Jon Gurka

Partner

Orange County

949-760-0404

jon.gurka@knobbe.com

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Overview

Experience

Recognition

Resources

Mr. Gurka has 25 years of experience as an Intellectual Property specialist with a proven record of success in Intellectual Property/Technology litigation matters.

In 2015, the Daily Journal recognized Mr. Gurka as one of the Top 75 Intellectual Property Litigators in California. He also has been recognized with numerous other awards for his litigation success on behalf of his clients including being repeatedly named one of “The World’s Leading Patent Professionals” by Intellectual Asset Magazine (IAM) in the IAM 1000 (2012-2022), an “IP Star” by Managing IP (2013-2022), and recognized by the Legal 500 for Patent Litigation (2018-2021). Client comments from recent surveys state:

“Clear and concise communicator who takes a pragmatic approach to litigation and executes well on high-level strategy.”

“Responsive and proactive, Gurka oversees patent litigation and filings with excellent results. He is very knowledgeable about the current state of patent law and a pragmatic business and strategic adviser.”

“I worked with a team from Knobbe Martens led by Jon Gurka. I felt that the support for our litigation and the protection of our brand was comprehensive. The range of resources from Knobbe Martens was excellent.”

Jon has a broad intellectual property litigation practice, having handled patent, trademark, trade dress, copyright, trade secret, unfair competition and breach of contract cases. His current practice primarily involves handling complex patent litigation cases. His other legal experience includes advising clients in due diligence matters and licensing negotiations.

His technology experience includes semiconductor processing and manufacturing, computer hardware and software systems, microprocessor control systems, electro-mechanical control systems, complex digital signal processing techniques, computer numerical control machines and systems, telecommunications, medical devices and surgical procedures, and thermodynamic systems and processes.

Mr. Gurka has significant trial experience, including serving as lead counsel on behalf of Inventio AG and Schindler Elevator Corporation against Otis Elevator Co. involving Schindler’s patented Schindler ID® elevator system. In 2014, he served as trial counsel for Masimo Corporation in a three-week jury trial against Philips Electronics North America Corp. and Philips Medizin Systeme Böblingen GmbH. Masimo obtained a $466 million verdict based on infringement of its patents covering pulse oximetry technology. The verdict was featured in The National Law Journal's "Top Verdicts of 2014" as the top intellectual property verdict and number 5 verdict overall, and was also listed as the "Top IP Award of 2014" by Law360. Mr. Gurka had a primary role at trial of handling the defense against Philips’ counterclaim patent for which Philips sought $169 million in damages. The jury rejected Philips’ infringement case on all theories and awarded zero damages.

Previously, Mr. Gurka served as trial counsel for Masimo in a five-week jury trial against a division of Tyco Healthcare. Masimo obtained a $134.5 million verdict based on infringement of its pulse oximetry patents. After post-trial motions, the court increased the award to $164 million. Mr. Gurka also served as trial counsel on behalf of Advanced Thermal Sciences, a subsidiary of B/E Aerospace, against Applied Materials, Inc. After a two-week bench trial, the court issued a ruling finding in favor of Advanced Thermal on all substantive issues.

Mr. Gurka currently serves as the Co-Chair of the firm’s Electrical Engineering/Computer Science/Consumer Electronics Litigation Practice Group and Trade Secret/Employment Mobility Litigation Practice Group.

Before joining the firm, Mr. Gurka worked as a Senior Information Management Consultant with Andersen Consulting, now Accenture, working in software application development.

Education

University of Illinois College of Law (J.D., 1996), Best overall Frederick Green Moot Court Competition, Recipient of Rickert Award for excellence in Oral Advocacy, Member of the National Moot Court Team and Moot Court Bench, magna cum laude

University of Connecticut (B.S.E.E. Electrical Engineering, 1989), Eta Kappa Nu - Electrical Engineering Honorary Society

University of Illinois College of Law

University of Connecticut

State Bar of California

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

U.S. District Court - Central District of California

U.S. District Court - Eastern District of California

U.S. District Court - Northern District of California

U.S. District Court - Southern District of California

U.S. Patent and Trademark Office

Automotive, Transportation & Power Sports

Communications Technology

Electronics & Semiconductors

Financial Services & Business Methods

Healthcare Information Technology

Medical Devices & Procedures

Software & Information Technology

Practice Areas

Copyrights

Trademarks & Brand Protection

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

Wilson Electronics, LLC (WeBoost) v. CellPhone-Mate, Inc.

Lead counsel for SureCall in patent litigation in Utah District Court in which SureCall asserted three patents covering its 5-band cellphone booster product against a competitor. The case also involved defending SureCall against 9 patents asserted by Wilson related to cellphone boosters. In late 2018, Wilson filed six IPRs challenging SureCall’s three asserted patents covering SureCall’s five-band cell phone boosters. Between March 19, 2019 and April 23, 2019, the Patent Trial and Appeal Board denied institution of all six IPRs filed by Wilson.

In the Matter of CERTAIN CELLULAR SIGNAL BOOSTERS, REPEATERS, BIDIRECTIONAL AMPLIFIERS, AND COMPONENTS THEREOF (I) 337-TA-1249 (ALJ Bullock) (U.S. International Trade Commission)

Lead counsel for SureCall in patent litigation in USITC involving 4 patents asserted by Wilson Electronics related to cellphone booster products.

In the Matter of CERTAIN CELLULAR SIGNAL BOOSTERS, REPEATERS, BIDIRECTIONAL AMPLIFIERS, AND COMPONENTS THEREOF (II) 337-TA-1250 (ALJ Cheney) (U.S. International Trade Commission)

Lead counsel for SureCall in patent litigation in USITC involving 4 patents asserted by Wilson Electronics related to cellphone booster products.

In the Matter of CERTAIN CELLULAR SIGNAL BOOSTERS, REPEATERS, BIDIRECTIONAL AMPLIFIERS, AND COMPONENTS THEREOF (III) 337-TA-1251 (ALJ Elliot) (U.S. International Trade Commission)

Lead counsel for SureCall in patent litigation in USITC involving 4 patents asserted by Wilson Electronics related to cellphone booster products. All district court and USITC litigation successfully resolved on behalf of SureCall through settlement.

Murolet LLC v. Schindler Group AG

Lead counsel for Schindler Elevator Corporation in patent litigation in Western District of Texas involving 5 patents brought by patent troll.

Schindler Elevator Corporation v. Murolet IP LLC

Lead counsel for Schindler Elevator Corporation in declaratory judgment action brought in Middle District of Pennsylvania seeking a declaration of non-infringement as to 5 patents brought by patent troll.

Advanced Cluster Systems, Inc. v. NVIDIA Corporation

Lead counsel for Advanced Cluster Systems in patent litigation in District of Delaware involving patents related to NVIDIA's graphical processing unit (gpu) products used for AI and high-performance computing.

In the Matter of Certain Obstructive Sleep Apnea Treatment Mask Systems and Components Thereof 337-TA-1136 (U.S. International Trade Commission):

Lead counsel for Fisher & Paykel Healthcare Ltd. (FPH), a leading manufacturer of patient interface devices for the treatment of sleep apnea, enforcing five patents against a competitor, ResMed, in a proceeding before the U.S. International Trade Commission (ITC). FPH asserted its patents against ResMed’s P10 nasal pillow products seeking an importation ban against ResMed’s infringing products. After months of contentious litigation, including a Markman hearing in early February, 2019, the parties reached a global settlement later that month.

Masimo Corp. v. Philips Electronics North America Corp et al.:

Represented Masimo in a three-week jury trial involving multiple patents on pulse oximeter medical devices. Obtained a $466 million verdict based on infringement of Masimo’s patents covering Masimo’s pioneering read-through-motion pulse oximetry technology. The verdict is the largest IP verdict of 2014 through October. Mr. Gurka had a primary role at trial of handling the defense against Philips’ counterclaim patent for which Philips sought $169 million in damages. The jury rejected Philips’ infringement case on all theories and awarded zero damages.

Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. and Mindray DS USA:

Successfully represented Masimo in complex patent litigation in California involving numerous patents on pulse oximetry technology.

Schindler Elevator Corp. and Inventio AG v. Otis Elevator Co.:

Lead trial counsel for Schindler and Inventio involving Schindler’s patented Schindler ID® elevator system. After a two-week jury trial, the jury answered all 33 questions in Schindler’s favor. Previously represented Schindler in a successful 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’ 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). On second appeal, Federal Circuit invalidated the patent for obviousness. No. 2011-1615 (Fed. Cir. 2012).

Advanced Thermal Sciences v. Applied Materials, Inc.:

Trial counsel for plaintiff in two-week bench trial involving thermal heating and cooling of semiconductor equipment. Court ruled in favor of Advanced Thermal on all substantive issues. See 2010 WL 2015236 (C.D.Cal.)

Toshiba Corp. and Toshiba America Information Systems:

Represented Toshiba in patent litigation in various jurisdictions, including an action before the U.S.I.T.C. against Wistron Corp. Recently obtained a consent summary judgment after favorable claim construction against a patent troll. See 2009 WL 2243126 (E.D. Tex. 2009).

Fisher & Paykel Appliances v. LG Electronics:

Represented Fisher & Paykel in patent infringement suit in N.D. Illinois involving direct drive washing machines.

Kruse Technology Partnership v. General Motors, Isuzu, and Caterpillar:

Represented plaintiff in patent litigation in C.D. California over diesel engine combustion technology.

Broadcom Corp. v. BroadVoice, Inc.:

Represented Broadcom in trademark infringement suit and obtained settlement through litigation.

Mallinckrodt, Inc. v. Masimo Corp:

Represented Masimo in a five and a half week jury trial involving multiple patents on pulse oximeter medical devices and obtained a $164 million damage award. Claim construction ruling at 254 F. Supp. 2d 1140; summary judgment rulings at 292 F. Supp. 2d 1201 (C.D. Cal. 2003); 300 F. Supp. 2d 923 (C.D. Cal. 2004).

Strikeforce Technologies, Inc. v. SecureAuth Corporation:

Lead counsel for SecureAuth in a patent litigation suit involving three patents asserted against SecureAuth. Successfully brought a motion to dismiss under 35 U.S.C. § 101 that invalidated all 43 asserted claims as directed to an unpatentable abstract idea. The Court ordered a dismissal with prejudice as to StrikeForce’s three asserted patents. (C.D. Cal. 2017) In February 2019, the Federal Circuit affirmed SecureAuth's judgment of invalidty on all of the asserted claims.

Rexel USA v. Main Electric Supply Co.:

Plaintiff Rexel USA sued our client Main Electric, along with 7 individual defendants that were recently hired by Main Electric, for misappropriation of trade secrets and eight other related claims in federal court. Rexel, a much larger company, sought an immediate TRO that would have prevented Main and its employees from opening their new Phoenix branch. Mr. Gurka argued for Main Electric at the TRO hearing and the Court denied Rexel's TRO, thereby providing a decisive victory over Rexel's vindictive lawsuit. Then, in less than 24 hours, Rexel dismissed their lawsuit in its entirety. Rexel had also threatened to bring a similar suit against another individual hired by Main Electric in Las Vegas.

SkyHawke Technologies, LLC v. Deca International Corp. and Deca System Inc.:

Lead counsel for Deca Int'l and Deca Systems in a patent litigation suit involving two patents on GPS-enabled golf range finders. Based on the Supreme Court's recent decision in TC Heartland affecting patent venue, Deca Int'l successfully filed a motion to dismiss for improper venue. The district court initially denied the motion, but after filing a Petition for Writ of Mandamus with the Court of Appeals for the Federal Circuit, Deca successfully sought reconsideration. On January 30, 2018, the Court transferred this long-standing case to the Central District of California.

C-Suite Media, Inc. v. C-Suite Network; C-Suite Holdings, Inc.; C-Suite Holdings, LLC; C-Suite Investor Counsel, LLC; Jeffrey Hayzlett; Thomas White; and Karl Post:

As lead counsel, represented the defendants in a trademark infringement suit involving defendants' marks and slogans as used in their C-Level executive services. After successfully moving to dismiss some of the causes of action and defendants, the matter was resolved through settlement and dismissed.

Flexera Software LLC:

Currently representing Flexera in various intellectual property matters regarding their product lines, including advising Flexera on matters involving non-practicing entities asserting patents against Flexera customers. Recently, Mr. Gurka successfully resolved a breach of contract, breach of loyalty and conversion case involving a former employee's theft of highly-valuable computer files containing Flexera's confidential and proprietary information. Flexera obtained an evidence preservation order, temporary restraining order and preliminary injunction. The matter was resolved through settlement and dismissed.

Digital Stream IP, LLC v. iHeartMedia, Inc. | Digital Stream IP, LLC v. CBS Radio, Inc.:

As lead counsel, 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.

SoftVault Systems, Inc. v. Dassault Systemes Solidworks, Corp.:

Lead counsel for Dassault in patent litigation in the Northern District of California involving patents directed to computer systems. Case resolved.

Bascom Research LLC v. BroadVision, Inc.:

Lead counsel for BroadVision in patent litigation suit involving multiple patents asserted against BroadVision’s ClearVale enterprise social networking suite. Case resolved.

Awards & Honors

Mr. Gurka has received multiple awards and has been honored both nationally and internationally for his legal accomplishments:

Selected by peers for inclusion in the 2023 edition of The Best Lawyers in America® for his work in Intellectual Property Litigation.
Recognized as a Patent Star in Managing IP's "IP STARS" Guide for his outstanding intellectual property legal work (2013 - 2022).
Named one of the "World's Leading Patent Professionals" for litigation in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine (2012 - 2022). In recent surveys, clients have commented: “clear and concise communicator who takes a pragmatic approach to litigation and executes well on high-level strategy,” and “Responsive and proactive, Gurka oversees patent litigation and filings with excellent results. He is very knowledgeable about the current state of patent law and a pragmatic business and strategic adviser.”
Recognized by The Legal 500 "United States" for Patent Litigation (2014 - 2015, 2018 - 2021). In 2015, he was also highly recommended for having extensive experience in trade dress, unfair competition and contract breach matters.
Recognized as a “Southern California Super Lawyer” for his work in intellectual property litigation by Super Lawyers magazine (2017 - 2018)
Recognized by the Daily Journal as one of the Top 75 Intellectual Property Litigators in California in 2015.
Named as one of Southern California’s “Rising Stars” in intellectual property litigation in a survey of his peers, published in Los Angeles magazine and Super Lawyers magazine (2006 - 2007).
Named in OC Metro magazine. In its August 2009 issue, Mr. Gurka was named as one of “O.C.’s Top Lawyers” in the category of Intellectual Property Law and Copyright Infringement. In 2010 and 2011, he was again recognized as a top lawyer in the area of Copyright Infringement. In 2014 and 2015, he was named a top lawyer in the category of Intellectual Property.

American Bar Association - Intellectual Property Law Section

Co-Chair, Federal Trial Practice and Procedure Committee 601 (2004-06)

Ad Hoc Subcommittee on Jurisdiction of Federal Circuit for Immigration Appeals (2006)

ABA/IPL Task Force: Study of National Academies of Sciences Patent Reform Recommendations (2005)

ABA/IPL Patent Reform Task Force (2005)

Intellectual Property Owners Association (IPO)

American Intellectual Property Law Association (AIPLA)

Federal Circuit Bar Association

Federal Bar Association, Orange County Chapter

Board of Directors, 1999-2004

Articles

Quoted, "Micron Ruling May Spark New Wave of Venue Fights" Law360 (November 2017)

Co-Author, “Recent Trends In Inter Partes Review Estoppel,” Law360 (November 2017)

Quoted, "Federal Circuit Needed To Clear Up IPR Estoppel Divide," Law360 (March 2017)

Co-Author, “District Courts And PTAB Are Divided On IPR Estoppel,” Law360, Portfolio Media, Inc. (March 2017)

Annual supplement to Chapter 186, "Court of Appeals for the Federal Circuit" in 8 West's Federal Forms - National Courts (West Pub. 1995), contributor

Digitech Image Technologies, LLC v. General Imaging Company: Lead counsel for General Imaging in patent litigation suit involving a digital image processing system patent. Case resolved.

Credit Management Services v. Fisher & Paykel Financial Services, CDR arbitration proceeding filed in San Francisco: Represented Fisher & Paykel in challenging the jurisdiction of the arbitration panel and obtained a dismissal with prejudice of the entire arbitration.

Samsung Electronics/Samsung Telecommunications: Represented Samsung entities in patent litigation in Nevada (satellite receivers) and W.D. Texas (cell phones).

St. Clair Intellectual Property Consultants v. General Imaging Co.: Represented General Imaging in patent litigation in Delaware involving digital camera technology.

Speeches & Seminars

Speaker, OCBA Corporate Counsel Section luncheon on trade secret litigation (November 2017)

Co-presenter for "Masimo: A Patent Success Story" during ACCA Double Header Conference (July 2017)

Panelist, Webinar, “IPR Estoppel at District Courts,” Intellectual Property Owners Association (March 2017)

Panelist, Association of Corporate Counsel (ACC) In-House Counsel Conference "IP Agreements: Lessons Learned the Hard Way" (February 2017)

Speaker 2004 LSI Conference in Seattle: Calculating & Proving Patent Damages