litigation

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. 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. Dechert also has a dedicated Hatch-Waxman litigation team with seasoned antitrust lawyers and Ph.D.-level expertise that routinely handles ANDA disputes.

A recognized leader in IP litigation

Decades of advocacy on behalf of clients has established Dechert as a leading firm for intellectual property litigation. In 2016, IAM Patent 1000 said, “Internationally active native outfit Dechert excels in patent conflicts which demand strong technical and scientific nous; many of its leading practitioners have doctorates in their respective fields, ensuring it can rise to any challenge effectively and intelligently.”

Chambers USA regularly ranks Dechert’s IP lawyers among the nation’s best litigators, and other sources have highlighted our lawyers, including IP Law & Business and The Best Lawyers in America. In 2017, Dechert’s Pennsylvania team was named Intellectual Property Litigation Department of the Year by the Legal Intelligencer for the third consecutive year that the award was given.

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:

  • Amgen
  • Boston Scientific
  • Citigroup
  • Elan Pharmaceuticals
  • Endo Pharmaceuticals
  • GlaxoSmithKline
  • Hitachi
  • Lenovo
  • Martek
  • Medtronic
  • Monster Worldwide
  • Norgine
  • PepsiCo
  • Penwest
  • Pfizer
  • QVC
  • Stiefel
  • Teikoku
  • TD Banknorth
Experience

Patent Litigation

E-Commerce and Consumer Products

  • SCA Hygiene Products, a leading producer of adult diapers, in SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products, LLC, et al. 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.
  • Monster Worldwide, a global online employment solution, in JobDiva, Inc. v. Monster Worldwide, Inc. in District Court for the Southern District of New York in 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, a patent infringement suit brought by Alcatel in relation to its e-commerce patents in the Eastern District of Texas.

Pharmaceuticals and Medical Devices

  • Endo Pharmaceuticals and Penwest Pharmaceuticals in Endo Pharmaceuticals Inc., et al., v. Impax Laboratories, Inc., et al. (U.S. District Court, Districts of Delaware and New Jersey), in a series of related Hatch-Waxman patent infringement actions filed against eight generic companies relating to Opana® ER, an extended release form of oxymorphone hydrochloride indicated for around-the-clock treatment of chronic pain. The first round of cases were settled in the middle of trial. In the second round of cases, Dechert prevailed in a five-week trial in New York against seven generic companies, protecting an estimated US$2 billion in sales.
  • Aribex, a leader in handheld dental X-ray devices, in Dexcowin Global, Inc. v. Aribex, Inc., 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.
  • Medtronic, a Dublin-based medical technology, services and solutions company, and Medtronic Vascular in Medtronic, Inc. and Medtronic Vascular, Inc. v. AGA Medical Corporation and Medtronic, Inc. v. W.L. Gore & Associates. Medtronic asserted that AGA Medical Corporation infringed two Medtronic patents pertaining to the use of shape memory alloys for providing self-expanding medical devices. The jury in the AGA case awarded Medtronic a royalty of 11 percent resulting in damages of US$57.8 million.

Electronics and Computers

  • 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, a patent infringement case involving mobile phone transceiver technologies.

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.
Patent Litigation

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 the Netherlands, Japan, Germany and France. We have successfully tried cases in U.S. district courts, including patent litigation hotbeds in California, Texas and Delaware, as well as the International Trade Commission, the UK High Court, French courts, the German infringement and validity courts and many others. 

Patent Monetization

Our lawyers work closely with in-house counsel and legal teams to create industry wide 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 we have helped devise global licensing, enforcement and litigation campaigns to maximize the value of our clients’ IP, generating revenue and gaining competitive advantages in the marketplace.

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.

Trade secrets and unfair competition

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. 

Trademark and copyright litigation

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.

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