Overview

The managing principal of Fish & Richardson's Washington, D.C., office, Lauren Degnan is a seasoned trial and appellate lawyer who handles high-stakes, high-risk intellectual property disputes – generally competitor-to-competitor matters – that often weave their way through a complex maze of courts and jurisdictions.

Lauren's experience in a wide variety of forums has given her the skills necessary to develop coordinated, sophisticated strategies that often result in securing fast, favorable outcomes for clients. 

Lauren's multifaceted trial experience includes regular appearances before:  

  • U.S. District Courts 
  • U.S. Court of Appeals for the Federal Circuit 
  • U.S. International Trade Commission 
  • Patent Trial and Appeal Board  

While Lauren has served as lead counsel in numerous complex patent infringement cases, she is equally adept at keeping her clients out of court. She has used her experience in patent infringement litigation and persuasive writing skills to help numerous clients avoid costly and protracted courtroom battles altogether. Her talent for successfully resolving cases both inside and outside the courtroom has contributed to her reputation as a trusted legal advisor whose clients value her ability to craft creative solutions for their most challenging legal problems. 

Lauren's clients include industry giants such as LG Energy Solution, Arista Networks, Microsoft, Raytheon, and Samsung, and she has deep experience with a wide variety of IP matters, including utility patents, design patents, registered trademarks, trade dress, trade secrets, breach of contract claims, post-grant proceedings (e.g., ex parte and inter partes review), and commercial litigation involving antitrust issues and breaches of fiduciary duties. 

Lauren has litigated cases involving computer software, networks, and peripherals; microprocessors; telecommunications equipment; lithium-ion batteries; 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. 

Advocacy 

Despite her busy practice, Lauren devotes time to mentoring young lawyers within Fish and encouraging women who are interested in STEM to pursue careers in the field. She credits her client Microsoft with giving her opportunities to argue in court early in her career. Now, as a seasoned litigator, she is devoted to helping young lawyers find similar early opportunities to advance their careers. 

Experience

Represented LG Chem and LG Energy Solution in multi-patent infringement disputes involving lithium-ion battery technology that is essential for the future of the electric vehicle industry. The cases ended in favorable settlements.

Strategically involved in a multibillion-dollar, highly complex patent-related antitrust and commercial litigation for a Fortune 10 consumer electronics company versus Qualcomm. The case included appearances in several venues, including the ITC and the USPTO, where dozens of IPRs were argued, and many were appealed to the Federal Circuit. The global, two-year battle eventually ended in a settlement.

At the appellate level, Lauren has an extraordinary record for obtaining IPR victories. Examples include decisions vacating and/or reversing IPR final written decisions based on erroneous claim constructions and the Board’s failure to apply KSR’s teachings faithfully. Another notable win is Arista Networks, Inc. v. Cisco Systems, Inc., Case No. 17-1525 (Fed. Cir. 2018), where the court vacated an IPR final written decision finding certain claims not proven unpatentable due to an erroneous claim construction and, in the cross-appeal, endorsed the PTAB’s long-standing position that assignor estoppel is not available in IPR proceedings and upheld the PTAB’s unpatentability decision for other claims.

Representative cases

Appellate

Raytheon Technologies Corp. v. General Electric Co., No. 20-1755 (Fed. Cir. 2021)—Successfully reversed IPR final written decision finding claims unpatentable because the relied-upon prior art was not enabled.

Appeal No. 20-1560 (Fed. Cir. 2021)—Successfully defended IPR final written decision finding claims unpatentable.

Appeal No. 19-1164 (Fed. Cir. 2020)—Successfully reversed and remanded IPR final written decision finding claims not proven unpatentable because the Board erred in finding a claim limitation would not have been obvious.

Appeal No. 19-1165 (Fed. Cir. 2020)—Successfully reversed IPR final written decision finding independent claims would not have been obvious, and vacated decision on dependent claims.

United Technologies Corp. v. General Electric Co., No. 18-1600 (Fed. Cir. 2019)—Successfully vacated IPR final written decision finding claims unpatentable due to erroneous claim construction.

Arista Networks, Inc. v. Cisco Systems, Inc., No. 17-1525 (Fed. Cir. 2018)—Successfully reversed and remanded IPR final written decision finding claims not proven unpatentable under erroneous claim construction and defended the Board’s decision that assignor estoppel does not bar IPR challenge.

Cisco Systems, Inc. v. Arista Networks, Inc., No. 17-2336 (Fed. Cir. 2018)—Successfully defended IPR final written decision finding claims unpatentable.

Arista Networks, Inc. v. Cisco Systems, Inc., No. 17-1313 (Fed. Cir. 2018)—Successfully vacated IPR final written decision finding claims not proven unpatentable.

Arista Networks, Inc. v. Cisco Systems, Inc., No. 17-2384 (Fed. Cir. 2018)—Successfully defended IPR final written decision finding claims unpatentable.

Virtual Solutions LLC v. Microsoft Corp., No. 13-1250 (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., No. 10-1311 (Fed. Cir. 2011)—Successfully defended judgment as a matter of law of noninfringement for defendant/cross-appellant BSC in patent infringement case involving stents.

Encyclopedia Britannica v. TomTom, Inc. et al., No. 09-1544 (Fed. Cir. 2010)—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., No. 09-1496 (Fed. Cir. 2010)—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., No. 04-1323 (Fed. Cir. 2005)—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., No. 04-1479 (Fed. Cir. 2005)—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.

Advanced Interactive Inc. v. Matsushita Elec. Corp. et al., No. 00-1491 (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., No. 00-1475 (Fed. Cir. 2001)—Successfully defended summary judgment of noninfringement for defendant/appellee Covad Communications in patent infringement case involving DSL transmission systems.

Brief of Amicus Curiae, Intellectual Property Owners Association, Return Mail, Inc. v. United States Postal Service and United States, No. 17-1594 (S. Ct.)

Brief of Amicus Curiae, Intellectual Property Owners Association, SAS Institute Inc. v. Matal et al., No. 16-969 (S. Ct.)

District court

Hantz Software, LLC v. Sage Intacct, Inc. (N.D. Cal. 2021) (J. Gilliam)—Representing defendants in multi-patent infringement case involving business method patents. Pending.

Acorn Semi, LLC v. Samsung Electronics Co., Ltd. et al. (E.D. Tex. 2019) (J. Gilstrap)—Representing defendants in multi-patent infringement case involving semiconductor fabrication technology. Pending.

LG Chem, Ltd. and Toray Industries, Inc. v. SK Innovation Co., Ltd. and SK Battery America, Inc.  (D. Del. 2019) (J. Connolly)—Represented plaintiffs in multi-patent infringement case involving lithium-ion battery technology. Favorable settlement.

SK Innovation Co., Ltd. v. LG Chem Ltd., LG Chem Michigan, Inc. and LG Electronics, Inc. (D. Del. 2019) (J. Connolly)—Represented defendants in patent infringement case involving battery technology. Favorable settlement.

SK Innovation Co., Ltd. v. LG Chem Ltd. and LG Chem Michigan, Inc. (D. Del. 2019) (J. Connolly)—Represented LG Chem in patent infringement case involving battery technology. Favorable settlement.

SK Innovation Co., Ltd. v. LG Chem Ltd., LG Chem Michigan, Inc. and LG Electronics, Inc. (D. Del. 2019) (J. Connolly )—Represented LG Chem in patent infringement case involving battery technology. Favorable settlement.

LG Chem, Ltd. and Toray Industries, Inc. v. Amperex Technology Ltd. (E.D. Mich. 2017) (J. Lawson)—Represented plaintiffs in multi-patent infringement case involving lithium-ion battery technology. Favorable settlement.

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)—Represented Intel in multi-patent infringement case involving flash memory. Favorable settlement.

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.

Encyclopedia 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 Lithium-ion Battery Cells, Battery Modules, Battery Packs, Components Thereof, and Products Containing Same, 337-TA-1181 (2019)—Represented complainants LG Chem and Toray Industries in patent infringement case. Favorable settlement.

Certain Pouch-Type Battery Cells, Battery Modules, and Battery Packs, and Products Containing Same, 337-TA-1179 (2019)—Represented LG Chem respondents in patent infringement case. Favorable settlement.

Certain Batteries and Electrochemical Devices Containing Composite Separators, Components Thereof, and Products Containing Same, 337-TA-1087 (2017)—Represented 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

SK Innovations Co. Ltd. v. LG Chem, Ltd., IPR2020-00982, -00987, -00991, -00992, -01036, -01239, -01240—Represented patent owner. Denial of institution.

LG Chem, Ltd. v. SK Innovations Co. Ltd.,  IPR2020-00657—Represented petitioner. Case terminated due to settlement.

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.

Testimonials

  • "Lauren was a rock for us. She managed a series of highly complex cases. And, she handled some very difficult cases. She has an excellent mind." – Client testimonial, Chambers and Partners, 2020
  • "Crucially, Fish can back up its trial victories at the Federal Circuit thanks to appellate specialist, Lauren Degnan." — Client testimonial, Chambers and Partners 2019

Experience

At the appellate level, Lauren has an extraordinary record for obtaining IPR victories. Examples include decisions vacating and/or reversing IPR final written decisions based on erroneous claim constructions and the Board’s failure to apply KSR’s teachings faithfully. Another notable win is Arista Networks, Inc. v. Cisco Systems, Inc., Case No. 17-1525 (Fed. Cir. 2018), where the court vacated an IPR final written decision finding certain claims not proven unpatentable due to an erroneous claim construction and, in the cross-appeal, endorsed the PTAB’s long-standing position that assignor estoppel is not available in IPR proceedings and upheld the PTAB’s unpatentability decision for other claims.

Professional associations

  • Vice Chair of Amicus Committee, Federal Circuit Bar Association
  • Amicus Committee, Intellectual Property Owners Association
  • Women in IP Network (WIN), D.C. Chapter
  • Women in Law Empowerment Forum, D.C. Chapter, Board Member (2012-2019), Co-Chair (2013-2015)
  • International Trade Commission Trial Lawyers Association
  • Women in Law Empowerment Forum, D.C. Chapter Board Member (2012-2019), Co-Chair (2013-2015)
  • International Trade Commission Trial Lawyers Association