Intellectual Property

The most innovative companies in the world call on us to protect their intellectual property and defend their brands. We’ve won some of the highest-impact IP cases of recent years, at trial and on appeal. Like our clients, we’ve succeeded by breaking the mold – in the way we’ve framed the issues, in our trial tactics, and in the graphics and other techniques we’ve used to make complex points clear.

A Reputation for Excellence

In naming us the top IP department in the country, The American Lawyer noted that "time and again, we heard stories [from clients] lauding Orrick’s ability to jump into a case and successfully dig its clients out of a hole, even with little time to prepare." They added that we "successfully demonstrated this across an impressive range of venues, using novel strategies."

Litigation

We handle some of the biggest patent competitor disputes, and shut down cases brought by so-called "trolls," prompting The American Lawyer to write that "Orrick’s lawyers don’t just want to beat trolls in court – they want to vanquish them." We have won some of the most influential copyright and trademark cases in recent years, and are one of the few firms with a dedicated Trade Secrets team. We’ve prevailed in the toughest forums: Eastern Texas, Eastern Virginia and Northern California, the Federal Circuit, the U.S. Supreme Court, and the International Trade Commission. Based on these results, The American Lawyer named us one of the top IP practices in its "Litigation Department of the Year" contest.

Counseling

For every IP matter we’ve taken to trial and won, there are many other trials we’ve avoided through effective counseling and negotiation. Some of the best recognized global brands turn to our team for trademark and copyright strategies, from development to protection and enforcement. We have a proven record of successfully negotiating patent licensing and settlement agreements. To preserve trade secrets and avoid liability for misappropriation, we help create effective employment policies and draft restrictive covenants and nondisclosure and noncompetition agreements.

Asia

With three offices in China – Beijing, Shanghai and Hong Kong – we offer Chinese and international clients powerful assistance in cross-border cases. We are one of the firms most often before China’s Patent Review Board. We provide the same to Taiwanese companies through our offices in Taipei, China and the United States.

Our group in Japan, together with colleagues in the U.S., counsels leading Japanese electronics firms. Our team has strong Japanese-language skills and an in-depth understanding of Japanese business culture.

  • Oracle v. Google: We represent Oracle in this copyright and patent infringement case, known as the “World Series of IP” litigation. We asserted that Google relied on Oracle’s copyrighted Java technology to build its Android operating system for smartphones. In the first trial with prior counsel, the jury found Google did not infringe, and the Java API structure which Google used was not copyrightable. However, our appellate team won a critical Federal Circuit ruling, which found the software technology at the heart of the dispute is entitled to copyright protections. Because of our successful appeal, we were granted a second trial on whether Google’s actions were protected by fair use. The second jury ruled in Google’s favor. We appealed that verdict and scored a stunning reversal for Oracle. The Federal Circuit found Google’s use of Java was not fair use as a matter of law. A new trial has been set to decide how much Google should pay Oracle in damages for its unauthorized use of Java.

    C5 Medical Werks v. CeramTec GmbH: When manufacturer CeramTec tried to block CoorsTek Medical from using a key component in its hip replacement products, we rose to CoorsTek’s defense. Claiming trade dress rights in the color pink, a byproduct of the chromium oxide used in CoorsTek’s manufacturing process, CeramTec seized CoorsTek’s hip replacement products in France and served a worldwide cease and desist order. Following an 11-day bench trial in district court, we won the right for CoorsTek to make and sell its pink ceramic hip implants. Moreover, this precedential ruling held that a functional attribute described in a patent that creates a color cannot serve as trade dress.

    Fujifilm Inc. v. Papst Licensing GmbH & Co:  On behalf of Fujifilm, we won all eight IPRs filed against Papst Licensing. As part of ongoing litigation with Papst, our client joined forced with digital camera and mobile phone manufacturers to attack the validity of two patents concerning USB functionality. We took the lead on two of the eight IPRs, and were heavily involved in the other six. The PTAB ruled all instituted claims unpatentable. Moreover, since all the claims asserted against Fujifilm were ruled unpatentable on four separate, independent grounds, we have made significant headway towards defeating Papst in the remaining litigation.

    Metricolor LLC v. L'Oreal:  This case involves claims of patent infringement, trade secret misappropriation, Lanham Act violations and breach of contract. Metricolor had approached L’Oréal about the potential sale or license of its technology for the packaging, storing and dispensing of hair dye. After discussion that took place under an NDA, L’Oréal declined. It had patented similar technology much earlier and Metricolor’s technology did not present any added value. Metricolor then sued L’Oréal in the Central District of California, alleging that two of L’Oréal’s products infringe Metricolor’s patent and incorporate its confidential and trade secret information. L'Oreal hired Orrick to handle the litigation. Several months later, the court granted our motion to dismiss.

    Former Employee v. Synopsys:  On behalf of Synopsys, we scored a rare victory in China, where the system tends to favor employees over employers. Our internal investigation uncovered that a senior employee had pirated, marketed and distributed our client's software. After Synopsys terminated the employee, he initiated a labor dispute before the Beijing Haidian District Labour Dispute Arbitration Committee and demanded to resume his position. After we presented our evidence to the Arbitration Committee in two separate hearings, we received the arbitration order and won the case.

    Hitachi Metals and Metglas v. Advanced Technology & Materials: We defended AT&M, a Chinese state-owned enterprise, from a rare trade secret ITC investigation.  Our team's innovative approach focused on combating the deficiencies in the allegations of misappropriation, as opposed to whether the accused technologies “practiced” the trade secrets. This strategy put early pressure on the complainants and minimized the discovery for our clients. As a result, we won a complete victory when the complainants unilaterally moved to terminate the investigation at the close of fact discovery, without any concession or settlement agreement.