Jones Day

Firm overview:

Jones Day’s global Intellectual Property practice of 220 professionals applies a technology sector approach to winning litigations, strengthening IP portfolios, closing technology-driven transactions, and navigating risk across its clients’ full range of intellectual property worldwide.

In the last three years, Jones Day’s lawyers have tried more than 20 US patent cases in patent-popular fora like Texas (Google, NXP); Delaware (J&J); California (Juno); Virginia (RJR); New Jersey (Merck); the ITC (Tineco, RJR, SK Innovation); and the PTAB (AbbVie, Google, Qualcomm). Jones Day has obtained two of the top 10 patent verdicts and won trade secret cases (Goodyear, MedImpact) and arbitrations (Regenxbio, Adocia).

The firm has significant appellate experience. Jones Day lawyers have argued over 150 cases at the Federal Circuit, and prevailed in Supreme Court cases shaping substantive patent law (eg, inter partes review proceedings and patent eligibility).

Jones Day’s patents practice is purpose-built for cross-border litigation, including Europe; Asia (Qualcomm, NXP); and Australia. The world’s largest life sciences and technology companies turn to the firm to protect their brands and handle their IP prosecution and transactional needs.

Team overview:

San Diego lawyer Anthony Insogna, the Intellectual Property practice leader, is the client contact for the firm’s patents practice. Insogna and his teams have achieved numerous patent litigation victories, including a $107.5 million jury award in Puma Biotechnology v AstraZeneca, a record-breaking $2.54 billion jury award for Idenix (Merck & Co) against Gilead, and successful enforcement and defence of patents for Kyowa Kirin’s Potelligent platform technology, which also created new law under Section 1782.

Insogna’s advisory experience includes driving portfolio strategy for numerous pharmaceutical products and his IP strategies have been employed in high-value litigation and M&A matters, including Dainippon Sumitomo Pharma’s $2.6 billion acquisition of Sepracor (now Sunovion) and Pfizer’s $1.3 billion acquisition of Esperion.

Key matters:

● WSOU Investments d/b/a Brazos Licensing and Development v Google Nos. 6-20-cv-00571–00585 (W.D. Tex.); Appeal Nos. 2022-1062 to -1066 (Fed Cir).

Jones Day obtained a trial victory on behalf of Google and secured additional wins through dispositive pre-trial motions in a patent litigation, related to an image capture and tracking patent, in the Western District of Texas involving 15 cases brought by WSOU Investments.

Jones Day partner Sasha Mayergoyz, in Chicago, argued for Google, the defendant-appellee. Google was also represented by John Boulé, Edwin Garcia, Tracy Stitt, and Jennifer Swize, in DC, and Greg Lanier in Palo Alto.[1]

Nathan Cummings, in Arlington, Virginia at Koide IP Law argued for WSOU Investments, the plaintiff-appellant. WSOU was also represented by Burdick Patents lawyers Brian Koide and Sean Burdick, in Boise, Indiana.

● Impinj v NXP USA No. 4-19-cv-03161 (ND Cal).

Jones Day represented global semiconductor company NXP USA against Impinj, a competitor, in a global patent infringement dispute involving more than 50 patents. NXP and Impinj are the leading circuit manufacturers in the multibillion-dollar radio frequency identification (RFID) market.

The key Jones Day contacts for these matters are Silicon Valley partners Michael Hendershot and Greg Lanier.

● Philip Morris Products v USITC, Appeal No. 2022-1227 (Fed Cir).

Jones Day client RJ Reynolds, the largest tobacco company in the US, achieved a precedent-setting victory before the International Trade Commission (ITC) against competitors Philip Morris Products and Altria Client Services in a patent infringement dispute involving tobacco heating and vaping products. The win for Reynolds marks the first major decision by any court amidst a wider global patent dispute between the Reynolds and Philip Morris affiliated companies.

The key Jones Day contacts in these matters are Intellectual Property practice leader Anthony Insogna, in San Diego, John Normile, in New York, and David Maiorana, in Cleveland.

● Merck Sharp & Dohme v Aurobindo Pharma USA (23-2254).

Jones Day’s Andrea Jeffries, Anthony Insogna and Sarah Geers are part of the team representing Merck Sharp & Dohme in Hatch-Waxman patent infringement litigation originally against 16 generic drug maker defendant groups. The case raised the issue of calculating patent term extension and final judgment was entered in favour of Merck in June 2023; the case is currently on appeal to the Federal Circuit.

Clients:

Litigation - Google, Johnson & Johnson, Juno Therapeutics, Laboratory Corporation of America, Merck Sharp & Dohme, NXP Semiconductors, RJ Reynolds.