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Ed DeFranco is Co-Chair of Quinn Emanuel’s National Intellectual Property Litigation Practice and is recognized as one of the leading patent litigators in the U.S. Mr. DeFranco’s practice focuses on litigating patent infringement, trade secret, unfair competition, and licensing actions in Federal and State courts, as well as in the International Trade Commission.
Over the course of his 25-year career, Mr. DeFranco has tried well over 25 bench and jury trials for clients such as Google, Motorola, Samsung, Real Networks, Marvell, Gillette and Alcatel-Lucent, to name a few. He has served as lead counsel in cases related to smartphones, microprocessors, telecommunications, wireless communications, semiconductor processing equipment, set-top box hardware and software, liquid crystal devices, consumer electronics, medical devices, biotech and life science products, and optical devices.
Mr. DeFranco was recently recognized in the IAM Patent 1000 for 2013: “Quinn Emanuel Urquhart & Sullivan is home to a cadre of ‘extremely hardworking and well-prepared’ attorneys, who are unanimously regarded as some of the best around. The firm is active on all fronts, appearing in heavyweight district court, ITC, appellate and Supreme Court cases. Seamless coordination between its US and European offices gives it an edge in major cross-border patent fights. ‘Straight shooter’ Edward DeFranco is among the top-flight litigators here: ‘He is a careful, thoughtful trial lawyer with fantastic presentation skills who really makes things happen for his clients.’”
At his most recent trial, Mr. DeFranco made news for his cross examination of the patentee’s damages expert in a Law360 article entitled “Marvell Shreds France Telecom’s Expert in $10M Chip IP Trial” (September 24, 2014) and for his closing argument. The patent owner had sought a finding of willful infringement and treble damages. The jury ultimately returned a finding of no willful infringement and awarded just 5.6% of what the plaintiff sought to recover. A follow-up Law360 article put it this way: “The jury ultimately agreed with arguments made by Marvell attorney Edward DeFranco of Quinn Emanuel Urquhart & Sullivan LLP . . . .” (Law360, Oct. 2, 2014 article).
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Trials and Arbitrations
Served as co-lead counsel representing Motorola in the company’s smartphone litigations against Apple and Microsoft. These cases were venued around the world including in Chicago, Florida, California, Washington State, Washington D.C., the ITC, and Germany. All of these matters have been resolved on terms that are very favorable for Motorola.
Served as counsel for Motorola Mobility and Motorola Solutions in a multi-patent suit against Apple in the Northern District of Illinois before the Honorable Richard Posner, sitting by designation. This was the largest of the many patent disputes between the parties worldwide. Achieved a complete victory on all 15 Apple asserted patents, winning dismissal of all claims on summary judgment.
Served as counsel for Motorola Mobility in a Section 2 Sherman Act, breach of contract, tortious interference, and unfair competition case filed by Apple in the Western District of Wisconsin relating to obligations to license cellular and wireless patents on fair, reasonable and non-discriminatory terms. Achieved dismissal of Apple’s antitrust, tortious interference, and unfair competition claims on summary judgment. The remainder of Apple’s claims were dismissed prior to trial.
Serving as co-lead counsel representing Samsung in the company’s smartphone litigations with Apple. These cases have also been venued around the world including in the Northern District of California, ITC, Netherlands, Germany, UK, Korea and Japan. In the initial Northern District of California action, the Federal Circuit recently issued an opinion rejecting the majority of Apple’s challenges to the district court’s denial of a permanent injunction. Importantly, the Federal Circuit affirmed the denial of an injunction with respect to Apple’s design patents and trade dress claims. Additionally, in response to Samsung’s motion for a new trial, the Court held a damages retrial for certain accused products in November 2013. The jury awarded Apple less than half of Apple’s original demand prior to trial.
Obtained a defense jury verdict of patent invalidity and non-infringement for an internet technology company in an Eastern District of Texas trial in which plaintiff sought $128 million in damages.
Serving as co-lead counsel for Marvell Technology Group, Ltd. and Marvell Semiconductor, Inc., in a patent case filed by Carnegie Mellon University (“CMU”). While the jury sided with CMU at trial, Marvell is vigorously challenging the judgment on appeal. Of note, in December 2013, CMU filed a motion to permit registration of the judgment against Marvell and a motion to enjoin Marvell from transferring assets outside the “ordinary course of business.” Shortly after Marvell filed its oppositions, the Court denied both of CMU’s motions without prejudice.
Obtained a complete jury trial victory for Google in a patent infringement case involving its online advertising technology. The plaintiff sought damages in excess of $500 million. After a one-week trial, the jury returned a verdict of noninfringement and invalidity.
Obtained a defense jury verdict of patent invalidity and non-infringement for an internet digital media delivery company (RealNetworks) in a five-week District of Massachusetts trial in which the hometown plaintiff sought in excess of $200 million in damages. The jury found all ten patent claims asserted against RealNetworks not infringed, and seven of the ten claims invalid. The Federal Circuit affirmed the result less than 24 hours after hearing argument on the plaintiff's appeal.
Won patent infringement jury trial for Duracell and Gillette in against Rayovac relating to the chemical compositions of hearing aid batteries. All three of Rayovac’s patents were found invalid and/or non-infringed in trial in Federal District Court in Rayovac’s hometown (Madison, Wisconsin).
Successfully defended Gillette in Mach3 razor patent infringement jury trial in Chicago relating to the chemical coatings on razor blades where the damages claim against Gillette exceeded $100 million.
International Trade Commission
Successfully defended Motorola in an ITC action filed by Apple alleging infringement of 3 patents and seeking an exclusion order against most of Motorola’s handsets. The ALJ found no violation after a 2 week hearing and the Commission affirmed.
On behalf of complainant, obtained a limited exclusion order and cease and desist order from the US ITC Commission barring respondent Apple from importing ATT versions of the iPhone 4, iPhone 3GS, iPhone 3, iPad 3G, iPad 2 3G.
On behalf of respondent, obtained an order of “no violation of Section 337” in a three patent trial brought by Apple against our client, a major smart phone maker, seeking to exclude virtually all of our client's smart phones from importation into the US.
On behalf of multiple respondents, making up virtually the entire semiconductor industry, obtained an order of "no violation of Section 337" in a six patent trial brought by Rambus, in which Rambus sought to exclude the importation of billions worth of semiconductor products. The ALJ found all six patents invalid and several of the patents unenforceable due to spoliation of evidence.
On behalf of respondent, obtained an order of "no violation of Section 337" as to two operating system patents in a trial brought by Apple against our client, a foreign smart phone maker. Apple initially sought exclusion based on eight operating system patents, but ended up dropping six of the eight patents by the end of trial. The ALJ found "no violation" as to the two remaining operating system patents.
On behalf of respondent, obtained an order of "no violation of Section 337" as to eight of nine patents in a trial brought by Microsoft against our client, a major smart phone maker, seeking to exclude our client from importing its smart phones into the US. The remaining patent was designed around.
On behalf of respondent, obtained an order of "no violation of Section 337" in a three patent trial seeking to exclude our client, a global telecommunications company and the then largest mobile handset manufacturer in the world, from importing its handsets into the United States.
On behalf of respondent, obtained an order of “no violation of Section 337” by the ITC Commission in a five patent trial brought by the then largest telecommunications carrier against our client, a major cable company, in which the carrier sought to exclude the importation of all set top boxes by our client.
Served as lead counsel for Sony in an ITC Investigation regarding ultra-high resolution digital projectors, including those used to show 3-D movies in theaters throughout the country. During the Investigation, Mr. Johnson secured important wins on Sony’s motions, including a motion to strike critical contentions (and evidence) regarding the asserted patent’s invention date and domestic industry. Just two weeks before trial and for nothing in return, Complainants requested that the Investigation be terminated in its entirety.
Summary Judgment Rulings
Lead counsel for Activision in a declaratory judgment action seeking a declaration of noninfringement and invalidity against Gibson Guitar, Corp. The Court ruled on Summary Judgment that Gibson’s patents were not infringed.
In the Eastern District of Texas, won summary judgment of non-infringement on all asserted patents on behalf of two internet technology companies in a case involving internet search technology in which plaintiff sought $400 million for past damages.
Obtained summary judgment of non-infringement on behalf of over 30 cellular telephone manufacturer defendants in a patent case brought by the University of Texas in its home town of Austin, where the university sought in excess of $1.5 billion in damages.
In the District of Nevada, in a five patent case brought by IGT against our client, a major gaming company, of won summary judgment dismissing all five patents based on a combination of rulings of non-infringement and invalidity where IGT had sought damages in excess of $350 million in damages.
In the Northern District of California, obtained summary judgment of invalidity for RealNetworks based on obviousness of all four asserted patents, based on KSR Int'l v. Teleflex Inc., in a case involving Internet media search and playback technology. This was the first reported post-KSR summary judgment decision resulting in dismissal based on obviousness. The plaintiff, Friskit, Inc., had sought damages of over $70 million for alleged infringement of four patents relating to systems for enabling continuous streaming playback from Internet sites.
In the Eastern District of Texas, won summary judgment of invalidity as to all asserted claims in a patent case involving internet search technology.
In the District of Nevada, won summary judgment of invalidity on one asserted patent and summary judgment of non-infringement on the remaining asserted patent on behalf of a major gaming company.
In the Eastern District of New York, obtained stipulated judgment of non-infringement on all asserted claims following favorable claim construction ruling for Google Inc., in a case involving online advertising systems web server technology in which plaintiff sought over $100 million in damages.
Obtained summary judgment of non-infringement for Alcatel-Lucent in analog circuitry telecommunications case. which was affirmed on appeal by the Court of Appeals for the Federal Circuit.
Represented Motorola Mobility and Time Warner Cable against TiVo in a case involving Patented DVR Technology and obtained a successful settlement for a fraction of the amount sought by TiVo during trial ($4 billion). Took over the case during expert discovery and less than three months before the start of trial. Quinn Emanuel’s trial strategy resulted in key victories in pre-trial motions that led to the successful settlement.
Served as counsel for Motorola Mobility in a patent litigation against Apple which involved twenty two patents, asserted by both Apple and Motorola, venued in the Southern District of Florida. The case involved a broad spectrum of technology, including wireless, mobile graphics, and mobile interface technology. The case settled on favorable terms.
Defended Oberthur Technologies in a patent lawsuit involving technology related to the manufacturing of radio frequency identification cards. After obtaining favorable rulings on standing and ownership, the case settled on very favorable terms.
Represented Sony in a declaratory judgment action against AmTRAN in the Northern District of California and defended Sony against AmTRAN’s assertions of infringement in a related lawsuit in Wisconsin. Both cases involved the same patents related to television signal processing and power management. After prevailing on a motion to transfer AmTRAN’s action, the case settled favorably for Sony.
Represented Sony against LG Electronics, Inc. and its subsidiary, Zenith Electronics, in cases involving patents related to digital display technology. The cases settled favorably for Sony.
Served as lead counsel for Giesecke & Devrient America, Inc. (“G&D”), a leading supplier of secure banknotes and smartcards in an action venued in the Southern District of New York. . The Plaintiff, Leighton Technologies, LLC, originally filed suit in the Eastern District of Virginia against G&D for the alleged infringement of five patents regarding methods of manufacturing “smart cards.” Successfully obtained an order transferring the action to the Southern District of New York. Our team convinced the Court to stay all further fact discovery pending a Markman hearing to construe the disputed terms in the asserted patents. After a technology tutorial, the parties entered into a settlement agreement and the plaintiff agreed to voluntarily dismiss the case.
Served as co-lead counsel for Sony in Sony’s first-ever plaintiff-side patent enforcement program. Successfully obtained favorable settlements in actions pending in both the ITC and district court against Chimei Innolux and TPV.
Counsel for Bally in a Delaware patent case involving slot machines and bonusing awards and systems. Obtained settlement after several important damages and other rulings prior to trial.
Lead counsel for Northrop Grumman in a patent case relating to fiber optic gyroscopes. Case settled successfully after winning important pretrial damages and summary judgment motions.
Co-lead counsel for royalblue in a patent infringement suit relating to trading securities over multiple electronic exchanges. Case settled on very favorable terms after winning at Markman.