• Patent Prosecution & Litigation

    Patent matters increasingly are among the most important and complex legal issues facing companies today.  Patent protection for inventions can be a highly valuable asset for the patent owner and a critical aspect of ensuring return on investments in research and development.  On the other hand, defending assertions of patent infringement is expensive and may expose a company to tremendous damages liability and/or permanent injunctive relief.   

    Compounding the importance and complexity of patent issues, U.S. patent law is undergoing its most fundamental reforms in over fifty years.  In September 2011, the Leahy-Smith America Invents Act (AIA) was enacted, bringing with it numerous changes to U.S. patent law affecting how patents are granted, challenged, and enforced.  In addition to AIA, the federal courts have reformed U.S. patent law significantly in many other areas in recent years.   

    With change comes opportunity.  Manatt patent prosecution and litigation attorneys have the experience and acumen to help clients successfully navigate the evolving environment of patent law and turn it to their advantage.  Our attorneys give clients the benefit of decades of collective experience as well as the agility to adapt to the changing legal landscape. 

    We are adept at handling patent litigation, prosecution and the full range of business transactions associated with patents.  We assist clients with every step of the patent process, from preparation and prosecution of patent applications and post-grant proceedings in the USPTO, to licensing and enforcement activities in the federal courts and before the U.S. International Trade Commission (ITC).

    We also know that a good defense can sometimes be the best offense. Our attorneys know how to strike an appropriate balance between respect for others' intellectual property and innovation in a fast-moving commercial environment. We regularly guide clients through the process of assessing third party patent rights and, when necessary, defending patent infringement claims.

    Technical Experience
    Manatt's patent team includes attorneys and consultants with technical expertise in computer science, communications, networking, electrical components, Internet technology, and mechanics.  They hail from senior technical positions at industry leading companies and associations.  Our team even includes a Wizard - the designation for Apple's highest level of technical expertise.  Our technology team speaks the language of technology and helps the litigators do what they do best: mount a masterful strategy that achieves your business objectives, on offense or defense.

    The marriage of smart legal counsel and strong technical skills can make all the difference between success and failure in court.  Clients tired of spoon-feeding technical information to their lawyers will find it easy  to work with Manatt.

    Attorneys & Professionals

    Email
    Name
    Office
    Phone
    Becker, Robert D. Palo Alto 650.812.1370
    Dickerson, Jr., Robert W. Los Angeles 310.312.4236
    El-Gamal, Yasser M. Orange County 714.338.2740
    Katz, Ronald S. Palo Alto 650.812.1346
    Kertell, Charles A. Orange County 714.338.2748
    Kim, David D. Los Angeles 310.312.4239
    LaPorte, Lawrence R. Los Angeles 310.312.4196
    McCubbrey, Bruce Palo Alto 650.251.1498
    Rothwell, Michael Los Angeles 310.312.4241
    Samuel, Ehab Los Angeles 310.312.4243
    Swartzberg, Neil Palo Alto 650.812.1353
    Wang, Shyh-Jye Orange County 714.338.2752
    Wollman, Shari Mulrooney Los Angeles 310.312.4309

    Patent Prosecution & Litigation

    Selected Clients

    • Bank of the West
    • Clairmail Inc.
    • Concord Records
    • DataDirect Networks
    • Fandango
    • Kelora Systems
    • Large Scale Biology Corporation
    • Parker-Hannifin
    • PartsRiver
    • Ticketmaster

    Articles

    05/01/2013A Shield For Software
    02/07/2013The Hard Cell

    Patent Prosecution & Litigation

    Representative Matters

    Recent experience include the representation of:

    • Visto Corporation (now Good Technology) in an aggressive litigation campaign on behalf of this wireless e-mail company against RIM, Motorola, Microsoft, Seven Networks, and others.  In the Seven case, an Eastern District of Texas jury returned a verdict of willful infringement and a damage award of 19.75%.  In the RIM case, RIM settled for $267.5 million (Eastern District, Texas).   At the end of the Motorola case, Visto acquired Good Technology from Motorola.
    • Clairmail Inc. and Bank of the West in the defense of a patent infringement action filed in the Eastern District of Texas by Maxim Integrated Products against Bank of the West.  We are opposing Maxim's efforts to have the Judicial Panel on Multidistrict Litigation centralize at least 14 other actions relating to Maxim's claimed patents for conducting secure transactions using mobile devices.  We also represent Clairmail, the provider of mobile banking software to Bank of the West and others, in a declaratory judgment action filed in the Northern District of California seeking relief on behalf of Clairmail and its mobile banking customers. 
    • DataDirect Networks in the successful defense of a patent infringement action brought by Crossroads Systems involving a storage router for providing virtual local storage on remote storage devices (Western District, Texas).
    • Concord Records in the defense of a patent infringement action filed by Philips in the Southern District of New York.  Philips also filed against  other content publishers and CD manufacturers concerning  patent claims that Philips argued were essential to manufacturing CDs that conform to standard specifications.  We obtained a dismissal for our clients on the basis of exhaustion. 
    • Ticketmaster and Fandango in a patent infringement action brought by E-Data regarding the Freeny patent where we obtained a complete dismissal for our clients.
    • Macrovision in securing both temporary and permanent injunctions preventing 321 Studios from selling the popular DVD X Copy piracy software.
    • Musicmatch in the successful defense of a patent infringement action against its  popular Musicmatch Jukebox.
    • Kelora Systems, LLC in patent infringement actions concerning infringement of a patent covering parametric search technology used on many leading e-commerce web sites. 
    • Jerry Leigh of California, a major apparel manufacturer, in the successful resolution of a multi-district intellectual property dispute relating to its popular Hoodie Buddie™ with HB3 Technology™ products.
    • Large Scale Biology Corporation in the successful defense of a  patent infringement lawsuit filed byProdiGene.  We  launched a preemptive challenge to the validity of ProdiGene's patent which led to the eventual dismissal of the case.  
    • Vasco Data Security and Vasco Data Security International in a patent infringement action brought by Authenex, Inc.  The case settled on terms very favorable to our clients shortly after we prevailed in early claim construction proceedings and aggressively challenged the validity and enforceability of the patent‐in‐suit.
    • IP Power Holdings Limited in conducting a patent licensing and enforcement program for patents relating to home furnishings, including collapsible chairs.  We are currently asserting one U.S. patent that covers a collapsible chair against Idea Nuova, Inc. 
    • Tofasco of America, Inc. and MacSports Inc. in providing patent counseling advice concerning collapsible chairs and shelving systems.
  • Awards & Rankings

    logo/img/@altRanked Nationally for Litigation – Intellectual Property 2013-2015