Patent Litigation
Trademark Litigation
Copyright Litigation
ITC 337 Actions
Industrial Design Litigation

Patent Litigation
Mayer Brown successfully represents both plaintiffs and defendants in patent litigation before the US Supreme Court, the US Court of Appeals for the Federal Circuit and the US District Courts. We have a strong focus on business method patents, having represented Fortune 100 companies and other corporate clients in cases involving patents that cover a wide range of methods and products.

Disputes that center on pharmaceutical, medical device and biotechnology patents are another particular area of strength in our patent litigation practice. We excel at Hatch-Waxman Act and other patent litigation, where we have successfully represented innovator pharmaceutical companies against generic manufacturers and other defendants alleging non-infringement, patent invalidity, inequitable conduct and antitrust violations.

Our patent litigation focus is global, as we conduct complex patent litigation before the specialized chambers of German District Courts, Courts of Appeals and the German Supreme Court (where upwards of 70% of European patent litigation occurs). Our European capabilities include nullity proceedings for European and German patents before the German Patent and Trademark Office, the German Federal Patent Court, the German Federal Supreme Court, and the European Patent Office.  We are also part of an effective global capability in anti-piracy programs that operate through cooperation with customs and police authorities and private investigators.

• We defended a global manufacturer in a successful representation in which the US Supreme Court granted our certiorari petition to consider whether, in a Sherman Act Section 1 tying case, intellectual property protection for the “tying product” creates a rebuttable presumption of market power, one of the elements of per se liability for tying. We successfully persuaded the Court to hold that “in all cases involving a tying arrangement, the plaintiff must prove that the defendant has significant market power in the tying product.” The result was a significant victory for all patent holders.

• We represented the prevailing petitioner in which the US Supreme Court clarified the scope of the “doctrine of equivalents.” Petitioner challenged the Federal Circuit’s “complete bar” rule, under which the doctrine of equivalents could never apply to any claim that had been narrowed for any reason during the prosecution of the patent. The Court rejected the “complete bar” rule, vacated the judgment, and remanded for further proceedings.

• We represented the leading manufacturer of gaming machines in a matter where the Court of Appeals for the Federal Circuit summarily affirmed a $7.3 million jury verdict in favor of our client, on its claim of patent infringement. The Court issued its decision without opinion the day after oral argument. The patent claims at issue involve a method of playing multiple hands of video poker virtually simultaneously. Our client commercially embodied these claims into the most successful video poker game ever, inspiring the defendant to develop and distribute a knock-off. After a two-week trial, a jury in Nevada determined that the defendant’s game infringed our client's patents based on the doctrine of equivalents. The primary issues on appeal involved the propriety of the jury instructions. The Federal Circuit rejected the defendant’s contentions that the jury instructions misconstrued the patent claims and were inconsistent.

• We represented a global pharmaceutical company in this Hatch-Waxman case, successfully defending a patented combination of hydrocodone and ibuprofen against a challenge mounted by a generic ANDA applicant. The district court excluded evidence developed by Mayer Brown reflecting that (1) independent tests showed that the patented combination had synergistic effects; and (2) other companies had failed in their efforts to discover a narcotic-NSAID combination in which both constituents contributed to the analgesic effect. The Federal Circuit agreed with us that the “evidence developed after the patent grant” is relevant to patentability when it contributes to an “understanding of the full range of an invention.”

• We are defending a global credit card company against claims alleging breach of contract, misrepresentation, violation of US antitrust laws, and that our client has infringed the eight patents related to cryptographic and other techniques to improve the security of smart cards. In defense of these allegations, Mayer Brown attorneys are advancing legal theories in the area of inducement of patent infringement and the extraterritorial application of US patent laws.

• We represent a Korean-based multinational corporation in a patent licensing dispute against an Israeli patent-holding corporation in which, according to sworn testimony, approximately eight billion dollars is at issue. It is a dispute of significant strategic business importance and involves complex claims and counterclaims concerning the respective parties’ performance under a license to all of the Israeli corporation’s patents for the life of those patents.

• We defended a manufacturer of consumer electronics in a multi-party patent infringement litigation. The plaintiff company asserted a patent that it alleged related to parental management technology for stored media playback equipment, and asserted infringement by numerous manufacturers and resellers of DVD players. The case was successfully settled on favorable terms for our client.

• We represented two pharmaceutical companies against generic manufacturers who were trying to invalidate a patent for the first transdermally administered testosterone gel ever approved by the FDA. The litigation resulted in a consent judgment affirming infringement and the validity and enforceability of the patent.

• We successfully defended a worldwide ophthalmic company and its UK distributor in a matter regarding a patent infringement action relating to laser eye surgery. It was one of a series of technically and legally complicated actions brought in different jurisdictions – and also connected with Federal Trade Commission proceedings in the United States. The action in the UK was the “lead” action and decided several important legal issues, including UK privilege in depositions taken in USPTO interference proceedings.

• We represented a Dutch multinational chemical company that owns a patent for a key ingredient in body parts and spoilers used in and for Formula One racing cars, in successfully suing for infringement of its European patent. We convinced the Frankfurt District Court to fast track this technically complex litigation by starting with an application for an ex parte interim injunction. By doing so, and immediately applying for a hearing instead of remaining ex parte, the defendant was forced to immediately respond with comprehensive arguments. The entire litigation lasted only eight months and resulted in a judgment in our client’s favor providing for an injunction, damage claims, and an order that the defendant disclose its infringement actions in detail.

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Trademark Litigation
With a top-ranked trademark practice in leading countries including the US, Germany, UK and Asia, Mayer Brown lawyers represent clients in the prosecution and defense of trademark infringement actions in federal and state courts. Our firm has an active practice before the US Trademark Trial & Appeal Board (TTAB) in trademark cancellation and opposition proceedings, encompassing dozens of disputes annually. We also regularly represent leading brands before the German Patent and Trademark Office as well as domestic and cross-border ex-parte injunction proceedings in German and European Courts. Further, we manage effective anti-counterfeiting programs for various Fortune 500 companies, including border seizures and related litigation in addition to trademark disputes before the World Intellectual Property Organization (WIPO).

• We represented the founder of a clothing company in defense of a declaratory judgment action as a result of a competitor’s use of our client's trademarks. We successfully negotiated a settlement agreement whereby the designer agreed not to use any of our client’s trademarks in connection with formal clothing in order to avoid likelihood of confusion.

• We represented an insurance company in an emergency TRO and trademark infringement action to stop the launch of a global telecommunications company’s multi-million dollar ad campaign during the Super Bowl broadcast. We were successful in negotiating settlement terms that protected our client and its marks from any potential confusion.

• We represented a producer of interactive video content in a case for trade secret misappropriation and breach of contract. On cross-motions for summary judgment, the Court found in favor of our client on significant aspects of our breach of contract and unfair competition claims.

• We defended a publishing company in a matter of trademark infringement claims brought by owner of a mark over our client’s use of a mark in connection with its luxury lifestyle line of publications. We successfully defeated Plaintiff’s claims for preliminary injunctive relief in a decision that found no likelihood of confusion between Plaintiff’s mark and our client’s mark. As a result, the case was settled on favorable terms to our client.

• We represented an international hotel and restaurant chain in a trade dress infringement action brought by another international restaurant chain. The case settled favorably for our client, after a three-month arbitration resulting in the chain continuing to pursue and develop its concept.

• We successfully defended a bagel company, in an action for trademark infringement relating to perhaps the world’s most famous brand name in the bagel industry.  Within only a few short months of case commencement, we were able to successfully dismiss all claims against our client and settle on terms quite favorable to our client.

• We represented a global energy company in successfully bringing the first action of its kind in the UK for infringement of a trademark registration for a color per se. Proceedings were brought against a competitor for their use of a similar color on their service stations in Northern Ireland. The judgment in our client’s favor was upheld in the Northern Ireland Court of Appeal and is the leading UK authority on infringement of color trademarks.

• We acted for a global chocolate company and its UK subsidiary to prevent the sale in the UK by the German discount supermarket Aldi of look-alike chocolates in the run-up to Easter.  Having filed for an urgent interim injunction in the High Court, we obtained a permanent injunction and resolution of the whole case through negotiations with Aldi and its German supplier the day before the substantive hearing of the injunction, obtaining all the relief sought by our client including the recovery of its legal costs.

• We represented a global beverage manufacturer in a trademark dispute and infringement litigation in Hong Kong and in the PRC. *

• We represented a leading freighter airline in Hong Kong in an action against another Hong Kong-based airline for the use of a confusingly similar company/trade name and trademark. Proceedings, including interim injunctive application, were prepared but the matter was settled between the parties before the filing of a writ with the other party agreeing to change its name. *

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Copyright Litigation
Copyright issues are often inseparable from concerns involving software, digital media, and the Internet, and Mayer Brown is highly skilled at counseling clients on multimedia copyright protection. We enforce copyrights on software, product appearances, and databases, particularly including effective anti-piracy strategies. We have obtained numerous pre-judgment seizure orders against pirates of computer software, high-technology products, luxury goods, and celebrity merchandise. Our lawyers have supervised and coordinated international anti-piracy actions in East Asia and other parts of the world.

• We obtained an important victory on behalf of our record company client, enabling owners of classic sound recordings to obtain protection for pre-1972 works not protected under federal law. The New York State Court of Appeals’ decision has broad significance to the recording industry because it firmly establishes state common-law copyright protection for pre-1972 sound recordings, which are not protected by the federal copyright statute.

• We obtained summary judgment for a global software company on an unwarranted claim under the Digital Millennium Copyright Act, where the plaintiff claimed that by permitting a specific font to be used for filling out forms or annotating a document, our client’s software circumvented the embedding bit in violation of the DMCA.

• We represent a leading web search engine and a video-sharing web site in their defense of litigation brought by various media content holders and a number of music publishers. Plaintiffs allege various claims of copyright infringement relating to videos posted by users of the sharing site. Our clients claim that their users’ activity does not constitute copyright infringement and that, in any event, as service providers they are protected by the Digital Millennium Copyright Act (the “DMCA”) which Congress enacted to promote the freedom of expression that service providers, foster on the Internet, while balancing the rights of copyright holders. While the matter is still in discovery, we have won a number of significant interim victories, including a decision in which we persuaded the Court – in a decision of tremendous significance in Copyright law – that punitive damages should not be available for claims for copyright infringement.

• We represented world's leading open source technology solutions provider in a suit alleging that its software incorporated font software that infringed copyrights and trademarks owned by the plaintiff company.

• We represented a global stock photo agency in a high-profile copyright infringement litigation including all aspects of discovery, summary judgment and appellate briefing in a copyright infringement case between an individual photographer and one of the largest stock photography houses. We won summary judgment and were awarded fees (the case settled while on appeal). In a very lengthy opinion, the Court engaged in an extensive analysis of the plaintiffs’ photographs and the allegedly infringing photographs and in a decision of significant import in the copyright area, clarified the scope of copyright protection in photographic images.

• We represented the chairman of a major record label in a dispute arising from when an independent record label sought to record a “reunion” album involving an artist with his former group. Both the artist and the proposed producer were under exclusive contract to the record label. The case went to a jury, which awarded the independent label $25 million in compensatory and $107 million in punitive damages on claims of breach of contract, fraudulent inducement, tortious interference, and copyright violations. At that point we were brought in. The case was argued to the Second Circuit in August 2004. On June 14, 2005, the Second Circuit decided in our client’s favor, vacating all but a breach of contract compensatory award and ordering that judgment be entered for our clients.

• We represented a global technology company in two copyright infringement and unfair business practices cases concerning improper reverse engineering. In the first case, in denying a motion to dismiss, the district court ruled in our client’s favor on a novel legal issue concerning the interaction of the first-sale doctrine and computer software licenses. Both cases were resolved on favorable terms.

• We represented a local substantial toy manufacturer in registering and enforcing the intellectual property rights in its toys. Litigation commenced against a local Hong Kong company for infringing copyright in respect of a pinball game. The case is significant as it has implications of what constitutes sufficient knowledge for the purposes of establishing the liability of a secondary infringer and how the primary infringing act of "issuing copies to the public" will be further interpreted. *

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ITC 337 Actions
Major corporations are increasingly turning to the US International Trade Commission (ITC) to resolve their intellectual property disputes. The ITC provides several key advantages, including a highly accelerated procedure for investigating complaints, and powerful remedies in the form of exclusion orders that may not be available in federal courts.

Known as “Section 337” actions, companies litigating disputes in this forum need a law firm with a deep bench of experienced intellectual property (IP) litigators, an international footprint, and lawyers familiar with ITC procedures and schooled in international trade disputes. Mayer Brown LLP brings together precisely this set of talent, and is on its way to becoming one of the leading firms to represent litigants before the ITC.

We have effectively represented complainants, respondents, and interested third parties in Section 337 actions before the ITC, including telecommunications carriers, fiber-optic communication systems, and manufacturers of tissue, automobile parts, and laminate flooring. Our patent lawyers have experience and technical knowledge in numerous fields, including medical device technologies, biotechnology, pharmaceutical, chemistry, life sciences, electrical and mechanical engineering, telecommunications, computer hardware and software, and related manufacturing processes. In addition, we have successfully defended our clients against claims of patent, trademark and copyright infringement, unfair competition, false advertising, trade secret misappropriation, and antitrust violations.

• Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, including Cellular Telephone Handsets, Inv. No. 337-TA-543 (appeal pending). Represented a global cellular phone company in one of the most significant 337 disputes in recent years both before the ITC and on appeal at the Federal Circuit, where parties sought to preclude importation into the US of products integral to our client’s business, such as handsets and chipsets. We have also served as counsel on several ongoing ITC investigations affecting our client’s business, and have represented the company in related patent matters throughout the country (including related matters in the state and federal district courts).

• Certain Tissue Converting Machinery, including Rewinders, Tail Sealer, Tim Removers and Components Thereof, Inv. No. 337-TA-548. Represented a manufacturer of tissue manufacturing equipment in this Section 337 action; resulted in settlement favorable to our client.

• Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof, Inv. No. 337-TA-503. Represented complainant, a manufacturer of automated transmissions, in this consolidated enforcement and advisory opinion proceeding under Section 337.

• Certain Flooring Products, Inv. No. 337-TA-443. Represented respondent manufacturer of laminate flooring products on appeal from ITC determination finding non-infringement; US Court of Appeals for the Federal Circuit upheld ITC's determination in favor of client, as reported at 342 F.3d 1361.

• Certain Remodulating Channel Selectors and Systems Containing Same, Inv. No. 337-TA-407. Represented respondent Italian manufacturer of certain fiber optic communications systems in ITC investigation and related multi-district patent litigations; resulted in favorable settlement of all matters.

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Industrial Design Litigation
Whereas copyright is intended to protect a literary, musical or artistic work, an industrial product is more likely to be protected as a design. Our expertise in this area is, therefore, more closely associated with the manufacturing industry.

The work of our UK practice falls into two broad categories - contentious and non-contentious (both advisory and transactional). We have been involved in design infringement actions relating to items as diverse as clothing, shoes, jewelry, chimneys, cable racks, feminine hygiene products and golf clubs.

The legal protection of designs is a complex area. Unlike copyright, UK unregistered design right is not as readily available to overseas nationals, due to a lack of international conventions in this area. In order for a non-EU or non-Commonwealth citizen to secure unregistered design protection therefore, certain procedures must be adhered to at the outset of the design's creation and marketing. As part of a continuing process of harmonization of laws within the European Community, a new intellectual property right, the Community design, is in the course of being introduced. The unregistered Community design is already in force and gives protection for 3 years against copying of a design made available to the public within the EC. The registered Community design will be administered through the Office for the Harmonization of the Internal Market ("OHIM") and is expected to be available from the beginning of 2003. It will give a monopoly right for up to 25 years. Both will have effect throughout the EC.