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These Law Firms Dominated at The Federal Circuit in 2016

01 March 2017

Law360's analysis of patent opinions issued by the Federal Circuit reveals nine firms that were at the top of their game in 2016, racking up the most wins at the appeals court in high-stakes brawls over patent rights.

WilmerHale led the pack last year with 14 wins for companies including Nike Inc. and Medtronic Inc.

Close behind were patent litigation boutiques Finnegan Henderson Farabow Garrett & Dunner LLP and Fish & Richardson PC, which racked up 12 and 10 wins respectively. Kirkland & Ellis LLP, also a frequent winner before the Federal Circuit, had a standout year as well, scoring definitive victories in eight cases.

Jenner & Block LLP, Perkins Coie LLP, Sidley Austin LLP, Quinn Emanuel Urquhart & Sullivan LLP and Irell & Manella LLP rounded out the list, all with seven wins apiece.

Aside from quantity, these firms' wins came in a busy and momentous year at the Federal Circuit: opinions that shaped patent law and policy, rulings that forged new ground in appeals of American Invents Act reviews, cases that pitted powerful rivals against each other, and decisions that delivered more than a few surprises.

In one of its biggest cases before the court, WilmerHale managed to flip a loss into a win for Apple Inc. in its smartphone patent war with Samsung Electronics Co. Ltd. A panel had issued a decision in February overturning a jury's $120 million verdict against Samsung, but in October the full Federal Circuit reinstated Apple's win, finding serious error in the panel's decision.

WilmerHale scored several other major victories, including for Nike in a battle with rival Adidas AG, for Bristol-Myers Squibb Co. in a fight over a gene detection patent, and for Medtronic in a wrangle with patent licensing company Acacia Research Corp. over a stent patent.

WilmerHale partner Mark Fleming, vice chair of the firm's appellate and U.S. Supreme Court litigation practice, credited the firm’s success in part to its long roster of talented attorneys who can tackle oral arguments at the specialty appeals court. Nine different WilmerHale lawyers argued in the cases resulting in wins for the firm in 2016, he said.

"We have first and foremost a terrific team, and it's a team of several people, it's not just folks at the top of the practice," Fleming said. "Part of the secret here is to have a really strong and deep bench."

Fish & Richardson's year at the Federal Circuit partly turned on novel questions over the inter partes review process at the PTAB, as the appeals court continues to handle an influx of appeals from the relatively young board.

For example, the firm landed a win for Cutsforth Inc. in the first-ever complete reversal of an invalidity decision in an inter partes review. In another case, it won a decision for Shaw Industries Group Inc. that reduced the risk that an IPR petition could undermine a case in subsequent litigation.

"We do not shy away from the toughest cases, or those in which clients seek to challenge seemingly settled points of law. Many of our Federal Circuit wins in 2016 were game changers," said Kurt Glitzenstein, litigation practice group leader at Fish & Richardson. "It's very satisfying when a win for our clients also brings clarity to novel legal questions."

Among its 12 wins, Finnegan also had some eye-catching successes in disputes originating at the PTAB, with a win for PPC Broadband Inc. based on the unusual finding that the board used an incorrect claim construction in an AIA review. Finnegan also took home a victory for Fidelity National Information Services Inc. that backed the PTAB's decision to nix two notorious DataTreasury Corp. check-imaging patents that had been cited by lawmakers as a motivation to create the covered business method review system used by the patent board.

"We have a lot of talent here that's making the most of their opportunities," said Erik Puknys, a partner at Finnegan.

Kirkland & Ellis, another law firm whose attorneys are often seen arguing before the Federal Circuit, had its own victories in PTAB cases, including a win for Apple in a sprawling fight with VirnetX Inc. In that case, the appeals court found that the board can make factual findings absent expert testimony. Other decisions in appeals from the PTAB went for clients that included Honeywell International Inc., Warsaw Orthopedic Inc. and Medtronic.

John O'Quinn, a partner at Kirkland & Ellis, said that before the AIA went into effect, an appeal from the patent office was relatively rare for attorneys in private practice. But over the past four years, the firm has seen an explosion of work on patent office appeals.

"If you look at our Federal Circuit arguments in 2016, there were more appeals from the patent office than from district court litigation. Over the past two years, we have handled appeals involving at least 50 IPR proceedings — many of which were of course consolidated before the Federal Circuit," O'Quinn said.

But not all of 2016's big decisions were in cases coming out of the patent office. While Sidley Austin certainly racked up points in AIA appeals, one of its most remarkable wins came in a case that first played out in the Southern District of Ohio. After a long, hard-fought battle through district court and the Federal Circuit, Sidley pulled out a decision that buoyed patent owners. The appeals court in that case ruled for Lexmark International Inc., deciding en banc to retain its long-standing rule that overseas sales of a product don't exhaust a patent owner's right to sue in the U.S.

Sidley partner Mike Bettinger, co-leader of the firm's intellectual property practice, says the firm's attorneys thrive on the kinds of high-profile patent cases that help shape U.S. patent law.

"Through collaboration with our colleagues, particularly our partners focused on issues in front of the U.S. Supreme Court, courts of appeals, district courts and the PTAB, we are able to provide seamless service and offer clients a coordinated and thorough approach to their matters," Bettinger said.

The Lexmark case may also be on its way to the Supreme Court, a reminder that for some of these high-stakes patent fights, a victory at the Federal Circuit isn't the end of the road.

John C. O'Quinn, P.C.

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