Intellectual Property

We served as lead counsel for HTC, a Taiwan-based manufacturer of handheld devices, in its battle with Apple over smartphone technology. Apple first sued HTC in district court and before the International Trade Commission (ITC), claiming our client had infringed 20 patents related to various computer-related technologies, including user interfaces, operating systems, power management, and digital signal processing. The ITC hearing that went to decision resulted in a favorable ruling, and HTC obtained a settlement to become the first Android handset maker licensed by Apple.

The U.S. Court of Appeals for the Federal Circuit upheld our successful defense of a $2.2 billion patent infringement claim against Comcast Cable Communications, LLC. The plaintiff had asserted that Comcast’s Digital Voice service infringed on its patents for Voice over Internet Protocol (VoIP) technology. We obtained a non-infringement judgment in the Eastern District of Texas, which was sustained on appeal.

We represented Netflix in the defense of a patent suit Broadcom subsidiaries CA Inc. and Avago Technologies filed in the Eastern District of Texas and a corresponding declaratory judgment action filed in the Northern District of California. The companies claimed Netflix infringed five software patents. Via a mandamus petition to the Federal Circuit, we won transfer of the Texas action to the Northern District of California.

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.

By winning a defense verdict in this federal jury trial, we protected Twitter Inc. from a patent infringement suit and $40 million damages claim. Virginia-based VS Technologies had obtained a patent for “an interactive virtual community of famous people,” and sued Twitter over its virtual community technology. During the six-day trial, we argued that Twitter's Browse Interests feature did not infringe the terms of the patent and that in fact, the patent was invalid. The jury agreed, and found Twitter not liable for patent infringement.

We represented Google in what Oracle claimed to be a multi-billion-dollar patent and copyright war concerning the use of the Java programming language in Google’s Android platform. When Oracle bought Sun Microsystems, it acquired Sun’s rights to Java. In August 2010, Oracle sued Google, claiming its Android mobile technology infringed Oracle patents and copyrights. We defended Google against all the patent and copyright claims, and also argued that the damage estimates were wildly inflated. Following repeated rounds of motions and briefing, the judge dismissed the bulk of Oracle’s copyright claims, and at trial the jury rendered a unanimous verdict rejecting all claims of patent infringement. After an appeal by Oracle, the case returned to district court for a trial on fair use. After a two-week trial, the federal jury unanimously found that Google’s use of Oracle’s Java programming language in the Android operating system was a fair use. In March 2018, the Federal Circuit reversed the district court, rejected the jury’s verdict, and held that Google’s use was not a fair use as a matter of law. In a sweeping victory for Google and our trial team, the U.S. Supreme Court reversed the Federal Circuit and ruled that Google’s use of the programming language in its Android operating system is fair use.

We defended our clients Netflix, Inc. and Roku Corporation in a U.S. International Trade Commission complaint filed by Rovi Corporation. The complaint accused our clients, along with Mitsubishi Electric Corp., LG Electronics Inc., and Vizio Inc., of infringing several patents related to interactive program guides. The complaint sought an order banning television and media-player makers from entering the U.S. By the time of the trial, the other defendants had settled and our clients faced four patents. We successfully defended our clients at trial, with the ALJ finding one of the patents invalid and none of the patents infringed, as well as no actionable importation or available remedy. The ITC confirmed there was no violation. Rovi then pursued the matter in District Court with three of the same patents used in the ITC investigation as well as two additional patents. We won summary judgment of invalidity under Alice on all five asserted patents, which the Federal Circuit affirmed summarily.

We represented plaintiff ConforMIS, the world’s leading designer, developer, and manufacturer of patient-specific knee implants as well as the surgical tools required to best fit those implants into a specific patient’s body. Our client asserted Wright Medical and MicroPort Orthopedics, which manufacture knee and ankle implant systems, infringed four patents that embody fundamental aspects of ConforMIS’s technology. We negotiated an extremely favorable settlement for ConforMIS that includes a significant royalty rate for future sales.

We defended SanDisk from numerous patent assertions by Round Rock, including a total of 15 patents asserted in two separate litigations in the District of Delaware, and 12 patents asserted in another case in the Northern District of California. We prevailed in all adjudicated phases of the Delaware and California actions before the parties reached a broad settlement. In the California action, we secured final judgment in favor of SanDisk after obtaining a summary-judgment victory based on patent exhaustion. In the first Delaware phase, which culminated with a jury trial on two asserted patents, we obtained a defense verdict invalidating most asserted claims of both patents, and finding no infringement as to the other claims. In the next Delaware phase, a second jury trial was vacated after we obtained summary judgment invalidating claims from a third patent asserted by Round Rock. The other patents in the Delaware actions remained pending adjudication when the parties settled.

We represented Qualcomm in an ITC investigation in which Nvidia asserted infringement of seven patents that purportedly cover graphics processing units (GPUs). Nvidia sought to block the importation of Samsung Galaxy phones and tablets that contain Qualcomm’s Adreno technology, as well as those containing chips from ARM Holdings and Imagination Technologies. Nvidia abandoned its claims of infringement as to three of the patents prior to the hearing before the ALJ, and dropped its claims as to a fourth patent during the course of the hearing. Following the hearing, the ALJ determined that no violation of section 337 had been established, because of the patents remaining in the investigation, two had not been infringed, and the third had been infringed but was invalid. In December of 2015, the full International Trade Commission declined to review the ALJ’s initial determination of no violation of section 337, resulting in a complete victory for our client Qualcomm in the ITC. Nvidia filed and then dismissed an appeal to the Federal Circuit, cementing the win for Qualcomm.

We defended Ivantis, Inc., the maker of a revolutionary eye stent designed to treat glaucoma, in a case brought by competitor Glaukos Corporation in the Central District of California alleging infringement of two of Glaukos’s patents. The case settled on the eve of trial.

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.