Paul Hastings
Firm overview:
Paul Hastings excels at handling large-scale, multi-jursidictional IP litigation matters. Its reputation for taking on seemingly “unwinnable” cases and winning them leads major new clients to the firm, some of which take advantage of its cross-border capabilities.
Paul Hastings is particularly strong in the area of post-grant proceedings, where it has seen an uptick in activity and continues to attract large and complex cases. The firm has clinched significant victories at the Patent Trial and Appeal Board (PTAB) for tech giants Google, Meta, Samsung, and Taiwan Semiconductor Manufacturing Company, as well as major life sciences players including AbbVie, Genentech, Merck, and Daiichi Sankyo.
However, the firm’s breadth of practice means it has significant experience across the board, with a track record of success from common patent forums, such as the Northern, Central and Southern Districts of California and the District of Delaware, to the US Supreme Court. Many of the team are former Federal Circuit and other law clerks, contributing to a solid appellate practice that clients trust to handle business-critical matters.
Team overview:
Global IP co-chairs Bruce Wexler, Eric Dittmann and Naveen Modi are all widely recognised for their contributions in the IP field. Modi, an expert in challenging and defending patents before the US Patent and Trademark Office (USPTO), has been involved in close to 1,000 post-grant proceedings. Dittmann is a go-to first-chair attorney in patent litigations, arbitrations and post-grant proceedings involving a range of technologies. Trial lawyer Wexler has represented clients as lead counsel in matters involving multi-million and multi-billion dollar drug products.
In March 2024, Paul Hastings welcomed a six-partner team from Allen & Overy ahead of its merger with Shearman & Sterling: Shamita Etienne-Cummings, James Gagen, Lisa Nguyen, Eric Lancaster and an unnamed partner. Modi said at the time that their “depth in popular patent litigation venues will add more firepower to our already impressive group”.
Key matters:
- Flypsi v Google
Paul Hastings has successfully represented Google in various inter partes reviews (IPRs). For example, in July 2024, the firm secured victories in five IPRs filed against patents asserted by Flypsi, which related to managing phone numbers, particularly in situations involving VoIP, and were the subject of a $12 million jury verdict (that was still subject to post-trial motions and appeal).
Flypsi: Winston & Strawn; Google: Paul Hastings: Naveen Modi, Joseph Palys, Stephen Kinnaird and Daniel Zeilberger, Of Counsel, DC.
- Ecofactor v Google
Paul Hastings is also leading the defence of Google in this case, which concerns the Nest thermostats and involved Ecofactor filing complaints at the International Trade Commission (ITC). There are impending trials in the dispute but as a result of proceedings Google has invalidated approximately 50% of Ecofactor’s patent portfolio, according to Paul Hastings.
Ecofactor: Russ, August & Kabat and Knobbe Martens; Google: Shamita Etienne-Cummings, James Gagen, DC; and Grace Wang, New York.
- Allergan v MSN
Paul Hastings’ Eric Dittman argued for Allergan in Allergan v MSN, one of the most important life sciences IP cases of the year. In August 2024 the US Court of Appeals for the Federal Circuit issued a positive decision for patentees, that a first-filed, first-issued, later-expiring claim cannot be invalidated for obviousness-type double patenting by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.
Argued for plaintiffs-appellants: Paul Hastings - led by Eric Dittmann, New York, and also represented by Peter Conway, Melanie Rupert and Stephen Kinnaird, DC; O’Melveny & Case: James Yi Li, Lisa Barons Pensabene and Hassen Sayeed.
Argued for defendant-appellee, Sun Pharmaceutical Industries: Winston & Strawn - led by Charles Klein, DC, and also represented by Jovial Wong; Eimeric Reig-Plessis, San Francisco.
For defendants-appellees MSN Laboratories Private, MSN Pharmaceuticals: Daignault Iyer - led by Ronald Daignault, and also represented by Richard Juang and Tedd van Buskirk, Vienna, Virginia.
- Dr. Reddy's Laboratories, Appellant v Genentech, Hoffman-La Roche, Abbvie, Appellees
The firm represents AbbVie and Genentech jointly in Hatch-Waxman litigation protecting leukaemia treatment Venclexta from generic challengers. In April 2024, the team won a victory against an IPR challenging two patents filed by Dr Reddy’s Laboratories.
A US Federal Court of Appeal case filed by Dr Reddy’s Laboratories was dismissed by mutual agreement of the parties in December 2024, with each party agreeing to bear their own costs.
Venclexta Hatch-Waxman: Eric Dittmann, Melanie Rupert, Chad Peterman, New York; Venclexta PTAB: Naveen Modi, Daniel Zeilberger, Of Counsel, DC.
Opposing counsel: Perkins Coie.
Clients:
AbbVie & Allergan, Abcellera, BioNTech SE, Daiichi Sankyo, Genentech, Google, Inpria, JSR, L’Oréal, Medtronic, Stanley Black and Decker, Samsung Electronics, VirnetX.
