Portfolio Media. Inc. | 860 Broadway, 6th Floor | New York, NY 10003 | www.law360.com
Phone: +1 646 783 7100 | Fax: +1 646 783 7161 | customerservice@law360.com
IP Group Of The Year: K&L Gates
By Alex Lawson
Law360, New York (January 07, 2014, 1:15 PM ET) -- The intellectual property team at K&L Gates
LLP scored a bevy of high-profile wins over the past year, with none more eye-catching than the $1.16
billion judgment it snagged on behalf of Carnegie Mellon University in a patent infringement suit
against Marvell Technology Group Ltd., securing the firm's spot among Law360’s IP Practice Groups of
the Year.
The December 2012 verdict was the largest patent verdict of that year and the third-largest of all time,
according to the firm. K&L Gates' IP group co-leader Michael J. Abernathy told Law360 that the win for
CMU served as a microcosm for the firm's patent work, which places an onus on building a case from the
bottom up as opposed to "parachuting in" just ahead of trial proceedings.
“We are not a hired gun,” Abernathy said. “The majority of our clients I'd like to say we handle cradle to
the grave. Their IP needs are full-serviced from the standpoint that we don't eschew prosecution in
favor of litigation.”
Carnegie Mellon sued in March 2009 accusing Marvell and its subsidiary Marvell Semiconductor Inc. of
selling infringing semiconductor products. Marvell denied infringement and lobbed counterclaims that
the two patents were invalid. A Pennsylvania jury awarded Carnegie Mellon $1.2 billion in December
after a four-week trial, which Marvell had contested by filing motions seeking a mistrial and to reduce
the award, a bid that fell short in September.
Abernathy and the group's other co-head, Robert Barrett, applauded the work of partners Douglas B.
Greenswag and Patrick J. McElhinny, who faced formidable opposition in the case, as Marvell had
tapped Quinn Emanuel Urquhart & Sullivan LLP to try their case.
Barrett said the K&L Gates team seized the upper hand through their diligent preparation and in-depth
technical knowledge of the disk drive technology at issue in the case.
“They were all over the technical evidence very early and based on that review, they came up with our
damages theory that eventually held,” Barrett said. “I think they were successful at trial because they
were very comfortable with the facts and they were able to use their knowledge of the record to fend
off a number of essentially decisive motions in limine.”
The technical expertise touted by Abernathy and Barrett was also critical to netting a series of patent
wins at the U.S. International Trade Commission, where the nuances of the technology at issue are at
the forefront of the cases.
Within a matter of weeks over the summer, the firm notched a pair of wins against notorious
nonpracticing entity Technology Properties Ltd. on behalf of Acer Inc., Amazon Inc. and Novatel
Wireless, which were accused of flouting TPL patents related to flash memory card
readers and microprocessors.
In those cases, K&L Gates worked alongside skilled litigators for other corporate giants such as Canon
Inc., Samsung Electronics Co. Ltd., LG Electronics Inc. and others. Working in such a tense and crowded
environment can flummox some lawyers, but Barrett said the firm prides itself on being a cooperative
member of high-stakes joint defense teams.
“At the end of the day, you have to have the skill set to work well in that environment, to put your ego
off to the side and allow the group dynamic to work effectively, particularly against trolls,” Barrett told
Law360.
The firm's work in the cases for Amazon and Novatel involved the participation of lawyers at K&L Gates
offices in Washington, D.C., Chicago and San Francisco. This type of collaboration is very common at the
firm and Barrett said the cooperation helps keep all members of the team sharp.
“A great hallmark of what we do is that we staff our cases with the best technical people from around
the country,” he said. “You see these other firms with lots of offices, but the teams are very siloed. We
tend to have non-silo teams from a variety of offices and, frankly, we do it so much that it's seamless.”
K&L Gates also figured prominently in the first-ever win for a mainland Chinese company sued for
infringement at the ITC when the commission in December 2012 formally approved an administrative
law judge's finding that Shenzhou Biology & Technology Co. and others hadn't infringed Kaneka Corp.'s
patented method for making the dietary supplement coenzyme Q10.
Another of the firm's most impressive wins came in March on behalf of F5 Networks Inc., which faced
infringement claims from Implicit Networks Inc. over modular networking patents. After numerous tech
giants had settled out of the case, only F5 and Juniper Networks Inc. were left to duke it out with
Implicit at trial.
But mere weeks before a jury was slated to hear the arguments, U.S. District Judge Susan
Illston decimated Implicit's case, declaring that the two patents asserted in the suit were both
anticipated by a 1998 journal article on router software architecture published in Computer
Communication Review.
It was a banner year for K&L Gates, which was founded in 2007 and didn't begin to truly assert its
presence as an IP powerhouse until a few years ago. Barrett stressed that victories such as the landmark
CMU decision and others should serve as a notice to other firms about K&L Gates' status as a heavy
hitter.
“A verdict like that for us, where we consider ourselves to be a relatively new market entrant, I think
really does confirm what we are seeing in the market in terms of clients coming to us,” Barrett said. “It
really does give the mark and stamp of approval on what we're doing and what our approach is.”
--Editing by John Quinn. All Content © 2003-2014, Portfolio Media, Inc.