Intersection of Antitrust and IP REGULATORY AND GOVERNMENT AFFAIRS

WilmerHale is uniquely positioned to provide counseling, strategic advice and litigation representation to companies confronting issues involving both antitrust and intellectual property law—and the intersection between the two.


Our lawyers are skilled in evaluating issues arising from standards bodies participation, collaborations with competitors, distribution and licensing arrangements, mergers and acquisitions, settlements of disputes, and other areas in which such cross-disciplinary experience is required. We typically build our teams to include antitrust and IP litigators who have years of experience collaborating across disciplines. These interdisciplinary case teams function as cohesive units, helping us to achieve extraordinary results for our clients.

Chambers USA 2013 recognized our Antitrust and Competition Group as “[r]enowned for its IP-oriented antitrust practice… [with] outstanding proficiency both in litigation and counseling….” In recognizing us as its 2014 Intellectual Property Litigation Department of the Year, The American Lawyer cited the firm’s success representing a client in a number of global patent infringement battles—involving significant competition issues—as a major reason for the honor.

Burling, James C.

James C. Burling

Partner

+1 617 526 6416 (t)

james.burling@wilmerhale.com

Dichiara, Peter M.

Peter M. Dichiara

Partner

+1 617 526 6466 (t)

peter.dichiara@wilmerhale.com

Diener, Michael A.

Michael A. Diener

Partner

+1 617 526 6454 (t)

michael.diener@wilmerhale.com

Dowd, James M.

James M. Dowd

Partner

+1 213 443 5309 (t)

james.dowd@wilmerhale.com

Esch, Michael D.

Michael D. Esch

Partner

+1 202 663 6420 (t)

michael.esch@wilmerhale.com

Ford, Mark A.

Mark A. Ford

Partner

+1 617 526 6423 (t)

mark.ford@wilmerhale.com

Haag, Joseph F.

Joseph F. Haag

Partner

+1 650 858 6032 (t)

joseph.haag@wilmerhale.com

Experience

In federal and state courts across the United States, we have a strong record of success in litigating cutting-edge cases at the intersection of antitrust and IP, both at trial and on appeal. We have litigated Sherman Act claims, patent misuse and many other varieties of federal and state law claims raising cross-disciplinary issues.

We have achieved an unparalleled record of success in International Trade Commission (ITC) matters, the outcomes of which are determined not only by patent merits but also by issues relating to the ITC’s statutory mandate to consider the public interest, including competition concerns. Of particular note is our recent success representing a client in persuading the United States Trade Representative (USTR) to disapprove (and thereby nullify) an ITC order that would have excluded from the US market products allegedly covered by a declared standard-essential patent. This was the first time since 1987 that the USTR had taken that action.

Outside the United States, we work with our international offices and other law firms to represent clients in multi-jurisdictional litigated disputes involving antitrust, intellectual property, and the intersection between those disciplines, to ensure international coordination of winning strategies for our clients. We also regularly engage with US, European and Asian competition agencies to discuss both general and specific issues at the intersection of antitrust and IP that are of concern to our clients—discussions in which we draw on the experience of our partners and senior counsel who have served in high levels of government in the United States or elsewhere.

Areas of Focus

Our lawyers have been at the cutting edge of the development of the law on critical antitrust/IP issues.

Standard Setting and Declared Standard-Essential Patents

For antitrust issues concerning standard setting, we have litigated many of the landmark cases addressing contractual and antitrust claims arising from alleged failures to timely disclose IP rights to standard-setting organizations, and failures to offer FRAND or RAND licensing terms to suppliers of products that support standards. Among the clients we have successfully represented in this type of litigation are Broadcom, Rambus, Research in Motion (now Blackberry) and Apple. We also regularly counsel and represent clients in agency investigations involving standard setting and declared standard-essential patents. In Europe, our lawyers have been instrumental in encouraging the European Commission’s Directorate General for Competition to initiate several high-profile investigations relating to alleged abuse of standard-essential patents. We have extensive experience advising clients on their global strategies for addressing assertions of declared standard-essential patents, including negotiating licenses and other resolutions, and litigating complex, multi-fora matters.

Competition Aspects of Commercial Transactions Involving Intellectual Property

US and non-US antitrust authorities are increasingly taking a harder look at mergers and acquisitions involving significant patent portfolios and continue to bring merger enforcement actions, especially in high-tech sectors. We have assisted clients with acquisitions of exclusive intellectual property rights that have triggered Hart-Scott-Rodino filings and multiple non-US notifications and with competitor collaborations involving significant intellectual property assets. Our recent experience also includes representing a major US company in a multi-billion-dollar acquisition involving highly technical products and large patent portfolios.

Investigations by the Federal Trade Commission and the Department of Justice

We have considerable experience representing clients in connection with investigations by antitrust enforcement agencies involving intellectual property. A notable example is our representation of Intel Corporation, as co-counsel, in defending an FTC administrative litigation alleging unlawful monopolization of markets for computing components, in violation of the Sherman and FTC Acts. This was perhaps the largest and broadest case brought by the FTC in the last several decades and was the first case under the commission’s revised Part 3 procedural rules.

Patent Pools and Cross-Licensing

Our lawyers in the United States, Europe and China regularly advise clients on structuring licensing, co-operation and distribution arrangements to comply with competition laws, including vertical agreements, technology transfer, and research and development collaborations. We have helped clients manage competition implications of various complex intellectual property licensing arrangements, including cross-licensing and pooling arrangements that integrate complementary technologies and package licensing of multiple separate technologies. We often work closely with other law firms in multiple jurisdictions to provide our clients with consistent and seamless advice.

We also have experience litigating licensing disputes. We won a substantial victory for U.S. Philips Corporation in a nearly decade-long battle to enforce its recordable/rewritable CD (CD-R/RW) patent rights when the en banc US Court of Appeals for the Federal Circuit, in Princo v. ITC, rejected arguments that Philips’ licensing practices constituted patent misuse. In a decision with far-reaching implications for patent misuse doctrine generally, the court (1) affirmed that patent misuse is applicable only to specific anticompetitive patentee conduct; and (2) recognized that an agreement between partners to a joint venture not to compete with the venture can have legitimate and pro-competitive purposes, and therefore can be condemned only on proof of anticompetitive effects under the rule of reason. The US Supreme Court denied Princo’s petition for certiorari.

Walker Process and Sham Litigation

WilmerHale lawyers have extensive experience counseling clients on the antitrust risks associated with the assertion of patent rights. We have, for example, successfully defended clients accused of asserting patents allegedly procured by fraud on the US Patent and Trademark Office (Walker Process claims) or of filing “sham” patent claims against actual or potential rivals (Handgards claims). Among other matters, we obtained a favorable verdict for a pharmaceutical client after a week-long trial on Walker Process counterclaims stemming from a withdrawn patent infringement action.

Hatch-Waxman and "Reverse Payment" Settlements

For the last two decades, the FTC has sought to use antitrust enforcement to stop “reverse payments” between branded and generic pharmaceutical manufacturers. We have assisted clients with issues involving the interplay between FDA/Hatch-Waxman law, and intellectual property and antitrust laws, particularly in disputes over generic market entry. Our experience includes representing Cephalon in a prominent action brought by the FTC in the US District Court for the Eastern District of Pennsylvania and in separate antitrust actions by putative classes of direct and indirect purchasers of Provigil®, as well as by a would-be generic competitor, all of which challenged Cephalon’s settlement of Hatch-Waxman patent litigation.