Intellectual Property Litigation
BarktoZankel attorneys have achieved outstanding results for their clients in diverse areas of intellectual property and technology litigation. With specialties in trade secret, patent, copyright, and technology license litigation, our attorneys have successfully tried high-stakes technology cases to both juries, judges and arbitrators, and achieved top-value settlements.
We have recently handled a variety of copyright/software license matters, complex trade secret disputes, and patent and licensing matters. Unlike the classic big firm “litigators,” the principals at BartkoZankel have collectively tried over 75 cases to verdict. Our depth of substantive and technical understanding, experience in handling complex litigation, and willingness to take cases to trial ensure the best possible protection of our clients’ legal interests. We also have an award-winning eDiscovery and litigation support group, providing the technical expertise and electronic document support and capabilities of a much larger firm.
As part of our Intellectual Property practice, BartkoZankel patent litigators routinely represent both plaintiffs and defendants in trial courts throughout the United States. The key to patent litigation is often not just understanding litigation tactics. Success also depends upon mastering the technology and the ability to explain complex technologies to judges and juries in a clear and persuasive manner. BartkoZankel litigators have handled matters in a broad array of technologies including mechanical devices, software, biotech, business methods, and computer equipment. Some of our patent litigators have technical backgrounds and are admitted to practice before the Patent Office. Others have backgrounds as educators. Unlike classic big firm “litigators,” all of our patent litigators have experience trying cases to verdict. Together, we are able to analyze the critical technical issues, develop an effective litigation strategy and present winning arguments to judges and juries. With these skills, BartkoZankel patent litigators have secured victory at trial, succeeded in dispositive motion practice and achieved favorable settlements.
As part of a mid-sized litigation practice, BartkoZankel attorneys are able to scale up or down to handle both large “bet the business” cases as well as smaller cases. The lack of big-firm overhead means that BartkoZankel can be cost effective for smaller cases, especially when working with multiple defendants. We understand that cost matters and not all cases should be litigated without limits. At the same time, BartkoZankel attorneys have gone toe-to-toe, and prevailed, against some of the largest law firms in the country.
Although BartkoZankel is willing and able to take a case to trial to best protect our client’s interest, we understand that sometimes settlement is the prudent way to resolve a dispute. The Firm has an extensive alternative dispute resolution practice. Several of the Firm’s lawyers are court-approved mediators. We bring this expertise to the table, along with experience licensing intellectual property, to help clients obtain the best possible resolutions.
Also, in conjunction with our litigation practice, BartkoZankel attorneys have vital experience handling Federal Circuit appeals. Our goal is not just to achieve victory for our clients; we consistently preserve those results on appeal.
Patent Litigation Attorneys
- W. Paul Schuck
- Benjamin K. Riley
- Patrick M. Ryan
- C. Griffith Towle
- Sony B. Barari
- Jayne Laiprasert
- Simon R. Goodfellow
- Sean R. McTigue
Representative recent cases litigated by BartkoZankel attorneys include:
Natera, Inc. v. Sequenom, Inc. (N.D. Cal., Fed. Cir.). Representing declaratory judgment plaintiff asserting that patent-in-suit relating to non-invasive, prenatal genetic testing is not valid and not infringed. Obtained summary judgment of invalidity under 35 U.S.C. § 101 on grounds that asserted claims are not directed to patentable subject matter. Unanimously affirmed on appeal by the Federal Circuit in 788. F.3d 1371 (Fed. Cir. 2015).
Netlist, Inc. v. Diablo Technologies, Inc. and related cases (N.D. Cal). Representing designer of server memory modules in multiple patent case. Patent issues are currently stayed pending inter partes review.
Genetic Technologies Limited v. Natera, Inc. (D. Del.). Defended genetic testing company against claims of patent infringement by non-practicing entity. After obtaining transfer to the Northern District of California, the plaintiff dismissed all claims in a “walk away” agreement without payment of any damages.
Geron v. ViaCyte (N.D. Cal.). Defended ViaCyte against Section 146 appeal of unsuccessful interference action based on PTO Board of Appeal’s finding of lack of enablement.
Xilinx, Inc. v. Papst Licensing GMBH & Co.; Altera Corporation v. Papst Licensing GMBH & Co. (N.D. Cal.) Co-counsel representing German defendant in declaratory judgment actions regarding patent invalidity and non-infringement. Court dismissed all claims in favor of client after granting motion to dismiss for lack of personal jurisdiction.
Antennatech, LLC v. Jamba, Inc. (D. Del.). Represented juice drink provider in patent dispute with non-practicing entity that was successfully resolved prior to any significant litigation.
Software Resource Archive LLC (“SRA”) v. Facebook; SRA v. Twitter, Inc.; SRA v. LinkedIn, Inc. (N.D. Cal.). Representing plaintiff in three related patent infringement suits concerning patents covering methods of personalized display of web pages to website users.
IPVX Patent Holdings, Inc. v. 8×8, Inc. (N.D. Cal.). Co-counsel for 8×8 in patent case involving telephone answering service linking displayed data with recorded audio message.
Advised client developing new product on potential issues arising from patents relating to beverage preparation machines.
AntiCancer, Inc. v. Carestream Health, Inc. (S.D. Cal.). Defended medical equipment company against claims of infringement of patents concerning use of cancer cells transformed to express green fluorescing proteins. The case settled favorably after partial summary judgment of non-infringement was granted in favor of client.
Duhn Oil Tool, Inc. v. Cooper Cameron Corp. (E.D. Cal.). Represented plaintiff in patent infringement trial related to oil and natural gas drilling equipment for “fracking.” At trial, the jury awarded client nearly $10,000,000 in damages. The case settled while on appeal.
International Printer Corp. v. Brother International Corp., et al. (E.D. Tex.). Defended producer of imaging and printing equipment in patent infringement suit in the Eastern District of Texas regarding systems and methods for monitoring and controlling copy machines.
DR Systems, Inc. v. Fujifilm Med. Sys. USA Inc., et al. (S.D. Cal.); DR Systems, Inc. v. Eastman Kodak Company (S.D. Cal.). Represented leading imaging company in two separate patent infringement suits regarding picture archiving and communications systems (PACS) for medical images such as MRI and CT scans.
Sun Microsystems v. Azul (N.D. Cal.). Represented Sun in connection with patent, trade secret, contract and interference claims brought against former employees concerning JAVA-based software and hardware for parallel chip computing.
Board of Regents of the University of Texas, et al. v. Eastman Kodak Company, et al. (W.D. Tex.). Successfully defended provider of dental image management software against claims of patent infringement.
In re Columbia University Patent Litigation (M.D.L., D. Mass., N.D. Cal.). Represented major biotechnology company in high-profile, multidistrict litigation regarding validity of basic DNA technology patent for co-transformation of cells. The litigation was resolved favorably when the patent holder entered into a covenant not to sue and terminated its infringement claims.
Tegic v. Zi Corporation (N.D. Cal.). Represented Tegic in trial including claims of infringement of multiple patents for cell phone text input. Successfully handled post-trial briefing sustaining a jury award of over $8,000,000 in Tegic’s favor.
Webgain, Inc. v. Borland Software Corp. (N.D. Cal.). Represented Borland in dispute concerning patents for software development environments. The case settled favorably during claim construction.
Hoffer v. Microsoft Corp., et al. (N.D. Cal. and Fed. Cir.); Hoffer v. International Business Machines Corp. (S.D. Cal., N.D. Cal. and 9th Cir.). Defended a leading computer company in patent litigation concerning internet databases. Obtained summary judgment of non-infringement, affirmed in Hoffer v. Microsoft Corp., International Business Machines Corp. and Ariba, Inc., 405 F. 3d. 1326 (Fed. Cir. 2005). Successfully obtained dismissal of claims in a related trade secret and business torts case also affirmed on appeal.
BartkoZankel welcomes alternative fee arrangements and other strategies to align the clients’ and the firm’s interests. We often team with other, specialty-technology law firms or lawyers to bring the most advanced technical expertise to bear on each case. We know that cost and results are what matter.
Representative IP Clients
- American Video
- Cambridge Technology Partners
- DiCon Technologies
- Impinj, Inc.
- John Fanning (Napster litigation)
- JP Morgan Chase Bank
- Lattice Semiconductor
- National Semiconductor
- Next Level Communications
- Quantum Group
- Raytheon Corporation
- Sun Microsystems
- Talley Industries
- WI Harper