Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Say there are 200 or so patent cases being litigated in the U.S. District Court for the District of Delaware at any given time. With any one of these cases, it’s even money that the IP lawyers at Wilmington’s Morris, Nichols, Arsht & Tunnell, founded in 1931, are involved, either as local counsel, as lead counsel, or as co-counsel. What makes this statistic even more remarkable is that, out of 90 firm lawyers, only “15 or 16 attorneys [are] engaged in patent litigation most of the time,” says Don Parsons, a senior member of the firm’s IP litigation group. Morris Nichols doesn’t prosecute patents — its IP lawyers are instead a mix of general commercial litigators and patent specialists. “We have seven or eight people who are admitted to practice in the [U.S. Patent and Trademark Office],” says partner Jack Blumenfeld. Along with Parsons, Mary Graham, and Don Whitney, Blumenfeld is one of the firm’s marquee names in patent trial work. Morris Nichols was responsible for filing or defending 38 patent cases last year, placing third in IP Worldwide‘s survey of firms with the most active patent litigation practices. Morris Nichols tied for second among firms filing cases, and tied for eighth in defending patent cases. The firm is lead counsel in about a third of the cases. Among corporate law circles, Morris Nichols is best known as local counsel in big-business suits. But it has been trying patent cases for 70 years. Founder Hugh Morris was a patent litigator. Morris Nichols’s more recent emergence as a patent litigation machine has much to do with Delaware’s prominence in business matters. About 15 years ago the firm decided to emphasize patent trials, selling its knowledge of the state’s idiosyncratic state and federal courts. Morris Nichols lawyers were among the principal drafters of the state’s pro-business business law. More than half of the Fortune 500 companies are incorporated in the state. And Delaware’s Court of Chancery, an equity court devoted almost entirely to corporate lawsuits, is legendary for its expertise in securities, particularly in M&A litigation. The court also hears trade secret and unfair competition cases. Lawyers refer to the expertise required to navigate through the courts as the “Delaware difference.” Patent cases, of course, are filed in federal district court in Delaware. The court has many of the same virtues of the chancery court. The four federal district court judges each have extensive experience in handling patent cases. And according to partner Graham, “every single one of those judges has 40 or 50 cases at a time.” In addition, she says, the Delaware district court judges are “not distracted by many criminal cases” — unlike their counterparts in, say, the Northern District of California or in the U.S. district courts in New York. Further, Graham says that Morris Nichols lawyers have an advantage over out-of-towners: “Every judge has [his or her] own approach to cases, so you can adjust to that.” Plus, she says, “we’re really a lot less formal — if you want to pick up the phone and talk to a judge about a discovery dispute, you can do that.” Though more out-of-state firms — including Boston-based Fish & Richardson, an IP specialist — have opened Wilmington offices in the last decade or so, the Morris Nichols lawyers feel no heat. “A lot of the other firms have been [opening offices] for the bankruptcy practice,” says Blumenfeld. And with a solid corporate client roster, it’s no wonder that Morris Nichols IP lawyers are breathing easy. They’ve been lead patent counsel in cases for Data General Corporation, The Dow Chemical Company, Sony Corporation of America, and Merck & Co., Inc. Graham, who has handled several Merck cases, says that if a company is planning to litigate a patent case in Delaware, it is likely at least to consider Morris Nichols as local counsel if not lead counsel. Parsons says the firm’s reach is growing. “We’ve had patent cases that we’ve tried as lead counsel in Delaware,” he says, “but we’ve also been lead counsel in cases in the Eastern District of Pennsylvania, the District of New Jersey, and in New York and Boston.” Which means that courts outside of the state are increasingly getting their own taste of the Delaware difference.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.