William H. Burgess - Partner

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William H. Burgess

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Washington, D.C.
Phone: +1 202-879-5957
Fax: +1 202-654-9632
Overview News

Professional Profile

Bill Burgess is a partner in Kirkland's Washington, D.C. office. His practice focuses on appellate litigation across a broad range of subject matter, with particular emphasis on intellectual property and administrative matters. He has joined trial teams to brief dispositive motions and prepare for appeals, and has argued appeals in the U.S. Courts of Appeals for the Third, Fourth, Sixth, Seventh, Ninth, D.C., and Federal Circuits. Before joining Kirkland, Bill was a law clerk to Judge Walter K. Stapleton of the U.S. Court of Appeals for the Third Circuit, and Judge William C. Bryson of the U.S. Court of Appeals for the Federal Circuit.


Representative Matters

Intellectual Property Litigation:

Honeywell International Inc. v. Mexichem Amanco Holding S.A. de C.V., 865 F.3d 1348 (Fed. Cir. 2017). Represented patentee in appeal from inter partes reexamination in which the Patent Office had invalidated 55 claims of a patent as obvious; obtained judgment vacating the Patent Office’s rulings.

Samuels v. TriVascular, Inc., 670 F. App’x 702 (Fed. Cir. 2016). Successfully briefed and argued appeal for Defendant-Appellees; obtained affirmance of judgment of noninfringement.

In re Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016). Represented appellant in appeals from the Patent Trial and Appeal Board; obtained partial reversal of rulings invalidating claims of appellant’s patent.

Norred v. Medtronic, 640 F. App’x 994 (Fed. Cir. 2016). Represented appellee in three appeals from the Patent Trial and Appeal Board; obtained affirmance of rulings that all patent claims at issue were invalid.

Atlas IP, LLC v. Medtronic, Inc., 809 F.3d 599 (Fed. Cir. 2015). Represented Cross-Appellant on appeal; successfully defended judgment of noninfringement; obtained vacatur and remand of judgment of no invalidity.

Bard Peripheral Vascular v. W.L. Gore, 776 F.3d 837 (Fed. Cir. 2015) 682 F.3d 1003 (Fed. Cir. 2012), 670 F.3d 1171 (Fed. Cir. 2012). Successfully represented Bard in two appeals to the Federal Circuit, defending 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 in 2019. As of 2016, the award stands at nearly $1.5 billion. Successfully opposed two petitions for certiorari in the Supreme Court, bringing the 41-year dispute to close.

Vasudevan Software, Inc. v. TIBCO Software, Inc., 782 F.3d 671 (Fed. Cir. 2015). Represented Defendant-Appellee on appeal; obtained affirmance of district court judgment of noninfringement.

ViiV Healthcare UK Ltd. v. Lupin Ltd., 594 F. App'x 686 (Fed. Cir. 2015), 6 F. Supp. 3d 461 (D. Del. 2013). Represented patent holder in Hatch-Waxman litigation in trial court and on appeal; 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.

Solvay, S.A. v. Honeywell Int'l, Inc., 742 F.3d 998 (Fed. Cir. 2014). Represented Defendant-Appellee in Federal Circuit appeal; obtained affirmance of district court judgment that asserted patent claims were invalid.

Alice Corporation v. CLS Bank International, 134 S. Ct. 2347 (2014). Represented association of banks and association of financial services companies as amici curiae supporting affirmance.

UShip Intellectual Properties, LLC v. United States and IBM, 714 F.3d 1311 (Fed. Cir. 2013), affirming 102 Fed. Cl. 326, 98 Fed. Cl. 396 (2011). Represented Third-Party Defendant in patent infringement action in the Court of Federal Claims and on appeal to the Federal Circuit; obtained judgment that asserted claims were either indefinite or not infringed; obtained affirmance on appeal.

OSRAM Sylvania v. American Induction Technologies, Inc., 701 F.3d 698 (Fed. Cir. 2012). Represented Plaintiff-Appellant in appeal at Federal Circuit; obtained reversal of district court summary judgment ruling that asserted patent claims were invalid.

Technology Patents LLC v. T-Mobile (UK) Ltd., 700 F.3d 482 (Fed. Cir. 2012), cert denied 134 S. Ct. 67 (2013); Technology Patents LLC v. Deutsche Telekom AG, 573 F. Supp. 2d 903 (D. Md. 2008). Briefed successful motion in district court to dismiss Defendant from patent infringement case for lack of personal jurisdiction; successfully defended judgment on appeal and opposed petition for rehearing.

TecSec v. IBM, 466 Fed. Appx. 882 (Fed. Cir. 2012), affirming 769 F. Supp. 2d 997 (E.D. Va. 2011). Represented Defendant-Appellee in appeal at the Federal Circuit; obtained affirmance of district court judgment of noninfringement.

Siemens Medical Solutions USA v. Saint-Gobain Ceramics & Plastics, 637 F.3d 1269 (Fed. Cir. 2011), rehearing denied 647 F.3d 1373, cert denied 132 S. Ct. 2679 (2012). Represented Plaintiff/Cross-Appellant in appeal at the Federal Circuit; obtained affirmance district court judgment of infringement under the doctrine of equivalents and eight-figure damages award; obtained additional relief on cross-appeal; successfully opposed rehearing and certiorari petitions.

Certain Flash Memory Chips and Products Containing the Same, U.S.I.T.C. Investigation No. 337-TA-664, 75 Fed. Reg. 82,071 (Dec. 29, 2010). Successfully represented several respondents in an ITC investigation; investigation terminated with a finding of no violation by respondents.

 

General Litigation:

United States v. Griffith, 867 F.3d 1265 (D.C. Cir. 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, 858 F.3d 779 (3d Cir. 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, 638 F. App’x 6 (D.C. Cir. 2016). Represented Intervenor in defense of FAA rulemaking against petition challenging the agency’s use of cost-benefit analysis; obtained judgment denying petitions for review.

Utility Air Regulatory Group v. EPA, 134 S. Ct. 2427 (2014). Represented Petitioner at EPA, D.C. Circuit, and Supreme Court of the United States, in challenges to EPA rules regulating greenhouse gas emissions under the Clean Air Act.

In re Cathode Ray Tube Sharp Antitrust Litigation, No. 14-16817 (9th Cir. 2014). Represented Defendants-Appellees in interlocutory appeal; successfully obtained order dismissing appeal on jurisdictional grounds.

Monroe Energy, LLC v. EPA, 750 F.3d 909 (D.C. Cir. 2014). Represented Intervenors in defense of EPA's Renewable Fuels Standards regulations; obtained judgment denying petition for review.

Sneed v. Shinseki, 737 F.3d 719 (Fed. Cir. 2013). 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, 733 F.3d 267 (9th Cir. 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 and remand for further proceedings; successfully opposed petition for rehearing.

National Chicken Council v. EPA, 687 F.3d 393 (D.C. Cir. 2012). Represented Intervenor in defense of EPA's Renewable Fuels Standards regulations; obtained dismissal of petition for review for lack of standing.

Plummer v. Jackson, 491 F. App'x 671 (6th Cir. 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, Nos. 10-1322, 10-1401 (D.C. Cir. 2010-2011). Represented satellite broadcast companies in challenges to FCC rulings; case settled after oral argument.

National Petrochemical & Refiners Association v. EPA, 630 F.3d 145 (D.C. Cir. 2010), rehearing denied 643 F.3d 958 (D.C. Cir. 2011), cert denied 132 S. Ct. 571 (2011). Represented Intervenor in defense of EPA's Renewable Fuels Standards regulations; successfully opposed rehearing and certiorari petitions.

United States v. McMath, No. 07-CR-154 (E.D. Wis.). Represented Defendant pro bono in criminal case; successfully argued in district court on remand from Seventh Circuit for a reduced sentence.


Memberships & Affiliations

Edward Coke Appellate Inn of Court

Giles S. Rich American Inn of Court

Federal Circuit Bar Association (Rules Committee Co-Chair, 2015–present)


Other Distinctions

Super Lawyers "Rising Star" (Appellate Litigation and Intellectual Property Litigation, Washington DC), 2014–2017

District of Columbia Courts, 2013 Pro Bono High Honor Roll

Kirkland & Ellis LLP Pro Bono Service Award, 2009–2016

Federal Circuit Bar Association, Annual Pro Bono Excellence Award, 2010


Publications

Dismissing Bankruptcy-Debtor Plaintiffs' Cases on Judicial Estoppel Grounds, 62 Federal Lawyer 54 (May 2015)

How Fed. Circ. Should Address Plague of Over-Redactions, Law360.com (Dec. 11, 2014)

The Proper Remedy for a Lack of Batson Findings: The Fallout from Snyder v. Louisiana, 101 J. Crim. L. & Criminology 1 (2011) (with Douglas G. Smith)

Stop the Beach Renourishment: A Win for the State, But a Step Forward for Constitutional Protection of Property Rights, ABA Constitutional Law Committee Newsletter (Sept. 2010) (with Douglas G. Smith)

Contributing Author, ABA Committee on Business & Corporate Litigation, Annual Review of Developments in Business & Corporate Litigation (2010-2012 eds.)

Comment, Simplicity at the Cost of Clarity: Appellate Review of Claim Construction and the Failed Promise of Cybor, 153 U. Pa. L. Rev. 763 (2004)


Courts

Supreme Court of the United States

United States Courts of Appeals for the District of Columbia, Federal, Second, Third, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, and Eleventh Circuits

United States District Courts for the District of Maryland and the Eastern District of Wisconsin

© 2017 Kirkland & Ellis LLP