Tom Pease is a partner in Quinn Emanuel’s New York office who specializes in intellectual property and antitrust disputes, including patent and trade secret litigation and arbitration involving a wide range of technologies such as cellular telephony, Wi-Fi, semiconductors, emulators, gaming systems, and pharmaceuticals. Tom has litigated numerous high profile cases involving standard essential patents (SEPs) subject to FRAND obligations arising under the IPR policies of various standard setting organizations (SSOs) including ETSI, 3GPP, IEEE, H.264, JEDEC, and ISO/IEC. Tom has also appeared in several international arbitrations involving patents and has represented clients in connection with DOJ, FTC and DG Comp. investigations.
Tom has been recognized as a top patent litigator in the IAM Patent 1000 guide for the past seven years, with the publication recently noting that Tom is a “five-star attorney” and “master strategist,” who is "brilliant at the intersection of patent and antitrust law" and "the man to call in a standard setting context." For the past five years, IAM has also recognized Tom for “his licensing expertise.” In addition, Tom was listed again as a top-rated Intellectual Property Litigation Attorney in New York in the current edition of Superlawyers and has been “highly recommended” for his patent litigation work in The Legal 500.
Tom also has extensive licensing and counseling experience. He has designed and implemented patent monetization programs for numerous clients ranging from start-ups to Fortune 50 companies and has traveled around the world helping clients to negotiate license agreements. Tom also advises companies concerning artificial intelligence (AI), blockchain/cryptocurrency, high frequency trading, online payment systems, and other current technologies of interest to the FinTech community.
Tom frequently speaks on IP, FRAND, and competition issues and recently appeared as a panelist at both the Fordham IP Conference and the UIC John Marshall Law School’s 63rd Intellectual Property Conference. Tom recently taught a PLI course on patent monetization and conducted a mock US patent infringement trial at Peking University before several hundred Chinese lawyers and jurists.
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.
- Huawei Technologies v. Samsung Elecs. Co., Ltd, et al. Tom is currently serving as co-lead FRAND trial counsel for Samsung in 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 As part of this case, Tom is also helping to coordinate co-pending litigation brought by each party in several venues in China for infringement of SEPs.
- 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 manufacturers of the consumer devices that contain them. CSIRO claimed that its now-expired SEP covered nearly every use of Wi-Fi technology, asserting that the IEEE 802.11 a, g, n, and ac standards used by the entire wireless industry infringed. Over the past nine years CSIRO had brought six different cases in the same Court against virtually the entire Wi-Fi industry, obtaining hundreds of millions of dollars in settlements. Despite CSIRO’s prior successes, we persuaded the Court to adopt a favorable construction of a critical but never before-construed claim term, which gave rise to new noninfringement defenses. Coupled with strong defenses based on prior art as well as on CSIRO’s failure to honor the FRAND commitment it made in a letter of assurance it gave to the IEEE when it declared its patent essential to 802.11 standards, we were able to obtain favorable settlements for Barnes & Noble and MediaTek.
- Apple Inc. v. Samsung Elecs. Co., Ltd., et al. Tom served as lead FRAND/antitrust trial counsel for Samsung in several intellectual property disputes with Apple, including two actions pending in the U.S. District Court for the Northern District of California as well as one 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). Samsung had asserted patents declared essential to ETSI/3GPP 3G UMTS standards (SEPs) against various Apple iPhone and iPad models. Apple asserted a number of FRAND defenses and claims in response including breach of contract and attempted monopolization in violation of the U.S. antitrust laws. In both trials involving FRAND issues, including a Northern District of California jury trial and an ITC hearing, Samsung defeated Apple’s FRAND-based defenses and counterclaims in their entirety. In fact, .the ITC issued 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). In addition to his work on the Apple cases, Tom also served as FRAND coordination counsel for Samsung in other smartphone cases involving FRAND issues 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 recently served as lead counsel for International Game Technology (“IGT”) in a suit against its competitor, Leap Forward Gaming, Inc. ("LFG") in the U.S. 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 recently served as lead trial counsel for Cabeau, Inc., a world-leading supplier of comfort products and on-the-go travel gear, in a design patent, trade dress and unfair competition case pending in the Southern District of New York and the Central District of California against Atomi, Inc. The action was based on the importation and sale of Atomi’s Ultimate Pillow, a close imitation of Cabeau’s award-winning flagship product, the Evolution Pillow™ The case settled favorably before discovery began.
- Dexcel v. DRL, Sun, and Apotex. Tom is currently serving as trial counsel for Dexcel in a series of Hatch-Waxman cases involving Dexcel's patented OTC-omeprazole formulations. The cases are pending in the District of New Jersey.
- Actions for the ResCap Liquidating Trust. Tom is currently serving as trial counsel for the Rescap Trust in a series of actions against the originators of mortgages that Rescap's predecessor purchased and securitized, i.e., RMBS. When the financial industry collapsed, Rescap was forced into bankruptcy and is now seeking to recover against the companies who sold the defective mortgages to it in the first place. Nearly ¾ of the 81 lawsuits that were originally filed have now been settled.
- 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 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
- International Trade Commission Proceedings
- Internet Litigation
- Patent Litigation
- Trade Secret Litigation
- International Trade Litigation
- Antitrust & Competition
- Digital Asset Litigation
- International Arbitration
- Satellite & Aerospace Litigation
- Structured Finance & Derivatives Litigation
- Artificial Intelligence
- 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
- St. John's University Law Review:
- 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
- Selected as a SuperLawyer, 2015-2018
- 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 Translatlantic 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