Patents

Intellectual Property

Our skilled lawyers have practiced patent law for over 18 years. We employ our extensive knowledge of patent law to develop individualized patent strategies for every client. We represent both plaintiffs and defendants and our litigation team works under hourly, hybrid, and contingency fee arrangements.

We have extensively worked in the technology sectors of medical devices, integrated circuits, computer hardware, online platforms and content streaming, gaming, fitness and exercise equipment, vehicle tracking, automated watering, diesel filters, coal and clean energy, and printing, among others. 

We also provide infringement opinion letters when clients are seeking a determination of whether to pursue a claim or have been accused of violating patent rights or before they introduce a new product. Because we integrate our practice groups, our attorneys are uniquely situated to analyze and help clients value patent portfolios at the time an acquisition or sale.

Examples of representative patent and patent related cases we have successfully litigated are:

ATEN International v. Uniclass (C.D. Cal.)

  • Represented Defendant against Plaintiff ATEN, Taiwan based international seller of computer switches originally sought over $30,000,000 in damages on 6 patents over 125 product types
  • Successfully limited claims at claim construction
  • Successfully reduced patents to 4 and accused products to less than 40 before trial
  • Won jury verdict of non-infringement on all claims
  • Won jury verdict of invalidity on 2 patents

Red Star Traders, LLC v. Zhejiang Zhengte Group CO. et al (Sup. Ct. Cal.)

  • Plaintiff sued former Chinese manufacturer Defendant for indemnification for patent infringement claim
  • Successfully obtained default judgment of over $1mm against Chinese Defendants and executed against A/R at Costco

Red Star Traders, LLC, Costco Wholesale v. Wanda Ying Li and Treasure Garden (D. UT)

  • Plaintiffs brought a declaratory judgment action for non-infringement and invalidity on Defendants’ patents
  • Successfully achieved a settlement where Plaintiffs received a perpetual ongoing license for Defendants’ patent

Wanda Ying Li v. Costco Wholesale Corp, Red Star Traders, LLC (C.D. Cal.)

  • Represented Defendants against Plaintiff seeking approximately $10,000,000 for patent infringement damages on 4 patents
  • Secured discovery sanction award of $30,000 against Plaintiff
  • Mediation before Judge after claim construction briefing and sanction

Etagz v. Future US, PetSmart, Quiksilver, Duncan, adult entertainment indus., et al. (Cal. & E.D. Tex.)

  • Represented Plaintiff on patent for multi-media / digital hangtags for use in advertising merchandise and continuing consumer relationships
  • Successfully obtained several million in settlements.

Optima v. Landice, Fitcorp, Lifecore, Fleetilla et al. (E.D. Tex.)

  • Represented Plaintiff on health and exercise monitoring patent.
  • Successfully obtained royalty payments.

Virtual Fleet v. US Fleet Tracking, Telogis, Clever Devices (E.D. Tex.)

  • Represented Plaintiff on virtually tracking vehicles in a fleet.
  • Successfully obtained royalty payments.

Employment Law Compliance, Inc. v. Texas Automobile Dealers Assoc. et al (N.D. TX)

  • Plaintiff sued Hotlink HR and its customers for patent infringement
  • Successfully negotiated settlement and covenant not to sue with no monetary payment after filing IPR

RECENT PATENT LITIGATION SUCCESS STORY:

Our patent lawyers successfully won a hard-fought jury verdict before the Hon. Judge Guilford in the Central District of California after three years of patent litigation against a leading international supplier of Keyboard Video and Mouse switches (“KVM”). ATEN TECHNOLOGY, CO. LTD. v. UNICLASS TECHNOLOGY CO., LTD., et al., Case No. 2:15-cv-04424-AJG-AJW (C.D. Cali. 2017).  In representing the Defendants, we obtained a jury verdict of non-infringement on all counts, and a finding of invalidity on two of ATEN’s patents.

The plaintiff ATEN is a Taiwanese-based manufacturer and supplier of branded and OEM computer electronics, including KVM switches, with reported earnings in excess of $160,000,000 US and more than 500 patents and patent applications. Joe and Robert represented the Defendants Uniclass Technology Co., Ltd.; Electronic Technology Co., Ltd of Dongguan Uniclass, Airlink 101, Phoebe Micro Inc., Broadtech International Co., Ltd. D/B/A Linkskey, Black Box Corporation, and Black Box Corporation of Pennsylvania.  The principal Defendant Uniclass Technology is located in Taiwan and China and is a manufacturer and supplier of OEM KVM switches.

During the course of the litigation, ATEN sued the Defendants on 6 patents, 72 claims, and over 125 different types of accused products representing thousands of sales of KVM switches in the United States. ATEN was represented by notable IP law firms including Fish & Richardson, Finnegan Henderson, Holland and Knight, Farney Daniels, Orrik, and Mei & Mark. ATEN originally sued the Defendants in the Eastern District of Texas, and the case was successfully transferred to the Central District of California. 

The briefing and hearing on claim construction were extensive, involving over a dozen claim terms. After claim construction and further briefing, ATEN voluntarily dismissed 2 patents. Of the 4 remaining patents, more than half of the claims were reduced before trial through successful dispositive and pretrial motions. The team won summary judgment on non-infringement of key claims as well as lost profits, lowering potential liability by more than 2/3rds. 

DEVELOPMENTS IN PATENT LAW

1.  It is now possible for patent owners to collect lost profits from foreign sales.

The Supreme Court in WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018), held that a patent owner may collect lost profits based on foreign sales when components of the patented invention are exported from the United States and are “especially adapted for use in the invention” and “combined outside of the United States,” under subsection 35 U.S.C. § 271(f)(2) of the patent statute.

2.   Early challenges to patent eligibility based on Alice now more difficult.

The Federal Circuit in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), held that factual questions can exist as to whether patent claims are directed to abstract ideas or transformative inventions even though patent eligibility is ultimately a question of law.

3.   Venue in patent infringement actions further explained.

In re BigCommerce Inc. and Beyond, 890 F.3d 978 (Fed. Cir. 2018), the Federal Circuit explained that venue is proper under 28 U.S.C. § 1400(b) in the judicial district where a corporate defendant maintains its “principal place of business” or where its “registered office” is located.  However, as explained in In re HTC Corp., 889 F.3d 1349 (Fed. Cir. 2018), a foreign defendant corporation can be sued in any district where it may be subject to personal jurisdiction because § 1400(b) does not apply.

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