Overview
The emergence of Internet of Things (IoT) technology and patents, coupled with the growing number of IoT companies and business segments, has given rise to novel issues, new competitors and a fresh battleground for IoT sector participants. While consumers benefit from IoT’s integration of many distinct technologies, a host of patent- and technology-related issues affect the development and adoption of IoT standards and devices, and companies increasingly face licensing and privacy challenges that lead to patent litigation.
Companies operating within the IoT sector turn to Ropes & Gray to help protect and monetize their IP and technological assets and maintain their competitiveness in this rapidly evolving and growing global market. We serve clients in a wide range of industries, including automotive, software, semiconductor, hardware, private equity, telecommunications, health care, information technology, data, consumer products and manufacturing. We represent:
- Technology companies that invent, manufacture, service or sell devices within the IoT supply chain
- Companies that consume devices and services within the IoT supply chain
- Investors and lenders that buy, sell, license and finance these organizations
What We Offer
Litigation and Enforcement
- Complex, multiparty patent infringement litigations through trial
- Dispute resolution through arbitration, mediation and other alternative dispute resolution proceedings
- Appellate advocacy relating to IP rights, drawing on our experience with more than 100 appeals before the Federal Circuit
- Patent Trial and Appeal Board (PTAB) proceedings, including Inter Partes review, post-grant review, Ex Parte re-examination and covered business method proceedings
- Litigation involving claims of trademark and trade dress infringement, copyright and design patent infringement, false advertising and unfair competition, and violations of the right of publicity
- Section 337 cases before the International Trade Commission
Strategic Transactions
- IP licensing for complex technological assets
- Structuring and operationalizing mergers, acquisitions and joint ventures
- Commercial agreements, including supply, manufacturing, distribution, development, confidentiality, consulting, collaboration, outsourcing and other service arrangements
- Transactions involving heavily regulated industries in which personal and other data must be handled in accordance with varying local, national, and transnational privacy and data security mandates
Advice and Counseling
- Patent portfolio evaluation and strategy
- Patentability and freedom-to-operate analyses
- Patent invalidity/non-infringement opinions
- European oppositions and evocation proceedings
- Privacy and cybersecurity compliance, incident preparedness, and response
Experience
- Emerson Electric v. SIPCO, LLC (N.D. Ga., PTAB, Fed. Circ., ITC) – Representing Emerson Electric in a 10-patent litigation concerning Emerson’s Smart Wireless Products, as well as multiple proceedings at the PTAB and related appeals at the Federal Circuit. We are also representing Emerson in a related ITC investigation.
- SIPCO, LLC v. RAB Lighting Inc. (D.N.J) – Represented RAB Lighting in a 6-patent lawsuit relating to wireless communications for lighting systems. Settled favorably for RAB Lighting.
- Blue Spike, LLC v. Roku, Inc. (D. Del.) – We represent Roku in a patent infringement suit concerning five patents related to secure computer servers, trustworthy transactions and memory protection processes across Roku’s smart TV products.
- Affinity Labs of Texas, LLC v. Samsung Electronics (E.D. Tex., W.D. Tex., N.D. Cal., PTAB, Fed. Cir.) – We represented Samsung in a multi-defendant patent infringement case alleging infringement of patents involving wireless delivery of media to a device and wireless communication with a second device, including over Bluetooth. Secured wins at the PTAB and on appeal, with all challenged claims of three patents affirmed unpatentable.
- NXP Semiconductors USA, Inc. v. France Brevets, SAS et al. (N.D. Cal.) – Represented NXP Semiconductors in a patent infringement action relating to near-field communication technology.
- Allure Energy, Inc. v. Honeywell International Inc. (W.D. Tex.) – We defended Honeywell in a patent infringement and false advertising litigation involving Internet-of-Things technology, specifically a smart thermostat.
- Clean Energy Management v. SmartThings, Inc. (E.D. Tex) – As litigation counsel for SmartThings, we obtained an early dismissal in a patent infringement litigation concerning mesh network technology (e.g., ZigBee). We settled the matter favorably on behalf of Smart Things.
Our experience includes representing or advising:
- TPG Capital in its stock acquisition of Wind River Systems, a provider of real-time operating systems in the Internet of Things sector, from Intel Corporation. Ropes & Gray’s intellectual property team assisted with legal due diligence of Wind River, including complex issues around IP shared or otherwise used by both Wind River and the larger Intel business. As part of the transaction, Ropes & Gray assisted with the negotiation and drafting of IP carve-out documents, including transition service, licensing and collaboration agreements.
- Bain Capital and The Blackstone Group in the sale of The Weather Company's web properties, weather.com, Weather Underground, The Weather Company brand and WSI, its global business-to-business brand. The combination of technology and expertise from the two companies will serve as the foundation for the Watson IoT Cloud Platform, building on a $3 billion commitment IBM made in March 2015 to invest in the Internet of Things. The deal extends the scale and capability of IBM’s cloud data services platform and expands The Weather Company’s enterprise services capabilities and consumer reach to a global scale.
- Advocate Aurora Health Care in a joint venture with Foxconn to deliver a new model of preventative care through a digital wellness platform that consolidates health, medical, genomics, environmental and wearable IoT device data and utilizes predictive analytics and AI machine learning to enable personalized health care solutions.
- Thoma Bravo in its acquisition of Bomgar, a leader in secure access solutions, from TA Associates. Bomgar helps businesses improve productivity and security by enabling secure, controlled access to any system or device, anywhere in the world.
- Eli Lilly in a strategic collaboration with leading China internet company Tencent and online health care professional community DXY to develop an integrated diabetes patient care program.Known as the Lilly Connected Care Program (LCCP), it will enable patients and health care professionals (HCPs) to better manage diabetes by utilizing internet technology, education and services to support their treatment goals. This is the first collaboration in China that involves a multinational pharmaceutical company (Eli Lilly and Company), an internet technology company (Tencent), and an HCP platform company (DXY). LCCP diabetes patients are provided an advanced blood glucose monitoring device, educational tools and professional patient care services, while physicians and caregivers are provided real-time, accurate information from their patients.