Cheryl T. Burgess

Partner

Orange County

949-760-0404

cheryl.burgess@knobbe.com

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Overview

Experience

Recognition

Resources

Recognized by Los Angeles Magazine as one of the “Top Women Attorneys in Southern California” and by Super Lawyers magazine as a Southern California “Rising Star,” Cheryl Burgess is a proven litigator and appellate advocate in all aspects of intellectual property and technology. Her experience includes patent, trademark, copyright, trade secret, trade dress, unfair competition, and breach of contract claims. She represents businesses and individuals in federal district court and the United States Court of Appeals for the Federal Circuit, as well as before the United States Patent and Trademark Office (USPTO), including for inter partes reviews (IPR), covered business method (CBM) reviews, and reexaminations.

An electrical engineer and registered patent attorney, Cheryl’s passion for technology enriches her ability to advise clients and litigate complex technology claims. She has litigated cases involving a variety of technologies and products, including consumer electronics, computer software, medical devices, integrated circuits, real estate transaction management systems, wireless communication networks and devices, automotive financial transactions, elevator destination dispatching systems, emergency communication networks, software piracy prevention software, GPS golf course cartographers and navigators, consumer beverages, and clothing.

In addition to her honed litigation skill, Cheryl renders opinions on infringement, non-infringement, validity and invalidity of patents, determining the strength of the patent and the best possible course of action going forward. She also advises on a variety of IP and tech-related matters, including licensing, patent procurement, and strategies to settle disputes without litigation. Regardless of the size and complexity of the matter, Cheryl never loses sight of conserving her client’s time and resources when finding a path to resolution that will result in cost-savings while at the same time, preserving their assets. At her best under pressure, Cheryl is personally committed to the clients she serves and to achieving the right result in and out of court.

Cheryl has a deep knowledge of patent law. She has taught courses covering advanced Federal Circuit appellate patent law for the nationally recognized Patent Resources Group. Before joining the firm, Cheryl served as a law clerk to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of Appeals for the Federal Circuit, and was a litigation law clerk in the Fish & Neave Intellectual Property group of Ropes & Gray LLP.

Prior to attending law school, Cheryl served as an officer in the United States Air Force, where she directed overhead signals intelligence collection for a joint agency, multi-service space operations center and performed systems engineering and acquisition management on the Air Force Satellite Control Network. Military service allowed Cheryl to develop the incredible discipline and acute attention to detail that she relies upon today when serving her clients.

Clerk Experience

Law clerk to the Honorable Alvin A. Schall, Circuit Judge of the U.S. Court of Appeals for the Federal Circuit, 2006-2007

Education

The George Washington University Law School (J.D., 2006), Member, Moot Court Board, with honors

Boston University (B.S. Electrical Engineering, 1997), Commander Air University Blue Chip Award (top 15% ROTC graduating class), magna cum laude

The George Washington University Law School

Boston 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 - Eastern District of Texas

U.S. Patent and Trademark Office

Communications Technology

Electronics & Semiconductors

Financial Services & Business Methods

Medical Devices & Procedures

Practice Areas

Trademarks & Brand Protection

IP Strategy

Due Diligence

Opinions & Counseling

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

AutoAlert, Inc. v. DealerSocket Inc., 13-cv-00657 (C.D. Cal. 2013).

Counsel for plaintiff and patent owner AutoAlert in a patent infringement suit involving systems and methods for assessing and managing automotive financial transactions. Obtained settlement of the case on a confidential basis prior to trial.

AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al., 12-cv-01161 (C.D. Cal. 2012).

Schindler Elevator Corp. v. Otis Elevator Co., 06-cv-5377 (S.D.N.Y. 2011).

Trial counsel for plaintiff and patent owner Schindler in 3 week jury trial in which jury answered all 33 questions on the verdict form in Schindler’s favor and Court entered permanent injunction against Otis. Previously represented Schindler in an appeal overturning an erroneous claim construction and obtained reversal of noninfringement ruling. See 593 F.3d 1275 (Fed. Cir. 2010). After remand, successfully defeated Otis’s renewed motion for summary judgment of noninfringement, along with all other related motions. See 2010 U.S. Dist. LEXIS 110313 (S.D.N.Y. Oct. 6, 2010).

MarketLinx, Inc. v. Industry Access, Inc. and Instanet Solutions, 11-cv-00562 (D. Del. 2011).

Counsel for plaintiff and patent owner MarketLinx in patent infringement suit involving a computer system for performing real estate transactions over a computer network. Obtained settlement of the case on a confidential basis prior to trial.

2-Way Computing, Inc. v. Sprint Nextel Corp. et al., 11-cv-00012 (D. Nev. 2011).

Counsel for plaintiff and patent owner 2-Way Computing in a patent infringement suit involving two-way audio communications over a computer network. The case settled on a confidential basis prior to trial.

Schindler Elevator Corp. v. Otis Elevator Co., 2009–1146 (Fed. Cir. 2010).

Represented Schindler in an appeal overturning an erroneous claim construction and obtained reversal of noninfringement ruling. See 593 F.3d 1275 (Fed. Cir. 2010). After remand, successfully defeated Otis’s renewed motion for summary judgment of noninfringement, along with all other related motions. See 2010 U.S. Dist. LEXIS 110313 (S.D.N.Y. Oct. 6, 2010).

Digital Reg of Texas, LLC v. Siemens Product Lifecycle Management Software, Inc., 6-15-cv-00742 (E.D.TX 2015)

Digital Reg of Texas, LLC v. Texas Instruments Incorporated, 6-15-cv-00744 (E.D.TX 2015)

Telecommunication Systems, Inc. v. Cassidian Communications, Inc. et al.¸02-14-cv-01103 (E.D. Tex. 2014).

Counsel for defendants Cassidian Communications, Inc. and Airbus DS Communications, Inc. in patent infringement action relating to Enhanced E911 communication networks. Obtained settlement of the case on a confidential basis prior to trial.

SoftVault Systems, Inc. v. Dassault Systemes SolidWorks Corp., 05-14-cv-03221 (N.D. CA 2014).

Counsel for defendant Dassault Systemes SolidWorks in patent infringement action relating to embedded, automated, component-level control of computer systems and other complex systems. Obtained settlement of the case on a confidential basis prior to trial.

In re Dominion Dealer Solutions, LLC, CAFC-14-0109 (Fed. Cir. 2013).

Counsel for patent owner AutoAlert, Inc. Successfully defeated petitions to institute inter partes reviews of five AutoAlert patents, after which Dominion sought mandamus relief from the United States Court of Appeals for the Federal Circuit. Successfully defeated petition for writ of mandamus seeking to vacate decision of the Director of the Patent and Trademark Office (PTO) denying petitions for inter partes review and to order the Director of the PTO to institute inter partes reviews for all five patents. See 749 F.3d 1379 (Fed. Cir. 2014).

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc. (IPR2013-00220; IPR2013-00222; IPR2013-00223; IPR2013-00224; IPR2013-00225).

Counsel for patent owner AutoAlert in five inter partes review proceedings challenging patentability of AutoAlert’s patents involving systems and methods for assessing and managing automotive financial transactions. Successfully opposed petitions for inter partes review, resulting in PTAB denials of all five petitions and decisions declining to institute trial.

Uniloc Luxembourg S.A., et al. v. Rosetta Stone Ltd., 12-cv-00230 (E.D. Tex. 2012).

Counsel for defendant Rosetta Stone in patent infringement action relating to method and system for prevention of piracy of a given software via a communications network. Obtained settlement of the case on a confidential basis prior to trial.

Computer Software Protection LLC v. Autodesk, Inc., 12-cv-00451 (D. Del. 2012).

Counsel for defendant Computer Software Protection in patent infringement action relating to system for controlling use of licensed software. Obtained settlement of the case on a confidential basis prior to trial.

GPS Industries LLC v. DECA International Corp., 12-cv-00387 (W.D. Tex. 2012).

Counsel for defendant Deca in patent infringement action relating to personal DGPS golf course cartographer and navigator. Obtained settlement of the case on a confidential basis prior to trial.

Industry Access, Inc. v. CoreLogic, Inc. et al., 11-cv-00473 (C.D. Cal. 2011).

Counsel for defendant CoreLogic in patent infringement suit involving a computer system and method for network interchange of data and information related to real estate transactions. Obtained settlement of the case on a confidential basis prior to trial.

SkyHawke Technologies, LLC v. Deca International Corp., 10-cv-00708 (S.D. Miss. 2010).

Counsel for defendant Deca in patent infringement action relating to personal DGPS golf course cartographer and navigator. Successfully obtained a stay of the case pending inter partes and ex parte reexaminations of the patents-in-suit. Successfully got a transfer to the Central District of California based on a motion for improper venue.

Toshiba Corporation v. Wistron Corporation, Investigation No. 337-TA-705 (U.S. I.T.C. 2010).

Counsel for defendant Toshiba in ITC investigation (and a parallel district court action) involving patents on computer hardware and software features. Just before trial and after defeating each summary judgment motion brought by Wistron, the case settled with Wistron paying for a license under Toshiba’s patents.

Linex Techs., Inc. v. Belkin Int'l, Inc. 2:07-cv-222 (E.D. Tex. 2008).

Counsel for defendant Toshiba in patent infringement lawsuit involving patent asserted by Linex against multiple defendants related to a system and method for transmitting a plurality of spread-spectrum signals, radiated by a plurality of antennas, over a communications channel having fading. Successfully obtained a favorable ruling on inadequacy of Plaintiff’s infringement contentions. See 628 F. Supp. 2d 703, 712 (E.D.Tex. 2008). Obtained settlement of the case on a confidential basis prior to trial.

Camp Scandinavia AB v. Trulife, Inc. 5:07-cv-14925 (E.D. Mich. 2007).

Counsel for plaintiff and patent owner Trulife in patent infringement lawsuit involving patent related to an ankle foot orthotic product. Successfully defeated Plaintiff’s motions for summary judgment of infringement and validity. See No. 07–14925, 2009 WL 3818187 (E.D. Mich. 2009). Obtained settlement of the case on a confidential basis just before trial.

SynQor, Inc. v. Artesyn Technologies, Inc. et al. 2:07-cv-00497 (E.D. Tex. 2007).

Counsel for defendant Cherokee in patent infringement action asserted by SynQor against multiple defendants involving three patents related to bus convertors and non-isolated point of load convertors used in intermediate bus architectures.

Kathrein-Werke KG v. Radiacion Y Microondas S.A., et al. 1:07-cv-02921 (N.D. Ill. 2007).

Counsel for defendant RYMSA in patent infringement action relating to high-frequency phase shifter units having a pivotable tapping element. Obtained denial of plaintiff’s motion for summary judgment of no inequitable conduct. See 2011 U.S. Dist. LEXIS 113778 (N.D. Ill. 2011). Obtained settlement of the case on a confidential basis prior to trial.

Awards & Honors

Recipient of the 2019 Federal Circuit Bar Association George Hutchinson Committee Award
Recipient of the 2018 Federal Circuit Bar Association George Hutchinson Committee Award
Named a "Southern California Rising Star" by Super Lawyers magazine for her work in intellectual property litigation (2014-2017)
Named one of the "Top Women Attorneys in Southern California" in a survey of her peers published in Los Angeles magazine (2014, 2015)

Articles

Author, “Supreme Changes for 'Single-Use' Patent Law,” Medical Product Outsourcing (January 2018)

Contributor, Federal Circuit Judges Disagree Over Contours of Section 101, Knobbe Martens Section 101 Blog (November 2016)

Contributor, Amazon Defeats Appistry's Distributed Computing Patents With Finding of Patent Ineligibility, Knobbe Martens Section 101 Blog (September 2016)

Speeches & Seminars

Moderator, “Federal Judge Patent Practice Tips and Tricks,” Howard T. Markey Inn of Court (March 2023)

Presenter, “Digital Health and Digital Therapeutics,” Howard T. Markey Inn of Court (May 2022)

Presenter, “Privilege Pitfalls for the IP Practitioner,” Howard T. Markey Inn of Court (April 2021)

Presenter, “Direct Examination Best Practices,” Howard T. Markey Inn of Court (April 2019)

Speaker, Patent Resources Group Advanced Courses: Federal Circuit Law, Ft. Lauderdale, FL (April 2017)

Speaker, Patent Resources Group Advanced Courses: Federal Circuit Law, San Antonio, TX (Oct. 2016)

Speaker, “The UPC – where are we now?” at the “Around the Tables”– A taste of hot topics in the Intellectual property, Communications and Technology Section, International Bar Association Conference (October 2017)

Speaker, “Alice: Down the Rabbit Hole” at the “Around the Tables”– A taste of hot topics in the Intellectual property, Communications and Technology Section, International Bar Association Conference (September 2016)

Speaker, “Weekly Appellate Report Podcast,” Daily Journal (June 2016)

Speaker, “Patent Local Rules,” Howard T. Markey Inn of Court (November 2015)

Panel member, “Inter Partes Review Strategy and Practice,” Howard T. Markey Inn of Court (October 2014)

Moderator, “Design Patent Litigation - The Next Frontier,” AIPLA Patent Litigation Committee Online Education Subcommittee sponsored event