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For pharmaceutical, energy, and defense companies entering into R&D contracts, grants, and cooperative agreements with federal agencies (including DoD, DOE, and HHS), we have successfully developed and implemented strategies for protecting our clients’ intellectual property. We have helped our clients limit or avoid government IP rights through the use of alternative contracting vehicles, specially negotiated contract clauses, properly drafted statements of work, and other means. We have also obtained waivers of patent ownership from federal agencies, as well as waivers of the U.S. manufacturing requirements under the Bayh-Dole Act.
For pharmaceutical companies entering into R&D contracts, grants, and cooperative agreements with BARDA, NIH, and DTRA, we have successfully developed and implemented strategies for protecting our clients’ intellectual property. We have helped our clients limit or avoid government IP rights through the use of alternative contracting vehicles, specially negotiated contract clauses, properly drafted statements of work, and other means. We have also obtained waivers of U.S. manufacturing requirements under the Bayh-Dole Act.
Advised major pharmaceutical, consumer products, and energy companies, as well as universities, concerning IP rights under CRADAs for technology transfers at national laboratories.
One of our clients provides a key component of the F-35 Joint Strike Fighter. A rival contractor sued the U.S. government in the Court of Federal Claims, alleging that the component infringed its patent. We intervened on behalf of our client and persuaded the court to rule that the patent is invalid.
We obtained a complete jury verdict for our client accused of misappropriating the incumbent’s trade secrets to win a $200 million NASA contract. The alleged trade secrets included the data generated under the incumbent’s existing NASA contract and the incumbent’s proposal data for the new contract.
We successfully defended a Navy prime contractor accused of misusing its subcontractor’s design data. We convinced the court that the Defense Federal Acquisition Regulation Supplement (DFARS) data rights clauses allowed the client to use and distribute the data, resulting in a complete summary judgment for our client.
Successfully represented a client’s intellectual property interests and achieved a successful resolution of a WTO trademark dispute.
Counseled clients on WTO and NAFTA disputes on a wide range of matters, including sanitary and phytosanitary regulations, anti-dumping and countervailing duties, agricultural subsidies, and intellectual property issues, including the FSC and Byrd WTO disputes against the United States. Our lawyers have argued cases before the WTO and have negotiated solutions related to implementation, compliance, and retaliation in trade disputes.
Assisted leading multinational companies and industry associations in developing and implementing strategies to counter foreign regulations restricting intellectual property rights in violation of the WTO TRIPS Agreement and other regional and bilateral trade agreements.
On behalf of a major pharmaceutical manufacturer, we renegotiated agreements with the National Institutes of Health (NIH) concerning IP rights arising out of the development, manufacture, and use of experimental vaccine supplies for international clinical trials, and negotiated contract terms placing on the government the risk of the client’s use of contested IP developed by another contractor.
Life sciences companies are being negatively impacted as a result of patent practices in Canada that are leading to the premature invalidation of pharmaceutical patents. We represent a major life sciences company in a dispute under the North American Free Trade Agreement (NAFTA) seeking compensation for losses suffered by Canada’s internationally inconsistent patent practices.
Managing worldwide patent portfolio of Alkermes plc relating to sustained-release pharmaceutical formulations in products such as VIVITROL®, RISPERDAL® CONSTA®, and BYDUREON®. We obtained pivotal patents in Canada, Europe, Japan, and the United States covering the BYDUREON product, a sustained-release formulation indicated for the treatment of Type 2 diabetes.
Represented Thomson Reuters in the prosecution of patent applications directed to digital image processing and various financial software technologies.
Managing a large worldwide portfolio of patents and patent applications relating to wood preservation technology, as well as advising on post-grant opposition proceedings in Europe and New Zealand.
Representation of Alkermes, Inc., the top patent owner of Orange Book listed patents in reexamination, in ex parte reexamination proceedings and worldwide opposition proceedings initiated by competitors. Six of the seven patents successfully emerged from reexamination and remain listable for the VIVITROL® and RISPERDAL® CONSTA® products.
Representation of Trend Micro Incorporated as patent owner before the U.S. Patent and Trademark Office in ex parte reexamination proceedings relating to two patents directed to anti-virus technology. Reexamination Certificates for both patents were issued, and Trend Micro and the third-party requester settled the state court litigation in which the validity of the patents was at issue.
Represented Osmose in several inter partes reexamination proceedings, including the defense of Osmose patents drawn to methods of preserving wood using particulate copper and methods for directly producing copper carbonate.
Representation of Knowles Electronics in ITC Section 337 Investigations: Silicon Microphone Packages and Products Containing Same, USITC Inv. No. 337-TA-825 (Complainant); Certain Silicon Microphone Packages and Products Containing Same, USITC Inv. No. 337-TA-888 (Complainant).
Representation of JPMorgan Chase in patent litigation brought in the Eastern District of Texas by LML Patent Corp. relating to electronic transactions on credit and debit accounts.
Representation of Johnson & Johnson subsidiary Janssen Pharmaceuticals in Hatch-Waxman litigation against Lupin relating to the Ortho Tri-Cyclen® Lo patent. After a full trial on the merits, the court held that the patent was valid and enforceable. We subsequently obtained a highly favorable settlement for our client.
Represented Bertelsmann, Inc. in multi-district antitrust class action litigation alleging price-fixing and other violations of antitrust laws with respect to digital music.
Representation of Samsung Electronics in numerous patent litigation matters in both U.S. District Courts and the U.S. International Trade Commission, involving technologies such as DLP televisions, LED’s, MLC flash memory, printer software, tablets and smartphones.
Represent Sony Music Entertainment in matter involving contract and intellectual property claims by former music manager regarding 70’s rock act.
Represented the National Football league in a class action challenging the League’s licensing arrangements for the use of team marks and logos on apparel.
Representation of Microsoft in patent litigation matters involving a variety of software and related technologies, including obtaining a transfer out of the Eastern District of Texas in a case relating to video conversion technology.
Representation of Merck & Co. before the ITC and in the Eastern District of Virginia in cases involving Merck’s blockbuster NuvaRing® contraceptive product. After the first day of the evidentiary hearing, the complainant dismissed their ITC complaint and subsequently dismissed their district court complaint as well. Certain Vaginal Ring Birth Control Devices.
Representing Samsung Electronics in an IP litigation against Enterprise Systems Technologies and succeeded in persuading the Texas district court judge to stay the entire district court case.
Representation of AK Steel in a patent infringement action relating to aluminum coated boron steel products where we obtained a jury verdict in favor of our client.
Representation of Warner Chilcott in successfully defending Asacol®, the leading treatment for ulcerative colitis, against ANDAs seeking approval to market a generic version of the drug.
Retained by a WTO member to assess the consistency of certain Chinese requirements affecting the licensing of intellectual property rights with its obligations under WTO/TRIPS.
Representing an aerospace technology company in its negotiation of a Cooperative Research and Development Agreement (CRADA) with the U.S. Air Force Research Laboratory for the testing and validation of privately developed propulsion technology. Addressing key intellectual property protection issues.
Advised several leading U.S. companies in responding to existing and proposed Chinese trade barriers, including in the areas of intellectual property, technology standards, and competition law, and helped our clients succeed in raising the profile of these issues in U.S. bilateral negotiations with China.
Representation of Hewlett-Packard in patent litigation matters involving blade servers, modular computer systems, network gateway devices, and software for mobile devices.
Representation of a major European shipbuilder in successfully defeating claims brought in an ICC arbitration in New York by a U.S. engine supplier for alleged breaches of contract and intellectual property rights relating to stealth-enabled engine technology for warships.
Representation of Texas Instruments Incorporated (“TI”) as petitioner in an IPR proceeding relating to monolithic battery chargers. In a clean sweep victory in a patent office trial, the patent owner, Unifi Scientific Batteries (“USB”) ultimately requested judgment in TI’s favor. USB had sued TI in the Eastern District of Texas in March 2012, alleging infringement of its patent directed to monolithic battery chargers. In March 2013, Covington filed a petition on behalf of TI in the Patent Office seeking invalidation of 16 claims. One week before oral argument, USB filed a Request for Adverse Judgment, disclaiming all of the 16 challenged claims. In June 2014, the Patent Office granted the Request and entered the judgment, successfully ending the trial. Covington also represented TI in the co-pending litigation, which settled successfully.
Representation of Bockstar Technologies LLC as patent owner in an IPR proceeding brought by Cisco Systems Inc., challenging the validity of four patents related to routers, switches, and computerized telephony. Covington filed substantive initial responses for three of the four petitions. In decisions on February 2 and 3, 2015, the PTAB rejected one of the petitions in its entirety, and instituted only as to a single patent claim in a second petition—effectively eliminating half of Cisco’s petitions at a single stroke. The proceedings were terminated shortly thereafter as part of a global settlement.
Representation of Samsung Electronics Company, Ltd. as petitioner in nine IPR proceedings relating to mobile communications and network-enabled audio/video devices and players. Samsung prevailed in all nine of the IPR proceedings. After oral argument in two of the proceedings, the Board issued Final Written Decisions finding all challenged claims unpatentable. Black Hills requested adverse judgment on all challenged claims in five of the proceedings, and filed motions to amend to cancel the challenged claims in the remaining two proceedings.
Representation of Samsung Electronics Company, Ltd. as petitioner in two IPR proceedings adverse to patent owner Boston University relating to gallium nitride semiconductor devices. The two proceedings were terminated following successful settlement of the underlying litigation, in which Covington represented Samsung.
Representation of Peregrine Semiconductor as patent owner in an IPR proceeding brought by RF Micro Devices. The patent is directed to high frequency RF switches for 4G access technologies. Covington also represented Peregrine in the co-pending litigation. Both the IPR and the litigation were settled successfully for Peregrine.
Representation of Knowles Electronics, LLC as patent owner in four IPR proceedings relating to silicon microphone packages and MEMS microphones, all of which were successfully terminated by settlement. Covington also represented Knowles in the co-pending litigation, which successfully settled.
Representation of JPMorgan Chase as petitioner in four CBM proceedings for patents owned by Maxim Integrated Products relating to secure electronic transactions, which were terminated by settlement of the co-pending litigation.
Representation of Ariba, Inc. as patent owner in a CBM proceeding relating to operating resource management systems. Covington also represents Ariba in the co-pending litigation. The CBM proceeding was terminated following successful settlement of the patent infringement aspect of the litigation. We have also represented Ariba as requester in two inter partes reexamination proceedings relating to a business-to-business electronic clearinghouse. All original patent claims, as well as claims added during both reexamination proceedings, were rejected. Favorable settlement for Ariba was promptly obtained pursuant to filing of the reexamination requests.
Representation of multiple petitioners, including The New York Times Company and CBS Interactive, in an IPR proceeding (and in seven inter partes reexamination proceedings) for patents held by Helferich Patent Licensing, LLC. The patents relate to cell phone messaging and were the subject of co-pending litigation in which the requesters were defendants. In March 2014, the PTAB provided another clean sweep IPR victory when it invalidated all 41 challenged claims of the patent. Following Covington’s argument in April 2015, the Court of Appeals for the Federal Circuit affirmed the PTAB’s decision, securing the clients’ victory.
Represented Tencent Holdings Limited in its $8.6 billion acquisition of a majority stake in Supercell Oy, developer of Clash of Clans, Clash Royale, Boom Beach and Hay Day, from SoftBank.
We have advised clients in various sectors regarding the substantial manufacturing requirement under the Bayh-Dole Act, including securing waivers of the requirement and helping clients structure manufacturing obligations to maximize business efficiencies within the requirements of the Bayh-Dole Act. We also routinely advise clients regarding the Bayh-Dole Act’s requirements for perfecting title in intellectual property and avoiding potential march-in actions under the Act.
Represented Research Corporation Technologies, Inc., and licensees Harris FRC Corporation, and UCB, Inc. in a series of six IPR proceedings filed by various generics companies, challenging the patent claiming Vimpat®, UCB’s anti-epileptic drug. The first petition, filed by Actavis, Inc. in 2014, was denied institution. The second petition, filed by Argentum Pharmaceuticals LLC in 2015, was later joined to another four IPR petitions filed by Alembic Pharmaceuticals, Breckenridge Pharmaceutical, and Mylan Pharmaceuticals. The PTAB entered a final written decision on March 22, 2017 entirely rejecting all the challenges and upholding all claims of the patent. In concurrent district court litigation (in which we also represented UCB), the court rejected all the generics’ invalidity arguments in August 2016.
June 21, 2016
SILICON VALLEY—Covington advised Tencent Holdings Limited, a leading provider of internet service in China, in connection with its acquisition of a majority stake in Supercell from SoftBank. A consortium established by Tencent will acquire up to 84% of Supercell for $8.6 billion in a transaction valuing Supercell at approximately $10.2 billion.
Supercell is a ...
June 14, 2016
WASHINGTON—The National Law Journal has named Covington to its “2016 IP Hot List,” recognizing it as one of 15 firms that “set the bar in intellectual property law in 2015, scoring big wins for clients.” Covington was also one of only two firms last month to receive the highest rating from Chambers USA in its nationwide categories for Intellectual Property and ...
May 31, 2016
NEW YORK—Covington is advising MagtiCom Ltd., the leading mobile operator in the Republic of Georgia, on its definitive agreement to acquire retail and corporate ISP cable assets from Caucasus Online LLC. The deal is expected to close on or around August 1, 2016.
Following the successful conclusion of the transaction, MagtiCom will be the first and only operator ...
April 27, 2016
WASHINGTON, DC — Covington represented a cross-industry coalition of companies in assisting in the development of legislative language and persuading Congress to pass the Defend Trade Secrets Act of 2016 (S.1980). The Senate unanimously passed the legislation on April 4 by a vote of 87-0, and the House of Representatives approved the bill with an overwhelming ...
April 8, 2016, Law.com
Richard Hertling and Kurt Calia are quoted in this article discussing the future of, and reactions to, the Defend Trade Secrets Act. Hertling says, “I don’t think [House Judiciary Committee Chairman Goodlatte] would have indicated an intention to move forward with this legislation if patent reform were going to stand in the way."
Calia sees some risk of abuse of ...
April 8, 2016, Law360
Marney Cheek’s remarks made at the American Bar Association’s Annual Intellectual Property Conference are quoted in this Law360 article discussing the overbearing rules that “claw back” food names. According to Cheek, geographical indications often serve as “trade barriers” to geographically descriptive foods that have become generic to consumers, such as ...
March 24, 2016
NEW YORK - Covington advised the underwriters in the $45 million initial public offering of common stock of Senseonics Holdings, Inc. The offering closed on March 23, 2016. Shares of Senseonics trade on the NYSE MKT under the ticker “SENS.”
Senseonics develops continuous glucose monitoring systems for patients with diabetes. Its Eversense product consists of ...
March 21, 2016, IAM
Stuart Eizenstat’s remarks made during his opening speech at the LeadershIP conference are quoted extensively in this IAM article on patent reform. According to Eizenstat, “By making it harder for our most innovative individuals, universities and companies to enforce their patents, we risk devaluing intellectual property, making it too difficult for investors to ...
March 14, 2016, Covington Advisory
January-February 2016, CDR News
Maureen Browne and Alexander Chinoy are quoted in this CDR article assessing the work of the ITC, and its relationship with intellectual property in 2015. Browne states that the ITC is performing well although down from the peak during the ‘smartphone wars’ years, while Chinoy notes a “slight upward trend in the number of cases heard, peaking in outlier years in ...
April 20, 2015
NEW YORK — Covington advised the underwriters in the $76.8 million initial public offering of common stock of Cidara Therapeutics, Inc. Shares of Cidara trade on the NASDAQ Global Market under the ticker “CDTX.”
Cidara is a biopharmaceutical company focused on the discovery, development and commercialization of anti-infectives for treatment of diseases ...
January 14, 2015, Bloomberg BNA
Covington partner Simon Frankel is quoted in this article regarding the top social media rulings of 2014:
"Section 230 of the CDA generally immunizes social media websites from liability for defamatory comments made by its users. This section provides that ‘‘[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of ...
January 7, 2015, Law360
Covington partner Ruixue Ran is featured in this article regarding her joining the firm's IP practice in Beijing:
"Ran's practice has included assisting Chinese companies that appear in litigation in United States federal and state courts and that participate in commercial IP transactions. At her prior firm, Ran advised local and international clients regarding ...
January 7, 2015, The Asian Lawyer
Covington partner Ruixue Ran is featured in this article regarding her joining the firm's IP practice in Beijing:
"Ran Ruixue, who was most recently a partner at China's Jun He Law Offices, specializes in Section 337 investigations and is one of the first Chinese lawyers practicing in that area. Section 337 (of Tariff Act of 1930) investigations refer to the ...
December 12, 2014, WIRED
Covington partner Simon Frankel is quoted in this article regarding the use of emerging technologies, such as wearables, in the courtroom:
The point being: If the data is there, it can be used to fight or bolster a case—and it can pop up unexpectedly. “When it comes to data, you should assume anything tracked is being kept forever unless you know that it’s ...
October 22, 2014, Law360
October 22, 2014, The American Lawyer
"Warner is represented by George F. Pappas, Jeffrey B. Elikan, Benjamin C. Block, Eric R. Sonnenschein and Jeremy D. Cobb of Covington & Burling LLP."
October 3, 2014, Law360
Covington's Shara Aranoff is featured in this article on being named an "Influential Woman in IP Law" by Law360:
"Covington & Burling LLP's recently hired of counsel Shara Aranoff made her mark on the way intellectual property is treated at the U.S. border during her time on the U.S. International Trade Commission, expanding the board's ability to handle ...
August 21, 2014, Women's Wear Daily
Covington's Shara Aranoff is quoted in this article regarding the U.S. International Trade Commission patent infringement case aimed at 17 American and European brands and retailers, the largest ever against apparel retailers and brands:
Shara L. Aranoff, a former ITC chair who is an international trade attorney at Covington & Burling LLP, said there have been ...
July 24, 2014, Law360
Covington partner Kurt Wimmer is quoted in this article regarding the Federal Trade Commission pursuing companies such as Snapchat Inc. and Fandango LLC over allegedly misleading privacy promises and lax data security.
"To me, the FTC's work in the first half of 2014 has been more about security than privacy — both in advocating for its ability under Section 5 ...
May 29, 2014, The National Law Journal
Covington summer associate, Kassandra Maldonado, is quoted regarding The Intellectual Property Law Institute, a partnership between Microsoft Corp. and the Hispanic National Bar Association, which aims to boost the number of Hispanic IP practitioners.
The article states, "Kassandra Maldonado, a 3L at the University of California, Berkeley School of Law, knows ...
May 19, 2014, TIME
Covington's Michael Chertoff has authored this op-ed regarding intellectual property theft in China.
May 7, 2014, Law360
Covington's Kurt Calia is quoted regarding trade secrets audits.
May 6, 2014, Bloomberg
Shara Aranoff is featured in the articles above regarding her new role at Covington.
May 5, 2014, Law360
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