Experience

• Intellectual Property Litigation

  • Intellectual Ventures v. EMC: Secured a complete victory for EMC in a lawsuit filed by Intellectual Ventures in the District of Massachusetts. IV, a notorious patent monetization entity, asserted six patents against a broad swath of EMC products. We filed and won five IPRs at the Patent Office, successfully invalidating all asserted claims for four of the patents. We subsequently won a summary judgement of invalidity for the last remaining claim of the fifth patent (asserted after our IPR) and a summary judgement of non-infringement for the last patent, along with two related Federal Circuit appeals. The case has since been the subject of several articles focusing on our use of collateral estoppel to leverage a Patent Office IPR decision.  
  • PersonalWeb v. EMC and VMware: Secured a complete victory for EMC and VMWare after more than eight years of litigation. PersonalWeb initiated this suit in the Eastern District of Texas claiming infringement of a portfolio of patents by most of the major cloud computing companies. EMC and VMware were the only companies in the first round of defendants to file IPRs. We convinced the Eastern District of Texas to transfer the case to California, and the California court to stay the case pending our IPRs. The PTAB subsequently invalidated all challenged claims of all six challenged patents, and the Federal Circuit affirmed. PersonalWeb subsequently agreed to drop a seventh patent. The final win came with the judge’s ruling that the only remaining patent was invalid under Section 101 because it did not claim patent-eligible subject matter and the Federal Circuit’s affirmance of this ruling.
  • Wireless Technology: Secured a complete victory for a major wireless company in a series of lawsuits filed by a non-practicing entity funded by Nokia and Microsoft. In the first case, filed in the Eastern District of Texas, the plaintiff initially asserted 14 patents purportedly essential to wireless industry standards but later dropped nine (based on our substantial defenses). After a six-day jury trial, the jury found that each of the five remaining patents was not infringed. The final outcome, in which the plaintiff failed to win on any of its 14 asserted patents—all allegedly standard-essential and FRAND-committed—may have a set a record in the Eastern District of Texas for the number of patents on which a defendant prevailed in a single case. The second case—transferred to the Northern District of California—asserted five patents. The plaintiff dropped three of the patents prior to trial. One of the two remaining patents was ultimately found not infringed, and the last one was found unenforceable because of Nokia’s standards misconduct. The third case was ultimately resolved. In sum, in eight years of litigation, the plaintiff asserted 25 patents against our client and prevailed on none.
  • TransData v. CenterPoint and Itron: Secured a favorable settlement for CenterPoint and its supplier, Itron, in the Eastern District of Texas. We took over defense of the case, which alleged infringement of a patent relating to “smart” electrical meters, approximately one month before trial, identified a document corroborating that Itron had developed a prior art product that predated the asserted claims, and then won a motion to supplement our invalidity defenses to add this product to the case as anticipatory prior art. The case settled favorably, on the eve of trial, soon after we won the motion.
  • Cree v. SemiLEDs: Led a set of related cases for Cree in the District of Delaware alleging infringement of eight Cree patents relating to LED chips. We secured a favorable settlement including an agreed injunction prohibiting the importation and sale of SemiLEDs’ accused products in the United States and a payment for past damages.
  • Delano Farms v. California Table Grape Commission: Served as co-lead counsel for the California Table Grape Commission in a trial in the Eastern District of California challenging the validity of patents covering two of the commission's top selling grape varieties. The court upheld the validity of both of our client's patents.
  • Uniloc v. Rackspace: Served as co-lead counsel for Rackspace in a suit in the Eastern District of Texas alleging infringement of a Uniloc patent relating to floating point numbers. The court granted our motion to dismiss the complaint on the ground that the asserted claim was not patentable under 35 U.S.C. § 101, in a ruling recognized by Am Law Daily as a “rare” win in East Texas. Rackspace believes that this was the first time the Eastern District of Texas granted an early motion to dismiss under Section 101.
  • Yahoo v. Facebook: Represented Facebook in a major patent battle with Yahoo, after Yahoo initiated a lawsuit in the Northern District of California claiming infringement of 10 Yahoo patents. We assisted in mounting a full-scale defense, including a counterclaim for infringement of 10 Facebook patents, described by TechCrunch as a “masterful response to Yahoo’s patent trolling.” The parties reached a highly favorable settlement three months later, recognized by Business Insider as “a win” for Facebook.
  • Medtronic v. Globus: Served as lead counsel for Medtronic in a three-week jury trial in the Eastern District of Pennsylvania relating to minimally invasive spinal surgery. The jury found that each of the two patents asserted by our client was valid and infringed.
  • Broadcom v. Qualcomm: Served as co-lead counsel for Broadcom in a four-week jury trial in the Central District of California, winning a verdict finding that Qualcomm infringed three Broadcom patents relating to wireless networks and push-to-talk applications. Broadcom claimed that key features offered on certain Qualcomm wireless-communications computer chips infringed its patents. The jury agreed that that each of the asserted patents was valid and infringed. The Federal Circuit affirmed the decision and upheld the permanent injunction. The broader dispute between the parties subsequently settled for more than $890 million.
  • In re. Audio Digital-to-Analog Converters and Products Containing Same: Served as co-lead counsel for Wolfson Semiconductor in a two-week trial before the US International Trade Commission (ITC) relating to digital-to-analog circuits. The ITC found the primary patent asserted against our client unenforceable because the inventors failed to disclose highly material prior art to the Patent Office with the intent of deceiving the Patent Office.
  • Fonten v. Ocean Spray: Served as lead counsel for Ocean Spray in a two-week jury trial in the District of Massachusetts relating to the marketing of fruit juice products. The jury agreed that our client did not breach a contract between the parties.
  • EMC v. Hewlett-Packard: Served as co-lead counsel for EMC in a three-week jury trial in the District of Massachusetts relating to computer storage devices. The jury found that each of the three patents asserted by our client was valid and infringed. The broader dispute between the parties subsequently settled for more than $325 million.  
  • Schwarz-Pharma v. Braintree: Served as co-lead counsel for Braintree in a two-week trial in the District of Delaware relating to gastrointestinal product. The court rejected IP-related antitrust claims against our client.
  • In re. Certain Microlithographic Machines: Served as co-lead counsel for in a five-week trial before the ITC in a suit filed by its chief rival, Nikon. At issue was approximately $1.8 billion in annual sales in the market for photolithographic equipment. The ITC found that each of the seven patents asserted against our client was not infringed, invalid and/or unenforceable because of the inventors’ inequitable conduct.
  • American Superconductor v. MIT: Served as co-lead counsel for American Superconductor in the trial of a “patent interference” proceeding relating to high-temperature superconducting materials. The Patent Office intervened in the suit to defend its decision. We successfully reversed the Patent Office’s finding that a patent owned by our client, and a patent application exclusively licensed to it, “interfered.”