William H. Burgess

Intellectual Property Litigation

• Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc. (Fed. Cir. 2024). Represented Lenovo in an expedited appeal over licensing of standard-essential patents. Obtained precedential decision that vacated the denial of an antisuit injunction, and provided guidance interpreting the ETSI FRAND commitment. Decision named Managing IP’s Impact Case of the Year.
• DexCom, Inc. v. Abbott Diabetes Care, Inc. (Fed. Cir. 2023–2024). Represented Abbott in appeals involving continuous glucose monitoring technology. Obtained precedential decision, in an expedited appeal, affirming denial of an antisuit injunction that would have prevented Abbott from pursuing inter partes review proceedings against DexCom’s patents.
  
• SharkNinja Operating LLC v. iRobot Corp. (Fed. Cir. 2023–2024). Represented iRobot in an appeal concerning its Roomba technology. Obtained a decision upholding the validity of iRobot’s patent claims.
• Arbor Global Strategies LLC v. Samsung Electronics Co. (Fed. Cir. 2023–2024). Represented Samsung in an appeal involving merits-based and constitutional challenges to IPR proceedings. Obtained decision affirming PTAB decisions invalidating all 107 challenged patent claims across four patents.
• True Spec Golf LLC v. Club Champion LLC (Fed. Cir. 2022–2024). Represented Club Champion in an appeal involving golf club fitting technology. Argued appeal and obtained decision affirming PTAB decisions invalidating claims of competitor’s patent.
• UCB, Inc. v. Actavis Laboratories (Fed. Cir. 2022–2023). Represented Actavis in appeal concerning drug for Parkinson’s Disease. Obtained precedential ruling affirming judgment that all challenged claims were invalid for obviousness. The patent would otherwise have remained in force for an additional seven years.
• OneSubsea IP UK Ltd. v. FMC Technologies, Inc. (Fed. Cir. 2022–2023). Represented OneSubsea in appeal relating to fee-shifting. Obtained precedential ruling affirming favorable judgment and addressing the standard of review when a case is reassigned between district judges and the challenged order assesses events preceding the judge’s assignment to the case.
• Wi-LAN Inc. v. Sharp Electronics (Fed. Cir. 2020–2023). Represented Sharp Electronics in an appeal involving image-processing technology for televisions. Obtained precedential decision affirming noninfringement judgment and addressing limits on the use of expert testimony to fill evidentiary gaps; won attorney fees on remand.
• Par Pharm., Inc. v. Eagle Pharms., Inc. (Fed. Cir. 2022). Represented Eagle in appeal concerning branded company’s vasopressin formulation. Obtained precedential ruling affirming noninfringement judgment and addressing legal rules for evaluating alleged infringement under 35 U.S.C. 271(e).
• ViiV Healthcare v. Gilead (D. Del. 2018–2022). Represented ViiV in patent litigation (as co-counsel with another firm) involving a doctrine-of-equivalents infringement case against Gilead’s Biktarvy HIV drug. Successfully defeated motion to dismiss and motion for summary judgment. Case settled before trial on terms that include a $1.25 billion payment, and royalties through the expiration of ViiV’s patent.
• Horizon Pharma v. Dr. Reddy’s Laboratories (Fed. Cir. 2019–2021). Represented Dr. Reddy’s in appeals relating to patents on branded company’s arthritis drug. Obtained judgment from court of appeals affirming district court’s judgment that all claims of both patents were invalid for indefiniteness. The patents would otherwise have remained in force for an additional ten years.
• Ericsson Inc. v. Samsung Technology (E.D. Tex. & Fed. Cir., 2020–2021). Represented Samsung in district court and on appeal in dispute over licensing of standard-essential patents and the ability of courts to issue anti-antisuit injunctions. Briefed expedited appeal to the Federal Circuit; case settled before oral argument.
• Arkema v. Honeywell; Mexichem v. Honeywell (Fed. Cir. 2016–2020). Represented Honeywell in appeals arising from post-grant reviews, inter partes reexaminations, and inter partes reviews of next-generation automobile refrigerants. Obtained two Federal Circuit decisions vacating and remanding after Patent Trial & Appeal Board had found patents invalid; obtained two further Federal Circuit decisions affirming Patent Trial & Appeal Board’s rulings that patents were not invalid.
• WesternGeco LLC v. ION Geophysical Corp. (S.D. Tex, Fed. Cir., S. Ct. 2012–2019). Represented WesternGeco in multiforum litigation involving seismic surveying technology. Joined trial team and obtained judgment of patent infringement; defended infringement and damages award on appeal; briefed related appeals challenging WesternGeco’s patents at the PTAB; obtained two decisions from the Supreme Court granting certiorari and reversing Federal Circuit limitations on damages.
• Bard Peripheral Vascular v. W.L. Gore (D. Ariz., Fed. Cir., S. Ct. 2009–2015). Represented patentee Bard in two appeals to the Federal Circuit, in district court proceedings, and in opposing certiorari. Successfully defended judgment that Bard’s patent was valid and willfully infringed and that Bard was entitled to damages and ongoing royalties of 15–20 percent of Gore’s revenues on infringing products through the expiration of Bard’s patent. The case set the record for the largest recovery ever collected in a patent case — more than $2 billion.

General Litigation

• Utility Air Regulatory Group et al. v. EPA (EPA, D.C. Cir., Supreme Court, 2009–2014). Represented petitioner United States Chamber of Commerce at agency, court of appeals, and Supreme Court, in challenges to EPA rules regulating greenhouse gas emissions under the Clean Air Act.
• United States v. Griffith (D.C. Cir. 2016–2017). Successfully briefed and argued appeal challenging criminal conviction; obtained judgment vacating conviction and reversing district court’s ruling denying motion to suppress evidence.
• In re Ross (3d Cir. 2016–2017). Briefed and argued appeal, as court-appointed amicus curiae, concerning the dismissal of an individual debtor’s chapter 13 bankruptcy; obtained judgment vacating the bankruptcy court’s injunction against the debtor.
• Independent Pilots Association v. FAA (D.C. Cir. 2015–2016). Represented intervenor Cargo Airline Association in successful defense of FAA rulemaking against petition challenging the agency’s use of cost-benefit analysis; obtained judgment denying petitions for review.
• Monroe Energy v. EPA; National Chicken Council v. EPA; National Petrochemical & Refiners Association v. EPA (D.C. Cir. 2010–2014). Represented biofuel and biotechnology trade associations as intervenors in successful defenses of EPA’s Renewable Fuels Standards regulations; obtained two rulings from the court of appeals upholding regulations and a third ruling dismissing petition for lack of standing.
• Sneed v. Shinseki (Fed. Cir. 2012–2014). Successfully argued and briefed appeal challenging equitable tolling legal standard relied upon by U.S. Court of Veterans Claims; obtained vacatur of judgment below and remand for reconsideration under the correct legal standard.
• Ah Quin v. County of Kauai (9th Cir. 2012–2013). Successfully argued and briefed appeal challenging district court's application of judicial estoppel to dismiss civil claims omitted from filings in personal bankruptcy; obtained reversal of district court judgment in precedent-setting opinion that has been cited in other circuits and reaffirmed by the Supreme Court in Keathley v. Buddy Ayers Construction, 146 S. Ct. 1532 (2026).