William H. Burgess

Intellectual Property Litigation

• UCB, Inc. v. Actavis Laboratories (Fed. Cir. 2022-2023). Represented Actavis in appeal concerning branded company’s Parkinson’s Disease drug patent. Obtained ruling from court of appeals affirming district court’s judgment that all challenged claims were invalid for obviousness. The patent would otherwise have expired in December 2030.
• OneSubsea IP UK Ltd. v. FMC Technologies, Inc. (Fed. Cir. 2022-2023). Briefed and argued appeal relating to attorney fees under 35 U.S.C. § 285. Obtained ruling from court of appeals affirming favorable district court judgment.
• Par Pharm., Inc. v. Eagle Pharms., Inc. (Fed. Cir. 2022). Represented Eagle in appeal concerning branded company’s vasopressin formulation. Obtained ruling from court of appeals affirming district court judgment of noninfringement.
• 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 in 2027.
• Apple v. Qualcomm (S. Ct. 2021-2022). Represented Senator Patrick Leahy and Congressman Darrell Issa in filing an amicus brief regarding issues of Article III standing to appeal from decisions of the Patent Trial and Appeal Board.
• 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 not have otherwise expired until 2029 and 2031. 
• Janssen Biotech, Inc. v. Celltrion Healthcare (Fed. Cir. 2017–2020). Represented Hospira and Celltrion in appeals relating to Celltrion’s biosimilar version of Janssen’s multi-billion dollar drug Remicade, the first biosimilar monoclonal antibody approved by the FDA. Obtained rulings in client’s favor in two Federal Circuit appeals: one challenging the district court’s ruling invalidating Janssen’s patents for obviousness-type double patenting, and another challenging the district court’s summary judgment non-infringement.
• Arkema v. Honeywell; Mexichem v. Honeywell (Fed. Cir. 2016–2020). Representing 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.
• Merck Sharp & Dohme Corp. v. Microspherix (Fed. Cir. 2020). Represented patent holder Microspherix in three consolidated appeals from Patent Trial & Appeal Board; obtained judgment in client’s favor affirming decisions upholding validity of client’s patent claims.
• WesternGeco LLC v. ION Geophysical Corp. (S.D. Tex, Fed. Cir., S. Ct. 2012–2019). Obtained judgment of patent infringement at trial; defended infringement and royalty damages award on appeal; obtained two decisions from the Supreme Court granting certiorari and reversing Federal Circuit limitations on damages.
• Samuels v. TriVascular, Inc. (Fed. Cir. 2016). Successfully briefed and argued appeal for Defendant-Appellees; obtained affirmance of judgment of noninfringement.
• In re Warsaw Orthopedic, Inc. (Fed. Cir. 2016). Represented patentee Warsaw in appeal from Patent Trial and Appeal Board; obtained vacatur and remand of rulings invalidating obviousness ruling.
• 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, amounting to more than $1.5 billion in damages awarded to client.
• ViiV Healthcare UK Ltd. v. Lupin Ltd. (D. Del. & Fed. Cir, 2013–2015). Represented ViiV at trial and on appeal in patent litigation over multi-billion-dollar HIV treatments; obtained judgment upholding the patent's validity and preventing launch of generic version of an anti-HIV medication during the patent's term; judgment affirmed on appeal.
• Siemens Medical Solutions USA v. Saint-Gobain Ceramics & Plastics (D. Del., Fed. Cir., S. Ct. 2008–2012). Represented patentee in trial court and on appeal. Obtained judgment of indirect infringement under the doctrine of equivalents, and eight-figure damages award including lost profits; obtained additional damages on cross-appeal; successfully opposed rehearing and certiorari petitions.

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.
• In re Cathode Ray Tube Sharp Antitrust Litigation (9th Cir. 2014). Represented Defendants-Appellees in interlocutory appeal arising from antitrust litigation; successfully obtained order dismissing appeal on jurisdictional grounds.
• 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.
• Plummer v. Jackson (6th Cir. 2011–2012). Successfully argued and briefed pro bono habeas corpus appeal; obtained vacatur of district court judgment and remand for an evidentiary hearing.
• ICO Global Communications and DBSD North America v. FCC (D.C. Cir. 2010–2011). Represented satellite broadcast companies in challenges to FCC rulings.