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Experience:
Ian Feinberg's practice emphasizes intellectual property, technology litigation and antitrust. He has extensive experience in handling trials and binding arbitrations, as well as in trial preparation and counseling (including litigation avoidance) regarding patent, copyright, trade secret, trademark, licensing, unfair competition, and antitrust matters, particularly in the software and semiconductor industries. Ian joined Mayer Brown as a partner in 2003, having worked previously with a major west coast law firm.
Notable Engagements:
Patent litigation: Represent the defendant in an eight-patent, 100-plus claim patent infringement case that also includes a Sherman Act Section 1 conspiracy claim and a Sherman Act Section 2 Walker Process monopolization counterclaim involving patents on countermeasures to "side channel" attacks on smart card (Cryptography Research, Inc. v. Visa International Service Association, United States District Court - San Jose); Result: Pending.
Patent litigation: Represent the defendants in a patent infringement action alleging infringement of a patent involving power and thermal management for notebook computers that allegedly reads on all notebook computers using Microsoft Windows operating system (IpVenture, Inc. v. ProStar Computer, Inc., et al., United States District Court - Los Angeles); Obtained dismissal in favor of defendant clients on the ground that patent was not wholly owned by the plaintiff. Reversed by Federal Circuit and remanded for further proceedings. Result: Pending.
Patent litigation: Represent several Vodafone entities in a patent infringement action against some 131 defendants alleging infringement of patents on international text and SMS messaging. (Technology Patents LLC v. Deutsche Telekom AG, et al., United States District Court-Maryland); Result: Pending.
Copyright litigation: Represented the defendant (Adobe Systems Incorporated) in a Digital Millennium Copyright Act case alleging that Adobe Acrobat is a circumvention device (Agfa Monotype Corporation and International Typeface Corporation v. Adobe Systems Incorporated, United States District Court - Chicago); Result: summary judgment for defendant-client.
Copyright litigation: Represented the plaintiff (Adobe Systems Incorporated) in more than 20 copyright infringement actions, some of which have resulted in large settlements and others of which are still pending (United States District Court - San Jose and San Francisco); Favorable published summary judgments and confidential favorable settlements, in Adobe Systems Incorporated v. One Stop Micro and Adobe Systems Incorporated v. Stargate Systems.
Trademark litigation: Represented the defendant in a trademark infringement action (Openwave v. Opuswave, United States District Court - Oakland); Result: favorable settlement.
Trade secret litigation: Represented the defendant in a misappropriation of trade secrets/inevitable disclosure of trade secrets case relating to osmotic drug delivery systems (Alza v. Andryx, United States District Court - San Jose); Result: favorable confidential settlement.
Antitrust litigation: Represented the defendant and counter-claimant in four patent infringement actions involving optoelectronic products: Methode Electronics, Inc. and Stratos Lightwave, Inc. v. Finisar Corporation, United States District Court - Oakland; Methode Electronics, Inc. and Stratos Lightwave, Inc. v. Finisar Corporation, United States District Court - San Jose; Methode Electronics, Inc. and Stratos Lightwave, Inc. v. Finisar Corporation, United States District Court - Oakland; and Methode Electronics, Inc. v. Finisar Corporation, United States District Court, San Francisco; Pending.
Antitrust litigation: Represented antitrust counterclaimant alleging that a patent infringement action was brought against obviously non-infringing accused devices in an attempt to monopolize windows notebook graphics accelerator and embedded windows notebook graphics accelerator markets (NeoMagic Corporation v. Trident Microsystems, Inc., United States District Court - Delaware); Pending.
Licensing litigation: Represented the defendant in a complex royalty dispute involving typefaces and font software (Heidelberger Druckmaschinen A.G. v. Adobe Systems Incorporated - United States District Court - San Jose); Pending.
Licensing litigation: Represented the defendant in a complex dispute regarding the scope of a license to produce and distribute font software from licensed typefaces (International Typeface Corporation v. Adobe Systems Incorporated, United States District Court - Chicago); Result: favorable confidential settlement for defendant-client.
Patent Litigation:
Represented a defendant in multi-defendant patent litigation involving a patent related to the distribution of information by a combination of CD-ROMs and the public Internet (Disk Link Corp. v. Oracle Corporation, United States District Court - Texarkana); Pending.
Represented a plaintiff in a patent infringement action alleging infringement of a patent involving audio cables; Result: summary judgment in favor of defendant, affirmed by Federal Circuit (Monster Cable Products, Inc. v. AudioQuest, Inc. - United States District Court - San Francisco).
Tried patent infringement actions to two juries (complaint and counterclaim were bifurcated) involving user interface and other patents (Adobe Systems Incorporated v. Macromedia Systems, United States District Court - Delaware); Result: favorable confidential settlement following trial.
Represented a defendant in an action alleging infringement of two patents involving embedded memory semiconductors (logic and memory on the same chip) (NeoMagic, Inc. v. Trident MicroSystems, Inc., United States District Court - Delaware); Result: summary judgment in favor of defendant - client on both patents; one affirmed by Federal Circuit; one affirmed in part, reversed in part, and remanded; obtained summary judgment in favor of defendant-client second time on remanded patent; affirmed on appeal to Federal Circuit.
Represented a defendant in an action alleging infringement of multiple patents involving Customer Relationship Management software (Mindfabric, Inc. v. Banter, Inc., United States District Court - San Francisco); Result: favorable confidential settlement.
Represented Monster Cable Products, Inc. in an International Trade Commission patent infringement investigation involving mercury-free batteries (In the Matter of Certain Zero-Mercury-Added Alkaline Batteries ITC - Washington D.C.); Result: favorable confidential settlement.
Represented Monster Cable Products, Inc. in a patent infringement action involving consumer electronics products (Monster Cable Products, Inc. v. Ultralink, United States District Court - San Francisco); Result: favorable confidential settlement.
Represented a defendant and counter-claimant in four Northern District of California patent infringement actions involving optoelectronic products: Methode Electronics, Inc. and Stratos Lighwave, Inc. v. Finisar Corporation, United States District Court - Oakland; Methode Electronics, Inc. and Stratos Lightwave, Inc. v. Finisar Corporation, United States District Court - San Jose; Methode Electronics, Inc. and Stratos Lightwave, Inc. v. Finisar Corporation, United States District Court - Oakland; and Methode Electronics, Inc. v. Finisar Corporation, United States District Court - San Francisco; Result: favorable confidential settlement.
Represented a defendant in a patent infringement action involving interactive television (Berman v. Wink Communications, Inc., United States District Court - San Francisco); Result: favorable confidential settlement.
Represented a plaintiff in a patent infringement and copyright case involving embedded memory semiconductors (Trident MicroSystems, Inc. v. VIA Technologies, Inc., United States District Court - San Jose); Result: favorable confidential settlement.
Represented a plaintiff in a patent infringement action involving epitaxial reactors (Moore Technologies, Inc. v. Process Support International, United States District Court - San Francisco); Result: favorable confidential settlement, as well as favorable confidential settlement from non-party user of infringing device.
Represented a defendant in a patent infringement and trade secret misappropriation action involving epitaxial reactors (Applied Materials, Inc. v. Moore Technologies, Inc., United States District Court - San Francisco); Result: favorable confidential settlement.
Represented a defendant in a patent infringement action arising out of the sale of RAID (redundant array of independent disk) memory systems, in which the plaintiff sought more than $100 million in damages (MTI v. Falcon Systems, United States District Court - San Francisco); Result: favorable confidential settlement.
Represented a nominal defendant and counterclaimant in a declaratory relief action for a patent infringement action involving magnetrons for semiconductor sputtering systems (Intevac, Inc. v. CVC, Inc., United States District Court - Oakland). Result: favorable confidential settlement.
Represented a plaintiff scanner manufacturer in a patent infringement action against another major manufacturer of scanners (Storm Technology, Inc. v. Visioneer, Inc., United States District Court - San Jose); Result: plaintiff filed for bankruptcy.
Copyright Litigation:
Represented a defendant and counterclaimant (Adobe Systems Incorporated) in a copyright and trademark infringement action involving unbundling of Adobe Collections software packages (Softman v. Adobe Systems Incorporated) Obtained a seizure order, temporary restraining order, and preliminary injunction barring distribution of unbundled software packages. Result: Confidential settlement agreement.
Represent a plaintiff in a copyright infringement action against another major software publisher (The Learning Company) alleging infringement of the plaintiff's font software (Adobe Systems v. Southern Software, United States District Court - San Jose). Result: Obtained published summary judgment holding for first time that font software is protectable by copyright, as well as a $2 million public settlement and permanent injunction.
Represented a plaintiff in an action for copyright and trademark infringement in which seizure order was executed by 12 United States Marshals at the Pomona Computer Fair, and a preliminary injunction issued against sale of software in adulterated packaging (Adobe Systems Incorporated v. H & R Technology, Inc., United States District Court - Los Angeles); Pending.
Represented a plaintiff in a declaratory relief action alleging invalidity and non-infringement of the defendant's copyrights, and copyright misuse, arising out of participation in a "Solution Partner Program" (Softrak Systems, Inc. v. ACCPAC International, Inc., United States District Court - San Francisco); Result: confidential settlement.
Represented a defendant national off-price retailer in a federal copyright action involving the sale of allegedly counterfeit music CDs (Original Sound Recordings, Inc. v. Ross Stores, Inc., United States District Court - Los Angeles); Result: favorable confidential settlement.
Represented a defendant national off-price retailer in a state copyright action involving sale of music CDs (Sheffield, Inc. v. Ross Stores, Inc., Los Angeles Superior Court); Result: favorable confidential settlement.
Trademark Litigation:
Represented a plaintiff in a trademark infringement action in which the court entered partial summary judgment that the defendant's removal of educational labels from Adobe software and its subsequent distribution of Adobe software in such adulterated packaging constitutes trademark infringement as a matter of law (Adobe Systems Incorporated v. One Stop Micro, Inc., United States District Court - San Jose); Pending.
Represented a plaintiff in an action for trademark infringement in which the court entered a preliminary injunction enjoining the defendant's distribution of educational versions of Adobe software from which the educational labels were removed (Adobe Systems Incorporated v. MacUSA, United States District Court - San Jose) Result: favorable confidential settlement.
Represented a plaintiff in a trademark infringement case involving use of the term "universal server" in the computer industry; defeated Oracle's motion for preliminary injunction (Informix Software, Inc. v. Oracle Corporation, United States District Court - San Francisco); Result: favorable confidential settlement.
Trade Secret Litigation:
Represented the defendant (a foreign-based International Fortune 100 Company) in an action alleging inevitable disclosure of trade secrets relating to flash memory devices (Advanced Micro Devices, Inc. v. Hyundai Electronics America, Inc., Santa Clara Superior Court); Result: confidential settlement allowing continued development of client's products.
Represented a plaintiff in a misappropriation of trade secrets action arising out of a letter of intent relating to computer telephony subsystems and components (BTGP, Inc. v. Calista, Inc., Santa Clara Superior Court); Resolved.
Represented a plaintiff in an action alleging misappropriation of trade secrets for a leading provider of SIMS analysis services against a former employee and his new employer; obtained temporary restraining order and preliminary injunction (Charles Evans Associates v. Accurel, Santa Clara Superior Court); Result: favorable confidential settlement.
Represented a plaintiff in a trade secret case resulting from a competitor's attendance at a confidential marketing presentation (Noosh, Inc. v. Collabria, Inc., San Mateo Superior Court); Result: stipulated permanent injunction and favorable confidential settlement for client.
Antitrust Litigation:
Represented a defendant in bid-rigging and antitrust claims arising out of a joint purchase of radioactive cobalt-60 at a bankruptcy sale (In Re International Neutronics, Inc., Robertson v. Isomedix, Inc., United States District Court - San Francisco); Result: summary judgment for client, affirmed by Ninth Circuit (3 F.3d 306).
Represented a defendant in an antitrust action alleging that a patent infringement action was brought in an attempt to monopolize the modem market (In Re Hayes Modem Patent Litigation, United States District Court - San Francisco); Result: summary judgment for client on the ground that invalidity for obviousness cannot support antitrust action based on the filing of a patent-infringement action.
Provided extensive antitrust advice, including Hart-Scott-Rodino premerger notifications, responses to Civil Investigative Demands, horizontal and vertical restraints, Robinson-Patman, and California antitrust laws to a large number of public and private companies in a variety of industries.
Licensing Litigation and Arbitration:
Represented a defendant in a complaint alleging breach of patent license. (Kennsington v. Targus Group International, California Superior Court - San Mateo); Result: favorable confidential settlement.
Represented a respondent in an arbitration arising out of the licensing of wireless 911 technologies (Intrado v. Openwave Systems, Inc., American Arbitration Association - Boulder); Result: favorable confidential settlement for defendant-client.
Represented a defendant in an arbitration arising out of the sale of sophisticated telephony test equipment (Schlumberger v. Zhone Technology, Inc., JAMS - San Francisco); Result: unfavorable award but no award of attorneys' fees on the ground that the outcome was extremely close.
Represented a claimant in an arbitration against an independent physicians association seeking reimbursement for medical services covered by patients' insurance policies (CVIMedical Group, et al. v. Santa Clara County Independent Physicians Association, AAA - San Francisco); Result: favorable confidential settlement.
Represented a plaintiff-software licensor in a breach of contract dispute with a licensee (Madison Information Technologies, Inc. v. Advanced Linkage Technologies of America, Santa Clara Superior Court); Result: favorable confidential settlement.
Represented a public company in a JAMS arbitration against its public company distributor/OEM in which more than $1 million dollar in claims were asserted by each party (Microtech v. Integrated Systems, JAMS - Palo Alto); Result: complete victory for client both on its claims and claims asserted by its adversary.
Represented a developer of PAN film manufacturing technology in a binding arbitration brought by an entity asserting a right to 30 percent of the proceeds from exploitation of technology pursuant to an earlier settlement agreement, which dispute turned in large part on the validity and interpretation of certain patents relating to the manufacture of PAN film (The Pan Group v. Solcas Polymer, AAA - San Francisco); Result: favorable confidential settlement.
Represented a start-up software company in a binding arbitration seeking $45 million in damages against a client for breach of a software development agreement (Clancy Associates v. Avanti, Justice Kane - San Mateo); Result: award against client of only $300,000.
Represented a public client in an arbitration brought by a former sales representative/ distributor of avionics products seeking more than $2 million in damages from client (DAC v. Trimble, AAA - Palo Alto); Result: award against client only a fraction of that sought by claimant.
Represented a claimant in aAAA arbitration seeking unpaid royalties under a software license (Live Picture, Inc. v. MetaTools, Inc., AAA - Palo Alto); Result: award for claimant, including attorneys' fees.
Education:
Stanford Law School, JD, 1979; Law Review, Moot Court, Stanford University, AB, Economics, with distinction, 1976; Phi Beta Kappa. |
