Max Grant serves as trial counsel in patent infringement cases and provides strategic business counseling on intellectual property issues. He led Latham & Watkins’ Intellectual Property Litigation Practice from 2009-2014, a period during which the group more than doubled in size and won the Chambers USA Award for Excellence. The group’s strategic development and unique trial capabilities were featured in an article in The Recorder, an ALM publication. Mr. Grant has tried over 20 patent cases and is recognized as an experienced and innovative first chair trial lawyer.
- Named the 2016 District of Columbia IP Litigator of the Year by Managing Intellectual Property
- “A results-oriented attorney who delivers.”; Observers say “when he is speaking, it is with the authority and the weight of the law behind him.” – Chambers USA
- “One client observes that ‘he really impressed us and understood the bottom line, which is that the law is a tool for business.’” – Chambers USA
- “Tough, tenacious [and] recommended” in the ITC; is an “experienced first-chair litigator” with “an excellent track record in life science cases.” – The Legal 500 US
- Recognized three times with Innovative Lawyers Awards for work for C.R. Bard (2010), Cross Match Technologies (2012), and in building Latham’s IP group (2013) – Financial Times
- “Grant [is] a lawyer who is ‘cut from the finest cloth’. The global IP litigation co-chair, he is an ‘outstanding leader’ with exceptional organizational skills. His trial skills are widely admired: ‘His presentation is pristine and he has a background that sits well with the courtroom.’” – IAM Patent 1000
- “Top Washington IP Lawyer” – Washington Business Journal
Mr. Grant has tried eleven cases to verdict in the last four years, including a jury win in Delaware in October 2014 against Chinese telecom manufacturer ZTE. More recently, he won an en banc Federal Circuit argument, affirming issuance of an ITC exclusion order based on contributory infringement, as well as securing dismissal of a patent case in Texas against Acacia for Schlumberger after successfully arguing a motion to disqualify all in-house and outside counsel.
Mr. Grant also served as lead counsel in a victory for client C.R. Bard; after a six-week trial in the US District Court of Arizona, the jury found that W.L. Gore willfully infringed Bard’s patent, upheld the patent’s validity and awarded US$185 million in past damages. The trial court later enhanced the damages award, awarded attorney fees, as well as supplemental damages and a compulsory license. The total award is more than US$1.3 billion. The win was featured in a cover article in the November 2009 issue of The American Lawyer.
Mr. Grant joined Latham in 2002, after serving as Deputy Assistant Secretary of Defense. In 2005, he was appointed by the Secretary of Commerce to the Patent Public Advisory Committee, a nine-member board that advises the Director of the US Patent and Trademark Office on patent policy, and served a three-year term. Before attending law school, Mr. Grant served as an aide to Senator John McCain and as a Navy SEAL team leader. He is the co-inventor of two US patents.
Mr. Grant is admitted to practice before the Federal Courts of Appeals for the Federal, Sixth, Seventh and Eleventh Circuits, the Supreme Court, and numerous Federal District Courts and has extensive experience before the International Trade Commission (ITC).
Mr. Grant’s representative active matters include:
Cardionet v. Infobionics (D. Mass.): Lead trial counsel in four patent and trade secret case involving remote cardiac monitoring technology. Trial date not yet set.
Delphix v. Actifio (N.D. Cal.): (N.D. Cal.; D. Mass.; PTO): Lead counsel in multi-jurisdictional litigation relating to virtual storage and infrastructure for database systems: five defensive and two offensive patents in CA; two offensive patents in MA; 12 IPRs pending. Defensive case stayed, trial in offensive case anticipated for early 2017.
InterDigital v. ZTE (D. Del.): Lead trial counsel in one-week jury trial asserting three patents relating to 3G and WiFi wireless devices. October 2014 trial. Jury verdict that all asserted claims infringed and valid (damages bifurcated and pending). Lead counsel on Federal Circuit appeal.
Visual Memory LLC v. NVIDIA (D. Del): Lead counsel representing defendant in a patent infringement suit relating to programmable memory. Argued and won motion to dismiss under 35 USC § 101. Lead counsel on appeal to Federal Circuit.
RPost v. Constant Contact (E.D. Tex.): Lead counsel for national email marketing company in case brought by NPE. Trial date not set; motion to dismiss for lack of standing pending.
Mr. Grant’s prior representations include:
Acacia v. Schlumberger (W.D. Tex.): Lead counsel defending case brought by Acacia subsidiary on geographic modeling software used for oil exploration. Obtained a case dismissal based on a successful disqualification of all opposing counsel. Lead counsel on successful appeal to Federal Circuit affirming disqualification order.
Samsung v. NVIDIA (ITC; E.D. Va.): Lead trial counsel representing defendant in multi-jurisdiction suit. Trials held in the ITC (2015) and Richmond, VA (2016). In VA case, jury found that none of the asserted claims were infringed and that the sole asserted system claim was also invalid. Litigation subsequently favorably settled with no remedy against NVIDIA.
InterDigital v. Microsoft & Nokia (ITC): Lead trial counsel representing patentee asserting two patents relating to 3G wireless devices. Trial conducted January 2014. Initial determination finding violation issued in April 2015; finding later overturned by Commission.
Cross Match Technologies v. Suprema & Mentalix (Fed.Cir.): Lead appellate counsel and successfully argued an en banc rehearing that overturned a precedential panel decision relating to applicability of ITC exclusion orders based on induced infringement.
Schlumberger v. Baker Hughes (AAA Arb.): Co-lead trial counsel asserting four patents related to real time imaging of hydrocarbons in formation reservoirs. Conducted trial with team from Winston & Strawn. Case favorably settled for substantial payment after trial and before opinion.
Create Ads v. Endurance Int’l Gp. & Constant Contact (D. Del.): Lead counsel for companies sued by NPE. Case favorably settled after summary judgment motion for lack of patentable subject matter per 35 U.S.C. § 101 filed.
AthenaHealth v. CareCloud (D. Mass.): Lead counsel for cloud-based health care records management. All claims invalidated based on successful CBM petition to PTAB.
Monsanto v. DuPont & Pioneer Hi-Bred (D. Missouri): Lead trial counsel in 14-patent offensive case relating to automated genetic sampling methods for seeds, called “seed chipping.” Case favorably settled.
InterDigital v. Samsung, Nokia, & ZTE (ITC): Lead trial counsel representing patentee asserting four patents relating to 3G wireless, WiFi and LTE devices, against three major device manufacturers. Trial conducted February 2014.
Medivation v. Univ. Calif. Regents & Jung (Calif.): Lead trial counsel representing biotech patent holder in 4-week state court trial regarding licensing rights to novel, small-molecule drugs used to treat prostate cancer arising from sponsored research agreement. Disputed compound acquired by J&J for US$1 billion. Jury returned verdict in favor of Medivation in November 2013.
InterDigital v. Nokia, Huawei, & ZTE (ITC): Lead trial counsel representing patentee asserting seven patents relating to 3G wireless devices, including WCDMA and CDMA2000 capable mobile phones. Trial conducted February 2013.
Cross Match Technologies v. Suprema & Mentalix (ITC & E.D. Tex.): Lead trial counsel representing patentee against competitor involving proprietary biometric identification technologies (fingerprint scanners). ITC trial conducted March 2011, and Commission final determination issued exclusion order barring accused products from importation into the United States.
C.R. Bard v. W.L. Gore (D. Ariz.; Fed. Cir.): Lead trial counsel representing patentee in 6-week jury trial involving vascular grafts made of expanded teflon. Trial conducted in 2007. Jury verdict of willful infringement and US$185 million in past damages. On post-trial motions, damages doubled to US$371 million, awarded US$19 million in fees. With compulsory license fees, total award to date over US$1.3 billion. Trial featured in November 2009 issue of The American Lawyer.
Wavetronix v. Electronic Integrated Systems (D. Utah): Lead trial counsel for defendant in patent case involving radar technology for traffic monitoring. Verdict of non-infringement after 14 days of bench trial proceedings. Affirmed on appeal.
DuPont v. Heraeus Materials Tech. (D. Del.; D. Or.): Lead trial counsel for defendant in multi-jurisdictional case relating to silver paste technology used in solar panel manufacturing. Allegedly infringing product responsible for US$600 million in annual revenue. Case favorably settled.
Pioneer Hi-Bred (DuPont) v. Monsanto (D. Iowa): Lead trial counsel for defendant in case relating to genetic seed vigor enhancement. Case favorable settled for no value after 35 U.S.C. § 101 motion to dismiss argued.
Schlumberger v. Baker Hughes (AAA Arb.): Lead trial counsel asserting four patents related to downhole fluid optical analysis of hydrocarbons in formation reservoirs. Retained eight weeks before trial set. Case favorably settled on eve of trial.
Mayo Labs v. Prometheus Labs (Fed. Cir.; S. Ct.): Represented appellant patentee in landmark Supreme Court case regarding patentable subject matter. Case lost in Supreme Court.