Toshiba Corporation v. Wistron Corporation, Investigation No. 337-TA-705 (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. and Nellcor Puritan Bennett, Inc. v. Masimo Corp. Represented Masimo in patent infringement lawsuit involving patents asserted by both parties related to pulse oximeter medical devices.
254 F. Supp. 2d 1140 (C.D. Cal. 2003). Successfully obtained favorable claim construction involving 11 patents.
292 F. Supp. 2d 1201 (C.D. Cal. 2003). Obtained summary judgment of noninfringement on two of Nellcor’s asserted patents.
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).
Alfa Leisure, Inc. v. King of the Road. Represented Alfa Leisure in patent infringement lawsuit involving fifth-wheel travel trailers.
314 F. Supp. 2d (C.D. Cal. 2004). Successfully defended against summary judgment of unenforceability due to inequitable conduct and also, on that motion, persuaded the Court to dismiss inequitable conduct defense.
2004 WL 1375684 (C.D. Cal. 2004). Successfully dismissed defendant's invalidity defenses.
O'Hagins, Inc. v. M5 Steel Mfg., Inc., 276 F.Supp.2d 1020 (N.D. Cal. 2003). Represented O’Hagins in a patent infringement lawsuit involving a patent on roof ventilation devices. Successfully dismissed competitor’s counterclaim for declaratory judgment of non-infringement of related design patents.
Wechsler v. Macke International (C.D. Cal. 2001). Represented Wechsler in a patent litigation involving a pet watering device. Successfully represented Wechsler at one week jury trial, where the jury found that Defendant’s infringement was willful and awarded Wechsler damages.
Bierman v. Toshiba Corp., WL No. Civ. 1004032 (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., 659 F.3d 1376 (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, 270 F.R.D. 538 (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., 658 F.Supp.2d (S.D. Cal. 2009) and CV09-0052 (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.
Commonwealth Scientific and Industrial Research Organization v. Toshiba America Information Systems, Inc. et al. (E.D. Tex. 2007). Represented Toshiba in a patent infringement lawsuit involving wireless LAN standards. Successfully settled the case on 4th day of trial after presentation of the invalidity defense.
Linex Tech, Inc. v. Belkin Int’l, Inc. et al., 628 F.Supp.2d 703 (E.D. Texas 2008). Represented Toshiba in a patent infringement lawsuit involving wireless networking technology. Successfully settled the case after court ordered plaintiff to supplement its infringement contentions with specificity.
O2 Micro v. Microsemi (E.D. Tex. 2007). Represented Microsemi in a patent infringement lawsuit involving DC/AC inverter technology.
StorMedia Texas, LLC v. Toshiba American Information Systems, Inc., et al. (E.D. Tex. 2007). Represented Toshiba in a patent infringement case involving hard drives. Successfully dismissed from that case after presenting invalidity contentions.
In the Matter of CERTAIN POINT OF SALE TERMINALS AND COMPONENT PARTS THEREOF, Investigation No. 337-TA-524 (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.
California Pacific Labs, Inc. v. Nalge Nunc Intern. Corp., 2003 WL 24027885 (N.D. Cal. 2003). Represented Nalge and Apogent in a trade secrets, trade dress, trade mark, conspiracy and breach of contract case involving laboratory equipment. Obtained summary judgment dismissing most of plaintiff’s causes of action. The case later settled.
RAS Holding Corp. et al. v. SurgiLight, Inc. (M.D. Fla. 2000). Represented SurgiLight, Inc. in patent infringement action involving a method of treatment for presbyopia.
Co-author, "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)
Author, “Ten Steps in Analyzing Patent Infringement,” ExecSense, E-book available on Amazon.com (February 6, 2013)
Co-author, "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)
Co-author, "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)
Co-author, “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)
"A Supreme End to Patent Trolls?" Orange County Lawyer, The Orange County Bar Association (August 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)
“Possible U.S. patent reforms set to have significant impact,” Indus Business Journal (June 2005)
“Patents need to be protected but maybe not ‘at all costs’,” Indus Business Journal (August 2004)
“Surprise! Legal wrangling hinges around dictionary definition,” Indus Business Journal (November 2003)
For all issues of the Federal Circuit and Trademark Review Newsletters dating back to May 2012, please click here.
Panelist on “Anti-NPE Laws - How recent Case Law, the FTC NPE survey, and the newly proposed Innovation Act affect the Enforcement & Valuation of Patents” at a joint Orange County Patent Law Association (OCPLA) and AIPLA event in Irvine, CA (January 2014).
Presented at the “Intellectual Property Seminar for Executives and IP Managers" in Tokyo, Japan (November 2013).
Presented on “eDiscovery and IP Litigation" in Seoul, South Korea (November 2013).
Presented on "Strategies to Handle U.S. Litigations" in Hsinchu and Taipei, Taiwan (September 2013).
Presented on "Recent Trends in U.S. Patent Litigation - Litigation involving Standard Essential Patents (SEP) - from Non-Practicing Entities to Practicing Entities" in Tokyo, Japan (April 2013).
Presented on "Strategies Relating to Preissuance Submission, Post-grant Review and Inter Partes Review" for the Benrishi Kai (Patent Attorney Association of Japan) in Tokyo, Japan (December 2012).
Presented on "Strategies for Taking Advantage of the America Invents Act, Resolving the Tension Between Patentable Subject Matter & Joint Infringement" in Tokyo, Japan (October 2012).
Panelist on “Successful Medical Device Development” at Medical Electronic Device Solutions Conference, San Diego, CA (August 2012).
Presented on "Developments in ITC Litigation - An Overview For Japanese Companies," UBIC hosted seminar, Tokyo, Japan (April 2012).
Lectured on “U.S. Patent Litigation” as part of a three part seminar in Tokyo for the Patent Attorney Kai organization (2011).
Lectured on “Personal Jurisdiction issues for Japanese Companies” and “ITC litigation” in Tokyo as part of seminar on US IP law (2011).
Lectured on “Practical Tips on Enforcing and Defending Patents: Trial and Post-Trial Matters” at the American Bar Association – Section of Intellectual Property Law Summer Conference, June 21, 2005.
Lecturer on “Patent Enforcement” for the “Understanding Intellectual Property Law for the High Technology Industry” course offered by University of California at Irvine.