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Latham has a “strong reputation in appellate litigation” and the firm’s “IP work stands out as a particular highlight.”

Chambers USA 2018

Intellectual Property Appeals

Latham’s renowned Supreme Court and Appellate lawyers bring vast experience and technical prowess to arguing and winning precedent-setting IP appeals before the Federal Circuit Court of Appeals and US Supreme Court.

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The appellate practice is led by a former US Solicitor General, a former Assistant to the Solicitor General, and numerous former clerks from the US Supreme Court, Federal Circuit, and other US courts of appeals. Latham lawyers argue regularly before the US Supreme Court and the US Court of Appeals for the Federal Circuit, providing a formidable combination of IP and appellate expertise.

The IP Appeals team has made hundreds of appearances in the Federal Circuit Court of Appeals in the last several years, and regularly argues nearly a dozen cases each year. Latham’s appellate lawyers argued their first US Supreme Court patent appeal in 2006 — since then, the firm has been involved in numerous patent cases that have been granted certiorari or decided by the US Supreme Court. 

Quanta Computer, Inc. v. LG Electronics, Inc.
Latham won a landmark victory on behalf of Quanta Computer, Inc. (Quanta) in the US Supreme Court regarding the patent exhaustion doctrine. Latham's appellate group took on the case after Quanta had lost in the US Court of Appeals for the Federal Circuit. LG Electronics (LGE) gave Intel a license to sell microprocessors and chips to third-party manufacturers like Quanta, but required Intel to inform the manufacturers that they could not combine the Intel processors and chips with any other non-Intel components. LGE sued Quanta, and many other manufacturers, alleging that their use of Intel processors with other third-party computer components was not authorized by LGE’s license to Intel. The Federal Circuit agreed with LGE, holding that LGE’s patent rights were not exhausted by Intel’s authorized sales, but were preserved by the conditional license language and could still be asserted against Intel’s customers. Latham convinced the Supreme Court to grant review and reverse by arguing that the Federal Circuit’s long-settled “conditional sales” doctrine was inconsistent with “patent exhaustion” principles embodied in largely forgotten late-19th and early-20th century cases.

Symantec Corporation v. Computer Associates
Latham represented Symantec Corporation, a software and programming company, in patent infringement claims against Computer Associates. Latham joined the case after the US District Court for the Eastern District of Michigan granted summary judgment of non-infringement with respect to certain accused products. Latham handled and argued the appeal before the US Court of Appeals for the Federal Circuit. After the Federal Circuit issued its ruling in favor of Symantec and remanded the case for trial, the matter settled.

MedImmune v. Genentech
Latham represented Genentech, Inc. in a dispute with MedImmune, Inc. over a patent for co-expression of antibody heavy and light chains in a single host cellon, a key technology employed in the production of genetically engineered antibodies. MedImmune brought a variety of antitrust claims against Genentech relating to the manner in which Genentech secured the patent, and sought a declaratory judgment that the patent was invalid. Latham convinced the district court and Federal Circuit that MedImmune’s antitrust claims must be dismissed on the merits, and that its declaratory judgment challenge to the validity of the patent must be dismissed for lack of any Article III “case or controversy,” as MedImmune is a licensee in good standing under the patent and continues to pay royalties.

The Supreme Court granted certiorari on the Article III issue. Latham constructed a new Article III defense, arguing that a person who voluntarily avoids any confrontation (i.e. by paying royalties on a patent) can sue to resolve that dormant “controversy” only if the law is prepared to regard his avoidance behavior as coerced or involuntary – and that MedImmune’s decision to pay royalties was entirely voluntary. Latham also argued that, even if Article III jurisdiction is present, suits by licensees in good standing are inconsistent with long-standing, basic equitable principles and should be dismissed on discretionary equitable grounds. The Court unanimously adopted Latham’s proposed novel global theory of anticipatory relief under Article III, but nonetheless ruled 8-1 that MedImmune’s royalty payments were sufficiently “coerced” by the uncertainties of patent litigation and that Article III jurisdiction was present. The Court’s remand order specifically directed the lower courts to consider Latham’s alternative equitable arguments for dismissal. Those issues are currently pending before the district court.

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