Overview
We represent electronics and semiconductor clients of all sizes, in all matters.
Our clients include semiconductor chip and equipment manufacturers, circuit designers, chip packaging companies, leaders in the microelectronics and nanotechnology industries, medical device companies, communication systems companies, network equipment manufacturers, mobile phone manufacturers, and manufacturers of personal computer systems, to name but a few. Our services encompass extensive due diligence, patent drafting and prosecution, patent portfolio development, counseling on adversarial matters (e.g., infringement and validity analyses), trademarks, technology licensing, and litigation.
However, we are more than legal advisors. We are business allies. Our intimate knowledge of the electronics and semiconductor landscape gives us insight into the forces that shape the industry. Using that knowledge, we are able to craft solutions tailored to our clients’ specific challenges and opportunities. And because we possess more than a mere academic or technical understanding of patent issues, we can anticipate the impact of these issues on a client’s bottom line.
We are also experienced patent prosecutors with an impressive record in matters ranging from reexamination of patents to appealing PTO rejections to creating patent portfolios. In addition, we also have assisted clients in the areas of product development, licensing, and other matters that have contributed favorably to their long-term success.
When litigation is required, we stand more than ready. Our team of seasoned litigators is well-versed in the complexities of electronics and semiconductor technology, giving them the ability to quickly identify salient points and creating winning strategies. Many of our attorneys hold advanced technical degrees, have served as clerks at the District and Federal Circuit Court levels, and regularly handle cases in all districts where patent cases are filed. In addition to appearing before U.S courts, we also represent our clients’ interests worldwide, working with our foreign colleagues to enforce and protect our clients’ complex IP assets wherever, whenever the need arises
Representative Experience
mophie Inc. v. Dharmesh Shah et al.
We obtained a jury verdict and a final judgment including a permanent injunction and damages of $4.5 million against Serve Global d/b/a SourceVista.com and Dharmesh Shah. At trial, mophie asserted copyright, trade dress and trademark infringement arising from the sale of counterfeit battery cases. The jury awarded damages for copyright infringement of mophie’s packaging and user manual and infringement of mophie’s juice pack plus® trademark. The jury also found mophie’s juice pack® and juice pack pro® trademarks as well as trade dress in its packaging were infringed, while additionally finding for mophie on its claim of unfair competition.
Typhoon Touch Technologies, Inc. v. Dell Inc. et al
Typhoon filed suit against our client, Toshiba, and other leading laptop and cell phone manufacturers, alleging that their touchscreen devices infringed two patents. After we obtained a District Court judgment of no infringement, the Federal Circuit affirmed. Because the patents-in-suit had been asserted against essentially any device with a touchscreen, the decision was significant because it removed a major obstacle in the market.
Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Toshiba America Information Systems, Inc.
CSIRO sued our client, Toshiba, and other leading laptop, desktop and wireless product manufacturers, alleging that their products that comply with the IEEE 802.11a, g or n standards infringed its patent. Previously, one company had been found to infringe the patent and was subject to a permanent injunction. In conjunction with the other defendants, the defense group was able to successfully settle the case after the fourth day of trial when the invalidity defense was presented to the jury.
Computer Docking Station Corp. v. Dell Inc. et al.
Non-practicing entity Computer Docking Station sued our client, Toshiba, and other leading computer makers, alleging that their products infringed a patent that related to computer docking technology. Though other defendants settled the case, we obtained summary judgment of non-infringement, successfully arguing that the patent-in-suit did not cover docking stations and docking connectors for use with laptop computers. We subsequently obtained affirmance of the judgment by the Federal Circuit on appeal.
Broadcom Corporation
Knobbe Martens has served as lead trademark counsel for all of Broadcom Corporation’s worldwide trademark matters, including: liaised with in-house legal and domain name team to establish and execute worldwide domain name enforcement and procurement strategy for Broadcom Corporation despite challenges due to ever increasing number of generic and country code level domain names. Exemplary trademark enforcement matters include: Broadcom Corporation v. Peter Ihesie (aka Broadcom Networks) (2011 NAF) (domain name transferred due to successful domain name action); Broadcom Corporation v. Domain Name Management/ Syed Hussain (NAF 2012) (domain name transferred due to successful domain name action); Broadcom Corporation v. Broadphone LLC (TTAB 2009) (represented Broadcom in obtaining summary judgment against Broadphone LLC).
Advanced Thermal Sciences Corp. v. Applied Materials, Inc.
Our client, BE Aerospace, was in a joint venture with another party, and discovered that the other party, Applied Materials, Inc., had filed 10 patents co-invented by our client’s inventors. Not only did we help our client obtain co-ownership of the 10 patents and win attorney’s fees, but we succeeded in getting the court to order the other party to file five new patents in which our client would be listed as sole-owner.
Acquisition of Ziptronix, Inc. by client Tessera Technologies, Inc.
Tessera Technologies, Inc., a company focused on technology development and licensing in the fields of image sensing and semiconductor packaging, acquired Ziptronix, Inc. in a transaction valued at $39 million. Ziptronix’s technology is directed to low-temperature wafer bonding processes used to manufacture different types of 3D integrated devices (chip stacking and packaging). The Knobbe team assisted in-house teams in analyzing Ziptronix’s large patent portfolio, which included many thousands of claims across numerous patent portfolios in the U.S. and abroad. Tessera expects the annual market addressed by the acquired technologies will exceed $15 billion by 2019. Knobbe Martens attorneys Adeel Akhtar and Paul Stellman aided Tessera in-house attorneys in conducting extensive due diligence on Ziptronix’s portfolio.
Journée Lighting Inc.
Our client Journée Lighting Inc. designs and manufactures state-of-the-art LED lighting fixtures. Journée Lighting invented a new light bulb that makes LED lights easier to use. The new light bulb, if never turned off, would last for 5.7 years at a fraction of the cost of a standard light bulb. GE Lumination purchased the next-generation LED module technology from Journée Lighting. A team of Knobbe Martens attorneys played an instrumental role in obtaining patent protection for the invention and providing agreement services leading to highly successful negotiations.
Acquisition of Hittite Microwave Corp. by client Analog Devices Inc.
Analog Devices Inc., a global leader in the design and manufacture of analog and mixed signal integrated circuits, acquired Hittite Microwave Corp. in a transaction valued at $2 billion. Hittite’s technology is directed toward radio frequency and microwave electronics. The Knobbe team assisted in-house teams in analyzing Hittite’s large patent portfolio, which included both U.S. and foreign patents. After acquisition, Knobbe Martens subsequently prosecuted the Hittite patents to build a patent portfolio protecting the acquired technologies. Knobbe Martens attorneys Adeel Akhtar and David Trossen worked alongside Analog Device’s in-house attorneys in conducting extensive due diligence on Hittite’s portfolio and in subsequently prosecuting the patents.