Intellectual Property Case Study: TiVo Litigation
In 1997, a small technology company named TiVo changed the way people watch television by producing the first commercially available digital video recorder (DVR). The key ‘389 “Time Warp” patent allowed a TV program in progress to be viewed, paused, reversed, fast-forwarded or replayed, all while digitally recording another TV program – functionality soon considered a requirement by millions of viewers. The innovation was a success. Soon major companies incorporated TiVo’s technology into their products without permission.
Irell spent more than a decade successfully representing TiVo in David versus Goliath patent wars against many of the largest media companies in the world for infringing TiVo’s “Time Warp” patent. Irell’s quest to protect TiVo’s innovation included numerous cases across multiple district courts and the International Trade Commission, three trials, four trips to the Federal Circuit Court of Appeals, numerous settlements and voluntary licenses.
TiVo collected more than $1.7 billion through a series of verdicts and settlements, including over $600 million paid by EchoStar after a jury verdict and post-trial proceedings, $490 million paid by Motorola and Cisco, $215 million by AT&T, and $250 million plus future royalties by Verizon. The result demonstrated to start-ups, inventors, and venture capital that patented innovations can be protected against the largest corporations in the world. Irell then represented TiVo in numerous high-value multifaceted licensing deals and other intellectual property transactions. All told, Irell has now helped TiVo obtain several billion dollars in value for its pioneering innovations.
Litigation Case Study: Gilead Sciences
In 2011, Gilead Sciences acquired Calistoga Pharmaceuticals. Following the merger, the agent for Calistoga’s security holders, Shareholder Representative Services (SRS), sued alleging Gilead owed a milestone payment under the merger agreement related to Gilead's cancer-fighting drug Zydelig. SRS contended that Gilead owed nearly $100 million, including interest, by the time of trial.
Irell approached the case not only as a contract dispute, but also one about science. During trial, the team waded deep into drug science and regulatory requirements to convince the court that the milestone was only due when there was an approval for a first-line treatment of a recognized disease, and that this had not occurred.
After a week-long trial and extensive post-trial briefing, the Delaware Chancery Court issued an 80-page decision in Gilead’s favor. The plaintiffs appealed to the Delaware Supreme Court, and on December 12, 2017, in a 3-2 published decision, the court affirmed the trial victory on behalf of Gilead in Shareholder Representative Services v. Gilead Sciences, Inc.