Andrei Iancu

Andrei Iancu focuses on intellectual property litigation and counseling. He previously served as the undersecretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office (USPTO), a position to which he was confirmed unanimously by the Senate.

As head of the USPTO, Andrei oversaw one of the largest IP offices in the world, an agency with approximately 13,000 employees and an annual budget of more than $3.5 billion. He also served as the administration’s principal advisor on domestic and international IP issues. Among Andrei’s initiatives as director was the creation of the National Council for Expanding American Innovation, a group of industry, academia and government leaders tasked with helping the USPTO develop a comprehensive national strategy to broaden participation in the innovation ecosystem demographically, geographically and economically.

Prior to his government service, Andrei spent two decades at Irell and served as the firm’s managing partner from 2012 to 2018, the maximum allowable tenure. In his time at the firm, he represented clients in a variety of high-profile matters in district courts, the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission and the USPTO. In addition to litigation, Andrei was involved in all other aspects of IP practice, including prosecution, due diligence and licensing. He represented plaintiffs and defendants across the technical and scientific spectra, including those associated with medical devices, genetic testing, therapeutics, the internet, telephony, TV broadcasting, video game systems and computer peripherals.

Throughout his career, Andrei has been widely recognized for his work, earning accolades from publications including Chambers USA, Intellectual Asset Management, Managing IP, Daily Journal, California Lawyer, Los Angeles Business Journal, Legal 500, and many others. Most recently, he was inducted into the IAM Hall of Fame by Intellectual Asset Management and received the “Excellence Award” from American Intellectual Property Law Association (AIPLA). In 2019, Andrei received the “IP Champion Award” from the Intellectual Property Owners Education Foundation for “his extraordinary leadership in advocating for the value of intellectual property to stimulate the progress of innovation.” Andrei also received the 2020 IEEE-USA “Award for Distinguished Public Service” for “his achievement of restoring balance and confidence in the U.S. patent system.”

In 2021, Andrei co-founded the Renewing American Innovation Project at the bipartisan Center for Strategic and International Studies (CSIS). In 2022, he also co-founded the bipartisan Council for Innovation Promotion (C4IP). He previously taught patent law at UCLA School of Law, and he is a sought-after speaker and writer on issues related to IP and innovation.

Prior to law school, Andrei was an engineer at Hughes Aircraft Co. where he received several honors including the “Malcolm R. Currie Innovation Award.” He is still licensed as a Professional Engineer in California.

Experience

Kite Pharma v. Sloan Kettering Institute for Cancer Research (PTAB). Represented patent owner Sloan Kettering Institute for Cancer Research and its exclusive licensee, Juno Therapeutics, a clinical-stage biotechnology company developing cellular immunotherapies for the treatment of cancer. Kite Pharma petitioned for inter partes review (IPR), seeking to invalidate all claims of U.S. Patent No. 7,446,190, titled “Nucleic Acids Encoding Chimeric T Cell Receptors.” In a complete victory for Irell’s clients, the Patent Trial and Appeal Board (PTAB) upheld the validity of all claims of the patent in a December 2016 final written decision.
MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc. (C.D. Cal.). Represented B/E Aerospace in defense of a patent infringement suit brought by MAG Aerospace Industries alleging infringement of three patents related to vacuum toilets used on aircraft. After a successful claim construction ruling, three summary judgments of noninfringement were granted in favor of B/E Aerospace, eliminating all of MAG's infringement claims. The U.S. Court of Appeals for the Federal Circuit affirmed in a unanimous precedential decision, after a hearing at which Andrei argued on B/E’s behalf.
B/E Aerospace, Inc. v. MAG Aerospace Industries LLC (PTAB). Represented B/E Aerospace in three IPRs filed against a competitor in the field of aircraft water and waste systems. The USPTO invalidated all three of MAG’s patents, concluding that they were obvious based on multiple prior art references.
Juno Therapeutics Inc. et al. v. Novartis Pharmaceuticals Corp. et al (E.D. Penn.). Represented Juno in a patent and contract dispute surrounding chimeric antigen receptor (CAR T-cell) therapies for the treatment of certain forms of cancer. The case settled favorably after several years of litigation, with Juno receiving upfront and milestone payments from Novartis, as well as ongoing royalties.
Ariosa Diagnostics, Inc. v. Sequenom, Inc. (N.D. Cal.). Represented Ariosa Diagnostics in patent litigation against Sequenom. On Ariosa’s early summary judgment motion, the court invalidated Sequenom’s patent because it attempted to cover a natural phenomenon. The decision gave Ariosa a complete victory, allowing the diagnostics company to continue selling its popular Harmony™ Prenatal Test – an affordable, highly accurate, non-invasive blood test to determine fetal chromosomal abnormalities. This decision was affirmed by the Federal Circuit in a precedential opinion.

Motorola Mobility Inc. v. TiVo Inc./ TiVo Inc. v. Cisco Systems Inc. (E.D. Tex.). Represented TiVo Inc. in patent litigation over DVR technology against Motorola Mobility and Cisco Systems. Shortly before the start of trial, Motorola and Cisco agreed to pay $490 million to TiVo to resolve the litigation.
TiVo v. Verizon (E.D. Tex.). Represented TiVo in a patent infringement suit against Verizon accusing the company of infringing three of TiVo's DVR technology patents. Shortly before the start of trial, Verizon agreed to provide TiVo with total compensation worth at least $250.4 million.
TiVo v. AT&T (E.D. Tex.). Represented TiVo in a suit against AT&T, alleging that AT&T's U-verse products and services infringed three of TiVo's patents covering DVR technology. AT&T launched a counter-suit in California accusing TiVo DVRs of violating three AT&T patents. Just days before a trial on TiVo's patents, AT&T agreed to pay TiVo a minimum of $215 million, plus additional fees in case AT&T's DVR subscriber base exceeds certain levels.
TiVo Inc. v. EchoStar Communications, Inc. (E.D. Tex.). Represented TiVo in a seven-year patent infringement suit related to pioneering digital video recorder (DVR) technology that resulted in awards for TiVo totaling more than $104 million in damages, interest, sanctions and attorneys' fees. The victories included a contempt order which was affirmed by the Federal Circuit and, ultimately an additional $500 million settlement.
St. Jude Medical v. Access Closure, Inc. (W.D. Ark.). Represented St. Jude Medical in a patent case alleging infringement of St. Jude's patents relating to vascular closure devices. The jury returned a verdict of willful patent infringement and awarded St. Jude $27.1 million in damages.
Net2Phone v. eBay and Skype (D.N.J.); eBay v. IDT and Net2Phone (W.D. Ark.). Represented eBay and Skype in several patent infringement lawsuits related to internet communications, including VoIP (voice over internet protocol) and calling card technology. Net2Phone first filed suit in New Jersey. eBay subsequently filed suit in Arkansas against Net2Phone and its parent IDT. Although filed two years later, eBay's case in Arkansas was scheduled for trial well before Net2Phone's case in New Jersey. Both cases settled successfully shortly before trial.
Peer Communications v. eBay and Skype (E.D. Tex.). Represented defendants eBay and Skype in a patent infringement suit related to internet communications, including VoIP (voice over internet protocol). The plaintiff was a subsidiary of Acacia Research Corp. After claim construction, the district court entered judgment for eBay and Skype based on patent invalidity and dismissed the case with prejudice. The judgment was affirmed by the U.S. Court of Appeals for the Federal Circuit, where Andrei argued on eBay and Skype's behalf.
Immersion Corp. v. Sony Computer Entertainment (N.D. Cal.). Represented Immersion in a patent infringement suit related to tactile feedback technology for computer simulations. A jury found all of Immersion's asserted claims to be valid and infringed and awarded Immersion $82 million in damages.
Grayzel v. St. Jude Medical (D.N.J.). Represented defendant St. Jude Medical in a patent infringement suit related to vascular closure devices. The district court found all asserted claims to be invalid and dismissed the case in St. Jude's favor. The judgment was affirmed by the U.S. Court of Appeals for the Federal Circuit, where Andrei argued on St. Jude's behalf.
Edwards Lifesciences v. St. Jude Medical (C.D. Cal.). Represented defendant St. Jude Medical in a patent infringement suit on four patents related to annuloplasty rings and the treatment of animal valves for implantation in humans. The case was successfully settled after several wins by St. Jude on summary judgment.
Xerox v. Hewlett-Packard (W.D.N.Y.). Represented defendant Hewlett-Packard in a number of complex cases related to printing technology. The parties settled after a district court found on summary judgment that Hewlett-Packard does not infringe a Xerox patent.
Michelson v. Wright Medical Technology, Inc. (C.D. Cal.). Represented plaintiff Michelson in a breach of contract case related to technology on spinal implants. The case settled favorably.

News

Honors & Awards

Selected to Lawdragon 500 Leading Litigators in America (2022)
Received the Paul Michel Award, IPWatchdog (2022)
Selected as one of the “Legal Visionaries” by the Los Angeles Times (2021-2022)
Listed as a “Notable Practitioner” in Managing Intellectual Property’s IP Stars (2021-2022)
Inducted into the IAM Hall of Fame by Intellectual Asset Management (2021)
Honored with the 2020 IEEE-USA “Award for Distinguished Public Service” for “his achievement of restoring balance and confidence in the U.S. patent system” (2021)
Received the “Excellence Award” from the American Intellectual Property Law Association (2020)
Selected to the Southern California Super Lawyers list (2008-2018, 2023)
Named one of the “50 Most Influential People in IP” by Managing IP, recognized for “having changed the mood at the USPTO” (2018-2020)

Received the “IP Champion Award” from the Intellectual Property Owners Education Foundation for “his extraordinary leadership in advocating for the value of intellectual property to stimulate the progress of innovation” (2019)
Selected as one of BTI’s “Client Service All-Stars” (2017)
Recognized as one of the “Most Influential Intellectual Property Lawyers in Los Angeles” by the Los Angeles Business Journal (2017)
Named an “IP Star” by Managing Intellectual Property (2013-2017)
Honored as “Lawyer of the Year” for firms with 75-125 attorneys by the Los Angeles Business Journal (2016)
Named to the California “Top 100 Attorneys” list (2011-2014) and among the “Top IP Litigators” by the Daily Journal (2008, 2010-2017)
Selected as one of the “Top 100 Southern California Super Lawyers” (2014)
Received the “California Lawyer Attorney of the Year” (CLAY) award by California Lawyer magazine (2013)
Awarded the 36th Annual Rossman Award from the Patent and Trademark Office Society (2009)
Named to the “Top 20 California Attorneys Under 40” list by the Daily Journal (2006)
While in private practice, consistently recognized as a leading individual for intellectual property and patent law by Chambers USA, The Legal 500, International Asset Management and The Best Lawyers in America, among others. Described in Chambers USA as “enormously sharp and strategic,” “a brilliant lawyer,” and “really hard-working – a thorough and creative lawyer.” In International Asset Management’s IAM Patent 1000, he was described as “whip-smart and articulate,” “so accomplished at presenting to a judge and jury,” and “tak[ing] a common-sense approach to dispute resolution and is an extremely pleasant person too.”

Publications

“Banning Non-Compete Agreements Hurts US Companies and Workers,” The Hill, co-author (March 23, 2023)
“China Wants to Replace the U.S. As the World Leader in Science,” Pittsburgh Post-Gazette, co-author (February 13, 2023)
“Opinion: Protect the Value of American Invention,” Deseret News, co-author (November 12, 2022)
“Biden’s Cancer Moonshot Will Miss Without Intellectual Property,” The Hill, co-author (November 9, 2022)
“Scapegoating Patents Won't Lower Drug Prices,” Bloomberg Law, co-author (October 17, 2022)

“To Get More Women And Minority Inventors, We Need Data,” International Business Times, co-author (May 29, 2022)
“America's 21st Century Sputnik Moment,” RealClear Policy, co-author (April 14, 2022)
“SEP Draft Policy Imperils US Investment In Innovation,” Law360, co-author (April 6, 2022)
“The Solution to Chinese Courts' Increasingly Aggressive Overreach,” RealClear Policy, co-author (March 30, 2022)
“Lawmakers Want to Weaken U.S. Patents That Made New Anti-COVID Pills Possible. We Should Do Everything Possible to Protect Them,” Fortune, co-author (March 4, 2022)
“The Shot Heard around the World: The Strategic Imperative of U.S. Covid-19 Vaccine Diplomacy,” Center for Strategic & International Studies Report, co-author (November 17, 2021)
“Why Does the FDA Want to Stop Improving Medicines via Patent ‘Areas of Concern’?” STAT, co-author (November 8, 2021)
“Biden Administration Should Preserve Strong Patent Protection for Standardized Technology,” RealClear Policy, co-author (November 3, 2021)
“Patent ‘Holdouts’ Are Sapping U.S. Innovation | Opinion,” Newsweek (October 18, 2021)
“U.S. Intellectual Property Is Critical to National Security,” New York Law Journal, co-author (July 6, 2021)
“No Evidence That Patents Slow Access to Vaccines,” STAT (April 13, 2021)
“The Role of the Courts in Shaping Patent Law and Policy,” Berkeley Technology Law Journal (Vol. 34:333, 2019)
“Indefiniteness In Inter Partes Review Proceedings,” Journal of the Patent & Trademark Office Society (March 2016)
“2015 Patent Reform: Is It Happening?” Westlaw Journal Intellectual Property, co-author (October 14, 2015)
“Unpack Inter Partes Review's First Review,” Daily Journal, co-author (April 10, 2015)
“A Bit of a Muddle on Abstract-Idea Patents,” The National Law Journal, co-author (September 9, 2013)
“Inter Partes Review is the New Normal: What Has Been Lost? What Has Been Gained?” AIPLA Quarterly Journal, co-author (Fall 2012)
“Challenging Validity of Issued Patents Before the PTO: Inter Partes Reexam Now or Inter Partes Review Later?” Journal of the Patent & Trademark Office Society, co-author (Summer 2012)
“Drafting Around Downstream Patent Exhaustion,” The Recorder (June 2012)
“Toward Streamlined Patent Litigation: Will Early Disclosure of Damages Improve the System?” Daily Journal (February 2012)
“Post-Issuance Proceedings in the America Invents Act,” Journal of the Patent and Trademark Office Society (February 2012). This article was cited by The Honorable Timothy B. Dyk and Samuel F. Ernst, Scope note, 7 Bus. & Com. Litig. Fed. Cts. § 86:1 (3d ed., 2012).
“It’s Finally Time to Modernize Our Patent System,” Daily Journal (July 2011)
“Real Reasons the Eastern District of Texas Draws Patent Cases – Beyond Lore and Anecdote,” SMU Science and Technology Law Review (Spring 2011)
“Patent Prosecution Pitfalls: Perspectives From The Trenches Of Litigation,” Journal of the Patent & Trademark Office Society, co-author (Summer 2010)
“Machines and Transformations: The Past, Present, and Future Patentability of Software,” Northwestern Journal of Technology and Intellectual Property (Spring 2010). This article was “judged one of the best law review articles related to patent law” in 2010, and therefore selected for inclusion in Patent Law Review published by Thomson Reuters (West).
“Redefining Prior Art Under Proposed Patent Reform Measures,” ALM's Patent Strategy and Management Journal (in two parts, June and July 2008)
“Code on Disks and Hat Tricks - Is Computer Software on a Medium Really Patentable?” Journal of the Patent and Trademark Office Society (February 2008). This article received the 36th Annual Rossman Award for “the greatest contribution to the fields of patents, trademarks and copyrights” in the Journal during 2008.
“The Patent Reform Act of 2007: Attempting to Modernize the U.S. Patent System,” Federal Bar Association Newsletter (Winter 2008)
“Balancing the Four Factors in Permanent Injunction Decisions: A Review of Post-eBay Case Law,” Journal of the Patent and Trademark Office Society (May 2007)
“A Two-Track Approach to the Doctrine of Equivalents in Patent Law: Responding to Hilton Davis,” 35 Jurimetrics J. 325 (1995)

Speaking Engagements

“Can America Win the AI Race? The Key Role of Intellectual Property Rights with Andrei Iancu,” The Vivek Show podcast (May 9. 2023)
“The Innovation Race: IP and U.S. Global Leadership, China and Beyond,” 2023 IP Awareness Summit (May 2, 2023)
“CSIS Renewing American Innovation Celebrates World IP Day,” Center for Strategic and International Studies webinar (April 27, 2023)
“Impact of Changing IP Policy on the Innovation Ecosystem,” Stanford Byers Center for Biodesign (April 10, 2023)
“IP in the AI Era: Impact and Challenges,” BPIP Annual Conference (March 20, 2023)
“The Impact of Artificial Intelligence on U.S. Economic and National Security,” Artificial Intelligence Masters (March 8, 2023)
“What to Know If It’s Your First Rodeo in Patent Monetization,” AUTM Annual Meeting (February 22, 2023)

“Is China Set to Pass the US as the World’s Lead Innovators?” The Lars Larson Show (November 15, 2022)
“Competition and Innovation Policy for Tomorrow,” The Federalist Society’s National Lawyers Convention (November 10, 2022)
“The Law and US Global Competitiveness: A Conversation with Andrei Iancu,” International Legal Finance Association’s Annual Conference (October 24, 2022)
“Patents, High-Tech, and the Startup Nation: An Inside Look at the Changing Landscape,” American Technion Society (September 14, 2022)
“Where Do We Go From Here on Patent Eligibility After American Axle?” IPWatchdog Live (September 12, 2023)
“Save the Inventor: Fighting for Invention and Innovation – Past, Present, and Future,” Inventing America Conference (July 26, 2022)
“Developments in Intellectual Property Regulation,” Société de Chimie Industrielle (July 20, 2022)
“Intellectual Property: A Key Drive for Competitiveness of the US Economy,” Rutgers Professional Science Master’s Program (June 21, 2022)
“The Future of Patents in a Conscious-Led Economy,” National Academy of Inventors (June 14, 2022)
“View from the Pantheon,” IPBC Global 2022 Conference (June 13, 2022)
“The United States, China, IP: The New Cold War?” 20th Annual Rocky Mountain Intellectual Property & Technology Law Institute (June 2, 2022)
“From the University to the Market: Why IP Saves Patients’ Lives,” Keynote speaker, Los Angeles Bioscience Ecosystem Summit (May 26, 2022)
“The Never-Ending Fight Over What is Fair, Reasonable & Non-Discriminatory (FRAND),” IPWatchdog Patent Litigation Masters (May 23, 2022)
“Trade Secrets in the IP system: Confidentiality and its Limits,” Keynote speaker, WIPO Symposium on Trade Secrets and Innovation (May 23, 2022)
“Innovation Policy: Using Government Regulation to Spur Innovation,” USC Gould School of Law Intellectual Property Institute (May 10, 2022)
“18th Annual IP SpringPosium Conference,” Keynote address, Georgia Intellectual Property Alliance (April 29, 2022)
“The Role of IP in Facilitating Global Development and Production of COVID-19 Vaccines and Therapeutics,” Keynote speaker, Center for Strategic & International Studies (April 27, 2022)
“Draft SEP Policy Statement,” The Federalist Society (March 14, 2022)
Gave hundreds of speeches and keynote addresses in his role as USPTO director. They can generally be found at www.uspto.gov.
- One of his speeches, “The Future Keeps Coming,” received the 2020 Cicero Speechwriting Award in two separate categories (Public Policy and Technology). Another, “Innovation and Opportunity,” received an honorable mention.
Spoke at dozens of universities in 2020-2021, including students, faculty and tech transfer offices.
“The Firm,” Bloomberg Big Law Business Summit - West (2016)
“Untangling the Changing World of Section 101: Solving the Patentable Subject Matter Conundrum,” ACI 4th Annual Paragraph IV Disputes Master Symposium (2016)
“New Litigation Scenarios After Akamai: Fact Pattern Hypotheticals,” Intellectual Property Owners Association (2015)
“After Teva: How Will Patent Litigation Change?” Intellectual Property Owners Association (2015)
“Law 525 - Patent Intensive,” UCLA School of Law (adjunct professor)
“America Invents Act,” Patent Nuts & Bolts Workshop (2014)
“Patentable Subject Matter: Something More Than Just a Phenomenon,” Orange County Bar Association Intellectual Property & Technology Law Section Meeting (2014)
“Causal Nexus in Patent Remedies After Apple v. Samsung,” Intellectual Property Owners Association (2013)
“Intervening Rights After Marine Polymer: Where Do Things Stand?” Intellectual Property Owners Association (2012)

Professional Activities

Chair, UCLA Technology Development Group (TDG) Board of Directors