Patent & Intellectual Property Rights Appeals

Because intellectual property is at the forefront of your business, it is at the forefront of ours.

Every partner in our group has handled copyright, trademark or patent appeals — and many of our group’s greatest accolades come from this work. We’ve been named to the National Law Journal’s Appellate Hot List, labeled "outstanding" by The Legal 500, won The American Lawyer’s Litigator of the Year Award, and listed on the Financial Times’ list of the 10 most innovative firms, with all of these publications highlighting our IP work. Chambers USA has recognized our ability to "mastermind" the "most complicated legal or technological issues." And our work on these cases is complemented by our close collaboration with our IP group, which recently was named Law360’s IP Group of the Year, among numerous other honors.

We strive to bring a "touch of magic" to all our cases, and have received top accolades for our work in copyright, where we have been able to "demystify the technical issues." Josh Rosenkranz landed on Law360’s list of 2013 Appellate MVPs for our "long odds" victory at the U.S. Supreme Court in Kirtsaeng v. John Wiley & Sons, which helped keep alive a $60 billion gray market for copyrighted works. And we emerged as champions in the "World Series of IP cases" when the Federal Circuit overturned a decision that the thousands of lines of Oracle software that Google copied into its Android operating system lacked copyright protection. We also were honored for our "dramatic reversal of fortune" for MGA in the epic Bratz v. Barbie showdown, and we repeatedly have prevailed for DISH Network, fending off the major TV networks’ efforts to shut down the advanced recording and commercial-skipping features of its Hopper DVR.

As for patent appeals, the Federal Circuit is our home court — we’ve argued 25 cases there in the past three years. Mark Davies authored "the user manual" for Federal Circuit appeals, and he and Eric Shumsky have received awards for their leadership in the Federal Circuit Bar Association. As befits a firm originally founded in San Francisco, our bread and butter is high-tech: We’ve handled appeals involving DVRs, cell phones, video games, semiconductor chips, automotive alert systems, point-of-sale terminals, memory emulators, computer architecture and much more. And our practice is as broad as it is deep. Beyond high-tech, we’ve handled patent appeals involving everything from soybeans, genetic sequencing, pharmaceutical research and fuzzy slippers to marine generators and the machines that manufacture box springs. And we’re arguing appeals both large and small — from a few hundred thousand dollars to $1.5 billion.

Of increasing importance in the post-America Invents Act world, we are at the forefront of appeals to the Federal Circuit from the Patent Trial and Appeal Board (PTAB). We’re handling appeals that challenge determinations by the PTAB; appeals that defend determinations by the PTAB; and even appeals concerning the availability of suits under the Administrative Procedure Act to contest the PTAB’s procedures. We are counseling clients about how to shape the still-evolving law concerning these administrative proceedings. And we are counseling clients how best to position these issues for appeal.

    • In a case that has been called the “World Series of IP cases,” Orrick scored a stunning appellate reversal for client Oracle against Google. The Federal Circuit overturned a ruling that the thousands of lines of Oracle software that Google copied into its Android operating system had no copyright protection. Reuters called the decision a “HUGE ruling.” Google Inc. v. Oracle America, Inc. (Fed. Cir. 2014)
    • Secured a decisive 6-3 victory in persuading the Supreme Court that the “first sale doctrine” applies to copies of a copyrighted work lawfully made abroad, despite the Court’s 4-4 split on the same issue just three years earlier. Kirtsaeng v. John Wiley & Sons, Inc. (S. Ct. 2013)
    • Persuaded the Supreme Court to allow pharmaceutical companies to study and experiment with drugs covered by other companies’ patents, a ruling that the National Law Journal described as “the most significant patent infringement case to confront the biotech and pharmaceutical industries in a generation.” Merck KGaA v. Integra LifeSciences I, Ltd. (S. Ct. 2005)
    • Defended Carnegie Mellon University in a highly publicized appeal of CMU’s $1.5 billion patent infringement judgment against Marvell Technology. Orrick handled the exceedingly complex appeal in the Federal Circuit, preserving the liability ruling and fending off some of the most serious challenges to damages—all leading to a $750 million settlement for our client. Carnegie Mellon Univ. v. Marvell Tech. Grp. Ltd. (Fed. Cir. 2015)
    • Represent Synopsys in multiple interrelated appeals in what The Recorder has called “the holy patent war over chip design software.” The dispute involves six different patent appeals to the Federal Circuit, with Orrick taking the lead in five, and implicate numerous cutting-edge issues of patent law, including critical rules governing the new system for challenging patents, how to calculate certain patent damages, and who may challenge the validity of a patent. Mentor Graphics Corp. v. EVE-USA, Inc. (Fed. Cir. 2017); Synopsys, Inc. v. Lee (Fed. Cir. 2016); Synopsys, Inc. v. Mentor Graphics Corp. (Fed. Cir. 2016); Mentor Graphics Corp. v. EVE-USA, Inc. (Fed. Cir. Nos. 15-1554, 15-1556); Mentor Graphics Corp. v. Lee (Fed. Cir. No. 13-1669)
    • Adopting nearly all of Orrick’s arguments in its opinion, convinced the Federal Circuit to uphold the district court's determination of non-infringement. Imaginal Systematic, LLC v. Leggett & Platt, Inc. (Fed. Cir. 2015)
    • Won major victories for Apple in multiple Federal Circuit appeals involving smartphone technology—part of the high-profile “smartphone wars” for which Legal 500 recognized our work. Motorola Mobility LLC v. ITC (Fed. Cir. 2014); Apple Inc. v. Motorola, Inc. (Fed. Cir. 2013); Apple Inc. v. ITC (Fed. Cir. 2013)
    • Led Apple to two major Federal Circuit victories, convincing the court that the Patent Trial and Appeal Board had erred in rejecting important patent claims involving technology created by Apple that is ubiquitous in smartphones today. In re Lemay, (Fed. Cir. 2016), In re Van Os, (Fed. Cir. 2016)
    • Prevailed in three appeals for Dow AgroSciences in a complex and high-stakes patent dispute that threatened one of the company’s most important products, involving herbicide tolerant plants.  Bayer ultimately was ordered to pay Dow nearly $6 million in attorneys’ fees for Dow and Orrick’s victory in the second case.  Orrick defended the award of attorney’s fees on appeal. Bayer CropScience AG v. Dow AgroSciences LLC (Fed. Cir. 2014); Bayer CropScience AG v. Dow AgroSciences LLC (Fed. Cir. 2013); Bayer CropScience AG v. Dow AgroSciences LLC (Fed. Cir. 15-1854)
    • Represented at trial by another firm, Apple had prevailed on non-infringement but the judge had ruled the patent valid. On appeal, Orrick was able not only to get the non-infringement verdict affirmed but persuaded the appellate court to invalidate the patent. Wi-LAN, Inc. v. Apple Inc. (Fed. Cir. 2016)
    • Won what the Washington Post described as a “landmark ruling,” successfully defending DISH Network’s commercial-skipping Hopper technology against copyright claims brought by the major television networks.  Fox Broadcasting Co. v. DISH Network LLC (9th Cir. 2013); Fox Broadcasting Co., Inc. v. DISH Network LLC (9th Cir. 2014); DISH Network LLC v. ABC (2d Cir. 2014)
    • Obtained a win for Nintendo in a high-stakes appeal fending off an effort to block the company’s most important and successful product—the Wii—from the U.S. market. Motiva, LLC v. ITC (Fed. Cir. 2013)
    • Scored, on behalf of EMC Corporation, the definitive pre-America Invents Act opinion addressing the improper use of joinder in patent cases, for which we were named a finalist for American Lawyer’s IP Litigation Department of the Year. In re EMC Corp. (Fed. Cir. 2012)
    • Overturned a contempt finding that had threatened DISH Network’s very existence by ordering it to turn off the recording capabilities of millions of customers. TiVo Inc. v. EchoStar Corp. (Fed. Cir. 2011) (en banc)
    • Earned summary affirmance of a ruling that Intel’s channel erase semiconductor devices did not infringe a patent covering source erase devices.  Fast Memory Erase, LLC v. Intel Corp. (Fed. Cir. 2011)

Client Results