Feature

A Growing IP Practice Stays Ahead of Evolving Client Needs

March 29, 2016

Morgan Lewis’s intellectual property (IP) lawyers succeed because we anticipate and meet our clients’ needs. In response to an evolving legal landscape, we have increased our focus on litigation before the Patent Trademark and Appeal Board (PTAB), including inter partes review proceedings; on our International Trade Commission (ITC) practice; and on high stakes competitor disputes, particularly in the life sciences industry.

“Our goal is to exceed our clients’ expectations and to be the best choice for every type of intellectual property service or dispute,” said IP practice leader Eric Kraeutler. “We are achieving this goal through our commitment to excellence, teamwork, collaboration, and culture.”

This message resonated with Michael Abernathy, a leading patent litigator who recently joined our Chicago office, along with partners Sanjay K. Murthy, Christopher J. Betti, and Amanda Williamson. Our newest colleagues are widely recognized as among the United States’ IP elite. They are accomplished in litigation, PTAB proceedings, IP rights procurement, and portfolio management, and have particularly strong ties to clients in the life sciences and technology industries. (Read our press release to learn more about how our new IP partners enhance our existing services.)

“I was blown away by what [Morgan Lewis] presented and what it meant for our clients and the people working for me and my future,” Michael told the Chicago Law Bulletin about his decision to move his practice to our firm, adding that he was as much impressed by our firm’s strategic approach to the practice as our culture of engagement, teamwork, and collaboration.

BEING THE BEST CHOICE

Morgan Lewis has one of the largest and most diverse IP practices of any full-service law firm in the world. For decades, we have excelled in patent prosecution, patent litigation, IP due diligence, licensing, and full service trademark, copyright, and trade secrets practices. Recent additions have enhanced our capacity to handle life sciences litigation, software copyright infringement litigation, and trademark litigation, all contributing to better service for our clients.

Now with more than 170 lawyers in 14 offices across the United States and internationally, our teams work in close collaboration to offer services that include the following:

  • Litigation at the district court, International Trade Commission, and appellate levels
  • Patent preparation and prosecution
  • Trademark and copyright counseling and portfolio management
  • Post-grant and other administrative proceedings before the US Patent and Trademark Office
  • Licensing, technology transfer, and other transactions
  • IP due diligence and other issues in corporate transactions

More than 50 of our lawyers have advanced scientific and engineering degrees, including more than 35 PhDs, with a particular focus in the life sciences and technology industries. We also work with clients in the financial services, retail, and manufacturing sectors. Read more about our IP services.

Q&A WITH OUR PARTNERS

IP practice head Eric Kraeutler, deputy practice group leader Louis Beardell Jr., and post-grant proceedings working group chief Dion Bregman discuss how we help clients achieve a competitive edge through IP protection—no matter the industry or sector.

What litigation and non-litigation services does Morgan Lewis offer?
We have an incredibly diverse practice; our focus goes beyond procuring patent rights and litigating patent infringement disputes. We have experience and depth in trademark and copyright law, including trademark litigation and copyright litigation, and in particular litigating cases involving copyright protected software. Our service also extends to IP licensing disputes and trade secret law, including criminal and civil remedies.

We are fully integrated with other practices in the firm. For example, our lawyers often conduct IP due diligence and otherwise participate in major transactions, including mergers and acquisitions, licensing, and technology transfer. Our IP lawyers play key roles in structuring transactions involving intellectual property. 

What distinguishes our IP capability on the market?

Between patent reform legislation and significant changes in case law, there are new challenges and opportunities. Clients want to know how best to protect their rights, how best to challenge IP that is asserted against them, and where to go to have disputes decided most efficiently and effectively. We look at intellectual property issues through the lenses of the businesses that own or use the particular IP rights. We are continually thinking about opportunities of businesses to use all forms of IP—patent, trade secrets, trademarks, and copyrights—to establish a competitive advantage. Our full-service platform allows us to assist clients with all aspects of their IP needs.  

We also have a strong group that focuses exclusively on litigating post-grant proceedings before the PTAB under new procedures enacted into law as part of the America Invents Act. We have significant experience litigating patent disputes before the ITC, an alternative dispute forum that has the power to enjoin the importation of infringing goods into the United States. Increasingly, we are focusing on international strategies and dispute forums.

What are competitor lawsuits and why are they important, especially for our life sciences clients?

We have a robust patent litigation practice. While an important part of our practice is defending clients against lawsuits brought by non-practicing entities (sometimes called “patent trolls”), we also excel in competitor disputes, representing plaintiffs and defendants alike.

We are living through a life science and technology innovation explosion, and at the same time, many companies are diversifying into new technologies and product areas. In the medical device area, the lines between information technology and life science often are permeable. The result is that competition in the marketplace frequently involves asserting or challenging intellectual property rights. The pace of innovation is so great—particularly in the life sciences industry—that competitor disputes occur frequently and are of critical importance to our clients.

What is our IP litigation team’s “claim to fame”?
Our IP disputes team includes some of the best jury trial lawyers and trial teams in the United States. In just the last three years, we have won multiple $100 million plus jury verdicts, including a $1.3 billion verdict in a software copyright infringement case. In addition, Law360 recognized Morgan Lewis as one of the busiest patent defense firms in 2015.

What is new in our offering in the PTAB arena?

We have an active post-grant proceedings working group to facilitate greater cross-office and cross-practice training and collaboration between our teams. Our goal is to offer clients the most up-to-date and well-informed approaches to evolving developments at the PTAB. We routinely publish LawFlashes and hold webinars on PTAB related topics, and starting this summer will be releasing a quarterly PTAB newsletter. 

What are some of the most pressing new trends developing on the international stage?
We are increasingly focusing on international protection strategies and cross-border disputes. There are a number of important developments. One of them is the formation of the Unified Patent Court in Europe, likely to be implemented this year, which will be open to participation to all member states of the European Union. We are focused on that development and advising clients on their strategies going forward.

More and more disputes are multifaceted and involve IP rights in multiple countries. We are focused on providing our clients with the best advice in cross-border cases and in the ever-increasing importance of arbitration. We believe our office in Singapore is going to serve as a hub for IP in Asia, as Singapore establishes itself as a venue of choice for international arbitrations for IP disputes. Singapore, with government support, is also becoming an increasingly important site for life sciences innovation as a hub of research and development with more multinationals locating regional headquarters there.

Some general practice law firms don’t do patent prosecution. What about Morgan Lewis?

Not only do we have a large and robust patent prosecution practice, but we are one of the best prosecution practices in the United States. Recently, Juristat ranked Morgan Lewis among the top three patent firms. In fact, Morgan Lewis is the only general practice firm in the Juristat’s Top 15. Juristat’s ranking is based on a dataset of more than seven million patent applications and a weighted average of the total number of applications filed, the allowance rate, the average number of office actions to allowance, the ability to overcome Section 101 rejections, and the average time to allowance.

What’s the path forward?

We continue to grow and succeed because we have great clients, great lawyers, and a fantastic culture. Clients can sense that we like each other and that we work as a team to deliver the best possible result every time we are engaged. We hear time and time again from our clients that our culture results in a great client experience and consistent success at every level.