Womble Bond Dickinson’s US IP Litigation team helps clients protect and defend their important business interests. We represent companies in asserting claims against infringers and also in defending against claims of infringement. Our broad litigation experience includes assertions of patent infringement, copyright infringement, trademark infringement, misappropriation of trade secrets, and related antitrust or unfair competition claims.
Our IP Litigation team is comprised of more than 40 attorneys who have a full-time IP litigation practice. This litigation team is situated within Womble’s broad-based Intellectual Property practice, which includes nearly 120 attorneys and 10 patent agents and technical advisors. Our professionals have deep experience in the electrical, chemical, pharmaceutical, computer software, mechanical and electromechanical arts. More than 100 are USPTO registered practitioners (including attorneys and agents).
Our attorneys handle complex intellectual property cases in state and federal courts throughout the country. From 2014-2019, Womble attorneys have handled over 400 intellectual property cases in 45 federal district courts. Our team is comprised of trial-tested litigators, including many with first chair experience in high profile cases. We have handled multiple appeals before the U.S. Court of Appeals for the Federal Circuit, other state and federal appellate courts, and the Supreme Court of the United States. Our attorneys also have litigated before administrative agencies, including the U.S. Patent and Trademark Office (USPTO) and the U.S. International Trade Commission (ITC).
Patent Litigation in Federal Courts
We regularly represent clients in patent litigation proceedings in federal courts throughout the United States. Our practice includes a strong IP litigation team in Wilmington, Delaware, one of the nation’s busiest patent litigation venues.
Our patent litigation attorneys have a track record of success. Recently, we earned a major victory for a global pharmaceutical company in the first remote Zoom trial in the Southern District of New York due to the coronavirus pandemic.
Womble’s patent litigation practice is complemented by a deep bench of patent prosecution attorneys and agents. Our team includes former patent examiners with the USPTO and a former Judge of the Board of Patent Appeals and Interferences (BPAI), the PTAB’s predecessor tribunal. Many of our patent professionals were practicing scientists or engineers, and many have advanced degrees, including 25 with Ph.D. degrees. Having a broad-based team with backgrounds in science and engineering gives Womble an invaluable understanding of the IP issues our clients face in litigation.
Womble Bond Dickinson is a leader in PTAB trials and post-grant proceedings before the USPTO’s PTAB with decades of experience in this practice area. Recent wins include a precedent-setting decision by the Patent Trial and Appeal Board’s Precedential Opinion Panel for an energy sector client.
Our PTAB Trials team includes a nationally recognized veteran of PTAB practice, with over 23 years of experience before the PTAB and the BPAI. Our court-tested IP litigators and veteran patent prosecutors have been involved in over 130 recent Inter Partes Reviews, Post Grant Reviews, Covered Business Method Reviews, and Derivation proceedings before the PTAB, as well as dozens of patent interference proceedings and ex parte reexaminations. In addition, we regularly handle ex parte appeals to the PTAB, as well as appeals of Board decisions to the U.S. Court of Appeals for the Federal Circuit.
Trademark, Copyright, Trade Secret and other Technology Disputes in State and Federal Court
Our IP Litigation Team protects our clients’ important IP assets and brand positioning in the marketplace by resolving trademark, copyright, trade secrets, false advertising, and unfair competition disputes in federal and state courts. Our IP litigators are adept at pivoting among patent, trademark, copyright and trade secret claims to aid our clients in selecting the best legal doctrines to protect their technologies and commercial interests. Between 2014 and 2019, Womble teams have litigated more than 280 trademark cases, 85 trade secrets cases, and 70 copyright cases in federal courts.
We regularly prosecute and defend oppositions, cancellations, and appeals before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office. We also prosecute and defend domain name proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) and other ICANN sanctioned domain name dispute resolution policies.
We initiate and defend false advertising and deceptive trade practice actions before federal and state agencies including the Federal Trade Commission and the National Advertising Division of the Better Business Bureau.
Notable IP Litigation Wins
John Morrow, Minnie Kim Successfully Represent Nexus Technologies in Patent Inventorship Trial
On March 15, 2021, a jury returned a verdict in favor of Womble Bond Dickinson clients Nexus Technologies, Inc., Daniel Conti and Benjamin Bomer (collectively Nexus) in a patent inventorship dispute in the Western District of North Carolina. Pursuant to the complaint, Nexus alleged that Defendants Unlimited Power, Ltd. and Christopher Petrella deceived Nexus into divulging technical information regarding the design, functionality and operation of a portable renewable energy power system (“PREPS”), and thereafter used such information to file four separate patent applications naming Mr. Petrella as the sole inventor. Nexus further alleged that after doing so, the defendants wrongfully transferred the patent applications to an affiliated company, Ravensafe, Inc., that is owned by Unlimited Power’s majority shareholder, Arthur Maxwell, and that Ravensafe thereafter improperly sued Nexus for patent infringement after the patents had issued.
Ferring Pharmaceuticals Patent Victory in First Zoom Trial in S.D.N.Y.
Womble Bond Dickinson earned a major victory for Ferring Pharmaceuticals Inc. in a decades-long battle over patents directed to inventions related to the peptide desmopressin, successfully invalidating patents that allegedly covered methods of treatment using the peptide desmopressin. The case was filed as declaratory judgment action and involved numerous experts and witnesses, and a six-day preliminary injunction hearing (which Womble won for Ferring). After access to the Court was restricted due to the coronavirus pandemic, the Court ordered the parties to proceed and Womble took the lead in developing procedures to conduct the trial remotely, leading to the first trial in the Southern District of New York during the pandemic. The 9-day trial in July 2020 was fully remote, with witnesses and counsel appearing via Zoom. The Court issued an opinion in August 2020 finding for Ferring and holding Serenity’s patents invalid for improper inventorship, lack of written description, and lack of enablement.
Precedential Opinion Panel Victory for DynaEnergetics
Womble Bond Dickinson and client DynaEnergetics Europe GmbH earned a complete victory in a closely watched precedent-setting proceeding by the PTAB’s Precedential Opinion Panel (POP). The Womble team represented DynaEnergetics in the POP review, which concerned the scope of the PTAB’s authority to consider arguments that were not advanced by the petitioner in opposing a motion to amend in inter partes review proceedings. On July 6, 2020, the POP ruled that the PTAB panel had overstepped its authority in this case by considering invalidity arguments not advanced by Hunting Titan Inc. in a patent validity dispute between the two energy industry companies.
Patent Antitrust Win in Appeals Court for Graphic Packaging International
A Womble Bond Dickinson team earned a landmark appeals court victory for Graphic Packaging International LLC against rival company Inline Packaging in July 2020. The dispute centered around Inline Packaging’s challenge to a patent for sleeves used when heating microwavable foods to give them a crisp texture. A Minnesota federal judge dismissed Inline Packaging’s antitrust lawsuit at summary judgment in 2018, finding no evidence of patent fraud. The Eighth Circuit agreed with the lower court and declined to have the original panel or a full bench rehear the matter.
AI-Related Patent Infringement Win for Nuance Communications
A federal court ruling in C.D. Cal. handed Womble Bond Dickinson client Nuance Communications, Inc. a complete victory against plaintiff Eloqui Voice Systems, LLC in a patent infringement case that accused Nuance’s Nina Virtual Assistant Platform (analogous to Alexa, Siri, and Google Assistant) of infringing three patents. The Court rejected Eloqui’s arguments, excluded testimony of both of Eloqui’s technical experts under Daubert, and granted summary judgment of noninfringement on all claims. The ruling caps a more than three-year battle with non-practicing entity Eloqui.
Byton N.A. Earns Victory in Federal Patent Infringement Case
Womble Bond Dickinson client Byton N.A. won an important litigation victory in the Northern District of California against a rival start-up electric car manufacturer. Thunder Power Energy alleged that Byton had infringed patents relating to vehicle user interface displays, moving for a preliminary injunction shortly after filing the lawsuit. In response, Byton filed a motion to dismiss, arguing that Thunder’s patents are invalid under 35 USC § 101 because they are directed to un-patentable abstract ideas. The Court agreed with Byton, granting the company’s motion to dismiss and denying Thunder’s preliminary injunction motion as moot. The ruling was affirmed in total by the Federal Circuit.