The Legal 500

Specialists in handling Section 337 investigations, the attorneys at Adduci, Mastriani & Schaumberg ‘are the ITC experts’ and are praised for their ‘knowledge, experience and results’. Based in Washington DC, the team is led by managing partner James Adduci, ‘a terrific lawyer’ who has been representing Research In Motion in a complaint filed by Spansion against Samsung in relation to flash memory chips. The case remains ongoing but the ITC ruled in favour of the multiple defendants, including Research In Motion, preventing numerous consumer electronic products from being barred from importation into the US. Adduci also represented Japanese electronics manufacturer Oki Data as respondent against Ricoh in a patent infringement involving printing and imaging devices, with Oki cleared of violating four of the five patents in question. Louis Mastriani acted for Imation and Memorex in an infringement case brought by SanDisk in relation to seven flash drive technology patents. It is heavily focused on the hi-tech sector, with clients including Apple, Honeywell and Analog Devices. Tom Schaumberg represented the latter in a case brought by Knowles Electronics regarding silicon microphone packages. Promoted to partner in January 2010, Andrew Pratt ‘has an encyclopaedic knowledge of patent law and his analysis of the law and the facts is well reasoned, logical, and persuasive’.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has particular expertise in ITC litigation, fielding ‘a strong team that is deeply capable’. Headed by Smith Brittingham and Christine Lehman, it includes 15 partners focusing on patent litigation before the ITC. Drawing on knowledge across a range of industries, recent Section 337 representations include a successful outcome for LG Electronics in a case brought by competitor Whirlpool, as well as a ruling in favor of Mitsubishi regarding patent infringement of wind turbines. A particular highlight for the practice was successfully representing Rambus in its long-running battle with Nvidia, resulting in a bar on importation of semiconductor chips. Michael Jakes (noted for his ‘steadfast style and calm demeanour under fire’) was among the attorneys leading on the case. The team also acted for Pioneer against Honeywell, obtaining a settlement granting use of each company’s patent technology for GPS navigation devices. Other clients include semiconductor makers Phicom Corporation and Monolithic Power Systems.

Covington & Burling LLP has developed a focused and ‘outstanding’ practice in Section 337 litigation, with a team that offers particular strength in the hi-tech and electronics sectors. Thirteen partners dedicate the majority of their time to cases before the ITC, with ‘ITC specialist’ Sturgis Sobin heading the team. He ‘brings a wealth of experience and a detailed knowledge of the intricacies of ITC practice that is invaluable. His tenure at the Commission brings a level of credibility that is hard to find outside of a select group of specialists’. Other notable lawyers include Robert Haslam, ‘a very skilled trial lawyer who quickly sorts through complex factual and legal issues to focus on the key points’, and Johnny Chiu, who ‘manages a case not only from the legal perspective but also the business perspective’. 2010 highlights included defending Samsung in a case brought by BTG International alleging flash memory product infringement, with the ITC concluding that there was no violation. Maureen Browne was part of the team representing uPI Semiconductor as respondent in an investigation filed by competitor Richtek, in relation to patent infringement of electrical circuit components. Additional clients include A-Data Technology and Knowles Electronics.

IP boutique Fish & Richardson P.C. regularly handles patent litigation cases before the ITC, with Ruffin Cordell highly regarded for his ITC experience, particularly in hi-tech and electronics sector cases, and was involved in many of the firm’s key Section 337 investigations of the past year. He acted for Paice in a case brought against Toyota regarding hybrid vehicle technology, with the parties reaching a settlement that ended all pending litigation. Cordell, along with Jeffrey Whieldon and hi-tech litigation specialist Michael McKeon, represented multiple respondents, including Samsung and Apple, in an investigation brought by Spansion alleging various patent violations involving flash memory technology. It also acted for Hewlett-Packard as complainant in an inkjet cartridge technology-related case against various domestic and Asian entities; the USITC granted Hewlett-Packard’s request for an exclusion order to bar all importation. The team lost ITC patent litigator Brian Nester to Sidley Austin LLP in late 2009.

Miller & Chevalier Chartered mainly acts as co-counsel with other firms on Section 337 investigations. A key presence in patent litigation before the ITC, the 10-lawyer team includes James Altman, David Foster and Barbara Murphy, with Foster and Murphy having handled around 60 and 50 cases respectively. They both advised Tessera on an investigation regarding the design of advanced integrated circuits. David Nickel has also built up extensive trial experience before the ITC. The team successfully represented CompX against Humanscale Corporation, with the ITC ruling that the asserted claims brought by the latter company were invalid and also reversing a previous decision that the respondent infringed a patent for computer keyboard supports. The firm also represented SiRF in litigation against Global Locate involving a complaint filed by the client and a counter-suit by Global Locate in relation to GPS technology.

DLA Piper LLP has a notable track record handling cases before the ITC, with a good number of trial wins and the ability to handle multi-jurisdictional cases from start to finish. It recently represented Japan-based Ricoh in its lawsuit against Oki Data regarding printing and imaging devices, with the respondent found to have violated one of five patents-in-suit. Based in San Diego, US chair of the firm’s IP and technology group John Allcock and Sean Cunningham represented Overland Storage, a data protection provider, in a complaint brought against Germany-based BDT, a tape automation supplier. Mark Fowler represents well-known hi-tech corporations, and the team’s hire of Richard de Bodo from Hogan Lovells US LLP provides additional ITC trial experience.

McDermott Will & Emery LLP’s team is based predominantly out of the firm’s Washington DC and Silicon Valley offices. It includes IP litigators Blair Jacobs, Robert Walters and Yar Chaikovsky, the latter joining from SNR Denton at the end of 2009. Although it handles a smaller volume of investigations than some firms, it is still regularly involved in key hi-tech representations before the ITC. It took over representation of Spansion in its claims against Samsung regarding flash memory chips, although it lost that case, with the ITC concluding that Samsung did not violate patent rights. Jacobs led on acting for Prism Technologies, which filed a complaint against Blackberry phone maker Research In Motion regarding technology used in email devices and smartphones, with both parties reaching a settlement. Other representative clients include Qualcomm, Funai and Hitachi.

Sidley Austin LLP continues to develop its ITC practice, with existing expertise boosted by the lateral hire of Brian Nester from Fish & Richardson P.C. in late 2009, who provides strong hi-tech sector experience, and the opening of a new office in Silicon Valley. Nester, David Pritkin and Richard Cederoth represented Microsoft in litigation brought against Motorola, as well as in design patent infringement claims related to its Xbox gamepads. The practice also obtained a settlement for Research In Motion in a case filed by Motorola. Other clients include Taiwanese companies Chimei-Innolux and Realtek. Edward Anderson remains a key figure in the team, and recently acted for semiconductor company ST Microelectronics in a multi-defendant case brought by Tessera.

Weil, Gotshal & Manges LLP’s patent litigation expertise and broad sector coverage, combined with a strong hi-tech client base, have enabled the practice to remain involved in significant Section 337 investigations for high-profile names such as Apple. Mark Davis and Matthew Powers form part of a cross-office team that acted on a number of lawsuits against both Motorola and Elan Microelectronics regarding smartphone, touchpad and other hi-tech products. Davis has particular experience in patent litigation before the ITC, and Powers has wide-ranging trial experience.

WilmerHale has a significant track record in investigations before the ITC, with past highlights including representing Broadcom in its patent infringement claim against Qualcomm regarding semiconductor technology used in cell phones. William Lee remains the team’s leading and best-known patent litigator, and led on the trial before the ITC for Broadcom. Lee also advised as outside counsel to Apple on its ITC hearing against Nokia, part of a high-profile battle between the two hi-tech giants regarding various alleged patent infringements. The practice added to its capability in Section 337 investigations with the hire of special counsel T Spence Chubb to the Washington DC office in May 2010. He joins from the US International Trade Commission, where he served as a supervisory attorney for over 20 years.

Kirkland & Ellis LLP is developing its focus on Section 337 investigations, in line with the ITC becoming a forum of choice for the biggest patent battles. Recent highlights include representing Research In Motion in the investigation filed by Prism Technologies to prevent importation of BlackBerry smartphones in late 2009 and a settlement reached between the parties in the first half of 2010. It also successfully defended Samsung against Spansion’s patent infringement claims, with a final decision concluding that there was no violation by Samsung and other respondents; and advised Apple in its litigation against smartphone rivals Nokia and HTC.

Drawing on its ‘breadth of IP knowledge and litigation expertise’, Morrison & Foerster LLP particularly stands out for its focus on international-based clients. A strong Japanese client base has kept the practice busy; it recently advised Nikon, Funai and Hoshino on matters including investigations relating to LCD technology patent infringements. It represented Sharp against Samsung in two ITC decisions that ruled in favor of the former on seven of eight disputed patents, in a high-profile battle between the two major competitors. Alexander Hadjis is acting on Thomson Licensing (a subsidiary of France-based Technicolor)’s multi-patent suit against LCD manufacturers Chimei Innolux, Qisda and other respondents. A widely recognized figure on Section 337 cases, Brian Busey is ‘the ITC expert’, while Hadjis has notable expertise in matters involving semiconductor technology.

Orrick, Herrington & Sutcliffe LLP is developing a good reputation for work on ITC cases, with a focus on the hi-tech arena. With extensive trial experience for both domestic and international entities, Steven Adkins co-chairs the firm’s Section 337 practice alongside Bas de Blank, who has represented the likes of SiRF Technology and Acer. It recently achieved a standout win for multiple respondents, including Acer, in a case brought by Tessera. Hopkins Guy was involved in Apple’s litigation against complainant S3 Graphics regarding four patents related to Apple products such as the iPhone and Macbook computers.

Commercial litigation firm Quinn Emanuel Urquhart & Sullivan, LLP has a strong team of patent trial lawyers, and although not as highly specialised in cases before the ITC as some other firms, it has been active for some well-known global entities the hi-tech and electronics sectors. The practice is representing HTC Corporation and Motorola in separate cases against Apple, the former as respondent and the latter as complainant in multiple patent infringement allegations. It also advised Sony in two separate investigations, one as complainant and the other as respondent, against leading Taiwanese LCD panel maker Chimei Innolux. Notable attorneys include IP co-chair Charles Verhoeven, who has extensive litigation experience, patent litigation specialist David Nelson, and Edward DeFranco, who has notable technical expertise.

Steptoe & Johnson LLP has strong trial experience before the ITC. Leading the team are the well-regarded Charles Schill, John Caracappa and Alice Alexandra Kipel, who regularly handle high-stakes cases as both co-counsel and lead counsel. Schill has longstanding experience in handling Section 337 investigations, including a successful defense of Mitsubishi’s multibillion-dollar renewable energy business against a patent infringement allegation by General Electric. More recently, Schill and Caracappa advised Motorola in two separate investigations: one against Microsoft, which alleged several patent infringements, and a filing against Apple.

Wilson Sonsini Goodrich & Rosati provides trial experience at the ITC across a broad range of sectors, including hi-tech and life sciences, with high-profile clients including footwear maker Crocs. Stefani Shanberg remains a key specialist on ITC investigations. James Otteson left to set up his own IP litigation boutique, Agility IP Law, in early 2010, while Larry Shatzer joined in June 2010 from Foley & Lardner LLP, where he was chair of the IP litigation practice.