On Behalf of Fujifilm, Orrick Wins Eight IPRs Against Papst Licensing

December.20.2017

On behalf of Fujifilm, Orrick won all eight IPRs filed against Papst Licensing. As part of ongoing litigation with Papst, our client joined forces with digital camera and mobile phone manufacturers to attack the validity of two patents asserted against USB functionality. We took the lead on two of the eight IPRs, and were heavily involved in the other six. The PTAB ruled all instituted claims unpatentable. Moreover, since all the claims asserted against Fujifilm were ruled unpatentable on four separate, independent grounds, we have made significant headway towards defeating Papst in the remaining litigation. The IPR litigation was lead by Vann Pearce, and Steve Routh leads the overall litigation. The case is Fujifilm Corp. v. Papst Licensing GmbH & Co. KG.

With these victories, Orrick has successfully invalidated claims in 81% of our petitioner-side IPRs that went to a decision. On the patent owner side, the firm has successfully preserved claims in 68% of such IPRs that went to a decision.

Related Lawyers

T. Vann Pearce, Jr. Partner, Patents, 3D Printing

Washington, D.C.

See my bio

D:+1 202 339 8696
E: [email protected]

Practice:

Technology & Innovation Sector
Patents
3D Printing
Intellectual Property
U.S. International Trade Commission
Inter Partes Review (IPR)
Automotive Technology & Mobility

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T. Vann Pearce, Jr. Partner

Washington, D.C.

Vann litigates in forums throughout the country. He has won several inter partes review proceedings before the Patent Trial and Appeal Board. He has secured favorable jury verdicts in Federal and state courts in Delaware, Florida, Maryland, and Texas. Multiple wins on behalf of his clients at the U.S. International Trade Commission in Section 337 investigations have earned recognition with “Disputes Deal of the Year” awards. And he has crafted winning strategies and briefs in precedent-setting Federal Circuit appeals.

A chemical engineer by training, Vann is a member of the Patent Bar. His representations involve a broad range of technology fields, including semiconductors, artificial intelligence, consumer electronics, 3D printing, automotive technologies, digital imaging, cryptocurrency, and batteries. His clients are based worldwide, including a significant portion from Japan and China. Vann frequently travels to Asia to speak on key developments in intellectual property law.

Patent infringement litigation is central to Vann’s practice, but he also has handled breach of contract, trade secret misappropriation, antitrust, tortious interference, false advertising, civil theft, and bankruptcy matters. Many of his matters involve a complex mix of claims and counterclaims across legal disciplines, where he employs his strategic judgment to navigate competing risks.

While his practice focuses on litigation and dispute resolution, Vann also advices clients on patent licensing, portfolio development, and intellectual property due diligence. Vann co-founded Orrick’s cross-practice 3D printing initiative.

Vann has served the Firm in key leadership roles. In 2022-2023, Vann served as the Chief Practice Officer for the firm's IP & Litigation Business Units, which comprise nearly 400 attorneys globally. His responsibilities included oversight of the units' financial performance, business planning and execution, and lawyer recruiting. Vann also previously served as the firm’s U.S. Law School Hiring Partner, overseeing entry-level hiring nationwide.

Steven J. Routh Partner, Intellectual Property, Japan

Washington, D.C.

See my bio

D:+1 202 339 8509
E: [email protected]

Practice:

Technology & Innovation Sector
Intellectual Property
Japan

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Steven J. Routh Partner

Washington, D.C.

Steve knows how to minimize risk while delivering a client’s business objective, either by defeating an opponent’s case in court or by negotiating the best possible settlement. His ability to pinpoint the argument that will resonate with each judge and jury has enabled him to protect cutting-edge technology involving medical devices, automotive components, telecommunications standards, digital and 3D imaging, guest engagement systems, and semiconductor devices and manufacturing processes. He has also used those same skills in litigating numerous antitrust, unfair competition, and complex tort and contract cases.

For the last 20 years, Steve has focused on guiding Japanese and other Asia-based companies through patent litigation before the U.S. District Courts, ITC and Federal Circuit. He is one of only two lawyers ranked in the Chambers Global guide for having Foreign Expertise in Intellectual Property for Japan. Steve consistently has been described as a “great negotiator who is excellent at creating litigation strategy.” Clients recently interviewed by Chambers also noted, “Steve is a really fantastic tactical thinker with good legal instincts. He is also very collaborative.” Other clients have stated that “his command of the law is evident in his ability to understand it and also apply it across a wide variety of situations,“ while still others have praised his ability to make “very quick and sound tactical decisions.”