Fish & Richardson

Firm overview:

Founded in Boston in 1878, intellectual property boutique firm Fish & Richardson now operates 12 US offices, plus offices in Munich and Shenzen. Since representing early American innovators like Alexander Graham Bell, Thomas Edison, and the Wright Brothers, Fish has continued to build an impressive client list.

According to a peer, “their reputation precedes them, and they are well known and respected by clients”. Despite being a boutique firm, which “typically have gone by the wayside”, Fish is “a really, really good firm”.

On the prosecution side, Fish files an average of more than 8,900 US and 8,800 foreign applications per year, and develops comprehensive patent strategies for clients informed by a collaborative approach with the litigation and post-grant teams.

In terms of litigation, Fish has won some of the most significant patent trials in history and is well versed in almost every technology area. Clients turn to the firm because of its solid track record in a multitude of venues and proceedings, from Hatch-Waxman litigation to International Trade Commission (ITC) investigations, and it is highly sought out by Fortune 100 companies.

The firm publishes Post-Grant Annual Reports, and demonstrates thought-leadership with regular blogs, podcasts and webinars.

Team overview:

The firm’s bench includes more than 170 attorneys with trial experience, and more than 25 former Federal Circuit clerks, as well as patent prosecutors and post-grant practitioners.

Principal Ruffin Cordell has been enlisted by some of the world’s most prominent brands to represent them in multibillion-dollar patent and trade secrets litigation.

Daniel Tishman has been recognised for his stellar achievements in complex patent litigation, and has asserted and defended infringement claims in multi-patent cases involving wide-ranging technology.

Karl Renner, chair of the firm’s Post-Grant Practice Group, focuses his practice on counselling, strategic patent prosecution, and contentious inter partes and ex parte post-grant proceedings before the Patent Trial and Appeal Board (PTAB). He has lent his expertise to over 800 American Invents Act post-grant matters.

Also noted for his work on post-grant matters, Joshua Griswold uses his technical background and far-reaching knowledge of IP law to represent clients in the district courts and before the PTAB. Griswold also advises on the development of global patent portfolios, and interactions between companies involving high-value IP.

In the second half of 2024, Fish strengthened its patent team with the addition of four technology specialists: Bella Chong, Sae Young, Sydney Leonardi and Samuel Orke.

Key matters:

Prosecution:

• Fish & Richardson advised multinational software company SAP of Walldorf, Germany, on a US patent application for “Efficiently Authorizing Parameterized Database Query Views”.
• Fish advised biotechnology company Genzyme Corporation of Cambridge, Massachusetts, a subsidiary of Sanofi, on a US patent application for a Fluid Transfer Device.
• The firm advised optical manufacturer Carl Zeiss of Oberkochen, Germany, on a US patent application for “Method for Measuring an Effect of a Wavelength-Dependent Measuring Light Reflectivity and an Effect of a Polarization of Measuring Light on a Measuring Light Impingement on a Lithography Mask”.

Litigation:

• Regenxbio v Sarepta Therapeutics, Case No. 24-1408, Federal Circuit, ongoing

Fish & Richardson represents Regenxbio, which sued Sarepta alleging patent infringement over Sarepta’s treatment for Duchenne muscular dystrophy. A Delaware court determined that the patent-in-suit was invalid and the case is on appeal to the Federal Circuit Court of Appeals. Susan Morrison leads the Fish team on the case.

• LKQ v GM Global Technology, 102 F.4th 1280, Federal Circuit (en banc), 2024

Fish represented GM Global Technology in this case that involved the standards for assessing non-obviousness of design patents. The Supreme Court overruled the Rosen-Durling test and adopted the approach that the same conditions for patentability that apply to utility patents should apply to design patents, under the more flexible KSR standard.

Clients:

General: Apple, GM Global Technology, Google, Huawei Technologies, LG Electronics, Prosecution: Apple, Blackberry, Carl Zeiss, Children’s Medical Center, Deepmind Technologies, Genzyme Corporation, Google, Huawei.