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Non-Practicing Entity Patent Litigation 2013: Plaintiff and Defense Perspectives


Speaker(s): Ahmed J. Davis, Amy G. O'Toole, Anthony E. Dowell, Cynthia Bright, Laura A. Sheridan, Peter Kirk, R. David Donoghue, Sean Patrick Butler, Sonal N. Mehta, Stefani E. Shanberg, Steven E. Jedlinski
Recorded on: Dec. 12, 2013
PLI Program #: 49136

Ahmed J. Davis is a Principal in the Washington, DC, office of Fish & Richardson, a member of the Firm’s Management Committee, National Chair of the Fish & Richardson Diversity Initiative, and a former member of the Firm’s Compensation Committee. His practice focuses on complex patent litigation in a range of technical areas, including chemistry, biotechnology, medical devices, and mechanical and electrical engineering. A trial attorney experienced in all phases of litigation, Mr. Davis has been lead counsel in the International Trade Commission and federal district court, has argued before the United States Court of Appeals for the Federal Circuit, and has litigated cases before the United States Court of Federal Claims. He has particular expertise and is the Firm’s leading attorney for matters in the “rocket docket” that is the United States District Court for the Eastern District of Virginia.

Mr. Davis regularly speaks and lectures on issues relevant to the patent bar. Since 2008, he has been a faculty member at the ALI-ABA Conference “Trial Of A Patent Case” and, since 2010, a faculty member at the annual PLI Conference on Patent Litigation. He has spoken or been a guest lecturer on patent issues at Howard University Law School, Catholic University Columbus School of Law, Temple Law School, and Fordham Law School. He has presented on patent law at numerous Bar conferences; is a member of the Sedona Conference Working Group on Patent Damages and Royalties (WG9) and the Working Group on Patent Litigation Best Practices (WG10). He is also an instructor for the National Institute of Trial Advocacy (NITA).  Mr. Davis also is committed to giving back to the legal community through the development of young lawyers and by increasing diversity within the profession. He is the former pro bono coordinator for the firm’s DC office, and he regularly speaks to law students about opportunities in patent law and the importance of judicial clerkships.

Mr. Davis has received numerous accolades and awards for his work. He was named an “IP Star” by Managing Intellectual Property in  2015, 2016, and 2017. In addition, in March 2016, he was named to Managing Intellectual Property‘s shortlist for “Outstanding IP Litigation – Washington DC” at the North America awards. In 2015, Savoy magazine named him a “Most Influential Black Attorney of  2015.” He was also featured as a “Minority Power Broker” by Law360, and he was also named one of Profiles in Diversity’s “Diversity Leader”s for 2015.  In February 2011, the Washington Business Journal named Davis “One of the Top Minority Business Leaders” of

2011. In October 2010 The Root, an online publication of the Washington Post, identified Davis as part of the next generation of African-American leaders. In June 2010, Mr. Davis was named a “2010 Nation’s Best Advocate: 40 Lawyers under 40,” by the National Bar Association and IMPACT. And in July 2009, Mr. Davis was named one of the “40 Under 40: Washington’s Rising Stars” by The National Law Journal.

Before joining the firm, Mr. Davis was a law clerk for the Honorable Leonie M. Brinkema in the Alexandria Division of the United States District Court for the Eastern District of Virginia (1999-2000). He also was a law clerk for the Honorable Paul R. Michel at the United States Court of Appeals for the Federal Circuit (2001-2002).

Mr. Davis is on the Board of Directors of D.C. Legendary Musicians, Inc. and on the Board of Directors for the Living Classrooms Foundation in Washington, DC, and is a Deacon at Montgomery Baptist Church in Gaithersburg, MD.


Cynthia Bright
Vice President and Associate General Counsel for IP Litigation and Public Policy
Hewlett-Packard Company

Cynthia Bright is the Vice President and Associate General Counsel for Intellectual Property (IP) Litigation and Public Policy within the Office of the General Counsel.  She and the IP Litigation team are responsible for managing all IP lawsuits that are filed against HP in the United States, and supporting and reporting on all intellectual property disputes worldwide.

Cynthia joined HP in 2009 as an IP Litigation Manager and served in this role until she was named to lead the IP Litigation team in April 2012.

Before joining HP, Cynthia was the Director of Litigation for Atmel Corporation, a semiconductor company based in San Jose, California.  She joined the company as Senior Litigation Counsel in 2003.  Prior to joining Atmel, Cynthia was in private practice at Wilson Sonsini Goodrich & Rosati.

Cynthia graduated from the Georgetown University Law Center, and received her undergraduate degree in Government from Georgetown University.


R. David Donoghue is an established IP trial attorney with jury trial success and a strong track record across district courts, the Federal Circuit, and at the Patent Trial and Appeal Board. He serves as the leader of Holland & Knight's national Intellectual Property Group and is based in the firm's Chicago office.

Mr. Donoghue advises clients from major corporations to midsize businesses on technology disputes, such as patent, trade secret, trademark, copyright and Computer Fraud and Abuse Act (CFAA). Mr. Donoghue has been recommended in Intellectual Asset Management (IAM) Patent 1000 since 2014. The 2017 write-up states, "David Donoghue is a retail guru who understands the commercial drivers of the industry, as well as the technology that underpins it. Clients trust him because he makes it explicitly clear what is at stake and what it may cost them, and excels at finding solutions."

Whether he is asserting his client's IP, defending against competitors, or fending off Non-Practicing Entities (NPE), Mr. Donoghue blends his deep litigation experience with practical business insight garnered from his in-house experience. As a founding member of Aptiv (f/k/a Delphi) Licensing and Litigation Group, he handled substantial international IP litigation and licensing matters.

Mr. Donoghue has served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research, writing and IP courses. At the beginning of his legal career, he served as a law clerk to the Honorable Gordon J. Quist, federal district judge for the U.S. District Court for the Western District of Michigan.

Mr. Donoghue is also the founder and principle author of the Chicago IP Litigation and Retail Patent Litigation blogs.


As lead counsel for leading technology companies including Microsoft, Facebook, Twitter, Electronic Arts, and others, Sonal litigates high-stakes patent and technology disputes across a wide-range of industries.  Her experience spans all aspects of trial and appellate practice, including federal jury trials, state court jury and bench trials, International Trade Commission investigations, commercial arbitrations, and appeals to the United States Court of Appeals for the Federal Circuit.

Sonal has been recognized as a leader in both legal and technology circles.  She was profiled by The American Lawyer’s AmLaw Litigation Daily for her role as co-lead counsel in a successful ten-day patent infringement jury trial.  Sonal has been named to the Daily Journal’s Top IP Lawyers (2017), Chambers USA in Patent Litigation (2016, 2017, 2018), Managing IP’s IP Stars (2016 and 2017), Benchmark Litigation’s Under 40 Hotlist (2016, 2017, 2018) and Future Stars (2018), Managing IP’s Top 250 Women in IP globally (2016, 2017, 2018), the Daily Journal’s Top 40 Under 40 (2016), The Recorder’s Women Leaders in Tech Law (2015 and 2016), and IAM Patent 1000 (2013-2017), among others.  In years past, Sonal was also named a Law360 2015 national “Rising Star” for Intellectual Property, a “Recommended” lawyer for Patent Litigation: Full Coverage by Legal 500 US 2015, a member of the San Francisco Business Times’ 2015 “40 Under 40,” one of the Silicon Valley/San Jose Business Journal’s “40 under 40,” and one of fifty “Fast Track” lawyers in California by The Recorder.

Outside of the courtroom, Sonal teaches Patent Litigation at her alma mater UC Berkeley School of Law.  She has presented programs on patent litigation at Federal Judicial Center workshops for federal district and magistrate judges, and is a frequent speaker on patent litigation topics.  She serves on the Board of Directors of the Federal Circuit Bar Association, the Board of Directors for the Northern District of California’s Practice Program, and on the Northern District of California’s Patent Local Rules Attorney Advisory Committee.

Prior to joining Durie Tangri in 2015, Sonal was a partner in Weil, Gotshal & Manges’ patent litigation practice and served as a law clerk to the Honorable Paul R. Michel of the US Court of Appeals for the Federal Circuit.  She graduated from the Boalt Hall School of Law, UC Berkeley, where she served as Editor-in-Chief of the Berkeley Technology Law Journal and received a Certificate in Law & Technology.  She was also a national finalist in the Giles Sutherland Rich Moot Court Competition in patent litigation.  She received a BA with honors from UC Berkeley, after graduating from the Texas Academy of Mathematics and Science.

In her spare time, Sonal is a pop culture aficionado, avid world traveler, and unskilled but ardent ocean sports enthusiast.


Laura Sheridan is Senior Patent Counsel at Google, leading a team focused on defining Google's global patent portfolio strategy. Laura also works on patent policy issues and speaks regularly on a diversity of topics.

Laura studied engineering at Cornell University and received her J.D. from Fordham Law School. Prior to joining Google, Laura was in private practice in New York, where she specialized in patent prosecution, litigation, IP due diligence, and post-grant practice before the Patent Office.

Laura is active in the IP community, serving as co-chair for the Intellectual Property Owners Association Women in IP Committee and the New York Intellectual Property Law Association Corporate Counsel Committee, and helping to form the New York chapter of ChIPs. She is also a member of the NYU Law Engelberg Center on Innovation Law & Policy Advisory Board.


Amy G. O'Toole

AREAS OF PRACTICE

Amy G. O'Toole concentrates her practice in intellectual property litigation and has extensive trial and appellate experience, including handling appeals before the Federal Circuit and the United States Patent and Trademark Office. Ms. O'Toole also has extensive intellectual property licensing experience and regularly provides intellectual property counseling to technology clients regarding patent, trademark, trade dress and copyright issues.

Ms. O'Toole's practice includes:

  • Briefing and participating in Markman hearings, direct and cross examinations of witnesses at trial, arguing motions, taking and defending depositions of witnesses, drafting successful summary judgment motions on validity and infringement issues, and post-trial motions and appellate practice.
  • Extensive experience counseling clients in a wide variety of patent-related matters, including litigation strategy, trial preparation, appellate matters and USPTO reexamination proceedings.
  • Experience in Hatch-Waxman Act issues.
Ms. O'Toole's practice spans diverse technology areas, including chemical, pharmaceutical, automotive technologies, electrical and electronic products, and numerous mechanical and manufacturing technologies. She has vast experience with federal practice and procedure, having participated in all phases of the litigation process from pleadings, to trial and appeal. Among the clients she has represented include CorePharma LLC, Sharper Image Corporation, Toshiba Corporation, Underwriters Laboratories Inc. and UView Ultraviolet Systems Inc.

PROFESSIONAL BACKGROUND

Ms. O'Toole served as a judicial extern for Magistrate Judge Ronald Guzman.

PROFESSIONAL/CIVIC ACTIVITIES

  • American Bar Association
  • American Intellectual Property Law Association
  • Chicago Volunteer Legal Services Foundation
  • Federal Bar Association (Chicago Chapter)
  • Intellectual Property Law Association of Chicago
ADMISSIONS

  • Bar of Illinois
  • U.S. Patent & Trademark Office
  • United States Court of Appeals for the Seventh Circuit
EDUCATION

J.D., John Marshall Law School, 1995
B.A., Indiana University, 1990, (chemistry)

REPRESENTATIVE EXPERIENCE

Serves as a patent, trademark and trade dress outside counsel for a prominent specialty retailer of electronics, recreation and fitness and travel products and enforcing its intellectual property rights throughout the country. In addition, she routinely counsels the company on related licensing matters.

Serves as lead counsel for a leading manufacturer of automotive products and has prosecuted and defended several patent infringe

PRIMARY PRACTICE

IP Litigation


ANTHONY E. DOWELL is of counsel in the firm’s Intellectual Property and Litigation practice groups. He is an experienced trial lawyer who has litigated complex commercial cases throughout the United States. Tony focuses on patent litigation and licensing, but he has also tried to verdict other types of intellectual property and complex commercial litigation cases. In 2002, Tony successfully defended Weyerhaeuser Corporation in a patent licensing dispute where the plaintiff sought $42 million in damages but was awarded nothing. In 2008, Tony won a verdict after trial of $2.4 million for the City of Fayette, Iowa in a commercial lease dispute against Rexam Beverage Can Co. Tony currently represents ArrivalStar, S.A. in the licensing and enforcement of their portfolio of tracking and notification patents, and he has licensed the technology to over 250 companies. Tony has successfully litigated intellectual property disputes in diverse areas, including contact lenses, asphalt plants, sunglasses, papermaking machinery, furniture, home decorations, gaming devices, maps and steam heating systems.


Peter Kirk
Associate General Counsel / Director of Litigation at ABBYY USA Software House, Inc

Location

Milpitas, California (San Francisco Bay Area)

Industry

Legal Services

Overview

Current

  • Associate General Counsel / Director of Litigation at ABBYY USA Software House, Inc.
Past
  • Intellectual Property Attorney / Of Counsel at Holland & Knight LLP
  • Intellectual Property Attorney / Senior Associate at Fish & Richardson P.C.
  • Sr. Associate at Fish & Richardson P.C.
Legal Expertise

I am a seasoned litigator and have managed all or parts of more than 25 patent litigations – all resolved in my clients’ favor. Winning verdicts were awarded on motions, at trial, and on appeal.

Accomplishments:

  • Helped obtain the first jury verdict of no patent infringement ever awarded to Microsoft. Verdict selected by The National Law Journal as one of the “Top 10 Defense Verdicts” for 2004 (March 2005). (Arendi U.S.A. Inc. v. Microsoft Corp).
  • Successfully defended LG Electronics’ mobile phone handsets against claims covering image compression. Managed all non-infringement, invalidity and unenforceability defenses for six parallel patent litigations worldwide. (U.S. Philips Corp. v. LG Electronics, Inc., et al.).
Technologies litigated: computer software, hardware, and electronics, as well as networks, robotics, power supplies, medical and mechanical devices, control systems and cell phones.

Other issues litigated: contract and licensing disputes, theft of trade secrets, unfair competition, trade dress infringement, false marking, design patents, standards setting organizations, the Foreign Corrupt Practices Act, and antitrust violations.

Additional skills: drafting contracts and license agreements, freedom to operate analyses, opinions on infringement, validity and enforceability, trademarks, trade dress, trade secrets.

Experience

Associate General Counsel / Director of Litigation
ABBYY USA Software House, Inc.

Privately Held; 501-1000 employees; Computer Software industry
July 2011 – Present (2 years 4 months) Milpitas, California
As ABBYY’s Associate General Counsel and Director of Litigation, I help manage ABBYY’s intellectual property rights, including patent litigations and patent prosecution, as well as governmental affairs.
ABBYY is a leading provider of document conversion, OCR data capture and linguistic software products. ABBYY's recognition technologies help people manage information by delivering powerful software tools to automatically acquire data, as well as to process, store, retrieve and translate valuable information.

Intellectual Property Attorney / Of Counsel
Holland & Knight LLP

Partnership; 1001-5000 employees; Law Practice industry
February 2009 – June 2011 (2 years 5 months)

Intellectual Property Attorney / Senior Associate
Fish & Richardson P.C.


Privately Held; 501-1000 employees; Law Practice industry
2001 – 2009 (8 years)

Sr. Associate
Fish & Richardson P.C.
Privately Held; 501-1000 employees; Law Practice industry
2001 – 2009 (8 years)

Attorney
Fish & Richardson P.C.

Privately Held; 501-1000 employees; Law Practice industry
2001 – 2009 (8 years)

Northeast OEM (VAR) Manager
Tektronix
Privately Held; 1001-5000 employees; DHR; Electrical/Electronic Manufacturing industry
June 1992 – August 1997 (5 years 3 months)
At Tektronix' color printer division (later acquired by Xerox), I developed OEM / Value Added Reseller sales channels and helped coordinate sales and marketing activities in the Northeastern U.S. I established Tektronix' first OEM color printer reseller (Digital Equipment Corporation), and specialized in color proofing technologies for the pre-press industry.

Northeast Regional Sales manager
Sharp Electronics
Public Company; 10,001+ employees; Consumer Electronics industry
July 1989 – May 1992 (2 years 11 months)
At Sharp Electronics, I developed and managed the Northeastern U.S. dealer network for resale of computer, printer, and commercial color scanner technologies.

Eastern U.S. Sales Manager
Cricket Software
June 1988 – July 1989 (1 year 2 months)
I helped establish Cricket Software's Eastern U.S. reseller channel for graphics software applications. In its heyday, Cricked owned 95% of the market for postscript drawing / graphics software applications with a package called Cricket Draw. They also had presentation, paint, and graphing applications.
Cricket was acquired in July 1989 by Computer Associates.

Education

Boston College Law School, JD (magna cum laude, Order of the Coif),
1997 – 2000

Bates College, B.A., Psychology,
1981 – 1985


Sean Patrick Butler
Senior Corporate Counsel
Cisco’s Cloud Networking Group


Sean gets a little thrill out of referring to himself as a “reluctant lawyer.” Since leaving the large law firm practice two years ago he has been enjoying himself immensely no longer having to be the subject matter expert and instead using the skills he developed as a corporate and securities attorney in Silicon Valley to be a part of in-house teams facilitating the rapid growth of fast-paced startup companies.

In June of 2012, Sean joined Meraki, Inc., a cloud-managed networking company and former client based in San Francisco as their first in-house attorney. Four months later Meraki signed a term sheet to be acquired by Cisco Systems, Inc. for $1.2 billion, and Sean helped lead the team that completed the acquisition in just over nine weeks from term sheet to closing.

Since then, Sean has been assisting with the integration of Meraki as the new Cloud Networking Group within Cisco’s larger Enterprise business. He continues to provide front-line counsel to the former Meraki team as they work to rapidly scale Meraki’s revenue by leveraging the new Cisco platform.

Prior to joining Meraki, Sean started his own practice, acting as a contract general counsel for startups and entrepreneurs - a move that was simultaneously thrilling and terrifying. Nothing says “motivation,” he discovered, like transferring the last bit of one’s savings to one’s checking account, unsure where next month’s expenses would come from - all with two small children to support. It was during this time that Sean began to broaden his skillset beyond the scope of his corporate and securities practice prior to that time.

Sean started his career at Wilson Sonsini Goodrich & Rosati, P.C., in 2005 after graduating from UC Berkeley’s Boalt Hall School of Law. Sean spent two years in the Palo Alto office, and three years in the firm’s Seattle office, doing his tour of duty through the public company and Mergers & Acquisitions practices, but focusing primarily on the day-to-day representation of startups and emerging growth companies.

Sean lives in Sebastopol, California with his wife and two children. When he is not wearing his lawyer hat he spends as much time as possible with his family in the outdoors, reclaiming some of the years he has spent in front of a computer under fluorescent lights. Despite his best efforts to be professional over the years, he still finds it difficult to take himself too seriously.


STEFANI E. SHANBERG

Stefani Shanberg is a partner at Wilson Sonsini Goodrich & Rosati, where she specializes in patent litigation with a particular emphasis on investigations before the International Trade Commission. While Stefani has extensive experience in all areas of intellectual property litigation, she focuses on defending technology companies ranging from venture-backed startups to Fortune 100 public companies against claims of patent infringement from competitors and non-practicing entities.

Stefani’s recent engagements have related to diverse technologies including network security, Internet advertising, wireless communications, and other Internet, hardware, and software products. In the past year, Stefani won summary judgment of noninfringement, defeated summary judgment of invalidity, won favorable claim constructions, won three motions to stay pending reexamination of asserted patents, won a motion to dismiss, and defeated a motion to dismiss.

Stefani was recently selected by the Daily Journal as one of the “Top 20 Under 40” attorneys in California, and as one of the “Top 75 Intellectual Property Litigators in California.” She is also a current Executive Committee member of the ITC Trial Lawyers Association.


STEVEN E. JEDLINSKI
Registered Patent Attorney
Chicago

Practices

Intellectual Property | Patent Protection and Prosecution | Copyright | Licensing | Patent Litigation | Trademark | Non-Competes, Trade Secrets and Defecting Employees | Technology

Steven E. Jedlinski is a registered patent attorney with a background in biomedical engineering. Mr. Jedlinski concentrates his practice in patent and trademark litigation, prosecution, counseling, due diligence and opinion work. His experience spans a diverse set of technologies, including work in the fields of computer systems and software, WiFi, telecommunications systems, mechanical devices, electrical controls, medical devices and pharmaceuticals/supplements.

Mr. Jedlinski's litigation experience includes work both supporting and in defense of charges of patent infringement. He is experienced in numerous facets of intellectual property litigation, including discovery practice, motion practice, technology tutorials, claim construction proceedings and mediations. He has been an integral part of team developing strategies in patent infringement cases before federal district courts across the country, including the Northern District of Illinois, the Eastern District of Texas, the Central District of California and the District of New Jersey. Notably, Mr. Jedlinski has been chosen as panel counsel in RPXIS's insurance program against non-practicing entities.

As a registered patent attorney, Mr. Jedlinski also counsels clients of all sizes regarding all aspects of prosecution and portfolio management and provides strategies for specific applications, families and entire portfolios. He has prepared patentability, validity, infringement, enforceability, and clearance analyses and opinions. His experience before the U.S. Patent and Trademark Office also includes strategic reexamination matters. Additionally, Mr. Jedlinski has drafted and negotiated a variety of agreements, including licensing, manufacturing, supply and nondisclosure.

Education

  • Chicago-Kent College of Law, J.D.
  • Northwestern University, B.S., Biomedical Engineering
Memberships

  • Northwestern University Department of Biomedical Engineering, Advisory Board

Speaking Engagements

  • Leveraging the AIA's Joinder Provision, Recent Decisions, and New Court Procedures in Defending Infringement Disputes, NPEs in Patent Litigation: Latest Developments, January 9, 2013