David Jakopin, the head of Pillsbury’s Silicon Valley Intellectual Property group, is a strategic thinker who brings a broad knowledge base and creativity to provide practical advice and concrete implementations on difficult issues.

David advises clients on significant disputes, from pre-litigation through appeal. He has a strong technical background in electronics, semiconductors and communications, along with a depth of understanding in civil procedure, trial strategy, licensing, negotiations and general IP-focused corporate representation. This diverse background, along with his hands-on approach, proves highly valuable when advising clients on significant disputes, offering implementable case-specific solutions.

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This background helps him assess a broad array of case-specific facts and associated law, and then form a plan of execution. Some examples include a case-dispositive claim construction, an inoperable suggestion of how the prior art operates, or a strategy that combined invalidity, damages and the lapse of time as evidenced by his work for SiTime (patent asserted against MEMS resonators found invalid at Markman hearing and affirmed by CAFC), Rigetti (maintained validity of foundational quantum computing patent in two USPTO IPRs brought by IBM) and Inphi (patents asserted against buffer memory controller invalidated and/or amended during inter partes reexaminations, and affirmed at CAFC; case dismissed by patent owner).

A partner since 1996, he is located in the Silicon Valley office and serves as the head of the Silicon Valley IP Group.

Representative Experience

  • Served as lead counsel representing Inphi Corp. in a patent infringement suit originally brought in 2009 by Netlist in the Central District of California, prior to Inphi going public, and which concluded in a dismissal in 2021 after Inphi’s > $10B sale to Marvell in 2020. Netlist had accused a JEDEC standard memory buffer module chip of Inphi of infringing three different patents related to various aspects of rank multiplication. The case had been stayed pending three related inter partes reexaminations of the asserted patents that were each appealed to the Federal Circuit, resulting in the invalidation of or amendment to all the original claims in the three asserted patents, including the complete invalidation of one of the asserted patents.
  • Defended SiTime in a patent infringement suit filed by VTT Technical Research Centre in the Northern District of California involving MEMS resonator device technology, including 1) arguing the case-dispositive term in one of the first virtual Markman Hearings that led to the court’s finding the asserted patent invalid and the client prevailing at the conclusion of Markman stage of the proceedings, with the court on its own entering judgment in favor of SiTime; and 2) representing the company and interfacing with underwriters as SiTime went public during the pendency of this case.
  • Successfully defended SiTime in an appeal to the Court of Appeals for the Federal Circuit (CAFC) brought by VTT Technical Research Centre, subsequent to SiTime’s success at a Markman hearing at the district court. After briefings and an oral hearing, the CAFC affirmed the district court’s ruling in favor of our client.

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  • Lead counsel defending Rigetti Computing against two inter partes reviews (IPRs) brought by IBM against one of its foundational quantum computing patents, with the PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
  • Served as lead counsel representing Sigma Designs in the ITC against Broadcom regarding alleged patent infringement of Sigma system of chip (SoC) devices used in televisions. Final Initial Determination of non-infringement for all three patents asserted against Sigma.
  • Served as lead counsel representing Silicon Mitus in the Northern District of California on six patents related to power management integrated circuits asserted in a complaint filed by Maxim. Case settled after the filing of IPRs, an order from a Markman hearing, and the filing of another patent infringement lawsuit by Silicon Mitus in Korea.
  • Served as lead counsel representing Sigma Designs in patent litigation in Northern District of California on patents related to Ethernet. Court granted summary judgment of non-infringement. Case favorably dismissed with prejudice.
  • Served as lead counsel representing ThreatMetrix in trademark infringement litigation in the Northern District of California regarding a mark used in the cybersecurity field. Case settled favorably for ThreatMetrix with defendant agreeing to cease all use of the infringing mark.
  • Served as lead counsel representing eGain Corp. in declaratory judgment patent litigation alleging non-infringement of patents. After Markman hearing that he argued, court decided terms substantially as eGain had briefed. Case settled.
  • Advising client on indemnification request related to a release of escrow stemming from a merger and acquisition agreement, in the context of patent litigation and IPR proceedings.
  • Serving as lead counsel representing Skyhigh Networks Inc. in declaratory judgment patent litigation alleging non-infringement of patents relating to data security systems in the Northern District of California.
  • Obtained ex parte temporary restraining order as lead counsel for client in a matter that pled misappropriation and breach of contract, among other claims. Case settled prior to a hearing.
  • Advised public company client on strategic acquisition that included spin-out of a business unit of the target contemporaneously with acquisition, and in particular advised on the related intellectual property issues.
  • Served as lead counsel in patent litigation representing Safeway Inc. against allegation of patent infringement pending in the Eastern District of Texas. Case pending.
  • Served as lead counsel in patent litigation representing Advanced Aluminum Structures Inc. against allegation of patent infringement in the Eastern District of Wisconsin. Plaintiff voluntarily dismissed case.
  • Advised underwriters in IPO where company had significant past and ongoing patent litigation.
  • Served as lead counsel representing Sigma Designs in dispute alleging breach of contract and other claims stemming from purchase of assets out of bankruptcy from a third party. Case settled.
  • Represented client in confidential binding arbitration relative to a licensing dispute, with extremely successful outcome.
  • Served as lead counsel representing Archos SA in patent assertion by Map Tool in the Northern District of California. Case settled after having filed a motion to dismiss.
  • Served as lead counsel representing Archos in patent assertion by Penovia in the Eastern District of Texas. Case settled.
  • Settled patent dispute over the course of a many years of negotiation, prior to litigation, which included a worldwide patent license being taken by client.
  • Represented SiRF Technology Inc. by filing numerous inter partes reexaminations that were all accepted by the PTO with Office Actions rejecting all claims previously held valid in ITC proceedings. Cases settled.
  • Represented patent owner AT&T in patent litigations pending in the Northern District of California. Cases settled.
  • Served as lead counsel representing Archos against Creative Labs patent assertion regarding its “Zen” interface patent. Matter settled after filing of inter partes reexam that was accepted by the USPTO.
  • Represented manufacturer Intervenor Cambridge Silicon Radio (CSR) in patent litigation pending in the Western District of Texas on Bluetooth-related patents. Case settled.
  • Served as lead counsel for Accela Inc. in patent infringement matter. Case voluntarily dismissed by AFMC after filing of a motion to dismiss.
  • Served as lead counsel in patent litigation representing Archos Inc. against charges of infringement relating to patents on audio programming with dynamic program selection in Eastern District of Texas. Case settled.
  • Represented eGain, eHarmony, Fredericks, Inference, Playboy, Quixtar and xDrive in patent litigation against charges of infringement of patent relating to email software in the Eastern District of Texas. Case settled.
  • Representing eTreppid in trade secret and copyright litigation against a former founder. Co-lead counsel for cases pending in Nevada courts. Obtained preliminary injunction.
  • Represented Everypath in a trade secrets case, which involved a six-week jury trial, relating to wireless proxy technology for handheld wireless devices. Case tried with positive outcome.
  • Initiated patent litigation for S3 Incorporated regarding graphic accelerator patents in the Northern District of California. Case settled after successful appeal to the Court of Appeals for the Federal Circuit.
  • Brought declaratory judgment action against Netcentives relating to an internet business method patent. Lead counsel. Case settled.
  • Initiated patent litigation for Haworth Inc. regarding Haworth patents in the Northern District of Michigan. Case settled on eve of trial, yielding Haworth $44 million and licenses to valuable patents.

Professional Highlights

Honors & Awards

  • The Legal 500 U.S., Patent Licensing & Transactional and Patent Prosecution (2014 – 2015)
  • PLC Which Lawyer?, Intellectual Property—San Francisco & Silicon Valley (2010 – 2012)

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Associations

  • American Bar Association
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association

Education

  • J.D., Chicago-Kent College of Law, Illinois Institute of Technology, 1987
    with honors

    B.S., Electrical Engineering, University of Notre Dame, 1984

Admissions

  • California

    Illinois

    District of Columbia

Courts

  • U.S. District Court for the Northern District of California

    U.S. District Court for the Central District of California

    U.S. District Court for the Southern District of California

    U.S. Court of Appeals for the District of Columbia

    U.S. District Court of Appeals for the Federal Circuit

    U.S. Patent and Trademark Office