Brian Ferrall represents technology and biomedical clients primarily in high-stakes trade secret, patent and other intellectual property disputes, and has broad experience in contract, unfair business practices and antitrust litigation. He also advises clients on IP protection, licensing and competitive strategy. Mr. Ferrall has expertise guiding international clients through the challenges of litigating in the United States.
By developing a successful strategy with the client at the outset of a dispute, he is able to achieve efficient and effective resolutions before trial, or victories at trial. Mr. Ferrall has tried cases to verdict in California federal and state courts, and federal courts in Delaware and Texas, and has served as lead counsel on numerous cases.
Cases of Note
Cisco Systems, Inc. v. Arista Networks, Inc.: We defended Arista Networks in this groundbreaking case which raised the important question of whether and to what extent functional computer commands merit copyright protection. Cisco accused Arista, run by a former Cisco vice president, of copyright infringement for the use of more than 500 commands used to configure network switches. Cisco also accused Arista of infringing two patents, one of which it dismissed before trial. After a two-week trial, the jury returned a verdict in our client’s favor on both the copyright and patent claims.
Ziptronix v. Taiwan Semiconductor Manufacturing Company: We won summary judgment of non-infringement for Taiwan Semiconductor Manufacturing Company, Ltd. and its subsidiary TSMC, North America in a long-running patent lawsuit brought by North Carolina semiconductor company, Ziptronix, Inc. Ziptronix had asserted nine patents and more than 500 patent claims directed to TSMC’s manufacturing of semiconductors for use in backside-illumination image sensors used predominantly in smartphone cameras. On behalf of TSMC, we defeated Ziptronix’s claims by arguing that the territorial limits of U.S. patent law prohibited reaching TSMC’s business transactions and manufacturing operations in Taiwan.
British Telecommunications v. Comcast Cable Communications, LLC: We served as lead counsel for Comcast in an eight-patent case brought by British Telecom in Delaware federal court. The case targeted Comcast's high speed data and telephony services and video encryption. We also asserted Comcast patents against British Telecom in Texas federal court. In Delaware, we prevailed on six of the eight patents by way of summary judgment and stipulated dismissals, and thereafter reached a very favorable resolution of both litigations.
STC.UNM v. Semiconductor Company: We secured a very favorable settlement and then the dismissal of an International Trade Commission (ITC) investigation for a leading semiconductor company. The patent suit was brought by STC.UNM , the licensing arm of the University of New Mexico. Through careful discovery and then summary judgment, we persuaded the court that the patent was unenforceable for most of its term, and that the plaintiff lacked standing to sue as to the remainder of its term. The standing issue was affirmed on appeal.
Edwards Lifesciences v. Corevalve Inc. et al.: We defended Medtronic, Inc. and its subsidiary, CoreValve, in a multi-patent case brought by Edwards Lifesciences in the District of Delaware. The patents at stake concerned CoreValve’s lifesaving transcatheter artificial heart valve. Although an injunction was initially ordered, we convinced the court to stay that injunction, and then later resolved all of the pending patent litigation with a successful settlement.
C-Cation Technologies v. Comcast Cable Communications, LLC, et al.: We represented Comcast in a patent infringement case brought by C-Cation Technologies in the Eastern District of Texas, and a related breach of contract claim Comcast brought in the Southern District of New York. The plaintiff targeted our clients' high speed data and telephony services and sought damages well into nine figures. We were selected as lead trial counsel for all defendants, which included three other cable companies. After several pre-trial victories, we reached a favorable settlement for all defendants.
STC.UNM v. Taiwan Semiconductor Manufacturing Company: We served as lead counsel for TSMC in this investigation before the International Trade Commission. We secured a very favorable settlement and then dismissal, safeguarding TSMC’s freedom to operate certain advanced semiconductor patterning techniques patented by the University of New Mexico.
Taiwan Semiconductor Manufacturing Company v. Semiconductor Manufacturing International Corporation: We represented TSMC against China's then-leading semiconductor manufacturer, SMIC, in the largest trade secret misuse case tried to date. SMIC owed its very existence to technology stolen from our client. Following a jury verdict on liability in favor of TSMC, SMIC agreed to pay $200 million in cash and approximately $130 million of its company stock. The case serves as precedent for the strong protection afforded by California's trade secret statute, even where the actual theft occurred in Asia.
Network Appliance v. BlueArc Corporation: We served as lead counsel for network storage newcomer BlueArc Corporation. We obtained summary judgment for BlueArc in this multi-patent case in the Northern District of California. The plaintiff, industry stalwart Network Appliance, asserted more than 50 patent claims concerning fileserver hardware and software, and sought an injunction which would have ended our client's business. The victory on summary judgment was upheld on appeal.
Rembrandt Technologies, Inc. v. Comcast Cable Communications, LLC: We served as lead counsel for Comcast in a patent infringement case involving high-speed Internet and digital TV services. Rembrandt Technologies, Inc. originally filed the case in the Eastern District of Texas, but in conjunction with other co-defendants, we obtained multi-district consolidation and transfer to the District of Delaware. Based upon claim construction, Rembrandt conceded non-infringement of all patents, preserving only its right to appeal the claim construction as to the ninth. The Federal Circuit then upheld the claim construction on that last patent that resulted in non-infringement. We also helped Comcast secure an exceptional-case determination and a resulting award of over $10 million in fees and costs.
Harris Corporation v. Sanyo North America: We prosecuted Harris Corporation's patent claims relating to closed-captioning technology against several major television manufacturers, all of whom took licenses but for Sanyo. We won a jury verdict of $7 million against Sanyo after a one week trial in Dallas federal court, which was affirmed on appeal.
Xilinx, Inc. v. Altera Corporation: We represented Xilinx in this patent case between these two market segment leaders involving the fundamental patent behind field programmable gate arrays, now a multi-billion dollar industry. The San Jose jury returned a verdict of infringement and validity, which the court overturned on post-trial motions. While the appeal was pending, Altera agreed to enter into a cross license for $20 million.
Target Therapeutics v. Cordis Endovascular Systems, Inc.: We successfully defended Cordis Endovascular Systems, Inc., allowing its microcatheter product for treating vascular disorders in the brain to remain on the market by obtaining an emergency stay of a preliminary injunction. Ultimately, the Federal Circuit Court of Appeals adopted our argument that the patent was not infringed.
Awards and Honors
- Listed in Best Lawyers in America for Commercial, Intellectual Property Litigation and Patent Litigation, 2012 - present
- Northern California Super Lawyer, Intellectual Property and Business Litigation, 2005 - present
- Recognized for Trade Secret Litigation, Legal 500, 2011-2012
- AV rating from Martindale-Hubbell
- Fulbright Fellowship in European Law, 1996
Publications and Speaking Engagements
- "Sound Science for Litigation," BASF's Complex Court's Symposium, 2015
- “Critical Strategic Considerations at the Outset of Patent Litigation Defense,” ALM General Counsel Conference, 2014
- "World Recognition of Distinguished General Counsel," Directors Roundtable, 2014
- "The Natural Law of Patents," California Lawyer, 2013
- "The Complicated Relationship Between Multiple Party Patent Infringement Liability & Common Law Principles," Sedona Conference Publications, 2011
- "Patent Litigation Case Management," The Sedona Conference's Patent Litigation XII, 2011
- “Prosecuting and Defending at Trial,” Litigating Trade Secret and Employee Mobility Claims Conference, 2010
- “‘Clean Room’ Reverse Engineering as a Trade Secret Misappropriation Defense Strategy,” American Bar Association's Intellectual Property Litigation Law, 1993
- “Will A Market In Sulfur Dioxide Work? An Evaluation of the Acid Deposition Title of the Clean Air Act Amendments of 1990,” Virginia Environmental Law Journal, 1991
- Various CLE speaking engagements