Doing Business in the U.S.
David A. Jakopin
Mr. Jakopin spent the first 10 years of his practice in Washington, DC, dealing primarily with IP litigation matters, particularly those involving complex matters relating to high technology electronics in the patent and trade secret arena. After moving to Silicon Valley in 1997 to lead the efforts in building the firm’s IP practice there, he expanded his practice to also include strategic IP matters for the firm's private and public companies. He was the head of the Silicon Valley IP Group from 1997-2003.
With a strong technical background in electronics, Mr. Jakopin brings a unique combination of talents when litigating IP disputes, having particularly significant experience in Reexamination proceedings relative to technically complex electronics matters. This technical background also proves highly valuable to clients on licensing strategies, intellectual property acquisitions and sales, IPO’s, cross-border issues and other strategic IP issues.
In addition, Mr. Jakopin has broad experience on matters that have an international focus. Over his career he has spent significant time in Europe and Asia dealing with a wide range of IP issues, and continues to represent multinational companies as well as those based in the United States.
Mr. Jakopin is a member of the U.S. District Court for the Northern District of California Intellectual Property ADR panel and is a member of Arbitration and Mediation Committee of the American Intellectual Property Law Association. He has also served from time to time in the capacity of an expert witness.
- Provide company-side/seller representation on IP issues in financing and M&A transactions for both privately held companies to publicly listed companies.
- Provide underwriter/buyer representation and diligence on IP issues with respect to different technology companies.
- Advise on various agreements regarding IP licensing issues in a variety of different contexts, including agreements pertaining to hardware, software, open source, covenants not to sue, OEM manufacturing agreements, NDA’s, standstill agreements, patent licenses, distribution agreements and others.
- Provide strategy advice on obtaining and using IP strategically with respect to specific competitive situations.
- LaQuinta v. eGain – Lead counsel currently representing eGain with respect to a third party complaint asserting an indemnification claim regarding Microlog v. Continental etal patent litigation pending in the EDTX.
- Wi-Lan v. Acer etal – Represented Cambridge Silicon Radio (CSR) and SiRF Technology Inc. in patent litigation pending in the Eastern District of Texas on WiFi- related patents. Case settled.
- PACid v. Archos SA and Archos, Inc. – Lead counsel representing Archos in patent assertion by PACid relating to wireless encryption. Archos SA dismissed from the case after having filed a motion to dismiss. Case pending as to Archos, Inc.
- Global Locate, Inc. (Broadcom) v. SiRF Technology, Inc. – Represented SiRF by filing numerous InterPartes Reexaminations that were all accepted by the PTO with Office Actions rejecting all claims previously held valid in ITC proceedings between the same parties. Cases Settled.
- YMAX v. AT&T – Representing patent owner AT&T in patent litigations pending in the Northern District of California. Cases settled.
- Creative Labs, Inc. v. Archos – Lead counsel representing Archos against Creative Labs patent assertion regarding its “Zen” interface patent. Matter settled after filing of InterPartes Reexam that was accepted by the USPTO.
- Bandspeed v. Apple et al – Representing manufacturer Intervenor Cambridge Silicon Radio (CSR) in patent litigation pending in the Western District of Texas on Bluetooth- related patents. Case pending.
- Automated Facilities Management Corp. (an Acacia entity) v. Accela, Inc. – Lead counsel in patent infringement matter; Case voluntarily dismissed by AFMC after filing of a motion to dismiss.
- Inphi Corporation v. Netlist, Inc. – Lead counsel in patent litigation representing Inphi in patent infringement suit asserting Inphi patents against Netlist pending in the Central District of California. Case dismissed without prejudice.
- Netlist, Inc. v. Inphi Corporation – Lead counsel in patent litigation representing Inphi against charges of patent infringement relating to patents on high speed memory interfaces pending in the Central District of California. Case currently stayed pending Reexaminations and potential Interference proceedings.
- Personal Audio, LLC v. Apple, Inc., Sirius XM Radio, Inc., Coby Electronics, Inc. and Archos, Inc. – Lead counsel in patent litigation representing Archos, Inc. against charges of infringement relating to patents on audio programming with dynamic program selection pending in the Eastern District of Texas. Case settled.
- Implicit Networks, Inc. v. Advanced Micro Devices, Inc., Intel Corp., NVIDIA Corp., RMI Corp., RealNetworks, Inc. and Sun Microsystems, Inc. – Lead counsel in patent Litigation representing RMI Corp., against charges of infringement relating to packet demultiplexing method in the Western District of Washington. Case settled after filing of Request for Reexamination and granting of a motion to stay proceedings.
- Polaris v. eGain, Communications. Corp., eHarmony.com, Inc., Fredericks of Hollywood Stores, Inc., Inference Corp., Playboy Enterprises International, Inc. Quixtar Inc. and XDrive, Inc. – Patent litigation representing eGain, eHarmony, Fredericks, Inference, Playboy, Quixtar and xDrive against charges of infringement of patent relating to email software in the Eastern District of Texas. Lead Counsel having primary responsibility for overall case management. Case settled after filing motion to dismiss and Declaratory Judgment suit in Minnesota.
- SmartDisk. v. Archos, Inc. etal. – Patent litigation representing Archos against charges of infringement of patent relating to data storage in the Eastern District of Texas. Co-Lead Counsel upon entering case. Case settled.
- eTreppid v. Montgomery, et al. – Trade secret and copyright litigation representing eTreppid against a former founder. Co-lead counsel for cases pending in Nevada courts. Obtained preliminary injunction.
- 2M Asset Management LLC v. Swapdrive, Inc., et al. – Patent litigation representing Amberwave Comunications and Global Data Vault, Inc., against charges of infringement of patent relating to archiving and de-archiving of data in the District of South Carolina. Lead Counsel having primary responsibility for overall case management. Case settled.
- Townshend v. Intel – Patent litigation representing Intel against charges of infringement of patents allegedly relating to modem standard in the Northern District of California. Co-lead Counsel. Case settled.
- STEC, Inc. et al. v. ACE, Inc. et al. – Representing ACE, Inc., a Japanese company, and other defendants in a patent and trade secret litigation brought against it in the Central District of California, relating to semiconductor manufacturing equipment components. Lead counsel having primary responsibility for overall case management. Case settled.
- Sitrick v. Freehand Systems, Inc. – Representing Freehand Systems, Inc., a privately-held company, in a patent litigation brought against it in the Northern District of Illinois, relating to digital storage and distribution of electronic sheet music. Lead counsel having primary responsibility for overall case management. Case settled.
- Comarco Wireless Technologies v. Mobility et al. – Patent litigation initiated for Comarco Wireless, including motion for preliminary injunction, asserting that certain Comarco patents are infringed, in the District of Arizona. Co-lead counsel having primary responsibility for overall case management. Case settled.
- Ajaxo, Inc. v. E-Trade, Inc. and Everypath – Represented Everypath in a trade secrets case, which involved a six-week jury trial relating to wireless proxy technology for handheld wireless devices. Had primary responsibility for trade secret issues, including witnesses of Everypath, and examination and cross-examination of technical experts. Case tried with positive outcome.
- Applied Microsystems Corp. v. Microtek International – Patent litigation defending Microtek against charges of infringement regarding in-circuit emulator patents in the Western District of Washington. Had primary responsibility for overall case management and developing non-infringement and invalidity positions. Case settled.
- S3 Incorporated v. nVidia, Inc. – Patent litigation initiated for S3 Incorporated regarding graphic accelerator patents in the Northern District of California. Had primary responsibility for overall case management and developing infringement positions. Case settled after successful appeal to the Court of Appeals for the Federal Circuit.
- Trimble v. SiRF Technology – Patent litigation defending SiRF against charges of infringement relating to GPS patents. Had primary responsibility for overall case management and developing non-infringement and invalidity positions. Case settled.
- MyPoints.com v. Netcentives, Inc. – Brought declaratory judgment action against Netcentives relating to an Internet business method patent. Lead Counsel. Case settled, terms of settlement confidential.
- Qualcomm v. Motorola – Patent litigation initiated for Qualcomm Incorporated regarding certain wireless technology patents in the Southern District of California. Had primary responsibility for certain Motorola patents and related issues. Case settled.
- Haworth, Inc. v. Herman Miller, Inc. – Patent litigation initiated for Haworth regarding Haworth patents in the Northern District of Michigan. Had primary responsibility for overall case management and preparing infringement and validity aspects of the case. Case settled on the eve of trial, after conclusion of discovery and all pretrial proceedings, terms of the settlement being payment by Herman Miller to Haworth of $44 million and licenses to valuable Herman Miller patents.
- Texas Instruments v. Samsung et al. – Patent litigations representing Samsung relating to DRAM’s and microcontrollers. Primary responsibility for technical infringement discovery and experts. Cases settled.
- PLC Which Lawyer?, Intellectual Property—San Francisco & Silicon Valley (2010-2012)
American Bar Association, American Intellectual Property Law Association, Federal Circuit Bar Association
U.S. District Courts for the Northern District of California, Central District of California, and Southern District of California, Court of Appeals for the District of Columbia, U.S. District Court of Appeals for the Federal Circuit