Patent Litigation

To protect our clients’ valuable inventions, we represent plaintiffs and defendants in patent disputes in federal courts throughout the United States. Our lawyers are well-versed in the broad range of technologies and industries involved in these cases, including electronics, semiconductors, software, telecommunications, the internet, FDA-approved drugs and medical devices, chemical engineering and materials science, and media and entertainment. Because most of these cases require court construction of numerous patent claim types and claim terms, we have extensive experience in handling claim construction issues. In addition, we routinely handle appeals before the Federal Circuit.

Our trial attorneys also help clients enforce their patents and patent portfolios through private licensing arrangements, which are how patent rights typically achieve resolution. Before initiating such licensing programs, we conduct substantial patent and claim analysis and engage potential licensees in face-to-face meetings, clarifying the technical and legal issues that inform a company’s choice between litigation and licensing.

While we do not prepare or prosecute patent applications before the U.S. Patent and Trademark Office (USPTO), many of our lawyers are registered to practice before the USPTO. This prior experience gives us first-hand perspective on the issues faced by patent prosecution lawyers and patent examiners. It also enables us to advise clients and their patent prosecution counsel on any post-issuance matters—such as filing and opposing requests for reexamination or reissue—and enhances our understanding of the possible effects of such procedures on pending or proposed litigation.

Representative Matters

Our attorneys’ patent litigation experience includes the following matters, among others:

• Nokia Technologies. Represented Nokia in several patent infringement actions against Apple Inc., alleging infringement of several Nokia patents directed to video coding and other technologies used in numerous popular Apple products. In May 2017, the companies reached a confidential settlement to end the global dispute that spanned across courts in United States (Texas), Europe, China, and Japan, in addition to the International Trade Commission.  As part of the agreement, Apple reportedly agreed to pay Nokia a one-time case settlement of approximately $2 billion dollars with additional revenues, including a multiyear patent license.
• Ericsson. Secured a $75 million verdict against TCL Communications Technology Holdings Ltd. in a patent infringement suit in the Eastern District of Texas, concerning a system for controlling access to resources in a platform in a mobile terminal. Months later, a magistrate judge reconsidered his order for a new trial on damages and reinstated the original $75 million verdict and awarded Ericsson an additional $35 million, which included enhanced damages against TCL Communications due to wilful infringement. The verdict was recognized as a 2018 Top 100 Verdict by VerdictSearch and The National Law Journal.
• WiLAN. Secured a $145 million jury verdict on behalf of WiLAN, Inc against Apple in a patent infringement suit concerning infringement of two WiLAN patents that cover voice over LTE ("VoLTE") wireless communication technology used in many Apple products, including the iPhone 6, iPhone 6 Plus, iPhone SE, iPhone 6s, iPhone 6s Plus, iPhone 7, and iPhone 7 Plus.
• Rovi Corp. Secured a victory for TiVo’s Rovi Corp. against Comcast Corp. in the International Trade Commission (ITC). The ITC issued a final ruling affirming, in large part, the Initial Determination of Administrative Law Judge David P. Shaw regarding two of Rovi's patents relating to set-top boxes. The ITC found that Comcast violated Section 337, which involves imports and issued both an exclusion order and a cease and desist order prohibiting Comcast from importing into the U.S., or otherwise distributing after importation, any set-top box that infringes Rovi’s patents.
• Ericsson. Representation of Ericsson Inc. in patent infringement actions against Apple concerning 41 of Ericsson’s standard essential and implementation patents. The companies reached a settlement agreement in December 2015 that resolved the dispute, which spanned eight federal court lawsuits filed against Apple in the Eastern District of Texas, one matter filed against Ericsson in the Northern District of California, and two matters filed against Apple before the ITC.

• American Airlines. Represented American Airlines as lead counsel in a patent suit filed by Ronald A. Katz Technology Licensing alleging infringement of patents coving interactive voice applications relating to American Airlines call centers. The Court entered a final judgment in favor of American Airlines.

• Versata. Represented Versata in a long-running patent infringement litigation against SAP relating to enterprise pricing software. The firm secured a $138 million jury verdict for Versata, which was set aside in 2009 due to a change in the law. However, our attorneys won a $345 million jury verdict for Versata in 2011. Both awards were recognized as Top 100 Verdicts in their respective years. The final judgment of $391 million was upheld by the Federal Circuit. In 2014, the U.S. Supreme Court denied SAP’s petition for certiorari, and the Federal Circuit affirmed the lower court’s decision not to vacate the final judgment. The matter has since settled on confidential terms.

• i4i (Infrastructures For Information, Inc.). McKool Smith secured a $200 million verdict on behalf of client i4i against Microsoft in a patent infringement dispute concerning markup language software. A permanent injunction was entered against Microsoft, and an additional $90 million in enhanced damages was awarded to i4i. The $290 million judgment was unanimously affirmed by the U.S. Supreme Court, and reportedly represents the largest patent infringement award to be affirmed by the Supreme Court to date. The verdict was also recognized as a Top 100 Verdict.

• Unwired Planet, Inc. (formerly Openwave). Represented Unwired Planet in a patent infringement lawsuit against Apple Inc. in the U.S. District Court for the Northern District of California. Our client asserted three patents, which cover speech recognition, provisioning mobile devices and location services. The suit alleges that Unwired Planet’s patented technologies are being incorporated into Apple's iPhone, iPad, and other iPod devices. The case settled in 2017.
• Medtronic Vascular, Inc. Represented Medtronic in a dispute involving patent applications for stent devices with porous layers for eluting therapeutic agents. The University of Texas alleged breach of contract, fraud, conversion, misappropriation of trade secrets, misjoinder of inventors, and correction of inventors. The case settled favorably for Medtronic, including the dismissal of all of the University of Texas's claims.

• Bush Hog, Inc. Secured a defense win for Bush Hog, Inc. and parent company Alamo Group Inc. in a patent infringement suit brought by Deere & Co.  After a 14-day trial, the jury found that Bush Hog and Alamo Group did not infringe Deere & Co.’s rotary cutter patent and that the patent is invalid, rejecting the plaintiffs’ request for up to $16 million in damages. The judgment of non-infringement was upheld by the Federal Circuit in May 2016.

• VirnetX. Secured a $368 million verdict on behalf of VirnetX against Apple in a patent infringement action involving several patents relating to communications technology. The verdict was recognized as a Top 100 Verdict. The firm also represented VirnetX in a previous trial against Microsoft in March 2010, which resulted in a $106 million jury verdict and ultimately a significant settlement for VirnetX. This verdict was also recognized as a Top 100 Verdict.

• ParkerVision. Represented ParkerVision in a patent infringement action involving numerous patents related to direct conversion receiver technology for use in high-performance wireless telecommunications devices. After a two phase trial, the jury found that ParkerVision’s patents are valid, and awarded $173 million in damages to ParkerVision for Qualcomm's direct and indirect infringement of the patents-in-suit. The verdict was recognized as a Top 100 Verdict of 2013.

• Ericsson. Representation of Ericsson in a patent infringement dispute against Samsung involving more than 50 patents related to the GSM, UTMS, and LTE telecommunications standards. The dispute spanned two co-pending U.S. International Trade Commission investigations and three U.S. District Court actions. Following the ITC hearing, Ericsson and Samsung settled their litigation on confidential terms.

• Telecom Company. Defended a leading telecommunications company in a patent infringement action brought by Mears involving patents directed to multiplexers used in AT&T’s network infrastructure.  The case was dismissed without prejudice.

• Parallel Networks. On August 30, 2016, McKool Smith secured a complete defense win for its client Parallel Networks in an inter partes review trial before the Patent Trial and Appeal Board (PTAB) against Microsoft and IBM concerning the validity of two Parallel Networks patents. Microsoft and IBM submitted multiple requests for inter partes review of the patents after the companies were sued for patent infringement in the United States District Court for the District of Delaware.

• Droplets, Inc. McKool Smith secured a $15 million jury verdict on behalf of Droplets against Overstock.com and Sears Holding Corp. in a patent infringement dispute concerning technology that allows access to graphic user interfaces over the internet and private/client networks. The verdict ordered Sears to pay $11 million and Overstock.com to pay $4 million in damages.

• Medtronic. Represented Medtronic in securing a $250 million patent infringement verdict against Boston Scientific concerning infringement of three Medtronic patents covering angioplasty catheters and balloons. The verdict was recognized as a Top 100 Verdict.

• Summit 6 LLC. McKool Smith secured a $15 million patent infringement verdict on behalf of Summit 6 against Samsung in April 2013 after a six-day jury trial. The jury found that Samsung infringed Summit 6’s patented media uploading technology. The final judgment ordered an additional $1.9 million in prejudgment interest for a total award of approximately $17 million.

• TGIP, Inc.  Secured a $156 million verdict on behalf of TGIP in a patent infringement dispute against AT&T concerning patents directed to protecting a system for point-of-sale activation of telephone calling cards.  Following a JMOL of non-infringement, the case was settled while on appeal to the Federal Circuit. The verdict was recognized as a Top 100 Verdict.

• Ericsson. Representation of Ericsson in a patent infringement dispute against Samsung involving more than 50 patents related to the GSM, UTMS, and LTE telecommunications standards. The dispute spanned two co-pending U.S. ITC investigations and three U.S. District Court actions, which all settled on confidential terms.
• Odyssey Wireless, Inc. Representation against Samsung, Apple, LG Electronics, and Motorola concerning Odyssey Wireless’ standard essential patents involving technology related to the LTE standard, including frequency hopping and carrier aggregation. The lawsuits were settled favorably for an undisclosed amount.

• Halliburton. Defended Halliburton in a lawsuit in which Weatherford International alleged infringement of patents covering methods of forming composite parts for use in downhole well tools.

• Medtronic. Defended Medtronic in a case against Wyeth and Cordis concerning a patent covering a method of treating restenosis with rapamycin, a drug used to retard the growth of scar tissue after balloon angioplasty. Medtronic won the case on summary judgment of invalidity.

• EDS. Defended EDS against patent infringement claims brought by EDS's Check 21 offering. Shortly before the trial, in the face of a substantial validity challenge to its patents, the plaintiff nonsuited its claims and gave EDS an irrevocable covenant-not-to-sue.

• TiVo, Defended TiVo, Inc. in a patent infringement suit brought by EchoStar Technologies involving a patent that allowed viewers to record one television program while watching another.  The jury ruled in favor of TiVo, which cleared the way for the company to negotiate royalty agreements with other manufacturers using the same technology.