Media Coverage 09.25.23
Delaware Judge Grants Fox Corporation’s Motion to Dismiss Patent Infringement Case
Law.com highlights win in its Litigator of the Week column
Source: Law360, Law.com
Evan Finkel represents the highest level that can be achieved by an outside counsel. [He] is outstanding on many, if not all, fronts of IP litigation, and it is the quality of his legal service which truly sets him apart.
Evan Finkel, leader of Pillsbury’s Los Angeles Intellectual Property group, handles all aspects of patent, copyright, trademark, trade secret, unfair competition and computer law.
Evan’s practice has a particular focus on all aspects of computer-related technologies, consumer electronics, video games, and automotive industry systems and components. He has more than 35 years of experience representing clients in IP litigation and post-grant proceedings, as well as arbitration and other alternative dispute resolution proceedings, most often involving numerous parties and a multitude of patents. He negotiates technology agreements, prepares IP-related opinions and prosecutes and manages portfolios relating to patents, trademarks and copyrights. He also frequently spearheads IP due diligence in corporate mergers and acquisitions.
Representative Experience
Litigation
- Represented Disney Interactive Studios and LucasArts in defending suit alleging that their video games infringed patents to a “Method for automatically animating lip synchronization and facial expression of animated characters” in which the court granted summary judgment of non-infringement, a ruling the Federal Circuit affirmed on appeal in a precedential decision.
- Secured an $18 million settlement payment to Toshiba Corp. in a patent infringement action against a Taiwanese competitor over DVD technology, and later won a $13 million arbitration award, confirmed on appeal, for further royalties due under the settlement agreement.
- Represented patent owner Globeride Inc. in an inter partes review proceeding in which all challenged claims of Globeride’s patent on an “Oscillate Mechanism for a Fishing Spinning Reel” were found patentable over the prior art.
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- Represented Epson America Inc. in defending suit for infringement of patent to “LAN with Dynamically Selectable Multiple Operational Capabilities” in which the Court granted summary judgment of non-infringement, a ruling the Federal Circuit affirmed on appeal.
- Represented petitioner Medtronic in three inter partes review proceedings in which all challenged claims to a “Percutaneous Aortic Valve Replacement” were found unpatentable by the Patent Trial and Appeal Board, a ruling the Federal Circuit affirmed on appeal.
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Represented Pixar in defending suit for infringement of patent on a "Method for Deriving Pixel Color Using Steradians" asserted against 3D rendering software used in creating animated 3D movies, in which the court granted Pixar's motion to dismiss on ground patent claimed patent-ineligible subject matter, a ruling the Federal Circuit affirmed on appeal.
- Represented petitioner MasterImage 3D in an inter partes review proceeding in which all challenged claims to a “Polarization Conversion Systems for Stereoscopic Projection” were found unpatentable.
- Represented petitioner Medtronic in inter partes review proceedings in which all challenged claims to a “Intravascular Stent with Secure Mounting Means” were found unpatentable, a ruling the Federal Circuit affirmed on appeal.
- Represented AT&T Mobility Inc. in defending suit for infringement of patent on a “Telephone/Transaction Entry Device and System for Entering Transaction Data into Databases” asserted against cellular phones and networks, in which the court granted AT&T Mobility’s motion for summary judgment on ground patent claimed patent-ineligible subject matter, a ruling the Federal Circuit affirmed on appeal.
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Represented Toshiba Corp. in a suit against the then-largest Korean manufacturer of personal computers for infringement of six Toshiba patents, in both district court and bankruptcy court.
- Represented Playdom Inc. in defending suit for infringement of patent on “Odds Accelerator for Promotional Type Sweepstakes, Games and Contests” asserted against video games.
- Represented Disney Online and ESPN Ventures Inc. in defending suit for infringement of nine patents on “Digital Library System” including various methods and apparatuses for surveying, managing and cataloguing multimedia assets, asserted against the online market and distribution of digital content including movies and other programming.
- Represented Intermix Media LLC (f/k/a eUniverse Inc.) in defending suit for infringement of patent on “Prize Redemption System for Games” asserted against online tournament games.
- Represented ABC Inc. (d/b/a Walt Disney Studios Motion Pictures) in defending suit for infringement of patent on “Personalized Digital Media Access System” asserted against online digital rights management systems for movies and other digital content.
- Represented JVC Americas Corp. and its affiliates in defending suit for infringement of patents on “Optical Data Reproduction Apparatus” and “Holographic Elements for an Optical Recording System” asserted against blu-ray disc players.
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Representing Disney Interactive Studios, Inc. and LucasArts in defending suit for infringement of patents on a “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters” asserted against video games, in which the court granted motions for summary judgment of non-infringement and invalidity.
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Representing Disney Interactive Studios, Inc. in defending a suit for infringement of a patent on a “Computer Interface Apparatus for Linking Games to Personal Computers” asserted against video games.
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Represented Intermix Media, Inc. (f/k/a eUniverse Inc.) in defending a suit for infringement of a patent on a “Method and System for Playing Games on a Network” asserted against online single and multiplayer games.
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Represented Mitsubishi Electric Corporation and its affiliates in defending a suit for infringement of patents on an “Audio Device Integration System” and “Multimedia Device Integration System” asserted against automobile infotainment systems.
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Represented Biolase, Inc. in defending a suit for infringement of five patents on dental laser systems coupled with claims for unfair competition and business disparagement.
- Represented Yamaha Corp. of America in defending suit for infringement of four patents asserted against network audio and theater products that support Ethernet connectivity.
Professional Highlights
Honors & Awards
- Recognized by Best Lawyers (published by BL Rankings LLC), Intellectual Property (2019 – 2023)
- Recognized as an “IP Star” for Patents (California) as published by Managing Intellectual Property (2020 – 2021)
- Most Influential IP Attorneys, Los Angeles Business Journal (2017)
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- The Legal 500 U.S., Intellectual Property (2010 – 2011, 2015)
- Client Choice Award, Intellectual Property – Patent, International Law Office and Lexology (2013)
- Super Lawyers (2004 – 2006, 2009 – 2021)
- Invention
- Sole-named inventor on U. S. Patent No. 6,494,571, “Printing medium having separable marginal areas and method of printing same.”
- Associations
- Intellectual Property Association (IPO) Open Source Committee
- Federal Circuit Bar Association
- American Intellectual Property Bar Association
- Central District of California Court Mediation Panel
- Publications
- “Pain in the Alice: The Post-Alice Landscape of Patent Eligibility for Computer Implemented Inventions,” Client Alert, February 2016.
- “Means-Plus-Function Claiming After Williamson v. Citrix Online LLC,” Client Alert, February 2016.
- “Cuozzo or Philips? The Potential Impact of the Supreme Court’s Review of the PTAB’s Claim Construction Standard,” Client Alert, February 2016.
- “Update on USPTO IPR Proceedings,” Client Alert, April 2014.
- “Recent Efforts to Curb Troll Activity,” Client Alert, April 2014.
- “The Fair, Reasonable and Non-Discriminatory (FRAND) License Obligation,” Client Alert, April 2014.
- “The Patent Exhaustion Doctrine,” Client Alert, April 2014.
- “Federal Circuit’s Split Decision on Software Patents in CLS Bank Satisfied No One and Confused All,” Client Alert, May 2013.
- “Federal Circuit Provides Details on How to Adequately Plead Certain Infringement Claims,” Client Alert, June 2012.
- “Federal Circuit Provides Roadmap for Patent Actions at the ITC by Non-Practicing Entities,” Intellectual Property & Technology Law Journal, February 2012.
- “Top 12 Things You Need to Know About the AIA,” Client Alert, October 2011.
- “State of the Joint (a/k/a ‘Split’ or ‘Divided’) Infringement Doctrine,” Client Alert, October 2011.
- “Branding the Cutting Edge: Overview of Current Legal Issues Affecting Consumer Electronics,” Client Alert, October 2011.
- “Federal Circuit Provides Roadmap for Patent Actions at the ITC by ‘Non-Practicing Entities,’” Client Alert, October 2011.
- “‘On-Sale Bar Ruling Portends More Headaches in Patenting Ideas over Previous Offers to Sell,” Client Alert, August 2011.
- “Will New Second-Class Status for Copyright’s First Sale Doctrine Drive Production Offshore?,” Client Alert, August 2011.
- “Federal Circuit’s Tafas v. Doll Decision Preserves New Patent Process Rules, For Now,” Client Alert, April 2009 (with co-author Krista H. Cheatham).
- “Federal Circuit Clarifies Subject Matter Patentability Test,” Client Alert, November 2008 (with co-authors Claudia Frost and Jeffrey Johnson).
- Representative Speaking Engagements
- Section 101 – State of the Law Post-Bilski, George Washington University Law School Symposium on Intellectual Property. Panel Moderator.
- Lectured in Japan on copyright and patent protection for computer software in the U.S. and presented a paper entitled “Outline for Conference on Patent Prosecution for Computer Software Programs under the U.S. Patent Laws.”
- Guest speaker on Forbes Radio’s “World Business Monitor: Successful Business & Legal Strategies in the International Marketplace,” broadcast on major airlines.
Education
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J.D., University of California, Hastings College of the Law, 1981
Order of the Coif, Thurston Honor SocietyB.S., State University of New York, Binghamton, 1978
Phi Beta Kappa
Admissions
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California
U.S. Patent and Trademark Office
Courts
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U.S. District Court for the Central District of California
U.S. District Court for the Northern District of California
U.S. District Court for the Southern District of California
U.S. District Court for the Eastern District of Texas
U.S. Court of Appeals for the Ninth Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. Supreme Court