Lauren A. Degnan

Background

Lauren A. Degnan is Managing Principal of the Washington, D.C., office of Fish & Richardson. Ms. Degnan is a seasoned trial-court and appellate lawyer with extensive experience handling high-stakes, high-risk intellectual property disputes, where hundreds of millions of dollars are at stake. She has served as lead counsel in complex patent infringement cases before the United States Court of Appeals for the Federal Circuit and numerous federal district courts. She has also led a variety of matters before the United States International Trade Commission, including utility patent, design patent, registered trademark, trade dress, and trade secret cases. Her experience includes post-grant procedures, including inter partes and covered business method reviews, and corporate litigation concerning breaches of fiduciary duties, trade secrets, and antitrust issues. Ms. Degnan is also an appellate and briefing specialist, with an impressive record of summary judgment and appellate wins. With a broad base of legal, technical, and business knowledge, Ms. Degnan is a trusted legal advisor whose clients value her ability to craft creative and effective solutions to their challenging legal problems.

Ms. Degnan specializes in high technology litigation and has litigated cases involving computer software, networks, and peripherals, microprocessors, telecommunications equipment, medical devices, smartphones, LCDs and plasma displays, security and encryption technologies, GPS devices, flash memory, internet applications, business methods, document imaging and storage systems, and various mechanical inventions. Before joining Fish, she served as a judicial clerk to then-Chief Judge Haldane Robert Mayer of the United States Court of Appeals for the Federal Circuit (1997-1999).

Services

Industries

Education

J.D., Vanderbilt University Law School 1995
Vanderbilt Journal of Transnational Law
Order of the Coif

B.S., Cornell University 1992
Mechanical Engineering

Admissions

U.S. Patent and Trademark Office 1997
District of Columbia 1996
Massachusetts 1996
Supreme Court of the United States
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Western District of Wisconsin

Clerkships

United States Court of Appeals for the Federal Circuit, The Honorable Haldane Robert Mayer, 1997 - 1999

Memberships & Affiliations

Vice Chair, Federal Circuit Bar Association, Amicus Committee;

Vice Chair, PTAB Bar Association, Committee on Appeals from the PTAB;
Member, Intellectual Property Owners Association, Amicus Committee;
Washington DC Advisory Board Member, Women in Law Empowerment Forum;
Federal Circuit Historical Society Board Member;
Member, International Trade Commission Trial Lawyers Association.

Other Distinctions

Awards
Recognized in “The World’s Leading Patent Practitioners” by IAM Patent 1000 (2017, 2018)
Federal Circuit Bar Association Pro Bono Leadership Award (2012), Pro Bono Advocacy Award (2011)
Washington, DC, Super Lawyer (2013–2019)
Women Worth Watching in STEM, Profiles in Diversity Journal (2017)

Selected Publications and Presentations
“Federal Circuit and Supreme Court Yearly Review” co-speaker, Fish Litigation Webinar (October 4, 2018)
Q&A with Lauren Degnan: Women Worth Watching
Quoted, “Crossing Swords Over Assignor Estoppel,” Corporate Counsel (April 2018).
“Federal Circuit and Supreme Court Yearly Review” co-speaker, Fish Litigation Webinar (September 21, 2017)
“Life in the Fast Lane: IP Litigation at the ITC,” co-speaker, Georgia Association of Corporate Counsel Meeting (July 11, 2017 – Atlanta)
“Reviewability of the Patent Trial and Appeal Board’s Decision to Institute Post-Grant Proceedings,” panelist, American University Washington College of Law (March 24, 2016)
“Damages Point/Counterpoint,” moderator, 8th Annual Conference, The Role of the Courts in Patent Law & Policy, hosted by Berkeley Law and Georgetown Law (December 2, 2016)

Experience

Appellate

United Technologies Corp. v. General Electric Co. (Fed. Cir. 2019) – Successfully vacated IPR final written decision finding claims unpatentable.

Arista Networks, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2018) – Successfully reversed and remanded IPR final written decision finding claims not proven unpatentable under erroneous claim construction and defended Board’s decision that assignor estoppel does not bar IPR challenge.

Arista Networks, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2018) – Successfully vacated IPR final written decision finding claims not proven unpatentable.

Cisco Systems, Inc. v. Arista Networks, Inc. (Fed. Cir. 2018) – Successfully defended IPR final written decision finding claims unpatentable.

Virtual Solutions LLC v. Microsoft Corp. (Fed. Cir. 2013) – Successfully defended summary judgment of invalidity for Microsoft in patent infringement case involving Xbox Kinect technology.

Cordis Corp. v. Boston Scientific Corp. (Fed. Cir. 2010) – Successfully defended judgment as a matter of law of noninfringement for defendant/cross-appellant BSC in patent infringement case involving stents.

Encyclopaedia Britannica v. TomTom, Inc. et al. (Fed. Cir. 2009) – Successfully defended summary judgment of invalidity of two Britannica patents for defendant/appellee TomTom in patent infringement case involving navigation devices.

Fenner Investment, Ltd v. Microsoft Corporation et al. (Fed. Cir. 2009) – Successfully defended summary judgment of noninfringement for defendant/appellee Microsoft in patent infringement case involving joystick port interface circuits.

ArthroCare Corp. v. Smith & Nephew, Inc. (Fed. Cir. 2004) – Successfully overturned jury verdict of no invalidity and dismissal of antitrust claim for defendant/appellant Smith & Nephew in patent infringement and antitrust case involving electrosurgical devices.

Mirror Imaging LLC v. Affiliated Computer Servs., Inc. et al. (Fed. Cir. 2004) – Represented defendant/appellee ACS in patent infringement case involving check storage and retrieval systems. Mirror Imaging dismissed its appeal of summary judgment of noninfringement after motion for damages and costs for defending against a frivolous appeal.

TypeRight Keyboard Corp. v. Microsoft Corp. (Fed. Cir. 2003) – Represented defendant/appellee Microsoft in patent infringement case involving computer keyboards. Favorable settlement.

Compaq Computer Corp. v. eMachines, Inc. et al. (Fed. Cir. 2002) – Represented defendant/appellant Trigem in patent infringement case involving PC processors and peripheral controllers. Favorable settlement.

Advanced Interactive Inc. v. Matshushita Elec. Corp. et al. (Fed. Cir. 2001) – Successfully defended summary judgment of noninfringement for defendant/appellee ATI Technologies in patent infringement case involving digital video and text transmission systems.

Bell Atlantic Network Servs., Inc. v. Covad Communications Group, Inc. et al. (Fed. Cir. 2001) – Successfully defended summary judgment of noninfringement for defendant/appellee Covad Communications in patent infringement case involving DSL transmission systems.

Cabot Corp. v. Minnesota Mining & Mfg. Co. (Fed. Cir. 2000) – Successfully defended denial of a motion for a preliminary injunction for defendant/appellee 3M in patent infringement case involving safety equipment.

District Court

Cisco Systems, Inc. v. Arista Networks, Inc. (N.D. Cal. 2014) (J. White) – Represented Arista in multi-patent infringement case involving Ethernet switches. Favorable settlement.

IMS Health Inc. v. Symphony Health Solutions, Corp. et. al. (D. Del. 2013) (J. Sleet) – Represented IMS Health in multi-patent infringement case involving healthcare analytics and informatics. Favorable settlement.

Thomas Swan & Co. Ltd. v. Finisar Corp. (E.D. Tex. 2013) (J. Gilstrap) – Represented Thomas Swan multi-patent infringement case involving wavelength selective switch technology. Favorable settlement.

Virtual Solutions LLC v. Microsoft Corp. (S.D.N.Y 2012) (J. Scheindlin) – Won summary judgment of invalidity due to indefiniteness for defendant Microsoft in patent infringement case involving Xbox Kinect technology.

Visual Interactive Phone Concepts, Inc. v. Samsung Telecommunications America LLC (E.D. Mich. 2011) (J. Zatkoff) – Represented Samsung in multi-patent infringement case involving videophone technology. Secured early dismissal.

Keranos, LLC v. Analog Devices, Inc. et al. (E.D. Tex. 2010) (J. Schroeder) – Representing Intel in multi-patent infringement case involving flash memory. Case pending.

Microsoft Corp. v. St. Clair Intellectual Property Consultants, Inc. (D. Del. 2010) (J. Stark) – Represented Microsoft in multi-patent declaratory judgment case involving power management technology. Favorable settlement following significant summary judgment wins.

PACid v. Intel Corp. et al. (E.D. Tex. 2009) (J. Davis) – Represented Intel and Marvell in patent infringement case involving WiFi encryption. Favorable settlement.

Affinity Labs of Texas, LLC v. TomTom, Inc. et al. (E.D. Tex. 2008) (J. Clark) – Represented TomTom in patent infringement case involving navigation devices. Favorable early settlement.

Research in Motion Ltd. v. Eastman Kodak Co. (N.D. Tex. 2008) (J. Kinkead) – Represented RIM in multi-patent declaratory judgment case involving image processing and Java-compliant software. Favorable settlement.

Encyclopaedia Britannica v. TomTom, Inc. et al. (W.D. Tex. 2007) (J. Yeakel) – Before any discovery was conducted, won summary judgment of invalidity of two Britannica patents for defendant TomTom in patent infringement case involving navigation devices.

Fenner Investment, Ltd v. Microsoft Corporation et al. (E.D. Tex. 2007) (J. Davis) – Won summary judgment of noninfringement one day before trial for defendant Microsoft in patent infringement case involving joystick port interface circuits.

Finisar Corp. v. XM Satellite Radio Holdings Inc. et al. (E.D. Tex. 2007) (J. Clark) – Represented XM in patent infringement case involving satellite radio. Case dismissed on favorable terms.

LG Electronics, Inv. v. Hitachi Ltd. et al. (E.D. Tex. 2007) (J. Ward) – Represented LGE in competitor patent infringement case involving plasma display panels. Favorable settlement.

Sharp Corp. v. Samsung Electronics Co. Ltd. et al. (E.D. Tex. 2007) (J. Ward) – Represented Samsung in multi-patent infringement case involving liquid crystal display technologies. Favorable settlement.

Garmin Corp. et al. v. TomTom, Inc. (W.D. Wisc. 2006) (J. Crabb) & (E.D. Tex. 2006) (J. Davis) – Represented TomTom in competitor multi-patent infringement and antitrust case involving navigation devices and methods. Favorable settlement after winning summary judgment of noninfringement and invalidity against five Garmin patents in W.D. Wisc. case and defeating motion to dismiss antitrust counterclaim in E.D. Tex. case.

Computer Cache Coherency Corp. v. Intel Corp. (N.D. Cal. 2005) (J. Whyte) – Represented Intel in patent infringement case involving interface circuits providing communications between computer systems. Won summary judgment of noninfringement.

Digital Packet Licensing Inc. v. MCI, Inc. et al. (E.D. Tex. 2005) (J. Davis) – Represented Time Warner Cable in patent infringement case involving digital packet telephone systems and voice over IP technology. Favorable early settlement.

Fenner Investments, Ltd. v. Juniper Networks, Inc. et al. (E.D. Tex. 2005) (J. Davis) – Represented Nokia in patent infringement case involving mobile communications infrastructure equipment. Favorable settlement after exchange of expert reports.

Henrob Ltd. v. Böllhoff Systemtechnik GmbH & Co. KG. et al. (E.D. Mich. 2005) (J. Cleland) – Represented plaintiff/patentee Henrob in competitor patent infringement case involving self-pierce riveting technology. Favorable settlement after defeating case dispositive summary judgment motions.

Wichita Falls Power Management, L.L.C. v. Intel Corp. (N.D. Tex. 2005) (J. Boyle) – Represented Intel in patent infringement case involving power management technology for microprocessors. Favorable settlement.

Honeywell International Inc. et al. v. Audiovox Corp. et al. (D. Del. 2004) (J. Jordan) – Represented Nokia in large-scale, multi-defendant patent infringement case involving liquid crystal displays. Secured early stay pending resolution of claims against manufacturer defendants. Case dismissed following summary judgment of invalidity in manufacturer defendants’ case.

MyMail, Ltd. v. America Online, Inc. et al. (E.D. Tex. 2004) (J. Davis) – Represented AOL in patent infringement case involving computer networks and on-line services. Favorable settlement while motion for summary judgment of noninfringement was pending.

Cisco Sys. Inc. v. Alcatel USA, Inc. et al. (E.D. Tex. 2003) (J. Brown) – Represented Alcatel in antitrust case involving optical cross connect technology. Favorable settlement.

William Reber, LLC v. Samsung Elecs. Am., Inc. et al. (N.D. Ill. 2003) (J. Der-Yeghiayan) – Represented Nokia in patent infringement case involving image capture-capable cellular telephones. Favorable early settlement.

DataTreasury Corp. v. J.P. Morgan Chase & Co. et al. (E.D. Tex. 2002) (J. Folsom) – Represented ACS in patent infringement case involving document imaging and storage systems. Case dismissed on favorable terms.

Mirror Imaging LLC v. Affiliated Computer Servs., Inc. (E.D. Mich. 2002) (J. Cleland) – Won summary judgment of noninfringement for defendant ACS in patent infringement and trade secret case involving check storage and retrieval systems.

Alcatel USA, Inc. v. Tekelec, Inc. (E.D. Tex. 2000) (J. Brown) – Represented plaintiff/patentee Alcatel in competitor patent infringement and antitrust case involving mobile communications routing equipment. Favorable settlement after denial of defendant’s motion for summary judgment of noninfringement.

Alcatel v. IPOptical/Alex Mondrus (E.D Va. 2000) (J. Bryan) – Obtained TRO, and preliminary and permanent relief for trade secret misappropriation and copyright infringement.

Cabot Corp. v. Minnesota Mining & Mfg. Co. (S.D. Ind. 2000) (J. Dillin) – Represented defendant 3M in competitor patent infringement case involving safety equipment. Favorable settlement after partial summary judgment of noninfringement.

CIENA Corp. v. Corvis Corp. (D. Del. 2000) (J. Farnan) – Secured jury verdicts of infringement and no invalidity for plaintiff/patentee CIENA in competitor multi-patent infringement case involving dense wave division multiplexing optical communications systems. Case settled after injunction issued.

Intel Corp. v. Broadcom Corp. (D. Del. 2000) (J. McKelvie) – Represented plaintiff/patentee Intel in competitor patent infringement case involving digital video processors and compression algorithms. Favorable settlement after successful motion for a new trial.

Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc. et al. (E.D. Va. 1999) (J. Friedman) – Won summary judgment of noninfringement for defendant Covad Communications in competitor patent infringement case involving DSL transmission systems.

Section 337 Proceedings

Certain Batteries and Electrochemical Devices Containing Composite Separators, Components Thereof, and Products Containing Same, 337-TA-1087 (2017) – Representing complainants LG Chem and Toray Industries in patent infringement case. Favorable settlement.

Certain Network Devices, Related Software and Components Thereof I & II, 337-TA-944 & -945 (2014) – Represented respondent Arista Networks in patent infringement cases. Favorable settlement.

Certain Robotic Toys and Components Thereof, 337-TA-869 (2013) – Represented complainant Innovation First in trade secret misappropriation case. Favorable settlement.

Certain Flash Memory Chips and Products Containing the Same, 337-TA-735 (2010) – Represented respondents including Nokia, PNY, Samsung, and Transcend in patent infringement case. Favorable settlement.

Certain Inkjet Ink Supplies and Components Thereof, 337-TA-581 (2006) – Represented complainant Hewlett-Packard in patent infringement case. Favorable settlement.

Certain Point of Sale Terminals and Components Thereof, 337-TA-524 (2004) – Won summary determination that the complainant lacked standing for respondent Ingenico in patent infringement case.

Certain Signature Capture Devices and Component Parts Thereof, and Systems That Employ Such Devices, 337-TA-504 (2003) – Represented respondent Ingenico in patent infringement case. Favorable settlement.

Certain Safety Eyewear and Components Thereof, 337-TA-433 (2000) – Represented complainant Bacou USA/Uvex in case involving infringement of utility and design patents and trade dress. Favorable settlement.

Post-Grant PTO Proceedings

Arista Networks, Inc. v. Cisco Systems, Inc., IPR2016-00303, -00309, IPR2015-00975, -00978 – Represented petitioner. Favorable final written decisions.

Symphony Health Solutions Corp. v. IMS Health Inc., CBM2015-0070, -00085, CBM2014-00188 – Represented patent owner. Cases terminated due to settlement.

Finisar Corp. v. Thomas Swan & Co. Ltd., IPR2014-001460, -00161, -00162, -00165 – Represented patent owner. Cases terminated due to settlement.

Microstrategy, Inc. v. Zillow, Inc., IPR2013-00034 – Represented petitioner. Final written decision holding certain claims unpatentable.

Other Litigation

Microsoft v. Vadem et al. (Delaware Court of Chancery 2012) – Represented Microsoft Corporation in a shareholder derivative suit, asserting claims of breach of fiduciary duties and self-dealing.

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