Intellectual Property Winner


For big-ticket IP litigation, the copyright infringement fight Quinn Emanuel Urquhart Oliver & Hedges took on for client Mattel, Inc., and its Barbie brand is hard to top. The $100 million damages award that partners John Quinn, William Price, and Michael Zeller won at trial against Mattel rival MGA Entertainment, Inc., in August 2008 grabbed headlines (though probably not as many as it would have if they had gotten the nearly $2 billion they sought), but Quinn Emanuel IP litigation chair Claude Stern prefers to tout something else. To Stern, helping Mattel seize control of the Bratz copyrights, design, and name is the kind of “practical lawyering” the firm’s IP lawyers pride themselves on delivering to clients. “Mattel/Bratz is the new road map for what can happen, if you make a misappropriation,” he says. (The road map may be revised: At press time the U.S. Court of Appeals for the Ninth Circuit stayed all equitable relief Mattel had won and told the parties to try to settle the case via mediation. Munger Tolles & Olson represented Mattel on the appeal.)


The Barbie win is just one reason Quinn Emanuel was able to rise above the competition in this year’s IP Litigation Department of the Year contest. Yes, the other finalists boasted solid results in big cases for major clients. But none posted as many huge victories. The wins ranged across venues–from the International Trade Commission to the U.S. Court of Appeals for the Federal Circuit, from the Eastern District of Texas to the Northern District of California–and subject matter–from cell phone and drug patents to football trademarks and, of course, doll copyrights. On top of all that, no other firm enjoyed so many wins from so many different partners.


Take the casino gaming industry case in which partners Charles Verhoeven and Amy Candido earned a major win for client Bally Gaming, Inc., in its patent battle with International Game Technology. The litigation began in 2004, after Bally introduced a bonus wheel–slot machine that IGT claimed infringed patents related to its Wheel of Fortune game–the industry’s most popular machine for 13 straight years. Dubbed “the Microsoft of the gaming industry” by the trade press, IGT dominates the slot machine market, especially for devices like the Wheel of Fortune game that have a bonus wheel. That dominance took a hit in October 2008, when Bally won summary judgment on invalidity or noninfringement on six of the patents at issue. In October 2009 the Federal Circuit affirmed that decision per curiam.


Now, after bringing antitrust counterclaims in response to IGT’s suit, Bally is in the plaintiff’s seat. Its claims that IGT asserted invalid patents to thwart competition got a boost when Quinn found documents filed in a separate whistle-blower suit between IGT and an ex-employee. “If we are asked to do so by the client,” Stern says, “we are able to be extremely aggressive on the plaintiff side.” (The antitrust case is pending in federal district court in Nevada.)


A team led by partner Harold Barza tapped that aggression for Seiko Epson Corporation in its bid to keep rivals from importing ink cartridges that infringe its patents. A 2007 trial ended with the ITC issuing an exclusion order that barred more than 1,000 infringing cartridge models from the United States. Some importers appealed the order, but the Federal Circuit affirmed it in January 2009, and the U.S. Supreme Court denied the importers’ cert petition in June. When the exclusion order failed to stop the flow of infringing cartridges into the country, Quinn brought an enforcement proceeding at the ITC on Epson’s behalf. After a three-day trial last January, an ITC administrative law judge recommended that the agency impose a $20.5 million penalty against Epson rival NineStar Technology Co. Ltd. of China. (The full ITC later dropped the fine to $11.1 million.)


Meanwhile, playing defense at the ITC in February 2008, Verhoeven and company, working with cocounsel Alston & Bird, helped cellular handset maker Nokia Corporation beat back an enforcement action brought by cellular chip maker Qualcomm Incorporated. The ITC win was part of a multinational patent licensing battle between the two companies over cellular technology for which Quinn served as Nokia’s worldwide coordinating counsel. With the companies reaching a confidential settlement on the eve of trial in July 2008, and since both saw their stock prices rise after the settlement was announced, it’s hard to say who got the best of the deal. One way to judge Quinn’s work on the matter: Qualcomm has since hired the firm to handle other IP matters.


In California, Quinn helped Roche Molecular Systems, Inc., repel a Stanford University patent challenge to Roche’s HIV tests. Partner Brian Cannon handled the case for Roche alongside former partner Adrian Pruetz, who later left Quinn to start her own litigation boutique. After Stanford filed suit in 2005 asserting three patents, San Francisco federal district court judge Marilyn Patel ruled on summary judgment in May 2008 that its claims were invalid because of obviousness. In September the Federal Circuit ruled that Stanford couldn’t establish ownership of the patents at issue, meaning that it didn’t have standing to sue in the first place.


In another case closely watched by the patent bar, the Federal Circuit granted Quinn a writ of mandamus that allowed its client Genentech Inc., a Roche subsidiary, and codefendant Biogen Idec Inc. to transfer a case brought by Sanofi-Aventis Deutschland GMBH out of the plaintiff-friendly Eastern District of Texas. Quinn sought the writ after federal district court judge Ron Clark denied Genentech’s motion to transfer. The Federal Circuit found in May 2009 that “the district court improperly used its central location as a consideration” and granted a transfer to the Northern District of California—only the second such transfer granted out of the Eastern District. “The key to that victory is that [the Quinn lawyers] were persistent in face of insurmountable odds,” says Genentech’s vice president of intellectual property Gary Loeb (an ex-Quinn associate). Adds Verhoeven: “That’s one decision I’ve been involved with that any patent lawyer worth their salt has read.” Indeed, one rival finalist in this competition referred to the current Eastern District of Texas litigation climate as “the post-Genentech world.” (The underlying case was still pending in California’s Northern District at press time.)


“Winning cases is important,” Stern says. “I don’t want to suggest otherwise.” Still, he views those wins in grander terms: “We change the game for everybody.”


–Ross Todd






Practice Group Size


Partners: 86


Associates: 125


Counsel: 13


Practice Group (as Percent of Firm)


59%


Estimated Percent (of Firm Revenue 2009)


37%


On the Docket


Quinn is representing Google in a trio of patent infringement suits set for trial in the Eastern District of Texas over the next few months. All three suits challenge the technology that underlies the search giant’s Adwords advertising program.