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Patent Litigation 2012


Speaker(s): Aaron Thompson, Andrea Weiss Jeffries, Andrew B. Grossman, Charles E. Bullock, Charles S. Barquist, Craig R. Kaufman, Darren E. Donnelly, Denise L. McKenzie, Edward G. Poplawski, John Steele, Mark A. Flagel, Mark A. Samuels, Olivia M. Kim, Paul Tripodi, Robert Greene Sterne, Stephen C. Durant, Vera M. Elson
Recorded on: Sep. 27, 2012
PLI Program #: 34647

Craig Kaufman is a partner at Freitas Tseng & Kaufman LLP. His practice focuses on patent infringement litigation in District Courts and before the International Trade Commission.  Mr. Kaufman has appeared at trial in actions involving a wide range of technologies, including genetically modified plants; identification of new DNA sequences; computer thermal management; and memory technology. 

Prior to joining FTK, Mr. Kaufman was a Partner at Orrick, and an Associate Solicitor at the United States Patent and Trademark Office (PTO), where he represented the Commissioner of Patents and Trademarks in District Court and before the United States Court of Appeals for the Federal Circuit. During his two years at the PTO, Mr. Kaufman prepared more than 10 appellate briefs and personally argued five cases before the Federal Circuit. He also assisted in the preparation of the Brief for the United States as amicus curiae before the U.S. Supreme Court in Warner-Jenkinson Co. v. Hilton Davis Chemical Co.

Mr. Kaufman has an A.B. from Occidental College in Chemistry and a M.S. in Chemistry from Duke University. He received his law degree from the George Washington University, where he graduated with high honors and was selected for Order of the Coif.


Darren Donnelly's practice focuses on patent and other intellectual property litigation and counseling with emphasis in data management, technical computing, telecommunications, and Internet technologies.

In addition to preparing and prosecuting patent applications in the U.S. and abroad, Mr. Donnelly has counseled companies on patent portfolio development and management, patent licensing strategies and patent enforcement strategies.

Mr. Donnelly served as trial counsel for Amazon.com in Cordance Corp. v. Amazon.com, winning a defense verdict before a Delaware jury that found two of three patents not infringed and the one remaining patent invalid.

Mr. Donnelly served as trial counsel for Informatica in Informatica Corp. v. Business Objects, winning a $25 million jury award in its patent suit against Business Objects.

Mr. Donnelly represented Cryptography Research, Inc. (“CRI”) in Cryptography Research v. VISA, a watershed case for the secure smart card industry, where CRI asserted eight fundamental patents covering differential power analysis countermeasure against Visa International. VISA settled on terms very favorable to CRI.

Mr. Donnelly represented Netflix in Lycos v. Netflix et al. where, after transferring the case from a “rocket docket” to a more favorable venue, he convinced the court to stage the case to allow accelerated — and ultimately successful — summary judgment of non-infringement with minimal discovery. Mr. Donnelly has subsequently represented Netflix in other several other matters all to favorable resolution.

For over a decade, Mr. Donnelly has represented Amazon.com and its affiliates in several patent infringement cases, including against Barnesandnoble.com, where he helped enforce via preliminary injunction, Amazon.com’s 1-click® patent.


Mark Flagel is a litigation partner in the Los Angeles office of Latham & Watkins. He specializes in intellectual property matters focusing on patent infringement cases, and currently co-chairs the firm’s Information Technology: Hardware, Software & Services Industry Group. Mr. Flagel is also the former global Co-chair of the firm's Intellectual Property and Technology Practice. 

Mr. Flagel has been repeatedly recognized in Chambers USA as one of California’s leading intellectual property lawyers and was named one of “75 Leading Litigators” in 2011 by the Daily Journal in its Intellectual Property supplement. In addition, he is regularly cited as a leading intellectual property attorney by the Los Angeles Business Journal, The Best Lawyers in America, Super Lawyers and other publications.

Mr. Flagel has served as an adjunct professor at Loyola Law School where he has taught intellectual property and technology and has often lectured and published on various intellectual property issues. He is currently a member of the Executive and Planning Committees of the USC IP Institute, and will chair the Institute in 2013.

Mr. Flagel has also been involved in various pro bono matters. He is Chair of the Advisory Board of the Kayne-ERAS Center, which is part of the Exceptional Children’s Foundation and serves at-risk children and young adults by providing a school equipped to deal with their special challenges. Mr. Flagel also serves on the Board of the Exceptional Children’s Foundation which provides a broad array of services to challenged individuals of all ages, including group homes, vocational training, jobs and numerous other services.


Bar Qualification

California


Education

JD, University of California, Berkeley, School of Law (Boalt Hall), 1983
BA, Univ. of California, Los Angeles, 1980


Mark Samuels is a partner in O’Melveny's Los Angeles office, the Vice-Chair of the Firm, and the Chair of the Compensation Committee. From 2000-2007, Mark served as Chair of the Firm's Intellectual Property and Technology Practice. Among other accolades, Mark has been consistently recognized as a leading intellectual property practitioner by Chambers USA; as one of California’s top patent litigators by the Los Angeles Daily Journal; as one of America’s 500 top lawyers by Lawdragon 500; and as one of the “Best Lawyers in America” by Best Lawyers. Chambers USA states that “clients appreciate that Mark is ‘extremely responsive and client-centric as well as being a superb litigator.’ ” Mark is one of the Firm’s most experienced trial lawyers, with broad experience in complex patent, trade secret, antitrust, and other technology-based litigation.

Professional Activities
Member, American Bar Association; Los Angeles County Bar Association; American Intellectual Property Law Association; Federal Circuit Bar Association; Association of Business Trial Lawyers Public Service, Board of Directors, Public Counsel (2009-present); Los Angeles Superior Court Arbitration Panel (2002-09); ABA Litigation Section Liaison to Task Force on Reduction of Litigation Cost and Delay (2004); Board of Directors, UCLA School of Law Alumni Association (several terms); Board of Directors and Treasurer, Flintridge Riding Club (past)


Honors
"Leading Lawyer" - Intellectual Property, Chambers USA (2005-12); LawDragon's list of "500 Leading Lawyers" (2010-11); "Top 25 Intellectual Property Lawyers," Daily Journal (2008-11); "Best Lawyers in America," Best Lawyers (2007-12); "PLC Which Lawyer?" - Intellectual Property, Practical Law Company (2008-11); "Super Lawyer," survey conducted by Law & Politics Media Inc., Los Angeles Magazine (2005-12)


OLIVIA M. KIM is a partner in the Los Angeles Intellectual Property and Patent Litigation group. Ms. Kim’s practice focuses on complex patent infringement litigation, including cases that involve microprocessors, biometric sensors, plasma display panels and internet payment systems.

Ms. Kim has participated in numerous trials, both bench and jury. She was a member of the trial team that obtained a jury verdict awarding patent infringement damages of more than $184 million to Cornell University against Hewlett-Packard. Ms. Kim’s experience also includes extensive work at all stages of litigation, such as claim construction briefing and hearings; inventor and expert depositions and expert reports; drafting and negotiation of settlement agreements; and substantive and discovery motion practice.

Prior to starting her legal career, Ms. Kim performed research in immunology and physiology laboratories at UCLA and co-authored papers relating to immune responses in diabetic mice and methods for membrane protein purification.


ADMISSIONS & CERTIFICATIONS

U.S. Court of Appeals, Federal Circuit, 2009
U.S. District Court, N.D. of California, 2006
U.S. District Court, C.D. of California, 2003
U.S. District Court, E.D. of Texas, 2012
California, 2003


EDUCATION

University of Southern California Gould School of Law (J.D., 2003)
University of California- Los Angeles (B.S., 1998)


VERA M. ELSON is a partner and trial lawyer in the firm's Silicon Valley office. She focuses her practice on intellectual property trials and strategic counseling for the firm's high-technology clients. Ms. Elson's cases have been predominantly patent cases in Federal District Courts across the country and proceedings before the International Trade Commission (ITC). She has extensive trial experience in high-stakes cases including both successful jury trials and bench trials. She has also successfully litigated cases relating to trade secret misappropriation, common law and copyright claims. She has argued and won before the Court of Appeals for the Federal Circuit (CAFC) on appeal, and is registered to practice before the U.S. Patent & Trademark Office. Ms. Elson was an intern for the late Chief Judge Helen W. Nies of the CAFC.

Ms. Elson's background in engineering makes her well suited for technology cases. She has a Masters degree in Electrical Engineering from UCLA and, prior to entering the practice of law, worked in industry as a high-speed circuit designer for Hughes Aircraft's Advanced Circuit Technology Labs.

Special Recognitions

  • Ms. Elson has been recognized by Chambers USA since 2005 through 2011 as a leading lawyer in Intellectual Property in California based on client interviews and peer reviews;
  • Legal 500 United States named Ms. Elson as a leading intellectual property lawyer;
  • She been recognized as one of the Daily Journal's 2008 and 2009 Top 50 Intellectual Property Litigators;
  • In 2008, Ms. Elson was named among the Silicon Valley/San Jose Business Journal's "Women of Influence" in Silicon Valley;
  • Ms. Elson was also named as one of the Daily Journal's 2008 and 2009 Top Women Litigators in California;
  • She was named by Northern California Super Lawyers magazine as one of the top attorneys in Northern California from 2004 through 2008.


Charles S. Barquist

Primary Area of Practice: Intellectual Property Litigation


Law School:  Harvard Law School


Work History: 

  • Morrison & Foerster LLP, 1987-Present
  • Parker Auspitz Neesemann & Delehanty PC, 1979-1987
  • Law Clerk to Judge Milton Pollack, U.S.D.C., S.D.N.Y., 1978-1979


Professional Memberships:

  • U.S. Bar/Japan Patent Office Liaison Council
  • American Bar Association, Intellectual Property Litigation Committee of the Litigation Section
  • American Intellectual Property Law Association, IP Practice in Japan Committee
  • Los Angeles County Bar Association, Intellectual Property and Entertainment Law Section, Chair, 2000-2001
  • Los Angeles County Bar Association, International Law Section, Chair, 2001-2002
  • Los Angeles Intellectual Property Law Association, President, 2003-2004
  • University of Southern California School of Law Intellectual Property Institute, Chair, 2010-2012; Planning Committee, 2004-Present; Executive Committee, 2006-Present
     


Denise McKenzie is a partner in Kirkland's Los Angeles office and a member of the Firm's Intellectual Property group. She has participated in and led both bench and jury trials. She was a member of the trial team that obtained a jury verdict awarding patent infringement damages of more than $184 million to her client against a well-known information technology company. Her patent litigation practice includes cases that involve computer architecture, semiconductor technology, computer software and hardware, and internet-related technology.

In 2009 Denise was lead trial counsel as a volunteer prosecutor at the Inglewood City Attorney's office in criminal cases, handling all phases of several jury trials..In 2009 and 2010, Denise was named a "Super Lawyer" by Law & Politics Media Inc. and Los Angeles Magazine. 


Education

  • University of Southern California Law School, J.D., 1996
  • University of Southern California, M.S. Electrical Engineering, 1988
  • Hughes Aircraft Masters Fellowship.
  • University of California, Los Angeles, B.S. Mathematics - System Science, 1985


Admissions & Qualifications

  • 1997, California


Prior Experience

  • Partner, Sidley Austin LLP, (2004-2010)
  • Volunteer Prosecutor, Inglewood City Attorney's Office, (2009)
  • Associate, Pretty Schroeder & Poplawski, (1999-2000)
  • Associate, Merchant & Gould, (1996-1999)


Andrea Weiss Jeffries is a trial lawyer who has handled formidable intellectual property disputes involving patents, trade secrets, and other forms of IP for over 20 years. She has represented clients in the pharmaceutical, chemical processing, consumer goods, and semiconductor industries in a wide range of cases. She has particularly extensive experience representing clients in high-stakes matters involving patents relating to pharmaceutical formulations, medical devices, and wireless communications.

Andrea litigates in California state courts and Federal courts across the country. Her many representations include a pharmaceutical company accused of infringing three patents relating to various aspects of an immunoassay analyzer in the District of Delaware, obtaining a favorable settlement just prior to trial; an American multinational conglomerate in a patent ownership dispute relating to technology used in wind turbine generators, and after a six-day bench trial, obtaining a favorable decision regarding the patent at issue; and a global semiconductor chip maker in the Central District of California in a significant competitor dispute involving the infringement of five patents in four technology areas and negotiating a favorable settlement.

Over the last few years, trade secret counseling and litigation have become a more significant portion of Andrea's practice. Recently, Andrea led the representation of a chemical processing company in a trade secret matter in the District of Montana involving an employee who departed with over a decade of exposure to the Company's trade secrets. After obtaining a TRO, Andrea was able to negotiate a favorable settlement for her client. Current trade secret matters involve collaborations between business entities that have not proceeded as planned, and allegations of misuse of trade secret information shared under the terms of the collaborations.

Andrea is a member of the Patent Damages & Remedies Working Group Committee (chair emeritus) and the Patent Litigation Best Practices Working Group Committee (vice chair emeritus) of the Sedona Conference. She is a Vice Chair of the Amicus Committee of the Federal Circuit Bar Association, a member of the Executive Committee of the University of Southern California Intellectual Property lnstitute's Planning Committee, and a member of the California and Los Angeles County Bar Associations. Andrea has written and spoken extensively on IP-related subjects, including on Artificial Intelligence.


John Steele is a solo practitioner, representing clients on matters of legal ethics, professional liability, risk management, and the law of lawyering.  He is a certified specialist in the law of legal malpractice. For over fifteen years, he served as the top internal ethics lawyer at an AmLaw 100 firm, where he was Special Counsel for Ethics, and at an AmLaw 200 firm, where he was a trial lawyer and litigation partner.  He has taught professional responsibility for over thirty semesters at UC-Berkeley School of Law, Stanford Law School, Santa Clara University, Golden Gate University, and Indiana University – Maurer School of Law.  He has served on a variety of professional committees, including the State Bar of California’s standing Committee on Professional Responsibility and Conduct (COPRAC), and serves an arbitrator in fee disputes.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP specialty firm and 337th largest US law firm.


Andrew Grossman is a seasoned litigator who has successfully tried complex, high-stakes patent infringement cases involving complex technology in district courts, as well as before the International Trade Commission. He has also handled appeals in the Federal Circuit, and has been involved in post-grant proceedings before the Patent Trial and Appeal Board.

Andrew’s practice focuses on intellectual property litigation, with an emphasis on patent litigation in the electronics, semiconductor, software, medical device, and green technology industries. He successfully represented some of the foremost technology companies in the world in some of their most challenging intellectual property matters. His matters have involved a wide variety of technologies, including smartphones, wireless communications, networking, LCD design and fabrication, microprocessor design, GPS, data and telecommunications hardware and software, databases, pacemakers, genomics analysis, audio/video codecs, copy protection, and encryption.

In addition to patent litigation, Andrew also has significant experience advising clients on IP strategies in connection with mergers and acquisitions and joint ventures.

Andrew is a member of the American Intellectual Property Association, Federal Circuit Bar Association and is on the executive committee for the University of Southern California Intellectual Property Institute. He is admitted in the California federal and state courts, the Court of Appeals for the Federal Circuit, the Court of Appeals for the Ninth Circuit, and the Eastern District of Texas. 

Andrew received his B.A. from the University of Pennsylvania in 1995, and he received his J.D. from the University of Southern California Gould School of Law in 2000.


Stephen C. Durant is a registered patent attorney and a Principal at Schwegman Lundberg & Woessner. He has written and prosecuted patents in a wide range of technologies including software, computers, electronic circuits, holography, MEMS, semiconductor manufacturing equipment, microprocessors, wired and wireless telecommunication devices, network architectures, database software, electronic design automation, disk drives, Internet software, motion picture animation, computer graphics processing and business methods. Steve is a graduate of Cornell Law School, J.D, 1981 and University of Notre Dame, B.S.E.E., 1978.


Administrative Law Judge Charles E. Bullock has served as an ALJ at the ITC since 2002. Bullock was named Chief Administrative Law Judge on October 20, 2011.

ALJ Bullock's background information is set forth below:

Educational Background

  • George Washington University Law School - J.D
  • Bucknell University - B.A., Political Science

Professional Background
  • U.S. Environmental Protection Agency - Administrative Law Judge
  • U.S. Federal Energy Regulatory Commission - Administrative Law Judge
  • U.S. Federal Energy Regulatory Commission - Assistant General Counsel/Trial Attorney


Based in the firm's Los Angeles and Palo Alto offices, Edward G. Poplawski is head of Wilson Sonsini Goodrich & Rosati's patent litigation practice. Edward currently serves as a member of the firm's Strategic Practice Development Committee. Nationally recognized as one of the nation's leading trial lawyers, he focuses his practice primarily on patent litigation, including jury trials and proceedings before the International Trade Commission. Edward also has litigated and tried high-profile cases involving trademark and copyright infringement, trade secret misappropriation, and antitrust violations. His marquee clients have included Aruba Networks, Atmel, Cornell University, Deutsche Bank, eBay/PayPal, First Data, Genentech, Google, Hewlett-Packard, IGT, Intuit, LSI, McAfee, Mylan Pharmaceuticals, Samsung, and SAIC.

Edward consistently is recognized as one of the top intellectual property attorneys in California and the United States. He received the "California Lawyer Attorneys of the Year" (CLAY) Award in 2009 for his work in IP litigation, notably his work as lead trial counsel for Cornell University in winning a $184.1 million jury award against Hewlett-Packard and for Etex Corporation in obtaining an $81 million damages award plus attorneys' fees against Medtronic. He also has been recognized by Chambers USA: America's Leading Lawyers for Business, U.S. News – Best Lawyers, Legal 500 US, IAM Patent 1000, and other publications as a leading trial lawyer and "a superstar" who, "according to clients, demonstrates 'an intelligence and commitment that earns him the trust of the court and jury,'" "is brilliant in the courtroom, and conducts himself with integrity at all times," and "produces phenomenal results." In addition, clients indicate that "he is a superb advocate, both in the courtroom and in negotiations," and "he is able to assemble a highly talented team that promptly responds to the constant barrage of motions and demands from adversaries," and "is used to handling important cases."

As lead counsel for companies both large and small as well as nonprofit institutions, Edward successfully has litigated patents across a broad range of technologies. These include data transmission systems, mobile phone systems, computer processor architecture, liquid crystal optical devices, genomics, synthetic proteins, monoclonal antibodies, diabetes drug and bone growth compositions, and other biotechnology products, semiconductor fabrication, computer misuse detection systems, wireless communication devices, radar systems, nuclear waste disposal systems, optical storage devices and switches, radio-isotope elution systems, robotics, electric vehicles, pollution control systems, sophisticated cameras, chemical compositions, assay kits, computer software, ordnance, food processes, defibrillators, fluorescence spectroscopy, medical and dental products, thermoelectric generators, thermal control systems, heart valves, artificial liver devices, glucose monitors, fiber optics, and a variety of electronic hardware and consumer electronics.

Edward has been involved in arbitration proceedings before the Court of Arbitration of the International Chamber of Commerce and the American Arbitration Association, in addition to special patent litigation proceedings under the U.S. Atomic Energy Act. His trademark litigation experience includes successfully obtaining and defending against more than 100 preliminary injunction motions and representing trademark owners, registries, and Internet service providers in high-profile Internet-related litigation. He also has counseled clients on the interplay between intellectual property matters and the business aspects of transactions, and has provided entrepreneurial intellectual property advice to start-up and emerging growth companies. In addition, he has advised the White House and members of the U.S. Congress—and has addressed foreign judges and government officials abroad—on Internet-related intellectual property issues.

Prior to joining Wilson Sonsini Goodrich & Rosati, Edward was a partner in the Los Angeles office of Sidley Austin LLP, where he was a member of the Executive Committee, the head of the West Coast intellectual property and technology practice, and global co-chair of the intellectual property litigation practice.