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TC Heartland LLC v. Kraft Foods Group Brands LLC: Nationwide Venue in Patent Infringement Actions Is No More

Speaker(s): Eugene M. Paige
Recorded on: Jun. 8, 2017
PLI Program #: 218020

Gene Paige focuses his practice on complex civil litigation. He successfully defends clients from infringement claims, and prosecutes cases on behalf of innovators who have had the fruits of their labor misappropriated. Mr. Paige has tried more than a dozen criminal and civil cases in state and federal courts, serving as first chair in the majority of those cases.

He has litigated cases that involve cutting-edge technology such as semiconductor fabrication process technology, the co-expression of recombinant DNA, and the use of innovative methods of conducting business online. He enjoys learning about diverse subject matter areas and industries, and then constructing a winning strategy that will serve both the client’s legal needs and its business objectives.

Cases of Note

NVIDIA Corporation v. Qualcomm Inc.: 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.

Oracle America, Inc. v. Google Inc.: 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 in January 2010, it acquired Sun’s rights to Java. In August of that year, 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. Although the jury decided that Google infringed an Oracle copyright on nine out of millions of lines of source code, the case was a sweeping victory for Google, with zero damages. 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, thereby rejecting Oracle’s claims of infringement in their entirety.

Prolifiq Software Inc. v. Veeva Systems: We defended Veeva Systems from patent infringement allegations brought by its competitor in the Northern District of California. The patents relate to the creation of email messages using multiple layers and/or content available on servers. We successfully narrowed the scope of the case from five patents to two, and further narrowed the case when the court agreed one of the claims was invalid. After that, we secured a very successful settlement for a fraction of the original demand.

Eastman Kodak Co. v. HTC Corp.: We defended HTC in a five-patent investigation brought by Kodak before the International Trade Commission. The action accused dozens of mobile devices of infringing digital imaging patents that covered a range of technologies, including image capture, processing, display, compression and transmission. Consistent with ITC practice, our defense took place on a fast schedule, with a hearing date that was set approximately one year from the start of the investigation and fact discovery being completed in approximately six months. Just prior to the scheduled hearing date, the case was resolved when the Kodak patent portfolio was sold.

Apple Inc. v. HTC Corp: 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.

Internet Subscription Service v. Competitor: We prosecuted a patent infringement case on behalf of a leading Internet subscription service. Our client claimed its once larger rival infringed on our client's unique business method. The competitor countersued, alleging antitrust violations. The case was dismissed before trial.

Law Firm v. Former Client: We helped an Am Law 100 law firm obtain payment for legal services in connection with a successful infringement lawsuit against a rival company. After obtaining a multi-million dollar writ of attachment, the case was settled following arbitration.

MedImmune, Inc. v. Genentech, Inc.: We defended Genentech's groundbreaking patent on recombinant antibody technology against an invalidity challenge by MedImmune. The argument before the court concerned a licensee’s ability to challenge the validity of a patent while still paying royalties for the technology. The case was dismissed before trial, without the requested finding that the Cabilly II patent was invalid.

Plaintiff v. Bank: We defended a leading national bank against allegations that its speech-enabled customer service system infringed on four patents. The case was favorably settled following a Markman hearing.

Plaintiff v. Semiconductor Company: On behalf of a Taiwan-based semiconductor company, we brought a declaratory judgment action in the Northern District of California to resolve patent claims that purported to target computer-mouse products relying on optical tracking. We settled the case favorably for our client.

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.

Venture Capital Firm v. Music Publishing Group: We represented online file-sharing company investors against allegations of copyright infringement, and asserted counterclaims of antitrust violations. After we used crime fraud arguments to pierce the plaintiff's attorney-client privilege, the case settled on favorable terms.

Publications and Presentations

  • "Cuozzo Speed Technologies v. Lee: Supreme Court Clears the Way for the PTAB to Continue Its Practices in Inter Partes Review Proceedings," PLI, 2016
  • "Comparative Patent Litigation: Germany Versus the United States," Berkeley Center for Law & Technology and the Stanford Program in Law, Science and Technology's Advanced Patent Law Institute, 2015
  • "Staging a Multi-front Patent War," Intellectual Property Today, 2014
  • "Do the Metes and Bounds of Patent Claims Limit Academic Freedom?," Intellectual Property Today, 2014
  • "Patent Law Before the Supreme Court in 2014," Daily Journal & Thomson Reuters Patent Disputes Forum, 2014
  • "Kirtsaeng v. John Wiley & Sons: The Supreme Court Takes a Second Look at the ‘First Sale’ Doctrine,” Westlaw Journal Software Law, 2013
  • "Best Practices for Litigating and Managing Disputes Under the AIA," Thomson Reuters, 2012
  • "What is That Patent Really Worth? Courts Take a Hard Look at the "Reasonable Royalty" Calculation," 13th Annual Silicon Valley Advanced Patent Law Institute, 2012

Awards and Honors

  • California Lawyer of the Year, Intellectual Property, Daily Journal, 2017
  • The Best Lawyers in America for Intellectual Property and Patent Litigation, 2012 - present
  • Super Lawyers for Intellectual Property Litigation, 2014-2016
  • Executive editor, Harvard Law Review

Harvard Law School, JD, magna cum laude, 1998

Rice University, BA, magna cum laude, 1995


Hon. Anthony M. Kennedy
U.S. Supreme Court, 2000-2001

Hon. Alex Kozinski
U.S. Court of Appeals for the Ninth Circuit, 1998-1999

Bar Admissions


District of Columbia

U.S. Patent and Trademark Office