A lot of law firms have spoken out against so-called patent trolls, those much-maligned nonpracticing entities (NPEs). Orrick, Herrington & Sutcliffe doesn’t just talk the talk. On behalf of client EMC Corp., the firm led efforts to stop the tactics that many NPEs use to induce settlements.
After an NPE called Oasis Research Corp. accused EMC and 17 other companies of patent infringement, Orrick used the case as a vehicle to address some of the procedural aspects of patent litigation that handicap defendants. In particular, Orrick appellate star Mark Davies argued that plaintiffs shouldn’t be allowed to name unrelated defendants in a single complaint, forcing them to coordinate their defenses and schedules. The U.S. Court of Appeals for the Federal Circuit largely agreed with Orrick’s arguments in an oft-cited May 2012 decision that allowed EMC to sever the claims against it.
Later, when the Oasis case neared trial, Orrick unearthed evidence that the individual listed on the patent as the inventor hadn’t credited a coinventor during the application process. After hearing Orrick’s evidence, a federal jury in Sherman, Texas, returned a verdict in March 2013 that the inventorship slight rendered the patents invalid.Orrick also deftly handled major IP disputes between competitors. Dow AgroSciences LLC hired Orrick to defend it against two patent infringement lawsuits brought by rival Bayer CropScience AG over its technology to make crops resistant to herbicide. A judge dismissed one of Bayer’s patent infringement cases in September 2012, siding with arguments raised by Orrick partner Peter Bicks. (The same judge dismissed Bayer’s other case against Dow in October.)
SIGNATURE WIN: DISH Network Corporation turned to Orrick to defend it against a legal challenge to a marquee new product. Broadcasters like CBS Corporation alleged that DISH’s AutoHop feature, which allows users to skip television commercials, constituted copyright infringement. Siding with Bicks and partner Annette Hurst, a federal judge in Los Angeles refused to issue a preliminary order shutting down the service. The U.S. Court of Appeals for the Ninth Circuit affirmed in July 2013.
MAKING LAW: Orrick partner E. Joshua Rosenkranz delivered the winning argument in Kirtsaeng v. John Wiley & Sons Inc., an influential U.S. Supreme Court decision. The 2013 case involved the scope of the “first sale” doctrine of copyright law, which holds that a purchaser of a copyrighted work like books can resell the work without the permission of the original copyright owner. Siding with Rosenkranz, the court ruled that the doctrine applies to works manufactured and sold outside the United States.
FROM THE CLIENT: “They very much understand the abuses that NPEs, or patent trolls, are putting companies through,” says Krish Gupta, senior vice president and deputy general counsel of EMC.
ON THE DOCKET: An Orrick team is defending Ricoh Company Ltd. in a patent case in Delaware brought by the patent licensing firm Intellectual Ventures. •
Practice Group Size and Revenue
Partners: 44 Associates: 64 Other: 9
Practice Group as Percent of Firm:10%
Percent of Firm Revenue 2012:12%