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Patents: litigation (International Trade Commission) in United States

Adduci, Mastriani & Schaumberg, LLP

Specialist ITC boutique Adduci, Mastriani & Schaumberg, LLP in Washington DC boasts an unparalleled track record in successfully fought ITC investigations. Throughout 2020, the firm has remained the most active adviser at the ITC as Deanna Tanner Okun, a former two-term Chairman of the Commission at the ITC and since January 2020 the firm's managing partner, guided the team and its clients through the challenges caused by the Covid-19 outbreak. With its large team, including founders James AdduciLouis Mastriani and Tom Schaumberg, the firm offers an impressive range of technical expertise, and is also able to assist with trade secrets and trademark ITC matters. The group acts as standalone counsel or in cooperation with other firms in matters involving parallel federal court litigation. Paul Bartkowski left to found Bartkowski PLLC in January 2021. Lauren Peterson and Joshua Hartman, who joined the partnership in January 2020, continue to gain visibility in the market.

Practice head(s):

James Adduci; Louis Mastriani; Tom Schaumberg; Deanna Tanner-Okun

Other key lawyers:

Lauren Peterson; Joshua Hartman; Daniel Smith; Asha Allam; Jonathan Engler; Michael Doman

Testimonials

‘Unrivalled experience at the ITC, including familiarity with judges and judges’ practices.’

‘Timely responses, and ability to do anything from handling substantive aspects of a case to advising on strategy (with relatively little background knowledge required).’

‘Compared with other firms, Adduci, Mastriani & Schaumberg LLP is more experienced. The lawyers, especially Tom Schaumberg, know every rule and practice about the proceeding, and they always provide the most appropriate strategy to address the need of clients.’

‘Tom Schaumberg is very impressive, not only for his rich experience in 337 cases, but also for his passion to work. He always replies questions promptly without any delay, even during holidays. He sets a good example for young professionals how to pursue the legal career.’

‘The firm provides key insights and work product in a timely fashion at an excellent value.’

‘The firm is a very good ITC firm. Very knowledgeable re.: ITC procedures and practice, work well with clients, keep costs in mind.’

‘The team is specialized in ITC litigation, extremely experienced, creative and forward-looking. It is a small and very focused team, which provides a lot of value and expertise to every ITC litigation.’

‘The partner Tom Schaumberg is an extraordinary high qualified ITC litigator, very creative, knowledgable and smart.’

‘The group is extremely knowledgeable about ITC rules, procedures, judges preferences, and particular case law from ITC orders, rulings, and motion decisions. That makes them extremely efficient and also allows them to provide insight that very few firms can. They also work well as a team dividing work effectively among lawyers with varying experience making their work product cost efficient.’

‘It is their complete knowledge of all things ITC that makes them stand out. Because I believe they devote all of their time to ITC matters they are the most knowledgeable group I have come across. I have been particularly impressed with Asha Allam. Particularly her knowledge of the economic prongs that are a required part of section 337 cases.’

Key clients

Anping Shengjia Hardware Mesh Co., Ltd.; and Hebei Hengying Wire Cloth Co., Ltd.

Atlas Roofing Corporation and GAF Corporation

Cisco Systems

Converse

Dynamics, Inc.

HyperIce, Inc.

I4F Licensing N.V.

Kyocera Senco Brands

Lashify, Inc.

LG Chem

Neodron Ltd.

OSRAM

Q3 Networking LLC

Qualcomm Incorporated

Technicolor Connected Home USA, LLC

Work highlights

  • Represented complainants LG Chem, Ltd and LG Chem Michigan Inc. against respondents SK Battery America Inc., SK Battery Hungary Kft., and SK Innovation Co., Ltd. in a Section 337 action regarding misappropriation of trade secrets of certain lithium ion batteries, battery cells, battery modules, battery packs, components thereof, and processes therefore.
  • Assisted Qualcomm as co-counsel with achieving a favorable settlement agreement with complainant Globalfoundries U.S. Inc in a Section 337 investigation involving semiconductor devices.
  • Assisted OSRAM respondents with achieving a no violation determination, affirmed by the Commission, in a patent-based Section 337 filed by complainants Global Value Lighting, LLC, Healthe, Inc. and Lighting Science Group Corporation regarding light-emitting diode products, systems, and components.

Kirkland & Ellis LLP

Kirkland & Ellis LLP's ITC practice is an integral part of the firm's wider patent litigation service, making the group an excellent choice for clients seeking one-stop-shop representation. With the additional expertise in appeal proceedings and enforcement proceedings involving US Customs and Border Protection, the team remains one of the most attractive choices in the market. The practice also has an excellent track record of securing wins in innovative investigations. Key contacts include Gregory Arovas in New York and Gregg LoCascio and Paul Brinkman in the Washington DC office. Helena Kiepura joined DLA Piper LLP (US) in June 2021.

Other key lawyers:

Gregory Arovas; Gregg LoCascio; Paul Brinkman

Testimonials

‘In my view, the team is very strong compared to any other law firm I have worked with on the patent side, and these firms have also been very good.’

‘They are very highly skilled people and have a good business evaluation.’

‘They deeply understand our technology and our firm. Provide well-argumented and practical advice and unique in terms of explaining the issues to us clients.’

‘They tend to always be ahead of the situation and have thought out and simulated all possible outcomes. Very well prepared.’

Key clients

Abbott Laboratories

BASF Corporation

Bristol-Myers Squibb Company

Club Champion LLC

Eagle Pharmaceuticals, Inc.

EagleView Technologies

Heineken International B.V. et. al.

Hospira, Inc.

Intel Corporation

Motorola Solutions, Inc.

Samsung Electronics Co., Ltd.

Sony Corporation of America

Syngenta Corporation

Work highlights

  • Represented AutoStore Technology AS, AutoStore AS, and AutoStore System Inc. in a multi-jurisdictional patent litigation against Ocado Group Plc and its subsidiaries, involving the District Court for the Eastern District of Virginia, the US International Trade Commission (ITC), and the Patents Court of the Chancery Division of the High Court of Justice of England & Wales regarding patents that cover automated storage and retrieval systems (AS/RS), such as the AutoStore Black Line system, used to store and retrieve goods in warehouses, as well as the robotic vehicles used in those systems to transport storage containers.
  • Represented CertainTeed Corporation in litigation brought by Kirsch Research and Development, LLC in the US District Court for the Northern District of Texas and the ITC, alleging the infringement of two patents covering synthetic roof underlayments.
  • Represented Mohawk Industries, Inc. and its affiliates Flooring Industries Ltd. Sarl and IVC US, Inc. before the ITC in litigation against 42 defendants regarding luxury vinyl floor panels, securing the issuance of a general exclusion order preventing the importation of luxury vinyl floor panels that infringe Mohawk patents against some of the defendants, with the other defendants agreeing to favorable settlements.

Latham & Watkins LLP

Latham & Watkins LLP has become one of the finest ITC practices in the country. The strength of the team lies in its combination of specialist ITC expertise, its powerful wider patent litigation team, and its track record of successful proceedings before the US Customs and Border Protection, including inter partes procedures. Additionally, the group has an in-house scientific advisor team at the disposal of its clients to ensure optimal dispute planning and management through in-depth understanding of the client's technologies. Washington DC-based practice head Bert Reiser and his team are very experienced in taking over challenging cases from other firms at critical stages in the dispute. Jamie Underwood, also based in Washington DC, also has a very good reputation in the market.

Practice head(s):

Bert Reiser

Other key lawyers:

Jamie Underwood; Kevin Wheeler; Maximilian Grant; Douglas Lumish

Testimonials

‘Immediate response, a conciliatory attitude and client-oriented.’

‘Kevin Wheeler is an excellent litigation strategist and helpful for making bold decisions.’

‘Max Grant is an excellent trial lawyer who has a strong sense of responsibility and is a good leader.’

Key clients

LG Chem

Velodyne

LEDVANCE LLC, LEDVANCE GMBH, MLS LTD

Nautilus Hyosung

Comcast

Altria Client Services

Overhead Doors

Philip Morris USA

Work highlights

  • Secured a precedent-setting victory in the ITC on behalf of LG Chem against Korean competitor SK Innovation (SKI) regarding alleged misappropriated trade secrets relating to lithium ion battery packs for electric automobiles.
  • Acted as lead counsel for Velodyne LiDAR in patent infringement litigation against Chinese competitors Hesai and RoboSense in the ITC and in district court litigations.
  • Acted for Comcast in its long-running patent war with Rovi/TiVo, securing another significant victory.

Baker Botts L.L.P.

At Baker Botts L.L.P., practice head Lisa Kattan and her team maintain a busy caseload, acting both for respondents and complainants. Kattan formerly served as senior investigative attorney at the Office of Unfair Import Investigations at the ITC, where she built up significant experience in smartphone-related investigations. In addition to advising on the investigations themselves, the practice is also very well versed in Customs and Border Protection matters, especially in inter partes proceedings, as well as in advisory proceedings, commission review and other more niche ITC proceedings. With the firm's substantial wider patent litigation team at her fingertips, Kattan is able to quickly pull together the necessary resources for complex high-stakes disputes. In September 2020, Peter Kang joined the firm from Sidley Austin LLP, splitting his time between the San Francisco and Palo Alto offices.

Practice head(s):

Lisa Kattan

Other key lawyers:

Katharine Burke; Syed Fareed; Peter Kang

Key clients

Brother Industries Ltd.

Cabot Microelectronics Corporation

Kiss Nail Products, Inc., CVS Health Corporation, Ulta Beauty, Inc. and Walmart Inc.

Huber+Suhner

FUJIFILM Corporation and FUJIFILM Recording Media USA, Inc.

Oxford Nanopore Technologies

Dell

Samsung

DISH Network

Work highlights

  • Acted for Brother Industries in an ITC complaint seeking a general exclusion against a group of respondents regarding certain toner cartridges and their components.
  • Represented Cabot Microelectronics Corporation (CMC) in an ITC complaint against numerous DuPont entities regarding infringement of a patent related to slurries used in semiconductor manufacture.
  • Represented Fujifilm Corporation in significant global multi-venue litigation against competitor Sony Corporation relating to magnetic data storage tapes and cartridges, including five separate patent infringement investigations at the ITC.

DLA Piper LLP (US)

DLA Piper LLP (US) is noted for its extensive ITC experience in addition to its strong federal court and PTAB patent litigation practice, allowing clients to rely on the firm as sole representative for complex matters involving the ITC, district courts, the Federal Circuit and the PTAB. The group's size and its wide-ranging sector expertise—spanning the technology, electronics, life sciences and automotive sectors as core industries—attract US and international market giants. Washington DC-based Ann Ford is the US chair and global co-chair of the firm's clients and sectors practice and of its intellectual property and technology practice, with Silicon Valley's Mark Fowler acting as vice chair of the IPT practice. Sean Cunningham in the San Diego office leads the US patent litigation practice. Also recommended in San Diego is Erin Gibson, a key member of the ITC group. Helena Kiepura joined the DC office from Kirkland & Ellis LLP in June 2021.

Practice head(s):

Ann Ford; Mark Fowler; Sean Cunningham

Other key lawyers:

Erin Gibson; Paul Steadman; Matthew Satchwell; Nicholas Papastavros; Helena Kiepura

Testimonials

‘DLA Piper is unique due to their broad territorial reach and focus on specialization. They are far more willing, and active, than other firms in recommending and bringing in and introducing specialists from other practices to consult.’

‘Client service is the stand-out quality for DLA. Paul Steadman and Markus Gampp are two examples of lead partners there that are incredibly responsive to clients and always offer their time and attention to help serve the client needs. They display a level of attentiveness that it atypical and greatly appreciated.’

‘The DLA team is very responsive even under demanding and time-constraint situations and is there to walk you through various options for go-forward plans.’

‘I believe the partner in charge is always forward-looking and not just responsive to the needs of the day.’

‘DLA Piper has a broad range of experience for patent litigations. Based on that, their legal advice is always clear and helpful.’

‘Shuzo Maruyama is great. His background as a former Japanese judge is very unique. He knows a lot  about Japanese culture. I don’t know any other IP law firms in US having an attorney like him.’

‘They create really good strategies.’

‘Great assembly of experts. Never felt that the other side out-thought or out-worked our team.’

‘Great team on the substance and client service. I have worked with Matt Satchwell, Paul Steadman, Brent Yamashita, Ferlillia Roberson, Aaron Fountain and others. All are top notch on their respective subject-matter and understand client service.’

Key clients

Microsoft Corporation

Toshiba Corporation

Samsung Corporation

Nike, Inc.

HP Inc.

Hewlett Packard Enterprise Co.

Aruba Networks

Lenovo

Motorola Mobility

Belkin, Inc.

Medtronic (formerly Covidien)

ResMed, Inc.

Eventbrite, Inc.

DexCom

BASF

Toyota Motor Corporation

Hyundai/Kia Motors

Honda Motor Co.

Subaru

Mazda

Bosch

Japan Radio Co.

DENSO

DENSO TEN Ltd.

KIOXIA

Office Depot

The Home Depot

BMW

Asus and AsusTek

LG Electronics

Williams Sonoma

Citrix Systems, Inc.

Techtronic Industries / One World Technologies

Volvo

Staples, Inc.

Work highlights

  • Representing Microsoft and HP and acting as co-counsel for Dell in a four-patent multi-respondent ITC case and eight-patent non-overlapping series of Western District of Texas cases involving touchscreen technology.
  • Representing Microsoft and HP and acting as co-counsel for LG Electronics and ASUS in a second series of lawsuits filed by Neodron in the ITC involving four additional patents related to touchscreen technology.
  • Representing a multinational technology company as a long-term advisor at the ITC regarding its flagship products.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

IP boutique Finnegan, Henderson, Farabow, Garrett & Dunner LLP is very well suited to ITC investigations that are part of wider patent disputes involving district court and PTAB proceedings. In recent highlights, the practice impressed with its representation of respondents from the technology sector, namely notable drone and solar cell manufacturers. With its headquarters in Washington DC and offices in Seoul, Shanghai, Taipei and Tokyo (in addition to other US offices and a London office), the firm is strongly positioned for ITC investigations involving Asian companies. Practice head Smith Brittingham  and Mareesa Frederick are the key contacts. Anand Sharma, the firm's managing partner, and Mark Sweet, who chairs the firm, are the leaders of the wider practice.

Practice head(s):

Anand Sharma; Mark Sweet; Smith Brittingham

Other key lawyers:

Qingyu Yin

Foster, Murphy, Altman & Nickel PC

Specialist ITC boutique Foster, Murphy, Altman & Nickel PC in Washington DC is well known for its ITC savvy, built up over decades of acting for respondents and complainants in a wide range of sectors. The key names in the practice are Barbara Murphy and David Nickel.

Quinn Emanuel Urquhart & Sullivan, LLP

Litigation powerhouse Quinn Emanuel Urquhart & Sullivan, LLP is one of the most active firms at the ITC. Particularly well known for its representation of Qualcomm in its global dispute against Apple, the team continues to attract major domestic and international companies that entrust their most challenging disputes to the firm. The practice is a very popular choice for clients in multi-jurisdictional disputes, as its litigators abroad match their US colleagues in experience and reputation. The sextet at the helm of the practice consists of well-known ITC practitioner Alex Lasher and Jeffrey Gerchick in Washington DC, Charles Verhoeven and Sean Pak in San Francisco, David Nelson in Chicago and Kevin Johnson in Silicon Valley. Associate Kevin Chu in Washington DC is also noted.

Practice head(s):

Alex Lasher; Charles Verhoeven; Dave Nelson; Sean Pak; Kevin Johnson; Jeff Gerchick

Other key lawyers:

Kevin Chu

Key clients

MediaTek Inc.

Cree Lighting

Juul Labs, Inc.

Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Austin Semiconductor, Inc.

Google LLC

Hesai Photonics Technology Co., Ltd.

Opto Electronics Co., Ltd.

Cree Inc.

Bio-Rad Laboratories, Inc.

Netflix, Inc.

Work highlights

  • Represented respondent MediaTek in a patent-based ITC case filed by DivX concerning video processing technology used in smart TVs.
  • Defended long-standing client Cree Inc. in a patent-based ITC case filed by LSG, securing summary determination on one patent before trial and a win on the other two patents in front of the ALJ and full ITC.
  • Represented Hesai in a patent-based ITC case filed by Velodyne, securing a favorable settlement before trial.

Levi & Snotherly PLLC

Two-partner ITC boutique Levi & Snotherly PLLC appeals to clients because of the accumulated experience of founding partners Rett Snotherly and Benjamin Levi, who between them have over fifteen years of experience as senior investigative staff attorneys, five years of in-house counsel experience in a major electronics company, and decades of private practice experience. The nimble Washington DC firm impresses with its hands-on partner-led approach and its quick implantation as a well-known player in the market.

Practice head(s):

Rett Snotherly; Benjamin Levi

Key clients

United Plastic Molders, Inc.

Epilay Inc.

Enviroscent Inc.

Acuity, Inc.

Work highlights

  • Represented United Plastic Molders at the ITC in an investigation regarding fishing tackle, secured the issuance of general exclusion order against the respondents.
  • Advised Acuity Brands as respondent in an ITC action brought by Lighting Science Group regarding lighting products.
  • Advising Epilay, Inc. on an ITC matter brought by Kirsch Research & Development regarding roofing materials.

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP stands out as one of the most versatile practices in the market. In addition to its busy patent caseload, the team also regularly acts in trademark and other non-patent related ITC investigations. With its track record of high-stakes competitor patent disputes, especially in the technology and electronics sectors, and innovative approach to collecting and presenting evidence within the ruleset governing ITC procedures, the group steadily grows its ITC renown. Sten Jensen in Washington DC and Jared Bobrow are the heads of the firm's IP business unit that also includes a powerful federal court and PTAB litigation team. Washington DC's Jordan Coyle and Steven Routh, Clement Seth Roberts in San Francisco and Robert Benson, who splits his time between the Orange County and Taipei offices, are also among the key ITC practitioners.

Practice head(s):

Sten Jensen; Jared Bobrow

Other key lawyers:

Jordan Coyle; Steven Routh; Robert Benson; Clement Seth Roberts

Testimonials

‘Very knowledgeable and experienced team that is well versed in the nuances of ITC procedures and precedent. Can effectively and efficiently guide a client from the initial complaint filing to implementation of requested relief.’

‘Jordan Coyle consistently displays a firm grasp of overarching case themes as well as details necessary to support preferred positions. You can trust he will be ‘in the weeds’ and able to spot untenable positions taken by the opposition.’

Key clients

Robert Bosch GmbH

Foxconn Interconnect Technology, Ltd.

BIC Corporation

Sonos, Inc.

Mahindra & Mahindra Ltd.

New Balance Athletics Inc.

RealTek Semiconductor Corp.

Panasonic Corp.

MediaTek Inc.

Vivo Mobile Communication Co., Ltd

Work highlights

  • Represented Robert Bosch GmbH and Foxconn Interconnect Technology, Ltd. in an ITC investigation filed by J.S.T. Corporation involving electronic components used in GM vehicles.
  • Represented Sonos in its most important patent litigation ever against rival Google regarding the sale of audio speakers, smartphones, computers, and tablets.
  • Represented New Balance in a six-year long ITC investigation against Converse, winning a complete victory on behalf of New Balance regarding claims of trade dress infringement related to certain design elements of Converse’s Chuck Taylor All-Star brand footwear, also improving the competitive landscape for New Balance’s PF Flyers shoes.

Steptoe & Johnson LLP

Steptoe & Johnson LLP successfully grew its roster of ITC clients in 2020, adding a number of international companies to its client list. The caseload of practice head John Caracappa and his team includes a number of ITC investigations, including two major wins in 2020, but also Federal Circuit appeals and PTAB proceedings, underlining the group's ability to manage large patent disputes in the US. Harold Fox joined Honigman Miller Schwartz and Cohn LLP in September 2020. Matthew Bathon made partner in January 2020.

Practice head(s):

John Caracappa

Other key lawyers:

Timothy Bickham; Matthew Bathon

Key clients

Qingdao Hollyren Cosmetics Co., Ltd and Qingdao

LashBeauty Cosmetic Co., Ltd.

Hisense Group

The Solaria Corporation

Panduit Corporation and The LAN Wirewerks Research Laboratories Inc.

Resideo Technologies

Leedarson Lighting Co. Ltd. and Leedarson America, Inc.

Broadcom Corporation

Autel Robotics

Work highlights

  • Representing complainant The Solaria Corporation in asserting three patents related to solar panels.
  • Secured a complete victory in three simultaneous ITC investigations for respondents Leedarson Lighting Co., Ltd. and Leedarson America, Inc. against allegations of infringement of a patent related to LED technology brought by complainants Lighting Science Group Corp., Healthe, Inc., and Global Value Lighting, LLC.
  • Acted as counsel to complainant Broadcom Corporation in asserting patents related to infotainment systems and others related technologies found in automobiles against a number of respondents from the automotive sector.

Akin Gump Strauss Hauer & Feld LLP

Akin Gump Strauss Hauer & Feld LLP unites a strong ITC practice and an experienced federal court and PTAB practice under one roof. The team of practice head Steve Maslowski in Philadelphia features an exceptionally high number of lawyers with technical degrees, allowing for thorough understanding of the technological issues at stake in a broad range of sectors. The firm's core ITC duo consists of Cono Carrano and David Vondle in the Washington DC office. Chad Everingham joined Ward Smith & Hill PLLC in January 2020, and Steven Zager left for King & Spalding LLP in December 2019.

Practice head(s):

Steve Maslowski

Other key lawyers:

Cono Carrano; David Vondle

Key clients

3M Company, 3M Innovative Properties Company

Synaptics Incorporated

VIZIO, Inc.

Work highlights

  • Representing 3M as a significant third party in an ITC investigation and district court litigation involving patents related to dental orthodontic scanners and software, processing of dental images, and preparation of physical dental models.
  • Represented Respondent VIZIO in an ITC investigation brought by Innovative Foundry Technologies LLC related to semiconductor and integrated circuit technologies.

King & Spalding LLP

At King & Spalding LLP, Jeffrey Telep and his team set themselves apart through their international trade focus which fits well with the firm's specialist patent litigators. Traditionally specialized in technology matters, the practice has also built a reputation in high-stakes pharmaceutical cases. Clients appreciate the firm's international platform and related experience in managing complex cross-border matters. Steven Zager joined the Austin office coming from Akin Gump Strauss Hauer & Feld LLP in January 2020.

Practice head(s):

Jeffrey Telep

Other key lawyers:

Steven Zager

Testimonials

I find that the team has a uniquely high level of integrity.

Our experience has been that everyone is first rate and brings a great depth of knowledge and a high degree of professionalism to the work they do for us.

The practice has extreme competence in the areas of Section 337 (ITC) and the associated litigation and intellectual property expertise to pursue litigation in this discipline.  Each of the practitioners have significant experience in the various practice sections. In addition, services such as economic expertise for the calculations of damages have been provided.  I have worked with many large and small firms in my career and this team by far exceeds any experience and professionalism that I have seen.

King & Spalding has an experienced team to handle all aspects of Section 337 investigations.

King & Spalding benefits from long-term presence in Germany, UK, and other European countries and deep and well-established contacts to law firms in Europe.’

The practice has demonstrated a unique capability to find and analyze complex research for my case in areas that include litigation (case history), primary research on importation statistics for potential respondents and the ability to take complex patents and understand them quickly as to include the interpretation and production of claims charts. I have been very impressed with the skill of the patent litigators and their ability to grasp new concepts quickly.

Jeff Telep and Joe Eng have been great to work with.  Jeff is very articulate.  Joe is amazingly bright and has creative ideas for our work.

‘Jeff Telep has been a great asset both in providing subject matter expertise as well as excellent judgement and guidance. His calm, low-key demeanor combined with extensive background in the area has kept us on track and helped us to solve what at times seemed to be insurmountable problems.  Joe Eng has also provided excellent insight and creative solutions to some of our patent issues.’

Jeff Telep is an expert in the ITC process.

Chris Campbell brings a litigator’s perspective to the complexities of intellectual property and how it may be used and expected defenses from respondents in the ITC process.’

Jeffrey Telep is very highly regarded by his peers for his ability as a counselor and a litigator. Jeff is a thought leader in the field.

Natasha Moffitt with her computer engineering background and deep understanding of German language and patent practice is highly skilled in handling international, transatlantic patent litigation cases for German and European automotive clients, deep understanding of software-inventions IoT, connected cars, and FRAND/SEP issues.

Key clients

Amtech Systems LLC

Automotive Data Solutions/Firstech

Taiwan Semiconductor Manufacturing Corporation

EMD Serono

Amarin Pharmaceuticals

Work highlights

  • Represented Amarin Pharmaceuticals, Inc. in a novel Section 337 investigation against imports of certain omega-3 products in synthesized chemical form titled Certain Synthetically Produced, Predominantly EPA Omega-3 Products In Ethyl Ester or Re-esterified Triglyceride Form, which raised an important question of the scope of the Commission’s authority to investigate alleged violations under the Tariff Act and Lanham Act, and the ability of the Food & Drug Administration to block enforcement of the nation’s trade laws by not taking action to enforce the provisions of the Food Drug & Cosmetic Act.
  • Acted for Amtech Systems LLC in filing a six-patent section 337 complaint against infringing RFID devices imported, sold for importation or sold after importation by a number of Kapsch entities.
  • Represented respondents Automotive Data Solutions, Inc. and Firstech LLC in the section 337 investigation on Certain Vehicle Security Remote And Convenience Systems And Components Thereof, Inv. No. 337-TA-1152, filed in retaliation for the patent infringement lawsuit brought by ADS and Firstech in the US District Court for the Central District of California.

McDermott Will & Emery LLP

McDermott Will & Emery LLP's ITC team stands out for its blend of technological versatility, its lawyers with substantial experience from former regulatory and enforcement authorities, and, thanks to Washington DC-based Jay Reiziss' in-depth knowledge of the workings of the ITC Office of the General Counsel, the Office of Chairman and the Office of Unfair Import Investigations. With the firm's large patent litigation team, clients can draw on substantial resources for their high-stakes ITC matters. Practice head William Gaede is based in the Silicon Valley office.

Practice head(s):

William Gaede

Other key lawyers:

Jay Reiziss; Alexander Ott

Testimonials

‘The MWE team includes many highly skilled patent litigators. In my experience, they provided pragmatic business-focused advice. The team quickly picked up the technology involved in the matter and was a pleasure to work with throughout the case.’

‘I appreciated the pragmatic business advice that MWE provided for this legal matter as well as the appropriate staffing levels on the case. The amounts charged were reasonable and unlike what happens at other large firms there was no overstaffing/churning of the bill.’

‘Bill Gaede is an excellent attorney who provides smart and practical advice. He is highly skilled at explaining complex topics in understandable terms.’

‘They provide creative advice on strategies for resolving disputes on favorable terms, advise clients regarding licensing practices and have a comprehensive knowledge of the complex legal framework and unique issues surrounding licensing of standard-essential patent (SEP) portfolios under fair, reasonable and non-discriminatory (FRAND) terms.’

‘Practical, aggressive, and zealous. Can’t ask for better litigators in a difficult heavy litigation matter.’

McGuireWoods LLP

At McGuireWoods LLP, clients benefit from Steven Adkins extensive ITC experience, acting both for complainants and respondents. With decades of investigations under his belt, Adkins is able to assist with a wide range of technologies and products and offers complementary expertise in proceedings before the US Customs and Border Protection Agency. Richmond-based David Finkelson is the head of the IP practice.

Practice head(s):

David Finkelson

Other key lawyers:

Steven Adkins

Testimonials

Very considerate and thorough in helping clients to evaluate all tactics.

McGuirewoods keeps very good record and control of the work they do. Optimal effort with great result thus keeping the service very competitive and flexible.

Steven Adkins maintains very good service and good relationship with client on a long-term basis for decades. Very friendly and warm with no empty/useless talk. He is very helpful in catering to the client’s need in different practice areas by introducing and maintaining good control of the service provided by other offices of his firm. I highly recommend him.

Key clients

Taurex Drill Bits, LLC

Current Lighting Holdco, Inc.

Union Technology International (Macao Commercial Offshore) Company Limited

Work highlights

  • Secured a favourable settlement for Taurex Drill Bits, LLC in an investigation before the ITC.
  • Represented Current Lighting Holdco, Inc. in two investigations before the ITC.
  • Achieved a successful result on behalf of Union Technology International (Macao Commercial Offshore) Company Limited, allowing it to continue operations in the US.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. is particularly well versed in acting for complainants in ITC investigations and corresponding IPR proceedings, but also successfully acts for respondents. The caseload consists of technology patent disputes, with a particular focus on semiconductor foundry, microprocessor and circuit technology-related matters. Matters involving standard-essential patents and customs and border protection proceedings are other areas of strength. Michael Renaud is the head of the IP division, and James Wodarski is also recommended. All lawyers named are based in the Boston office. Steve Akerley joined InterDigital Inc. in June 2020.

Practice head(s):

Michael Renaud

Other key lawyers:

James Wodarski

Key clients

GlobalFoundries

Glycosyn LLC

Koninklijke Philips N.V. and Philips North America LLC

DivX, LLC

Work highlights

  • Represented GlobalFoundries, as complainant against Taiwan Semiconductor Manufacturing, its largest direct competitor a, resulting in a confidential settlement.
  • Represented Glycosyn LLC as complainant before the ITC against respondent Jennewein Biotechnologies GmbH, a large global competitor, resulting in a limited exclusion order issuing against Jennwein.
  • Filed a complaint with the ITC and in federal district courts on behalf of Innovative Foundry Technologies against global semiconductor manufacturers, resulting in a favorable settlement.

Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP appeals to clients thanks to its deep bench, featuring wide-ranging technical expertise, its international footprint, and its wider patent and trade secret practice. The Washington DC-based head of the team, Eric Namrow, has successfully fought a number of high-stakes ITC disputes and thereby ensured that the firm's ITC practice matches the wider patent litigation practice's rise in the US market. ITC-related disputes at the PTAB, Federal Circuit, the Court of International Trade and US Customs and Border Protection complete the group's ITC offering.

Practice head(s):

Eric Namrow

Key clients

General Electric Company and Consumer Lighting (US), LLC (d/b/a GE Lighting, LLC)

HP Inc.

One World Technologies

Zimmer Biomet

Work highlights

  • Representing General Electric Company and GE Lighting jointly in a multi-patent investigation involving light emitting diode technology.
  • Secured a win for One World Technologies, a division of Techtronic Industries Co. Ltd., that helped preserve its abilities to import its garage door openers to the US.
  • Representing HP Inc. as third party involved in significant discovery in a multi-patent investigation involving lithium-ion battery technology.

Paul Hastings LLP

Litigation powerhouse Paul Hastings LLP specializes in complex high-stakes patent disputes, with ITC litigation as a cornerstone of the wider patent litigation practice. Technology companies form the heart of the group's client list, benefitting from the team's combined ITC, IPR and Customs and Border Protection expertise. Yar Chaikovsky in Palo Alto, Thomas Counts in San Francisco, Christina Ondrick in Washington DC and Philip Ou, also in Palo Alto, are the key ITC experts in the team. Chaikovsky directs the global IP practice jointly with Bruce Wexler in New York. Fellow New Yorker Eric Dittmann and Naveen Modi in Washington DC serve as vice chairs of the practice.

Practice head(s):

Yar Chaikovsky; Bruce Wexler; Eric Dittmann; Naveen Modi

Other key lawyers:

Thomas Counts; Christina Ondrick; Philip Ou

Key clients

Align Technology Inc.

H.I.G. Capital/Xtera Communications

HTC

Work highlights

  • Represented HTC in numerous cases against Innovation Sciences, including district court cases and an ITC investigation, securing an end of the global dispute following two victories of HTC Corporation over Innovation Sciences in district court cases ahead of an evidentiary hearing at the ITC.
  • Representing Align Technology in numerous cases against a competitor, 3Shape A/S, in district courts and the ITC.
  • Represented Xtera, Inc. against competitors NEC and Nokia in an ITC defense win and additional litigations that ultimately led to a successful global resolution.

Ropes & Gray LLP

Ropes & Gray LLP impresses with its particularly successful track record at the ITC and its expertise in the intricacies of parallel-running ITC and PTAB proceedings. Practice head Matthew Rizzolo in Washington DC is the firm's key ITC practitioner. The firm fields a set of technical advisers whose science and engineering expertise is a clear asset. Andrew Thomases in Silicon Valley directs the wider IP practice.

Practice head(s):

Andrew Thomases; Matthew Rizzolo

Other key lawyers:

Kevin Post; Steven Pepe; James Batchelder

Testimonials

They have a strong experience in both IPR and ITC disputes. They are located in many different places enabling them to leverage many areas of expertise.’

The Ropes & Gray patent litigation team delivers exceptional results in difficult cases at very reasonable rates.’

The Ropes & Gray patent litigation team has been flexible and innovative in billing practices. They have also been smart about assigning team members to tasks that match their talents, experience, and billing rates.

Kevin Post is a hardworking, calm and resourceful lawyer who gains the trust of decision makers. Matt Rizzolo is very creative and hardworking.

I value their expertise and availability.

Key clients

Emerson Electric Co.

TiVo Corporation

Roku Inc.

CJ CheilJedang Corporation

GN Hearing

Prospect Hill Growth Partners

Walker Edison Furniture Company

Work highlights

  • Achieved a complete win for Fortune 500 company Emerson Electric at the International Trade Commission, part of the client’s long-running international dispute against SIPCO concerning Emerson’s Smart Wireless products.
  • Achieved wins for TiVo in its IP battle at the ITC against Comcast, achieving two exclusion orders for TiVo, making TiVo one of only a handful of companies who have won multiple exclusion orders.
  • Representing Roku, the California-based, video-streaming content and device company, in a business-critical ITC investigations against Universal Electronics.

Winston & Strawn LLP

Winston & Strawn LLP is headed up by Tom Jarvis, who has longstanding experience in ITC investigations. As one of the market's most eminent ITC practitioners, Jarvis has built a particularly strong track record in the electronics and telecoms sectors. His role as former senior staff attorney at the ITC, former president of the ITC Trial Lawyers Association and a member of the association's executive committee demonstrate his high standing in the profession. As part of the firm's wider patent litigation practice, the group can quickly adapt to the staffing needs of complex investigations and offers expertise in a wide array of sectors. In September 2020, Steven Anzalone and Paul Goulet joined FisherBroyles, LLP, following Michael Murray who had joined the firm in July the same year.

Practice head(s):

Tom Jarvis

Testimonials

‘Highly aware of nuances and directions of the law. Excellent advocates. Imaginative problem solvers.’

‘24-7 availability; exceptional awareness of client interest. Tom Jarvis as inexhaustible; inspires high confidence; extremely effective; world-class litigator.’

‘The Winston & Strawn team is remarkably organized and capable of handing the intensive tidal wave of details that comes with any ITC litigation.’

‘Tom Jarvis is one of the most experienced ITC practitioners in the IP bar. He served at the ITC for years and has a stellar reputation for leadership and advocacy. Tom has an impressive team of experts in various fields of ITC law (domestic injury, etc.).’

Key clients

Comcast Corporation

Walmart Inc.

GoVision LLC