In 2010, when three grifters claiming links to the famed Guggenheim family began soliciting money for bogus investment schemes involving diamonds and Iraqi oil deals from wealthy investors including former President George H.W. Bush, Guggenheim Capital turned to its long-time lawyers at McDermott Will & Emery for help. McDermott’s John Dabney began a detailed investigation, and last year filed a trademark and civil RICO case against the trio. In July, Guggenheim was awarded $1.25 million in damages for trademark counterfeiting, plus attorney fees. McDermott also took evidence to the U.S. attorney’s office for the Southern District of New York, which filed criminal charges.
“Having people knock off the name was very upsetting not just on a business level but on an emotional level to Guggenheim Capital,” said Sarah Chapin Columbia, head of the firm’s IP group, which includes about 190 lawyers.
That was just one in a string of recent successes for the Chicago-based firm’s IP group. A team including partners David Dolkas, Terrence McMahon and Margaret Duncan helped communications firm Extreme Networks Inc. beat back a patent infringement suit brought by rival Enterasys Networks Inc. in federal court in Wisconsin. There a jury found no infringement by Extreme on any of a dozen patents in the case.
Successes don’t always come at trial. Partners Joel Freed, Daniel Alberti and McMahon helped flash-memory chip maker Spansion LLC settle a wide-ranging patent dispute with South Korean giant Samsung Electronics. Samsung agreed to pay Spansion $150 million over five years, and the deal cleared the way for Spansion to expand licensing of flash-memory patents.
McDermott brought in a number of new faces in recent months in an effort to bolster the group. That included IP litigator Bhanu Sadasivan from Covington & Burling and partner Fabio Marino and three others from Orrick, Herrington & Sutcliffe in March.
“Unlike a lot of our competitors, we are not a one-trial-lawyer firm,” said Columbia. “We do multiple trials and have multiple first-chair trial lawyers, and that’s important to our clients.” Looking forward, Columbia said the America Invents Act will be a mixed blessing for IP lawyers. The law is likely to bring IP lawyers more work in life sciences while potentially slashing litigation work defending technology companies from patent trolls — companies that buy up patents seeking licensing revenue from companies that make use of the technology. “There may be fewer of these cases and the economics may change,” she said.
— Jason McLure