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Patent and Intellectual Property Rights Appeals

Just as patent and intellectual property issues have become an increasingly important part of our clients' businesses, so too patent and intellectual property disputes are an increasingly important part of our litigation practice, including our Appellate practice. A number of the firm’s appellate lawyers have developed extensive experience in patent, trademark, trade secret and related areas of the law. Our Appellate practice was selected for inclusion in the Legal 500 as a leader in the field of patent appeals.

Our patent and IP appellate lawyers and professionals, who include former Federal Circuit and U.S. Supreme Court law clerks, are thus an integral part of our Intellectual Property Litigation group and routinely draw on the substantive experience of more than 100 patent and IP lawyers conversant with virtually every area of technology. In dozens of cases for a wide range of clients before the Federal Circuit, other federal Courts of Appeals and the Supreme Court, Sidley's appellate lawyers and professionals have briefed and argued issues involving virtually all of the principles and doctrines encountered in patent, trademark, copyright and related areas.

Worthy of particular note, Sidley, led by Carter Phillips, successfully represented eBay Inc. in eBay Inc. v. MercExchange, a case described as presenting “the most important issue of patent law to be decided by the Supreme Court in decades,” in which the Court established the standard for issuing a permanent injunction in patent cases. In the Federal Circuit, Sidley's appellate lawyers have represented clients in cases involving such diverse technologies as disposable diapers, recombinant DNA, semiconductor chips, computer operating systems, plastic decorative moldings and chemotherapy drugs. Other notable recent examples of our IP appellate representations include:

  • Amgen Inc. v. Hoechst Marion Roussel, Inc. (Fed. Cir.), claim construction and prosecution history estoppel issues in connection with patents on drugs for treating anemia
  • Eolas Techs., Inc. v. Microsoft Corp. (Fed. Cir.), vacating $565 million award for claimed infringement of patent on web browser
  • Abbott Labs., Inc. v. Baxter Pharm. Prods, Inc. (Fed. Cir.), holding patent on inhalation anesthetic invalid as anticipated
  • Cavalier v. Random House, Inc. (9th Cir.), establishing standard for substantial similarity in copyright matters
  • Multi-Tech Sys. v. Microsoft Corp. (Fed. Cir.), affirming judgment for Microsoft in “a case that could have roiled the computer and Internet telephony industries if the patent had been upheld as valid,” according to

In addition to patent and intellectual property matters in which we represent a party, we also have filed a significant number of amicus curiae briefs in cases in these areas. In the Supreme Court, for example, Sidley lawyers submitted an amicus brief on behalf of a broad consortium of companies in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., which addressed the doctrine of prosecution history estoppel, and we submitted amicus briefs on behalf of the intellectual property owners in Warner-Jenkinson Co. v. Hilton-Davis Chemical Co., which affirmed the vitality of the doctrine of equivalents, and in Markman v. Westview Instruments, Inc., which addressed the role of courts in claim construction.

In the Federal Circuit, we have recently filed amicus briefs on behalf of a group of high-tech companies, including Apple Inc., Microsoft Corporation and Yahoo! Inc. in In re Seagate Technology LLC, in which the en banc Court is reexamining its precedent regarding willful infringement and waiver of attorney-client privilege, and on behalf of SmithKlineBeecham Corporation and Eli Lilly and Company in Pfizer Inc. v. Apotex, Inc., which involves important questions concerning obviousness law as applied to pharmaceutical compositions.

Beyond our work at the appellate level, our lawyers often assist trial counsel by serving as “legal issues” counsel in patent and other IP cases at the trial level. In that capacity, we brief and argue summary judgment and other motions, assist with claim construction and jury instructions and consult with respect to other legal issues, both to insure that the case is effectively presented at trial and well positioned in any appeal.