Doing Business in the U.S.
Pillsbury Ushers in Five Summertime Tech Deals
David A. Jakopin
David Jakopin is a partner in the law firm's Intellectual Property practice. He is located in the Silicon Valley office and currently serves as the head of the Silicon Valley IP Group. Mr. Jakopin has over 25 years of experience in IP litigation related matters. He also advises clients on strategic IP issues and licensing issues, particularly in the context of corporate finance, mergers & acquisitions and investments.
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.
With a strong technical background in electronics (BSEE), licensing, civil procedure, trial strategy and general IP focused corporate representation, Mr. Jakopin brings a unique combination of talents when litigating IP disputes. For litigation matters, Mr. Jakopin:
- Uses cost-effective strategies that are consistent with the client goals and litigation budgets;
- Considers and uses Post-Grant Proceedings at the USTPO in appropriate cases, and has a strong record of success in such proceedings;
- Uses early motion practice when appropriate, including motions to dismiss (particularly on jurisdictional grounds) and/or motions for sanctions;
- Is experienced at managing discovery costs and pitfalls, and uses a hands-on approach for efficiency and effectiveness; and
- Always keeps evidence, dispositive motion practice and trial in mind – with a strong record of successes.
This diverse background also proves highly valuable when advising clients on licensing strategies, intellectual property acquisitions and sales, IPO’s, cross-border issues and other strategic IP issues. He routinely advises on crucial IP issues with respect to:
- Company-side/seller representation on IP issues in financing and M&A transactions for both privately held companies to publicly listed companies.
- Underwriter/buyer representation and diligence on IP issues with respect to different technology companies.
- 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.
- Strategy advice on obtaining and using IP strategically with respect to specific competitive situations, including strategic patent acquisitions.
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.
- Skyhigh Networks, Inc. v. Protegrity Corporation – Lead counsel representing Skyhigh in Declaratory Judgment patent litigation alleging non-infringement of patents relating to data security systems in the Northern District of California. Case currently pending.
- Advised public company client on strategic acquisition that included a spin-out of a business unit of the target contemporaneously with the acquisition, and in particular advised on the intellectual property issues relating to the same.
- eDekka LLC v. Safeway, Inc. – Lead counsel in patent litigation representing Safeway against allegation of patent infringement pending in the Eastern District of Texas. Case currently pending.
- eGain Corporation v. Pragmatus Telecom, LLC – Lead counsel representing eGain in Declaratory Judgment patent litigation alleging non-infringement of patents relating to call communication centers in Delaware. Case currently pending.
- Heavy Duty Ramps LLC v. Advanced Aluminum Structures, Inc. – Lead counsel in patent litigation representing AAS against allegation of patent infringement in the Eastern District of Wisconsin. Plaintiff Heavy Duty Ramps voluntarily dismissed case in light of motion to dismiss filed by AAS and motion for sanctions served by AAS on counsel for Plaintiff Heavy Duty Ramps.
- Sigma Designs v. USEI – Lead counsel representing Intervenor Sigma Designs in patent litigation pending in the Northern District of California on patents related to Ethernet. Case pending: fact and expert discovery have closed; motions for summary judgment pending.
- Advised underwriters in IPO where company had significant past and ongoing patent litigation.
- Binding Arbitration – Represented client in confidential binding arbitration relative to a licensing dispute, with extremely successful outcome.
- Map Tool Inc. v. Archos, SA – Lead counsel representing Archos in patent assertion by Map Tool in the Northern District of California. Case settled after having filed a motion to dismiss.
- Settled patent dispute over the course of a many years negotiation, prior to litigation, which included a worldwide patent license being taken by client.
- 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 settled.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- Legal 500 US, Patent Licensing & Transactional and Patent Prosecution (2014)
- 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