Overview
Irfan Lateefは、豊富な経験を生かしてクライアントの目標達成を支援しています。訴訟、交渉、リスク管理、戦術的なブランド開発、テクノロジー重視型のイニシアチブ、戦略的な知的財産動員などにおいて目的達成に向け尽力しています。個人として献身的な姿勢でクライアントに関わり、クライアントが満足できる結果を得られるまでたゆまぬ努力を続けます。
主に特許関連の訴訟と紛争解決に取り組み、法廷、特許ポートフォリオ作成、規制関連の経験や、さまざまな業界でのビジネス経験をもとに戦略的なビジョンを提供しています。米国内外でクライアントの利益を護る場合には、早期解決、略式判決の申し立て、陪審員の評決、控訴など、訴訟のあらゆる段階で原告に重要な裁定をもたらし、成功を収め続けてきました。特筆すべき事例としては、医療機器メーカーであるMasimoの代理人を務めた際、Masimoの特許2件を侵害したとしてPhilipsから4億6,600万ドルを超える支払いを命じる陪審員評決を勝ち取りました。陪審員はまた、1億6,900万ドルを求めるPhilipsの侵害請求を却下しました。
彼は20年近くの経験を通じて、さまざまな複雑な技術を擁する業界で幅広くクライアントを支援し、堅牢で貴重なポートフォリオを構築してきました。エレクトロニクス、医療機器、拡張現実、AIなど広範な業界知識を有しているので新しいテクノロジー分野を素早く習得でき、その知識を適用して有意義な特許保護対策を立てられます。実務経験の範囲は、初期製品デザインから知的財産権戦略、収益化計画、そして現行の開発計画および市場進出への取り組みにまでに及びます。彼は問題解決に向けてクライアントが直面する諸問題や疑問を熟知しており、クライアントのビジネスや財政目標に適した法的な解決策を提示します。
注意深く、慎重で頼りになる人物であり、担当するクライアント、クライアントの開発した技術と独自目標に情熱を持って取り組んでいます。また業務全般にわたって生産的な関係を築くことにより、法的な助言を越えた価値をクライアントにもたらします。『Super Lawyers』誌の優秀な知的財産弁護士に選ばれ、『Intellectual Asset Management (IAM)』誌の『Patent 1000』ガイドの「世界の特許専門家リーダー」にも選ばれています。さらに、「Legal 500」にもその名前が掲載されています。さらに、東芝の代理人としてのその優れた手腕から『Daily Journal』の「カリフォルニア州の知的財産専門弁護士上位100人」にも選ばれています。
学歴
- ジョージタウン大学（法務博士号、1999年）
- ノースウエスタン大学（医用生体工学理学修士号、1996年）、Cabellフェローシップ
- イリノイ大学アーバナ・シャンペーン校（電気工学エンジニアリング理学士号、1993年）、最優秀の成績で卒業、ブロンズタブレット優等賞、Eta Kappa Nu電気工学優等生協会、Tau Beta Pi工学優等生協会
Irfan Lateef, a distinguished IP litigator with over two decades of experience, serves as the chair of the firm’s Electrical, Semiconductor & Computer Technology Litigation Committee and leads the firm’s Japan practice.
His expertise has earned him recognition among the premier IP litigators in the “World’s Leading Patent Professionals” for the Patent 1000 guide by Intellectual Asset Management (IAM) magazine and the “IAM Strategy 300: The World’s Leading IP Strategists.” He has been listed in the Legal 500, and is included among the Daily Journal’s “100 leading IP attorneys in California” for his extraordinary representation of Toshiba Corp.
Clients entrust Irfan to tackle some of their most technically complex matters due to his comprehensive understanding and experience across a spectrum of industries. His electrical engineering background gives him the ability to master diverse technologies, such as wireless communications (e.g., 5G, LTE, 802.11, Wi-Fi, Bluetooth, satellite), semiconductors, audio and video decoding technologies, consumer electronics (e.g., televisions, gaming consoles, smartphones, tablets), advanced signal processing, and digital and analog circuitry. His expertise extends to medical devices. With a master’s degree in biomedical engineering, he possesses unique insight into wearables, noninvasive patient monitoring, breath analyte monitoring, blood component separation, atrial fibrillation devices, ECG and EEG signal processing, imaging (e.g., MRI), and acoustic signal processing.
He helped longstanding client Masimo protect revolutionary patient-monitoring technology since 1999. In one trial, a jury awarded over $134 million against Masimo’s primary rival. In the second trial, Masimo asserted patents against a patient-monitoring giant in the industry, where the jury awarded Masimo over $466 million. In a third trial, the Court found that a former employee and his company misappropriated Masimo’s trade secrets. In another trial, the ITC found that certain Apple watches infringed Masimo’s patents and instituted a ban. In addition, Irfan also successfully defended Masimo against multiple claims of patent infringement.
He is an expert in representing Japanese companies in IP disputes. He has been counsel to Toshiba, Canon Medical, Furuno, Keylex, Takata, Panasonic, and others. He has a keen understanding of cultural nuances, can build consensus in evaluating risk, and maintains clear, prompt communications. He also has a beginner’s level of Japanese language proficiency.
With a litigator’s hindsight perspective to anticipate business opportunities, Irfan also advises clients in areas ranging from initial product design to IP rights tactics and monetization, to ongoing development and market penetration. He is well-versed in the challenges his clients face and the questions that must be addressed and answered, providing solutions that fit their business and financial objectives.
Irfan’s passion for his clients’ innovation and distinctive goals is evident in his meticulous, considerate, and helpful approach. He often provides value far beyond mere legal services, making him a trusted advisor to clients seeking to protect and leverage their intellectual property assets.
Education
- Georgetown University (J.D., 1999)
- Northwestern University (M.S. Biomedical Engineering, 1996), Cabell Fellow
- University of Illinois - Urbana - Champaign (B.S.E. Electrical Engineering, 1993), Graduated with highest honors and Bronze Tablet distinction, Eta Kappa Nu Electrical Engineering Honor Society, Tau Beta Pi Engineering Honor Society
Representative Matters
Masimo and Cercacor v. Apple (ITC 2024)
After a bench trial to the Judge, the ITC instituted an import ban and cease and desist order on Apple watches that were found to infringe Masimo’s patented pulse oximetry technology.
Jawbone Innovations, LLC v. Panasonic (E.D. Tex. 2023)
Representing Defendant Panasonic in a patent lawsuit involving noise cancelling technology.
Consolidated Transaction Processing LLC v. Ace Hardware (E.D. Tex. 2023)
Representing Defendant Ace Hardware in patent lawsuit involving targeted ads based on personal information.
Patent Armory v. Sound United (D.N.J. 2023)
Represented Sound United in patent lawsuit regarding phased array sound systems.
Masimo and Cercacor v. True Wearables (C.D. Cal. 2022)
Represented Masimo in a bench trial on trade secret misappropriation and related claims. The Court ruled that a former Masimo engineer misappropriated trade secrets related to Masimo’s pulse oximetry technology. The former Masimo engineer also served as Chief Technical Officer at Cercacor, a Masimo spinoff which owns certain license rights to many Masimo patents. After leaving Cercacor in 2014, he went to work at Apple and later launched his own company, True Wearables, which created a wireless, wearable pulse oximeter device. Obtained a preliminary injunction affirmed by the Federal Circuit before trial.
Reversible Connections LLC v. Toshiba (C.D. Cal) & Toshiba America Info. Sys., Inc., et al. v. Walletex Microelectronics Ltd (PTAB) 2021
Represented Toshiba in IPR finding patent on USB connector unpatentable. Obtained affirmance on appeal by Federal Circuit.
DigiMedia Tech, LLC v. JK Imaging Ltd. (C.D. Cal 2020)
Represented JK Imaging in patent lawsuit regarding camera systems with head tracking.
X-Mobile Technologies LLC v. HTC Corp. (E.D. Tex. 2017)
Represented HTC in a patent lawsuit regarding digital signal processing for speech.
U.S. Ethernet Innovations Inc. v. Acer et al. (N.D. Cal 2016)
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.
Dominion Assets LLC v. Masimo Corp. and Cercacor Laboratories, Inc. (N.D. Cal. 2016)
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 for zero money.
NeuroGrafix et al v. Toshiba America Medical Systems, Inc. et al. (D.M.A. 2015)
Represented Toshiba America Medical Systems (now Canon Medical) in a multi-district patent lawsuit regarding image neurography and diffusion anisotropy imaging.
American Vehicular Sciences LLC v. Toyota Motor Corporation (and related cases) (C.D. Cal and E.D. Mi. 2016)
Represented airbag manufacturer Takata (now Joyson Safety Systems) 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. Obtained affirmance on appeal by Federal Circuit.
Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. (C.D. Cal. 2015)
Successfully struck Mindray’s tortious interference counterclaim and obtained dismissal of numerous antitrust and inequitable conduct counterclaims. Defeated numerous Mindray motions.
Masimo Corp. v. Philips Electronics North America Corp et al. (D. Del. 2014)
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 jury rejected Philips’ infringement case on all theories and awarded zero damages.
Bierman v. Toshiba Corp. (Marin County Superior Court 2012)
Represented Toshiba in its defense of a trade secret misappropriation action in state court involving alleged software inventions in which $100 million in damages was sought and successfully achieved summary judgment based on the statute of limitations. Convinced the court that Bierman was constructively aware of the product features alleged to be the misappropriation because of widespread industry publications available beginning in 1988 and showed numerous inconsistencies in Bierman’s story. The summary judgment order brought a successful end to a four-year litigation.
Futaba Industrial Co., LTD. v. Keylex Corporation (E.D. Mi. 2011)
Represented Keylex (a Mazda supplier) in a patent lawsuit regarding fuel inlets in cars. Parties were also involved in simultaneous patent litigation in Japan.
Toshiba Corporation v. Wistron Corporation (ITC 2010)
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.
Guardian Media Technologies, Ltd. v. Toshiba America Consumer Products, L.L.C. (C.D. Cal. 2009)
Represented defendant Toshiba charged with infringement of patents involving methods for censoring video programs in two district courts. Prior to this lawsuit, a significant segment of the industry had taken a license under the plaintiff’s patent. But, after adopting Toshiba’s proposed claim construction, and prior to any substantial discovery, two district courts granted and entered judgment of noninfringement on each patent, which prevented Toshiba from paying tens of millions of dollars in royalties sought by the plaintiff.
02 Micro International Limited v. Microsemi Corporation (E.D. Tex. 2007)
Represented Microsemi in patent lawsuit regarding synchronous zero voltage switching resonant topology.
Commonwealth Scientific and Industrial Research Organisation v. Toshiba America Information Systems, Inc. et al. (E.D. Tex 2006)
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.
Mallinckrodt, Inc. v. Masimo Corp. (C.D. Cal. 1999-2004)
Represented Masimo in patent infringement case related to digital signal processing in medical devices. The jury found that Masimo had not infringed one patent and found that the opposing side infringed four of Masimo’s patents and awarded $134.5M damages in favor of Masimo. Certain other patents asserted against Masimo were dismissed on summary judgment. The verdict was upheld on appeal and allowed Masimo to go public in an IPO and dominate the market.
Recognition
Awards & Honors
Irfan has received multiple awards for his legal accomplishments:
- Recognized for outstanding work in patent law in the 2024 edition of the Intellectual Asset Management (IAM) “Patent 1000 Guide” for Litigation (2024)
- Named in 2024 Southern California Super Lawyers for the distinction honors outstanding lawyers based on peer nominations and independent research
- Named among 2024 Los Angeles Times Business of Law Visionaries
- Recognized as an Honoree in the Lawyers of Color 2022 Hot List
- Named to IAM Strategy 300: The World’s Leading IP Strategists (2021-2024) which “identifies the individuals who are leading the way in the development and implementation of strategies that maximize the value of IP portfolios”
- Named one of the “World’s Leading Patent Professionals” for litigation in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine (2013-2023). In the 2018 guide, Irfan was described as “one of the most experienced trial lawyers in the ITC”.
- Recognized as an Honoree in the Lawyers of Color Nation’s Best 2020 List
- Selected for inclusion in the “Southern California Super Lawyers” list for his work in intellectual property litigation from 2010-2021 by Super Lawyers magazine
- Recognized by Legal 500 for Patent Litigation in 2013
- Recognized by the Daily Journal among the 100 leading intellectual property (IP) attorneys in California for 2011. He was also included in the 75 Leading Intellectual Property Litigators list, recognized for his extraordinary representation of Toshiba Corp., a pioneer in notebook computer technology
Affilliations
- International Intellectual Property Law Association
- International Bar Association
News & Insights
Articles
Co-author, “Using Injunctions to Protect MedTech IP,” MedTech Strategist (September 2024).
Co-author, “Disclosure statements: a closer look at the identity of real plaintiffs,” The Daily Journal (January 2023)
Co-author, “A Long-Term Approach to Associate Development,” The Recorder (September 2022)
Quoted in, “Patent Filings, Litigation May Shift in Economic Crisis,” an article published by Bloomberg Law (April 2020)
Quoted in, “Nintendo’s $10 Million Escape a Cautionary Patent Law Tale,” an article published by Bloomberg Law (February 2020)
“The U.S. Supreme Court on Copyright Registration Requirement for Commencing an Infringement Suit,” Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 64 No. 11 (November 2019) (in Japanese)
“Issue-Preclusive Effect of Agency Decisions in the Patent Context,” The Daily Journal (June 2019)
“Lower Standards for Proving Induced Infringement and Other Favorable Rulings for Patent Holders – Sanofi v. Watson Labs. Inc. CAFC Case -,” Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 63 No. 7 (July 2018)
“Federal Circuit Report | IP Litigator Issue May/June 2018, Volume 24 Number 3,” IP Litigator (May/June 2018)
Quoted in, “Inter Partes Patent Challenges Are Constitutional, US Supreme Court Rules,” Medtech Insight (April 2018)
Quoted in, “A Post-IPR World Would Hold Patent Risks and Benefits For Medtech Companies,” Medtech Insight (March 2018)
Quoted in, “‘Alice’ In Patent Land: Finding Patentable Digital Health Innovations Is No Easy Task,” Medtech Insight (February 2018)
“Intellectual Property Can Make or Break the Best Ideas,” RTC Magazine (March 2016)
“The U.S. Supreme Court on Induced Infringement and Its Impact on Patent Strategy,” Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 61 No. 2 (February 2016)
“The Impact of Alice on Patent Eligible Subject Matter – With a Focus on U.S. District Courts’ and Federal Circuit’s Decisions relating to Business Methods and Computer Software-Related Inventions on Decisions,” Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 60 No. 11 (November 2015)
“Attack on software patents in the United States,” Intellectual Property and Entertainment Law, Newsletter of the International Bar Association Legal Practice Division, Vol. 7 Issue 1 (September 2015).
“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)
“Ten Steps in Analyzing Patent Infringement,” ExecSense, E-book available on Amazon.com (February 6, 2013)
“The Heightened Domestic-Industry Standard for NPEs”, Intellectual Property Litigation Newsletter, American Bar Association Section of Litigation, Summer 2012, Vol. 23 No. 4 (September 2012)
“What Medical Device Companies Need to Know about Intellectual Property”, Medical Electronic Device Solutions (MEDS) Magazine (August 2012)
“Be careful what you write: attorney-client privilege for international businesses,” International Litigation News, Newsletter of the International Bar Association Legal Practice Division (May 2012)
“The Supreme Court reigns in states’ aggressive assertion of personal jurisdiction,” North American Regional Forum News, Newsletter of the International Bar Association Legal Practice Division (May 2012)
“An Overview of U.S. Patent Litigation for Canadians,” 28 Canadian Intellectual Property Review 1, 2012
“The U.S. Patent Litigation Process,” IP Osgoode (December 2010)
“Parent/Subsidiary Liability Issues in Patent Litigation,” ABA Intellectual Property Litigation, Vol. 21, No. 2 (Winter 2010)
“The Supreme Court Takes on Patent Law,” SideBar, Federal Litigation Section of the Federal Bar Association (Summer 2007)
Co-authored brief for the AIPLA as amicus curiae in Microsoft Corp. v. AT&T Corp. before the Supreme Court of the United States (2007)
Speeches & Seminars
“Common claim construction issues in U.S. litigation“, at AIPLA IP in Japan Mid-Winter Conference, Houston, TX (February 2024)
“Client Counseling: Trade Secrets for Patent Prosecutors”, 24th Annual Berkeley-Stanford Advanced Patent Law Institute, Berkeley, CA (December 2023)
“Trends in Patent Litigation in the U.S.”, AIPPI / JAPAN US Patent Seminar, Tokyo, Japan (October 2023)
“IP Trends in Medical Devices”, MedTech Strategist Innovation Summit, San Francisco, CA with Shannon Lam (November 2023)
“Director Review in IPRs”, AIPLA Annual Conference, Washington, DC (October 2023)
“A Litigator’s View of Claim Drafting”, 23rd Annual Berkeley-Stanford Advanced Patent Law Institute, Berkeley, CA (December 2022)
IP Tips for Medical Device Diligence”, MedTech Strategist Innovation Summit, San Francisco, CA with Paul Conover and Gerard vonHoffmann (November 2022)
“Strategies Based On Recent Patent Dispute Cases (Litigation, ITC and IPR)”, AIPPI / JAPAN US Patent Seminar, Tokyo, Japan (November 2022)
“How Patent Litigation at the ITC is Different & Impact for Japanese Companies”, Fronteo webinar (December 2021)
“Upcoming Changes in US Patent Law”, AIPPI / JAPAN US Patent Seminar, Tokyo, Japan (November 2021)
“Patent Law Update for Medical Device Companies 2021”, MedTech Strategist Innovation Summit, San Francisco, CA with Paul Conover and Curtis Huffmire (November 2021)
Lecturer on “Patent Enforcement” for the “Understanding Intellectual Property Law for the High Technology Industry” course offered by University of California at Irvine.
“COVID Impacts on Patent-Related Activites”, Japan Intellectual Property Association (JIPA) AIPLA IP Practice in Japan Committee (February 2021)
“Discretionary Denials in IPRs”, AIPPI / JAPAN US Patent Seminar, Tokyo, Japan (October 2020)
Panelist on “Non-Traditional VC, Family Office, Angel & CrowdSourcing in 2020” (February 2020)
Moderator on Life Science Intelligence Emerging Medtech Summit 2020 (February 2020)
“Strategy for Success in Participatory Review”, AIPPI / JAPAN US Patent Seminar, Tokyo, Japan (October 2019)
“Patent Law Update for Medical Device Companies 2018,” MedTech Strategist Innovation Summit, San Francisco, CA (November 2018)
“What Are the USPTO’s Patent Plans for Fiscal Year 2017?” 29th Global Legal & IP ConfEx, Dubai, UAE (September 2016)
“Alice’s Effect on US Patent Litigation,” IIPLA Annual Conference, Dubai, UAE (January 2015)
“Anti-NPE Laws – How recent Case Law, the FTC NPE survey, and the newly proposed Innovation Act affect the Enforcement & Valuation of Patents,” Orange County Patent Law Association (OCPLA) and AIPLA event, Irvine, CA (January 2014)
“Intellectual Property Seminar for Executives and IP Managers,” Tokyo, Japan (November 2013)
“eDiscovery and IP Litigation,” Seoul, South Korea (November 2013)
“Strategies to Handle U.S. Litigations,” Hsinchu and Taipei, Taiwan (September 2013)
“Recent Trends in U.S. Patent Litigation – Litigation involving Standard Essential Patents (SEP) – from Non-Practicing Entities to Practicing Entities,” Tokyo, Japan (April 2013)
“Strategies Relating to Preissuance Submission, Post-grant Review and Inter Partes Review,” Benrishi Kai (Patent Attorney Association of Japan), Tokyo, Japan (December 2012)
“Strategies for Taking Advantage of the America Invents Act, Resolving the Tension Between Patentable Subject Matter & Joint Infringement,” Tokyo, Japan (October 2012)
“Successful Medical Device Development,” Medical Electronic Device Solutions Conference, San Diego, CA (August 2012)
“Developments in ITC Litigation – An Overview For Japanese Companies,” UBIC hosted seminar, Tokyo, Japan (April 2012)