William C. Bergmann

Partner

Washington, D.C.
T +1.202.861.1549
F +1.202.861.1783

"William C. Bergmann is one of the best litigators in the [patent litigation] area, and an expert on both IP and government contracts work."

— Chambers USA 2021

Overview

Bill Bergmann focuses his practice on intellectual property litigation and counseling, including licensing, due diligence and issues relating to government contracts. He previously focused on these areas as a trial and appellate attorney for 12 years at the U.S. Department of Justice. Bill has litigated patent cases as lead attorney before numerous district courts throughout the country, as well as the Court of Federal Claims, ITC and Federal Circuit. He focuses on issues relating to intellectual property and the federal government.

Bill is active in the Court of Federal Claims Bar Association and currently serves as its Treasurer. He was previously President of the Association. He has been appointed to the Court’s Advisory Council by the Chief Judge twice, both times serving on its Intellectual Property committee (2018-2024). In 2019, he was awarded the Golden Eagle (the Court’s highest award) by the Chief Judge, in recognition of his outstanding service. He is a leading practitioner in intellectual property cases before this Court, and leads the firm’s Court of Federal Claims Intellectual Property practice team. Bill has been named as a Fellow of the Litigation Counsel of America (LCA), a trial lawyer honorary society composed of less than one-half of 1 percent of U.S. attorneys. He has been recognized for his patent litigation skills by Chambers USA, the IAM Patent 1000, Super Lawyers and the Legal 500. Bill is registered to practice before the U.S. Patent and Trademark Office. He has authored several articles and treatise chapters, and frequently lectures on the topics of intellectual property and government contracts.

Select Experience

  • Represented the entire U.S. defense industry as amicus in a complex and critical appeal before the Court of Appeals for the Federal Circuit involving government contractor immunity under 28 U.S.C. § 1498 for patent infringement. The en banc court adopted his position and overturned recent precedent to the contrary.
  • Successfully represented government contractors as lead attorney in dozens of complex patent, copyright and trade secret actions before the Court of Federal Claims. These include cases defending major defense contractors brought pursuant to 28 U.S.C. § 1498, in which the plaintiff alleged that the contractor infringed its patents, the government alleged that the contractor was required to indemnify it for any damages, and potential damages exceeded $100 million. The cases involved a variety of technology, government agencies and associated government contracts, including advanced night vision, portable data centers, laser range finding, advanced infrared countermeasures systems, encrypted smart cards, electrical components of military vehicles, military base security systems and health care management. Several cases resolved with dismissals and no damages awarded. Successfully invalidated five patents in CFC proceedings. Cases included highly classified technologies.
  • Leveraged experience with the federal government to represent numerous entities (including major government contractors) in intellectual property and contract disputes with the federal government, often times resolving such matters without litigation and with the full retention of intellectual property rights for the contractor.
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Experience

  • Represented the entire U.S. defense industry as amicus in a complex and critical appeal before the Court of Appeals for the Federal Circuit involving government contractor immunity under 28 U.S.C. § 1498 for patent infringement. The en banc court adopted his position and overturned recent precedent to the contrary.
  • Successfully represented government contractors as lead attorney in dozens of complex patent, copyright and trade secret actions before the Court of Federal Claims. These include cases defending major defense contractors brought pursuant to 28 U.S.C. § 1498, in which the plaintiff alleged that the contractor infringed its patents, the government alleged that the contractor was required to indemnify it for any damages, and potential damages exceeded $100 million. The cases involved a variety of technology, government agencies and associated government contracts, including advanced night vision, portable data centers, laser range finding, advanced infrared countermeasures systems, encrypted smart cards, electrical components of military vehicles, military base security systems and health care management. Several cases resolved with dismissals and no damages awarded. Successfully invalidated five patents in CFC proceedings. Cases included highly classified technologies.
  • Leveraged experience with the federal government to represent numerous entities (including major government contractors) in intellectual property and contract disputes with the federal government, often times resolving such matters without litigation and with the full retention of intellectual property rights for the contractor.
  • Represented clients accused of infringement, as lead attorney, in several patent infringement actions before the International Trade Commission. Most recent case involved three patents relating to computer forensic devices commonly used by law enforcement agencies as forensic tools. After trial, the chief administrative law judge ruled that the client had not committed a violation and that there was no domestic industry for the petitioner’s inventions.
  • Defended the U.S. at both the trial and appellate levels against a massive $3 billion patent infringement claim involving over 100 satellites (including GPS satellites) and thousands of government contracts. The case was the largest patent infringement action in Court of Federal Claims history, resulting in more than 20 published Court of Federal Claims, Federal Circuit and Supreme Court decisions.
  • Represented a technology company as lead attorney in enforcing its patent portfolio on advanced “smart” power cord technology against competitors. The enforcement effort encompassed several licenses and successful district court litigations and resulted in millions of dollars in settlement and licensing fees.
  • Represented clients in numerous matters in the Eastern District of Texas, Eastern District of Virginia, Northern and Central California, Florida and numerous other district courts. Presented arguments as lead attorney at numerous Markman (claim construction) hearings and as lead and co-counsel at multiple trials.
  • Held a lead role in addressing the IP aspects of due diligence for several major business acquisitions involving electronics, artificial intelligence, financial services, aerospace and biotechnology companies. Most of these involved unique issues relating to the government contractor status of one of the involved entities.
  • Testified as expert on Court of Federal Claims patent litigation in fee dispute involving enforcement of patents against classified technologies.

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property: Litigation in the District of Columbia (2015 to 2019, 2021 to 2022)
    • Band 4 (2015 to 2019, 2021 to 2022)
  • The Legal 500 United States (2016, 2021)
    • Recommended in Intellectual Property: Patent Litigation – full coverage 
  • IAM Patent 1000: The World's Leading Patent Practitioners
    • D.C. Metro Area: Recognized for Patent Prosecution (2014 to 2020)
    • D.C. Metro Area: Recognized for Patent Litigation (2021)
  • Martindale-Hubbell: AV Preeminent 
  • Washington, D.C. "Super Lawyer" (2012 to 2022)
  • U.S. Court of Federal Claims: Golden Eagle Award (2019)

Memberships

  • Court of Federal Claims Bar Association
    • Treasurer (2021 to 2022)
    • President (2018)
    • Secretary (2015, 2016)
    • Board of Governors (2012 to 2014)
    • Intellectual Property Committee: Co-Chair
  • Intellectual Property Owners Association: Litigation Committee
  • Appointed by the Chief Judge to the Court of Federal Claims Advisory Council (2018 to 2024)
  • American Intellectual Property Lawyers Association
  • Litigation Counsel of America: Fellow
  • Patent Lawyers Club of Washington: Past President

Community

  • Foster Parent for Arlington County, Virginia
  • Volunteer for Lost Dog Rescue Foundation

Pro Bono

  • Represented a client in Washington, D.C., landlord/tenant court, in which the client was saved from eviction.

Prior Positions

  • United States Department of Justice: Trial Attorney
  • Westinghouse Electric Corporation: Engineer designing nuclear power plants 
  • Princeton University: Research Assistant, Department of Chemical Engineering

Admissions

  • U.S. Patent and Trademark Office, Registration No. 34,294
  • U.S. Court of Federal Claims, 1990
  • U.S. Supreme Court, 2006
  • U.S. Court of Appeals, Federal Circuit, 1990
  • U.S. Court of Appeals, Fourth Circuit, 2004
  • U.S. District Court, District of Maryland, 2003
  • U.S. District Court, District of Columbia, 2003
  • U.S. District Court, Western District of Michigan, 2003
  • U.S. District Court, Eastern District of Texas, 2011
  • District of Columbia, 2003
  • Pennsylvania, 1990

Education

  • J.D., University of Pittsburgh School of Law
  • B.S.E., Chemical Engineering, Princeton University