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

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Three years ago, when William Lee successfully pushed for his Boston-based firm Hale and Dorr to merge with Washington, D.C.'s Wilmer, Cutler & Pickering, he had already peeked into the future of IP litigation. What he saw was "convergence": techno-speak for the coming together of many distinct technologies into one product, as typified by the latest cell phone. The parallel in IP litigation? A law firm prepared to represent a client in multiple jurisdictions and at all levels of the justice system with consistently good results. In short, Lee divined, an IP litigation department should not be a one-man-band, but rather a well-tuned orchestra.

Since then, Wilmer Cutler Pickering Hale and Dorr has been blessed with one opportunity after another to showcase just what a well-rounded, full-service, powerhouse IP litigation group can accomplish. In the last year, the firm handled two U.S. Supreme Court cases and 17 Federal Circuit appeals, ten jury trials, ten U.S. International Trade Commission investigations, and two major international patent arbitrations. The firm's masterful handling of these cases has sealed its reputation as a preeminent department in all stages of IP litigation-and made clear it's no longer just Bill Lee's show.

Wilmer got the rare opportunity to show off the full scale of its IP litigation capability with a new client: Broadcom Corporation. The semiconductor chip manufacturer decided to break into the wireless chip market and in 2005 hired the firm to launch an unprecedented and ambitious patent litigation assault against the industry's largest patent gatekeeper, Qualcomm Incorporated. Lee had been lead counsel in a patent case that Broadcom IP counsel Matthew DelGiorno had been involved with while working previously at Finnegan, Henderson, Farabow, Garrett & Dunner. "We really wanted Bill Lee," DelGiorno says.

The project started with Broadcom filing two patent infringement suits in federal district court and an ITC complaint against Qualcomm. It then mushroomed when Qualcomm lobbed trade secret theft and patent infringement allegations against Broadcom in four additional suits.

Most companies would have divided the work among several law firms, as Qualcomm did when it hired lawyers at four different firms to handle the cases. Broadcom, however, decided to stick with Lee and his IP group at Wilmer for all of the litigation. "Not all law firms can do it, but they have a very deep bench of talented people," says DelGiorno. Eventually more than a hundred of Wilmer's 144 IP attorneys, including a dozen partners, became part of the Broadcom effort.

Under Lee's masterful command, the group delivered to Broadcom a decisive triple-crown victory, winning at the ITC and in both California federal courts against Qualcomm. (See "Under Siege," December 2007.) Qualcomm is appealing all three cases, but DelGiorno says Wilmer's well-executed wins have already done damage to Qualcomm's reputation as a licensing juggernaut. Previously, "Qualcomm publicly said that they've never lost a case," DelGiorno says. "That shine has come off a little bit."

But the Broadcom cases are just part of why Wilmer won the top honors this year. Lee, as well as partners William McElwain and Amy Kreiger Wigmore, also successfully defeated a generic challenge to client GlaxoSmithKline plc's multibillion-dollar drug Requip, a leading Parkinson's disease medication. After a bench trial in Delaware, U.S. district court judge Gregory Sleet issued a rare oral ruling advising Teva Pharmaceutical Industries Limited that the case was not a close call, and that it was "time to put this one out of its misery." Teva subsequently dropped the suit. In another Glaxo case, Lee obtained a summary judgment ruling that ended Ranbaxy Laboratories Limited's challenge to the patent on Valtrex, a herpes treatment with annual sales of more than $1 billion.

Wilmer also won several significant IP cases without Lee on the roster. For client STMicroelectronics N.V., James Quarles III vanquished a formidable opponent at the ITC- SanDisk Corporation, a data storage company that has successfully licensed its more than 700 patents covering so-called NAND flash memory products. And partner Mark Matuschak won a pair of tough cases at trial. A veteran patent, trademark, and trade dress attorney, Matuschak had the distinction of obtaining the first jury verdict of patent invalidity from the plaintiff-friendly district of the Eastern District of Texas in 2006. Oracle Corporation's subsidiary Hyperion Solutions Corporation sued Matuschak's client, OutlookSoft Corporation, for infringement of two financial software patents. The company was demanding $150 million in damages. His other trial was for American Honda Motor Co., Inc., in August in the Northern District of Mississippi. Three car engine makers based in the state were accused by Honda of infringing its trade dress on its Honda Civic GX series engines. (The three had filed a declaratory judgment against Honda.) Honda hired Matuschak a month before trial. It's usually difficult to prove infringement of trade dress, which protects the look of a product-even more so for a car engine. But after a six-day trial, the jury returned a verdict in favor of Honda.

The firm's appellate practice landed more than its share of high profile cases. Its marquee lawyer, former solicitor general Seth Waxman, was on the losing side of two major patent cases before the high court, eBay v. MercExchange and Microsoft v. AT&T, but his selection by both MercExchange LLC and AT&T Inc. speaks volumes. It is considered an achievement, Waxman quips, any time Justice John Paul Stevens is persuaded to write a dissent in support of a patent holder, as he did in the AT&T case. Waxman, who claims to be a patent law novice, has so far argued seven patent cases at the Federal Circuit in the last three years. He's won five of them, lost one and waiting on one decision, his recent appearance on behalf of TiVo Inc. in its fight to hold onto a $94-million jury verdict against EchoStar Communications Corporation. Waxman's group attracts at least a third of the firm's IP clients, according to Lee.

Rounding out Wilmer's achievement are two big arbitration wins. Partner Mark Flanagan won a $134 million award for InterDigital, Inc. a cell phone chip design company in King of Prussia, Pennsylvania, against Samsung Electronics Co., Ltd., at the International Chamber of Commerce. Partners Gary Born and David Ogden also used an international arbitration on behalf of two Royal Dutch Shell subsidiaries to overturn a Nicaraguan court order expropriating Shell's intellectual property to satisfy an unrelated $489 million civil judgment. Under pressure from Wilmer, the Nicaraguan courts and administrative agencies terminated Nicaragua's wrongful seizure of all Shell trademarks and logos in the country.

Lee is just fine with sharing the limelight. "I could really get used to this," he says.

Wilmer Cutler Pickering Hale and Dorr
Practice group size: 144
Partners: 58
Associates: 63
Counsel: 23
Practice group size as percent of firm: 13%
Estimated percent of firm revenue 2007: 13%

On the docket: Lee is representing Abbott Laboratories against an infringement suit brought by Johnson & Johnson subsidiary Centocor over Abbott's billion-dollar biotech drug Humira. Matuschak is gearing up for another trial, this time in California, to enforce Honda's court-validated engine trade dress.