Claude M. Stern serves as Co-Chair of the firm’s National Intellectual Property Litigation Practice, the largest practice area within Quinn Emanuel. In his thirty-seven years of practice, he has developed extensive national experience in all areas of intellectual property and technology litigation.
Mr. Stern has been repeatedly recognized as one of the preeminent intellectual property trial lawyers and litigators in Silicon Valley, California, and the United States by such publications as Chambers: America’s Leading Lawyers for Business (2006-2019), Law Dragon, San Francisco Magazine, and San Jose Magazine. Mr. Stern has also consistently been recognized as one of California’s Super Lawyers (2004-2017). In 2009 and 2013, he was recognized as one of California’s Top 100 Trial Lawyers, and since 2008 he has been repeatedly recognized as one of California’s Top 75 Intellectual Property Litigators. In 2006, Mr. Stern served as President of the Association of Business Trial Lawyers, the most prestigious bench-bar educational organization for trial lawyers in California. In 2014, Corporate International Magazine awarded Mr. Stern its Global Award of “IP Attorney of the Year in California.” In both 2014 and 2015, Global Law Experts similarly awarded Mr. Stern “IP Attorney of the Year in California.” Also in 2014 and 2015, Managing Intellectual Property named Mr. Stern an “IP Star” in both the United States and California. Mr. Stern was selected as a winner in The Corporate America 2015 M&A Awards, as well as a winner in the category of IP by Corporate LiveWire. From 2010 through 2019, Chambers identified Mr. Stern as one of 8 lawyers in California designated as Band 1, or “most recommended.” Chambers has observed that Mr. Stern “is held in high regard for his work across patent, trademark, copyright and trade secrets. Clients say he is ‘an amazing lawyer with a wealth of experience across the spectrum,’ and add that ‘he has the gift of being able to make the complex understandable, whether dealing with clients, the other side, a judge or a jury.’” Most recently, Mr. Stern has been ranked Band 1 in California for Intellectual Property: Trademark, Copyright & Trade Secrets in the 2019 editions of Chambers USA and Chambers Global, and Band 3 in California for Intellectual Property: Patent in the 2019 edition of Chambers USA.
Mr. Stern has been lead trial counsel in numerous precedent-setting cases within the Intellectual Property field. For example:
- Stern represented Brøderbund Software in Brøderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986), the first reported case to recognize and enforce the copyrightability of the user-interface of a non-video game computer program.
- Stern represented Brøderbund Software and Intuit Inc., two of the largest U.S. consumer software publishers, in IGE, Inc. v. CompuServe, 256 F.3d 1323, 59 U.S.P.Q.2d (BNA) 1401 (Fed. Cir. 2001), reversing in part and affirming in part, 47 U.S.P.Q.2d (BNA) 1797 (S.D.N.Y. 1998), widely recognized as the test case concerning business method patents and claims of ownership to Internet commerce.
- Stern represented GameTech International in Planet Bingo LLC v. GameTech International, 472 F.3d 1338 (Fed. Cir. 2006), in which, in affirming a judgment in favor of GameTech, the Federal Circuit established a new standard for determining infringement under the doctrine of equivalents.
- Stern successfully represented Intuit in David Kramer v. Intuit Inc., 121 Cal. App 4th 574 (2004), an unfair competition and false advertising case which resulted in the first California Court of Appeal decision addressing the subject of illegal rebates under the California Consumer Legal Remedies Act.
- Stern represented Kraft Foods in Procter & Gamble Co. v. Kraft Foods Global Inc., 459 F.3d 842, 847 (Fed. Cir. 2008), the first case to address the discretion of the district court to stay a case during an inter partes proceeding before the USPTO under 35 U.S.C. § 318.
- Stern represented Solid Works in Autodesk, Inc. v. Dassault Systemes Solid Works Corp., 685 F. Supp.2d 1023 (N.D.Cal. 2009), the precedent-setting case holding that a file-extension (such as .pdf or .dwg) cannot be protected as a trademark in light of its functional characteristics.
- Stern represented the defendants in Koninklijke Philips N.V. and Lumileds Lighting Company LLC v. ETI Elec-Tech International Co., Ltd., Elec-Tech International (H.K.) Co. et al (N.D.Cal 2014), the precedent setting case rejecting the “agency” theory of liability under the Computer Fraud and Abuse Act (CFAA), and on this basis had all trade secret misappropriation, CFAA and other claims dismissed from federal court.
Mr. Stern has also substantial experience in the defense of technology performance class-action cases, particularly involving allegations of defective software and hardware, and has spoken widely on the subject.
Mr. Stern has tried jury and non-jury cases in state and federal courts throughout the United States, and has extensive arbitration and mediation experience before various arbitration/mediation bodies (including the AAA, ICC and JAMS), as well as extensive litigation experience before various Federal and State agencies, including the Federal Trade Commission.