With multiple experienced first-chair trial lawyers we cover full IP spectrum:
Our interdisciplinary team sees the full impact of disputes and develops resolution strategies accordingly. Our trial teams have proven successful time and again in some of the most plaintiff-friendly courts.
The American Lawyer writes, "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.
Representing petitioners and patents owners in post-grant proceedings, we handled 175 inter partes reviews (IPRs) in the last five years on a stand-alone basis or as part of a broad litigation strategy. We know how to help clients obtain the best outcome in front of the PTAB.
For every IP matter we’ve taken to trial and won, there numerous trials we’ve avoided through effective counseling and negotiation. Some of the best recognized global brands turn to our team for patent, trademark and copyright strategies that mitigate risk, 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.
Orrick has one of the largest and most experienced trial-ready trademark teams anywhere. Many firms have IP litigators, but few have a trial team dedicated to trademark litigation. We work with the world’s most iconic brands like Williams Sonoma, BIC, New Balance, … as well as new and emerging brands like Adore Me and Nreal Technology … to protect their business and brand. Our stand out team is relied upon for creative solutions handling significant, market moving cases of first impression.
As technology changes at lightning speed, so does the way content is created, shared and protected. Plus with copyrighted software code integrated into products and offerings, clients find themselves facing questions of first impression that are critical to their business. Our copyright lawyers adapt, evolve, move, with the market and have focused careers on litigating and trying cutting-edge copyright cases at the highest level. We have a completely unique and innovative approach to copyright matters involving software piracy, successfully obtaining injunctive relief in the United States and Asia to quickly shut down pirates and their websites.
Our lawyers in Beijing, Shanghai, Taipei and Tokyo have legal and practical industry experience, many working as engineers and scientists before becoming lawyers. It is a distinct advance in technology transactions, handling thousands of patent and trademark applications, and cross-border disputes. We assist international clients with large patent portfolios Realtek Semiconductor Corp., TCL Corporation, and ADATA Technology Co., in patent infringement disputes in Chinese courts and patent invalidation proceedings before China’s Patent Review Board. The Chinese Ministry of Commerce named Orrick as a "preferred U.S. law firm" to represent Chinese companies before the U.S. ITC in patent infringement litigation. For Taiwanese clients we advise IP rights, licensing, and litigation globally and handle litigation in U.S. district and state courts before the PTAB, ITC, U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court.
Our Japan team, together with counterparts in the U.S., counsels leading electronics firms on compliance and risk mitigation and when needed litigates IP disputes in Japanese and U.S. courts.
IGT et al. v. Zynga Inc.: Orrick achieved a defensive win for Zynga in patent ligation brought by gambling technology company IGT. In what was initially a six-patent case that was whittled down pre-trial, jurors in Austin, Texas, found that Zynga’s casino slot games, including Game of Thrones and Hit it Rich, did not infringe IGT’s last patent standing. Furthermore, jurors found IGT’s patent was invalid due to obviousness.
American Lawyer recognized Orrick in its Litigator of the Week feature for this complete trial win. The team earned runner-up honors for the outcome.
DeCurtis LLC v. Carnival Corporation: A cross-practice intellectual property and litigation team secured a sweeping trial win for Carnival Corporation in the Southern District of Florida when a jury awarded $21 million in damages in a patent infringement and breach of contract case against DeCurtis LLC. After an eight-day trial, the jury agreed with our client’s claims that DeCurtis misappropriated the company’s proprietary information related to its novel OceanMedallion™ guest engagement system and infringed a Carnival Corporation patent.
Sonos v. Google: On behalf of Sonos, we won an order from the ITC, which found that Google infringed five Sonos patents and barred the importation of violating products, including Google’s Nest audio speakers and Pixel phones. This is Google’s first loss in the ITC. As a result, every asserted claim survived, and every Google product accused in the complaint was found to infringe. The ITC’s importation ban covers not only Nest speakers, displays, streaming and connectivity products, but also the Pixel phones that control them.
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.
Couchbase v. Redis Labs: We represented Couchbase as plaintiff against Redis Labs and three of its current and former employees for trade secret misappropriation, breach of contract, and breach of duty of loyalty. The case was hard-fought and moved to the complex case docket after two years of litigation. On the eve of a scheduled hearing on nearly two dozen discovery motions, the defendants withdrew all their motions except one whereas Couchbase pressed on and prevailed on each of its motions to compel. Shortly afterward, the case settled, with Couchbase securing an extremely favorable settlement that included a permanent injunction and forensic audit.
Ringcentral, Inc. v. Estech Systems: We secured an early summary judgment decision of no infringement on all asserted patents on behalf of RingCentral and its customer Howard Energy Partners in the Western District of Texas. With a trial looming and summary judgment deadlines two months away, Estech decided to seek a stay of its own case based on a pending RingCentral IPR against one of the two remaining patents. We opposed Estech’s attempt to stay the case and responded by quickly filing for summary judgment before our response to Estech’s motion to stay was due. Judge Albright scheduled a hearing on Estech’s motion to stay but halted the hearing partway through and scheduled a hearing on our motion for summary judgment. The motion for summary judgment of no infringement was granted at the end of the hearing.
Williams-Sonoma, Inc. v. Amazon.com, Inc: We successfully represented Williams-Sonoma (WSI) in a highly contentious battle against Amazon for multiple IP infringement claims including design patent and trademark infringement, dilution, false advertising and unfair competition relating to Amazon’s knockoff of WSI’s West Elm furniture designs; its misleading use of the registered WILLIAMS SONOMA service mark; and for copyright infringement in connection with Amazon’s selection and publication of WSI’s copyrighted product photos. This was a precedent-setting case as we achieved two novel rulings that were the subject of widespread publicity regarding the application of IP law to the Amazon platform. First, the Court upheld the viability of a trademark claim against Amazon for misrepresenting itself as an authorized distributor. Second, the Court held that Amazon’s AI can be held responsible for direct infringement of copyright.
New Balance Athletic Shoe, Inc. v. Converse Inc.: We won a complete victory on behalf New Balance in a six-year long ITC Investigation initiated by Converse involving claims of trade dress infringement related to certain design elements of Converse’s Chuck Taylor All-Star brand footwear. As lead counsel for New Balance, the team first won a Final Determination of no violation in 2016 and then briefed and argued a Federal Circuit appeal in 2018. In October 2019, the team won an Initial Determination of no violation on remand and the Commission issued a Final Determination affirming that decision.
Synopsys, Inc. v. Ubiquiti Networks, Inc. et al.: We represented Synopsys in a hotly contested copyright battle concerning the rights and reach of the Digital Millennium Copyright Act. After filing a complaint for software piracy against both defendants, operating in the US and in Taiwan, discovery unveiled a full scheme involving the trafficking of counterfeit tools and license keys across countries, all cloaked by defendants’ electronic and firewall manipulations. When faced with their misconduct, defendants engaged in massive evidence destruction. The complaint was amended to include claims for copyright infringement, violations of the Racketeer Influenced Corrupt Organizations Act, multiple federal anti-counterfeiting statutes, and common law torts of deceit. The case presented numerous questions of first impression under the DMCA and federal counterfeiting statutes. The case is also significant due to the high volume of infringements: over 30,000 acts of unauthorized access to Synopsys’ sophisticated semiconductor design software. We led the case to a highly favorable settlement just weeks before trial.
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.
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.
Schlumberger v. Hebei GN Solids Control Co., Ltd.: We secured two favorable decisions from the Beijing IP Court for Schlumberger against a fierce Chinese competitor Hebei GN Solids Control, which makes infringing shaker screens (used in drilling operations) that directly compete with Schlumberger’s screens. The Beijing IP court issued injunctive orders and awarded damages in total RMB 6 million plus cost (around US$ 1 million, an amount considered to be significant in Chinese patent litigation). We also successfully defended the validity of the two Schlumberger Chinese patents before the China State Intellectual Property Administration, defeating GN’s attempt to derail the infringement lawsuits.