IP Wins Worth Bragging About in 2013

, The Litigation Daily


Aereo's micro antennae.
Aereo's micro antennae.

Now that we've reached the end of another busy year for intellectual property litigation, it's worth looking back at some of the decisions that got the IP bar buzzing over the past 12 months. The list is far from definitive, but here are a handful of cases that had winning lawyers popping champagne corks early in 2013.

American Broadcasting Companies Inc. et. al. v. Aereo Inc.
The U.S. Court of Appeals for the Second Circuit refused to enjoin Aereo's online, royalty-free streaming of broadcast television. Teams from Jenner & Block and Debevoise & Plimpton represented the broadcasters, while Michael Elkin of Winston & Strawn, and David Hosp, who was with Goodwin Proctor and is now at Fish & Richardson, represented Aereo. The April ruling set the stage for continuing litigation with the broadcast television networks, which allege that Aereo is violating their copyrights. While Aereo has retained the advantage in its own battles with the networks, the broadcasters convinced two district courts to rule against a copycat online TV company. The split has prompted the broadcasters to ask the U.S. Supreme Court to hear the case. Aereo told the high court this month that it would not object to the justices hearing the case, as it wants to settle the issues once and for all. If the court grants cert, expect the case to be one of the most closely watched IP fights of 2014.

Apple Inc. v. Samsung Electronics Co.
This fall, almost a year after U.S. District Judge Lucy Koh ordered Samsung to pay Apple $1.05 billion for infringing patents relating to smartphone and tablet technology, Apple and Samsung once again appeared before a jury in Koh's San Jose courtroom. Koh had partially vacated the verdict and ordered a retrial, giving a new jury a chance to calculate damages. In November, the second jury awarded Apple $290.5 million, bringing its total award to $929.8 million. Lawyers at Morrison & Foerster and Wilmer Cutler Pickering Hale and Dorr made the case for Apple. Quinn Emanuel Urquhart & Sullivan represented Samsung.

Association for Molecular Pathology et. al. v. Myriad Genetics Inc.
In a 9-0 decision issued in June, the U.S. Supreme Court ruled that products of nature such as DNA, or segments of DNA that are isolated from the body, are not eligible for patents. This wiped out Myriad's exclusive hold on tests for detecting alterations in the BRCA1 and BRCA2 genes, which are indicators for breast and ovarian cancer. But the court ruled that some types of tests involving synthetic DNA are patent eligible. The American Civil Liberties Union and the Public Patent Foundation represented researchers, genetic counselors, patients, breast cancer and women's health groups, and medical professional associations who challenged Myriad's patents. Jones Day was on deck for Myriad.

Authors Guild Inc. et al v. Google Inc.
In November, after eight years of litigation, Google finally prevailed in its fight with the Authors Guild, which had alleged that Google’s mass book scanning project violated copyrights. In U.S. district court in Manhattan, Judge Denny Chin found that Google Books is protected by fair use because it is transformative and provides significant public benefits.

Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, Inv. No. 337-TA-794
In yet another smartphone battle, Samsung convinced the International Trade Commission to ban the import of certain Apple products that infringed Samsung's patents. But for the first time since the Reagan Administration, the U.S. Trade Representative reversed the ITC decision in August, saying it would not allow the exclusion order because the ruling related to enforcement of standard-essential patents. This was a clear message from the Obama Administration that patent holders should not use the ITC to force an agreement over licensing rates for standard-essential patents. Quinn Emanuel Urquhart & Sullivan represented Samsung; Apple had Wilmer Cutler Pickering Hale and Dorr.

Microsoft Corp. v. Motorola Mobility Inc.
Microsoft sued Motorola in U.S. District Court in Seattle, claiming the telecommunications company violated its promise to license a standard-essential patent on "fair, reasonable and non-discriminatory" (FRAND) terms. Judge James Robart held a bench trial to determine what the licensing rate should have been, and in April he became the first federal judge to set a FRAND royalty rate for standards essential patents. His 207-page opinion has become a model for determining FRAND rates. In a jury trial that followed Robart's ruling, Motorola was ordered to pay Microsoft $14.5 million in damages for breaching its obligation to license its standard-essential patents to Microsoft on fair terms. Microsoft was represented by Sidley Austin and Calfo Harrigan Leyh & Eakes. Quinn Emanuel Urquhart & Sullivan, Ropes & Gray and Summit Law Group represented Motorola.

SAP America, Inc. v. Versata Development Group, Inc. and Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC
The first inter partes and covered business method patent reviews were decided by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in 2013, and in both cases the PTO invalidated the patents in question. These post-grant patent challenges, created as part of the America Invents Act, move faster and are less expensive than district court litigation. And the first decisions clearly got the attention of the patent bar: The PTAB now has the third busiest patent docket in the country. In the SAP case, SAP was represented by Finnegan, Henderson, Farabow, Garrett & Dunner, and by Ropes & Gray, while Versata turned to McKool Smith.

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