Brian C. Claassen

Partner

Orange County

949-760-0404

brian.claassen@knobbe.com

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Overview

Experience

Recognition

Resources

Brian leverages his deep technical aptitude and legal experience to successfully resolve his clients’ high stakes technology disputes. Brian strategically guides clients through all stages of litigation in federal courts throughout the country, the International Trade Commission, and Inter Partes Reviews (IPRs) before the Patent Trial and Appeal Board. Brian successfully litigates patent disputes for both plaintiffs and defendants.

Brian obtains favorable results for plaintiffs and defendants, including negotiating early settlements, arguing motions, prevailing on motions for summary judgment, and conducting jury trials. He has significant experience defending against allegations of patent infringement by non-practicing entities in some of the busiest judicial districts in the United States. Brian has successfully challenged and defended patents in IPRs, helping to focus disputes for his clients.

Brian is an active leader of the bar. He is a founding member and current Membership Chair of the Howard T. Markey Intellectual Property Inn of Court. He also serves as President for the Federal Bar Association Orange County Chapter and is a group host for ProVisors. Brian also serves as Chair of the firm’s Mentor Committee.

Prior to joining the firm, Brian developed embedded systems and signal processing devices as a Senior Software and Hardware Engineer at QSC Audio Products. Brian’s technical experience in electronic product design, including digital and analog hardware, signal processing, firmware and software development, help him immediately understand his clients’ most complex technical issues.

Education

University of Notre Dame Law School (J.D., 2007), Intellectual Property Summer Institute, Tsinghua University, Beijing, China (2005)

Vanderbilt University (B.E. Electrical Engineering, 1998)

University of Notre Dame Law School

Vanderbilt University

State Bar of California

U.S. Court of Appeals for the Federal Circuit

U.S. District Court - Central District of California

U.S. District Court - Northern District of California

U.S. District Court - Eastern District of Texas

U.S. Patent and Trademark Office

Automotive, Transportation & Power Sports

Communications Technology

Electronics & Semiconductors

Media & Entertainment

Medical Devices & Procedures

Optics

Software & Information Technology

Sporting Goods & Recreation

Practice Areas

Patent Prosecution

PTAB Ex Parte Patent Proceedings

IP Strategy

Due Diligence

Opinions & Counseling

IP Transactions & Agreements

Electrical, Semiconductor & Computer Technology Litigation

Appellate Litigation

ITC Litigation

Medical Device Litigation

Trade Secret & Employment Mobility Litigation

Trademark & Brand Protection Litigation

Patents

PTAB IPR & Post-Grant Proceedings

Dominion Assets LLC v. Masimo Corp. and Cercacor Laboratories, Inc. (NDCA).

Represented defendants against three patents regarding non-invasive blood analyte monitoring. Obtained dismissal of a first suit for lack of standing at the time the complaint was filed. In a second case, Plaintiff dropped one patent after production of our expert report regarding the lack of infringement. Obtained summary judgment of invalidity, an order excluding plaintiff’s damages expert, and a covenant not to sue on all of plaintiff’s patents.

NueroGrafix et al. v. Toshiba Am. Medical Sys. (and related cases) (MDL).

Successfully defended Toshiba Medical against patent infringement claims.

American Vehicular Sciences LLC v. Toyota Motor Corporation (and related cases) (CACD and MIED).

Represented airbag manufacturer in significant non-practicing entity case asserting side-curtain airbag patent against defendants in automotive industry. Successfully transferred case, filed petitions for IPR, obtained a stay, and established unpatentability of asserted patent.

Digital Stream IP, LLC v. iHeartMedia, Inc. and Digital Stream IP, LLC v. CBS Radio, Inc. (TXED).

Represented iHeartMedia and CBS Radio in two infringement suits involving a patent allegedly related to HD radio technology bought by non-practicing entity, Digital Stream. The matter was resolved and dismissed.

Better Mouse Co., LLC LLC v. Toshiba America Info. Sys., Inc., et al. (TXED).

Successfully defended Toshiba against patent infringement claims

Vaultet LLC v. Starbucks Corporation (TXED).

Successfully defended Starbucks against patent infringement claims

Kreative Power, LLC v. Monoprice (NDCA).

Defended online retailer against claims of infringing utility patents, design patents, and copyrights relating to a power outlet/surge protector. Won summary judgment of invalidity and noninfringement within six months after the complaint was filed, with no need for depositions or a claim construction hearing.

Jimmy Styks LLC v. Hobie Cat Co., LLC (CACD).

Negotiated favorable settlement in patent infringement suit related to handles for stand up paddleboards resulting in dismissal of case with prejudice.

Salmon Licensing LLC v. Cellphone-Mate Inc. (DED).

Negotiated favorable settlement in patent infringement suit related to cell phone repeaters resulting in dismissal of case with prejudice.

Traffic Information v. Fandango, Inc. (TXED).

Negotiated favorable settlement in patent infringement suit related to traffic information in mobile apps resulting in dismissal of case with prejudice.

Sapphire Dolphin v. Monoprice (DED).

Negotiated favorable settlement in patent infringement suit related to communications over Bluetooth network via near field communications resulting in dismissal of case with prejudice.

Ideative Product Ventures, Inc. v. Monoprice (TXED).

Negotiated favorable settlement in patent infringement suit related to HDMI swivel adapters resulting in dismissal of case with prejudice.

LaserDynamics, LLC v. Boombang Inc. (NYSD).

Negotiated favorable settlement in patent infringement suit related to DVD playback resulting in dismissal of case with prejudice.

Canatelo, LLC v. Toshiba America (DPR).

Represented Toshiba America Information Systems, Inc. in a patent infringement action related to automated security camera technology. Obtained favorable dismissal.

U.S. Ethernet Innovations Inc. v. Acer et al. (TXED and NDCA and CAFC).

Defended Toshiba Corporation to successfully obtain summary judgment in a significant non-practicing entity case. The plaintiff had sued over 30 defendants for infringing patents directed to Ethernet technology. Judge Claudia Wilken of the Northern District of California granted judgment of invalidity on two patents and non-infringement of two others. Successfully transferred the case from the Eastern District of Texas to the Northern District of California. Affirmed on appeal.

In the Matter of Certain Electronic Imaging Devices, Inv. No. 337-TA-850 (U.S.I.T.C. 2013). Submitted public interest Statement on behalf of T-Mobile USA, Inc. encouraging Commission to decline to issue an exclusion order that would compensate the patentee for non-infringing features of the accused products.

Charles C. Freeny, et al. v. Western Digital Corp. (TXED).

Negotiated favorable settlement resulting in dismissal of case with prejudice.

Kroy IP Holdings, LLC v. Capita Techs. Inc. (TXED).

Negotiated stipulated dismissal of case following service of invalidity contentions on behalf of defendant.

Hawaii AirBoards, LLC v. Hobie Designs, Inc. (HID).

Negotiated favorable settlement resulting in dismissal of case.

In the Matter of Certain Computer Notebook Products and Components Thereof, Inv. No. 337-TA-705 (USITC).

Obtained summary determination for complainant Toshiba regarding respondents’ affirmative defenses in patent infringement lawsuit involving hardware and software components of notebook computers.

Commonwealth Scientific and Indus. Research Org. v. Toshiba America Info. Sys., Inc., et al. (TXED).

Represented Toshiba in a patent infringement lawsuit involving wireless LAN standards.

Discovision Assoc. v. Toshiba Corp. (NYSD).

Represented Toshiba in lawsuit involving breach of patent license agreement for optical disc playback and recording products.

Light Valve Solutions, LLC v. 3M Company, et al. (GAND).

Represented Toshiba in patent infringement lawsuit involving projectors.

Toshiba America Info. Sys., Inc., et al. v. Walletex Microelectronics Ltd (IPR2018-01538)

Currently representing petitioner Toshiba in instituted IPR regarding USB connector patent.

Takata Corporation v. American Vehicular Sciences, LLC (IPR2016-1794).

Chief strategist for IPR petitioner that resulted in a final written decision finding all 44 claims of the challenged side-curtain airbag patent unpatentable on 13 grounds. Successfully established the lack of written description support for the challenged in the priority patent applications.

Toyoda Gosei Co. Ltd. v. American Vehicular Sciences, LLC (IPR2016-1790).

Obtained a final written decision finding all claims of the challenged airbag patent unpatentable. Demonstrated obviousness, including establishing reasons to combine and modification of prior art. Overcame evidence and arguments relating to objective considerations of non-obviousness.

Wilson Electronics, LLC v. CellPhone-Mate, Inc. d/b/a SureCall (IPR2018-1771).

Successfully represented SureCall’s 5-band cellphone booster patent against competitor challenge. Obtained non-institution confirming patentability of all claims.

Wilson Electronics, LLC v. CellPhone-Mate, Inc. d/b/a SureCall (IPR2018-1772).

Successfully represented SureCall in second competitor challenge to its 5-band cellphone booster patent. Obtained non-institution confirming patentability of all claims.

GameChanger Charity v. PlayNext, Inc. (CACD).

Successfully enforced trademark on behalf of owner.

Agri-Cover Inc. v. Ben Sabio (CACD).

Successfully enforced trademark on behalf of owner.

Kreative Power, LLC v. Monoprice (NDCA).

Defended online retailer against copyright claims relating to a power outlet/surge protector. Won summary judgment of invalidity and noninfringement within six months after the complaint was filed, with no need for depositions or a claim construction hearing.

Awards & Honors

Named a "Southern California Rising Star" by Super Lawyers magazine for his work in intellectual property litigation (2014-2018)

Howard T. Markey Inn of Court Program of the Year
2017-2018 “Inventorship Mystery Dinner Theater”
2015-2016 “IP Ethics”

Articles

Co-author, "FBA/OC Honors Don Martens with the Judge Alicemarie H. Stotler Award at Annual Judges' Night" which was published in FBA/OC The Newsletter of the Federal Bar Association/Orange County Chapter. (May 2018).

Co-author, "Another Reason to Coordinate Discovery in Parallel Litigation – Circumvention in Section 1782 Requests," International Litigation News, Newsletter of the International Bar Association Legal Practice Division (April 2013)

Speeches & Seminars

Brian Claassen and Joshua Harrison, Ph.D, “IPRs and the Courts,” OCBA Intellectual Property & Technology Law Section Meeting (March 29, 2019)

Howard T. Markey Inn of Court, “Expert Witnesses in Patent Litigation: From Teva to Trial” Irvine (March 2015)

Brian Claassen, “Intellectual Property Basics – SBIR/STTR and Tech Transfer,” Cal State Fullerton’s Research Week (March 22, 2013)