Marcia Sundeen, a retired partner in Goodwin’s IP Litigation Practice, has the experience and advocacy skills that clients seek when their critical intellectual property assets are at issue. With more than 25 years of experience crafting litigation strategies that have facilitated client victories before U.S. District Courts and the International Trade Commission (ITC), Ms. Sundeen is an accomplished litigator whom a client describes as a “terrific lawyer” who “does great work” (Chambers USA). She has been recognized as a Washington, D.C. “IP Star” by Managing Intellectual Property (2014, 2015), named a Washington, D.C. Super Lawyer (2013-2016), and named by U.S. News – Best Lawyers as one of the best “Litigation- IP” lawyers in Washington, D.C. (2015). She is currently ranked in the first tier in the D.C. Metro Area in the area of "Litigation" by IAM 1000 – The World's Leading Patent Practitioners, which notes that “she is a critically acclaimed pro who understands the unwritten code governing interactions with administrative law judges and ITC staff.” Ms. Sundeen is also ranked as a leading individual by Chambers Global and Chambers USA in the area of “International Trade: Intellectual Property (Section 337)" (2010-2018). Ms. Sundeen has also represented clients before numerous district courts and before the U.S. Patent and Trademark Office in re-examinations and inter partes reviews.
Ms. Sundeen, a former attorney at the ITC, is one of the nation’s leading ITC attorneys and has an insider’s understanding of the Commission’s culture and an in-depth knowledge of the substantive and procedural complexities of Section 337 ITC actions. She is a former president of the ITC Trial Lawyers Association and a co-author and editor of the treatise on Section 337, Unfair Competition and the ITC (2012-2015). Realizing the advantages to be derived from this level of experience and expertise, numerous clients have selected Ms. Sundeen to act as lead counsel in their ITC actions, and she has been invited to speak at ITC-related conferences worldwide.
Experience
Beyond litigation, Ms. Sundeen advises clients on global patent enforcement and represents clients on customs matters and before the Office of the U.S. Trade Representative. She has authored a number of legal and technical publications, and is a co-inventor on U.S. Patent No. 4,293,719.
Representative Matters
- MCM Portfolio LLC v. Hewlett-Packard Co. (Fed. Cir.). Successfully represented Hewlett-Packard in an appeal from an inter partes review where HP was the petitioner and the patent owner challenged the constitutionality of the inter partes review statute.
- Certain Laser Abraded Denim, 337-TA-930. Lead counsel for Gap, Inc. in defending its products from charges of patent infringement based on six patents relating to methods for treating denim. Case settled.
- Certain Optical Disc Drives, 337-TA-897. Lead counsel for Lenovo in defending its computers from patent infringement claims relating to optical disc drives. Case was summarily terminated.*
- Certain Computers and Computer Peripheral Devices, 337-TA-841. Lead counsel for Hewlett-Packard in defending its computers, laptops and printers from claims of patent infringement made by Technology Properties Ltd., LLC, concerning patents directed to memory card readers.*
- Certain Electric Fireplaces, Components Thereof, and Manuals for Same, Processes for Manufacturing or Relating to Same, and Products Containing Same, 337-TA-826 and Certain Electric Fireplaces, Components Thereof, Manuals for Same, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same, 337-TA-791. Lead counsel for Jason Yue in defending against claims of trade secret misappropriation and breach of contract.*
- Certain Devices with Secure Communication Capabilities, Components Thereof, and Products Containing Same, 337-TA-818 and 337-TA-858. ITC counsel for a leading computer, mobile device and media player company in defending against claims of patent infringement brought by VirnetX, Inc.*
- Certain Digital Photo Frames and Image Display Devices and Components Thereof, 337-TA-807. Represented Sony in defending against claims of patent infringement by Technology Properties Ltd., LLC.*
- Certain Handheld Electronic Computing Devices, 337-TA-769. Represented Barnes & Noble in defending its NOOK eReader products from claims of patent infringement made by Microsoft concerning various hardware and software patents.*
- Certain Mobile Telephones and Modems, 337-TA-758. Represented Sony in a patent infringement action against LG concerning patents relating to cell phones.*
- Certain Display Devices Including Digital Televisions and Monitors, 337-TA-713. Represented Sony in a patent infringement action against 11 respondents concerning technologies used in digital displays.*
- Hybrid Electric Vehicles and Components Thereof, 337-TA-688. ITC counsel for Toyota against Paice’s allegations of infringement and assisted Toyota in obtaining a settlement.*
- Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof, 337-TA-604. Lead counsel in successfully defending Hebei Sukerui against Tate & Lyle's allegations of patent infringement, preserving Hebei Sukerui's ability to import sucralose into the United States.*
- Rubber Antidegradants, Components Thereof, and Products Containing Same, 337-TA-533 and 337-TA-652. Lead counsel for Jiangsu Sinorgchem Co. in a series of cases brought by Flexsys America LP. In the first ITC investigation, Sinorgchem’s process was found not to infringe Flexsys' patents. In the second ITC action, Flexsys' complaint against Sinorgchem was summarily dismissed prior to any discovery.*
*Denotes experience prior to joining Goodwin.
- TPL v. Hewlett-Packard Co., (N.D. Cal.). Lead counsel for defendant HP in a case involving memory card readers. Successfully obtained transfer of the litigation from the E.D. Tex. to N.D. Cal. (Ongoing.)
- Icon Laser Solutions LLC v. The Gap, Inc. (N.D. Tex.). Lead counsel for Gap in a patent infringement litigation. The case settled.
- Revolaze, LLC v. The Gap, Inc. (N.D. Ohio). Lead counsel for Gap in a patent infringement suit. The case settled.
- Flexsys v. Kumho Tire, et al., (N.D. Ohio). Lead counsel for Jiangsu Sinorgchem in defending its anti-degradant compounds against claims of patent infringement by Flexsys. Summary judgment of non-infringement in favor of Sinorgchem was issued.*
- Micromesh Technology Corp. v. VF Corp., (E.D. Tex.). Lead counsel for VF Corp. in a patent infringement suit. Plaintiff dismissed the suit with prejudice prior to discovery.*
- Cushion Technologies LLC v. VF Corp. (E.D. Tex.). Lead counsel for VF Corp. in a patent infringement action involving athletic shoes. The case settled.*
*Denotes experience prior to joining Goodwin.
Professional Experience
Prior to joining Goodwin in 2015, Ms. Sundeen was a partner at Kenyon & Kenyon in Washington, D.C., where she led that firm’s International Trade Commission Practice. Previously, she was a partner at Arnold & Porter and Pennie & Edmonds. She also served five years as an attorney at the International Trade Commission.
Credentials
Education
JD
Case Western Reserve University
BSChemistry
Marquette University
Admissions
Bars
- District of Columbia
- U.S. Patent and Trademark Office (USPTO)
Courts
- U.S. District Court for the District of Colorado
- U.S. District Court for the District of Columbia
- U.S. Court of Appeals for the Third Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of International Trade
- U.S. Supreme Court