Irell & Manella

Firm overview:

Irell & Manella provides strategic counseling, to industry leaders seeking patents on high-value technologies foundational to their businesses, on the development and commercialisation of their patent portfolios. This includes exploring options that can combine licensing, sale or litigation. Taking a quality over quantity approach the firm also helps clients to expand portfolios through acquisitions, oversee high-value patent prosecution, develop licensing campaigns and enforce license agreements.

Irell & Manella’s patent prosecution guidance dovetails with its experience of patent litigation. Irell’s transactional lawyers and litigators work together to help clients build portfolios and licensing models suited for litigation, creating risk profiles that enable many clients to receive appropriate compensation for their inventions without the need for contested proceedings.

Team overview:

Irell’s team of some 20 registered patent lawyers has extensive experience obtaining patents across a broad range of technologies, from life sciences to computer sciences. Many of the group have professional experience working in private industry and advanced technical degrees. The group also includes former patent examiners with the United States Patent and Trademark Office and a former chief administrative patent judge of the Patent Trial and Appeal Board.

Litigator Benjamin Hattenbach, in Los Angeles, is the client contact for the firm’s patents practice. Hattenbach’s practice is focused on intellectual property litigation and counseling, with an emphasis on complex patent infringement matters. He is a member of the firm’s Executive Committee and is vice chair of the Litigation practice.

Key matters:

Prosecution:

● Irell & Mandell advised a portfolio owner on enforcement options in the US, including at the International Trade Commission, and internationally, culminating in a nine-figure sale transaction.

● The firm conducted due diligence on a portfolio of patents that was available for sale; handled the acquisition of the portfolio at a purchase price exceeding $4 billion; and then designed a licensing programme and successfully represented the client in patent litigation across the country on the acquired patents.

Litigation:

• Wisconsin Alumni Research Foundation v Apple, 112 F.4th 1364 (Fed Cir 2024).

Morgan Chu, in Los Angeles, chair of Irell & Manella’s Litigation practice group, argued for Wisconsin Alumni Research Foundation (WARF), the plaintiff-appellant in a decades-long case over Apple’s microprocessors. Los Angeles partners Alan  Heinrich and Amy Proctor also advised WARF.

The appeal hinged on whether WARF was precluded from pursuing certain infringement claims against multiple generations of Apple’s microprocessors. The Federal Circuit found WARF’s claims barred under both issue preclusion and the Kessler doctrine.

It held that both literal infringement and infringement by equivalents constituted the same issue for issue-preclusion purposes, therefore barring the doctrine of equivalents claims in the second case. Further, the Kessler doctrine barred not only claims against new generations of products released after the first judgment, but also similar products made or sold before the first non-infringement judgment, including Apple’s A9 and A10 processors.

WilmerHale partner William Lee argued for Apple, the defendant-appellee in the case. Apple was also represented by Andrew Danford, Lauren Fletcher and Steven Horn.

• Xockets v Nvidia, Microsoft and RPX.

Irell & Manell partner Jason Sheasby, of Los Angeles, represented Xockets, the plaintiff in a first amended complaint for violation of federal antitrust laws and patent infringement and a request for injunction against Nvidia, Mircosoft and RPX concerning Xockets’ patented DPU technology it claims was stolen by the defendants. Xockets was also represented by Ciccarelli Law Firm and Winstead.

• VLSI Technology v  Intel (W.D. Tex.)

Irell & Manella secured a $948m jury verdict, plus running royalties, for VLSI in a suit regarding patented innovations used to provide improved performance and scalability in server microprocessors.

• VLSI Technology v  Intel (W.D. Tex.)

Irell & Manella obtained a $2.3bn judgment for VLSI in a litigation involving two patents on microprocessor architecture technology used to reduce power consumption and improve performance in nearly a billion products.

• G+ Communications v Samsung Electronics, et al., 22-cv-00078.

Irell client G+ Communications prevailed in a jury trial against Samsung on patents essential to the 5G standard originally created by Chinese telecoms company ZTE. The jury found infringement of two patents and also rejected Samsung’s claim that G+ breached its obligation of good faith negotiation, which exists because the patents are standard essential.

The jury awarded a royalty rate of $1.50 per unit. The damages to date are $67.5m. The Irell team included Jason Sheasby, Lisa Glasser, Michael Harbour, Benjamin Manzin-Monnin and Justin Linetski. McKool Smith served as co-counsel.

Clients:

Litigation - Petroleum Geo-Services, G+ Communications, VLSI Technology, Wisconsin Alumni Research Foundation, Xockets.