2016 Highlights: Intellectual Property

Intellectual Property

The firm’s attorneys who handle IP and technology transactions had a strong 2016, working with other teams to close M&A deals and financings, along with litigation settlements involving IP assets.

Select IP Transactions

  • Delinia

    IP matters related to its sale to

    Celgene Corporation

    January 2017

  • PvP Biologics

    Global Development Agreement

    Takeda Pharmaceuticals

    January 2017

  • Apptio

    IP matters related to its

    Initial Public Offering

    September 2016

  • Hipmunk

    Technology matters related to its acquisition by

    Concur

    September 2016

  • Google

    Technology matters related to its acquisition of

    Urban Engines

    September 2016

  • Turi

    IP matters related to its acquisition by

    Apple

    August 2016

  • NetSuite

    Technology matters related to its acquisition by

    Oracle

    July 2016

  • Cvent

    IP matters related to its acquisition by affiliates of

    Vista Equity Partners

    April 2016

  • Twist Bioscience

    IP matters related to its acquisition of

    Genome Compiler Corp.

    April 2016

  • Sirona Biochem

    IP matters related to its acquisition by

    Immucor

    March 2016

  • 10xGenomics

    IP matters related to its

    Series C financing round

    March 2016

Select IP Litigation Matters

Federal Jury Decides in Favor of Aerohive in Patent Infringement Dispute

On January 6, 2017, following a week-long trial, a federal jury returned a verdict that Aerohive Networks did not infringe any asserted claims of patent holder Chrimar Systems. Wilson Sonsini Goodrich & Rosati represented Aerohive at trial and throughout the litigation.

Chrimar sued Aerohive in July 2015 in the U.S. District Court for the Eastern District of Texas. At trial, Chrimar alleged that Aerohive’s wireless access points and other networking equipment infringed numerous claims from four asserted patents. The jury cleared Aerohive of all claims. Click here for more information.

Dropbox Wins Summary Judgment in Trademark Dispute

On November 15, 2016, the U.S. District Court for the Northern District of California granted a motion by Dropbox for summary judgment in a trademark dispute over the Dropbox name. The court rejected trademark infringement claims asserted against Dropbox by a company called Thru Inc. that claimed to have been using the term "dropbox" as the name for a function in its file-transfer software since 2004. WSGR represented Dropbox in the matter. Click here for more information.

Bloomberg and Charles Schwab Obtain Summary Judgment of Noninfringement

On January 19, 2017, WSGR obtained a summary judgment of noninfringement on behalf of clients Bloomberg and Charles Schwab in a case brought by Quest Licensing after Judge Gregory M. Sleet of the U.S. District Court for the District of Delaware heard oral argument on the motion sua sponte at a pretrial conference on December 19, 2016. Quest had brought patent infringement lawsuits against several defendants, including Bloomberg, Charles Schwab, and Interactive Data, in the District of Delaware, asserting that the defendants' mobile applications infringe on its patent. According to reports, Judge Sleet has only allowed five summary judgment motions to be filed over the past 15 years, and has granted none of them on the issue of infringement. Click here for more information.

ITC Issues First Early Initial Determination of Patent-Ineligibility Under 35 U.S.C. § 101

On August 19, 2016, Administrative Law Judge David P. Shaw of the U.S. International Trade Commission (ITC) issued the ITC’s first early Initial Determination of patent-ineligibility under 35 U.S.C. § 101, pursuant to the ITC’s new 100-day program. The ITC’s 100-day program began as "a pilot program to test whether earlier rulings on certain dispositive issues in some section 337 investigations could limit unnecessary litigation, saving time and costs for all parties involved," according to the ITC. WSGR represented Google Inc., BlackBerry Ltd., BlackBerry Corp., Lenovo Group Ltd., Lenovo (United States) Inc., and Motorola Mobility LLC in the matter. Click here for more information.

Patent Office Confirms Validity of Blast Motion Patents

On August 29, 2016, the Patent Office issued a series of decisions confirming the novelty and validity of patents owned by Blast Motion, Inc. Blast Motion is represented by WSGR in a dispute with Zepp Labs, Inc. Blast Motion accused Zepp of infringing five patents related to wireless motion capture sensors and analysis software. Zepp responded by filing petitions for inter partes review (IPR) at the Patent Office against each of the five patents.

Zepp’s attempt to avoid the infringement suit was unsuccessful. The Patent Office denied two of the petitions (relating to U.S. Patent Nos. 8,903,521 and 9,039,527) in their entirety. As to the other three IPR petitions (relating to U.S. Patent Nos. 8,941,723, 8,905,855, and 8,944,928), the Patent Office denied institution as to at least one claim of each patent, freeing Blast Motion to pursue its infringement claims against Zepp with respect to all five patents. In doing so, the Patent Office agreed with Blast Motion that Zepp was unable to show that the prior art disclosed, for example, a motion sensor capable of the novel event detection disclosed in Blast Motion’s patents. In all, the Patent Office denied institution for a majority of the claims challenged across the five patents.

District Court Rules That NuVasive Did Not Infringe Medtronic Patent

On February 17, 2016, the U.S. District Court for the Southern District of California ruled that NuVasive did not infringe Medtronic unit Warsaw Orthopedic’s patent for a trackable body implant used to heal bones, finding that Warsaw asserted claim limitations that NuVasive’s competing product does not meet. U.S. District Judge Cathy Ann Bencivengo granted NuVasive’s motion for summary judgment of noninfringement, ruling that Warsaw relied on contradictory expert testimony. WSGR represented NuVasive in the matter.

Select PTAB Matters

PTAB Confirms Patentability of Paragon’s Claims in Post-Grant Review

On November 14, 2016, Wilson Sonsini Goodrich & Rosati secured a final written decision from the Patent Trial and Appeal Board (PTAB) in a post-grant review (PGR) confirming the patentability of all claims of client Paragon BioTeck’s U.S. Patent No. 8,859,623. This is the first final written decision in a PGR determining that the challenged claims are patentable.

The ’623 patent is directed to ophthalmic preparations of phenylephrine and, in particular, to a method for ensuring that patients receive phenylephrine solutions that are both chirally pure and free of phenylephrine degradation products. Paragon submitted a New Drug Application to the U.S. Food and Drug Administration for these previously grandfathered preparations, which included the claimed method and was approved, leading to an Orange Book listing for the ’623 patent. Altaire Pharmaceuticals had petitioned for PGR of all claims of the ’623 patent, alleging that they are unpatentable as obvious. Click here for more information.

Hulu and Others Persuade PTAB to Nix Media Transfer Patent

On October 11, 2016, the PTAB agreed with Hulu, Netflix, Spotify USA, and Vimeo that all of the claims of one of iMTX Strategic’s patents that cover the transferring of media files are invalid as obvious. WSGR represented Hulu, Netflix, Spotify, and Vimeo in the matter.

TD Ameritrade and E*TRADE Prevail in IPR Proceeding

On June 23, 2016, the PTAB issued a final written decision in an IPR proceeding in favor of TD Ameritrade, Inc., E*TRADE Corp., and Scottrade, Inc. The companies, which are represented by Wilson Sonsini Goodrich & Rosati, are defendants in a dispute with Droplets, Inc. (Droplets) in which Droplets accused the defendants of infringing three patents, including U.S. Patent 8,402,115 (the ’115 patent).

On December 17, 2014, WSGR initiated an IPR proceeding challenging the claims of the ’115 patent on behalf of its clients. The IPR petition identified several grounds of unpatentability, including a priority problem with the ’115 patent that allowed a related international patent application to qualify as prior art. In its decision, the PTAB found all claims of the ’115 patent unpatentable, including many on multiple grounds of invalidity. The ’115 patent had also been previously found not invalid and infringed, following a jury trial in the Eastern District of Texas in which Droplets had brought similar claims of infringement against an unrelated group of defendants but during which the defendants failed to raise the priority problem with the ’115 patent.

Caltech Prevails in IPR Proceedings

On April 21, 2016, the Patent Office issued a final written decision that brought to a close a dispute between California Institute of Technology (Caltech) and Hughes Communications, Inc., Hughes Network Systems LLC, DISH Network Corporation, DISH Network L.L.C., and dishNET Satellite Broadband L.L.C. (collectively, Hughes) involving six IPR proceedings. Caltech, represented by WSGR, successfully beat back patent challenges in all six IPRs at the Patent Office. The proceedings represented challenges to four Caltech patents in a battle related to error correction codes for data transmissions, including digital satellite communications. The PTAB substantially rejected the challenges, freeing Caltech to enforce its rights to its seminal inventions in district court.

At issue were four related Caltech patents: U.S Patent No. 7,116,710, No. 7,421,032, No. 7,961,781, and No. 8,284,833. In reaching its earlier decisions on whether to grant Hughes’ petitions and institute inter partes review, the PTAB rejected five out of the six petitions in their entirety. The sixth petition was instituted as to just two of twelve challenged claims. In its preliminary responses, Caltech pointed out a number of deficiencies in Hughes’ petitions. The PTAB decisions were based on many of the same deficiencies, including failure by Hughes to prove one of its main prior art references qualified as a printed publication, failure to support arguments regarding the content of the prior art and alleged lack of written description in the specification with adequate expert testimony, and numerous substantive issues with the underlying prior art analysis. In all, the PTAB denied institution as to 35 of the 37 challenged claims, including rejection of all challenges to claims asserted in the district court litigation.

Select Awards & Rankings

WSGR Recognized as a Top PTAB Law Firm

Wilson Sonsini Goodrich & Rosati was recognized by Managing Intellectual Property as one of the nation’s most active law firms at the PTAB in 2016. WSGR is ranked No. 5 for filing 79 PTAB petitions overall, No. 7 for filing 55 PTAB petitions for petitioners, and No. 17 for filing 25 PTAB petitions for respondents in 2016. Individual WSGR attorneys also were recognized in the article for filing the most petitions for both petitioners and respondents in 2016. (Managing Intellectual Property, February 2017)

In addition, WSGR ranked No. 8 in Docket Navigator’s list of the top law firms and corporate legal departments that represented litigants in 2016 inter partes review (IPR), covered business method (CBM), or post-grant review (PGR) proceedings at the PTAB. (Docket Navigator, February 2017)

Trademark Practice Included in 2016 WTR 1000 Rankings

Wilson Sonsini Goodrich & Rosati was recognized in the seventh edition of the WTR 1000, World Trademark Review’s annual ranking of the trademark industry’s leading law firms and professionals in 72 jurisdictions around the world. WSGR was recognized for trademark enforcement and litigation, and for trademark prosecution and strategy. (World Trademark Review, January 2016)

WSGR Ranked in Corporate Counsel’s 2016 Patent Litigation Survey

WSGR was ranked No. 19 overall in Corporate Counsel’s annual patent litigation survey, which ranked law firms by the number of patent lawsuits for which they were listed as counsel in 2015. In addition, the firm was ranked No. 25 as counsel to plaintiffs and was ranked No. 14 as counsel to defendants. (Corporate Counsel, June 2016)

WSGR Named as Silicon Valley Go-To Law Firm

Wilson Sonsini Goodrich & Rosati was recognized as the "best firm for patenting a company’s algorithm or application" in an Above the Law article highlighting the "white sandal" law firms of Silicon Valley. According to Above the Law, the firm’s attorneys are "well positioned to advise new and emerging companies on the most recent developments in intellectual property law, particularly in the technology and life sciences sectors." (Above the Law, May 2016)

Firm Ranked Among Largest IP Law Firms in Silicon Valley and Austin Regions

WSGR ranked No. 2 on the Silicon Valley Business Journal’s 2016 list of Silicon Valley’s largest intellectual property law firms as ranked by the number of local IP lawyers. (Silicon Valley Business Journal, March 2016)

In addition, the firm was ranked No. 8 by the Austin Business Journal in the publication’s annual list of the largest IP law firms in Austin based on the number of patent attorneys in the area. (Austin Business Journal, June 2016)

Thought Leadership

WSGR Publishes PTAB and Patent Litigation Year in Review Reports


In 2016, the firm published its 2016 Patent Litigation Year in Review, which examines key developments in patent litigation from the past year. These include decisions addressing patent-eligibility under 35 U.S.C. § 101, the evolution of International Trade Commission (ITC) practice, awards of attorneys' fees following the U.S. Supreme Court’s landmark decision in Octane Fitness, and the effects of 2016 jurisprudence on the doctrine of patent exhaustion, willful infringement, and damages in design patent litigation. In addition, the publication discusses potentially impactful cases currently up for review by the Supreme Court.

DOWNLOAD NOW

The firm also published its 2016 PTAB Year in Review, which examines the most meaningful developments from the past year at the Patent Trial and Appeal Board (PTAB). Among other topics, the report summarizes significant administrative developments at the PTAB and analyzes the dramatic increase in the number of PTAB cases that the U.S. Court of Appeals for the Federal Circuit—the PTAB’s reviewing court—hears each year.

DOWNLOAD NOW

Firm Publishes Four Editions of The PTAB Review

In April 2016, WSGR published the inaugural issue of The PTAB Review, a newsletter prepared by attorneys in the firm's post-grant practice. The publication—which is published on a periodic basis as important issues arise—closely follows recent developments in PTAB litigation. It aims to provide timely information on key developments in Patent Office litigation, concise summaries of significant rulings and guidelines, and details on relevant patent dispute trends. Subsequent issues explored various topics, including trends in post-grant review proceedings, details on recent decisions from the U.S. Court of Appeals for the Federal Circuit, and problems associated with evolving theories of unpatentability during a PTAB proceeding.