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. As for patent appeals, the Federal Circuit is our home court—we’ve argued more than 70 cases there, and 30 of those cases have been in the past five years. We also recruit top talent from the most prestigious clerkships in the country, including from the Federal Circuit.

We’ve been named to The National Law Journal’s Appellate Hot List, labeled "outstanding" by The Legal 500, and won The American Lawyer’s Litigator of the Year Award, with all of these publications highlighting our IP work. We know that your business innovates, and ours does too—Orrick was named the Most Innovative Law Firm in North America by Financial Times for six years running, in large measure on the strength of this 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 has received numerous 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." We’re handling Oracle’s monumental case against Google—what one judge called the “World Series of IP cases”—in which 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. In a blockbuster patent case for Gilead, we helped persuade a federal district court to wipe out a $2.54 billion damages verdict—the largest patent verdict in history—and then defended that win on appeal. 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 more than 60 cases there in the past 10 years. Eric Shumsky has received awards for his leadership in the Federal Circuit Bar Association. Mel Bostwick has received repeated national recognition for her work in high-stakes patent appeals. 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: We’ve handled patent appeals involving everything from soybeans, genetic sequencing, pharmaceutical research, and marine generators to fuzzy slippers and the machines that manufacture box springs. And we’re arguing appeals both large and small—from a few hundred thousand dollars to $5 billion.

In addition, clients like Cisco, Genentech, and 10X Genomics increasingly turn to us to provide appellate eyes on their highest-profile IP trial work. We’ve been added to litigation teams to draft dispositive motions, both before and after trial. Clients have asked us to help trial teams—whether by drafting jury instructions and handling the charge conference or by preparing motions in limine and digging into thorny legal questions that guide the trial strategy—so that the trial team can focus on the trial itself.

But ultimately, our best calling card is the list of clients who turn to us for IP appeals. It’s a who’s who: Bosch, Cisco, and Dell; Ericsson and Kohler; Gilead and Genentech; Microsoft and Micron; Vizio; and numerous other drivers of international innovation.

  • Unicolors Inc. v. H&M (S. Ct. 2022) | Lead counsel representing Unicolors in a SCOTUS victory of great importance to creators and innovators. SCOTUS backed our arguments by restoring a copyright infringement case brought by Unicolors against fashion giant H&M. Unicolors, a fabric designer, sued H&M for infringing the designs on its jackets, but the Ninth Circuit found that Unicolors’ copyright registration was potentially invalid because of mistakes in the copyright registration form, overturning a jury verdict of willful infringement and damages. The Supreme Court disagreed, reversing the Ninth Circuit in a 6-3 decision written by Justice Stephen Breyer.

    Google Inc. v. Oracle America, Inc. (S. Ct. 2020) | In a case called the “World Series of IP cases,” Orrick’s appellate team has secured two stunning rulings for Oracle in its long-running lawsuit against Google. In 2014, Orrick persuaded the Federal Circuit to overturn a 2012 ruling that the thousands of lines of Oracle software that Google copied into its Android operating system had no copyright protection. Reuters called this decision a “HUGE ruling.” This led to a jury trial in which a jury found Google’s copying fair use. Orrick’s appellate team scored their next major victory when the Federal Circuit overturned the 2016 jury verdict and held Google’s copying not fair use as a matter of law. Orrick then successfully defeated Google’s effort to seek rehearing, which was made more difficult by the fact that numerous stakeholders filed briefs supporting Google.

    Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc. (Fed. Cir. 2019) | Orrick obtained a series of victories for Donghee in a multi-front patent war over Donghee’s groundbreaking automotive fuel tanks. Its competitor Plastic Omnium claimed that Donghee’s manufacturing process infringes some eight different patents, seeking tens of millions of dollars. Orrick convinced Plastic Omnium to drop multiple patents; convinced the district court to hold as a matter of law that Donghee doesn’t infringe the remaining patents; and convinced the PTAB to cancel many of Plastic Omnium’s patent claims outright. On appeal, Plastic Omnium dropped one appeal, is settling another, and in a third, the Federal Circuit affirmed the district court’s decision and rejected Plastic Omnium’s patent infringement claims, leaving Donghee free to continue using its novel technology.

    Regents of the Univ. of Minn. v. Ericsson Inc. (Fed. Cir. 2019) | We obtained a precedent-setting win for Ericsson in a high-profile and high-value patent dispute before the Federal Circuit. After the University of Minnesota sued various Ericsson customers for patent infringement, Ericsson invoked an important statutory procedure that allows the Patent Office to re-evaluate patents it has already issued. The University asserted that it was not required to participate in this Patent Office process. Emphasizing that the University is part of the State, the University argued that all states have sovereign authority to decline to participate in federal litigation. The Federal Circuit rejected the University’s argument. Ericsson convincingly explained that sovereign immunity does not apply to the new Patent Office procedures.

    Idenix Pharmaceuticals LLC et al v. Gilead Sciences Inc. (Fed. Cir. 2019) │ Gilead retained Orrick to challenge a $2.54 billion damages verdict—the largest patent verdict in history. A jury reached that blockbuster verdict in a long running patent dispute over Gilead’s blockbuster Hepatitis C drugs, rejecting Gilead’s argument that Idenix’s patent was invalid. The Orrick team worked with the trial team to wipe out the verdict by persuading the district judge that Idenix’s patent was invalid as a matter of law for failure to enable the very broad claims. Orrick took the lead on appeal, successful defending the win, and, indeed, expanding it with a ruling that the patent was invalid for an independent reason as well, for failing to provide an adequate written description.

    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) │ 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 implicates 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.

    Carnegie Mellon Univ. v. Marvell Tech. Grp. Ltd. (Fed. Cir. 2015) │ 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.

    Kirtsaeng v. John Wiley & Sons, Inc. (S. Ct. 2013) │ 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.