Representative Matters

Patent Litigation

• Freshub v. Amazon.com. Part of the trial team that secured a full defense verdict for Amazon in a patent dispute in the Western District of Texas against Freshub, which sought $246 million in damages. The jury found that Amazon’s Alexa-powered smart home devices did not infringe the patents held by Freshub.
• Amazon.com v. PersonalWeb Technologies. Secured summary judgment in declaratory judgment action against PersonalWeb Technologies on behalf of Amazon and 80+ AWS customers, including Airbnb, Kickstarter, GoPro and Venmo. The Federal Circuit affirmed in a precedential opinion that enlarged Kessler preclusion to the benefit of all patent infringement defendants. Later won summary judgment of non-infringement on PersonalWeb’s remaining claims followed by $4.8 million in attorney fees and nontaxable costs for Amazon.
• Realtime Adaptive Streaming LLC v. Netflix, Inc. Represented global media streaming service provider Netflix against Realtime Adaptive Streaming in a multi-patent dispute concerning video compression technology. After adverse rulings, Realtime voluntarily dismissed and attempted to refile in a more favorable district, then dismissed a second time when faced with motions to transfer and for costs. The district court awarded Netflix more than $400,000 of its attorney fees.
• Innovation Sciences, LLC v. Amazon.com. Part of a trial team that secured a rare full defense verdict in the Eastern District of Texas. Innovation Sciences had alleged that Amazon’s Echo, Alexa voice service, Fire TV, and Fire tablets infringed three patents and had sought damages in excess of $100 million. After an eight-day trial, the jury found no infringement of any asserted claims and concluded that the patents were invalid. In addition, the case appears to be only the third time following the Federal Circuit’s decision in Berkheimer v. HP that Section 101 eligibility has been tried to a jury. The jury found that the asserted claims were directed to conventional, well-known, and routine technology.
• Virginia Innovation Sciences v. Amazon.com. Represented Amazon in a suit brought by VIS in the “rocket docket” Alexandria Division of the Eastern District of Virginia, asserting 11 different patents against an array of Amazon products and services. Secured a ruling at the motion to dismiss stage that eight of the patents were ineligible under Section 101 and won summary judgment on the remaining claims. The district court awarded Amazon attorney fees, and the award was affirmed by the Federal Circuit.

Non-Patent Intellectual Property and Commercial Litigation

• Giganews v. Zada. Secured a favorable jury verdict and award of punitive damages in federal trial against Perfect 10 and its CEO for the CEO’s fraudulent transfer of money from the company.
• Perfect 10 v. Giganews. Prevailed on summary judgment for Usenet service provider against copyright infringement claims based on user behavior on service and response to purported DMCA notices. Secured a fees award of more than $5.6M with both rulings affirmed on appeal.
• Openwave v. Open-Xchange. Successfully defended provider of web-based email services to telecoms from grab-bag of non-patent IP claims asserted by a competitor. Argued and secured summary judgment on all asserted trade secret claims.
• eSports Teams v. Platform. Defended well-known streaming platform in arbitration against eSports teams who had alleged trade secret misappropriation related to player metrics and recruitment strategies.
• Tripwire v. UpGuard. Defended a startup client in a patent infringement and trade secret misappropriation case brought by its competitor.
• eMarker v. Caesars. Successfully defended Caesars in multiple jurisdictions against trade secret claims brought by a prospective vendor.
• TomTom v. Broadcom. Represented GPS navigation technology company TomTom in a multi-million-dollar breach of warranty case against chip maker Broadcom.
• Sugar Hill Music v. CBS Interactive. Defended CBS against indirect infringement claims from individual artists regarding reviews of P2P file-sharing software on the CNET website, ending in plaintiffs’ voluntary dismissal of claims following adverse discovery rulings.
• Groupion v. Groupon. Pursued cybersquatting counterclaims against CRM software company to successful settlement following dismissal of all trademark infringement claims against client Groupon.
• National Products v. Gamber Johnson. Key member of trial team that obtained a favorable jury verdict, affirmed on appeal to the Ninth Circuit, in a Lanham Act false advertising case in the Western District of Washington.

Appeals

• Gonzalez v Google. Filed Supreme Court amicus brief on behalf of the Internet Infrastructure Coalition and various members calling on the Court to protect the foundational role Section 230 plays in ensuring the Internet's infrastructure functions efficiently and effectively, and noting the unintended and crippling effects that a reversal would have on that infrastructure, given its technical dependence on algorithms to classify, organize, process, and transmit all sorts of data, and its legal dependence on Section 230 for these activities.
• Realtime Adaptive Streaming LLC v. Netflix, Inc. Secured affirmance at the Federal Circuit of the district court’s power to sanction Realtime Adaptive Streaming with more than $400,000 in attorney fees for its “blatant gamesmanship” in dismissing a case it was losing and promptly re-filing in a different court.
• Dohrmann et al v. Intuit et al. Successfully represented Intuit in a Ninth Circuit appeal, profiled by Law360, related to a putative class action alleging false advertising claims associated with Intuit’s TurboTax free filing option for tax preparation services. The Ninth Circuit reversed the district court’s decision, noting TurboTax's terms of service were clearly visible when users signed in on its website, and that the terms included a clause requiring disputes to be resolved through arbitration. The panel instructed the district court to compel arbitration, rejecting its alternative rationale that the users could bring a class action under a provision in the agreement that allows a court to award certain forms of equitable relief.
• Gree Inc. v. Supercell Oy. Represented Supercell in appeals from multiple PGR proceedings, including securing reversal of the PTAB’s decision upholding the eligibility of claims in Gree’s game template patent. This was a key strategic outcome for our client as the ruling invalidated a claim that Gree had asserted against Supercell at trial in the Eastern District of Texas.
• San Francisco Herring Association v. U.S. Department of the Interior. Successfully represented San Francisco Herring Association in a Ninth Circuit appeal related to its 2013 suit, which challenged the authority of the National Park Service (NPS) to prohibit commercial herring fishing in the waters of the Golden Gate National Recreation Area. On December 31, 2019, the court affirmed that a series of warnings issued by the NPS, culminating in direct threats of enforcement, sufficed to constitute "final agency action" for purposes of the Administrative Procedure Act.
• In re Cray. Appellate counsel to Cray in its successful mandamus petition to the Federal Circuit resulting in a landmark decision on venue in patent cases. (Bloomberg reporter: “Cray threw a veritable sonic boom at Raytheon in its reply…”; IPWatchdog on the result: “Ordinarily these types of decisions do not make for successful mandamus petitions.”)
• Virginia Innovation Sciences v. Amazon.com. Secured affirmance of the district court’s invalidation of eight patents on Section 101 grounds. Law360 recognized the appellate win in its “Legal Lions and Lambs” feature.
• LendingTree v. Zillow. Defended a jury verdict of non-infringement and invalidity for improper inventorship at the Federal Circuit on behalf of client Zillow, and secured reversal of the district court’s denial of summary judgment on grounds of Section 101 invalidity.
• Affinity Labs of Texas v. Amazon.com. Secured affirmance at the Federal Circuit of the district court’s dismissal of patent infringement claims on grounds of Section 101 invalidity.
• Garcia v. Google. Filed an amicus brief on behalf of 11 major internet companies supporting reversal of an injunction that required removal of a controversial video from YouTube.
• Marilley v. Bonham. Appellate counsel in a case involving a U.S. Constitution Privileges and Immunities Clause challenge to California commercial fishing license fees, which charged out-of-state residents multiples of the amounts it charged residents.
• McGary v. Culpepper. Briefed and argued Ninth Circuit appeals that secured a reversal of the district court’s dismissal of a plaintiff’s Section 1983 action for mistreatment by the State of Washington during his civil commitment.
• Barela v. City of Woodland. Briefed and argued a Ninth Circuit appeal that secured reversal of the district court’s dismissal of a complaint for false arrest in violation of the Fourth Amendment.

Other

• Pineida v. Lee. Led team that secured a rare preliminary injunction forcing the California Department of Corrections and Rehabilitation to provide an inmate with a medically necessary diet. Todd and the team were recognized for this case with the 2015 Outstanding Volunteer award from The Justice & Diversity Center of The Bar Association of San Francisco.

Publications and Presentations

• “Some Tools for Writing…,” Fenwick Legal Writing Seminar, Ongoing
• “Top 10 Reasons Startups Get Sued,”Create33, May 2019
• “Defending Your Anonymous Users,” Amazon Legal University, October 2018
• “Developments in Patent Venue,” Amazon Legal University, October 2018
• “Avoiding and Managing M&A Disputes,” Western M&A/Private Equity Forum, Daily Journal, September 15, 2016 (panelist)
• “Whither Copyright Injunctions in the Post-Garcia World?,” Media Law Resource Center Media Law Letter, May 2015 (co-author)
• “9th Circ. Weighs in on Player Likenesses in Video Games,” Law360, August 2013 (co-author)
• “Uniloc v. Microsoft: Federal Circuit Rules on Reasonable Royalty Damages Issues,” Fenwick & West, May 2011
• “Patent Law Year in Review: A Look Back at 2010 and a Look Ahead at 2011,” Fenwick & West, January 2011 (co-author)
• “Company Directors Can Be Liable for Trade Secret Misappropriation,” Electronic Commerce & Law Report, May 2010 (co-author). Reprinted in VC Experts, July 2010
• “Data Wrangling, Lassoing, and Roping at the M&A Corral,” California Lawyers Association Business Law News, July 2008 (co-author). Reprinted in The M&A Lawyer, October 2008; VC Experts Inc.’s Encyclopedia of Private Equity and Venture Capital, May 2009