Intellectual Property — Recent Engagements

Below are selected examples of our broad level of experience in IP counseling, prosecution, and litigation for clients:

• Affymetrix - Patent Litigation. In two patent cases involving GeneChip® array technology, Affymetrix v. Synteni and Incyte Pharmaceuticals and Oxford Gene Technology v. Affymetrix, Orrick successfully defeated an interference action in the U.S. PTO. After the decision was announced, Affymetrix's market capitalization increased by approximately $1 billion.
• Alcon Laboratories, Inc. – Patent Litigation. Orrick represented Alcon Laboratories in Allergan Inc., et al v. Alcon Laboratories, et al, a patent/ANDA (Abbreviated New Drug Application) case, in which the trademarked drug manufacturer Allergan was attempting to prevent Alcon from obtaining FDA approval to sell generic brimonidine for reducing intraocular pressure in glaucoma patients. By obtaining summary judgment for the client before any discovery was taken, the Orrick team avoided what could have been a two-year litigation and trial process. The Court also found that a declaratory claim for patent infringement under §271(b) was an improper attempt to skirt the Hatch-Waxman Act.
• Alstom ESCA Corporation - Trade Secret and Copyright Litigation. In ABB Power T&D Company, Inc. v. Alstom ESCA Corporation (N.D. Cal.), Orrick lawyers represented Alstom ESCA Corporation, a subsidiary of French-based Alstom, S.A., in a lawsuit filed by a competitor, ABB Power T&D Company. The four week jury trial in this case included trade secret, copyright, and Lanham Act claims in a dispute involving software projects for the electrical energy industry. The jury returned a verdict in favor of Orrick's client.
• Applied Materials - Trade Secret, Copyright, and Trademark Litigation. Orrick represents Applied Materials in several litigation matters including trade secret, copyright, trademark, and RICO claims. In Applied Materials v. McDowell & Co., Orrick represented Applied Materials in litigation of trade secret, trademark and copyright claims involving semiconductor manufacturing equipment technology, obtained a preliminary injunction and subsequent settlementfor a permanent injunction and a multimillion dollar cash payment. Orrick attorneys also assisted Applied Materials as victim of the trade secret theft in a subsequent criminal action tried in a Northern California Federal Court. This action resulted in unanimous jury verdicts leading to convictions of the defendant McDowell & Co. and its president, Rusty McDowell.
• Advanced Micro Devices (AMD) – Trade Secret Litigation. Orrick successfully represented AMD in a significant trade secret and employee-raiding case, Advanced Micro Devices v. Hyundai Electronics America. Orrick obtained for the plaintiff, and successfully defended in appellate writ proceedings, a preliminary injunction in a trade secret case involving “flash memory” semiconductor technology. During these proceedings, Orrick obtained the first “inevitable misappropriation” injunction ever issued in California.
  
  Additionally, in MINC Incorporated v. Advanced Micro Devices, Orrick represented the defendant in litigation of trade secret and unfair competition claims involving software for programmable logic devices. Orrick successfully defeated the plaintiff’s motion for preliminary injunction.
• Arvesta – Patent Litigation. An Orrick team from three offices worked together to obtain summary judgment on the grounds of non-infringement, defeating BASF’s claim for over $100 million. BASF alleged that Arvesta and its manufacturer, Eastman Chemical, infringed a patent alleged to cover a process for creating an organic chemical used to make an herbicide. This team also secured an early stay of all damages discovery and a bifurcation of damages and willfulness issues from the liability trial, so that the client's confidential business plans and competitively valuable financial information were protected from disclosure. Arvesta also secured a very favorable Markman decision. The Federal Circuit recently confirmed the lower Court's summary judgment favoring our client.
• BBC Technology – IP Counseling and Licensing. Orrick represented BBC Technology in a major transaction involving software and hardware licensing with ESPN, Inc. in which ESPN licensed parts of BBC Technology’s Colledia product which supports High Definition digital technology and will allow ESPN to migrate its sports programming to HD television standards.
• Boehringer-Ingelheim Corporation - Patent Litigation. In Boehringer-Ingelheim Vetmedica v. Schering, an Orrick attorney successfully obtained a jury verdict of patent infringement. As a result, Schering was enjoined from selling its competing vaccine for Porcine Reproductive and Respiratory Syndrome, a virally-transmitted swine disease of importance worldwide.
• Cisco Systems, Inc.- Trade Secret and Patent Litigation. Cisco has been an Orrick intellectual property client since 1996. Orrick was recently selected as IP counsel for Cisco in Cisco Systems v. Huawei Technologies Ltd., a patent case involving alleged illegal copying and distribution of Cisco's main product line. Cisco's preliminary injunction motion alleged that defendant Huawei Technologies Co., Ltd., a multi-billion dollar company headquartered in mainland China, and its U.S. subsidiaries, Huawei America, Inc., and Futurewei Technologies, Inc., infringed Cisco's copyrights in its proprietary IOS source code and misappropriated Cisco's trade secrets. Orrick obtained a worldwide preliminary injunction order on behalf of Cisco Systems, Inc.
• In Chrimar v. Cisco, et al., Cisco’s IP telephony products are under attack in patent litigation involving the ability to detect a LAN-connected IP phone and the ability to power it remotely. This matter is ongoing. Orrick represented Cisco in the Proxim litigation involving wireless LAN technology. In this litigation, Orrick succeeded in reaching indemnification from a third party co-defendant, and Cisco’s liability and lawyers fees were assumed by the co-defendant.
• In InterWave v. Cisco Systems, Orrick served as lead counsel to Cisco in a trade secret and patent infringement case involving GSM cellular telephone technology and the use of Internet IP/H.323 protocols for the transport of voice data. The Orrick team successfully defeated a preliminary injunction motion brought by InterWave to halt sale of Cisco’s billion-dollar ViperCell product and succeeded in dismissing all InterWave patents from the case on summary judgment. The case settled after a recommendation by the Special Master that InterWave had also failed to adequately identify its trade secrets and had instead claimed public domain information as its secrets. The case settled favorably for Cisco on the eve of Cisco’s motion for lawyers’ fees.
• Delta Airlines, Inc. – Internet Dispute Resolution. Orrick represents Delta in a number of intellectual property matters. As one example, Orrick defended a declaratory judgment action brought by Delta Funding Corporation over rights to use www.delta.com in Delta Funding Corporation v. Delta Air Lines, Inc.. That cybersquatting case settled with the domain name transferring to Delta Airlines.
• DoubleClick - Trade Secrets Litigation. In DoubleClick. v. Henderson, a seminal New York trade secrets case, Orrick obtained an injunction precluding our client's former officers from creating a competing Internet advertising company - despite the absence of a non-compete agreement.
• Dow AgroSciences LLC (previously Mycogen Plant Science, Inc.) – Patent Litigation. Orrick is lead counsel for Dow AgroSciences in a number of cases in the United States and Australia that involve technology for insect-resistant plants. In some cases, we are asserting Dow AgroSciences’s patent for the technology that makes genes which code for insect resistance and for inserting those genes into plants. We are also defending Dow AgroSciences against infringement claims.
• eBay - Communications Decency Act and Trade Secrets Litigation. Orrick represents eBay in a variety of intellectual property matters. In Lenssen v. eBay, a trade secret case, our Orrick team was able to obtain a very favorable settlement for eBay. In Stoner v. eBay, making innovative use of the immunity provided by the Communications Decency Act, Orrick won summary judgment for our client against claims that it sold unauthorized bootleg recordings through the Internet.
• EMC Corporation – IP Arbitration and Patent Litigation. Orrick represents EMC in a variety of intellectual property matters. Orrick has successfully defended EMC in an arbitration concerning a database management software product in A3 Solutions v. EMC Corporation. In Storage Technology Corporation v. EMC Corporation, Orrick successfully defended EMC against Storage Technology Corporation's assertions of patent infringement related to "virtual tape" technology. The case was resolved in favor of EMC by bench trial in eight months and was affirmed at the Federal Circuit approximately one year later. Orrick defeated Storage Technology’s efforts to stop sales of a key storage device.
  • EMC in the settlement of its patent litigation with Hewlett Packard Company (HP), in which HP agreed to pay EMC$325 million to settle all claims. This is believed to be one of the largest patent settlements in recent history based on public records. To add to the remarkable nature of the settlement, it followed EMC's counterclaim against
    HP. HP commenced the litigation by suing EMC for infringement of seven HP patents. EMC counterclaimed for infringement of six EMC patents, which attacked a broad range of HP products from printers and servers to storage systems. EMC paid nothing to HP.
• General Surgical Innovations and Tyco International Ltd. - Patent Litigation. In Williams v. General Surgical Innovations Inc., Orrick lawyers represented General Surgical Innovations and Tyco International in a patent suit, which if valid, would have covered nearly the entire product line of Tyco subsidiary General Surgical Innovations (GSI). The patent was a continuation-in-part of an earlier patent and the pivotal issue was whether claims in suit were entitled to the filing date of parent or confined to filing date of the CIP. The potential exposure to Tyco was several million dollars. The patent was directed to a device used to create space within a patient's body to facilitate endoscopic surgery, e.g., for hernia repair, removal of femoral artery for use in by-pass surgery, etc. The devices substantially decrease patient trauma and are widely used by doctors. Orrick obtained summary judgment of invalidity in district court which was affirmed by the Federal Circuit.
• In other recent litigation for GSI, Orrick lawyers successfully asserted GSI patents against Guidant Corp. and successfully defended GSI in a patent infringement suit brought by Guidant as well as prevailed in an interference with Guidant, establishing GSI as having the dominant patent position in this area. Guidant then sold its relevant business to Tyco.
• Hoffmann-La Roche – Patent Litigation. Orrick lawyers have represented numerous Roche companies in many patent cases, particularly in the area of biotechnology. They have litigated patents from Roche’s extensive interferon-related and PCR-related patent portfolios. Most recently, Orrick lawyers successfully defended three Roche companies against Housey Pharmaceuticals’ accusations of infringement of its cell-based assay patents. After a decisive Markman victory, Housey conceded invalidity and non-infringement of its patents.
• iVillage, Inc. - Internet Torts. In iVillage. v. Howarth, a groundbreaking case testing the limits of permissible conduct on the Internet, Orrick obtained an injunction and seizure order against defendants who used iVillage's bulletin boards to post anonymous obscene and defamatory messages.
• Johnson & Johnston Associates Inc. (Nikko Materials USA, Inc.).  Johnson & Johnston in an important jury trial victory against defendant R.E. Service Co. (RES) in a patent infringement action involving copper foil laminate technology for manufacturing printed circuit boards. Prior to trial, the Orrick team obtained favorable summary judgments striking RES’ patent invalidity defenses and dismissing the four patents on which RES had counter-claimed as not infringed. After deliberating for less than two hours, the jury found that the defendant had willfully infringed Nikko’s patent. The jury also rejected the defendant’s claim that Nikko had unreasonably delayed bringing its lawsuit. The court had previously dismissed the defendant’s case alleging that Nikko had infringed four of its patents.
• Lucasfilm – Trademark, Copyright and Piracy. Orrick lawyers represent Lucasfilm in a variety of intellectual property matters. Lucasfilm hired Orrick to protect the film "Episode 1: The Phantom Menace" against online piracy.
• In Lucasfilm v. Lenscrafters/U.S. Shoe/Luxxottica Group. The case involved a five-year battle in the PTO and District Court over LucasArts Entertainment Company's Golden Guy trademark, which you can see in the “Star Wars Starfighter” game, and Lenscrafters' similar infringing trademark. Orrick successfully obtained summary judgment as a plaintiff for Lucasfilm and a permanent injunction against Lenscrafters.
• Microsoft Corporation – Patent Litigation. An Orrick Intellectual Property team resoundingly defeated a motion for a preliminary injunction brought against clients Microsoft Corporation and Connectix Corporation in the software patent infringement case VMWare v. Microsoft Corp., which is pending in the Northern District of California.
• In addition, Orrick defended Microsoft in Reiffin v. Microsoft Corp. against infringement claims relating to multiple software patents for Windows 98 and Windows 2000 operating systems involving real-time source code editing and compiling, specifically multi-threading. Prevailed on a written description challenge to one (of two) patent and successfully defended a motion to dismiss anti-trust claims. The latter was affirmed on appeal. The matter is currently pending.
• Mycogen Plant Science, Inc. and Agrig enetics, Inc. Mycogen, a subsidiary of Dow AgroSciences LLC, and Agrigenetics, Inc., in securing the dismissal of an action brought in the Missouri District Court by Monsanto Company, arising under section 291 of the patent laws.
  Monsanto sought to have Mycogen's and Agrigenetics' patent invalidated on the basis that it was anticipated or
  obvious by an earlier-filed Monsanto patent. Orrick successfully argued in a motion to dismiss that Monsanto's 291 action lacked subject matter jurisdiction because a predicate for a 291 action, an "interference in fact" between one or more claims of the patents-in-suit, was lacking. In obtaining this dismissal, Orrick ended the
  matter before discovery began in the case.
• Quantum Corporation – Patent and Trade Secrets Litigation. Orrick lawyers have represnted Quantum in a variety of intellectual property matters. In Quantum Corporation v. Imation Corporation, Orrick successfully sought and obtained a preliminary injunction against Imation based upon a claim of misappropriation of trade secrets. The injunction was obtained within 23 days of filing the complaint. The case has since settled.
• Quickturn Design Systems, Inc./Cadence Design Systems, Inc.-Trade Secrets and Patent Litigation. Orrick lawyers successfully defended Quickturn and its parent Cadence in a major patent and trade secret jury trial involving hardware logic emulation systems, where prior to trial summary judgment had been entered that Quickturn infringed two of the six patents asserted against it. Plaintiffs Mentor Graphics Corporation and Meta Systems were seeking $1 billion in damages. After a five week trial and nine days of deliberation, the jury returned a verdict completely in Quickturn’s favor, invalidating the Mentor patents on all grounds put forth by Quickturn and finding no trade secret misappropriation. Orrick lawyers have also represented Quickturn in a series of District Court, International Trade Commission (ITC), German and French actions seeking to enforce Quickturn’s fundamental hardware logic emulation patents against Mentor, and have won several trials which resulted in injunctions prohibiting Mentor from selling infringing products in the United States. One of Quickturn’s ITC proceedings was especially noteworthy in that it produced the first-ever ITC prohibition against importation of infringing software via electronic transmission.
• Sorin Group. Sorin Group and its subsidiary Ela Medical in their dispute with Medtronic, Inc., relating to patents covering technology used in cardiac rhythm management devices. After lengthy negotiations, the dispute was resolved pursuant to a worldwide cross-licensing agreement, under which Sorin secured its freedom to operate and enhanced the value of Sorin Group’s patent portfolio.
• Wyeth (American Home Products) - Corporation-Copyright, Patent, and "Inventorship." In University of Colorado Foundation v. American Cyanamid Company, Orrick represents American Home Product's wholly owned subsidiary American Cyanamid in a novel "inventorship" dispute. The case has already gone to the Federal Circuit, which vacated a judgment in favor of plaintiffs, and is now on remand to the District of Colorado. We also defended American Cyanamid in a major patent infringement case concerning the HibTITER® vaccine against childhood meningitis, which we won in the trial court and in the Federal Circuit.
• Xerox Corp. – Patent Litigation. In Colorocs v. Xerox, Orrick represented Xerox in a patent infringement case involving color copier technology. The plaintiff claimed infringement of several patents purporting to cover a process for making color copies. Before this action, the patents had never been litigated. The case was litigated in federal court in the U.S. District Court for the Southern District of New York for almost a year before it settled.