Patent Litigation Strategies Handbook
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An Updated Primer on Procedures and Rules in 337 Investigations at U.S. International Trade Commission (ITC)
String of Recent Federal Circuit Rulings Affecting IP Practices
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William P. Atkins
Mr. Atkins is the leader of the law firm’s Intellectual Property Litigation team. He is a trial and appellate lawyer with over 20 years of experience. He is a registered patent attorney who has won jury verdicts and decisions on both sides of the courtroom. Some of his most recent courtroom victories include (1) getting two university co-inventors added to NIH-owned cancer drug patents which have had annual sales of approximately $2B, (2) getting a jury verdict of infringement for a consumer product against their major competitor, and (3) getting a jury verdict for a client in defense of $200M+ patent infringement and related allegations. He takes pride in crafting the very best solution for each client's situation, from both a legal and business perspective. Mr. Atkins has been lead counsel in over 100 intellectual property litigations and has extensive experience in patent, trademark, trade secret, Lanham Act, unfair competition and copyright matters. Over the course of his career, Mr. Atkins has been in trial and appellate courts, the International Trade Commission or ITC, arbitrations, mediations, and before the United States Patent and Trademark Office many times.
Examples of his previous cases include:
- Winning a lengthy case where a University of Kansas professor and a research assistant were named as co-inventors on two NIH patents claiming the formulation for a multibillion dollar anticancer drug called Velcade. Opponents included NIH as well as NIH licensees Johnson & Johnson, Millennium Pharmaceuticals, Inc. and Takeda Pharmaceuticals Co. Ltd.
- Winning a three week jury trial for a Swedish client who was sued for over $200M for patent infringement and other related allegations; getting it affirmed at the Federal Circuit; then getting awarded and collecting attorney’s fees and costs of over $1.2M. The District Court's decision stated "Defendant's counsel could not have achieved a better result for their client," and that his trial team's "time records in this case . . . were all reasonable and reasonably necessary for [the Swedish company] to defend this case."
- After a major Chinese competitor sued his U.S. client for patent infringement in D.C. Mr. Atkins convinced his client to countersue in the Eastern District of Virginia (known as the "Rocket Docket"). There, he won a three week jury trial for his client and also won a summary judgment of non-infringement in D.C. for his client.
- Pro bono representation in a first degree murder trial on Eastern Shore of Maryland—circumstantial evidence case.
- Got a dismissal of all declaratory judgment claims due to a lack of jurisdiction at the outset of a case and this provided the client, an Australian manufacturer, an opportunity to file an action as a plaintiff in the jurisdiction of their choice.
- In an ITC 337 action, he got the ITC to dismiss his client, XM Sirius, as a respondent through motions practice even before his client had to answer the complaint.
- Obtained a favorable jury verdict in a five week patent infringement trial between a tier one OEM auto parts supplier and a competitor.
- In a preliminary injunction case on a trademark, obtained a quick and successful settlement for an accused infringer before even filing a response brief.
- Settled a complicated inventorship and contract case involving an inventor, pharmaceutical drug research company, and a major university shortly after taking over the case.
- Successfully defended a foreign manufacturer of television components in an antidumping case at the ITC by getting the allegation dismissed very early in the case, during the preliminary review by the ITC Commissioners.
- Trial team member on multi-patent infringement trial in which client was awarded over $200 million in damages, and more in follow-on litigation.
- Filed numerous amicus briefs at the Federal Circuit and U.S. Supreme Court on behalf of such parties as Intel, Microsoft, Medtronic, and Cisco.
Mr. Atkins has recently been appointed as a Co-Editor for BNA’s Patent Litigation Strategies Handbook, for which he has written two chapters over the past three editions. He is a Past President of the Foundation of the Bar Association of D.C. (2007-2009) and has been President of the Bar Association of D.C. (2005-06), a member of the ABA's House of Delegates, and chaired numerous bar committees. He is a prolific writer having recently published a primer on ITC procedure in English, Japanese, and Chinese. The primer was judged as one of the ten best law review articles related to patent law when it was published by the editor of West's Intellectual Property Law Review (2011).
Mr. Atkins has also been a member of Pillsbury’s Managing Board, co-leader of the firm's IP section, Managing Partner of the Northern Virginia office, and a member of the firm's Compensation Committee.
- Chambers USA, Intellectual Property—Virginia (2007-2013)
- Best Lawyers in America, Litigation – Intellectual Property, Litigation – Patent, Patent Law (2010-2014)
- Legal 500 US, Intellectual Property (2011)
- LexisNexis, AV Preeminent Rated Lawyer (2013)
- Managing Intellectual Property, IP Star (2013)
- Super Lawyers (2006-2009; 2011-2013)
Bar Association of the District of Columbia, District of Columbia Bar, Maryland Bar Association, Virginia Bar Association, American Bar Association, Giles S. Rich Inns of Court, The Barrister's Club of Washington, D.C.
U.S. Supreme Court; U.S. Courts of Appeals for the Fourth, Federal, District of Columbia, and Armed Forces Circuits; U.S. District Courts for the Districts of Maryland, District of Columbia, the Eastern and Western Districts of Virginia, and various other districts; International Trade Commission