Trials and Appeals
We have won trials and summary judgments for our clients in matters involving hundreds of millions of dollars in damages and years of product development. Our work includes:
- Kite Pharma, Inc., a subsidiary of Gilead Sciences, Inc., in invalidating the plaintiff’s patents during infringement litigation over an innovative cancer therapy and reversing a judgment for $1.2 billion and royalties.
- Takeda Pharmaceuticals and its affiliates, in obtaining judgments of infringement and awards of injunctive relief against three companies in a bench trial over generic versions of the acid reflux drug Dexilant.
- AbbVie, Inc., in prevailing at a jury trial, and on appeal, in patent litigation against Novartis involving the cyclosporine product Gengraf.
- Microsoft, Dell and Hewlett-Packard in winning summary judgment, successfully defended on appeal, in a suit involving software multithreading.
- Rambus, as both plaintiff and defendant in successful battles against the world’s largest dynamic random-access memory (DRAM) manufacturers in a battle for rights to the fundamental design of the memory chips used in nearly all major computing devices. We obtained a $306 million jury verdict in a patent trial against one party, and a successful verdict against monopolization and unfair competition claims brought by others. We also defeated a $400 million patent damages offset through breach of contract counterclaims after a bench trial.
- AbbVie, then part of Abbott Laboratories, in winning an en banc Federal Circuit ruling that fundamentally altered the standards for determining inequitable conduct before the U.S. Patent and Trademark Office.
- Intel, Comcast, High Tech Inventors Alliance and others, as amicus at the Federal Circuit and Supreme Court on high-profile issues ranging from the scope of appellate review over PTAB decisions to the permissibility of functional claiming.
Infringement and Licensing
We have defended infringement cases brought by both competitors and non-practicing entities, for clients such as:
- Google LLC in setting an important precedent for obtaining mandamus relief for patent infringement matters and obtaining a critical change of venue.
- Google and YouTube, in prevailing against five asserted patents for compressing and streaming digital video, invalidating two, obtaining favorable claim constructions on two more and dismissing the last as directed to ineligible subject matter.
- Snap, Inc., against charges it infringed the patents of social mapping application You Map and misappropriated trade secrets by signing up for a beta test of its software.
- Intel Corporation in dismissing infringement claims brought against it in a broad litigation campaign targeting wireless networks, broadband internet providers and network equipment suppliers.
- Abbott Laboratories in a long-running patent licensing and trade secret dispute involving genetic amplification technology now used in COVID-19 testing, leading to a very favorable settlement for the client.
- PNC Bank in limiting the damages awarded in multiple patent infringement lawsuits relating to its remote check deposit patent portfolio.
We have counseled pharmaceutical clients through claims of monopolization, “sham litigation” and “pay-for-delay” arrangements brought by competitors, federal agencies and wholesalers, including:
- AbbVie, in overlapping class actions and enforcement proceedings in multiple jurisdictions related to alleged “sham litigation” patent settlements with generic drug manufacturers regarding the testosterone replacement therapy AndroGel, with claims totaling billions of dollars.
- Actavis, as lead appellate counsel in the landmark FTC v. Actavis decision, where the U.S. Supreme Court held that "reverse payment" pharma patent settlements are not presumptively unlawful, but should be evaluated under the rule of reason.
- Takeda Pharmaceutical, in obtaining a denial of class certification to two proposed classes of indirect purchasers alleging that Takeda's conduct in licensing and enforcing patents delayed entry into the market of a generic version of the muscle relaxant, Skelaxin®. This was one of the first denials of certification of a large proposed class in pharmaceutical antitrust litigation.
- Kite Pharma: Overturning a $1 billion medical patent infringement ruling
MTO and co-counsel helped Kite Pharma, Inc., a subsidiary of Gilead Sciences, defeat a patent infringement complaint filed by Juno Therapeutics (now a subsidiary of Bristol Meyers Squibb) and its licensor, the Memorial Sloan Kettering Cancer Center, regarding two prominent start-ups’ competing cancer treatments. The plaintiffs alleged that Kite Pharma’s biologic drug, Yescarta®, infringed their patent and claimed more than $1.2 billion in damages.
The case went to trial in December 2019 and the jury returned a verdict in favor of Juno. Kite appealed to the U.S. Court of Appeals for the Federal Circuit. In August 2021, the Federal Circuit reversed the district court’s judgment, agreeing with our argument that the asserted patent claims were invalid for lack of adequate written description. The Federal Circuit rejected Juno’s petition for rehearing. Juno filed a petition for certiorari with the Supreme Court, which was rejected in November 2022. Juno filed a petition for reconsideration, which was denied in January 2023.
Media Coverage: Fed. Circ. Wipes Out $1.1B Juno IP Win On Cancer Drug
- Google: Dismissing patent infringement claims on multiple appeals
We obtained a complete victory on behalf of Google in Data Engine Technologies LLC v. Google LLC, which alleged that Google Sheets infringed on six Data Engine Technologies patents covering the concept of using tabs to organize a “three-dimensional spreadsheet.”
Google initially obtained dismissal of the case, under the Alice standard, describing the patents as too abstract to be valid. The Court of Appeals for the Federal Circuit reversed that decision and, on remand, Google retained Munger, Tolles & Olson to prepare the case for trial.
Our team, led by Gregory P. Stone and Zachary M. Briers, obtained an order granting a favorable construction of the disputed claim term, successfully arguing that Google Sheets does not present data in a three-dimensional format. Following this, the District Court granted summary judgment in September 2020, finding that Google Sheets does not infringe the asserted patents.
Data Engine Technologies appealed to the Federal Circuit, countering that the term “three-dimensional” was not distinguishing in this context. A team led by Ginger D. Anders defended the ruling and a three-judge panel upheld the summary judgment for Google in August 2021, stating that “where the preamble is relied on to distinguish prior art during prosecution, it cannot later be argued that the preamble has no weight.”
Media Coverage: Fed. Circ. Clears Google In Spreadsheet Patent Case
Zachary M. Briers
Heather E. Takahashi