IP Litigation

Trial-ready advocacy in complex IP litigation

Industry-leading companies call on Dechert to resolve their most complex intellectual property litigation disputes. From the courtroom to the negotiating table, our global IP litigators have an established track record of obtaining favorable results for clients.

Notably, in a rare patent case before the Supreme Court of the United States, Dechert secured victory for SCA Hygiene Products, where in a 7-1 decision, the Supreme Court overturned 100 years of precedent, concluding that laches cannot bar the award of legal damages in patent cases.

With a long-standing focus on large-scale patent, trade secret, trademark, copyright and IP-antitrust disputes, we routinely represent high-profile clients in the most prominent litigation venues around the world.

Our lawyers regularly handle cases and complex international disputes where hundreds of millions or even billions of dollars are at stake. We get results across the entire spectrum of IP disputes, scoring high-impact victories with a frequency unmatched by our peers. Unlike most large firms – which are defense-oriented – we represent both plaintiffs and defendants, allowing us to provide clarity to clients on both sides of the table.

We focus on IP monetization by assisting companies to mine their IP portfolios for valuable IP, manage and orchestrate aggressive licensing programs on behalf of those clients and file enforcement actions when necessary.

We have extensive experience representing both Petitioners and Patent Owners in Patent Trial and Appeal Board proceedings, including Inter Partes Reviews, Post Grant Reviews, and other patent office actions including ex parte and inter partes reexaminations and interferences. Our dedicated pharmaceutical patent litigation team excels in Hatch-Waxman actions, 505(b)(2) disputes, and Biologics Price Competition and Innovation Act litigation.

Our legal services and strategies are distinguished by a high degree of technological and scientific sophistication, which we put to good use in protecting and maximizing the value of our clients’ IP assets in the most expeditious and cost-effective manner possible. Many of our team members hold advanced degrees in fields like biology, chemistry, computer science, and engineering, with postdoctoral or industrial research experience complementing their legal expertise.

A recognized leader in IP litigation

Decades of client advocacy have established Dechert as a leading firm for patent and IP litigation. IAM Patent 1000 praises us for handling “mission-critical suits requiring finely honed trial skills, technical chops and sound business instincts,” noting our ability to “navigate complex legal minefields” as “superior.” Chambers USA, The Legal 500, Managing Intellectual Property, and LMG Life Sciences regularly rank our IP litigators among the nation’s best, with additional accolades from The Legal Intelligencer, The Best Lawyers in America, and The National Law Journal’s Intellectual Property Trailblazers List.

A go-to firm for industry leaders

Many high-profile companies and industry leaders turn to Dechert’s IP litigation team for their most crucial, high-stakes matters. Notable Dechert clients include:

Boston Scientific
Eli Lilly & Co.
Endo Pharmaceuticals
GlaxoSmithKline
Hitachi
IOENGINE
Lenovo
Medtronic
Microsoft Corporation
Monster Worldwide
Norgine
PepsiCo
Quest Diagnostics
QVC
Samsung Electronics
Stifel
Teikoku
TD Banknorth

Trial-ready advocacy in complex IP litigation

Patent Litigation

Electronics and Computers

Microsoft in Microsoft Corp. v. Hon Hai Precision Industry Co., Ltd. (N.D. Cal.), a patent royalty dispute with leading smartphone manufacturer Foxconn (a/k/a Hon Hai Precision). Microsoft filed suit in the Northern District of California, alleging that Foxconn had cheated it out of patent royalties due under a patent license for Android phones. After obtaining two sanctions orders for withholding evidence in China, and ferreting out evidence showing that the missing royalties were, potentially, extremely financially significant, the team filed a motion for terminating sanctions for discovery abuse. The liability trial was set for November, and the team filed a motion for summary judgment as the plaintiff. Judge Koh granted Microsoft summary judgment on Microsoft’s affirmative breach of contract claim and validated the damages model. She issued a separate order dismissing virtually all of Foxconn’s defenses. Facing a trial with potentially significant damages, Foxconn settled.
Hitachi, a leading Japanese technology company, and related entities in enforcing the Hitachi digital television and monitor patent portfolio against companies around the world. In all, Dechert has negotiated with, licensed or litigated against the entire computer monitor industry, collecting hundreds of millions of dollars on Hitachi’s display patents.
Samsung Electronics in Red Rock Analytics, LLC v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor LLC (E.D. Tex.), a patent infringement case involving mobile phone transceiver technologies.

Pharmaceuticals and Medical Devices

Endo Pharmaceuticals, a global specialty pharmaceutical company, in a series of related Hatch-Waxman patent infringement actions filed against seven generic companies regarding its OPANA® ER (oxymorphone ER) tablets, which at its peak, was Endo’s second highest-selling product with US$300 million in annual sales. In Endo Pharmaceuticals v. Teva, et al. and Endo Pharmaceuticals Inc., et al., v. Impax Laboratories, Inc. (S.D.N.Y.), the Dechert team prevailed in a five-week trial against seven generic companies, and later secured Federal Circuit affirmance of its hard-fought patent trial victory, so that none of the generic versions of OPANA® ER (oxymorphone ER) involved can come to market before Endo’s patents expire in 2023. Dechert also prevailed in two separate patent trials in the District of Delaware with respect to an additional patent that Endo exclusively licensed from Mallinckrodt. The Federal Circuit affirmed that all defendants are enjoined from selling their generic products through 2029.
Eli Lilly & Co. in a complete victory regarding its blockbuster immunosuppressant antibody therapy TALTZ® (ixekizumab) in Genentech, Inc. v. Eli Lilly & Co. (S.D. Cal.), a patent infringement action brought by Genentech, in which Genentech dismissed all claims with prejudice and Lilly was declared the prevailing party in 2020. Dechert also assisted Lilly in related global litigation, in which Lilly won a patent revocation action against Genentech in the UK High Court of Justice.
Eli Lilly & Co. in a complete victory in Eli Lilly & Co. v. Genentech, Inc. (PTAB), a Post-Grant Review (PGR) proceeding before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Lilly’s innovative PGR challenge of Genentech’s patent was successfully instituted in late 2019, and was recognized in the industry as one of the first life sciences PGRs involving written description and enablement challenges to antibody technology in co-pending litigation with a marketed commercial biologic. Lilly successfully obtained an entry of adverse judgment against Genentech in 2020, rendering all claims unpatentable.
Aribex, a leader in handheld dental X-ray devices, in Dexcowin Global, Inc. v. Aribex, Inc. (C.D. Cal.), a patent infringement suit to enforce Aribex’s patents against one of its competitors. The infringing products competed with Aribex’s top-selling X-ray devices. After winning summary judgment of infringement against the accused products, Dechert helped Aribex reach a favorable settlement.

Other Patent Matters

SCA Hygiene Products, a leading producer of adult diapers, in SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products, LLC, et al. (U.S.). After hearing oral argument presented by Dechert on behalf of client SCA Hygiene Products in November 2016, the U.S. Supreme Court sided with SCA in a 7-1 decision on March 21, 2017 and reversed a 6-5 en banc decision of the Federal Circuit, overturning 100 years of precedent and concluding that laches cannot bar the award of legal damages in patent cases.
Quest Diagnostics Inc. and Quest Diagnostics Nichols Institute in a complete defense verdict in a jury trial in Cedars Sinai Medical Center v. Quest Diagnostics Incorporated (C.D. Cal.). Cedars-Sinai alleged that Quest infringed a patent for a method for detecting irritable bowel syndrome, misappropriated trade secrets, and breached a confidentiality agreement. Cedars-Sinai claimed Quest improperly used Cedars-Sinai’s allegedly ground-breaking discoveries relating to a diagnostic test for IBS. Cedars-Sinai claimed that Quest obtained trade secrets from Cedars-Sinai during licensing negotiations, then terminated the discussions and used Cedars-Sinai’s information to develop its own test. Cedars-Sinai argued that Quest destroyed what could have been a US$1 billion opportunity for Cedars-Sinai. Before trial, the court granted Quest’s motion for summary judgment invalidating Cedars-Sinai’s patent claims. The trade secret and breach of contract claims went to a two-week jury trial. Dechert’s team contended that Quest developed its test without using any of the alleged trade secrets and that Quest complied with the parties’ confidentiality agreement. The jury’s verdict found that Quest did not misappropriate trade secrets and that Quest did not breach the confidentiality agreement.
Monster Worldwide, a global online employment solution, in JobDiva, Inc. v. Monster Worldwide, Inc. (S.D.N.Y.), a patent infringement suit brought by a competitor involving search algorithm technology.
QVC, a leading digital retailer, in Alcatel-Lucent U.S.A. v. QVC, Inc. et al. (E.D. Tex.), a patent infringement suit brought by Alcatel in relation to its e-commerce patents.

Trade Secrets and Unfair Competition

PepsiCo, a leading global food and beverage company, in a dispute over the original formula for Pepsi.
WebMD, an online publisher of health and medical news and information, in a non-compete and trade secret case involving former high-level executive.
Synthes, a multinational medical device manufacturer, in a trade secret and Lanham Act case involving medical devices for the spine. Resolved by a US$13.5 million payment to our client (and an agreement not to solicit our client’s employees) following a two-week jury trial.
MetLife, one of the largest life insurance companies in the world, in a trade secret lawsuit in the Eastern District of Pennsylvania involving a tax-advantaged method of funding certain insurance products.

Trademark Litigation

Gucci, an Italian fashion house, in a trademark infringement and unfair competition action against Guess.
Kellogg Company, an American multinational food manufacturing company, and Nintendo, a Japanese multinational consumer electronics and video game company, in trademark/unfair competition suit involving a Pokémon® promotion on Kellogg’s® cereal boxes. Settled favorably to our clients.
New World Pasta Co., the leading U.S. dry pasta maker, in Lanham Act case involving our client’s Ronzoni®, San Giorgio®, Prince® and Creamette® packaging. Settled favorably to our client.

Our global patent litigation team routinely represents industry-leading companies in high stakes, complex disputes in the courtroom and at the negotiating table. We have secured favorable results for clients in the most prominent patent litigation venues in the world, including France, Germany, Japan, the Netherlands and the UK High Court, among others. We have successfully tried cases in U.S. district courts all over the country, including patent litigation hotbeds in California, Delaware, New Jersey and Texas, as well as the International Trade Commission and Patent Trial and Appeal Board (PTAB).

Our lawyers work closely with in-house counsel and legal teams to create industry-wide, often international, licensing programs to help our clients monetize their patent portfolios through joint ventures, alliances, securitizations, divestitures, licensing and other business models. We develop innovative strategies to defend against claims of patent infringement, and have assisted many of our clients in developing global licensing, enforcement and litigation campaigns to maximize the value of their intellectual property, helping them gain competitive advantages in the marketplace. These campaigns have generated hundreds of millions of dollars in revenue for our clients.

Clients also depend on us to accomplish their objectives outside of the courtroom. We routinely secure licensing and settlement agreements that save our clients’ money, preserve their goodwill and deliver more long-term benefits than likely would have resulted from litigation.

In today’s competitive, technologically advanced global economy, industry leaders rely on Dechert to safeguard their trade secrets and other proprietary information. We help clients secure their confidential business information, maintain public goodwill and protect customer and employee relationships.

Our experienced team regularly handles trade secret, unfair competition and non compete disputes in highly competitive industries such as software, high technology, medical devices, life sciences and financial services. Dechert offers a full range of services to entities ranging from unsophisticated start-ups to well-established publicly traded companies.

We also advise on how to respond to government requests for disclosure of trade secrets and propriety information and assist in developing strategies to protect confidential information against other forms of unwanted disclosure.

Our trademark attorneys provide full-service brand protection. We protect the integrity of our clients’ brands by guiding our clients through the trademark examination and clearance process and by dealing with and resolving any disputes that may subsequently arise — disputes in which our clients’ reputations, corporate identities and very existence often hang in the balance.

We protect client marks in all U.S. federal and state courts, before the USPTO and its Trademark Trial and Appeal Board, in the United Kingdom and in a host of other key jurisdictions around the globe. We have experience representing clients in disputes arising in more than 40 countries in continental Europe, Central and South America and Asia and promoting client interests before such international tribunals as the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (WIPO). We have negotiated countless settlements, defeated numerous preliminary injunction motions and obtained many multi-million dollar recoveries and consent decrees acknowledging trademark infringement.