District of Columbia - Jurisdiction Review

Weil Gotshal & Manges

Firm overview

Weil offers a comprehensive, national IP practice, comprising Patent Litigation, Technology and IP Transactions, IP/Media (which encompasses trademark, copyright, music licensing, privacy, and false advertising matters), and our cross-disciplinary IP Counseling Practice.

Weil’s national Patent Litigation practice offers strong platforms in Silicon Valley, New York, and Washington, DC, with more than 30 practitioners nationally. We have earned a reputation as a go-to firm for high stakes patent litigation in all of the major venues, including in federal district courts, at the United States International Trade Commission, on appeal at the Federal Circuit, or before the Patent Office. Our patent litigators regularly handle matters where the rulings are game-changing and where the law, facts, and technology are complex. In many instances, these cases often have far-reaching impacts across entire industries. Importantly, many of our attorneys have degrees in chemistry, biology, computer science, electrical engineering, mechanical engineering, and physics. These technical and scientific backgrounds allow us to identify critical issues and quickly understand the technology at the forefront of a case. With the majority of our team licensed to practice before the U.S. Patent Office, our team has unique strategic advantages in being able to navigate the interplay of district court cases and IPR/post-grant proceedings. Indeed, our lawyers are leaders in inter partes review and covered business method review proceedings, having handled more than 300 of them since 2012.

Our Technology and IP Transactions group comprises 33 lawyers in New York, Silicon Valley and London who spend 100% of their time on technology and intellectual property transactions—a distinguishing feature of Weil—bringing deep expertise to client matters. We represent our clients in all stages of development, from start-ups to Fortune 50, across a broad range of industries. We are well known for our cutting-edge work across all forms of stand-alone technology and intellectual property transactions such as patent acquisitions, licensing agreements, joint ventures, strategic alliances, research and development collaborations, internet/e-commerce arrangements and other types of cross-border technology transactions.

Our IP/Media practice, which boasts nearly two dozen lawyers with IP expertise and courtroom experience, has a leading reputation for success dealing with and litigating cutting-edge IP issues. Leading social media platforms, digital music streaming companies, major media and entertainment companies, global e-commerce platforms and international financial services companies regularly turn to Weil’s IP/Media practice to manage: cutting-edge secondary liability issues; DMCA safe harbors and compliance requirements; music licensing; trademark and copyright licensing requirements; trademark strategy, enforcement and litigation; IP matters arising in the transactional context; false advertising claims; development of terms of service, fair use and assessment of infringement risks (both direct and secondary); and strategies associated with the clients’ service offerings and product development initiatives. Weil also has the nation’s pre-eminent service-side music copyright practice, and has litigated more than a dozen royalty rate-setting proceedings—far more than any other law firm. We work closely with our broad base of clients to coordinate these issues on a global basis, and over the last several decades, our lawyers have participated in many of the most significant trademark and copyright cases.

Weil’s clients benefit from our deep bench of leading practitioners with the full spectrum of IP capabilities. Clients of the group include: AbbVie; AIG; Alibaba; BASF; BBC Studios; Bio-Rad; Brookfield; CareDx; CBS; Comcast; eBay; Eli Lilly; Getty Images; General Electric; GLOBALFOUNDRIES Inc.; Houghton Mifflin Harcourt; HP, Inc.; Illumina; Intel; Johnson & Johnson; Kroger; Lenovo Group; Meta Platforms; Nuance Communications; Oracle; Pacific Biosciences; Palo Alto Networks; Pandora Media; Regeneron Pharmaceuticals; S&P Global; Samsung; Sanofi; SiriusXM; and Tesla; among others.

Husch Blackwell

Firm overview

Husch Blackwell helps clients develop and preserve their intellectual property to maximize profits and secure a competitive edge. Our team has more than 100 intellectual property attorneys with tremendous experience in IP acquisition, maintenance, protection, enforcement, litigation, and commercialization. We partner with universities, research facilities, companies of all sizes, and individuals to turn their innovations into industry.

Our IP attorneys understand complex technologies, and they have prepared and prosecuted thousands of patents and trademarks across a wide range of industries. To accommodate clients’ need for global enforcement and protection, our team has assembled an international network of more than 300 associate firms in 120 countries. A Husch Blackwell attorney has worked directly and personally with every law firm in the network.

Finnegan Henderson Farabow Garrett & Dunner

Firm overview

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the world’s largest full-service IP firms. With offices in the United States, Asia and Europe, the firm practices European, German, UK, and U.S. IP law. In addition to services related to all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation, Finnegan provides counseling and litigation services in advertising, privacy, and a wide spectrum of additional IP-adjacent commercial matters, including trade secrets, international trade, the Internet, e-commerce, government contracts, antitrust, and unfair competition. A comprehensive approach to clients’ IP needs and Finnegan’s mega-boutique size underpins its year-to-year, decade-to-decade preeminence in IP litigation across all industries and tribunals.

Finnegan offers full-service IP legal and technical experience in virtually every industry and technology: biotechnology, pharmaceuticals, biologics and biosimilars, combination products, chemicals, electronics, semiconductors, computers and software, FinTech, blockchain, Internet of Things (IoT), automotive, aerospace and aviation, industrial manufacturing, consumer products, food and beverage, outdoor recreation, sports and fitness, digital health, medical devices, clean energy and renewables, robotics, textiles, artificial intelligence (AI) and machine learning (ML), and 3D printing.

With Finnegan’s practice centered on intellectual property, the firm is able to create economies of scale and focus all resources on providing the best tools and teams for clients. The firm’s team is comprised of over 250 litigators, including career trial attorneys. Over 300 of Finnegan’s legal professionals hold degrees in scientific disciplines (60+ hold PhDs). Over 225 professionals are registered to practise before the US Patent and Trademark Office (USPTO), European Patent Office (EPO), the German Patent and Trade Mark Office (DPMA), the UK Intellectual Property Office (UKIPO), and the European Union Intellectual Property Office (EUIPO). With more than 55 years’ IP experience, Finnegan handles hundreds of cases and proceedings across IP-related venues, including district courts, the US International Trade Commission (ITC), the USPTO’s Patent Trial and Appeal Board (PTAB), US Court of Appeals for the Federal Circuit and the US Supreme Court. As one of the first firms to file a petition and subsequently argue a post-grant review of a covered business method case following the implementation of the America Invents Act, Finnegan is one of the busiest law firms representing petitioners and patent owners in post-grant review proceedings. The firm files approximately 2,500 US and 1,000 foreign patent applications annually.

Surveys conducted by legal and business publications consistently rank Finnegan as one of the leading IP law practices in the world. The firm is ranked in the United States for contentious and prosecution patent and trademark work by publications including Managing Intellectual Property and The Legal 500, which have ranked Finnegan as a top-tier firm in nearly every significant IP category for over 10 years. The publications cite the firm’s winning record, technical expertise and deep bench of talent in all aspects of IP litigation, including trials, appeals and proceedings at the USPTO and ITC investigations.

Representative engagements:

Represented Maglula Ltd. in a one-of-a-kind district court litigation including patent, trademark, and copyright claims over Maglula’s assertions that Amazon sold counterfeit consumer products. After the court issued an order denying Amazon’s motion for summary judgment, the parties entered into an agreement and the case was dismissed.
Achieved a complete win for AstraZeneca in a Hatch-Waxman litigation involving patents protecting FARXIGA®, one of AstraZeneca’s billion-dollar-a-year drugs used for the treatment of diabetes.
Achieved a clean sweep victory for client Playtika, invalidating all five of its adversary’s gaming patents in district court litigation. The victory included challenging the asserted patents in IPR proceedings before the PTAB.
Represented BMW of North America, LLC and Bayerische Motoren Werke AG (collectively, “BMW”) before the ITC, which, in a final determination, terminated an investigation brought on by a semiconductor patent holder attempting to ban the importation and sale of several hybrid and electric BMW vehicles into the United States.
Handles high volume U.S. patent and trademark prosecution, global IP portfolio development and management, brand protection, and counseling to protect e-commerce giant Coupang’s global IP interests.

Barnes & Thornburg

Firm overview

Barnes & Thornburg’s Intellectual Property practice is among the largest in the country, with nearly 130 IP attorneys and professionals and 75 registered patent attorneys and agents. Our clients know that their intellectual property — inventions, brands and trade secrets — are as valuable as their factories, laboratories and inventories. We believe that intellectual property must be cultivated and nourished to grow as an asset and without the right care, it will wither.

Our team works diligently to help clients succeed in overseeing and protecting their valuable IP with employees, customers, partners and competitors, and to avoid infringement of the IP rights of others. We position and leverage our client’s critical IP in industry and specialized markets, and defend patent, trademark and copyright integrity in the judicial system and in agency review and appeals.

We assist product development, marketing, sales and finance teams with comprehensive IP programs and protect products from copying by competitors. We advise on IP holdings valued into the billions of dollars of market share, representing Fortune 500 companies with thousands of IP assets, as well as startup companies defined by a single patent. Our attorneys are committed to client service, cohesive teamwork, responsiveness and useful advice.

From coast to coast, we counsel clients from a variety of industries, such as medical device, plastics and packaging, internet and computer technology, food and beverage, pharmaceutical, automotive and aviation. With decades of experience, we understand that the many types of IP assets drive core business strategy and brand development. Our cost-conscious solutions help clients derive as much value from their intellectual resources as from their human resources.

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