By Xenia P. Kobylarz
IP Law & Business/January 2008

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On the West Coast, San Francisco-based Morrison & Foerster has a well-established reputation as a solid IP litigation department with a deep bench of first-class litigators. But the firm hadn't often shown up on the the radar screen of big East Coast corporate clients-until last year. With outstanding results for clients Chiron Corporation, EchoStar Communications Corporation, Fujitsu Limited, Novell, Inc., the University of California and Yahoo! Inc., MoFo has vaulted itself into the top IP ranks.

Partner Rachel Krevans's victory over patent-holding company Forgent Networks, Inc. made news last May. Krevans saved EchoStar from paying millions-$205 million was claimed-in patent infringement damages. The Austin-based Forgent has sued essentially the entire cable and satellite television industry for royalties on a patent it holds on digital video recorders. While all the other eight codefendants settled to the tune of $40 million, Krevans's team advised EchoStar to fight it out and successfully invalidated Forgent's patent. "MoFo alone took the risk, and they delivered the goods," says EchoStar IP counsel Jeffrey Blum.

Former IP head Michael Jacobs earned similarly glowing headlines when he won a closely watched copyright infringement suit filed by The SCO Group, Inc. against his client Novell over the ownership of the Unix operating system. SCO had accused some software developers of integrating Unix into the popular open-source operating system Linux. SCO went after companies like IBM Corporation, which had openly supported the Linux platform, and sued them for copyright infringement. But Novell took a risk by publicly challenging SCO's ownership claim. It was sued in turn by SCO in Utah state court for slander of title. Claimed damages were more than $100 million, and David Boies of Boies, Schiller & Flexner represented SCO.

Tech cognoscenti who freely comment on the popular Groklaw blog scrutinized every brief Jacobs filed, offering all sorts of legal advice. "I read all the entries, and some of them were helpful," Jacobs says. In August he didn't have to read his performance review online. Judge Dale Kimball of the U.S. district court in Salt Lake City held that Novell owned the copyright on the Unix code-and that SCO owed it royalties from its recent licensing agreements with Microsoft Corporation and Sun Microsystems, Inc. SCO filed for bankruptcy soon after, and now Jacobs is in bankruptcy court trying to recover $30 million in royalties for Novell.

Such consistent, well-executed litigation is why clients like EchoStar keep coming back-even when MoFo doesn't win. EchoStar was beaten in its patent case against TiVo Inc. in April 2006, with partner Harold McElhinny losing to Morgan Chu of Irell & Manella. But the cable giant has been a loyal client of MoFo for ten years now, and it continues to hand the firm new work. "We're sued all the time. We stick with MoFo because they are the best," says Blum.

The firm is reaping the benefits of a 20-year presence in Japan, where its clients include such major companies as Fujitsu, Hitachi, Ltd., and Toshiba Corporation. Fujitsu has mostly turned to MoFo for IP litigation work for more than 20 years. "We like to have new clients, and we are trying to get new clients all the time," says McElhinny. "But it's the repeat customers that we really value, because it's a testament to the quality of work we provide."

Judging by the long list of new IP cases the firm has so far filed this year (56 and counting), McElhinny's hopes for business development are being fulfilled. New clients include AOL LLC, Apple Inc., and General Electric Company.



With high-profile wins for EchoStar and Novell, California-based Morrison & Foerster is gaining clout on the East Coast.

Morrison & Foerster
Practice group size: 342
Partners: 130
Associates: 179
Counsel: 33
Practice group as percent of firm: 31%
Estimated percent of firm revenue 2007: 30%

On the docket: The MoFo team is heading back to the Eastern District of Texas to defend new client AOL against a patent infringement suit filed by an Acacia Research Corp.' subsidiary Creative Internet Advertising. The firm is also representing GE subsidiary Sabic Innovative Plastics Holdings BV against a Texas A&M patent suit in the district.