Quinn emanuel trial lawyers

Stern, Claude M.

Claude M. Stern

Partner

  Biography

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 (2006-2017), Law Dragon, San Francisco Magazine, and San Jose Magazine. Mr. Stern has also consistently been recognized as one of California’s Super Lawyers (2004-2016). In 2009 and 2013, he was recognized as one of California’s Top 100 Trial Lawyers, and since 2008 he has been 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.  From 2010 through 2016, Chambers has identified Mr. Stern as one of 8 lawyers in California designated as Band 1, or “most recommended.” In 2015, Chambers 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 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.

Mr. Stern has been lead trial counsel in numerous precedent-setting cases within the intellectual property field. For example:

Mr. 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.

Mr. 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.

Mr. 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.

Mr. 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.

Mr. 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.

Mr. Stern represented SolidWorks in Autodesk, Inc. v. Dassault  Systemes SolidWorks Corp., 685 F. Supp.2d 1023 (N.D.Ca. 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. 

Mr. Stern also has 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. He has acted as chief defense counsel to Corel Corporation, Intuit, Electronic Arts, Origin Systems, Symantec, Quarterdeck and Micron Electronics in class actions brought against each of these software or hardware publishers throughout the United States.

Mr. Stern has tried 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 and JAMS), as well as extensive litigation experience before various Federal and State agencies, including the Federal Trade Commission.

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 (2006-2017), 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 2006, 2009 and 2013, he was recognized as one of California’s Top 100 Trial Lawyers, and since 2008 he has been 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.  From 2010 through 2017, Chambers has identified Mr. Stern as being one of only 8 lawyers in California designated as Band 1 in copyright, trademark and trade secret litigation (or “most recommended”) and Band 3 in patent litigation.” In 2015, Chambers 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 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.

Mr. Stern has been lead trial counsel in numerous precedent-setting cases within the intellectual property field. For example:

Mr. 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. Mr. 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.

Mr. 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.

Mr. 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.

Mr. 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.

Mr. Stern represented SolidWorks in Autodesk, Inc. v. Dassault  Systemes SolidWorks Corp., 685 F. Supp.2d 1023 (N.D.Ca. 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.

Mr. Stern also has 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. He has acted as chief defense counsel to Corel Corporation, Intuit, Electronic Arts, Origin Systems, Symantec, Quarterdeck and Micron Electronics in class actions brought against each of these software or hardware publishers throughout the United States.

Mr. Stern has tried 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 and JAMS), as well as extensive litigation experience before various Federal and State agencies, including the Federal Trade Commission.

  Notable Representations

Patent Infringement Litigation

  • In Coho Licensing v Rovi Corporation (DE 2013), Mr. Stern represents long-time client Rovi in a patent suit in the field of data storage and retrieval.
  • In Universal Electronics, Inc. v Peel Technologies (C.D.Cal. 2013), Mr. Stern represents Peel Technologies in a five-patent suit brought by one of the largest remote control manufacturers.
  • In Data Speed  v. Dassault Systems SolidWorks (DE 2013), Mr. Stern represents SolidWorks in a suit brought by a non-practicing entity relating to storage system technology.
  • In Credit Acceptance Corporation v. DriveTime Automotive Group et al (C.D.Cal. 2013), Mr. Stern represents DriveTime and GO Financial in a patent infringement suit concerning automotive purchase financing.
  • In Jedi Technologies v Zoosk (D.Az. 2013), Mr. Stern represented online dating service and matchmaker Zoosk in a 2 patent suit . The case settled extremely favorably for Zoosk.
  • In Uniloc v. Dassault Systems SolidWorks (E.D. Tex. 2012), Mr. Stern represents SolidWorks in Uniloc’s multi-defendant suit relating to a licensing implementation patent. The case settled without any payment to Uniloc.
  • In AutoDimension LLC v. Dassault Systems SolidWorks (E.D. Tex. 2012), Mr. Stern represents SolidWorks in the Acacia-subsidiary AutoDimension’s multi-defendant suit relating to an automated dimensioning CAD CAM patent.
  • In Lamina v. Francis Ford Coppola Presents (M.D.Fla 2012), Mr. Stern represented FFCP in a packaging patent suit which settled immediately and very favorably to Mr. Stern’s client.
  • In Agincourt v. Zynga Inc. (DE 2011), Mr. Stern represents defendant Zynga in a patent litigation filed in the Delaware District Court in which the plaintiff Agincourt, claiming to be a Zynga game competitor, is suing Zynga on 7 patents in the computer-generated game field.
  • In Rovi v. Lenovo (NDCal, 2012), Mr. Stern represented Rovi Solutions in two different patent lawsuits against 5 different Lenovo-related entities, related to copy-protection and encryption technology.   The case settled very favorably to Rovi.
  • In DDB Technologies v. Stat Crew Software, Inc., CSTV Networks, Inc. d/b/a CBS Sports Network and CSTV Online, Inc. (W.D.Tex. 2012), Mr. Stern represented three CBS affiliates in a 2-patent infringement suit. Multiple prior defendants had been sued by DDB and had paid tens of millions of dollars before settling without a Markman ruling.  Mr. Stern argued at the Markman hearing, and as a result of a favorable Markman, the case settled on terms that were exceptional to Mr. Stern’s clients.
  • In two separate cases entitled Solannex v. Miasole, (NDCal 2011, 2012) Mr. Stern represented Miasole, Inc., who had been sued by Solannex LLP on four patents in the photovoltaic cell field.  In the first of the two cases, Solannex was forced to allow judgment of non-infringement to be entered in favor of Miasole in light of the favorable claim construction ruling Mr. Stern obtained.
  • In Bedrock Computer Technologies v. Softlayer et al. (E.D. Tex. 2011), Mr. Stern successfully  represented Google and Match.com which, along with 5 other defendants, were being accused of infringing a patent covering the on-the-fly deletion of expired records in a data base.
  • In Linear Technology v. Monolithic Power Systems (DE May 2009), Mr. Stern successfully represented Monolithic Power Systems in a breach of patent license jury trial in the Delaware District Court. After the close of Linear’s case in chief, Mr. Stern secured a judgment as a matter of law on behalf of MPS, which was affirmed (with an award of attorneys’ fees for MPS) on appeal to the Federal Circuit.
  • In Software Restore Solutions v. Apple et al. (N.D. Ill 2010), Mr. Stern represented ten cutting-edge technology companies - - including Capcom, Citrix, Corel, Dassault Systemes, Electronic Arts, Intuit, Sega, Skype and THQ - - in defending against patent infringement charges by an Acacia subsidiary; the patent relates to the field of software configuration and resetting technology. The case settled for each defendant in an amount which was literally an order of magnitude less than what the plaintiff originally demanded.
  • In Spark Networks USA v. Humor Rainbow et al. (E.D.Tex. 2011), Mr. Stern represented a Match.com subsidiary in a patent suit filed by the owners of JDate, over a patent that purports to claim any and all matching over the internet.
  • In Openwave v. 724 Solutions (N.D. Cal 2009), Mr. Stern represented 724 Solutions and its successor Mobixell in an 8-patent infringement lawsuit filed by Openwave in the field of wireless and WAP1 technology. The case settled extremely favorably to Mr. Stern’s clients.
  • In two separate lawsuits filed in the Eastern District of Texas by Stragent and SeeSaw Foundation - - Stragent, Inc. and SeeSaw Foundation v. Match.com et al. and Stragent, Inc. and SeeSaw Foundation v. ClassMates.com et al. (E.D. Tex 2010) - - Mr. Stern represented ten Blue-chip media and technology companies - - including eHarmony, ESPN, Fox, Gannett, LinkedIn, Match.com, MTV and Skype (as well as Twitter, which settled) - - in defending against patent infringement charges by a Kevin Zilka-controlled NPE; the patent related to the field of telecommunications and caller-identity data transmission. Each defendant settled for a small fraction (less than two orders of magnitude) less than plaintiff's original demand.
  • In Catalina Marketing v. LDM Group (E.D. Mo. 2009), Mr. Stern represented Catalina Marketing in its suit to enforce a pioneering patent in the field of electronic coupon distribution. The suit settled with a full recognition that the patent at issue was valid and enforceable.
  • In The Procter & Gamble Company v. Kraft Global Foods, 549 F.3d 842, 848 (Fed. Cir. 2008), Mr. Stern was lead counsel for Kraft in a patent case brought by P&G concerning the patented Folgers’ plastic coffee can. Mr. Stern convinced the trial court to stay the trial court proceedings in light of a pending inter partes reexamination of the patent in suit, thereby mooting P&G’s pending preliminary injunction motion. P&G appealed, arguing that the trial court lacked authority to stay a case on the defendant’s motion pending an inter partes reexamination. The Federal Circuit rejected this argument, holding precedentially that the trial court has inherent authority to stay any proceeding pending an inter partes reexamination on any party’s motion.
  • In Source Search Technologies LLC v. LendingTree, Inc. 2:04-cv- 4420 (D. New Jersey 2008), Mr. Stern successfully represented LendingTree in a patent infringement suit, involving online transaction technology, securing a summary judgment of invalidity (under KSR v. Teleflex).
  • In Planet Bingo LLC v. GameTech International, 472 F.3d 1338 (Fed. Cir. 2006), Mr. Stern obtained by motions in limine a judgment of non-infringement in the defense of GameTech and three of its officers or directors, and further obtained an order invalidating various claims of the plaintiff’s asserted patents. These rulings were upheld by the Federal Circuit.
  • In Lava Trading v. Sonic Trading, et al., 445 F.3d 1348 (Fed. Cir. 2006), Mr. Stern represented the royalblue Group and royalblue Trading companies in a patent infringement suit relating to trading securities over multiple electronic exchanges.
  • In IGE, Inc./E-Data 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 1797 (S.D.N.Y. 1998)), Mr. Stern successfully defended Brøderbund Software and Intuit Inc., two of the largest U.S. consumer software publishers, which, along with Compuserve and McGraw Hill, had been sued for patent infringement by E-Data, a company which claimed that its patent covers the electronic transmission and reproduction of information over the Internet.
  • In Knox v. Intuit, (W.D.Pa. 2004), Mr. Stern successfully defended Intuit in a patent infringement suit concerning tax-filing technology. The plaintiff dismissed the case upon being apprised of fatal defects associated with the patent-in-suit.
  • In Mike Farmer, Ashland Inc. v. Medo Industries, Inc. and Pennzoil-Quaker State Company, Civil Action No. CV 01-10248 CIC (CWx 2003), Mr. Stern successfully represented Medo Industries, Inc. and Pennzoil-Quaker State in a two-patent patent infringement action relating to various aftermarket automobile products. Mr. Stern was retained two months before the trial of the action, and obtained summary judgment on all claims asserted.
  • In Hark Chan and TechSearch LLC, Inc. v. Intuit, Inc. et al., Civil Action No. C-02-2878 (VRW 2003), Mr. Stern successfully represented Electronic Arts and Intuit in a patent infringement action pending in the Northern District of California; the patents at issue have been asserted against some of the largest software publishers in the world. After a favorable claim construction, the matter settled for nuisance value.
  • In Robert Mossman v. Brøderbund Software, Inc. and Random House, Inc., 51 U.S.P.Q.2d 1752 (E.D. Mich. 1999), Mr. Stern successfully represented Brøderbund Software and Random House in a patent infringement lawsuit involving the infamous Mossman patent, which had been asserted against many of the largest players in the software publishing industry. Mr. Stern invalidated the subject patent on summary judgment.
  • In Disc Link v. Oracle, et al. (E.D. Tex. 2007), Mr. Stern represented ten (10) of the largest software companies in the United States - - including Oracle, SolidWorks, Avid Technology, Compuware, Borland and others - - in patent litigation filed by an Acacia Corporation subsidiary, involving data base technology. The case settled favorably for all of Mr. Stern’s clients.
  • In four different lawsuits between Kraft Foods and The Procter & Gamble Company (filed in N.D. Cal, 2007, WDWisc 2008 and DOhio 2008), Mr. Stern represented Kraft in defending against P&G's claims that Kraft's plastic Maxwell House coffee containers infringe two of P&G's patents. Mr. Stern successfully obtained stays of P&G's suits pending reexamination of one of the patents in suit.
  • In Symyx Technologies, Inc. v. Accelergy Corp., (N.D. Cal. 2007), Mr. Stern successfully represented Symyx in a patent infringement and breach of contract suit against its competitor Accelergy Corporation. The case settled favorably.
  • In Symyx Technologies, Inc. v. Intematix Corp., 3:06-cv-03276-MHP (N.D. Cal. 2006), Mr. Stern represented Symyx in a 5-patent suit against its competitor Intematix. The case settled favorably.
  • In Antor Media v. Palm, Inc. (E.D. Tex. 2005), Mr. Stern represented Palm in a patent infringement suit pertaining to content downloading technology. The case settled favorably to Palm.
  • In Charles E. Hills & Associates, Inc. v. Amazon.com, et al., Civil Action No. 2-02-CV-186-TJW (E.D. Tex. 2003), Mr. Stern represented Williams-Sonoma in a patent infringement action in the area of online cataloguing; the patents at issue have been asserted against some of the largest retailers in the world. The case settled favorably to Williams-Sonoma.
  • In Good Technology, Inc. v. Research in Motion Ltd., Civil Action No. C-02-02348 (MJ), (N.D. Cal 2001), and Research in Motion Ltd. v. Good Technology, Inc., Civil Action No. 02-556 JJF (Del. Dist.), Mr. Stern represented Good Technology in patent, copyright and trademark infringement actions in the wireless/email area.
  • In Bingo Card Minder v. GameTech Int’l, and Fortunet v. GameTech, Int’l, Mr. Stern represented GameTech International, one of the leading manufacturers of electronic gaming equipment, in defense of separate patent infringement suits brought by two competitors.
  • In LendingTree LLC v. LowerMyBills, Inc. 3:05-cv-153M (W.D. N. Carolina), Mr. Stern represented LendingTree in a patent infringement suit against its competitor LowerMyBills, involving online loan matching technology. The case settled very favorably to LendingTree.
  • In David Sitrick v. Electronic Arts, (N.D.Cal. 2001), Mr. Stern successfully represented Electronic Arts in a patent suit in which the plaintiff was asserting what was claimed to be a pioneering patent in the field of multi-player gaming. Despite the fact that various game platform companies had settled for many millions of dollars, Mr. Stern settled the case for nuisance value after discovering previously unidentified “killer” prior art.
  • In Aladdin Knowledge Systems v. Finjan Software, Ltd. et al. (S.D.N.Y. 2008) and in Finjan Software, Inc. v. Aladdin Knowledge Systems (DE 2008), Mr. Stern represented Aladdin Knowledge Systems in two separate internet/software security patent suits (involving claims in 5 different patents) against competitor Finjan. The case settled with no admission of liability by Aladdin and no payment of money to Finjan.
  • In Software Rights Association v. IAC et. al. (E.D. Tex 2008), Mr. Stern represented Interactive Corporation in a patent infringement suit involving claims concerning internet search technology. After the case was transferred from the EDTex to the NDCal as a result of a defense-side transfer motion, the case against IAC settled.
  • In Girafa v. IAC et al. (DE 2008), Mr. Stern represented Interactive Corporation in a patent infringement suit involving claims concerning internet search technology. The case settled for nuisance value after Mr. Stern’s client prevailed on pretrial motions holding that various of the asserted claims were either invalid or not infringed.
  • In YieldBoost Technology v. Photon Dynamics (N.D. Cal 2008), Mr. Stern represented Photon Dynamics in a patent infringement lawsuit relating to 2 patents in the field of thin-film technology defect detection technology. Mr. Stern convinced the plaintiff to dismiss the suit in view of clear evidence that the asserted patents were not infringed and invalid.
  • In Uniloc v. Macrovision (C.D. Cal 2007) and Macrovision v. Uniloc (NDCal 2007), Mr. Stern successfully represented Macrovision in two patent suits against Uniloc. The case settled very favorably to Macrovision by an agreement holding exonerating Macrovision and all its customers from any claim of infringement.
  • In qarbon.com v. Macromedia, 5:2003-cv- 04319 (N.D. Cal. 2003), Mr. Stern represented Macromedia in a patent infringement suit involving a patent in the area of software presentation technology. The case resolved favorably prior to claim construction.
  • In qarbon.com v. Bernard D& G,. 3:05-cv-921 (N.D. Cal. 2005), Mr. Stern represented Macromedia in a patent infringement suit involving a patent in the area of software presentation technology. The case resolved favorably prior to claim construction.
  • In qarbon.com v. Macromedia,. C:06-cv- 7532 (N.D. Cal. 2006), Mr. Stern represents Macrovision in a patent infringement suit involving a patent in the area of software presentation technology.

Copyright Infringement Litigation

  • In Electronic Arts v. Zynga, Inc. (formerly Zynga Game Network) (N.D.Cal. 2012), Mr. Stern represents Zynga in a copyright suit in which EA accuses Zynga’s Ville social online game of being a copy of EA’s Sims Social.
  • In SuccessFactors v. Halogen Software (N.D. Cal 2011), Mr. Stern represented Halogen Software which was sued for copyright infringement and trade secret misappropriation for allegedly using a pretext website to obtain competitive information for sales operations. Mr. Stern’s team successfully thwarted an effort to obtain a temporary restraining order and preliminary injunction and later settled the case.
  • In SuccessFactors v. Halogen Software (N.D. Cal 2011), Mr. Stern represented Halogen Software which was sued for copyright infringement and trade secret misappropriation for allegedly using a pretext website to obtain competitive information for sales operations.  Mr. Stern’s team successfully thwarted an effort to obtain a temporary restraining order and preliminary injunction and later settled the case.
  • In Zynga Game Networks v. Green Patch, Inc and Playdom, Inc. (NDCal2010), Mr. Stern represents Zynga in a copyright infringement suit against former competitor Green Patch and current competitor (now owned by Disney) arising out of the outright copying of Zynga java script in four Zynga games, and the incorporation of that code in 6 Green Patch/Playdom games.
  • In Deborah Thomas v. The Walt Disney Company (9th Cir. 2009), Mr. Stern successfully represented Disney in a suit by a screenwriter and poet who claimed that Disney’s blockbuster Finding Nemo feature film was an unauthorized derivative work from the plaintiff’s poem and treatment. Mr. Stern convinced the trial court to dismiss the plaintiff’s complaint on grounds of lack of substantial similarity, which was affirmed in all respects by the Ninth Circuit on appeal.
  • In Psycho Monkey LLC v. Zynga Game Network, (CV 09 0603 MEJ, N.D.Cal 2009), Mr. Stern represented Zynga against claims of copyright infringement and unfair competition relating to Zynga’s popular online social game Mafia Wars. The case settled favorably to Zynga.
  • In Zynga Game Network v. Kyle McEachern, Case No. 09-1557 (N.D. Cal. 2009), Mr. Stern represented Zynga against a former employee and contractor who hacked Zynga’s secure servers. Mr. Stern obtained a temporary restraining order and preliminary injunction against the employee, based on claims of copyright infringement and violation of the DMCA anti-circumvention provisions. After the court threatened to hold the plaintiff in criminal contempt, the case settled with a permanent injunction and monetary judgment against the defendant.
  • In Corbis Corporation v. TemplateMonster.com, Case No. 06-21643-CIV-Altonga/Turnoff (S.D. Fla. 2006), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action against Ukrainian and other foreign professional copyright pirates. Mr. Stern's team secured a TRO and preliminary injunction against all defendants, permanently shutting down several foreign copyright pirate operations, and resulting in a $20 million plus judgment against several of the foreign defendants.
  • In UMG Recordings, Inc., et al. v. Hummer Winblad Venture Partners et al., Case No. CV 03-2785 DSF (PJWx 2003), United States District Court, Central District of California, Western Division. Mr. Stern represented Hummer Winblad in a lawsuit filed by various record labels (including UMG, Interscope Records, Motown Record Co., Capitol Records, Inc., and Virgin Records America, Inc.), in which plaintiffs asserted claims for contributory and vicarious copyright infringement and various state tort claims stemming from Hummer Winblad’s investment in Napster. Mr. Stern was instrumental in devising the defense strategy. The case settled favorably to Hummer Winblad (the firm withdrew before settlement due to an unanticipated conflict).
  • In Brøderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127 (N.D. Cal. 1986), Mr. Stern successfully represented Brøderbund in this precedent–setting case involving a competitor who created a visual clone of Brøderbund’s best-selling “Print Shop’ software product. This is the first reported case to recognize and enforce the copyrightability of the user-interface of a nonvideo game computer program.
  • In Gemisys Corporation v. Phoenix American, et al., 50 U.S.P.Q.2d 1876 (N.D. Cal. 1999), Mr. Stern successfully defended Phoenix American and two of its subsidiaries against charges of copyright infringement, trade secret misappropriation, unfair competition and breach of a license agreement.
  • In Trio v. Intuit (C.D. Cal. 1997), Mr. Stern successfully represented Intuit, one the largest financial software publishers in the United States, in a case of copyright infringement where Intuit allegedly incorporated the plaintiff's code into their award winning Quicken family of products. After defeating the plaintiff's effort to secure a preliminary injunction against Intuit, the case settled favorably to Intuit.
  • In Krzemien v. Brøderbund (USDC N.D. Cal. Civ. 97 04080), Mr. Stern successfully defended Brøderbund against a claim of copyright infringement, by defeating the plaintiff’s efforts to obtain injunctive relief against Brøderbund and obtaining the dismissal of the copyright claim.
  • In Martin Cano v. A World of Difference (ADL), 1996 WL 371064 (N.D. Cal. 1996), Mr. Stern was lead defense counsel in a copyright infringement and trademark infringement case brought against The Anti-Defamation League, one of the country’s oldest human rights organizations, in which the plaintiff claimed ownership of certain ADL educational materials. The federal district court dismissed the plaintiff’s claims.
  • In Capcom, Inc. v. Data East, Inc. (N.D.Cal. 1993), Mr. Stern represented Data East, a large software game publisher, in the copyright and trademark infringement suit commenced by Capcom USA, Inc., a major Japanese software publisher, concerning the famous Street Fighter II arcade and home computer game. The case ultimately settled after a variety of successful motions for summary judgment eliminated the bulk of Capcom’s claims.
  • In Fantasy Records, Inc. v. The Estate of Chet Baker, Mr. Stern represented the Estate of Chet Baker, the famous Jazz musician, in its royalty and contract suit with Mr. Baker’s former manager and agent.
  • In Corbis Corporation v. Movie Star News, Ira Kramer, 04-CV-04645 (HB) (S.D.N.Y. 2003), Mr. Stern successfully obtained a preliminary injunction and permanent injunction against accused infringers of photographs within Corbis' world-famous collection of images.
  • In Land of Myth & Not v. Amy Brown, et al. (C.D. Cal. 2006), Mr. Stern represents Pennzoil/Quaker State, a Shell Oil subsidiary, in a copyright infringement suit concerning aftermarket automobile accessories.
  • In Corbis Corporation v. Hunt Capital, Case No. 3-06-cv-2323-K-ECF (N.D. Tex.), Mr. Stern is representing Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Corbis Corporation v. Romeo Engineering, Case No. 05-cv-09944-SAS (S.D.N.Y.), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Corbis v. Plan Design Consultants, Case No. C-05-4806 (MEJ) (S.D.N.Y. 2006), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Corbis Corporation v. eFunds, Case No. 3-06-cv-00673-SI (N.D.Cal. 2006), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Corbis Corporation v. Independent Nursing Services, Case No. 06-civ-13231 (PAC) (S.D.N.Y. 2006), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Corbis Corporation v. Global InfoTech, Case No. 06-civ-13232 (S.D.N.Y. 2006), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Corbis Corporation v. Munters, Case No. SA-06-CA-389-XR (W.D.Tex.), Mr. Stern successfully represented Corbis in a copyright infringement enforcement action concerning Corbis' copyrighted images.
  • In Zappos v. Shoebuy.com (N.D.Cal. 2006), Mr. Stern represented defendant Shoebuy.com in a copyright infringement suit regarding online advertising. The case settled favorably to Shoebuy.com.
  • In Frank Beddor v. Mindscape (C.D.Cal. 1996), Mr. Stern defended Mindscape in a copyright infringement suit arising out of a fantasy golf video game published by Mindscape. After the defense team filed a motion for summary judgment on all claims, the case settled.

Trade Secret Misappropriation Litigation

  • In Dassault Systems SolidWorks v. Mat Andresen and Rod Walker (D. Mass 2013), Mr. Stern represents SolidWorks in a computer and customer theft case against a former employee and his colleague. 
  • Mr. Stern represented Citrix Software in a threatened trade secret and breach of fiduciary duty suit against a major virtual desktop competitor and a former Citrix executive vice president.  The matter settled favorably to Citrix by agreement before any suit had to be filed.
  • In AeroManagement LLC v. Sukhoi et al. (SDNY 2013), Mr. Stern represented Sukhoi, the largest Russian jet manufacturer in a trade secret, copyright and breach of contract suit.  After Mr. Stern defeated AeroManagement’s efforts to obtain a preliminary injunction against Sukhoi, AeroManagement dismissed its case. 
  • In Maxwell Technologies v. Linda Zhong (San Diego Sup. 2012), Mr. Stern successfully obtained a temporary restraining order, preliminary injunction and permanent injunction against Maxwell’s former chief scientist who was accused of taking Maxwell’s trade secrets and conveying them to a Chinese competitor.  Mr. Stern’s team discovered the alleged misappropriation through state-of-the-art complex document and email forensic work, even without direct proof of misappropriation.
  • In Zynga Game Network v. Kyle McEachern, Case No. 09-1557 (N.D. Cal. 2009) , Mr. Stern represented Zynga against a former employee and contractor who hacked Zynga’s secure servers postemployment, and misappropriated company code. Mr. Stern obtained a temporary restraining order and preliminary injunction against the employee. After the court threatened to hold the plaintiff in criminal contempt, the case settled with a permanent injunction and monetary judgment against the employee.
  • In Newton Research v. Shell Exploration & Production Company, Case No., 3:05-CV-0091 (N.D. Tex. 2007), Mr. Stern represents Shell Exploration & Production Company in a trade secret misappropriation and breach of NDA suit concerning gas centrifuge technology.
  • In Intematix v. Symyx Technologies, Case No., RG 06273044 (Alameda Sup. 2006), Mr. Stern represented Symyx in a trade secret misappropriation suit filed by Intematix. Mr. Stern's team defeated Intematix's efforts to obtain a TRO or a preliminary injunction. The case settled favorably to Symyx.
  • In Navitaire v. easyJet Airlines and Bullet Proof Software, 2:03-cv-00428 PGC (D. Utah 2005), Mr. Stern represented easyJet Airlines and BulletProof in a trade secret misappropriation and copyright infringement lawsuit filed by Navitaire arising out of the alleged theft and copying of Navitaire's reservations software. Upon the successful trial of a corresponding copyright infringement and breach of contract lawsuit in the U.K., the case settled very favorably.
  • In Configuration Data v. Northrop Grumman (Los Angeles Superior 2003), Mr. Stern represented Northrop Grumman in a trade secret suit brought by a former Northop software vendor that claimed that Northop stole its proprietary software. The case was dismissed after Northrop's filing of a summary judgment motion and the superior court imposed sanctions against plaintiff.
  • In Research-In-Motion v. Good Technology, Inc. (Orange Sup. 2003), Mr. Stern represented Good Technology in a trade secret action filed by Research-In-Motion (“RIM,” the distributor of the BlackBerry wireless email solution) against allegations that Good Technology had misappropriated RIM’s customer lists and reverse engineered part of its software for a competing solution. Mr. Stern's team successfully defeated RIM’s motion for a temporary restraining order and motion for a preliminary injunction. The case settled favorably.
  • In Callidus v. Jacob Avital (Santa Clara Sup. 2002), Mr. Stern represented a PeopleSoft chief scientist with respect to the plaintiff's allegation of trade secret misappropriation. The matter settled favorably.
  • In Compuware v. Serena Software (E.D. Mich 2000), Mr. Stern represented Compuware in a trade secret and copyright infringement suit brought against a competitor, based on access to trade secrets via customers who were under non-disclosure obligations. The case settled favorably to Compuware.
  • In PeopleSoft, Inc. v. Annuncio, Inc. (Santa Clara Sup. 2000), Mr. Stern represented PeopleSoft with respect to claims of trade secret misappropriation and breach of confidence against a competitor and several former PeopleSoft employees. After PeopleSoft secured a temporary restraining order against the former employees and the competitor, the matter settled favorably to PeopleSoft.
  • In PeopleSoft, Inc. v. Evolve Software, Inc. (Alameda Sup. 1999), Mr. Stern Represented PeopleSoft with respect to its assertion of claims against a competitor arising out of the alleged misuse of confidential information by former employees. The matter settled favorably to PeopleSoft.
  • In Abrams/Gentile Entertainment and Mattel, Inc. v. Brøderbund Software, Inc. et al., Case No. 141540 (Marin Sup. 1998), Mr. Stern defendant Brøderbund with respect to Mattel’s claims of trade secret misappropriation, unfair competition and breach of confidence. After defeating Mattel’s application for a temporary restraining order and a motion for a preliminary injunction, the matter settled favorably to Broderbund.
  • In Apex Wholesale v. GameTech Int’l. (S.D.Cal. 1997), Mr. Stern represented GameTech International, one of the leading manufacturers of electronic gaming equipment, in defense of copyright infringement, trade secret misappropriation and related claims. The matter settled favorably to GameTech.

False Advertising/Trademark/Trade Dress Litigation

  • In Breville USA, Inc. v Hurom L.S. Co. Ltd. et al (C.D.Cal. 2013), Mr. Stern represents Hurom and its US subsidiary and US distributor in a Lanham Act and California law false advertising and unfair competition lawsuit regarding advertising concerning the nutritional benefits of juicers and juicing.
  • In Benchmark Capital v. The Benchmark Company (N.D.Cal 2011), Mr. Stern represented the well known venture capital firm of Benchmark Capital in a trademark suit against financial advisor Benchmark Company.  The case has settled very favorably to Benchmark Capital.
  • In Moracconoil v. Folica (C.D.Cal 2010), Mr. Stern represents Folica in a false advertising, trademark infringement and counterfeiting lawsuit relating to the domestic and international distribution and sale of consumer salon products.
  • In Pennzoil/Quaker State v. Nervous Tatoo, Inc. (LA Superior 2010), Mr. Stern represented Pennzoil/Quaker State in a trademark action and breach of license agreement relating to the sale of after-market automobile products. The case resolved favorably by the defendant trademark holder providing a license to Pennzoil’s successor.
  • In Autodesk v. Dassault SolidWorks Systemes, 685 F. Supp.2d 1023 (N.D.Ca. 2009),  Mr. Stern represented Dassault SolidWorks in a false advertising, false designation of origination and unfair competition suit involving CAD software marketing. The case settled the day the jury was to be picked, in no small part because of a ruling following a SolidWorks summary judgment motion holding that Autodesk’s claimed “dwg” file format was unprotectible as a trademark and could be used by any Autodesk competitor in competing products.
  • In LDM Group v. Catalina Marketing (E.D. Mo. 2009), Mr. Stern represented Catalina Marketing in the defense of a false advertising suit related to the field of electronics coupon distribution. The suit settled very favorably to Catalina Marketing.
  • In Helio LLC v. Palm, Inc., (N.D. Cal. 2006), Mr. Stern successfully represented Palm in a trademark and false advertising suit brought 2 days before Christmas in 2006. After defeating Helio’s TRO application and motion for preliminary injunction, the case was dismissed.
  • In H& R Block, Inc. v. Intuit Inc., (E.D. Mo. 2006), Mr. Stern successfully represented Intuit in false advertising and trademark infringement litigation brought by its chief competitor H&R Block. After defeating H&R Block’s efforts to secure injunctive relief against Intuit and substantial discovery, the case settled favorably to Intuit.
  • In Intuit Inc. v. H& R Block, Inc. (N.D. Cal. 2006), Mr. Stern successfully represented Intuit in a copyright infringement, trademark infringement and false advertising suit against its chief competitor H&R Block, arising out of Block’s arising of a knock-off television advertisement. The case settled favorably to Intuit, with the offending television ad being withdrawn.
  • In LowerMyBills, Inc. v. NexTag, Inc. (C.D.Cal. 2005), Mr. Stern represented NexTag in a case involving allegations of trademark and copyright infringement in online advertisements. The case settled favorably to NexTag.
  • In David Kramer v. Intuit Inc., 121 Cal. App. 4th 574 (2004), Mr. Stern successfully represented Intuit in 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.
  • In Shell Oil Co. v. Shell-oil.biz and in Shell Oil Co. v. Shell-oli.org (E.D. Va. 2006), Mr. Stern represented Shell Oil in two trademark infringement, anti-dilution and anti-cybersquatting cases against foreign entities operating infringing websites. Both suits resulted in permanent injunctions against the defendants and a transfer of the defendants' illegal domain names to Shell.
  • In Critical Path Solutions, Inc. v. Critical Path, Inc. (Civ. 782600, Santa Clara Sup 2001), Mr. Stern obtained summary judgment on behalf of Critical Path, a leader in the internet messaging field, which had been sued for trade name and trade mark infringement and unfair competition by a company claiming senior use of the “critical path” name.
  • In CyberMedia, Inc. v. Vertisoft, Inc., C-96-2573 SBA, (N.D. Cal. 1996), Mr. Stern represented plaintiff CyberMedia in a false advertising action, successfully obtaining a temporary restraining order and preliminary injunction against the defendant, and defeating the defendant’s efforts to seek similar injunctive relief against CyberMedia.
  • In International Data Group, et al. v. Stephens, Civ. 96-10437 REK, (D.Mass. 1995), Mr. Stern successfully represented the famous technology author/ journalist/film writer Mark Stephens in his much-publicized trademark infringement and copyright infringement litigation with the international publishing conglomerate International Data Group and InfoWorld Magazine, concerning Mr. Stephens’ rights to use the “Robert X. Cringely” pseudonym.
  • In Nova Development v. Riverdeep Software (C.D.Cal. 2003), Mr. Stern represented Riverdeep against trade dress infringement claims associated with software packaging. The case settled favorably.
  • In Knowledge Adventure v. The Learning Company (C.D.Cal. 2001), Mr. Stern represented The Learning Company against trade dress infringement claims associated with software packaging. The case settled favorably.

Class Actions: Unfair Competition, Advertising Rights

  • Mr. Stern has litigated numerous class action cases involving claims of unfair competition or unfair trade practices under federal law as well as the laws of several states (e.g., California, Idaho, Ohio, New Jersey and New York), including California’s unfair competition law (Business & Professions Code Section 17200 et seq.).
  • Class cases that Mr. Stern litigated and resulted in a successful defense in the unfair competition or false advertising area include:
  • Eliason v. Associated Materials/Gentek, Inc. (NDOhio 2010, No. 1-10CV2093)
  • Ental Precision Machining, Inc. v. Intuit Inc. (Santa Clara Superior Court, 1-04-CV-
    020277)
  • Mason/Flannery v. Intuit Inc., In re: Consolidated Sunsetting Class Actions (Santa Clara
    Superior Court, 1-04-CV-16394)
  • Intervention, Incorporated v. Corel Corporation et al. (California Court of Appeal, Civ.
    No. A083071)
  • Issokson v. Intuit Inc. (Santa Clara Superior Court, Civ. CV 773646, 1998)
  • Chilelli v. Intuit Inc. (Nassau County, New York, 1998)
  • Against Gravity Apparel v. Quarterdeck (Appellate Division, New York Supreme Court,
    1999)
  • Hinther v. Electronic Arts and Origin Systems (San Diego County Superior Court, Civ.
    718593, 1998)
  • Capellan/Cameron v. Symantec Corporation (Santa Clara County, California, 1998)
  • Hannah Films v. Micron Electronics (Canyon County, Idaho, 1998)
  • In addition, Mr. Stern has represented various businesses before the Federal Trade Commission and in federal and state court on issues involving claims for false advertising, unfair competition and unfair or deceptive trade practices. Mr. Stern was trial counsel in Federal Trade Commission v. World Wide Factors, Ltd., 882 F.2d 344 (9th Cir. 1989), one of the first cases to define the scope of relief which the federal district courts can provide in enjoining false advertising practices and unfair competition.
  • Mr. Stern advises and has represented various internet “etail” businesses in responding to informal requests or civil investigative demands initiated by the Federal Trade Commission involving claims of violation of the Mail and Telephone Order Rule (“MTOR”) and false advertising, unfair competition and unfair or deceptive trade practices.

Defense of Defective Software/Technology Class Action Litigation

  • In Simmons v. Intuit Inc. (Santa Clara Superior Court, 1-04-CV-0207772), Mr. Stern successfully defended software publisher Intuit against an asserted California class action where the plaintiff asserted claims that the company was charging customers for unordered technical support.
  • In Ental Precision Machining, Inc. v. Intuit Inc. (Santa Clara Superior Court, 1-04-CV-020277), Mr. Stern successfully defended software publisher Intuit against an asserted national class action where the plaintiff asserted claims that the company’s decision to sunset or discontinue tech support and the online features of its award winning QuickBooks product was unlawful.
  • In Mason/Flannery v. Intuit Inc., In re: Consolidated Sunsetting Class Actions (Santa Clara Superior Court, 1-04-CV-16394), Mr. Stern successfully defended software publisher Intuit against an asserted national class action where the plaintiff asserted claims that the company’s decision to sunset or discontinue tech support and the online features of its award winning Quicken product was unlawful.
  • In Microsoft v. Digeo, Inc., et al. (King County Superior Court, Washington), Mr. Stern defended interactive television software developer Digeo against a claim of breach of contract involving the development of an interactive television software platform.
  • In Fishbein v. Corel Corp. (Pa. Ct. Common Pleas, Snyder Cty., 17th Jud. Dist., Civ. 320-1995), Mr. Stern successfully defended software publisher Corel against an asserted national class action where claims of breach of warranty, negligence and consumer fraud were leveled against versions of Corel’s award-winning Corel DRAW software program.
  • In Issokson v. Intuit Inc. (Santa Clara Superior Court., Civ. CV 773646, 1998), Mr. Stern successfully defended software publisher Intuit against three consolidated national class actions in California in which the plaintiffs claimed that the on-line banking functions of various versions of Intuit’s award-winning QUICKEN program are not Year 2000 compliant.
  • In Chilelli v. Intuit Inc. (Nassau County, New York, 1998), Mr. Stern successfully defended software publisher Intuit against three consolidated national class actions in New York in which the plaintiffs claimed that the on-line banking functions of various versions of Intuit’ award-winning QUICKEN program were not Year 2000 compliant.
  • In Against Gravity Apparel v. Quarterdeck (Appellate Division, New York Supreme Court, 1999), Mr. Stern successfully defended software publisher Quarterdeck against a national class action in which the plaintiffs claim that two versions of Quarterdeck’s award-winning PROCOMM program are not Year 2000 compliant.
  • In Hinther v. Electronic Arts and Origin Systems (San Diego County Superior Court, Civ. 718593, 1998), Mr. Stern successfully defeated an attempt to certify a national or a state class action against software publishers Electronic Art and Origin Systems where claims of breach of warranty, negligence and consumer fraud were leveled against the state-of-the-art, multi-person online gaming program, ULTIMA ONLINE.
  • In Capellan/Cameron v. Symantec Corporation (Santa Clara County, California, 1998), Mr. Stern defended software publisher Symantec against two national class actions in California in which the plaintiffs claim that certain versions of Symantec’s Norton Anti-Virus program cannot process Year 2000 dates.
  • In Hannah Films v. Micron Electronics (Canyon County, Idaho, 1998), Mr. Stern successfully defended computer manufacturer Micron Electronics against a national class action in Boise, Idaho, in which the plaintiff claimed that certain hardware sold by Micron was defective because the hardware was not Year 2000 compliant.
  • In UTStarcom v. PMC-Sierra-Passave (Santa Clara Sup. 2005), Mr. Stern represented a US and Israeli company being sued for the sale of allegedly defective semiconductors. The case settled very favorably to Mr. Stern's client.
  • In Gardner v. Electronic Arts (NDCal 2008), Thomas v. Electronic Arts (N.D.Cal. 2008), Eldridge v. Electronic Arts (NDCal. 2008), and Cortez v. Electronic Arts (NDCal. 2008), Mr. Stern represents EA in four class actions based on allegedly defective DRM (digital right management) technology.

Commercial Litigation Involving Technology/Licensing Disputes and Negotiations

  • Mr. Stern represents technology clients in numerous commercial disputes involving different facets of the hardware and software industries. For example:
  • In Catalina Marketing v Coupons, Inc. (JAMS 2010), Mr. Stern represented Catalina Marketing in an arbitration in which Catalina alleged Coupons had breached various duties under a patent license agreement.  The arbitration is pending, but has spawned two separate San Francisco Superior Court actions by Coupons to either add Catalina's board members to the arbitration or to halt the arbitration (Coupons, Inc. v Hellman & Friedman LLC et al and Catalina Marketing v Coupons, Inc.), both of which efforts by Coupons failed, resulting in at least one award of attorneys fees in favor of Mr. Stern's clients.
  • Mr. Stern has represented Rovi Corporation, the premier patent licensor in the field of digital rights management, against several of its licensees.
  • In Linear Technology v. Monolithic Power Systems, (DE. 2009), Mr. Stern successfully represented Monolithic Power Systems in a breach of license jury trial in the Delaware District Court. After the close of Linear’s case in chief, Mr. Stern secured a judgment as a matter of law on behalf of MPS.
  • In Installshield v Macrovision (JAMS 2006), Mr. Stern represented Macrovision (now Rovi) in an arbitration regarding an alleged earned, but unpaid earn-out.  The case settled very favorably to Macrovision.
  • In Hair Club for Men, Los Angeles v. Hair Club for Men (LA Superior 1992), Mr. Stern successfully represented Sy Sperling and Hair Club for Men in a breach of license/franchise agreement jury trial in the Los Angeles Superior Court.
  • Mr. Stern has successfully represented software publishers in a variety of disputes with their distributors.
  • Mr. Stern has successfully represented a computer equipment lessor in disputes with its lessees concerning various issues, including the lessees’ obligation to maintain and service the leased equipment.

OTHER NOTABLE CASES

  • Frank Juliano v. Phoenix Leasing Incorporated, (Santa Clara Superior Court) (defense of employee wrongful termination action; defense summary judgment secured, with attorney fee award against plaintiff-employee of $95,000).
  • Federal Trade Commission v. World Wide Factors, Ltd., 882 F.2d 344 (9th Cir. 1989) (defense of Federal Trade Commission’s false advertising and deceptive trade practice claims).
  • Doug Carlston v. Mary Crowley, (Marin Superior Court No. FL 6370, Jan. 18, 1994) (37-day trial; successful defense of securities allocation claim).
  • Bewley v. Franchise Tax Board, 15 Cal. App. 4th 310 (1993) (depublished) (tax refund case on behalf of national mutual fund and shareholder; state taxation and federal taxation issues).
  • Richard Schey v. Trans Pacific National Bank, 217 Cal. App. 3d 432 (1990) (depublished) (wrongful termination case against national bank; preemptive scope of National Bank Act).

  Education

  • University of California Hastings College of Law
    (J.D., 1980)
    • Order of the Coif
    • Thurston Honor Society (Top 5%)
    • Hastings Law Journal:
      • Senior Articles Editor, 1979-1980
      • Member, 1978-1979
  • University of California, Los Angeles
    (B.A., Philosophy, magna cum laude, overall summa cum laude, 1977)

  Admissions

The State Bar of California; United States Supreme Court; California Supreme Court; United States Courts of Appeals: Ninth Circuit, Federal Circuit; California Courts of Appeals; United States District Courts: Northern District of California, Southern District of California, Eastern District of California, Central District of California, Eastern District of Texas, Southern District of Texas, Southern District of New York, Southern District of Florida, Eastern District of Virginia, District of Massachusetts, Southern District of Ohio; Dallas County Superior Court; King County Superior Court (Seattle); Cook County Superior Court (Chicago)

  Languages

  • Hebrew

  Prior Associations

  • Fenwick & West LLP:
    • Partner, 1994-2003
    • Executive Committee, 2001-2003
    • Strategic Planning Committee, 2000-2001
    • Fenwick & West Software & Technology Litigation Group:
      • Chair, 1996-2003

  • Nossaman, Guthner, Knox & Elliott LLP:
    • Partner, 1988-1994

  • Horwich & Warner LLP:
    • Partner, 1987-1988
    • Associate, 1984-1987

  • Morrison & Foerster LLP:
    • Associate, 1982-1984

  • Law Clerk to the Hon. Judge Jerome Farris:
    • United States Court of Appeals for the Ninth Circuit, 1980-1981

  Awards

  • Ranked in Who's Who Legal: Patents 2017 
  • Selected as an "IP Star" by Managing Intellectual Property, 2017
  • Ranked in M&A Today Global Rankings 2017: US – IP Individual Excellence Adviser of the Year in California 
  • Ranked in Who's Who Legal: Patents 2016 
  • Selected as an "IP Star" by Managing Intellectual Property, 2016
  • Selected by The Best Lawyers in America 2016 in Litigation – Intellectual Property
  • Selected by The Best Lawyers in America 2016 in Litigation – Patent
  • Selected as a winner in The Corporate America 2015 M&A Awards

 

Publications and Lectures

  • “Debtor’s Name or Identity Changes: Distributing Benefits and Burdens Under Article 9,” 31 Hast. L.J. 959 (1980)
  • “Software Piracy or Misappropriation Litigation:  A Check List of Legal Theories,” San Francisco Barrister Substantive Law Journal (Volume 4, No. 6, 1985)
  • “Telemarketing and the Legislative Process,” Telemarketing Management Magazine (March, 1988)
  • “How Those Look and Feel Lawyers Are Proving Look and Feel: Reviewing Demonstrative Techniques,” 16 Hastings COMM/ENT Law Journal 559 (1994)
  • “Year of the Lawsuit,” The Industry Standard (March 8, 1999)
  • Chapter, “The Y2K Act, ” Litigating Year 2000 Cases, West Group (1999)
  • Chapter, “Privacy Litigation,”  Electronic Security and Privacy Law, West Group (2001)
  • “Injunctive Relief in Intellectual Property Litigation: A View from the Trenches,” ABTL Reporter (Winter 2004)
  • "Wilson Sporting Goods and Lava Trading: Has the Federal Circuit Mandated a More Complicated, Expensive but Comprehensive Markman Proceeding?"  Intellectual Property and Technology Law Journal (May 2007, Vol. 19, No. 5).
  • “Local Patent Rules: Why We have Them, How They Work, How They Differ Among Districts,And Whether They Contribute to a District’s Popularity.” Sedona Patent Conference (October 22-24, 2009).

  • SEMINAR/TEACHING/SPEAKING ENGAGEMENTS
    Adjunct Professor, Stanford Law School, Trial Advocacy Course (1990-1992)
  • Instructor/Faculty, Stanford Law School, Advocacy Skills Workshop (1994-2012)
  • Instructor/Faculty, University of San Francisco Law School, Advocacy Skills Workshop (1994, 1995)
  • May 29-30, 2014. Co-Chair of Law Seminars International’s “Litigating Patent Damages: Strategic Issues for Proving and Refuting Damages Claims" Conference. (San Francisco, CA).
  • November 21, 2013, Presentation  for Los Angeles Intellectual Property Law Association, “Social Media in Litigation:  Discovery and in Trial” (Los Angeles, CA)
  • November 6, 2013, Presentation of “Developments in FRAND Litigation in the United States” (Tel Aviv, Israel) 
  • May 6, 2013, Presentation  for Law Seminars International, “Social Media in Litigation: Discovery and in Trial” (Seattle, WA)
  • June, 2012, Moderator for ABTL Panel, “Ten Things Top In-house Counsel Like Most --- and Least --- About Working With Outside Litigation Counsel” (Palo Alto, CA)
  • February, 2012, Presentation on “Litigation Impact of the America Invents Act” (Tel Aviv, Israel).
  • February 2011, Presentation on “Effective Settlement Agreement Negotiations in Patent Litigation” (Tel Aviv, Israel).
  • February 2011, Presentation on “10 Ways of Making IP Litigation More Efficient” (Tel Aviv, Israel).
  • May 24, 2010, Panelist and participant in first IP Mock Jury to Israeli legal community (Tel Aviv, Israel).
  • November 12, 2009: Speaker, “Efficient and Effective Patent Litigation in the United States” (Tel Aviv, Israel).
  • October 22-24, 2009: Panelist at Sedona Patent Litigation Conference (Sedona, AZ).
  • April 20, 2009: Panelist for Law Seminars International on, "Patent Damages" (San Francisco, CA).
  • April 6, 2006: Panelist for San Francisco Bar Association on, “Tips for the Intellectual Property Trial” (San Francisco)
  • February 15, 2006: Panelist for Bay Area Intellectual Property Inn of Court on, "Mock Argument before the Supreme Court in the LabCorp v. Metabolite Patent Case: Patenting Natural Phenomena?" (San Francisco, CA).
  • December 15, 2005: Lead daylong seminar, "What Israeli Companies Need to Know about United States Complex Civil Litigation" (Tel Aviv, Israel)
  • November 11, 2005: Panelist for Mealey’s presentation on 2005 Litigation Under Calif. Bus. & Prof. Code Section 17200 (Santa Barbara), “Remedies in Bus. & Prof. Code Section 17200 Proceedings (Injunctive Relief and Attorneys’ Fees).”
  • June 7, 2005: Panel member, with California Supreme Court Chief Justice Ron George, on Association of Business Trial Lawyer Panel Presentation on “From Dire Straits to Hard Times: Financial Pressures Threatening Our California Trial Courts” (San Francisco)
  • May 18, 2005: Chair, PLI panel presentation on “California Motion Practice, Federal and State Practice” (San Francisco)
  • April 11, 2005: Presentation to Israeli lawyers on “Intellectual Property Litigation in the United States” (Tel Aviv, Israel)
  • November 20-21, 2004: Presentations to Conference of Indian Supreme Court and Mumbai High Court on “United States Commercial Mediation” (Mumbai, India)
  • October 25, 2004: Presentation to China industry representatives on “Intellectual Property Litigation in the United States” (Shanghai, China)
  • October 20, 2004: Law Seminars International Conference (San Francisco) on “Pre & Early Stage Patent Litigation,” lecture on “The Patent Demand Letter: Assessment, Response and the Patent Opinion Letter”
  • October 12, 2004: Lecturer on “Pre-Trial Practice,” Stanford Law School, Course on Trial Advocacy (Stanford University)
  • December 8, 2003: Panelist for Mealey’s presentation on A2003 Litigation Under Cal. Bus. & Prof. Code Section 17200 (San Francisco), “Remedies in Bus. & Prof. Code Section 17200 Proceedings (Injunctive Relief and Attorneys’ Fees).”
  • October 17-19, 2003: Chair of the Association of Business Trial Lawyers Annual Conference, “Trying the Complex Business Punitive Damages Case” (Tamaya Resort, New Mexico).
  • August 4, 2003: Panelist for PLI presentation on “Unfair Competition Litigation 2003” (San Francisco), “Remedies in Bus. & Prof. Code Section 17200 Proceedings (Injunctive Relief and Attorneys’ Fees).”
  • May 16-25, 2003: Participate in training of Israeli judges and attorneys in Early Neutral Evaluation, jointly sponsored by the Israeli Ministry of Justice, U.S. Embassy and Israeli Bar Association (Tel Aviv, Israel).
  • March 14, 2003: Co Chair LSI Conference on Trade Secrets (San Francisco) “Identifying Trade Secrets for Transactional Purposes: Litigator’s perspective.”
  • August 2, 2002: Panelist for PLI presentation on “Unfair Competition Litigation 2002” (San Francisco), “Remedies in Bus. & Prof. Code Section 17200 Proceedings (Injunctive Relief and Attorneys’ Fees).”
  • July 30, 2002: Association of Business Trial Lawyers (Silicon Valley, CA), moderator of panel discussion on “Battle of the Corporate Titans: The Hewlett v Hewlett Packard Trial.”
  • July 25, 2002: Federation of Defense and Corporate Counsel Annual Meeting (Sun Valley, Idaho), “Electronic Privacy Liability and Litigation.”
  • June 11, 2002: Participate in ISDLS sponsored delegation, with federal judges, to meet with Turkish judges and legislatures to discuss freedom of expression issues.
  • May 27-29, 2002: Traveled to Morocco as United States State Department/ISDLS Delegate to speak with, and lecture to, Moroccan jurists regarding alternative dispute resolution procedures.
  • May 5-6, 2002: Panelist for PLI presentation on “Litigation Investigations” (San Francisco), “Business and Commercial Litigation in Federal Court: A View from the Experts.”
  • November 5-6, 2001: Co-chaired LSI Intellectual Property Conference (San Francisco), “Managing Intellectual Property Litigation: The ‘In House’ View.”
  • September 28, 2001: Early Neutral Evaluation Training Presenter to the United States District Court for the Northern District of California (San Jose).
  • July 9, 2001: Association of University Technology Managers (Honolulu, HI), “Improper License Termination and Copyright Misuse.”
  • June 26, 2001: Association of Business Trial Lawyers (San Francisco, CA), moderated a Federal Magistrate Judge Panel entitled “An Evening with our Federal Magistrate Judges.”
  • May 17-26, 2001: Traveled to Israel as United States State Department/ISDLS Delegate to speak with, and lecture to, Israeli jurists and lawyers regarding alternative dispute resolution procedures in the federal courts.
  • March 20, 2001: Practicing Law Institute Seminar (San Francisco, CA) Advanced Licensing Agreements for the New Economy, “Licensing to Avoid Copyright Misuse (And Improper Termination).”
  • March 2, 2001: Mealy’s IT Systems Failure Conference (New Orleans, LA) “When to Sue, When to Settle, When to Walk Away.”
  • January 22, 2001: American Conference Institute (San Francisco, CA) 6th National Litigating Patent Disputes Advanced Forum, “Using Opinion of Counsel to Defeat The Willfulness Claims in Patent Infringement Cases.”
  • December 7, 2000: Law Seminars International (Seattle, WA) 11th Annual Computer Law Conference, “Defeating Willfulness Claims in the Patent Infringement Case.”
  • September 7 -8, 2000: Law Seminars International (San Francisco) Co-Chair and Speaker, Intellectual Property Conference; “Pre Trial Practice: Litigation Defense Strategies.”
  • July 2000: The San Francisco Recorder (San Francisco, CA), Roundtable Conference on “Keeping Up in the Digital Age."
  • May 4, 2000: Glasser Legal Works (San Francisco, CA) Conference on Business Model Patents “Litigation Strategy for e Commerce Patent.”
  • December 17, 1999: Law Seminars International (Seattle, WA) Tenth Annual Seattle Conference on Computer Law “Anticipating Y2K Performance Litigation: 14 Days and Counting.”
  • September 10, 1999: Law Seminars International (San Francisco, CA) Third Annual Intellectual Property Litigation Conference “The Year 2000 Performance Litigation Landscape.”
  • August 20, 1999: Practicing Law Institute (San Francisco, CA) Seminar on eCommerce: Strategies for Success in the Digital Economy, “The Year 2000 Performance Litigation Landscape.”
  • July 20, 1999: Association of Business Trial Lawyers Panelist (Sunnyvale, CA) “Litigating a Section 17200 Case: How to Take a ‘Fairness’ Case to Judgment.”
  • June 10, 1999: Dayton University School of Law 10th Annual Advanced Computer Law Seminar; Computer and Cyberspace Law; “Year 2000 Litigation Defense Strategies.”
  • May 25, 1999: Young Presidents’ Organization panel discussion (San Francisco, CA): “The Year 2000 Computer Crisis: The Millennium Bomb.”
  • May 11, 1999: North Bay Technology Counsel (Marin, CA); “The Risks and Rewards of eCommerce Year 2000 Issues: Guarding Against or Managing Liability.”
  • April 23, 1999: California County Counsels’ Association’s Annual Conference (Monterey, CA); “Year 2000 Litigation Defense Strategies.”
  • March 12, 1999: Georgetown Law School (Georgetown, VA); Winning Counsel Panel, “Year 2000 Litigation Defense Strategies.”
  • March 11, 1999: Business Week 8th Annual CFO Conference (Phoenix); “Year 2000 Litigation Avoidance Strategies: Managing to Avoid the Storm.”
  • January 14, 1999: Stanford Trial Advocacy Program; Lecturer in “Case Analysis.” November 4, 1998: Insight (New York) “Developments in Software Licensing and Litigation.”
  • September 10, 1998: LSI (Palo Alto) “Year 2000 Litigation Defense Strategies.”
  • June 27, 1998: Annual Summer Conference, Intellectual Property Section of the American Bar Association (Williamsburg , VA) “Effective Litigation Strategies In Software Disputes.”
  • April 16-17, 1998: Business Week 7th Annual CFO Conference (Phoenix) “Y2K: Are You Sure You’re Ready?”
  • March 20, 1998: PLI (San Francisco) Conference on Advanced Licensing Issues; “License Termination, Antitrust and Copyright Misuse.”
  • March 9, 1998: Santa Clara University Law School (Santa Clara) Moderating Panel on “IP: Intelligent Protection Through Insurance.”
  • February 12-13, 1998: Insight (Chicago) “Developments in Software Licensing and Disputes.”
  • January 31, 1998: Hastings COMM/ENT 10th Annual National Computer Law Conference Panel (San Francisco) “Panel with the Experts on Technology Litigation.”
  • January 21, 1998: IP Inn of Court (San Jose) “Access to Evidence Issues in Technology Litigation.”
  • January 10, 1998: Stanford Trial Advocacy Program; Lecturer in “Trial Preparation Techniques.”
  • December 5, 1997: LSI (Seattle) “Sophisticated Litigation Strategies in Software Disputes.” 1997 Summer, LSI Symposium on Computer Law (Palo Alto), “Inadvertent Piracy” (or “Not Every Pirate Wears a Patch”).
  • 1997 Summer, SPA Advanced Corporate Counsel Software Conference (San Jose), “Ethical Issues in Patent & Trademark Infringement Litigation.”
  • 1997 Summer, ABA Intellectual Property Section Annual Conference (San Diego), “Recent Developments in Copyright and Fair Use.”
  • 1997 Spring, PLI Advanced Licensing Conference (San Francisco), “License Termination Disputes and Resolution.”
  • 1997 Winter, Hastings COMM/ENT National Computer Law Symposium (San Francisco), Panel Participant addressing “Effect of Cyberspace on Trademark Law.”
  • 1996 Spring, SPA Annual National Conference (San Francisco), “Software Advertising.”
  • 1996 Winter, Fenwick & West In House Presentation, “Basic Law Firm Economics.”
  • 1996 Winter, Fenwick & West Outside Counsel Breakfast Briefing (Sunnyvale), “Quantitative Approaches to Evaluation and Resolution of Licensing Disputes.”
  • 1996 Spring, Fenwick & West Outside Counsel Breakfast Briefing (Sunnyvale), “Settlement Evaluation of Wrongful Termination Disputes.”
  • 1995 Spring, Digital World Technology Symposium (Los Angeles), “Protecting Software User Interfaces As Trade Dress.”

Professional Activities

  • Association of Business Trial Lawyers:
    • President, 2006
    • Vice President, 2005
    • Treasurer, 2004
    • Secretary, 2003
    • Board of Directors, Commencing 1997
  • Lawyer Representative to the United States District Court for the Northern District of California, 2001-2004
  • Lawyer Representative to the United States Court of Appeals for the Ninth Circuit, 2002-2005
  • Ninth Circuit Rule 11 Study Committee: Co-Chairperson, 1990-1992
  • American Bar Foundation: Fellow, appointed 2000
  • American Bar Association, Committee on Appellate Advocacy of the Appellate Judges Conference, Secretary, 1982-1985
  • Sections: Patent, Trademark & Copyright, Antitrust, Litigation, and Computer Law
  • California Bar Association, Committee on Administration of Justice, 1993-1997
  • Sections: IP, Litigation, and Labor & Employment
  • American Inn of Court, Intellectual Property Division
  • American Intellectual Property Law Association
  • Computer Law Institute
  • Computer Law Association
  • JUDICIAL EXPERIENCE
    • U.S. District Court, Early Neutral Evaluator (N.D. Cal.)
    • Arbitrator for the National Association of Securities Dealers
    • Settlement Judge/Mediator for the Marin Superior Court
    • Judge Pro Tem for the San Francisco Superior Court
    • Arbitrator for Santa Clara County Superior Court