Intellectual Property


Josh Krevitt New York
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Wayne Barsky Century City
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Mark Reiter Dallas
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The Intellectual Property Practice Group's lawyers offer strategic insights and solutions to companies facing complex intellectual property issues.  We understand that such issues must be considered in the context of larger business needs and interests.  We partner with our clients to develop strategies that effectively and efficiently advance and protect their interests.  We have deep capabilities across all categories of IP litigation and transactional matters, including:

  • Patents
  • Trademark
  • Trade dress
  • False advertising
  • Anti-dilution
  • Counterfeiting
  • Copyright
  • Trade secrets
  • Unfair competition

Gibson, Dunn & Crutcher's deep bench of trial lawyers with technical backgrounds, advanced degrees and industry experience provides the necessary insight to develop and defend against sophisticated claims in a wide range of industries and complex technologies.   

Our litigators are recognized throughout the industry as leaders in prosecuting, defending and trying IP claims in federal and state courts, before administrative bodies including the U.S. International Trade Commission (ITC) and U.S. Patent and Trademark Office (USPTO), as well as before arbitration panels.  The Intellectual Property Group, as well as many Gibson Dunn IP litigators, are recognized by top legal publications, including Chambers.  The National Law Journal named Gibson Dunn one of the top U.S. intellectual property practices in its 2016 Intellectual Property Hot List, while Law360 named Gibson Dunn a 2014 Practice Group of the Year in the Intellectual Property category.  Our IP litigators are also an integral part of Gibson Dunn's Litigation practice that The American Lawyer named its 2016 Litigation Department of the Year, our firm's unprecedented third win in this biennial competition following consecutive terms as the 2010 and 2012 Litigation Department of the Year and 2014 Finalist honors.  In addition to trying cases, working with our renowned appellate practice places us at the forefront of IP appellate litigation including multiple representations before the U.S. Supreme Court and the Federal Circuit.   

The lawyers of Gibson Dunn's Intellectual Property Practice Group also provide strategic counselling on all aspects of IP transactions. 

Working closely with lawyers from Gibson Dunn's other transactional practices, we provide critical insight into the complex IP issues that are often the driving factor behind corporate deals powering the modern information economy, including in connection with mergers, acquisitions, financings, strategic alliances, joint ventures and initial public offerings.  Our lawyers have extensive experience drafting and negotiating IP representations, warranties and covenants as well as licensing, cross-licensing and grant-back arrangements.  Members of the group work closely with our clients' internal business teams to analyze and provide critical thinking and advice with respect to the intellectual property owned or licensed by target companies.  This serves to reveal and address material issues potentially affecting value propositions or other critical drivers of an underlying transaction, including:

  • IP due diligence
  • Licensing in and licensing out of  IP rights
  • Open source licensing reviews
  • Software audits
  • Post-closing assignment filings 

Further, working with our Public Policy group, we provide critical guidance in connection with navigating the nuances inherent in legislative advocacy before the U.S. Congress and various state legislatures concerning IP issues. 

Experience and Recent Representations

  • Obtained unanimous Federal Circuit affirmance of summary judgment of non-infringement on behalf of Medtronic, Inc. despite the fact that the Federal Circuit had changed the relevant law while the appeal was pending, a situation in which remand to the district court is ordinarily called for.  Medtronic's competitor had asserted several patents that, it argued, Medtronic's software and blood glucose monitors infringed.
  • Preserved on appeal our summary judgment victory in the Northern District of California on behalf of Zynga and Electronic Arts.  Before the Northern District, we secured a dismissal of the case on the pleadings after successfully arguing that a patent asserted by Gametek LLC was directed to non-patentable subject matter under 35 U.S.C. §101 – an abstract idea.  Gametek had asserted that the fundamental "in-game purchase" functionality of certain Zynga and EA social networking games infringed on its patent.  On appeal, the Federal Circuit affirmed the decision of the Northern District.
  • For CLS Bank, we obtained unanimous U.S. Supreme Court affirmance that ended a long-running patent infringement suit.  The Court affirmed an en banc Federal Circuit ruling, obtained by Gibson Dunn upon entering the case, that the claims were patent-ineligible as the patents were drawn to the abstract idea of intermediated settlement. 
  • Successfully urged the U.S. Supreme Court, as co-counsel to Nautilus, Inc., to abrogate the Federal Circuit's standard for determining whether patent claims are too vague to be valid under 35 U.S.C. § 112, ¶ 2.  Gibson Dunn led the briefing for Nautilus.  The Supreme Court unanimously agreed with Nautilus, striking down the Federal Circuit's test for patent indefiniteness. 
  • Secured from the Federal Circuit a reversal of an injunction and contempt sanction against Lawson Software (now Infor) for infringement of a patent directed to e-procurement software.  Prior to Gibson Dunn's involvement, a jury in the Eastern District of Virginia found infringement of two patents asserted by a competitor and the district court enjoined Lawson's manufacture, sale and use of the accused software.  The Federal Circuit reversed the verdict in part, but on remand the district court re-issued the injunction and found Lawson in contempt for continuing to sell infringing software – imposing a compensatory fine and further daily fine.  While appeals from the injunction and contempt orders were pending, the U.S. Patent and Trademark Office reexamined the sole remaining patent claim in the case and determined it was invalid, a decision the Federal Circuit affirmed.  The Federal Circuit then ruled in Lawson's favor on the contempt appeal, vacating the district court's injunction and contempt sanction against Lawson and remanding with instructions to dismiss the case.
  • Secured summary judgment of non-infringement in the Eastern District of Texas of a patent directed toward Wi-Fi calling capabilities of mobile phones sold by our client, a U.S. wireless service provider.  We subsequently defended that determination before the Federal Circuit, which issued a unanimous decision upholding the district court's ruling.
  • On behalf of Danisco US (now DuPont), won reinstatement by the Federal Circuit of declaratory judgment claims for non-infringement, invalidity and priority of invention of a competitor's patent.  While an infringement suit against Danisco had not been explicitly threatened as the patent issued the same day as the declaratory judgment action was brought, the Federal Circuit, in a case of first impression, found that declaratory judgment jurisdiction can be established in a patent case based on pre-patent issuance conduct.
  • Successfully represented our clients, AT&T as well as another U.S. wireless service provider and their vendor Roamware, that were sued in the District of Delaware by Roamware's competitor on two patents directed toward gateways for provisioning roaming wireless calls.  After securing a favorable claim construction ruling on both patents in suit, the parties entered a stipulation of non-infringement to allow the plaintiff to appeal.  We then successfully upheld the victory below on appeal before the Federal Circuit.
  • Following a successful claim construction hearing, secured a stipulation in the District of Delaware that client Cablevision's cable network did not infringe any of the multiple asserted patents.  We then successfully obtained a unanimous affirmance from the Federal Circuit.
  • Successfully represented client Cablevision, sued for patent infringement as part of a multi-district litigation assigned to the Central District of California.  The plaintiff asserted that Cablevision's automated attendant, interactive voice response systems, voicemail and pay-per-view systems all infringed one or more of over a dozen asserted patents.  On behalf of Cablevision, we secured summary judgment of invalidity of all of the asserted claims.  After appeal to the Federal Circuit, only a single claim of one patent was remanded for further consideration.  We then secured summary judgment of non-infringement of that sole remaining claim.
  • Secured a complete defense victory after a one-week trial before the International Trade Commission in an investigation brought by Cresta Technology, a former virtual fabrication company, against Sharp on two patents directed toward television tuners.  Cresta sought an exclusion order keeping Sharp from importing nearly $1 billion a year in televisions into the United States.  The Commission reviewed and affirmed the ALJ's determination in favor of Sharp.  
  • Won a complete defense jury verdict for T-Mobile USA, Inc. after a three-week trial in the District of Nebraska in a $100 million patent infringement case. The lawsuit had been brought by Prism Technologies, LLC, an Omaha-based patent licensing entity. But the jury found that none of T-Mobile's five accused networks infringed any claim of the two asserted patents. This victory was especially significant considering that Prism had already gone to trial in the same court against other U.S. wireless service providers and secured a trial victory against one and a significant settlement against another. Gibson Dunn's trial team kept the jury focused on the accused T-Mobile networks, and showed that they were non-infringing.
  • Successfully represented a branded pharmaceutical company in defending its patents covering the third best-selling prescription drugs in the United States related to the treatment of diabetes.  Eli Lilly filed New Drug Applications with the FDA, seeking approval to market its own competitive insulin products.  We represented our client in Hatch-Waxman patent infringement lawsuits brought against Eli Lilly in connection with those applications.  On the morning of trial, Eli Lilly consented to, and the court entered, an order enjoining Eli Lilly from selling its proposed product for over a year.  Lilly further agreed to a royalty-bearing license to certain of our client's patents.
  • After a one-week trial in the Eastern District of Texas, secured a complete jury verdict on behalf of Red Hat and Novell finding the asserted patents invalid and not infringed.  Plaintiff had accused the Linux-based operating systems of our clients of infringement.
  • Won a jury verdict for a U.S. wireless service provider in a patent infringement lawsuit brought by Realtime Data, LLC, a non-practicing entity, in the plaintiff-friendly Eastern District of Texas.  After deliberating for less than two hours, the jury found that the carrier did not infringe any of the 11 patent claims asserted by Realtime, and that all 11 claims were also invalid in light of the prior art.  Gibson Dunn was retained as lead counsel by the carrier only two and a half months before trial, when Realtime was seeking $265 million in damages.  Through successive pre-trial motions, Gibson Dunn was able to reduce the damages claim by the time the case reached the jury.
  • Successfully represented a leading handset provider in patent litigation brought in both the International Trade Commission and district court.  At the ITC, complainant asserted five patents relating to how mobile phones access online content and communicate with Web servers, seeking an exclusion order preventing our client from importing its mobile handsets into the United States.  After Gibson Dunn obtained a favorable claim construction on key claim limitations, plaintiff conceded non-infringement and dropped the investigation.  Plaintiff pursued nearly all of the same patents in the District of Delaware.  After Gibson Dunn persuaded the court to adopt the ITC's prior construction, plaintiff dismissed the litigation
  • Successfully defended a patent suit filed in the District of Nevada in which plaintiff alleged infringement of hundreds of claims across 10 patents directed toward a variety of mobile technologies, including speech recognition software, location-finding services, provisioning mobile devices, and encrypting communication channels.  After successfully transferring the case to the Northern District of California and limiting plaintiff to eight claims across four asserted patents, we obtained summary judgment of non-infringement on three of the four patents, and summary judgment of no indirect infringement on the fourth patent.  Plaintiff conceded that any remaining potential damages were de minimis and stipulated to a judgment of non-infringement in favor of our client of all patents.          
  • Obtained summary judgment of non-infringement in favor of St. Jude Medical in a suit in the Southern District of Florida accusing St. Jude's implantable pacemakers and defibrillators of infringing a patent directed to wireless networking and communication protocols.  Shortly after St. Jude was sued, we won a motion to dismiss under the recently enacted Leahy-Smith America Invents Act, as the plaintiff had improperly joined St. Jude with one of its primary competitors.  In a separate case then filed by the plaintiff against St. Jude, Gibson Dunn first obtained a favorable claim construction ruling, and then a favorable Daubert ruling, striking the plaintiff's entire damages expert report, which sought $798 million in damages.  We then won summary judgment of non-infringement on all asserted claims.
  • Successfully represented client Indeed, sued in the District of Kansas for patent infringement of two patents.  Gibson Dunn convinced the Patent Trial and Appeal Board to institute covered business method reviews of all asserted claims from both patents in suit.  In response, plaintiff voluntary dismissed the lawsuit, resulting in a complete victory for Indeed.
  • Secured a victory in the Federal Circuit on behalf of the University of Southern California (USC) affirming a decision by the Trademark Trial and Appeal Board to refuse registration of the "SC" trademark to the University of South Carolina. 
  • Obtained a complete victory for client CytoSport in complex trademark and false advertising litigation in the Central District of California.  After CytoSport obtained a preliminary injunction enjoining sales of a competitive product on trademark and trade dress grounds, Gibson Dunn secured dismissal of the defendant's counterclaims seeking to invalidate CytoSport's "Muscle Milk" trademark.  We later obtained a consent order converting the preliminary injunction into a permanent injunction that required the competitor to withdraw pending trademark applications and administrative challenges to the "Muscle Milk" trademark.
  • Represented Gucci America in the Southern District of New York, securing a verdict that credit card processing companies may be held liable for contributory trademark infringement.
  • Secured a victory in the Southern District of New York on behalf of Tiffany against multiple defendants on claims of trademark infringement and counterfeiting. 
  • Successfully represented Gucci America, Inc., Balenciaga, S.A. and Balenciaga America, Inc. in an action for trademark infringement and counterfeiting in the Southern District of New York, obtaining an ex parte prejudgment asset freeze and, later, a default judgment. 
  • Obtained a series of temporary restraining orders and final judgments for Gucci, Chloé SAS, and Alfred Dunhill Ltd. in trademark infringement actions against operators of websites that sold counterfeit goods, requiring payments of $11.5 million and injunctive relief.  As part of efforts to collect that judgment, Gibson Dunn obtained an order compelling the defendant/counterfeiter's non-party foreign bank to comply with a document subpoena and an asset freeze injunction.
  • Represented CNS Vital Signs, one of the leading sellers of neurocognitive testing software, in a case brought by its chief rival in the Western District of Pennsylvania, alleging that CNS's concussion tests and their marketing infringed its competitor's trademarks and copyrights and otherwise constituted unfair and deceptive trade practices.  The Magistrate Judge recommended CNS's motion to dismiss be granted but that the competitor be given leave to replead.  Gibson Dunn briefed objections and advocated for dismissal with prejudice, which the district court's chief judge subsequently granted. ​
  • Obtained an appellate victory in the Federal Circuit on behalf of Allergan.  The court reversed and remanded a district court order that had dismissed Allergan's claim against several competitors under California's Unfair Competition Law relating to the eyelash-treatment product Latisse.  Allergan owned the patents related to the product and alleged that the defendants were manufacturing, marketing and selling infringing products.  Allergan also claimed the defendants were selling these products without registering them with state and federal regulators, actionable under the Unfair Competition Law.  Allergan sought an injunction against the defendants' sale of the products, as well as restitution.  The Federal Circuit reversed the district court on the grounds that the Unfair Competition Law did not condition a plaintiff's right to an injunction on its ability to obtain restitution.
  • Hired only weeks before trial to defend trade secret claims, Gibson Dunn secured a complete win in the Eastern District of Virginia on behalf of Advanced Nutrients.  We were able to convince the court that the plaintiff had not produced sufficient evidence to establish that the claimed trade secret formula of microbial bacterial was actually a trade secret.  We subsequently defended that win before the Fourth Circuit, which affirmed the grant of summary judgment.
  • Secured an important victory for LiveJournal in a copyright infringement suit brought by a celebrity photography agency.  The case arose when several dozen celebrity photographs were posted by users of the LiveJournal community, Oh No They Didn't! (ONTD!).  The Central District of California granted summary judgment in favor of LiveJournal that service providers who provide an online platform for users are entitled to protection under the Digital Millennium Copyright Act's safe harbor provision. 
  • Secured a confidential settlement for Nike Inc. resolving its case against three former top Nike footwear designers in the Oregon Circuit Court less than six months after winning a TRO and a preliminary injunction preventing the designers from (1) disclosing misappropriated trade secrets, (2) working for any Nike competitor, and (3) publicly associating themselves with a Nike competitor on social media.  ​

Gibson Dunn has extensive experience in all types of transactions involving intellectual property, including: 

  • Negotiation of IP transfer and licensing provisions
  • IP representations and warranties and due diligence as part of M&A transactions, IPOs, and investment and financing transactions
  • Purchase and sale of IP assets including domain names, trademarks, copyrights and patents
  • Acquisition of IP assets in bankruptcy proceedings
  • Licensing in and licensing out of intellectual property both within and without litigation 

The Intellectual Property group has guided and counseled our clients through: 

  • Development and implementation of patent acquisition programs
  • Formation of and participation in patent pools and research consortiums
  • Protection of IP assets
  • Evaluation of membership in patent defense funds and groups to purchase patent assets
  • Evaluation of potential declarations of IP rights to standards-setting organizations
  • The offsetting of risk through the sale of portions of potential collections pending appeal of patent damages awards
  • Software audits from the Software and Information Industry Alliance (SIIA) and the Business Software Alliance (BSA), as well as from individual software providers 

This experience is across a wide range of technologies and industries including: 

  • Software
  • Telecommunications
  • Internet and e-commerce
  • Semiconductors
  • Biopharma
  • Retail
  • Entertainment
  • Medical devices
  • Universities
  • Banking