IP practice in recent years with the addition of attorneys who previously practiced at Roper & Quigg, a prominent intellectual property trial boutique, and the addition of IP litigators to our New York office who worked most of their careers with the former IP boutique Pennie & Edmonds, as well as IP lawyers who joined the Firm from Pryor Cashman Sherman & Flynn and Holland & Knight.

Our attorneys provide comprehensive legal services in the areas of trademarks, unfair competition, false advertising, trade secrets and the Internet. Our experience extends from the creation, maintenance, and exploitation of trademark rights to their protection in worldwide competition against infringement, misappropriation, deceptive trade practices, and counterfeiting. This practice also audits intellectual property assets in the context of due diligence required for sale, acquisition and securitization purposes.

Copyright Litigation

Copyright law is currently among the most dynamic and closely watched areas of the law. Jenner & Block is literally leading the way to define and protect the next generation of digital content and our attorneys have a unique understanding of the legal challenges faced by companies and artists on this new frontier. Because of the depth of experience of the lawyers at Jenner & Block, a broad array of entertainment companies ¿ from the record industry to the movie industry to new technology companies ¿ regularly call on us to represent them on specific cases and transactions and to counsel them on new or difficult issues.

We have experience in the widest spectrum of copyright issues¿from the groundbreaking decision before the United States Supreme Court in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., whichThe National Law Journal recently described as "the most important copyright challenge in decades," to our representation of Universal Music Group, the Recording Industry Association of America, and our ongoing work with SoundExchange, an organization of recording companies and artists working to define copyright law in the new and ever-expanding digital world.

E-business and New Media Law

The Intellectual Property attorneys are heavily involved in e-business and new media law issues. Our practice in this area draws on a wide variety of legal experience from attorneys throughout Jenner & Block, including our Telecommunications, Corporate Law, Commercial Law, Advertising Law, Antitrust, Government Contracts, and First Amendment and Appellate Practices. The breadth of these resources allows our attorneys to assist clients with the myriad legal issues relating to Internet services and technologies.

Our attorneys counsel clients on a broad range of issues related to e-business and new media, including intellectual property, electronic contracting and privacy issues. They provide support both to e-commerce companies and to brick-and-mortar companies in all stages of establishing and maintaining an online presence. Our attorneys assist clients with:

• Contracting with vendors in establishing and operating e-commerce websites.
• Establishing website terms and conditions and end-user agreements.
• Developing data collection, maintenance and distribution policies.
• Creating and implementing website privacy policies, including addressing issues related to the Children's Online Privacy Protection Act.
• Auditing planned e-commerce websites for potential business methods patents and prosecuting those patents.
• Trademark and domain name disputes and resolution thereof.
• Protection of copyright interests.
• Assessment of potential liabilities and compliance counseling relating to new media convergence technologies.
• Development of corporate policies relating to the management of electronic documents and employee use of the Internet.
• Export controls of encryption technology.

The Intellectual Property Practice also has the skills of our 400-lawyer firm available to address e-business and new media law matters. For example, Jenner & Block attorneys regularly work on matters relating to domestic and international regulation of expression on the Internet, including challenges in the Supreme Court and other federal courts to Internet regulation. In addition, Jenner & Block attorneys have experience in the developing regulation of access to the Internet (including issues related to voice over IP (Internet Protocol) technologies), advertising challenges relating to the advertising of Internet Service Provider services in the National Advertising Division of the Better Business Bureau, and constitutional challenges to export controls of encryption technology.