Experience

  • Intellectual Property
  • Solar

ISIX LLP v. Boomi LP & Dell Inc.

Defended Boomi [and Dell] in the Western District of Texas on a patent case related to software integration technology.”  In case you’re wondering, Dell gave their OK the other day.

IP Licensing Litigation

In litigation, the higher the stakes, the more vital creativity can be. Not always – litigation is a dispute, and disputes don’t always lend themselves to innovation. But in some situations, an experienced litigator can save clients time and money, and arrive at a good result, by really, truly, thinking outside the box.

Problem: A Farella Braun + Martel litigation team represented a major technology company in a lawsuit where our client was accused of breaching an IP license. Our client was interested, as many clients are, in finding some leverage points early in the case so that the parties could resolve the dispute without grinding through the prolonged, expensive process of going all the way through trial. Sometimes, of course, you must dig in and litigate. However, in this case, given the amount of money at issue, this didn’t make financial sense.

The problem, in short, was to find a way to significantly reduce liability without putting forth a full and lengthy defense of the case, including avoiding the expensive process of discovery.

Solution: The Farella team brainstormed, beginning with a theoretical exploration of all the immediate options. Arbitration. Counterclaims. Indemnification. What eventually emerged from this process was a creative, two-part solution that accomplished precisely what the client needed.

The approach they arrived at was to section off two strategic strengths in their position and pursue each individually. Think of it like demolishing a building. You can start at the top, and disassemble the structure brick by brick until it’s gone. Or, you can set off explosives at a few carefully selected spots, and the building will collapse into itself in seconds.

The first strength was an arbitration clause in the licensing agreement that, if applicable, would take the dispute out of court and present it in front of a single arbitrator. Arbitration was attractive because it moved faster, and it is a forum amenable to creative case schedules. It also promised absolute confidentiality, a trait often important to defendants. A potential downside could be the cost of the arbitration when compared to state court. The second was an ambiguous limitation of liability clause in the agreement that the team thought they could make a strong argument for substantially reducing the client’s potential liability.

Step One was to get the dispute into arbitration rather than arguing it in court. After presenting this strategy to the client and getting their approval, the Farella team was able to persuade its opponent that the arbitration clause in the agreement undeniably covered this dispute. The parties also agreed to stay the state court case and have the court order the case be sent into arbitration.

Once that was accomplished, the next step was to leverage another vulnerability in the plaintiff’s case that the Farella team discovered. The original license had been renewed. That license included an arguably ambiguous limitation of liability clause, which had been renewed with the license. The meaning and effect of that clause could be subject of an early motion which, if successful, would substantially reduce potential damages. If the Farella team could persuade the arbitrator to rule on the applicability of the limitation of liability clause and the maximum liability amount in an early motion, it would successfully avoid the costs and pitfalls of discovery while achieving the client’s objective.

Which is precisely what happened. The Farella lawyers were able to successfully argue that rather than being a triable issue, the effect of the limitation of liability clause was, instead, appropriate for motion practice. The arbitrator heard arguments, held in our favor, and as Forrest Gump would perhaps have put it, our client’s potential exposure was dramatically reduced… just like that. And the Farella team simultaneously asserted counterclaims that survived a motion to dismiss, thus adding another negotiation lever into its client’s quiver.

A creative approach, and the solution it propelled, kept a Farella client with a complex case out of court. At least as important, it also kept them out of discovery. And resulted in a (relatively) quick, highly-effective, and successful resolution that drastically reduced their potential liability.

Run-of-the-mill thinking and lawyering produce run-of-the-mill outcomes. Creative thinking produces superior outcomes. Just like that.

Profectus Technologies v. Google LLC

Represented Google LLC in its complete defense verdict from a Texas federal jury in the Western District of Texas in a case alleging that Google's Nest Hub and Nest Hub Max devices infringed a patent asserted by Profectus Technologies. The jury found that the asserted claims of the patent were invalid and that Google did not infringe.

Networking and Cybersecurity Solutions Company Patent Infringement Lawsuit

Represented a multinational networking and cybersecurity solutions company in a 6-patent infringement lawsuit in the Western District of Texas and in the related IPR proceedings. The lawsuit accused a broad range of data center-related technology, including routers, switches, firewall devices, and the company’s operating system of infringement. The matter resolved with a settlement favorable for our client.

Symbology Innovations v. Muji Ltd.

As lead counsel, successfully defended Muji in the U.S. District Court for Delaware in a multi-patent case relating to QR code technology.

Rothschild Location Technologies v. Popular Ridesharing Company

Defended a popular ridesharing company in Eastern District of Texas patent proceedings from allegations that our client’s on-demand transportation services infringe Rothschild’s patents relating to GPS technology. Obtained a favorable settlement for our client.

Biotech IP Infringement

Represented a bio-tech company in patent infringement litigation, licensing disputes and IP counseling relating to its pharmaceutical products. 

Huawei Technologies and Futurewei Technologies v. Yiren “Ronnie” Huang and CNEX Labs, Inc.

After a 3-week jury trial in Eastern District of Texas, successfully defended start-up CNEX Labs in a bet-the-company case against all claims of trade secret misappropriation, CFAA, RICO, and tortious interference brought by Huawei Technologies and Futurewei Technologies and attained a finding of misappropriation of trade secrets against Huawei in the field of SSD controller technology.

BladeRoom v. Facebook and Emerson

After a five-week jury trial before the U.S. District Court for the Northern District of California, our team won for UK-based BladeRoom a $30 million verdict against global manufacturing giant Emerson for willful and malicious misappropriation of trade secrets and breach of a non-disclosure agreement relating to BladeRoom’s revolutionary new methodology for constructing warehouse-sized data centers. The Daily Journal named this one of the “Top Verdicts” in California in 2018. The Court subsequently awarded BladeRoom an additional $30 million in exemplary damages and $17 million in prejudgment interest, for a total judgement exceeding $77 million. Our client settled with Facebook after the first week of trial.

Atmel Corporation v. Ericsson

We represented Atmel, a leading semiconductor manufacturer, in a multi-week arbitration through which we obtained an award of over $43 million arising from Ericsson's misappropriation of Atmel's patented AVR microcontroller technology and Ericsson's multiple breaches of the parties' license agreement.  The International Centre for Dispute Resolution, International Arbitration Tribunal also awarded Atmel a permanent injunction prohibiting Ericsson from continued misappropriation of Atmel's proprietary technology.

Dolby Laboratories v. Alcatel-Lucent Technologies

We represented Dolby in seeking a declaratory judgment that Dolby’s AC-3 (“Dolby Digital”) technology does not infringe patents that Alcatel-Lucent had asserted against Dolby’s licensees.  Following protracted litigation, in which we obtained discovery sanctions against Alcatel-Lucent on multiple occasions and attorneys’ fees at the conclusion of the case, we successfully obtained orders granting summary judgment of non-infringement on the patents-in-suit.  The Federal Circuit affirmed the district court's orders awarding summary judgment and attorney's fees.

Security People, Inc. v. Ojmar US, LLC

Defended Spanish touch-pad lock manufacturer Ojmar SA and its US subsidiary in a series of patent infringement actions filed by its direct competitor in the Northern District of California. We succeeded in getting two cases dismissed outright and defeated the third by successfully challenging the asserted patent in an IPR proceeding in the Patent Office—a decision summarily affirmed by the Federal Circuit Court of Appeals. We then filed a Walker Process/Handgards antitrust case on behalf of Ojmar against its dominant competitor. The case settled shortly before trial in June 2018.

Blue Spike v. Adobe Systems

Defended Adobe Systems in a five-patent case relating to signal abstraction technology involving 70+ defendants. We successfully obtained a transfer of venue from the Eastern District of Texas to the Northern District of California followed by a judgment of non-infringement. Pursued recovery of attorneys’ fees through appeal.

Comcast v. Promptu Systems

In response to patent litigation against Comcast, we have filed six IPR petitions challenging the three asserted patents. All six IPRs have been instituted for review on all grounds by the Patent Office. 

Tridia Corp. v. NTT Resonant Corp.

Served as lead counsel for this subsidiary of Japan’s largest telecom company, Nippon Telegraph & Telephone Co., in its first ever patent litigation in the United States. The case filed in Georgia Northern District Court presented unique questions involving the role of special masters to resolve section 101 motions and personal service of Japanese companies in the United States under the Federal Rules of Civil Procedure. 

Tse v. Google, Inc.

Represented Google in the Federal Circuit Court of Appeals seeking affirmance of a Northern District of California ruling that a digital rights management patent was invalid. The Federal Circuit ruled in favor of our client, affirming invalidity of the asserted patents.

hiQ Labs Inc. v. LinkedIn Corp.

Represented startup hiQ Labs Inc. in a precedent-setting litigation for data analytics, mining, and aggregator companies and their right to access publicly available data under the Digital Millennium Copyright Act, the Computer Fraud and Abuse Act (CFAA), and a California state law on unauthorized computer access. The Ninth Circuit Court of Appeals affirmed hiQ’s preliminary injunction against LinkedIn.

Waymo LLC v. Uber Technologies, Inc. et al.

Appointed by federal court Judge William Alsup of the Northern District of California, John Cooper is serving as “special master” in Waymo’s trade secrets case against Uber, putting him at a focal point of what could be seen as a battle for the future of the autonomous vehicle industry.

Hall Data v. Dropbox

Defended Dropbox in patent proceedings related to database synchronization technologies initially filed in the Eastern District of Texas. After successfully obtaining transfer of the action from the Eastern District of Texas to the Northern District of California, we obtained a dismissal with prejudice on behalf of our client following a court-ordered settlement conference.

Novartis v. MedImmune, Biogen, Alexion

Served as co-counsel in litigation alleging infringement of patents for a vector for the expression of polypeptides. The cases were resolved by favorable settlements for Novartis. 

Purple Leaf v. Google, Inc.

Defended Google Checkout in the Eastern District of Texas against assertions that it infringed a patent owned by Purple Leaf that purportedly disclosed a way to conduct an online transaction directly between merchant and buyer. After initial pleadings, we were able to attain a dismissal of the claims against Google. 

SharkNinja Operating LLC v. Flexible Technologies, Inc.

We are representing Flexible Technologies in its district court litigation accusing SharkNinja of patent infringement and other intellectual property claims. SharkNinja filed an IPR, and our PTAB team successfully defended our client convincing the PTAB not to institute the requested inter partes review.

Albert Jones v. Google Inc.

Represented Google in a multi-defendant patent infringement action in the Northern District of California involving smart phone, smart watch and headphone technologies. Following a claim construction hearing, the court ruled in favor of defendants.

SoftView v. Dell

Defended Dell against software patent infringement claims brought by SoftView against Dell’s Android phones and tablets in the United States District Court for the District of Delaware. The case was dismissed after all of SoftView’s asserted claims were found unpatentable in inter partes review.

Volterra Semiconductor v. Primarion & Infineon Technologies

We obtained a unanimous verdict in a three-week patent jury trial for our client Volterra Semiconductor in the United Stated District Court for the Northern District of California upholding the validity of Volterra's key patents for flip chip integrated power switches against challenges by defendants Infineon and Primarion. Infringement in favor of our client had been determined prior to trial as a result of key rulings we obtained in favor of Volterra in connection with claims construction and summary judgment proceedings.

Authors Guild v. HathiTrust

We submitted an amicus brief on behalf of the Electronic Frontier Foundation in support of the HathiTrust “mass digitization” project. HathiTrust, backed by a consortium of university libraries and Google, has digitized millions of copyrighted books and incorporated them into a database without the consent of copyright owners. The brief addressed whether changing a work from print form to a digital database in order to add new uses counts as “transformative” under copyright fair use factor 1. In June 2014, the Second Circuit affirmed the district court’s decision that HathiTrust Digital Library’s use of the copyrighted works for full-text search constitutes a “fair use.” The court also affirmed the district court’s ruling that fair use allows the libraries to provide the works in formats accessible to the print-disabled.

Goodson v. Titeflex Corp.

In response to patent litigation against Titeflex, we defended the district court litigation and successfully obtained a stay based on two IPR petitions. We prevailed on all claims in both IPRs, and the PTAB’s decision cancelling all of the challenged claims was summarily affirmed by the Federal Circuit.

MAZ Encryption v. Dell Inc.

Defending Dell Inc. in the U.S. District Court for the District of Delaware against allegations that its DDPE and DDPA products infringe two patents.

EON Corp. IP Holdings, LLC v. Landis+Gyr Inc., et al.

Defended Trilliant Inc. in this three-patent case in the U.S. District Court for the Eastern District of Texas against smart meter vendors involving wireless mesh network technology.

Rotatable Technologies v. Motorola Mobility LLC and Quickoffice Inc.

Obtained a non-infringement judgment for defendants Motorola Mobility and Quickoffice Inc. on 47 mobile devices in a patent case in the U.S. District Court for the Eastern District of Texas. Judgment was upheld on appeal.

Firm Highlights

News

Winston Liaw Named a Leadership Council on Legal Diversity Fellow

Northern California legal powerhouse Farella Braun + Martel is proud to announce that Winston Liaw has been named a Leadership Council on Legal Diversity (LCLD) Fellow for 2024. Winston joins a select group of...

Read More
Publication

Is the Copyright Threat to Generative AI Overhyped? Implications of Kadrey v. Meta

In November 2023, Meta successfully had nearly all of the claims against it dismissed in the Kadrey v. Meta Platforms, Inc. suit, a victory with potential implications for other technology companies with generative AI tools...

Read More
Publication

Thomson Reuters v. Ross Intelligence: AI Copyright Law and Fair Use on Trial

On Sept. 25, 2023, Judge Stephanos Bibas (sitting by designation in the District of Delaware), determined that fact questions surrounding issues of fair use and tortious interference required a jury to decide media conglomerate...

Read More
Event

21st Annual Stanford Digital Economy Best Practices Conference

Erik Olson is speaking at the 21st Annual Stanford Digital Economy Best Practices Conference for the session "Track A: Content Moderation." To register for the event, please click  here .

Read More
Publication

No Three-Year Bar on Copyright Damages (For Now): SCOTUS Issues Opinion in Warner Chappell Music, Inc. et al. v. Sherman Nealy et al.

In a 6-3 majority decision in Warner Chappell Music, Inc. et al. v. Sherman Nealy et al. , the Supreme Court held that the Copyright Act entitles a copyright owner to recover damages for any...

Read More
Publication

Hsu Untied Interview With Dan Callaway

Dan Callaway, a partner specializing in intellectual property litigation, was a guest on Hsu Untied , an award-winning podcast hosted and produced by Richard Hsu featuring entrepreneurs, venture capitalists, best-selling authors, and more.  During...

Read More
Publication

Copyright Law for Influencers and Brands: How Content Creators and Companies Hiring Them Can Navigate Copyright Law for a Successful Partnership

In recent years, the advent of the social media “influencer” has revolutionized advertising. Companies often partner with influencers to market their products, hoping to tap into the influencer’s devoted audience. Likewise, influencers create certain content...

Read More
News

JPMorgan Chase Accuses TransUnion of Stealing 'Trade Secrets'

Intellectual property practice chair Eugene Mar provided expert commentary to American Banker for the article "JPMorgan Chase Accuses TransUnion of Stealing 'Trade Secrets'." In the article, he said: "By filing this as a trade...

Read More
Publication

Will the Supreme Court Limit Copyright Damages? Implications of Warner Chappell Music, Inc. et al. v. Sherman Nealy et al.

The U.S. Supreme Court heard oral arguments in Warner Chappell Music, Inc. et al. v. Sherman Nealy et al. (Case No. 22-1078) on February 21, 2024. On the surface, the case presents the opportunity...

Read More
News

Scraping Battles: Meta Loses Legal Effort to Halt Harvesting of Personal Profiles

Alex Reese spoke to Matt Fleischer-Black of  Cybersecurity Law Report about the Meta v. Bright Data decision and its impact on U.S. scraping case law. Read the article here (paywall or trial).

Read More