Overview
Some of the world’s most innovative software, e-commerce and financial services companies rely upon our software and information technology group for targeted, timely IP law services.
We assist start-up companies in developing procedures and strategies for protecting their innovations. We provide domestic and international patent prosecution, counsel regarding strategic development of products and indemnification issues, extensive licensing services (both outbound and inbound), and comprehensive programs for pre-litigation, licensing and litigation for enforcement purposes. We also defend our clients in patent infringement litigation brought by competitors and non-practicing entities.
Over 45 of our attorneys and scientists hold degrees in Computer Science and other computer-related areas, with several having worked as examiners at the USPTO in the data processing and business methods areas. Given the rapid pace of change within our industry, we work closely with our clients to help them quickly identify and prioritize potentially patentable inventions, and advise them regarding such important topics as divided infringement, extraterritorial infringement and portfolio management.
Representative Experience
StrikeForce Technoloiges, Inc. v. SecureAuth Corporation
Knobbe Martens successfully defended SecureAuth in a patent infringement case where StrikeForce asserted three patents. StrikeForce previously asserted its patents against numerous defendants in Delaware, Massachusetts, New Jersey, and Virginia. SecureAuth was the last defendant to be sued on the patents, but the first to prevail—in a complete victory that the Federal Circuit affirmed in February, 2019. Knobbe Martens first prevailed on an early motion to dismiss StrikeForce’s complaint on the grounds that the three asserted patents were invalid under 35 U.S.C. § 101. The district court granted SecureAuth’s motion and invalidated all 43 asserted claims, ending the litigation and allowing SecureAuth to stay focused on delivering value to its customers. StrikeForce appealed the district court’s decision to the Federal Circuit. On appeal, the Federal Circuit affirmed SecureAuth’s judgment of invalidity on all of the asserted claims.
PrinterOn Inc. v. BreezyPrint Corp.
We achieved a complete defense victory of summary judgment of non-infringement for client BreezyPrint in a lawsuit brought by its competitor PrinterOn. The case, filed in the Southern District of Texas, concerned four patents related to printing software. In defending Breezy, we filed early motions for summary judgment shortly after fact discovery began and won on the construction of all twelve disputed patent claim terms, resulting in the grant of case-dispositive summary judgment.
Knobbe attorney, Alan Laquer, explained to Judge Rosenthal at the summary judgment hearing that PrinterOn’s patents do not broadly cover cloud computing technology. The Judge agreed, noting that the patents claim “antiquated technology.” The Judge compared PrinterOn’s lawsuit to an argument that a patent on “the oil wick lamp would make infringing the light bulb,” and noted that PrinterOn’s allegations were therefore “troubling on a policy level.”
Toshiba Corp. v. Wistron Corp.
We represented Toshiba in an ITC investigation (and a parallel district court action) involving patents on computer hardware and software features. We prosecuted the ITC investigation through discovery, with depositions taking place in Japan, Taiwan, and US and Korea. 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.
Wistron also brought counterclaims on power management patents. We successfully obtained a dismissal of the claims on these patents for lack of standing.
Cabinet Vision v. Cabnetware
We represented the defendant in post-trial proceedings in a patent infringement action relating to computer-aided design software. Initially, we obtained an injunction against patent owner making misrepresentations to potential customers regarding the anticipated outcome of a lawsuit. Later, we successfully obtained judgment as a matter of law overturning an unfavorable jury verdict on invalidity, which was affirmed on appeal.
Mercury Interactive
In 2006, Hewlett Packard acquired our client Mercury Interactive for $4.5 billion. We handled substantially all of the company’s patent matters, from the company’s inception to its acquisition.