Overview
A highly regarded and accomplished leader with a record of un-paralleled success in developing and executing the strategic vision of technology companies, clients value Steve Jensen as a “best in class” technology attorney, technician and thought innovator. Tangible business experience and technical aptitude is at the cornerstone of Steve’s success. His multi-dimensional understanding of sophisticated technologies and time spent in-house managing a major business unit allow him to bypass the often difficult and expensive process of getting up to speed on client products and commercial operations.
Medical devices and instrumentation, semiconductors, computer hardware and software, complex digital signal processing, telecommunications, wireless communications, antennas, video and audio processing, optics, control systems and solid state cooling and heating represent only a sampling of the technologies with which Steve is fluent. Couple his understanding of even the most sophisticated technologies with his extensive legal and business acumen, and you have an attorney who is regularly called upon to manage diverse legal matters that are rooted in cutting-edge innovation.
With nearly three decades of experience, Steve’s practice includes patent disputes and trade secrets, regulatory challenges such as FDA-related matters, product liability defense where technology is a core issue, Qui Tam (False Claims Act) investigations and defense, breach of contract and antitrust claims, and public utility disputes. Steve helps companies with litigation, strategic development, competitive analysis and risk management, negotiation, licensing, patent infringement and validity analysis, financings, acquisitions, joint development and divestitures, as well as other tactical brand development and technology-focused initiatives. He uses his technical know-how to help clients navigate even the most challenging commercial and legal landscapes while supporting tangible financial objectives.
Steve’s leadership of firm trial teams is truly extensive. Notably, Steve helped his longstanding client Masimo protect revolutionary patient-monitoring technology. In one trial, a jury awarded over $134 million against Masimo’s primary rival. This victory helped propel Masimo to market success with revolutionary products, significant recurring royalties, and a successful public offering. In the second trial, Steve and his trial team asserted Masimo’s patents against a patient-monitoring giant in the industry, where the jury awarded Masimo over $466 million. In addition, Steve and his team also successfully defended Masimo against multiple claims of patent infringement.
Steve’s in-house, hands-on and practical business experience includes working for Hughes Aircraft in wireless and radar systems, and serving as acting Senior Vice President of OEM Business, Business Development and General Counsel for Masimo Corporation. In that capacity, Steve directly managed Masimo’s OEM business. As a result, Steve takes a business approach to legal counsel and strategy because he worked as senior management who negotiated and closed a variety of transactions and managed operations for those transactions, all in addition to his role as general counsel.
Steve served on the Board of Directors of Sedline, Inc. (non-invasive brain function monitoring), and currently serves on the Board of Directors of Cercacor (blood constituent monitoring) and the Board of Directors of the Masimo Foundation for Ethics, Innovation and Competition in Healthcare (charitable foundation promoting patient safety and advanced healthcare).
Education
- University of California - Los Angeles (UCLA) (J.D., 1990), Order of the Coif
- Brigham Young University (B.S. Electrical Engineering, 1987), magna cum laude, Emphasis in computer architecture, Minor in Mathematics, Phi Kappa Phi Honorary Society
Representative Matters
Medtronic PLC v. Masimo Corp. (IPR2016-00057) (2016).
Represented Masimo in a pivotal IPR requested by Medtronic of Masimo’s U.S. Patent relating to medical signal processing. Obtained a denial to institute the IPR on the merits, preserving Masimo’s rights in this patent.
Medtronic PLC v. Masimo Corp. (IPR2016-00058) (2016).
Represented Masimo in this second IPR requested by Medtronic PLC of Masimo’s U.S. Patent relating to medical signal processing. Obtained a denial to institute this IPR on the merits.
Gentherm Canada Ltd. v. IGB Automotive Ltd. (CV-11536-AJT-APP) (E.D. Mich 2016).
Represented Gentherm in patent litigation against its competitor IGB Automotive for infringement of Gentherm’s important U.S. Patents. After the litigation started, IGB pursued Inter Partes Review with the patent office of many of the patents-in-suit. Preserved an important patent portfolio for Gentherm.
Select Comfort Corporation v. Gentherm, Inc. (CV-2314) (D. Minn 2015).
Represented Gentherm in Declaratory Judgment action attacking Gentherm’s important U.S. Patents. Obtained stipulation to dismiss all claims and counterclaims.
IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00667) (2015).
Represented Gentherm in IPR requested by IGB of all six claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. Prevailed in showing that all six claims were patentable over the asserted prior art.
IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00668) (2015).
Represented Gentherm in IPR requested by IGB of claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. The Board instituted IPR on all but one of the challenged claims. The Board ultimately rejected IGB’s challenge as to seven of the claims, agreeing with Gentherm that the asserted prior art did not render the claims unpatentable.
Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. (12-cv-02206) (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.
IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00666) (2014).
Represented Gentherm. IGB requested Inter Partes Review (“IPR”) of all twelve claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. Obtained denial of review of many claims, showing that IGB had failed to show a reasonable likelihood of proving unpatentability.
IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00663) (2014).
Represented Gentherm in IPR requested by IGB of 17 claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. Obtained denial to institute an IPR on any of the challenged claims.
IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00664) (2014).
Represented Gentherm in IPR requested by IGB of 19 claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. Although the Board instituted review of eight of the challenged claims, Mr. Jensen prevailed in obtaining denial to institute IPR on the remaining eleven challenged claims.
Dominion Assets LLC v. Masimo Corporation and Cercacor Laboratories, Inc. (12-cv-02773-BLF, 2014 WL 2937058) (N.D. Cal 2014).
Represented Masimo and Cercacor in patent infringement action brought by Dominion Assets for infringement of U.S. Patents relating to determination of blood analytes. Obtained dismissal of case for lack of standing.
U.S. Ex. Rel Ruhe, Serwitz, and Catala v. Masimo Corporation (2:10-cv-08169-CJC-VBK, 977 F. Supp.2d 981) (C.D. Cal 2013).
Defended Masimo in False Claim Act (Qui Tam) “whistleblower” case brought by former employees of Masimo. Obtained Summary Judgment in Masimo’s favor. Case affirmed on appeal.
Hygia Health Services v. Masimo Corporation (N.D. Ala 2009).
Represented Masimo in declaratory judgment case involving patent, trademark, and unfair competition disputes relating to reprocessing of Masimo’s original medical products. Obtained favorable settlement and permanent injunction.
Stewart Land Group LLC v. First American Title Insurance Company (2:08-cv-00476-DB) (2008).
Defended First American Title in patent infringement, breach of contract and misappropriation of trade secrets case relating to orthorectified aerial survey images. Obtained dismissal.
Ingersoll Machine Tools v. CG Tech (3:06-cv-50212) (N.D. Ill 2007).
Defended CG Tech in dispute involving claims of federal unfair competition, Copyright infringement, misappropriation of trade secret, deceptive trade practices and civil conspiracy relating to machine tool simulation software. Case dismissed with prejudice.
Credit Management Services v. Fisher & Paykel Financial Services, (ICDR Arbitration 2007). ICDR arbitration in San Francisco.
Defended Fisher & Paykel Financial Services in intellectual property dispute regarding credit management software. Obtained a dismissal of the entire arbitration.
HLP v. PetArk, (CV-05-0893) (C. D. Cal 2006).
Represented Plaintiff in Copyright Infringement and Unfair Competition case relating to pet shelter and pet adoption management software (including payment processing), and related internet systems. Obtained preliminary injunction and subsequent favorable settlement.
Intelligent Computer Solutions, Inc. v. Voom Technologies, Inc., (CV-05-5168) (C. D. Cal 2005).
Represented defendant in patent infringement action on patent directed to forensic computer storage duplication. Obtained favorable claim construction and tentative ruling of no infringement on motion for summary judgment. Case settled.
IP3 Networks, Inc. v. Nomadix, Inc., (04-CV-1485) (S.D. Cal 2004).
Represented patent owner in declaratory judgment action on patents directed to software and systems for hosting Internet hot spots. Achieved favorable settlement.
Nellcor Puritan Bennett, Inc. v. Masimo Corp., 300 F.Supp.2d 923 (C.D. Cal. 2004).
Established that medical device client did not infringe signal-processing patent on pulse oximeters.
Mallinckrodt, Inc. v. Masimo Corp., 254 F.Supp.2d 1140, 292 F.Supp.2d 1201, and 293 F.Supp.2d 1102 (C.D. Cal. 2003).
Represented Masimo in patent infringement case related to digital signal processing in medical devices. Jury found that Masimo had not infringed one patent and found that 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.
Lemelson Medical, Education & Research Foundation vs. RF Micro Devices et al. (CV-01-1440-PHX-ROS (D. Az, 2001).
Defended RF Micro Devices in patent infringement case involving multiple patents in the area of machine vision and bar codes. Obtained favorable settlement.
RAS Holding Corp. et al v. SurgiLight, Inc., (M.D. Fla 2000).
Represented defendant SurgiLight in patent infringement action involving method of treatment of presbyopia. Favorably settled
Faroudja Laboratories v. Dwin Electronics, Inc., 76 F.Supp.2d 999 (N.D. Cal 1999).
Represented Plaintiff in patent infringement suit relating to video processing. Obtained favorable claim construction ruling and defeated defendants summary judgment motion of non-infringement.
Operator Services Company v. Gail F. Stradley et al., (Case No. 97-560252) (Tex. 1997).
Defended telecommunications company and employee accused of misappropriation of trade secrets. Obtained Summary Judgment against plaintiff, resulting in dismissal of all claims and a judgment of costs against plaintiff.
Meade Instruments Corporation v. Merlin Controls Corporation, (C.V. 94-407) (D. Col. 1994).
Represented manufacturer of telescopes regarding software control systems for telescopes, in action for misappropriation of trade secrets and related claims. Obtained temporary restraining order and stipulated permanent injunction.
Global Gaming Technology v. Trump Plaza Funding et al., (C.V. 94-2021) (D. New Jersey 1994) | IGT North America et al v. Global Gaming Technology (CV-S-94-00601-HDM) (D. Nev. 1994).
Defended slot machine manufacturer accused of infringing patent relating to slot machine computer control. Succeeded in obtaining stay of original suit brought against casino customers of manufacturers in favor or later filed action brought by manufacturers in Nevada. Case dismissed against client with no finding of infringement.
Abbott Laboratories v. Pacific Biotech Inc., 19 U.S.P.Q. 2d 1678 (S.D. Cal. 1991).
Established no patent infringement by manufacturer Pacific Biotech of immuno-assay test kits.
Atari Games Corp. v. Nintendo of America, Inc., (C.V. 88-4905 FMS) (N.D. Cal.).
Represented video game manufacturer accused of infringing patents and copyrights in hardware and software used to lock out unlicensed video games. Obtained voluntary dismissal of one patent infringement claim, and participated in three-week jury trial on remaining patent.
Recognition
Awards & Honors
- Recognized as a Patent Star in Managing IP’‘s “2024 IP STARS” (2024)
- Recognized as a Patent Star in Managing IP’s “IP Stars” Guide for his outstanding intellectual property legal work from 2013 to 2023
- Selected for inclusion in the “Southern California Super Lawyers” list for his work in intellectual property law by Super Lawyers magazine in 2020-2021
- Recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law for 2013
Affiliations
American Bar Association
International Bar Association
Orange County Patent Law Association
Federal Circuit Bar Association
News & Insights
Articles
“Amendments to the Federal Rules of Civil Procedure” New Matter, Fall Quarter 1991, Co-Author
“Common Sense, Simplicity and Experimental Use Negation of the Public Use and On Sale Bars to Patentability,” 29 John Marshall L. Rev. 1, 1995, Co-Author
“Copyright or Patent Protection for Your Computer Software?” Orange County Business Journal, December 20, 1993
“Litigating the High-Tech Case In The High-Tech Courtroom: The Y2K Litigation Frontier,” Nevada Lawyer, May 1999, Co-Author
Speeches & Seminars
“Protection of Computer Software,” Orange County Business Forum, September 2, 1994