High Stakes IP: Irell & Manella, Winner, IP Litigation Department of the Year
Irell & Manella lawyers get the call when clients' intellectual property cases present the most challenging legal and business issues.
December 21, 2017 at 01:55 PM
4 minute read
Things didn't look so good for Irell & Manella client CBS Corp. when it was sued by a would-be class of music owners in 2015. They demanded hundreds of millions of dollars for unauthorized broadcast of their pre-1972 sound recordings. Sirius XM and Pandora Media had settled similar litigation for about $400 million.
"I think the plaintiffs' expectation was they wouldn't be litigating it, that we'd be settling," says Irell partner Robert Schwartz.
Then, during an early client phone conference, a member of the CBS Radio team remarked, "It's not fair. We're not even playing their recordings." In fact, CBS was using versions that had been digitally remastered for other labels years later.
Schwartz and Irell partner Victor Jih looked at each other and said, "Wait a minute …"
Nine months later, CBS was out of the case. Irell persuaded U.S. District Judge Percy Anderson that the remastered recordings contain sufficient original expression to put them beyond the reach of state copyright law. If upheld on appeal, the ruling will likely extinguish similar suits against iHeartMedia Inc. and Cumulus Media Inc.
That's just one of many high-stakes, high-value wins that make Irell The American Lawyer's IP Litigation Department of the Year. Others include a $506 million patent infringement verdict against Apple Inc.; a district court decision rejecting patent and antitrust claims against Gilead Sciences Inc.; and a U.S. Supreme Court order that preserved a landmark win on the patent eligibility of medical diagnostics.
And for a cherry on top, President Donald Trump has chosen Irell managing partner Andrei Iancu to head the U.S. Patent and Trademark Office.
Department Size and Revenue Partners: 22 Associates: 27 Counsel: 8
Department as Percentage of Firm: 55% Percentage of Firm Revenue, 2016: 56%
Partners Gary Frischling and Keith Orso defended Gilead from a suit by the AIDS Healthcare Foundation. It accused Gilead of illegal tying under the Sherman Act by marketing an HIV medicine known as TAF only as part of a fixed-dose combination, or drug "cocktail." Along with the suit, the foundation organized colorful protests outside Gilead headquarters.
But U.S. District Judge William Alsup rejected the foundation's theory, noting it could undermine the Food and Drug Administration's policy of encouraging the development of combination drugs. On appeal, the foundation has dropped its antitrust claims and now only seeks standing to sue over patent validity.
In 2015, Irell and the University of Wisconsin's tech transfer arm won a $234 million patent infringement judgment against Apple. The subject was "predictor" circuit technology developed by UW researchers and incorporated into Apple iPhone and iPad computers without the university's permission. Last year, U.S. District Judge William Conley more than doubled the award to $506 million, primarily to include royalties on sales during the litigation.
IP icon Morgan Chu, who tried the case with Frischling and others, says he's especially proud that three Irell associates, including a first-year, got to handle some witness testimony, "on the battlefield of a trial, while the shooting is going on."
Schwartz drew on Irell's young attorneys too, tasking them in the CBS case with locating an expert witness to testify about remastering. The associates pored over "tons of CDs" before determining that music engineer William Inglot would be the best choice, he says.
Along with saving his client millions, Schwartz believes the ruling will bring clarity to an issue that's generated conflicting rulings all over the country. In the entertainment industry, "Every time you mention pre-72, people say, 'Oh, what a mess,'" says Schwartz. "This will help clean it up."
Irell also scored at the Supreme Court, preserving a Federal Circuit decision that ruled a groundbreaking method for testing pregnant mothers for birth defects was not eligible for patent protection. Partner David Gindler helped Ariosa Diagnostics Inc. withstand a big amicus push from the biotech industry, not to mention dissenting opinions from multiple Federal Circuit judges.
Looking ahead, Irell says it has joined the Gilead Sciences team fighting a $2.5 billion verdict over hepatitis vaccine patents in post-trial motions. Irell is also representing Fundamental Innovation Systems International in asserting BlackBerry patents on USB fast-charging technology against Samsung Electronics Co. and LG Electronics Inc.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllFreshfields, Paul Hastings, McDermott, Alston Hire in Core Practices, Amid Flurry of Q4 Lateral Moves
5 minute readTrending Stories
- 1Call for Nominations: Elite Trial Lawyers 2025
- 2Senate Judiciary Dems Release Report on Supreme Court Ethics
- 3Senate Confirms Last 2 of Biden's California Judicial Nominees
- 4Morrison & Foerster Doles Out Year-End and Special Bonuses, Raises Base Compensation for Associates
- 5Tom Girardi to Surrender to Federal Authorities on Jan. 7
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250