20 January 2025USA Patents 2024

Perkins Coie

Firm overview:

Perkins Coie offers clients a niche patent practice in a Big Law setting. The firm partners with companies at every stage of growth to develop and protect their IP within a patent portfolio. The team has filed more than 110,000 applications globally, on behalf of clients, over the past decade and has more than 42,000 patent applications currently being prosecuted.

Perkins is also experienced in IP diligence and patent portfolio transactions, facilitating patent and portfolio purchases and sales totalling hundreds of millions of dollars, venture funding totalling billions of dollars, and acquisitions and initial public offerings totalling in the tens of billions of dollars.

The patent prosecution team works closely with the firm’s patent litigators on post-grant proceedings. The team has represented clients in more than 800 inter partes review and other trial proceedings since the Patent Appeal and Trial Board (PTAB)’s inception. Perkins’ prosecution experience spans sectors such as 5G and wireless, artificial intelligence, autonomous vehicles, digital health, pharmaceuticals and semiconductors.

The firm regularly represents clients in high-stakes patent disputes across the US, and has litigated more than 350 patent cases in the past two years.

Team overview:

More than half of Perkins Coie’s 110 patent attorneys and agents hold advanced science degrees and many practitioners have significant industry experience as practising engineers, scientists, patent examiners at the US Patent and Trademark Office, or as in-house patent counsel at Fortune 500 corporations.

Nicole Dunham, in Seattle, is the chair of the firm’s Patent Prosecution & Portfolio Counseling practice. Joshua Nelson, in Boise, is vice-chair of the firm’s Patent Prosecution & Portfolio Counseling practice.

Tyler Bowen, in Phoenix, and Michelle Kemp in Madison, are co-chairs of the firm’s Patent Litigation practice.

Two respected IP partners, Ngai Zhang and Drew Schulte, left Perkins Coie in April, 2024 to join Foley & Lardner’s innovative technology sector and electronics practice.

Key matters:

Non-Contentious:

  • Patent partner Nicole Dunham assisted the firm’s deals team in representing Microsoft in its acquisition of Fungible, a provider of composable infrastructure aimed at accelerating performance in datacenters with high-efficiency, low-power data processing units.

Litigation:

  • Intel et al v Katherine Vidal, case number 23-135, US Supreme Court.

In January 2025, the US Supreme Court denied a bid by Intel and Edwards Lifesciences to revive part of a suit challenging the Patent Trial and Appeal Board’s policy of denying reviews of patents based on factors including whether a related court case is at an advanced stage. Intel and Edwards had challenged the rule along with Apple, Google and Cisco in federal court in California. Perkins Coie represents Google in the matter.

  • Micron Tech v Longhorn IP (23-2007).

A Perkins Coie team of Amanda Tessar, Daniel Graham, Craig Tyler and Trevor Bervik represents Micron Technologies in this dispute in which a federal judge imposed an $8 million bond on patent owner Longhorn based on a provision in the Idaho Bad Faith Assertions of the Patent Infringement Act.

  • Amarin Pharma v Hikma Pharmaceuticals USA, 104 F.4th 1370 (Fed Cir 2024).

Perkins Coie’s Nathan Kelley and Nathanael Andrews represented Amarin in its successful appeal to advance its ‘skinny label’ suit over Hikma’s generic version of cardiovascular drug Vascepa. In June 2024 the Federal Circuit overturned the decision of a Delaware district court, which had granted Hikma’s motion to dismiss Amarin’s complaint for failure to state a claim.

Clients:

Amarin Pharma, Google, Micron Technology