A Winning Design: Morgan Lewis, IP Litigation Department of the Year Winner
Morgan Lewis' national IP team covers all the bases for clients.
December 29, 2019 at 08:00 PM
4 minute read
Whether Morgan, Lewis & Bockius' intellectual property department is grinding out five years of posttrial motions and appeals, sprinting to a jury verdict in 13 months or playing multidimensional chess across five different forums, the firm's depth and resourcefulness have helped it bring home outstanding results.
The wins include a $268 million judgment in a dispute over ear implant technology; a fight over garage door openers waged in district court, the USPTO, the International Trade Commission, the Court of International Trade and the U.S. Court of Appeals for the Federal Circuit; and a $2.9 million jury award for the maker of Gavrieli Tieks ballet flats.
"Even a small IP case can have tremendous complications, and Morgan Lewis has been having a terrific run of success," Silicon Valley partner Michael Lyons says. "There's really no way to do that without a big team where you can draw on expertise across forums and on appeals."
Lyons helped try Alfred E. Mann Foundation for Scientific Research v. Cochlear, in which a jury found that Cochlear Corp. infringed the foundation's patented noninvasive technology for testing and adjusting ear implants and awarded $131 million, in 2014. U.S. District Judge Fernando Olguin found three of the four asserted claims invalid, but Lyons and partner Thomas Peterson helped persuade the Federal Circuit to restore one of them. On remand in 2018, Olguin not only reinstated the damages, he doubled them for willful infringement. The foundation is now looking for affirmance from the Federal Circuit, with Lyons and Peterson again leading the way.
"Their briefing on this appeal was outstanding, and I am very confident that we will prevail on this round," says foundation CEO John Petrovich.
Chicago partner Jason White, meanwhile, helped defend Techtronic Industries Co. Ltd.'s garage-door openers from patent attacks by rival The Chamberlain Group Inc. The ITC excluded some products, but Morgan Lewis got the Court of International Trade to order the release of Techtronic's redesigned units. Morgan Lewis then persuaded the PTO to invalidate many of the claims at issue before the ITC.
Finalists: Fish & Richardson; Perkins Coie; Williams & Connolly.
Techtronic also won a Federal Circuit decision that knocked out on patent eligibility grounds a $22 million jury verdict for Chamberlain in district court. "I got to make the argument" to the Federal Circuit, White says, but partner William Peterson and associate Julie Goldemberg "wrote fantastic briefs."
The firm also got contributions from partner Dion Bregman at the PTAB, partner Eric Namrow at the ITC and senior associate Nicholas Restauri at the CIT, among others.
"Different teams, different groups just all came together," White says.
In the ballet flats case, Gavrieli Brands accused competitor Soto Massini of infringing its design patents and trade dress. The trial featured testimony from founder Kfir Gavrieli and photos of Oprah Winfrey and Meghan Markle sporting Tieks.
Lyons tried the case with Delaware partner John Gorman and associate Amy Dudash, plus colleagues from Silicon Valley. They argued that Kickstarter-funded Soto Massini was trying to peel off Tieks' passionate online following.
"There was this whole group on Kickstarter that was very interested in the case, and were frankly concerned by a lot of what they were learning," Lyons says. "Even as the case was being tried, this huge group of online commentary was playing out in real time."
Lyons says the firm's IP success comes by design.
"We've spent a lot of time talking about what a national team should look like," he says, "and we feel like we're really there now."
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