• Contacts



    Intellectual Property



    Co-chair, Intellectual Property
    Co-chair, Patent Prosecution and Litigation

    Patent Prosecution and Litigation

    Patent matters are among the most important and complex legal issues facing companies today. For the owner, patented protection can be a highly valuable asset and, by ensuring a return on investment, critical to attracting investment in research and development. For the non-owner, defending against claims of patent infringement is expensive and may expose a company to tremendous damages liability and/or a permanent injunction.

    Adding to the complexity of patent issues, U.S. patent law is undergoing its most fundamental reforms in over 50 years. Enacted in 2011, the Leahy-Smith America Invents Act (AIA) brought with it numerous changes to how patents are granted, challenged and enforced, and U.S. patent law has been further reformed in recent years by the federal judiciary.

    Manatt’s Patent Prosecution and Litigation group has decades of experience adapting to the changing legal landscape can apply this same agility and acumen to help you navigate this rapidly evolving environment, but make it work to your advantage.

    A good defense can sometimes be the best offense, and 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, defend patent infringement claims.

    With change comes opportunity, and in addition to being adept at handling patent litigation, we have handled the full range of patent-related business transactions. 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).

    Technical Experience
    Our patent team includes attorneys and consultants with technical backgrounds in computer science, communications, networking, electrical components, Internet technology and mechanics, including a number who held senior technical positions at industry-leading companies and associations. Our team even includes a Wizard—Apple’s designation for the highest level of technical expertise. Our technologists help our litigators do what they do best: mount a masterful strategy that achieves a client’s business objectives, whether on offense or defense.

    This marriage of legal smarts and strong technical skills makes all the difference between success and failure in court. If you are tired of spoon-feeding technical information to your lawyers, you will find it easy to work with Manatt.

    Attorneys & Professionals

    Bean, Caleb J. Orange County 714.338.2828
    Becker, Robert D. Palo Alto 650.812.1370
    Bottomly, Matthew Orange County 714.338.2739
    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
    Mihalkanin, Danielle Palo Alto 650.812.1335
    Mikulka, Yuri Orange County 714.338.2722
    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

    • Acer
    • Activision
    • Belkin
    • Best Buy
    • Clairmail Inc.
    • Concord Records
    • DataDirect Networks
    • Fandango
    • Good Technology
    • Incipio
    • Kelora Systems
    • L-3 Communications
    • PartsRiver
    • Spinal Kinetics
    • Ticketmaster
    • Toshiba
    • Yamaha

    Patent Prosecution and Litigation

    Representative Matters

    Recent experience include the representation of:

    • Belkin, Inc. and Belkin International, Inc. in a three-patent litigation relating to switching technology with on screen display functionality.
    • Belkin, Best Buy and RadioShack in a two-patent litigation relating to FM transmitters.
    • American Honda Motor Co., Inc. in a patent infringement suit relating to 3D imaging for thick and thin computer clients.
    • American Honda Motor., Inc. in a patent infringement suit relating to computer assisted systems and methods. We provided intellectual property counseling regarding patent rights relating to automobile technology.
    • Belkin as a defendant in a case against Clear With Computers, LLC.
    • 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 2013-2016