Masimo Corp. v. Philips Electronics North America Corp. and Philips Medizin Systeme Boblingen GmbH. (D. Del. 2014). Represented medical-device maker Masimo to a complete victory in obtaining a jury verdict of over $466 million for lost-profits damages against Philips for infringing two Masimo patents. The jury also rejected Philips’s infringement claims seeking $169 million.
Toshiba Corporation v. Wistron Corporation (U.S. I.T.C. 2010). Represented Toshiba in ITC investigation (and a parallel district court action) involving patents on computer hardware and software features. Just before trial and after defeating each summary judgment motion brought by Wistron, the case settled with Wistron paying for a license under Toshiba’s patents.
Mallinckrodt, Inc. v. Masimo Corp., 2004 U.S. Dist. LEXIS 28518 (C.D. Cal 2004), aff’d in part and rev’d in part, 2005 U.S. App. LEXIS 19427, 2005 WL 2139867, 147 Fed. Appx. 158, reh’g en banc denied, 2005 U.S. App. LEXIS 24108 (Fed. Cir. 2005), cert. dismissed, 546 U.S. 1162 (2006). In jury trial and on appeal, obtained $134.5 million verdict for owner of four patents on read-through-motion pulse oximeters. Jury found that Covidien-held Nellcor had willfully infringed the four patents, while also finding that client had not infringed a Tyco patent. Before trial, the court dismissed on summary judgment other Nellcor claims and defenses. 254 F. Supp.2d 1140 (Markman), 292 F. Supp.2d 1201, and 293 F. Supp.2d 1102 (C.D. Cal. 2003). The appellate court affirmed a $164.5 million judgment and ordered the entry of a permanent injunction. The case settled for $330 million and future royalties.
Assisted trial team in successfully representing Masimo Corp. in a five-week jury trial obtaining $134.5 million dollar damage award. The jury found that all four of Masimo’s asserted patents were valid and willfully infringed. Also, successfully defended Masimo against lone patent asserted by defendants. The appellate court affirmed the damages judgment and ordered the entry of a permanent injunction. 147 Fed.Appx. 158, 2005 WL 2139867 (Fed. Cir. 2005).
Bierman v. Toshiba Corp. (Cal. Super. 2014). Represented Toshiba in its defense of a trade secret misappropriation action involving alleged software inventions in which $100 million in damages was sought and successfully achieved summary judgment based on the statute of limitations. Convinced the court that Bierman was constructively aware of the product features alleged to be the misappropriation because of widespread industry publications available beginning in 1988 and showed numerous inconsistencies in Bierman’s story. The summary judgment order brought a successful end to a four-year litigation.
Digitech Image Technologies, LLC v. HTC America, Inc.(C.D. Cal. 2013). Represented HTC in patent infringement action related to digital image processing. Obtained favorable dismissal.
Canatelo, LLC v. Toshiba America (D.P.R. 2013). Represented Toshiba America Information Systems, Inc. in a patent infringement action related to automated security camera technology. Obtained favorable dismissal.
Ingeniador, LLC v. Vital Images (E.D. Tex. 2012). Represented Vital Images, Inc. and Toshiba Medical Systems Corporation, Inc. in patent infringement action related to internet database technology. Obtained favorable dismissal.
Data Carriers, LLC v. HTC America, Inc. (D. Del. 2012). Represented HTC in patent infringement action regarding autocomplete features. Obtained favorable dismissal.
Rotatable Technologies, LLC v. HTC America, Inc. (E.D. Tex. 2012). Represented HTC in patent infringement action related to screen rotations on smartphones. Obtained favorable dismissal.
MOSAID Technologies, Inc v. HTC America, Inc. (D. Del. 2011). Represented HTC in a patent infringement action related to e-911 standards. Obtained favorable dismissal.
Typhoon Touch Technologies, Inc. v. Dell, Inc. (Fed Cir. 2011). Represented manufacturers of portable computers with touch screens and obtained affirmance of judgment of no patent infringement.
Toshiba Corporation v. Wistron Corporation (C.D. Cal. 2010). Represented Toshiba regarding counterclaims brought by Wistron on power management patents. Successfully obtained dismissal of claims on these patents for lack of standing.
Guardian Media Technologies, Ltd. v. Toshiba America Consumer Products, L.L.C. (S.D. Cal. 2009) and (C.D. Cal. 2009). Represented defendant Toshiba charged with infringement of patents involving methods for censoring video programs in two district courts. Prior to this lawsuit, a significant segment of the industry had taken a license under the plaintiff’s patent. But, after adopting Toshiba’s proposed claim construction, and prior to any substantial discovery, two district courts granted and entered judgment of noninfringement on each patent, which prevented Toshiba from paying tens of millions of dollars in royalties sought by the plaintiff.
In the Matter of CERTAIN POINT OF SALE TERMINALS AND COMPONENT PARTS THEREOF (U.S.I.T.C. 2004). Represented CyberNet, Inc. (Korea) and CyberNet USA in patent infringement investigation involving point of sale terminals at the International Trade Commission.
"The U.S. Supreme Court on Induced Infringement and Its Impact on Patent Strategy," Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 61 No. 2 (February 2016)
"The Impact of Alice on Patent Eligible Subject Matter - With a Focus on U.S. District Courts' and Federal Circuit's Decisions relating to Business Methods and Computer Software-Related Inventions on Decisions," Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 60 No. 11 (November 2015)
"Attack on software patents in the United States," Intellectual Property and Entertainment Law, Newsletter of the International Bar Association Legal Practice Division, Vol. 7 Issue 1 (September 2015).
"Another Reason to Coordinate Discovery in Parallel Litigation – Circumvention in Section 1782 Requests," International Litigation News, Newsletter of the International Bar Association Legal Practice Division (April 2013)
“Ten Steps in Analyzing Patent Infringement,” ExecSense, E-book available on Amazon.com (February 6, 2013)
"The Heightened Domestic-Industry Standard for NPEs", Intellectual Property Litigation Newsletter, American Bar Association Section of Litigation, Summer 2012, Vol. 23 No. 4 (September 2012)
“What Medical Device Companies Need to Know about Intellectual Property”, Medical Electronic Device Solutions (MEDS) Magazine (August 2012)
"Be careful what you write: attorney-client privilege for international businesses," International Litigation News, Newsletter of the International Bar Association Legal Practice Division (May 2012)
"The Supreme Court reigns in states' aggressive assertion of personal jurisdiction," North American Regional Forum News, Newsletter of the International Bar Association Legal Practice Division (May 2012)
“An Overview of U.S. Patent Litigation for Canadians,” 28 Canadian Intellectual Property Review 1, 2012
“The U.S. Patent Litigation Process,” IP Osgoode (December 2010)
“Parent/Subsidiary Liability Issues in Patent Litigation,” ABA Intellectual Property Litigation, Vol. 21, No. 2 (Winter 2010)
"The Supreme Court Takes on Patent Law," SideBar, Federal Litigation Section of the Federal Bar Association (Summer 2007)
Co-authored brief for the AIPLA as amicus curiae in Microsoft Corp. v. AT&T Corp. before the Supreme Court of the United States (2007)
For all issues of the Federal Circuit and Trademark Review Newsletters dating back to May 2012, please click here.
“Alice’s Effect on US Patent Litigation,” IIPLA Annual Conference, Dubai, UAE (January 2015).
“Anti-NPE Laws - How recent Case Law, the FTC NPE survey, and the newly proposed Innovation Act affect the Enforcement & Valuation of Patents,” Orange County Patent Law Association (OCPLA) and AIPLA event, Irvine, CA (January 2014)
“Intellectual Property Seminar for Executives and IP Managers," Tokyo, Japan (November 2013)
“eDiscovery and IP Litigation," Seoul, South Korea (November 2013)
"Strategies to Handle U.S. Litigations," Hsinchu and Taipei, Taiwan (September 2013)
"Recent Trends in U.S. Patent Litigation - Litigation involving Standard Essential Patents (SEP) - from Non-Practicing Entities to Practicing Entities," Tokyo, Japan (April 2013)
"Strategies Relating to Preissuance Submission, Post-grant Review and Inter Partes Review," Benrishi Kai (Patent Attorney Association of Japan), Tokyo, Japan (December 2012)
“Successful Medical Device Development,” Medical Electronic Device Solutions Conference, San Diego, CA (August 2012)
"Developments in ITC Litigation - An Overview For Japanese Companies," UBIC hosted seminar, Tokyo, Japan (April 2012)
Lecturer on “Patent Enforcement” for the “Understanding Intellectual Property Law for the High Technology Industry” course offered by University of California at Irvine.