Contact: Harold McElhinny
Morrison & Foerster offers clients a world-class litigation practice focusing on the protection of patents and other intellectual
property. The firm’s intellectual property litigators have won scores of high-stakes cases involving disputes over key patents
and other intellectual property for clients such as Altera Corp., Chiron Corp., EchoStar, and Yahoo!
Morrison & Foerster’s intellectual property litigation practice is known for its excellent courtroom skills, its ability to
analyze the key issues in a case and develop a novel solution for resolving or winning it, and its depth of experience in
industries such as life sciences and information technology. Most recently, our IP litigation practice was one of three finalists
honored in The American Lawyer’s prestigious 2008 IP Litigation Department of the Year contest.
The firm’s teamwork approach ensures that litigation clients whose cases include scientific or other complex issues will benefit
from the integration of the firm’s patent prosecution practice with its IP litigation practice. The firm’s IP attorneys and
staff bring substantial expertise in fields such as biotechnology, chemical technology, pharmaceuticals, medical devices,
electronics, software, and communications. Clients can rely on the firm’s deep and talented pool of litigators, including
many of the most renowned trial attorneys in the U.S., who are based in all of the firm’s major offices.
Morrison & Foerster is also one of a small number of U.S. law firms with a significant international IP litigation practice.
The firm’s offices in Asia, and particularly in Japan, regularly represent clients such as Fujitsui, Hitachi, and Toshiba
in international patent litigation matters.
The firm also provides clients with counseling in patent, trademark, trade secret, copyright, and unfair competition matters
and assists with intellectual property licensing and other technology transactions. Morrison & Foerster’s clients have included
both U.S. and non-U.S. concerns, including major corporations, new information technology and life sciences ventures, universities
and nonprofit research institutions.
Representative Matters
Nikon Corp. and Nikon Precision Inc. v. ASM Netherlands B.V. and ASM Lithography, Inc.
Morrison & Foerster represented Nikon Corporation in its long-running patent dispute with Dutch chip equipment maker ASML
Holding NV.
Nikon and ASML are the world’s two largest makers of photolithography equipment used in the manufacture of semiconductors.
Before engaging Morrison & Foerster, Nikon filed a complaint in the United States International Trade Commission and in the
United States District Court for the Northern District of California, and completed the trial in the ITC. In the District
Court, ASML countered with its own patent infringement and antitrust claims against Nikon. On January 29, 2003, the Administrative
Law Judge in the ITC ruled against Nikon on all patents at issue. In March 2003, Nikon engaged Morrison & Foerster to assume
responsibility for the District Court proceedings and for coordination of related patent infringement and invalidity proceedings
initiated by both Nikon and ASML in other countries, including Japan and Korea, while Nikon pursued an appeal from the ITC
determination.
In March 2004, the District Court issued claim construction rulings, differing with the ITC on the construction of some key
terms. In May, Nikon filed motions for summary judgment of patent infringement by ASML and noninfringement by Nikon. ASML’s
supplier Carl Zeiss SMT AG intervened in the case to attempt to assist ASML. On September 27, 2004, ASML and Carl Zeiss SMT
AG agreed to pay Nikon $145 million as part of a comprehensive settlement that also included cross-licenses of patents related
to lithography equipment. To Nikon’s knowledge, this is the largest payment to a Japanese company based on patent claims.
Chiron v. Roche Molecular Systems
Morrison & Foerster LLP represented Chiron Corporation in a patent infringement arbitration against Roche Molecular Systems,
Inc. Chiron alleged that certain Roche HIV nucleic acid tests infringed Chiron's patent, U.S. Patent No. 6,531,276, issued
on March 11, 2003, and thus, fell within the parties' license agreement. Roche, in turn, contested the validity and enforceability
of the '276 patent. After the arbitration hearing in June 2004 before a retired federal judge, Roche agreed to settle the
matter stipulating to the validity and enforceability of the patent, allowed by Chiron to retain all funds paid by Roche while
the matter was in dispute, and paying Chiron an additional lump-sum payment of $78 million. Total value of the settlement
was approximately $100 million.
EchoStar Litigation
In what has been called the biggest-ever patent case in the ITC, we successfully represented EchoStar and SCI Systems, Inc.
in an International Trade Commission investigation. Complainants Gemstar-TV Guide International, Inc. and StarSight Telecast,
Inc. claimed that Respondents EchoStar Communications Corporation, SCI Systems, Inc., Scientific-Atlanta, Inc., and Pioneer
imported set-top boxes, or components thereof, that infringed four United States patents. The issues involved the way in
which television scheduling information and programs are delivered to a viewer, manipulated by the viewer, and watched on
a television screen. We won on multiple grounds, including non-infringement, no domestic industry, and as to their main patent,
patent misuse and invalidity for failure to join a co-inventor. Complainants appealed the decision to the United States Court
of Appeal for the Federal Circuit. Gemstar settled all aspects of the case relating to our client’s while the appeal was
pending.
Luciw v. Chang
The firm represented Chiron in this contest over who was the first to invent a diagnostic test for the AIDS virus. The test
is used by blood banks all over the world. The Board of Patent Appeals and Interferences of the United States Patent and
Trademark Office recently issued a 124-page opinion finding that two inventors from Chiron were the true inventors, and that
a group of scientists from the National Institute of Health and Centocor, headed up by Robert Gallo, were not.
Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., Yahoo! Inc., and ESPN/Starwave Partners (dba ESPN Internet Ventures
and EIV Ventures)
We represented Yahoo! in a patent infringement suit filed in the U.S. District Court for the Eastern District of Virginia,
involving a method of and apparatus for playing a “fantasy” football game on a computer. Fantasy Sports filed suit alleging
that the defendants’ computerized fantasy football games infringed its patent. Yahoo! filed a motion for summary judgment
of non-infringement, arguing that its Yahoo! Sports Fantasy Football game does not satisfy the “bonus points” limitation.
The court granted summary judgment that Yahoo!’s product does not infringe the patent as a matter of law. The decision was
affirmed in the U.S. Court of Appeals for the Federal Circuit.
Xilinx, Inc. v. Altera Corp.
The firm represented Altera Corporation in patent litigation with its major competitor in the programmable logic device industry,
Xilinx, Inc. In a District Court action in San Jose, the court granted Judgment as a Matter of Law to Altera following a
six-week jury trial. Xilinx had contended that the patents-in-suit covered the fundamental architecture of Field Programmable
Gate Arrays (FPGAs).
The firm also represented Altera in a trial at the International Trade Commission on a patent infringement complaint brought
by Xilinx. The patents involved the use of user-accessible distributed memory in FPGAs, and a hierarchical structure for
the logic and interconnection resources on an FPGA. Both cases settled before a decision was rendered by the judge in the
ITC action.
