Sullivan & Cromwell's Intellectual Property and Technology Group brings together attorneys from all aspects of the Firm's practice to assist clients around the world with the full spectrum of intellectual property and technology issues that confront today's businesses. These include enforcing patents, trademarks and other intellectual property against infringers and defending claims of infringement; negotiating, structuring and advising on technology transfer and licensing arrangements; conducting intellectual property due diligence in various corporate transactions; evaluating the desirability of seeking federal intellectual property protection; and obtaining security interests in intellectual property and licensing. The Group has a proven track record of achieving successful outcomes for our clients across multiple disciplines, including:
IP Litigation
Litigators in S&C's Intellectual Property and Technology Group have extensive experience and world-renowned expertise in handling complex intellectual property disputes. They are regularly recognized as leading intellectual property practitioners by prominent legal media including Lawdragon, New York Super Lawyers and The Los Angeles Area's Best Lawyers.
- S&C litigators are not solely "patent" counsel who handle only technical and scientific cases; they have a wide range of experience, making them able to communicate effectively with judges and juries regardless of the complexity of the technology involved.
- The Group's experience and success in directing large and important litigation enable the Firm to provide outstanding representation in the most complex and difficult intellectual property lawsuits.
- The Firm's lawyers take a multidisciplinary approach to every matter. Because many, if not most, intellectual property litigation now involves antitrust or competition law issues (sometimes pleaded in the form of a patent misuse defense), the lawyers in the Group are also ideally suited to handle such matters because of the Firm's complementary antitrust experience.
IP Transactions
S&C provides specialized advice and insight to clients relating to the successful negotiation and completion of all manner of transactions involving intellectual property and technology. We are well-versed in the issues surrounding technology transfers, joint ventures, acquisitions, dispositions and licensing. We have assisted in the establishment and maintenance of various online and licensing-based businesses.
Licensing
S&C has the preeminent practice in advising on various intellectual property and antitrust issues that arise in licensing, particularly with respect to patent pools. Our lawyers regularly speak about these issues, and their publications are widely cited in this field. S&C has represented a number of clients in connection with the formation of patent pools involving standardized technologies such as MPEG-2, MPEG-4, IEEE 1394, DRM, Blu-ray disc, HDDVD, CD, DVB-T, ATSC, VC-1 and others. Our practice in this area extends outside the U.S. to the European Commission and other governmental or regulatory agencies.
Electronic Exchanges
S&C's leading experience in the development and regulation of financial markets and exchanges has enabled the Firm to assist clients in the creation of new economy marketplaces. The Internet and the development of electronic commerce are rapidly reshaping the electronic marketplace. S&C has been involved in some of the most cutting edge issues and litigation on this frontier.
IP Counseling
S&C regularly counsels clients on a wide range of strategic and day-to-day intellectual property related issues associated with the development, acquisition and maintenance of intellectual property portfolios. We routinely consult with clients in connection with the development and management of intellectual property, including trademark clearance, brand strategy, patent licensing programs, the establishment and maintenance of website policies, trade secret protection and tax planning. We also assist companies in the interpretation and application of various licensing arrangements.
Selected Clients
Recognized for its superior track record, S&C's Intellectual Property and Technology Group is retained, year after year, as counsel to leading companies worldwide in many of their most significant and complex intellectual property matters. The Group's clients have included, among many others: Koninklijke Philips Electronics, Columbia University, Dyson, Matsushita Electric Industrial Co., Mitsubishi, Thomson, Sony, Novo Nordisk Pharmaceuticals, Bridgewater Associates, The Clearing House Association, France Telecom and Verifone.
Recent Intellectual Property and Technology Highlights
Recent intellectual property litigation victories include, among others:
- Obtaining dismissal on summary judgment of a patent infringement claim brought by Oreck against Dyson in the Eastern District of Louisiana in 2006. After eliminating the patent claim, Dyson and Oreck settled the remaining false advertising claims.
- Successfully defending Dyson in a patent infringement action in which the U.S. Court of Appeals for the Federal Circuit affirmed a district court's decision granting Dyson's motion for summary judgment, holding that Dyson did not infringe a vacuum cleaner patent for which an inventor sought substantial damages.
- Achieving a favorable settlement on behalf of Dyson following a 5-day patent infringement trial against Hoover in the District of Delaware in May 2007.
- Prevailing on behalf of Eisai in a patent infringement action to protect Eisai's patent on a lucrative anti-ulcer drug against a generic manufacturer. The Southern District of New York granted one motion for summary judgment in favor of Eisai, and another in part. In 2007, following a bench trial, the court entered judgment for Eisai on validity and infringement.
- Achieving a significant victory for Novo Nordisk in a June 2006 decision denying a preliminary injunction made by Novo's competitor Sanofi-Aventis. The court rejected every claim in Sanofi-Aventis's motion alleging Novo made false statements under the Lanham Act.
- Achieving successful pre-trial results for Philips in connection with the assertion of patents related to recordable compact discs. The district court found Philips' patents to be infringed, dismissed defendants' affirmative defenses and counterclaims, including an antitrust counterclaim seeking damages of approximately US$ 1 billion. On the morning of trial scheduled to determine damages to be paid to Philips, defendants agreed to pay substantial royalties to Philips.
- Obtaining repeated victories on behalf of clients Philips Electronics North America and U.S. Philips in patent infringement lawsuits involving a universal remote control patent. Significant wins include a jury trial awarding Philips damages of US$ 1 for each of the nearly 5.8 million remote controls sold, and a later decision upholding the award and granting Philips attorneys' fees and expenses. In April 2006, S&C prevailed in an appeal in the Federal Circuit, affirming an award to Philips in all respects.
- Acting as "instructing" counsel in a successful trial in German district court in December 2006 on behalf of Sony, Philips, Columbia University, Mitsubishi, Matsushita and others. The Court found that the defendant, a manufacturer of DVDs, had infringed the patents-in-suit, and dismissed defendant's antitrust claims.
- Successfully representing multiple patent owners in various patent infringement actions brought in Germany involving MPEG 2 video compression patents. S&C identified the infringing technology, selected the patents to be included in the litigation, selected local German counsel, negotiated with the defendants and ultimately concluded favorable settlements that resulted in all defendants entering into licenses and paying back royalties.
Recent 2007 corporate transactions involving intellectual property include, among others:
- Assisting in due diligence and the transfer of various intellectual property assets in the acquisition of Collective Licensing International and Stride Rite by Collective Brands (formerly Payless ShoeSource).
- Assisting in the divestiture of Eastman Kodak's medical imaging and health-care information technology businesses to Onex Corporation, which involved the transfer of thousands of patents and numerous trademarks.
- Assisting Amgen in the acquisitions of Alantos Pharmaceuticals, a private biotechnology company developing drugs for the treatment of diabetes and inflammatory diseases, and Ilypsa, a private biotechnology company developing non-absorbed drugs for renal disorders.
- Representing Rhône Capital III in its acquisition of International Paper's Arizona Chemical business, a leading global supplier of pine chemicals for adhesives, inks and coatings, lubricants, fuel additives, mining and oleochemicals markets holding numerous intellectual property assets including patents.
Practice Contacts
Garrard R. Beeney
New York
P +1-212-558-3737
F +1-212-558-3588
[email protected]
