Background - Practices (Details)

University IP Enforcement & Recovery

Research universities invest significant resources in the development and maintenance of their intellectual property portfolios, but most fail to fully realize the potential revenue stream of those investments. Crowell & Moring's University IP Enforcement and Recovery Practice was developed specifically to assist our university clients in protecting their intellectual property assets and maximizing their return on investment. In doing so, we assist universities in meeting their missions of education, research, and serving the public good by ensuring that their technology reaches the marketplace in a timely manner. Whether by regularly reviewing a client's IP assets and developing a strategic plan to exploit their full value, reviewing their licensing strategies and agreements in order to maximize the full value of any licensed assets, or by taking appropriate action to recover losses when a breach of a licensing agreement or an infringement occurs, our lawyers have helped clients leverage their IP assets and contribute millions of dollars to their bottom lines.

Our IP Enforcement and Recovery Practice has four basic components: proactive IP mining; strategic enforcement of IP rights; fee arrangements rewarding success; and accomplished trial lawyers. To implement our approach, we work with in-house Technical Transfer officials, University Counsel, and faculty inventors to review the portfolios and identify instances of potential infringement or improperly diminished royalty revenue, and take steps to resolve, in many cases on a contingent fee basis.

Proactive IP Mining

Proactively mining a university's intellectual property assets and actively seeking out recovery opportunities can go a long way toward maximizing the return on the university's investments and provide for a revenue stream to support its technology transfer objectives. To that end, we team with the University's legal and technology transfer personnel to perform a comprehensive review of the portfolio to identify recovery opportunities and develop a strategic mining plan -- one that takes into consideration the university's competitive position, the strength and type of intellectual property involved, potential revenue, and the relevant market, as well as the requirements placed on licensees to diligently develop the university's intellectual property. Our plans include:

  • Organizing and categorizing the institution's IP assets, and any (potential) licensee's fields of use and product lines, to develop a comprehensive map of the IP portfolio.
  • Conducting post-licensing reviews of agreements to insure that licensees are paying what they owe.
  • Identifying competitors and companies in other markets that already may be using the university's IP in specific technology applications.
  • Acquiring information and, where appropriate, potentially infringing products to confirm technology use.
  • Evaluating additional recovery opportunities, whether through licensing or enforcement, in areas not typically explored by a university.

One of the most successful ways that Crowell & Moring's lawyers have assisted universities in maximizing their royalty streams and licensing fees is by reviewing implementation of licensing agreements on their intellectual property assets. Once the agreement is executed, we conduct periodic licensee reviews to ensure that all appropriate royalty and milestone payments have been paid. In addition, we review the license terms and the product mix of the licensee to determine whether royalties are payable on additional products under the agreement.

Strategic Enforcement of IP Rights

A patent is, at its essence, a right to exclude others from practicing an invention, except as licensed by the patent-holder. The value of any patent, therefore, is dependent on enforcement of that right and the threat of litigation. Our IP Enforcement and Recovery team maximizes the value of an institution's intellectual property assets by confronting delinquent licensees and, where appropriate, taking infringers who refuse licenses to court. For universities, a complex set of considerations may influence decisions about patent enforcement, including infringer identity, concerns for litigation finance, fear of research funding retribution, and the licensing typology of the asserted patent. We are well-versed in the licensing and enforcement principles set forth in AUTM's "Nine Points to Consider in Licensing University Technology" and incorporate those points into our enforcement strategies. Other strategic concerns, including, e.g., the effect on the University's image of pursuing a patent infringement lawsuit, can be addressed in a way that permits aggressive assertion of a university's intellectual property rights, while maintaining the institution's discretion.  Sometimes, what is needed is simply a letter from a law firm with a reputation for winning at trial.

Value-Based Fee Arrangements Rewarding Success

Our Recovery practice allows us to accept cases using results-oriented, value-based fee agreements, a rarity among large firms in IP litigation, providing our university clients with the ability to bring cases they could not afford to bring using traditional IP firms. We also have innovative third-party financing arrangements that allow our clients to spread the risk of high-stakes IP litigation. These arrangements also incentivize us to maximize recoveries, including taking cases through trial.

Accomplished Trial Lawyers

The last place an infringer wants to be is in front of a jury.  Our clients rely on our deep and talented pool of IP litigators, including a number of the most accomplished trial attorneys in the U.S. to take their most important intellectual property disputes to court. The strength, size and experience of our litigation team provide us with in-depth knowledge of a variety of venues, including all of the district courts that handle high volumes of patent litigation, and the recently established Patent Trial and Appeal Board (PTAB). Our lawyers are known for their courtroom skills, their ability to analyze the key issues in a case and develop novel solutions for resolving or winning the dispute, and their depth of experience in industries such as automotive technology, life sciences, and information technology. We have the resources to try any IP case, in any jurisdiction. Our experience defending Fortune 100 companies allows us to see the big picture when representing universities -- a significant edge over firms who confine their practice to representation of plaintiffs. It also allows us to deliver the quality demanded by universities when the need arises to cross the aisle to the plaintiff's side of the courtroom.

Winning Results

Our track record representing plaintiffs in intellectual property disputes speaks for itself. When representing IP-holders, our litigators have won more than one billion dollars in judgments and settlements. We have won nine-figure IP jury verdicts, and have obtained substantial returns on recovery efforts for several Crowell & Moring clients.

Some examples of our recent successes include:

  • Favorable settlement on the eve of trial in The Regents of the University of California v. Medivation, Inc., et al. In this matter, we represented The Regents of the University of California against pharmaceutical company Medivation, Inc. to pursue underpayments of sublicensing income under a license agreement for a blockbuster prostate cancer treatment. The underpayment of damages as of the scheduled trial was more than $100 million with possible future damages. The case proceeded to voir dire and a jury was seated. The case settled on the eve of opening statements for a confidential amount.
  • Trial victory in Medivation, Inc. v. The Regents of the University of California where a major issue was the meaning of the term "Sublicensing Income" in an exclusive licensing agreement concerning a cancer drug. At stake was $32 million in revenue that had been characterized by the licensee as "sales milestones" instead of "Sublicensing Income" in order to avoid payments to the University.
  • Also in Medivation:
    • Summary judgment establishing that Medivation has no contractual rights to two additional molecules Medivation valued at almost $1 billion. 
    • Trial victory establishing that Medivation has no fraud claim. 
  • Recovery of $700,000.00 for a University as a result of a post-licensing review.
  • Recovery of several million dollars for a biotech company in a licensing dispute with a major brand pharmaceutical company after a jury trial.