Mark D. Selwyn

Wilmer Cutler Pickering Hale and Dorr LLP

Palo Alto

Patent litigation

As co-chair of WilmerHale's IP litigation practice, Selwyn represents clients such as Ancestry.com, DNA LLC, Apple Inc., Broadcom Ltd. and Intel Corp. An authority on standard essential patent law and FRAND licensing, he co-chairs the Sedona Conference working group on those issues.

"It's become increasingly evident over the past year that cases are becoming more intersectional, mingling patent and competition issues," Selwyn said. He declined to discuss his ongoing cases in detail, but a recent complaint he filed for Intel shows what he meant.

Intel broke from the standard model of patent infringement claims by suing an investment firm on allegations it is violating antitrust law by acquiring more than 1,000 technology patents and filing multiple infringement cases against the semiconductor company.

Wrote Selwyn in the complaint, "Intel brings this action to remedy the harms that it has already suffered from Defendant's violation of federal antitrust and state unfair competition laws and to prevent further harm to itself, the broader electronics industry, and U.S. consumers." Intel Corp. v. Fortress Investment Group LLC, 19-CV06856 (N.D. Cal., filed Oct. 21, 2019).

The complaint accuses Fortress and patent assertion entities it has acquired of dividing up patents into different portfolios, including strong patents and weak patents that defendants would not otherwise pay to license, to make it more expensive for defendants to resolve cases. The case is in its early stages; a hearing on Fortress' motion to dismiss is set for April, Selwyn said.

In a major confrontation between leading genetic testing competitors Ancestry.com and 23andMe Inc., Selwyn in 2018 obtained a favorable ruling for Ancestry from U.S. District Judge Edward M. Chen of the Northern District on its rival's claim for alleged infringement of a key patent. 23andMe Inc. v. Ancestry.com DNA LLC, 18-CV02791 (N.D. Cal., filed May 11, 2018).

Selwyn put it simply in his dismissal motion, contending the asserted patent "recites nothing more than the abstract and non-inventive steps of collecting DNA from two people, comparing that DNA, and determining a relationship using a naturally-occurring phenomenon."

Chen agreed, granting part of Ancestry's motion to dismiss. He concluded that one of 23andMe's patents regarding determining family members via similarities in DNA samples is patent-ineligible subject matter.

A U.S. Court of Appeals for the Federal Circuit panel affirmed Chen's ruling.

Other aspects of the case remain in litigation in the Northern District even as settlement talks over the patent in question go forward, according to the court docket.

-- John Roemer