Intellectual Property Litigation

Patent Litigation

Experience

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.

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.

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.

Cioffi, et al. v. Google Inc

Defended Google in the U.S. District Court for the Eastern District of Texas in a four-patent case relating to multi-process web browsers. The case is currently pending a post-trial invalidity decision based whether the reissue patents improperly recaptured disclaimed subject matter under 35 USC section 251.

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.

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.

Round Rock Research v. Dell Inc.

Defended Dell in the U.S. District Courts for the Eastern District of Texas and the District of Delaware against allegations that its products infringed 20 patents across a wide range of technologies involving DRAM, server management and monitoring, and BIOS.

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. That case settled the week before trial in June 2018.

Zep Solar

Defended Zep Solar (which was later acquired by SolarCity) in patent infringement lawsuits filed in the International Trade Commission and the Northern District of California relating to efficient techniques for mounting solar panels. After obtaining early dismissal of Plaintiffs' claim for declaratory judgment of noninfringement because there was no subject matter jurisdiction, we sought a stay of the litigation pending an inter partes reexamination of the patent-in-suit in the Patent and Trademark Office. The asserted patents were invalidated virtually in their entirety, and the cases then settled.

3M Innovative Properties v. The Clorox Company

We represented Clorox, Brita, Pentair and Sears in a patent infringement lawsuit brought by 3M and its Cuno subsidiary in Minneapolis. The case involves two patents covering replacement water filters used in refrigerators. The court issued a favorable claims construction for Defendants in December 2007 as part of a ruling denying summary judgment. The case then settled on terms favorable to our clients.

Creo Products v. Dainippon Screen

Successfully defended Japanese manufacturer Dainippon Screen against patent infringement and trade secret claims brought in the United States District Court for the Western District of Washington. Obtained summary judgment of non-infringement in our client's favor based on application of prosecution history estoppel, and summary judgment dismissing all other claims and an award for attorneys' fees in favor of our client. The district court judgment was affirmed in all respects by the Federal Circuit.

Dainippon Screen Mfg. Co. Ltd. v. CFMT, Inc., et al.

This declaratory relief action requested a judgment of noninfringement and invalidity. We successfully appealed a jurisdiction dismissal (142 F.3d 1266))(reversing dismissal for lack of personal jurisdiction and giving opponent a “Chutzpah Award”). After remand, the patentee counterclaimed on four patents involving semiconductor cleaning and drying technology used in state-of-the-art semiconductor fabrication equipment. We presented claim construction arguments at several Markman hearings. Following a month-long jury trial, this case was successfully settled.

Every Penny Counts, Inc. v. American Express Co., et al.

Defended Visa U.S.A. Inc. in a case where the plaintiff accused Visa’s gift card technology of infringing five patents. We prevailed on a case-dispositive claim construction at the district court, leading to a stipulated judgment of non-infringement on all five patents. The Federal Circuit upheld the claim construction and judgment on appeal. 563 F.3d 1378 (Fed. Cir. 2009)A petition for en banc rehearing and petition for writ of certiorari were both denied.

MedioStream Inc. v. Acer America Corp et al

Defended Sonic Solutions in a patent infringement suit originally filed by MedioStream, Inc. in the Eastern District of Texas, that asserted infringement claims on two patents pertaining to technology for recording video information onto discs and were directed at Sonic's digital video and DVD software products. In a precedent-setting tactical victory, we obtained an appellate order transferring the litigation from the Eastern Texas to Sonic Solutions' home jurisdiction in Northern California. 626 F. 3d 1252 –(Fed. Cir. 2010) The trial court eventually dismissed - 869 F. Supp. 2d 1095 (N.D.Cal 2012) (granting motion to dismiss)

Orion v. Wal-Mart

We defended Wal-Mart Stores, Inc. and Walmart.com USA, LLC in this action brought by Orion IP, LLC (also known by the name Clear With Computers LLC) in the Eastern District of Texas asserting claims for patent infringement against our clients and many other parties based on patents relating to online sales methods. We were able to settle the claims against our client at an early stage, obtaining the most favorable settlement ever extracted from this litigant by any retailer. We have handled several other patent and licensing related matters for Wal-Mart Stores, Inc. and Walmart.com USA, LLC.

Restricted Spending Solutions v. Allow Card

We won summary judgment of invalidity for our client Visa USA, Inc. in this patent action filed in Chicago asserting a patent over an "allowance" card for teens that can be controlled by the parent. This was a significant victory. Not only is a summary judgment of invalidity rare, but the well-known NPE Acacia was the ultimate owner of the plaintiff and had managed to exact settlements with many of the other eighteen defendants. 743 F. Supp. 2d 954 (N.D. Ill. 2010)(granting summary judgment).

Tse v. Google, 570 Fed.Appx. 941 (Fed. Cir., 2014)

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.

Actus LLC v. Bank of America Corp, et al

We defended Sonic Solutions in litigation filed in the Eastern District of Texas by Actus LLC, a patent holding company, that asserted infringement claims on four patents relating to an electronic payments system directed at companies offering prepaid gift cards and online payment options for customers.  We were able to obtain an early favorable settlement for Sonic to avoid further costly legal proceedings. 

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.

Beckman Research Institute v. Genentech

We represented Genentech in an arbitration proceeding concerning the royalties due the plaintiff under a research and license agreement regarding recombinant DNA technology, which resulted in the issuance of two patents and the development and commercialization of two highly successful anti-cancer drugs.

Chiron v. Hoffman-LaRoche

We represented Chiron Corporation (now Novartis) as a plaintiff in this patent infringement action in the Northern District of California. The case involved the patent for a vaccine for the Hepatitis C virus, as well as antitrust counterclaims.

Compression Labs v SanDisk Corporation, et al

Represented AverMedia, a Taiwanese manufacturer, in connection with patent infringement claims asserted by Compression Labs relating to patents for digital compression technology.

DataTern v Bank of America Corp. et al.

We defended Visa Inc. in a lawsuit filed by DataTern against it and others in the Eastern District of Texas which claimed that Visa was infringing DataTern's ‘402 patent titled "System for enabling access to a relational database from an object oriented program." We obtained a successful settlement of the case for Visa.

Do-Lin Metal, et al. v. DS-Max Int’l, et al.

Represented DS-Max in this patent infringement action filed in the Northern District of California. The case involved several design and utility patents on a carrying container for tools, and was successfully settled.

Drexler Technology v. Dolby Laboratories, Inc., et al.

This case, filed in the Northern District of California, involved patent infringement claims asserting that Dolby Digital sound-on-film technology infringed patents held by the plaintiff, Drexler Technology Corporation.  In addition to defending Dolby Laboratories, also represented a number of major entertainment companies (including Walt Disney Pictures, Fox, MGM, Universal Studios and Columbia Pictures) in this action.  After obtaining a claim construction (“Markman”) order supporting virtually every claim construction position advocated on behalf of our clients, the Court entered summary judgment in the defendant's favor on grounds of non-infringement and patent invalidity.

e-Micro Corporation v. Google, Inc.

Defended Google against allegations that Google Checkout infringes a patent allegedly related to electronic payment transactions conducted on the Internet.

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.

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.

Myriad v. Openwave Systems

Represented Myriad France, a French mobile-handset software company, in a dispute with Openwave Systems, an American software company, over ownership of 36 patents for such products as text messaging and mobile web browsing. After winning partial summary judgment, Myriad successfully negotiated an eight-figure settlement.

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. 

Firm Highlights

Publication

Supreme Court Allows Recovery of Foreign Lost Profits For Shipping Components of a Patented Invention Overseas

On June 22, 2018, the Supreme Court issued a decision in WesternGeco LLC v. Ion Geophyiscal Corp. addressing whether foreign lost profits can be recovered for infringement under 35 U.S.C. § 271(f)(2) of the...

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Publication

Supreme Court Tells the Patent Office That IPR Proceedings Are “All-or-Nothing” Affairs

On April 24, 2018, the same day that the Supreme Court upheld the constitutionality of inter partes review (IPR) challenges to issued patents in one decision ( Oil States Energy Services v. Green’s Energy...

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Publication

Will It Go Forward? First Cannabis Patent Infringement Case Filed in Federal Court

A patent infringement case pending in front of the U.S. District Court for the District of Colorado has the potential to set an important precedent that will have ramifications for many of our clients...

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Publication

Supreme Court Upholds Constitutionality of Inter Partes Review of Issued Patents

On April 24, 2018, the Supreme Court issued a decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC rejecting a Constitutional challenge to the inter partes review (IPR) procedure for challenging...

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Publication

Supreme Court Upholds Constitutionality of Inter Partes Review of Issued Patents

In 2012, Congress created a new procedure that allows the U.S. Patent and Trademark Office to conduct a litigation-like procedure to review and potentially cancel patents. This procedure - inter partes review (“IPR”) - has...

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