Patent litigation attorney

William H. Burgess

5 tracked appearances — 1 plaintiff · 4 defendant.

Specialty & background

I'll research this attorney's background before drafting.

Let me verify the tracked cases and any appellate outcomes.

Let me check the Actavis matter and any Wi-Fi/standards work.

William H. ("Bill") Burgess — Kirkland & Ellis LLP, Washington, D.C.

Focus. Burgess is an appellate litigator whose patent work runs through the Federal Circuit, with a secondary trial-support role (briefing dispositive motions and preserving appellate issues). His tracked matters span three distinct technology areas rather than a single niche: continuous glucose monitoring/medical devices (Abbott Diabetes Care v. Dexcom), financial-services cryptography hardware (Intellectual Ventures II v. JPMorgan Chase, involving IBM Crypto Card accuseds), and Hatch-Waxman generic pharmaceuticals (UCB v. Actavis, rotigotine/Neupro transdermal patches). His technical background is electrical engineering, and Kirkland's own practice description frames his docket as patent plus commercial and administrative/regulatory appeals. There is no public evidence in the tracked matters or firm materials of a Wi-Fi/standards-essential-patent practice; I would not describe him that way.

Side preference. Defense-leaning, consistent with the counts above (3 defendant, 1 plaintiff). He defended JPMorgan Chase against NPE Intellectual Ventures II, defended Actavis in an ANDA/patent case, and appeared for the appellee-defendant side in the remaining tracked matters; his single plaintiff-side appearance was lead counsel for Abbott Diabetes Care in its dispute with Dexcom. The pattern is defending operating companies — financial institutions, generic drugmakers, and medtech manufacturers — rather than prosecuting for PAEs.

Firm and credentials. All four tracked appearances are at Kirkland & Ellis, where he is a partner in the D.C. office. Before Kirkland he clerked for Judge Walter K. Stapleton (Third Circuit) and Judge William C. Bryson (Federal Circuit) — the latter a well-known credential for patent appellate work. Education: Dartmouth College (B.A. Engineering Sciences & French, 2001; B.E. Electrical Engineering, 2002) and University of Pennsylvania Law School (J.D., 2005). Admitted in New York (2006) and D.C. (2007), and registered to practice before the USPTO; admitted to the Supreme Court and numerous circuits, including the Federal Circuit.

Notable matters. In DexCom, Inc. v. Abbott Diabetes Care, Inc., No. 23-1795 (Fed. Cir. Jan. 3, 2024), the court affirmed denial of DexCom's preliminary injunction, holding that a 2014 settlement's forum-selection clause did not bar Abbott's post-covenant-period IPR filings; Burgess was on the Kirkland briefing team for Abbott. In UCB, Inc. v. Actavis Laboratories UT, Inc., No. 21-1924 (Fed. Cir. Apr. 12, 2023), the Federal Circuit affirmed a Delaware invalidity judgment on UCB's '589 rotigotine patent, opening the door to earlier generic entry; Burgess was on the Actavis team. In Intellectual Ventures II LLC v. JPMorgan Chase & Co., 781 F.3d 1372 (Fed. Cir. 2015), Burgess entered his appearance for JPMC on the interlocutory stay appeal, which the court dismissed for lack of jurisdiction over CBM-related stay denials; the district court litigation ultimately narrowed to a single patent after § 101 dismissals.

PTAB/IPR. His firm bio states he has practiced before the PTO, the ITC, and the EPA, and his Abbott/Dexcom work involved IPR proceedings at the district-court and Federal Circuit level. Publicly available sources do not show him as a frequent named petitioner or patent-owner counsel in IPR/PGR filings, so I'd characterize his PTAB exposure as appellate/strategic rather than a documented high-volume IPR practice.

Caveats: two of the four tracked appearances are untitled, so their subject matter cannot be characterized; and reported outcomes above are attributed only where counsel listings support it.

Firms

Roles

  • lead counsel1
  • of counsel1
  • appellate counsel1

Cases (5)