Garrard R Beeney

(The following information was supplied by the firm)

Garrard Beeney, co-head of the Firm’s Intellectual Property and Technology Group, is regularly recognized as a leading lawyer for his counsel to clients on intellectual property and licensing transactions and litigation matters around the world. IAM Patent 1000 lauds Mr. Beeney as “the person to connect with when you want to push the boundaries,” commenting that he is “one of the best in the business” and “a fine litigator with sound judgment and strong pragmatic instincts.” Peers report, “when there is something you can’t do, you send it to him.” Legal 500 reports that Mr. Beeney has unparalleled experience advising on the formation of patent licensing pools.

Mr. Beeney has handled patent and intellectual property matters before the U.S. Supreme Court, the International Trade Commission, the U.S. Patent Trademark Office, federal district and appellate courts, arbitrations in a variety of forums, and regularly advises on non U.S. litigation, particularly in the European Community. He has represented both plaintiffs and defendants in infringement actions and advises plaintiffs on patent selection in pre-suit due diligence. Mr. Beeney has also represented clients before U.S. and European competition law authorities, particularly at the intersection of intellectual property and competition laws.

Beyond litigation, Mr. Beeney’s work includes advising clients on FRAND, patent damages, licensing, monetization, and pool formation and multi-party licensing. He has expertise structuring, drafting and negotiating IP-intensive transactions, including in the context of licensing, joint ventures, monetization, divestitures and other corporate transactions. Mr. Beeney’s licensing experience expands beyond the U.S., including the European Union, Korea, Japan and China.

Clients commend Mr. Beeney for his collaborative approach to matters, as The American Lawyer recently noted, quoting BlackBerry’s counsel: “I don’t think I have ever worked with counsel that have worked as collaboratively on a litigation as big as this. They made it easy for us to be full partners in this endeavor.”

Mr. Beeney is a frequent speaker at IP, antitrust and legal forums and often contributes thought leadership pieces, particularly in the area of standard essential patents and world-wide licensing.

Representative Speaking Engagements

• Moderator, “SEPs & Mobile Communications,” Licensing Executives Society International’s Thought Leadership Program (2022)
• ​Moderator, “FRAND Futures,” IAM’s IPBC Global Conference (2022)
• Panelist, “FRAND Licensing: The Curious Incident of the LNG Concept,” Lexology Webinars – Licensing Negotiation Groups (2021)
• Panelist, “Handling Global SEP Disputes: Judicial Extraterritoriality, Injunctions, and Competition,” RPX’s Annual Spring Conference (2021)
• Panelist, “Patent Pools: How to Make Patent Pools Work for Both SEP Holders and Licensees,” European Commission webinar (2021)
• Panelist, “Sisvel v Haier: Leveling the Playing Field for Patent Owners and SEP Implementers,” Sisvel U.S. (2020)
• Panelist, “Options for FRAND determination,” IAM’s IPBC Connect conference (2020)
• Panelist, “How to Prepare a Patent Case for Trial: Tips from the Trenches,” American Intellectual Property Law Association Annual Meeting (2019)
• Moderator, “Licensing Practices in 5G Industry Segments” panel, ITU-NGMN Conference (2019)
• Moderator, “A Pooled Approach” breakout session, IAM’s IPBC Global conference (2018)
• Panelist, “Patent Monetization & Enforcement: Tales from the Trenches,” Columbia Tech Ventures (2017)
• Panelist, “Introduction to Standard-Essential Patent Pools,” Columbia Tech Ventures (2017)

Representative Publications
Mr. Beeney has been published in various journals and publications, as written and contributed chapters to several books, including:

• “Derivative Actions by Stockholders” Chapter, Business and Commercial Litigation in Federal Courts, Fifth Edition, Volume No. 1 (2021) (co-author with Brian T. Frawley, William B. Monahan and Jacob M. Croke)
• “Standard Essential Patent Licensing Antitrust and Patent Law: Crossroad or Intersection?,” les Nouvelles – Journal of the Licensing Executives Society, Volume LVI No. 1, March 2021.
• “United States” Chapter, The Intellectual Property and Antitrust Review, Fifth Edition (2020) (co-author with Renata Hesse).
• “United States” Chapter, The Intellectual Property and Antitrust Review, Fourth Edition (2019) (co-author with Renata Hesse).
• “United States” Chapter, The Intellectual Property and Antitrust Review, Third Edition (2018) (co-author with Renata Hesse).
• “Fed. Circ. Continues to Rein in PTAB,” Law360 Expert Analysis (2018).
• “United States” Chapter, The Intellectual Property and Antitrust Review, Second Edition (2017) (co-author with Renata Hesse).
•  ”Derivative Actions by Stockholders” Chapter, Business and Commercial Litigation in Federal Courts, Fourth Edition (March 2017).
• “Depositions” Chapter, Commercial Litigation in New York State Courts, Fourth Edition (October 2015).
• On the Merits: Current Issues in Competition Law and Policy (2005).

Professional Activities
Mr. Beeney has taught various trial advocacy courses, including serving as a member of the faculties of the National Trial Skills Program of the National Institute for Trial Advocacy and the Cardozo School of Law.

Public Service and Pro Bono Experience
Mr. Beeney’s public service activities include having served for more than a decade as the deputy mayor of Irvington, New York. He served as chairman of the board of Mercado Global, a non-profit organization working to improve the lives of impoverished artisans in Central America and is a member of the boards of Graham Windham and ProBono.net. He also regularly represents clients in pro bono litigation, including in a recent successful First Amendment trial and matters involving child adoptions in Arkansas and Nebraska in which he successfully argued issues before both State Supreme Courts.

SELECTED REPRESENTATIONS

Trial Experience
Mr. Beeney has been inducted as a Fellow of the American College of Trial Lawyers — an organization composed of preeminent members of the trial bar from the United States and Canada — and recognized as the leading trial lawyers’ organization in both countries. IAM calls Mr. Beeney “one of the best trial lawyers on the planet.” Mr. Beeney’s recent victories include:

• A successful trial for Ocado Group before the International Trade Commission concerning an ITC Section 337 investigation based on allegations of infringement of five patents. The Commission unanimously affirmed the Chief Administrative Law Judge’s ruling in Ocado’s favor on all claims and patents, finding three patents invalid and one not infringed (the fifth patent was withdrawn the day before trial).
• A unanimous verdict in favor of Columbia University in a two-week patent infringement jury trial against NortonLifeLock in the Eastern District of Virginia. A unanimous 8-person jury found each claim Columbia asserted to be infringed, found willful infringement, and awarded Columbia $185 million.
• A successful arbitration for Blackberry Limited in a dispute with Qualcomm Incorporated, in which Blackberry was awarded $940 million, for which Mr. Beeney was recognized as The Am Law Litigation Daily’s “Litigator of the Week.”
• A successful verdict for Stryker Corporation in a case before the U.S. Supreme Court that addressed the standard for awarding enhanced damages in patent infringement actions.
• MPEG LA, in a successful breach of patent license contract jury trial in New York State Court.
• MPEG LA, in a successful trial against Alcatel Lucent regarding digital compression, for which Mr. Beeney also was recognized as The Am Law Litigation Daily’s “Litigator of the Week.”
• Dyson PLC, in a successful patent infringement jury trial in Wilmington, Delaware.
• A successful verdict in a bench trial in a pro bono matter in the Northern District of Florida.
• A successful verdict after trial in the United States District Court for the District of Columbia.
• A successful jury verdict in the United States District Court for the District of Delaware for Philips Electronics.

Licensing Matters

• Multiple Patent Pools, in world-wide licensing of standard essential patents.
• Dolby, in various matters including world-wide licensing and matters involving its patent portfolio.
• InterDigital, in connection with its patent license with Samsung.
• Kodak, in patent licensing transactions relating to its digital imaging portfolio with LG, Samsung and others.
• Philips, in the formation of a consortium consisting of more than 20 companies and multiple license agreements to organize and monetize a patent portfolio related to the use of multiple standards in a product, rather than a license limited to one standardized technology. Mr. Beeney advised on all aspects. including IP and competition law.
• Skype, in its widely reported agreement with Facebook (U.S.) to make Skype products and services available on Facebook platforms.
• Valeant Pharmaceuticals, in its collaboration agreement with AstraZeneca (U.K.) under which Valeant was granted an exclusive license to develop and commercialize brodalumab.
• Implementers seeking to negotiate fair licenses on standard essential and other patents, including LG Electronics, BlackBerry, Panasonic and others.

Intellectual Property Litigation

• Cuozzo Speed Technologies LLC, before the U.S. Supreme Court, challenging the U.S. Patent and Trademark Office’s implementation of certain aspects of the America Invents Act.
• Dolby International AB, in patent infringement litigation involving Research in Motion (RIM) regarding patents covering an advanced method of digital audio compression which resulted in RIM executing a license.
• Dyson PLC, in a matter in several federal courts involving dual cyclone technology patents.
• Coordinating counsel (with others) to prevent importation of infringing knock-offs of Dyson’s bladeless fans.
• General Electric, LG Electronics, Mitsubishi Electric, Samsung Electronics, Thomson Licensing, Columbia University, Philips Electronics and Victor Company of Japan, in a patent infringement action involving a major PC manufacturer.
• Clients who are MPEG-2 and ATSC patent owners, in a patent infringement action—among the first patent infringement cases in the United States concerning the technology for digital television mandated by Congress—brought in the Southern District of New York against Haier America Trading, L.L.C., Haier Group Co. and HAIM L.L.C.
• Philips Electronics, in patent infringement cases in Minnesota and New York involving optical disc patents.
• IRT, TDF and others, in standard essential patent infringement litigation involving Dell and Hewlett-Packard.

Antitrust Litigation and Regulatory Matters

• Representation of clients in EC and U.S. DOJ investigations of licensing activities.
• Representation of clients seeking regulatory approval of certain IP licensing matters, including successful conclusion of applications for Business Review Letters from the DOJ and a comfort letter from the European Commission.
• The Financial Accounting Standards Board — the principal private sector organization for establishing financial accounting standards in the U.S. — and its governing body, the Financial Accounting Foundation, in an action brought by Silicon Economics, Inc. (SEI) relating to SEI’s patented method of financial accounting.
• MPEG LA, in litigation brought by its licensee, Nero AG, in the Central District of California alleging that MPEG LA had violated Section 2 of the Sherman Act in connection with the terms of, and MPEG LA’s conduct pursuant to, the MPEG-2, MPEG-4 Visual and AVC/H.264 licenses.

Additional representative clients include British Airways, British Petroleum, British Telecommunications, France Telecom, Glaxo Wellcome, Polygram Records, Sony Corporation and Toshiba Corporation.