Thomas D. Pease

Tom has represented a wide range of clients including Samsung, MediaTek, International Game Technology, ViaSat, Dexcel, Sony, Cabeau, Toshiba, STMicroelectronics, nVidia, Google, IBM, Freescale, Motorola, HTC, Micron, Broadcom, and Infineon in patent and trade secret-related litigation.  In addition, Tom is currently representing the Rescap Trust in litigation involving RMBS securities.

• Taction Technology, Inc. v. Apple Inc. Tom is currently serving as co-lead counsel for Taction in an action in the Southern District of California involving the assertion of two Taction patents on haptic technology against Apple iPhones and watches that incorporate a Taptic Engine. The Court recently conducted a Markman hearing and trial is scheduled for July 2023.

• Veritaseum Capital, LLC v. Coinbase Global, Inc. Tom is currently serving as co-lead counsel for Coinbase in the defense of an action brought by Veritaseum in the District of Delaware on a single patent that is being asserted against the processing of transactions using “blockchain” technology and “cryptocurrencies,” in the context of Bitcoin, Ethereum and Solana-based cryptocurrency protocols. Coinbase recently filed a motion to dismiss the complaint.

• Evolved Wireless, LLC v. Samsung. Tom is currently serving as counsel for Samsung in the defense of a series of cases involving the assertion of declared essential patents acquired from LG Electronics against 4G/LTE-compliant products. Evolved initially sued in the District of Delaware on five patents, four of which were invalidated by the Patent Office and the fifth was found exhausted by virtue of a prior license. Evolved then initiated an ITC investigation on three related patents, but withdrew the case on the eve of trial. Evolved then filed an action on other related patents in the Eastern District of Texas (Gilstrap, J.), which is in the early stages of discovery.

• NXP v. MediaTek et al., Inv. 337-TA-1287. As part of a global dispute, Tom represented MediaTek in an ITC investigation involving the assertion of four NXP patents against MediaTek’s IEEE 802.11ax compliant products. Tom served as lead counsel on all issues surrounding MediaTek’s assertion of RAND defenses. The case settled on the eve of trial in July 2022.

• KeyMe, LLC v. The Hillman Group, Inc. Tom helped take the lead in representing KeyMe, a manufacturer and supplier of key duplication kiosks that use deep neural networks and artificial intelligence (AI)/machine learning (ML) algorithms to recognize and accurately reproduce keys, in a patent infringement lawsuit in the District of Delaware against Hillman. Tom also played a role in KeyMe’s defense of a companion case brought Hillman in the Eastern District of Texas (Gilstrap, J.), in which the firm obtained a jury verdict of non-infringement on all asserted patents in April 2021.

• Sandoz Inc. and RareGen, LLC v. United Therapeutics Corp. Tom served as co-lead counsel for RareGen in an antitrust action pending in the District of New Jersey involving restraints placed on the availability of cartridges for use in the administration of generic treprostinil, a drug for the treatment of pulmonary arterial hypertension (PAH). Plaintiffs’ motion for a preliminary injunction is pending.

• Rescap Liquidating Trust. Tom has represented the ResCap Liquidating Trust in scores of RMBS actions against correspondent lenders, relating to the origination and sale of billions of dollars of defective residential mortgages; recoveries to date exceed $1.3 billion.

• Via Licensing Corp. v. Hong Kong Konka Ltd. Tom served as co-lead counsel for Hong Kong Konka in an arbitration in the Hong Kong International Arbitration Centre concerning the Advanced Audio Coding Patent License Agreement and its AAC essential patent pool . The case involved contract issues as well as FRAND/patent misuse claims and defenses and settled amicably.

• Huawei Technologies v. Samsung Elecs. Co., Ltd, et al. Tom served as co-lead trial counsel for Samsung in global litigation, including an action pending in the Northern District of California involving twenty-two 3G/UMTS and 4G/LTE SEPs, a wide range of competing FRAND defenses and claims, and an antitrust counterclaim asserted by Samsung based on attempted monopolization.

• CSIRO v. MediaTek, et al. Tom served as trial counsel for MediaTek and Barnes & Noble in a multi-defendant patent infringement suit brought by Australia’s national science agency, the Commonwealth Scientific and Industrial Research Organisation (CSIRO) in the Eastern District of Texas against manufacturers of Wi-Fi chipsets and consumer devices that contain such chips based on an SEP, subject to RAND obligations, that was alleged to cover the IEEE 802.11 a, g, n, and ac wireless standards.

• Apple Inc. v. Samsung Elecs. Co., Ltd., et al. Tom served as co-lead counsel for Samsung in several intellectual property actions with Apple, including two tried in Northern District of California and one tried in the ITC (In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, 337-TA-794 (Gildea, ALJ)). Apple asserted FRAND defenses and claims in response to Samsung’s assertion of patents declared essential to ETSI/3GPP 3G UMTS standards. Samsung obtained an exclusion order against Apple—the first ever for Samsung and the first ever against Apple (subsequently vetoed by Ambassador Froman on public policy grounds) and obtained a complete victory on all FRAND claims and defenses that were tried. Tom has also served as FRAND counsel for Samsung in cases against Ericsson, 337-TA-862 (Shaw, ALJ) and 37-TA-866 (Gildea, ALJ) and Interdigital, 337-TA-868 (Essex, ALJ) (all now settled).

• International Game Technology v. Leap Forward Gaming, et al. Tom served as lead counsel for International Game Technology (“IGT”) in a suit against its competitor, Leap Forward Gaming, Inc. ("LFG") in the District of Nevada. IGT, a leader in the design and sale of computerized gaming equipment, software, and network systems, sued LFG and other individuals for trade secret misappropriation, violation of the Computer Fraud and Abuse Act ("CFAA"), and a variety of unfair competition and Lanham act claims. The case settled favorably with IGT acquiring certain assets including several patents and other intellectual property from LFG relating to its SaffariNet® Patron Display Interface® (PDI) picture-in-picture multimedia ecosystem technology.

• Cabeau v. Atomi. Tom served as lead trial counsel for Cabeau, Inc., a world-leading supplier of comfort products and travel gear, in related cases in the Southern District of New York and the Central District of California involving a design patent, trade dress and unfair competition claims. The action was based on Atomi’s importation and sale of a close imitation of Cabeau’s award-winning Evolution Pillow™. The case settled favorably before trial.

• Dexcel v. DRL, Sun, and Apotex. Tom served as trial counsel for Dexcel in a series of Hatch-Waxman cases in the District of New Jersey concerning Dexcel's patented OTC-omeprazole formulations. The cases settled favorably during trial.

• Rambus v. Infineon. Tom served as trial counsel for Infineon in the original Rambus case, a closely-watched patent infringement lawsuit involving SDRAM and DDR SDRAM memory chips and standard-setting defenses based on Rambus’ breach of the JEDEC patent policy. During the course of a two-week jury trial, the Court granted JMOL, dismissing all 57 asserted claims of the four alleged SEPs-in-suit. In addition, the jury found that the plaintiff had committed fraud on a standards body and awarded several million dollars in punitive damages. After trial, the Court awarded Infineon its attorneys’ fees and issued an anti-suit injunction. After appeal and partial remand, Tom was part of the team that won a bench trial resulting in dismissal of plaintiff’s case based on unclean hands and spoliation of evidence. The case settled immediately after the unclean hands finding.

• In the Matter of Certain Semiconductor Chips and Products Containing Same, 337-TA-753 (Essex, ALJ). Tom obtained another victory against Rambus more than ten years later, serving as trial counsel for MediaTek, Broadcom, nVidia, STMicroelectronics, Cisco, Motorola, Oppo Digital, and other companies in an ITC Investigation brought by Rambus for alleged infringement of six patents. Rambus asserted three of the patents as SEPs against memory controllers for use with JEDEC-standardized DDR-type memories, with the other three asserted against certain types of standardized SERDES interfaces including PCIe, SATA, SAS, and Displayport. Although Rambus had prevailed on the three memory controller patents before the same ALJ in an earlier action, the ALJ and the full Commission held each and every one of Rambus’s patents invalid, it also issued a seminal opinion concluding that unclean hands, based in part on spoliation, barred Rambus from enforcing its DDR patents. The case settled favorably while on appeal.

• Sony Corp. v. Vizio, Westinghouse, Chimei Innolux, and LG Electronics. Tom successfully represented Sony in the licensing and litigation of Sony’s color television and monitor patents in a series of actions in the ITC, the Central District of California and other venues. Each case settled with the adverse party taking a license.

• IBM v. PSI. Tom served as trial counsel for IBM in a patent, trade secret, and antitrust action in the Southern District of New York relating to PSI’s attempt to emulate IBM mainframe architecture and operating system technology. The case settled with IBM acquiring PSI.

   

• Intellectual Property Litigation
• Internet Litigation
• Patent Litigation
• Trade Secret Litigation
• Antitrust & Competition
• Blockchain and Digital Asset Practice
• Satellite & Aerospace Litigation
• Structured Finance & Derivatives Litigation
• Artificial Intelligence
• International Trade Commission Proceedings
• International Arbitration

• St. John's University School of Law
• (J.D., magna cum laude, 1994)
  •  St. John's University Law Review:
    • Articles and Notes Editor
  • Member, St. Thomas More Honor Society
    
• Boston University
  (B.S., Electrical Engineering, 1989)
  • Order of the Engineer

• The State Bar of New York
• The State Bar of New Jersey
• United States Court of Appeals:
  • Federal Circuit
• United States District Courts:
  • Southern District of New York
  • Eastern District of New York
  • District of New Jersey
• Registered to practice before the U.S. Patent and Trademark Office since 1991.

• Kirkland & Ellis LLP, New York:
  • Partner, 2002-2007
  • Associate, 1999-2002
    
• Fitzpatrick, Cella, Harper & Scinto, New York:
  • Associate, 1994-1999

• IAM 1000’s The World’s Leading Patent Professionals (2013-2022)
• Selected as a SuperLawyer, 2015-2022

• “Patent and Technology Licensing” PLI course on IP Monetization and Investment 2022: Understanding the Intellectual Property License (New York, November 2022)
• Panelist on “Trade Secrets,” 29th Annual Intellectual Property Law & Policy Conference (April 2022)
• “Patent and Technology Licensing” PLI course on IP Monetization and Investment 2021: Understanding the Intellectual Property License (New York, November 2021)
• “What Next for the New Madison? Current Topics in Intellectual Property and Antitrust, at Fordham Antitrust Conference, Fordham Competition Law Institute Antitrust Workshops (New York, September 2021)
• Quoted in "Federal Circuit TCL v Ericsson Decision Leaves Licensing Community Wanting More,"  Iam Media (December 2019)
• Speaker on "FRAND/Competition Issues," Intellectual Property Conference at UIC John Marshall Law School (November 2019)
• Presenter of Mock Jury Trial hosted by Zhong Lun law firm (Beijing, China, October 2019)
• “Court Developments Impacting Patent Monetization” PLI course on IP Monetization and Investment 2019: Maximize Your Financial and Strategic Options (New York, April 2019)
• Panelist on "Competition and Patent Law," Fordham Intellectual Property Law and Policy Conference (March 2019)
• Panelist on "Trade Secrets," Fordham Intellectual Property Institute (2016)
• "Concurrent Proceedings in Multiple Jurisdictions:  Practical Tips to Adequately Co-ordinate the Teams and Their Strategy in Different Jurisdictions” C5 Forum on Transatlantic Litigation, (Amsterdam, June 2014)
• “Overview and Current Developments in IP Monetization Techniques, and Monetization Litigation in the Current Federal Court/ITC/PTO Environment” PLI Course on IP Monetization 2014: Maximize the Value of Your IP Assets (New York, April 2014)