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Kimble v. Marvel Entertainment, LLC: Supreme Court Confirms Patent License Fees Cannot Extend Beyond Patent Term


Speaker(s): Joel E. Lehrer, Michael G. Strapp
Recorded on: Jul. 20, 2015
PLI Program #: 153307

Joel Lehrer, a partner in Goodwin Procter's Technology Companies Group and a member of its FinTech Practice, specializes in intellectual property transactions and strategies for technology clients.

Mr. Lehrer's practice includes both the strategic development, management and protection of intellectual property portfolios, as well as technology and intellectual property transactions. Mr. Lehrer’s portfolio development practice focuses on domestic and international patents and trademarks and opinion work concerning clearance, patentability, infringement and validity. He has significant experience prosecuting patents on behalf of clients in the areas of computer software, computer hardware, data analytics, consumer electronics, business methods, financial systems and instruments, e-commerce, process control and simulation, and imaging.

Mr. Lehrer's transactional practice involves counseling clients with regard to intellectual property licensing, open source issues, and due diligence and other intellectual property issues in mergers, acquisitions, IPOs, and venture capital and private equity transactions. Mr. Lehrer is a regular contributor to Goodwin Procter’s Founder's Workbench and frequently speaks to start-ups, industry groups, and early-stage companies about IP issues.

Work For Clients

Recent representative clients and matters include:

  • CDS Business Mapping, a provider of underwriting information to over 700 insurance carriers, agents and brokers nationwide, in its acquisition by CoreLogic
  • Gibson Guitar in connection with a private placement of $225 million in aggregate principal amount of senior secured notes, the first capital markets offering for the iconic musical instrument company in its nearly 120-year history
  • BroadHop, Inc., a provider of telecommunication network control systems, in its sale to Cisco Systems, Inc.
  • Charlesbank Capital Partners, a private equity firm with over $3 billion in assets, in its sale of The Princeton Review to Tutor.com
  • The Carlyle Group in its acquisition of Talent Partners, a talent payroll solutions provider for the advertising industry
  • Drafting and securing patents for clients in the financial services, mobile advertising, application security and video surveillance fields

Prior to joining Goodwin Procter, Mr. Lehrer was an associate in the Patent and Intellectual Property Practice Group at Testa, Hurwitz & Thibeault in Boston.

Prior to becoming an attorney, Mr. Lehrer spent 10 years working for technology companies focused on the design, development and deployment of large-scale software applications in the financial services, aerospace and defense, and business-to-consumer Internet industries. His areas of expertise include software development methodologies, process design and reengineering, manufacturing, operations management, Web-based technologies, and institutional and retail financial systems.

Patenting "Big Data"
August 14, 2012

Patenting the Money Machine
The Deal
February 19, 2007

Trends in Financial Services Patents
IPFrontline
February 9, 2007

Open Source: Answers to 10 Common Questions
January 24, 2006

Speaking Engagements

Law School for the CFO
February 25, 2015
Boston, MA

CFO Roundtable's Law School for the CFO
October 16, 2013
Boston, MA

CFO Roundtable: Law School for the CFO
November 9, 2011

Education

J.D., 2002
Suffolk University School of Law(magna cum laude)
B.S., Industrial Engineering and Operations Research, 1989
University of California Berkeley

Admission

Bar

Massachusetts

US Patent and Trademark Office (USPTO)

Courts

U.S. District Court for the District of Massachusetts


Michael Strapp, a partner in Goodwin Procter’s IP Litigation Group, focuses on patent and trade secret litigation. He has been selected for inclusion in Chambers USA and recognized as a “Super Lawyer” for his work representing clients in intellectual property matters. In addition to patent and trade secret litigation, Mr. Strapp handles complex business litigation, including unfair competition, trademark infringement, false advertising and contract claims. He has also provided pro bono services to KIND (Kids in Need of Defense) and the Political Asylum/Immigration Representation Project.

Mr. Strapp is an authority on patent reform, including the 2011 America Invents Act, the most significant change to the U.S. patent system in several decades, and the Innovation Act and PATENT Act, bills pending before Congress designed to curb NPE litigation. Mr. Strapp has been featured in Corporate Counsel, GigaOM, Inside Counsel, Law360, American Lawyer, Executive Counsel and elsewhere. He is also the lead author of NPE Litigation: A Tactical Guide for Practitioners.

Mr. Strapp has substantial trial and appellate experience, representing companies in the software, computer security, telecommunication, semiconductor manufacturing, and medical device industries. He has served as lead counsel, including first-chair trial counsel, and he has argued before the Court of Appeals for the Federal Circuit.

Mr. Strapp represents companies of all sizes, from startup technology companies to large public companies, in all manner of intellectual property matters including patent licensing, patent portfolio development, and the protection and enforcement of intellectual property rights in state and federal courts. His representative experience includes:

Patent Infringement

  • Lead counsel and trial counsel for ePlus, a provider of enterprise supply management solutions. Mr. Strapp obtained a verdict of patent infringement for ePlus. After trial, the district court entered a permanent injunction and denied the infringer's request to stay the injunction. The district court later found the infringer in contempt of the injunction and awarded ePlus more than $18 million. Mr. Strapp was quoted in an article in The American Lawyer concerning the ePlus victory titled, “Goodwin Procter Scores for ePlus in Contempt Ruling.”
  • Lead counsel for Sonus Networks, a supplier of communication equipment including VoIP, video and Unified Communications through IP Networks. Mr. Strapp represents Sonus Networks in ongoing patent litigations in Massachusetts and California.
  • Lead counsel for Demandware, a software technology company. Mr. Strapp represents Demandware in ongoing patent litigation in Florida.
  • Lead counsel for Rite Aid, the third largest drugstore chain in the United States. Mr. Strapp represented Rite Aid in a patent litigation in Pennsylvania. The plaintiff agreed to dismiss all claims against Rite Aid with prejudice and with no money changing hands.
  • Trial counsel for Veracode, a cloud-based application security software company. Mr. Strapp obtained a jury verdict of willful infringement for Veracode. The jury also awarded Veracode damages nearly equal to all of the defendant’s infringing revenue.
  • Lead counsel for Secure EDI, an information technology company that offers solutions to enhance healthcare efficiency. Secure EDI and several other companies were accused of infringing patents relating to the creation of health insurance claims. Alone among the defendants, the plaintiff agreed to dismiss claims against Secure EDI with prejudice and with no money changing hands.
  • Lead counsel for Grandstream Networks, a manufacturer of innovative IP voice/video telephony and video surveillance solutions. Mr. Strapp has represented Grandstream Networks in patent infringement lawsuits and achieved critical pre-trial victories for the company, leading to favorable settlements.
  • Lead counsel for Veramark Technologies, a provider of telecom expense management solutions and managed mobility services. Mr. Strapp assisted Veramark in achieving a favorable settlement in a patent litigation.

Trade Secret

  • Counsel for Applied Materials, a provider of manufacturing solutions for the semiconductor industry. Mr. Strapp represented Applied in a trade secret misappropriation case against a company founded overseas by several former Applied employees. Applied defeated motions to dismiss based on lack of jurisdiction and overcame export control issues to obtain key evidence. The case settled on the eve of trial with the defendant agreeing to transfer ownership of several patents to Applied and to make a substantial payment to Applied.
  • Counsel for Persimmon Technologies, a provider of robotics for the semiconductor, data storage, LED, OLED, solar and flat panel display equipment markets. Persimmon was sued in federal court for trade secret misappropriation, patent infringement, tortious interference with contractual relations and unfair and deceptive trade practices. Within one month of the suit being filed, the plaintiff voluntarily agreed to dismiss all claims against Persimmon..

Appellate

  • Appellate counsel for NMT Medical, a maker of heart devices. Mr. Strapp secured reversal of a summary judgment infringement decision in NMT Medical v. Cardia (Fed. Cir. 2007).
  • Appellate counsel for Lucent Technologies, a telecommunications equipment company. Mr. Strapp obtained confirmation of an arbitration award against a patent licensee who had failed to pay royalties in Lucent Technologies v. Tatung (2nd Cir. 2004).

Mr. Strapp has been named by Chambers USA: America’s Leading Lawyers for Business as a leading lawyer in the field of Intellectual Property. He has also been recognized as a New England “Super Lawyer” by Boston magazine and was previously honored as a "Rising Star" by the same publication.

Before joining Goodwin Procter, Mr. Strapp was an associate at Kirkland & Ellis LLP in New York.

Mr. Strapp is a member of the American, Massachusetts and Boston Bar Associations and a member of the American Intellectual Property Law Association.

Mr. Strapp frequently writes and speaks on intellectual property topics across the country and around the world. He has been quoted in such media outlets as The American Lawyer and Corporate Counsel. His recent publications include:

  • NPE Litigation: A Tactical Guide for Practitioners,” (October 2014)
  • “Combating Trade Secret Theft Abroad Through Legal Action at Home,” Executive Counsel (April 2012)
  • “Preparing for Changes Under New America Invents Act,” Massachusetts Lawyers Weekly (November 2011)
  • “Options for Intellectual Property Litigation Against Foreign Entities,” BNA International World Intellectual Property Report (August 2010)

Mr. Strapp’s recent speaking engagements include:

  • “Injunctive Relief in a Post-eBay World,” 3rd Annual NJIPLA Electronics, Telecom and Software Patent Practice Update (November 12, 2013)
  • “Patentable Subject Matter: Has the Supreme Clarified a Murky Area or is More Guidance Necessary?,” Keynote Speaker at Patentable Subject Matter Symposium hosted by the Israel Bar Association (November 5, 2013)
  • “NPE Litigation and Patent Reform: Responding to Critical Changes in the Patent Landscape,” General Counsel Roundtable (May 9, 2013)

NPE Litigation Seminar
November 20, 2014
Menlo Park, CA

NPE Litigation Seminar
November 17, 2014
Boston, MA

Symposium on Patentable Subject Matter
November 5, 2013
Tel Aviv, Israel

"IP Issues Commonly Encountered in Contracts"
July 19, 2012

Practices

Education

J.D., 2002
Harvard Law School
B.A., 1999
Columbia University
(magna cum laude, Phi Beta Kappa)

Admissions

Bar

Massachusetts

New York

Courts

U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
U.S. District Court for the District of Massachusetts
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Southern District of New York