Cases
Experience: Representative Patent Litigation Experience: Continental Automotive Systems, Inc. v. Nokia (Chancery Court, Delaware). Co-lead counsel for Continental Automotive Systems, Inc. in a breach of contract
declaratory judgment lawsuit seeking the determination
imposition of FRAND licensing terms in action challenging refusal to license alleged st
ard essential patents (SEPs) relevant to the 2G, 3G
4G cellular st
ards on FRAND terms
conditions.
Continental Automotive Systems, Inc. v. Avanci, LLC (N.D. Tex.). Co-lead counsel for Continental Automotive Systems, Inc. in a lawsuit seeking declaratory relief for determination of breach of antitrust laws
imposition of FRAND licensing terms in action challenging refusal to license alleged st
ard essential patents relevant to cellular st
ards on FRAND terms
conditions.
TCL Communication Technology Holdings v. Telefonaktiebolaget LM Ericsson
Ericsson Inc. (C.D. Cal.). Co-lead counsel for TCL Communication in breach of contract
declaratory judgment action relating to FRAND
the IPR policies of ETSI
3GPP relating to alleged SEPs for 2G GSM/GPRS/EDGE, 3G UMTS
4G LTE technology. The case was named a 'Milestone Case of the Year' by Managing Intellectual Property
Galas v. Alere Inc. (California, Superior Court, San Diego, Central Div.). Lead counsel for shareholder representative in merger contract dispute concerning patented
FDA-approved molecular diagnostics
point-of-care technologies
related know-how.
In Re Certain LTE
3G Compliant Cellular Communication Devices (International Trade Commission). Represented HTC Corporation
HTC America, Inc. in a five-patent ITC investigation relating to LTE-
3G-compliant cellular communications devices.
Lenovo (United States) Inc. et al v. IPCom GmbH & Co., KG (N.D. Cal.). Lead counsel for Lenovo (United States) Inc.
Motorola Mobility, LLC in a breach of contract lawsuit, involving the failure by defendant to license st
ard-essential patents on FRAND terms
conditions.
American Patents LLC v. MediaTek, Inc. et al (W.D. Tex.). Lead counsel for Lenovo (Shanghai) Electronics Technology Co. Ltd.
Lenovo Group Ltd. in a four-patent lawsuit, relating to on-chip service capabilities used in integrated circuits.
Uniloc 2017 LLC v. Motorola Mobility, LLC (Delaware). Lead counsel for Motorola Mobility, LLC in a five-patent lawsuit, relating to certain wireless network technologies.
Progressive Fastening Systems, Inc. v. VeloBond, Inc. et al, (C.D. Cal.). Lead counsel for Progressive Fastening Systems, Inc. in a case involving misappropriation of trade secrets, breach of contract, unfair competition, conversion, intentional interference with an economic advantage, intentional interference with contractual relations,
civil conspiracy.
San Diego County Credit Union v. Citizens Equity First Credit Union (S.D. Cal.). Lead counsel for San Diego County Credit Union in a trademark lawsuit, seeking a declaratory judgment of non-infringement
invalidity of the federally registered mark CEFCU. NOT A BANK. BETTER.
the asserted common-law mark NOT A BANK. BETTER, as well as for false registration
unfair competition.
American Patents LLC v. TCL Corp. et al, (E.D. Tex.). Represented TCL entities in a seven-patent lawsuit, involving various technologies used in 'smart' devices.
u-blox AG et al v. Interdigital, Inc. et al (S.D. Cal.). Represented u-blox AG, u-blox San Diego, Inc.,
u-blox America, Inc. in breach of contract
declaratory judgment action relating to FRAND
the IPR policies of ETSI
3GPP relating to alleged st
ard-essential patents for 2G, 3G
4G mobile cellular technologies.
u-blox AG et al v. Sisvel International S.A. et al (S.D. Cal.). Represented u-blox AG, u-blox San Diego, Inc.,
u-blox America, Inc. in breach of contract
declaratory judgment action relating to FRAND
the IPR policies of ETSI
3GPP relating to alleged st
ard-essential patents for 2G, 3G
4G mobile cellular technologies.
Evolved Wireless v. HTC (Delaware). Lead counsel for HTC Corporation
HTC America, Inc., in a five-patent lawsuit relating to St
ard Essential Patents (SEPs) alleged to cover the LTE st
ard. HTC has also asserted a counter-claim for breach of contract alleging that Evolved Wireless has failed to license its patents on Fair, Reasonable
Non-Discriminatory (FRAND) terms.
Rosetta Wireless v. HTC (N.D. of Illinois). Represents HTC Corporation
HTC America, Inc., in a patent lawsuit relating to storage of data files in mobile wireless devices.
Intellect Wireless v. HTC (N.D. Ill.). Represented HTC Corporation
HTC America, Inc., in a two-patent lawsuit relating to sending pictures to a paging receiver. The accused technology is multimedia messaging service (MMS). After a four-day bench trial, the court found the patents were unenforceable due to inequitable conduct. On appeal, the Federal Circuit affirmed. Subsequently, we obtained an award of $4.1 million for reimbursement of HTC's attorneys' fees
costs against both the Plaintiff
its attorneys.
Wi-LAN v. Alcatel (E.D. Tex.). Represented HTC Corporation
HTC America, Inc., in a multi-patent lawsuit relating to 3G cellular technology, including HSDPA, HSUPA
HSPA. After a six-day jury trial, obtained a complete defense verdict that HTC did not infringe the asserted patents
all of the asserted claims were invalid as anticipated
/or obvious.
Parallel Networks, LLC v. Abercrombie & Fitch Co. (E.D. Tex.). Lead counsel for Sony Corporation of America
Sony Electronics Inc. in a patent lawsuit relating to executable online applets downloaded over the internet. We obtained summary judgment of non-infringement on behalf of Sony
the case was dismissed with prejudice.
Ericsson Inc.
Telefonaktiebolaget LM Ericsson v. TCL Communication Technology Holdings, et al. (E.D. Tex.). Represents TCL Communication
TCT Mobile in a five-patent infringement action relating to patents Ericsson's has alleged cover aspects of cellular phone hardware
the Android OS.
Gehegan v. Union Bank (S.D. of Cal.). Lead counsel for Union Bank in an infringement action copyright infringement for alleged use of training materials. The case was resolved during mediation on very favorable terms.
Private Label Nutraceuticals v. Vox Nutrition (District of Utah). Lead counsel for Plaintiff Private Label Nutraceuticals in an action for trademark infringement
cybersquatting. The case was resolved after the Defendant Vox Nutrition agreed to transfer certain websites at issue in the case to my client.
Intellect Wireless v. HP/Palm (N.D. Ill.). Represented Hewlett-Packard
Palm in a two-patent lawsuit relating to sending pictures to a paging receiver. The accused technology is multimedia messaging service (MMS). Obtained summary judgment of no direct infringement
an award for reimbursement of our clients' attorneys' fees
costs.
Ivera Medical Corporation v. Excelsior Medical Corporation (S.D. of Cal.). Represented defendant in patent infringement litigation related to needleless access valves. Court granted summary judgment of invalidity in favor of defendant Excelsior Medical Corporation.
Internet Patents Corp. v. Active Network, Inc., the General Automobile Insurance Services, Inc., Permanent General Assurance Corp. of Ohio, QuinStreet, Inc.,
Tree.com (Court of Appeals for the Federal Circuit & California, Northern Dist.). Represented Tree.com in successfully invalidating asserted patent on internet-browser functionality on an early motion to dismiss
sustaining favorable judgment on appeal.
Honeywell v. Samsung SDI
Samsung Mobile Display (D. Del.). Represented Samsung SDI
Samsung Mobile Display. On summary judgment, we invalidated the asserted patent relating to LCD modules based upon the on-sale bar after most of the industry licensed the patent-in-suit. On appeal, the Federal Circuit affirmed. We are currently seeking reimbursement of Samsung's attorneys' fees
costs.
Freeny, et al. v. HTC America, Inc. (E.D. Tex.). Represented HTC America, Inc., in a four-patent infringement lawsuit involving a multiple integrated machine system performing multiple digital functions from a single operating system. Favorable settlement reached.
LendingTree v. Zillow, et al. (N.D. N.C.). Represents LendingTree in an antitrust
patent infringement lawsuit involving a method
computer network for coordinating a loan over the internet. Successfully defeated antitrust claims brought against LendingTree. The case is currently on appeal.
NovelPoint Tracking LLC vs. Hyundai Motor America (E.D. Tex.). Represented Hyundai Motor America in a patent lawsuit relating to GPS-based multimedia navigation systems. Negotiated favorable settlement for client in early stages of litigation.
Wi-LAN v. HTC (E.D. Tex.). Represented HTC Corporation
HTC America, Inc., in a multi-patent lawsuit relating to Wi-Fi, LTE, Wi-MAX
CDMA2000 (EVDO Rev. A) technologies. Obtained favorable settlement.
NovelPoint Tracking v. TCT Mobile (E.D. Tex.). Represented TCT Mobile in a patent lawsuit relating to GPS technology. Obtained favorable settlement.
Millennium Labs v. Ameritox (S.D. Cal.). Lead counsel for Millennium Labs in a Lanham Act action for Trade Dress infringement.
Wi-LAN v. Apple (E.D. Tex.). Represented HTC America, Inc.. in a multi-patent lawsuit relating to Wi-Fi, HSPA, LTE
CDMA2000 (EVDO Rev. A) technologies.
Novatel Wireless v. Franklin Wireless (S.D. Cal.). Represented Franklin Wireless, Inc., in a four-patent lawsuit relating to wireless modems, USB modems
Wi-Fi.
Golden Bridge v. HTC (D. Del.). Lead counsel for HTC Corporation
HTC America, Inc., in a two-patent lawsuit relating to WCDMA 3G technology. Case was dismissed after summary judgment
trial victories in related cases.
Wi-LAN v. PCD (E.D. Tex.). Represented Personal Communication Devices, LLC, (PCD) in a two-patent lawsuit relating to Wi-Fi
CDMA2000 technologies. Obtained an extremely favorable settlement for PCD after filing three motions for summary judgment on PCD's behalf.
UO! IP of Delaware v. HTC (D. Del.). Represented HTC Corporation in a two-patent lawsuit relating to language translation devices. Successfully negotiated an early license on extremely favorable terms.
Datascape, Inc. v. Kyocera Wireless
Sony Ericsson (N.D. Ga.). Represented Sony
Kyocera Wireless in a six-patent infringement action. The accused technology relates to data communications
Internet access in wireless devices.
Mediatek v. Sanyo (E.D. Tex.). Represented Mediatek in a three-patent lawsuit
obtained a favorable settlement valued at over $200 million by our client. The asserted patents related to integrated chipset solutions for conversion of television display signals, audio encoding
compression of video
audio data in video cameras, DVD recorders
cellular phones.
Apcon v. MRV Communications (C.D. Cal.). Represented MRV Communications, a leading provider of telecommunications equipment. After Apcon threatened MRV's customers
sued MRV for patent infringement, we countersued with claims of patent misuse, inequitable conduct
unfair competition. Within 10 months, Apcon surrendered its patent suit by agreeing to a no payment walk-away settlement
agreed to issue a press release stating that MRV's products do not infringe any Apcon patent
that MRV's customers can conduct business without fear of reprisal from Apcon.
Representative Post-Grant Proceeding Experience Before the USPTO: Inter Partes Review
Motorola Mobility LLC v. Uniloc 2017 LLC, IPR2020-00038, Represented Motorola Mobility LLC in challenging the validity of U.S. Patent 6,868,079. Petition was instituted on all asserted grounds.
HTC Corporation
HTC America, Inc. et al v. INVT SPE LLC, IPR2018-01472, Represented HTC Corporation
HTC America, Inc. in challenging the validity of U.S. Patent 6,466,563. Petition was instituted on all asserted grounds
all challenged claims were invalidated.
HTC Corporation
HTC America, Inc. et al v. INVT SPE LLC, IPR2018-01475, Represented HTC Corporation
HTC America, Inc. in challenging the validity of U.S. Patent 7,760,815. Petition was instituted on all asserted grounds
all challenged claims were invalidated.
HTC Corporation
HTC America, Inc. et al v. INVT SPE LLC, IPR2018-01476, Represented HTC Corporation
HTC America, Inc. in challenging the validity of U.S. Patent 7,764,711. Petition was instituted on all asserted grounds
all challenged claims were invalidated.
TCL Corporation et al. v. Telefonaktiebolaget LM Ericsson, No. IPR2015-1583. Lead counsel representing Petitioner TCL in challenging the validity of U.S. Patent No. 6,418,310, a patent directed to the control programs for wireless communication devices. Petition was instituted on all asserted grounds
all challenged claims were invalidated.
TCL Corporation et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1584
IPR2015-1600. Represented Petitioner TCL in challenging the validity of U.S. Patent No. 6,029,052, a patent directed to multimode direct conversion receiver circuitry. Petitions were instituted on all asserted grounds
all challenged claims were invalidated.
TCL Corporation et al. v. Telefonaktiebolaget LM Ericsson, No. IPR2015-1602, IPR2015-1637, IPR2015-1641, IPR2015-1646, IPR2015-1674, IPR2015-1676, IPR2015-1761
IPR2015-1806. Represented Petitioner TCL in challenging the validity of U.S. Patent No. RE43,931, a patent directed to contact-sensitive transducers for controlling a GUI on a mobile phone. Petitions were instituted on all asserted grounds
all challenged claims were invalidated.
TCL Corporation et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1605
IPR2015-1622. Lead counsel representing Petitioner TCL in challenging the validity of U.S. Patent No. 7,149,510, a patent directed to access control for application software. Petitions were instituted on all asserted grounds.
TCL Corporation et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1650, IPR2015-1772,
IPR2015-1878. Lead counsel representing Petitioner TCL in challenging the validity of U.S. Patent No. 6,535,815, a patent directed to using quality-of-service parameters in A-GPS for mobile terminals. Petition was instituted on all asserted grounds
all challenged claims were invalidated.
HTC Corporation,
HTC America, Inc. et al. v. Evolved Wireless LLC IPR2016-00758. Represented Petitioner HTC in challenging the validity of U.S. Patent No. 8,218,481 was instituted on all asserted grounds.
HTC Corporation
HTC America, Inc et al. v. Evolved Wireless LLC IPR2016-01310. Represented Petitioner HTC in challenging the validity of U.S. Patent No. 7,768,965 was instituted on all asserted grounds.
HTC Corporation
HTC America, Inc et al. v. Evolved Wireless LLC IPR2016-00757. Represented Petitioner HTC in challenging the validity of U.S. Patent No. 7,881,236 was instituted on all asserted grounds.
HTC Corporation
HTC America, Inc et al. v. Evolved Wireless LLC IPR2016-01208
IPR2016-01227. Represented Petitioner HTC in challenging the validity of U.S. Patent No. 7,746,916. Petitions were instituted on all asserted grounds.
Ex Parte
Inter Partes Reexamination
Inter Partes Request No. 95/001,814. Represented Third-Party Requester in challenging the validity of U.S.Patent No. 7,310,416, a patent relating to sending pictures to a paging receiver. All claims cancelled by the PTO.
Inter Partes Request No. 95/001,177. Represented Third-Party Requester in challenging the validity of U.S.Patent No. 7,266,186, a patent relating to sending pictures to a paging receiver. All claims cancelled by the PTO.
Ex Parte Request No. 90/012,899. Represented Third-Party Requester in challenging the validity of U.S. Patent No. RE37,802, a patent directed to a MultiCode Sequence Spread Spectrum for cellular technology.
Ex Parte Request No. 90/012,072. Represented Third-Party Requester in challenging the validity of U.S. Patent No. 7,266,186. All asserted claims asserted in litigation cancelled by the PTO.
