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Kevin Johnson, who has an electrical engineering degree from Cornell, serves as lead counsel for such companies as Sony, Samsung, Marvell Semiconductor, MediaTek, Hynix, Bio-Rad, and salesforce.com, to name a few. He has tried many cases to verdict for these and other clients over the course of his career. His practice focuses on litigating patent infringement, trade secret, unfair competition, trademark, copyright and licensing actions in Federal and State courts, as well as the International Trade Commission. His experience ranges from representing Fortune 50 companies to smaller, rapidly growing technology companies in disputes related to smart phones, microprocessors, wireless communications, semiconductor processing equipment, liquid crystal devices, consumer electronics, medical devices, biotech and life science products, software and graphics, telecommunications, and optical devices.
Oberthur Card Systems
Served as co-lead counsel representing Samsung in the company’s smartphone litigations with Apple. These cases are 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.
In another action where Mr. Johnson is co-lead counsel for Samsung, the Federal Circuit vacated a preliminary injunction issued against Samsung, holding that Apple failed to show causal nexus to harm that would justify a preliminary injunction against Samsung’s Galaxy Nexus. The Federal Circuit additionally denied Apple’s rehearing petition. Mr. Johnson is currently preparing this case for trial, which commences in less than two months. Of note, in response to Samsung’s Daubert challenge, the Court recently remarked at a hearing that it was likely to exclude significant portions of Apple’s damages opinions.
Served as co-lead counsel for Samsung in this ITC investigation asserting Samsung’s patents covering HSUPA and user interactivity against Apple. Mr. Johnson tried this case in June of 2012. In June 2013, the ITC issued a Final Determination that Apple’s iPhone 4, iPhone 3GS, iPhone 3, iPad 3G, and iPad 2 3G infringe on the asserted patents, and entered a limited exclusion order and a cease and desist order prohibiting Apple from importing into the U.S. or selling or distributing within the U.S. these products. Additionally, the ITC rejected Apple’s affirmative defense that Samsung’s asserted standards patents are unenforceable. While the United States Trade Representative (USTR) issued a letter disapproving of the limited exclusion order and the cease and desist order, nothing in the USTR’s letter prohibits Samsung from recovering damages for Apple’s infringement nor does it prohibit Samsung from seeking an exclusion order covering other standards patents in its portfolio.
Served as co-lead counsel for Samsung in this ITC investigation defending against Apple’s patent infringement claims. Mr. Johnson tried this case in May/June of 2012. In August 2013, the ITC Commission issued its Final Determination, finding that none of Samsung’s accused devices infringed either of the asserted design patents. The ITC also found no violation of two of Apple’s asserted utility patents. For the remaining two asserted utility patents, while the ITC found that certain older products infringed and issued an exclusion order relating to those products, the ITC found no infringement by Samsung’s new designs. All of Samsung’s products that have been imported since the exclusion order went into effect use the designs found not to infringe. Based on Samsung’s design-arounds, U.S. Customs has not seized any shipments of Samsung products based on the exclusion order.
Served as lead counsel for Marvell Technology Group, Ltd. and Marvell Semiconductor, Inc. (collectively, “Marvell”), in a patent case filed by Carnegie Mellon University (“CMU”). While the jury sided with CMU at trial, Marvell is vigorously challenging the judgment through all appropriate post trial motions and appeal processes. 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.
Served as lead counsel for a number of Sony entities in a patent case filed by Compound Photonics regarding ultra-high resolution digital projectors and certain digital televisions. After Compound Photonics dismissed its mirror ITC action in its entirety, Compound Photonics resumed its litigation in the Eastern District of Texas. Sony successfully moved to transfer the action from the Eastern District to the Southern District of California, the home forum for one of the Sony entities. Additionally, prior to transfer, the Court granted, with leave to amend, Sony Corporation’s motion to dismiss Plaintiff’s inducement allegations. The parties are currently exchanging claim construction briefing.
Served as lead counsel for MediaTek Inc., MediaTek USA Inc., and MediaTek Wireless, Inc. (collectively, “MediaTek”) in connection with a suit brought by plaintiff Lantiq Deutschland GMBH (“Lantiq”) in December 2011 for alleged patent infringement by MediaTek’s mobile communications products, digital home products, information technology products, and wireless broadband connectivity products. In February 2012, the Court struck the complaint against MediaTek as improperly and belatedly filed without leave of Court. After leave was granted by the Court, Lantiq filed a Second Amended Complaint against MediaTek. MediaTek moved to dismiss that complaint on numerous grounds, including lack of personal jurisdiction, improper service, and failure to state a claim of direct, indirect and willful infringement. Before decision on that motion, the case was favorably settled in February 2013.
Served as lead counsel for Marvell Semiconductor, Inc. in an action pending before Judge Richard Andrews in the District of Delaware. Plaintiffs HSM Portfolio, LLC and Technology Properties Limited, LLC initially named Marvell Technology Group Ltd. and Marvell Semiconductor Ltd. but they were convinced to drop those parties and substitute Marvell Semiconductor, Inc. The case settled favorably for Marvell early on in discovery.
Served as lead counsel for CSR plc, Marvell Semiconductor, Inc., Lexmark International, Inc., Canon Inc., Canon U.S.A., Inc. and Ralink Technology Corporation in a case brought by the Canadian company MOSAID Technologies, Inc. that involved six patents alleged to read on WiFi technology. After the Court issued its claim construction ruling, the case settled favorably for the remaining parties.
Served as lead counsel for Sony in this case involving LCD patents. In July 2010, Positive Technologies Inc. (“PTI”) filed a patent infringement action against Sony and several other defendants in the Eastern District of Texas, alleging infringement of three patents. The patents-in-suit are directed to the control and driving of matrix addressable electro-optic displays. The case was transferred to the Northern District of California in May 2011. After a productive mediation in October 2012, the parties agreed to settlement terms that were favorable to Sony. The Court granted a stipulation and order dismissing the case against Sony with prejudice in February 2013.
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.
Served as lead counsel for Hynix, the world’s second-largest memory chipmaker, and now a member of SK Telecom Group, in a patent case filed by Intellectual Ventures in federal court in Delaware. The action was one among Intellectual Ventures’ first three patent infringement lawsuits filed against various technology companies in December 2010. Intellectual Ventures filed actions in the Western District of Washington and in the ITC against Hynix and several of its customers. Following the completion of expert discovery in the ITC and Delaware actions, Hynix reached a favorable global settlement with Intellectual Ventures.
Served as lead counsel and defended Sony in a patent case brought by Austin-based Bandspeed, Inc. in the Western District of Texas. Bandspeed asserted two patents alleged to cover adaptive frequency hopping communication systems, including Bluetooth. Despite more than two years of litigation, Sony had not responded to a single interrogatory or had even a single deposition taken of it—the only fact discovery had been on a potentially dispositive licensing defense based on Bandspeed’s standards setting activities. After claim construction, the case settled favorably for Sony.
Served as lead counsel for MediaTek and Ralink in an ITC investigation filed by LSI Corporation. LSI asserted two patents relating to video compression technologies and two patents relating to WiFi technologies. LSI asserted the patents against MediaTek/Ralink and two other groups of respondents. Mr. Johnson led a Quinn Emanuel team that took over the case for MediaTek/Ralink halfway through discovery. Ten weeks before the evidentiary hearing was to begin, MediaTek/Ralink obtained an agreement from LSI to terminate MediaTek/Ralink from the investigation, although the investigation continued against the other respondents.
Served as lead trial counsel for Sony Electronics Inc., Sony Pictures Entertainment Inc., Sony BMG Music Entertainment, Sony Computer Entertainment America Inc., and Crackle, Inc. (collectively “Sony”) in a patent infringement case brought by Antor Media relating to the downloading of media to smartphones and personal digital assistants. After obtaining a stay of the case pending reexamination of the patent-in-suit, all claims of the patent were invalidated by the USPTO. The Federal Circuit affirmed the USPTO’s findings resulting in a complete victory for Sony.
Served as lead counsel for Giesecke & Devrient America, Inc. (“G&D”) in an action pending in the Southern District of New York (“S.D.N.Y.”). G&D is a leading supplier of secure banknotes and smartcards. In January 2011, Leighton Technologies, LLC (“Leighton”) filed suit in the Eastern District of Virginia against G&D for the alleged infringement of five patents regarding methods of manufacturing “smart cards.” In July 2011, Mr. Johnson successfully obtained an order transferring this action to S.D.N.Y. Mr. Johnson’s 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 in November 2011, the parties entered into a settlement agreement and the plaintiff agreed to voluntarily dismiss the case in March 2012.
Served as lead counsel for MediaTek in an ITC investigation brought by Freescale. The case involved chipsets for DVD and DTV products. Based on Freescale’s unsuccessful assertion of the same patent in prior litigations, MediaTek successfully moved to stay the investigation prior to the evidentiary hearing. MediaTek then obtained a Final Determination terminating the investigation.
Obtained unanimous precedential ruling from the Federal Circuit affirming summary judgment of invalidity for clients Bio-Rad Labs and ARUP.
Served as lead counsel for Sony in Sony’s first-ever plaintiff-side patent enforcement program. Mr. Johnson successfully obtained favorable settlements in these actions pending in both the ITC and district court against Chi Mei Innolux and TPV.
Served as lead counsel for Sony in a world-wide patent infringement dispute (involving about 20 actions in multiple jurisdictions, including the ITC and district courts across the United States) with LG Electronics, Inc. and its subsidiary, Zenith Electronics, in cases involving patents related to digital display technology. The cases settled favorably for Sony.
Defended Marvell Semiconductor Inc. and Sony in an infringement trial brought by Wi-LAN, Inc. in the Eastern District of Texas. The case settled favorably right after jury was selected.
Defended Sony Electronics Inc. and 14 other defendants in a patent infringement action in the Eastern District of Texas and the Federal Circuit against Intellectual Capital Holdings Limited ("ICHL"), a non-practicing entity.
Represented MediaTek in a series of patent lawsuits in San Francisco and Marshall, Texas against Matsushita involving semiconductors and consumer electronics products. After obtaining favorable rulings on claim construction, summary judgment and other key motions, the case settled on very favorable terms.
Defended Samsung in a case brought by Agere Systems involving technology related to semiconductor memory products and semiconductor processing.
Defended the Gillette Company in a successful jury trial involving patents related to technology used on the Mach3 razor.
Represented Sony in a declaratory judgment action against AmTRAN in the Northern District of California and defending Sony against AmTRAN’s assertions of infringement in a related lawsuit in Wisconsin. Both cases involve the same patents related to television signal processing and power management.
Represented Bio-Rad Laboratories, Inc. in a series of patent lawsuits against various defendants including 4titude, Ltd., Phenix Research, and Eppendorf. The suits involved laboratory trays used during DNA testing. All cases ultimately settled on terms favorable to Bio-Rad.
Defended Avaya in a multi-defendant patent action brought by sole inventor in North Carolina relating to metering systems. After serving a Rule 11 motion, obtained walk-away settlement.
Represented most of the cell phone industry (30+ defendants) in a patent case in Texas brought by the University of Texas involving predictive text messaging. After convincing the Court to stay discovery on everything except claim construction and hold a separate trial on validity of the patent, the Court granted defendants' motion for summary judgment of non-infringement. The Federal Circuit upheld this judgment on appeal.
Represented Varian Semiconductor against Applied Materials in a patent infringement arbitration involving semiconductor processing equipment. The arbitration panel found that Applied infringed Varian's patents.
Defended OTC in an unfair competition, trade secret and copyright case. Case was dismissed on summary judgment, and OTC was awarded its attorneys fees and costs.
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.
Successfully defended Ampex is a series of patent jury trials involving error correction and Audio and Video standards. The jury found the patents invalid and not infringed.
Defended the DeVry University in one of the first cases brought under California's new anti-spam statute.
Represented Tegic Communications, Inc. in a contempt proceeding in the Northern District of California filed against Zi Corporation. Tegic alleges that Zi violated the terms of a 2002 judgment following a successful patent-infringement jury verdict for Tegic. The contempt proceedings are now pending in arbitration.
Represented HTC Corp. in lawsuit filed in Eastern District of Virginia asserting three patents in CDMA technology.
Successfully represented Netsuite in an ED TX suit alleging infringement of a patent relating to CRM software.