Current to December 6, 2024
Dr. Shamos has served as an expert witness in
multiple computer software and electronic voting cases. He has participated in the cases
listed below. "D" indicates deposition testimony; "R"
indicates report, declaration or affidavit; "T" indicates trial
testimony.
Total: 398 cases, including 314 patent,
21 electronic voting, 22 trade secret, 13 copyright, 1 criminal.
Affidavits, reports or declarations submitted in 284 cases.
Deposed in 161 cases.
Testified at trial or hearing in 50 cases (20 jury trials).
Participated in 7 ITC investigations, 121 IPRs, 22 CBMs, 10 PGRs, and 10 reexams.
1. C.W. Communications, Inc. v. International Research
Service, Inc., Civil Action No. 84-890, (W.D. Pa. 1984), aff'd. Case No. 88-3331
(3d Cir., Oct. 31, 1988). Served as an expert
for plaintiff publisher as to the fame of its "Computerworld" trademark. Result: permanent
injunction entered against defendant. Judge McCune's Memorandum and Order states.
"We accept the conclusion drawn by Dr. Shamos." Firm: Webb,
Burden Robinson & Webb (now the Webb Law
Firm). (D,T)
2. E.F. Hutton, Inc. v. Gipson
(W.D. Pa. 1985). Dr. Served as an expert for
defendant-counterclaimant physician as to fraud in the inducement by a
computer hardware supplier. Plaintiff had provided capital
financing for the purchase. Result: defendant was awarded
compensatory damages + $250,000 punitive damages. (D,T)
3. In re Comprehensive Business Systems,
119 B.R. 573 (S.D. Ohio 1990). Served as an expert for a
secured creditor in a bankruptcy case in which the creditor sought to
obtain software still in development for which it had advanced over $2
million in funding. Dr. Shamos opined as to the value of the
incomplete software. Result: the creditor was able to purchase the
software from the Trustee for $67,500. The Court referred in its
opinion to "the testimony of the eminent and impressive Dr. Shamos."
(D,R,T)
4. Levinson Steel Co. v. American Software, Inc. et al.,
Civil Action No. 96-282, W.D. Pa. (1996). Served as an expert for plaintiff
in a case involving bad faith estimates of computer processing capacity resulting
in delivery of an inadequate system. Result: settlement in
favor of plaintiff in an undisclosed amount. Contact:
Reed Smith LLP,
225 Fifth Ave., Pittsburgh, PA 15222. (D,R)
5. ASE Limited v. INCO Alloys International, Inc., Civil
Action No. 98-1266, (W.D. Pa. 1998). Served as an expert for defendant concerning
breach of computer services contract by declaratory judgment plaintiff. Result:
determination that defendant was free to seek services from a different vendor.
Firm: Reed Smith LLP,
225 Sixth Ave., Pittsburgh, PA 15222.
Attorney:
Anthony Basinski, Esq. (D,T)
6. Twentieth Century Fox Film Corp. v. iCraveTV, 53
U.S.P.Q. 2d 1831 (W.D. Pa. 2000). Served as an expert for Plaintiffs concerning Internet
technology used to stream video from U.S. TV stations through web sites in Canada.
Result: TRO and preliminary injunction issued against defendants prohibiting continued
infringement in the U.S. Firm:
Reed
Smith LLP. Attorney: Gregory Jordan, Esq.
(T)
7. Invited testimony before the British House of Lords,
Subcommittee B of the European Union Committee, April 20, 2000. Subject: European
regulation of eCommerce. View testimony.
8. Universal Studios, Inc. v. Reimerdes, 111 F. Supp. 2d
294 (S.D.N.Y. 2000), aff'd 273 F.3d 429 (2d Cir. 2001). Served as an
expert for plaintiff movie studios concerning accused
software for decrypting DVDs in the first case interpreting the Digital Millennium
Copyright Act. Result: permanent injunction issued in favor of plaintiffs on August
17, 2000. Contact:
William Hart, Esq.,
Proskauer Rose LLP. View testimony. View opinion. View appellate
opinion. (D,T)
9. MercExchange, L.L.C.
v. eBay, Inc. et al., Case No. 2:01-CV-736 (E.D. Va. 2001).
Served as an expert for defendant eBay
in an infringement case concerning U.S. Patent
6,202,051 for Internet
auctions. Following Dr. Shamos' reports, Defendants obtained
a summary judgment of noninfringement of the subject patent.
On the other patents, the case went to the U.S. Supreme Court, which
ruled that injunctions are not automatic in patent cases. Contact:
Tim
Teter, Esq., Cooley LLP.
(D,R)
10. PowerQuest Corp. v. Quarterdeck Corp. et
al., Case No. 2:97-CV-0783 (D. Utah 1997). Served as an expert for
plaintiff PowerQuest in an infringement case concerning U. S. Patents 5,675,769 and 5,706,472 for a method of resizing hard disk partitions. Dr. Shamos testified at
the Markman hearing. Case settled when one of the defendants acquired
plaintiff. Attorney: Gregg I. Anderson, Esq., formerly at Merchant & Gould, now an Administrative Patent Judge at the Patent Trial and Appeal Board. (R,T)
11. Sightsound.Com Inc. v. N2K Inc. et al.,
C.A. 98-118 (W.D. Pa. 1998). Served as an expert for defendants,
including a subsidiary of Bertelsmann AG, concerning validity of U.S. Patents
5,191,573
and 5,966,440
for distribution of digital audio via telecommunications lines. Case
settled. Firm: Parcher, Hayes &
Snyder, (no longer in existence). Contact:
Steven M. Hayes, Esq.,
Simmons Hanley Conroy, LLC, 112 Madison Ave., New York, NY 10016. (D,R)
12. Freemarkets, Inc. v. B2eMarkets, Inc.,
C.A. 02-162-SLR (D. Del. 2002). Served as an expert witness for
plaintiff concerning infringement of U.S. patents
6,216,114
and 6,223,167,
concerning methods of conducting electronic auctions. Case settled two
weeks after expert attended a demonstration of the accused product.
Contact: D. Michael
Underhill, Esq., Boies,
Schiller & Flexner, LLP, Washington, DC.
13. Lifecast.com, Inc. v.
ClubCorp, Inc., AAA
Case No. 71Y1170076301 (Dallas, TX). Served as an expert witness for
respondent in a case alleging copyright infringement of Internet websites.
Testified at arbitration. Result: Complainant's claims denied; award for respondent on counterclaims
and for attorney's fees. Contact:
Bill
Whitehill, Esq., Gardere Wynne Sewell
LLP, 1601 Elm St., Dallas, TX 75201. (T)
14. IP Innovation LLC v. Thomson Learning, Inc.
et al., Case H-02-2031 (S.D. Tex. 2002). Served as an expert for
defendant The Princeton Review, Inc. concerning alleged infringement of U.S.
Patent 4,877,404
relating to online delivery of educational courses. Summary judgment
of non-infringement obtained for defendant after favorable Markman
proceeding.
Contact: Peter Vogel, Esq., Gardere
Wynne Sewell LLP, 1601 Elm St., Dallas, TX 75201. (R)
15. Starpay.com LLC et al. v. Visa
International Service Association et al., Case 3-03-CV-976-L (N.D.
Tex. 2003). Served as an expert for defendant Visa concerning alleged
infringement of U.S. Patent
5,903,878
relating to online authentication of credit card customers. Dr. Shamos
provided the court with a Markman tutorial in 2004 and a non-infringement
and invalidity declaration in 2008. Case settled in February 2008. Contact:
Stanley Young, Esq.,
Covington & Burling LLP,
333 Twin Dolphin Drive, Suite 700, Redwood Shores, CA 94065. (D,R,T)
16. Safeclick LLC v. Visa International Service
Association et al., Case C-03-5865 (N.D. Cal. 2003). Served as an
expert for defendant Visa concerning alleged infringement of U.S. Patent
5,793,028
relating to online authentication of credit card customers. Summary
judgment of noninfringement granted for Visa based on expert reports,
affirmed after appeal to the Federal Circuit. Contact:
Stanley Young, Esq.,
Covington & Burling LLP,
333 Twin Dolphin Drive, Suite 700, Redwood Shores, CA 94065. (D,R)
17. Wells Fargo Bank
Minnesota, NA et al. v. UBS Warburg Real Estate Securities, Inc.,
Case 02-2849 (192d Judicial District, Dallas Cty., Tex, 2002) and LaSalle
Bank, NA et al. v. UBS Warburg Real Estate Securities, Inc., Case 02-2899-G
(134th Judicial District, Dallas Cty., Tex, 2002). Served as an expert
for defendant UBS Warburg in an electronic discovery matter involving a case
of first impression regarding Texas Discovery Rule 196.4 allocating costs of
discovery of electronic records.
Firm: Gardere
Wynne Sewell LLP, 1601 Elm St., Dallas, TX 75201. Contact:
Dawn Estes, Esq.,
Taber, Estes Okon Thorne & Carr PLLC,
3811 Turtle Creek Blvd., Suite 2000, Dallas, TX 75219. (D,R)
18. American
Association of People with Disabilities et al. v. Shelley et al.,
Case No. CV04-1526 FMC (PJWx) (C. D. Calif., 2004). Served as an
expert for plaintiff AAPD, which has brought a claim against the California
Secretary of State that requiring DRE voting machines to be equipped with
audit trails violates the rights of disabled persons. Plaintiffs'
application for TRO and preliminary injunction denied. Firm: Howrey LLP,
(no longer in existence). Attorney John E. McDermott is now a
Magistrate Judge in the Central District of California. (R)
19. Paul Ware v. Target Corp.,
CA 4:03-CV-0243-HLM (N.D. Ga., 2003). Served as an expert for
defendant Target Corp., a large retailer, in a case involving U.S. patent
4,707,592, claiming a method of conducting credit card sales. Case
settled during Markman preparations. Contact:
Thomas
P. Burke, Esq., Ropes & Gray LLP,
1211 Ave. of the Americas, New York, NY 10036.
20. Viad Corp., v. C. Alan
Cordial et al., No. 03-1408 (W.D. Pa., filed 2003).
Served as an expert for defendants in an action alleging
misappropriation of trade secrets relating to software for automating
certain aspects of the exhibit booth and trade show industries.
Status: case settled immediately before trial, after plaintiff's
unsuccessful Daubert challenge of Dr. Shamos. Contact:
Barbara Scheib, Esq.,
Cohen & Grigsby, P.C., 11 Stanwix
Street, Pittsburgh, PA 15222. (D,R,T)
21. Schade et al. v.
Maryland State Bd. of Elections et al., Case No. C0497297 (Cir.
Ct. Anne Arundel Cty. Md., 2004). Served as an expert
for defendants in a case challenging the decision of the Board of
Elections not to decertify Diebold AccuVote system. Result:
Plaintiff's motion for preliminary injunction denied, upheld on appeal. Judge Manck's
opinion cites Dr. Shamos' testimony as
follows: "the court finds Dr. Shamos, Defendants' expert, to be the true
voice of reason and the most credible expert in this matter."
The denial of preliminary injunction was upheld by the Maryland Court of
Appeals, which commented extensively on Dr. Shamos' testimony in its
opinion.
Contact:
Michael
Berman, Esq., (formerly Maryland Deputy Attorney General),
Rifkin, Weiner, Livingston,
Levitan & Silver, LLC. (R,T)
22.
Wexler et al.
v. Lepore et al., Case No. 04-80216 (CIV-COHN) (S.D. Fla. 2004) .
Served as an
expert for defendants, various Florida election supervisors against claim by
U.S. Congressman Robert Wexler that use of DRE voting machines without paper
audit trails violates the equal protection clause of the U.S.
Constitution. Dr. Shamos testified on Oct. 19, 2004. The trial
judge rendered
judgment in favor of defendants on Oct. 25. Contact:
Jason Vail, Esq.,
then Assistant Attorney General, Department of Legal
Affairs, The Capitol, Tallahassee, FL, now at
Allen Norton & Blue, PA.
Opinion.
(T)
23. Siemens Information and Communication
Networks, Inc. v. Inter-Commercial Business Systems, Inc.,
Civil Action 3-03CV2171-L (N.D. Tex. 2004). Served as an expert
for defendant against claim of copyright infringement based on
reverse-engineered firmware resident in telephone switching
systems. Status: case settled shortly after the submission of Dr.
Shamos's rebuttal report on non-infringement. Contact: Bill
Whitehill, Esq., Gardere Wynne Sewell
LLP, 1601 Elm St., Dallas, TX 75201. (R)
24. Soverain Software LLC
v. Amazon.com, Inc., C.A. No. 6:04-CV-14 (E.D. Tex. 2004).
Served as an expert for plaintiff regarding asserted patents
5,708,780,
5,715,314 and
5,909,492, relating to the shopping cart paradigm of electronic
commerce. Status: settled in Sept. 2005 with Amazon paying
$40 million to Soverain and taking a license under the patents in suit. Contact:
Ognian Shentov, Esq.,
Jones Day, 222 E. 41st St., New
York, NY 10017. (D,R)
25. CollegeNET, Inc. v. The
Princeton Review, Inc., Case '051205KI (D. Ore. 2005). Served as an expert for
defendant The Princeton Review, Inc. concerning alleged infringement of U.S.
Patent
6,460,042 relating to online delivery of educational courses.
Case settled in December 2007.
Contact: Peter Vogel, Esq., Gardere
Wynne Sewell LLP, 1601 Elm St., Dallas, TX 75201. (R)
26. CombineNet, Inc. v. VerticalNet. Inc.,
GD 05-018911 (Ct. Common Pleas, Allegheny Cty., PA). Served as an
expert for plaintiff in an action for trade secret misappropriation
relating to a system for conducting electronic auctions. Plaintiff
won in arbitration. Contact:
Mark Knedeisen, Esq.,
K&L Gates LLP,
210 Sixth Avenue, Pittsburgh, PA 15222-2613. (T)
27.
RealSource, Inc. v.
Best Buy Co., Inc. et al., No. A04-CA-771-LY (W.D. Tex.).
Served as an expert for defendant Lowe's Companies, Inc., against a
claim of infringement of U.S. patent
5,732,136 relating to validation of point-of-sale debit card
transactions. Provided a tutorial to the Court during Markman proceedings concerning debit card technology.
Defendants won summary judgment of non-infringement, affirmed by the Federal Circuit. Defendants Lowe's settled and
was not
involved in the appeal. Contact:
Michael S. Connor, Esq.,
Alston & Bird LLP,
Bank of America Plaza, 101 South Tryon St, Suite 4000, Charlotte,
NC 28280-4000. (R,T)
28. DE Technologies, Inc. v.
Dell, Inc. et al., No. 7:04-CV-00628 (W.D. Va.).
Served as an expert for plaintiff DE Technologies, Inc., asserting a
claim of infringement of U.S. patents
6,460,020 and
6,845,364, relating to a system for implementing international
sales transactions. Case settled after and adverse summary
judgment. However, the Court used Dr. Shamos' testimony in its
opinion. Contact:
David Marder, Esq.,
Robins Kaplan Miller & Ciresi LLP,
800 Boylston Street, 25th Floor, Boston, MA 02199. (D,R,T)
29. Eaton Power Quality Corp. v. J.T. Packard
& Associates, No. 05 C 3545 (N.D. Ill. 2005). Served as
expert for plaintiff in a claim of software copyright infringement
involving a system for configuring industrial uninterruptible power
supplies. Case settled in early 2007. Firm: Dewey & LeBoeuf.
Contact: Keith
P. Schoeneberger, Esq., Pasulka
& Associates PC.
(D,R)
30. Taylor et al. v.
Onorato et al., CA 06-481 (W.D. Pa 2006). Served as an expert
for Commonwealth of Pennsylvania defendants in an action seeking to
enjoin the use of electronic voting machines in Allegheny County, PA.
Dr. Shamos testified at length in a preliminary injunction hearing held
April 25-27, 2006 before Judge Lancaster. The injunction was denied on April 28.
Suit was subsequently dropped by plaintiffs. Contact:
Mark Aronchick, Esq.,
Hangley Aronchick Segal Pudlin &
Schiller,
One Logan Square, 18th & Cherry Streets, 27th Floor, Philadelphia, PA
19103. (T)
31. FedEx Ground Package
System, Inc. v. Applications International Corp., CA No. 03-1512 (W.D.
Pa.). Served as an expert for defendant counterclaiming for
copyright infringement and trade secret misappropriation relating to
software for maintaining occupational health and safety records.
Dr. Shamos's testimony was
excluded because he was unable to perform a side-by-side comparison
of the original and accused works. Case has settled. Contact:
Ronald
Hicks, Esq., Meyer, Unkovic & Scott
LLP, 1300 Oliver Bldg., Pittsburgh, PA 15222. (D,R)
32. NetMoneyIN, Inc. v. Verisign, Inc. et al.,
Cv-01-441-TUC-RCC (D. Ariz.). Served as an expert for defendants
Bank of America Merchant Services, Inc. and Wells Fargo Bank, N.A., who
are accused of infringing claim 23 of U.S. patent
5,822,737, relating to an electronic payment system. Wells
Fargo and Bank of America have settled. Contact:
K&L Gates LLP,
State Street Financial Center, One Lincoln Street, Boston, Massachusetts
02111-2950. (D,R)
33. Contois Music
Technology, LLC v. Apple Computer, Inc., 2:05-CV-163 (D. Vermont,
filed Feb. 13, 2006). Served as an expert for plaintiff in an
action alleging that the Apple iTunes software infringed U.S. patent
5,864,868, relating to a method for selecting music from an
electronic catalog. Case settled after a favorable Markman order.
Contact: John Rabena, Esq.,
Sughrue Mion PLLC,
2100 Pennsylvania Avenue, NW, Suite 800, Washington, DC
20037-3213.
34. Banfield et al. v. Cortés, 442 MD 2006 (PA
Cmwlth. Ct.). Served as an expert
for defendant Secretary of the Commonwealth of Pennsylvania in an action to
compel the decertification of all electronic voting machines in
Pennsylvania. In February 2008 Defendant successfully repelled an
emergency motion for preliminary injunction. In August 2012, the Court
denied Petitioners' motion for summary judgment, citing Dr. Shamos's
expert report extensively. In October 2013, the Commonwealth Court
granted summary judgment for the Secretary. The Pennsylvania Supreme Court
affirmed on February 18, 2015. Contact: Steven E. Bizar,
Esq., Buchanan Ingersoll &
Rooney PC, Two Liberty Place, 50 S. 16th St., Philadelphia, PA
19102-2555. (D,R)
35. Remote Inventory
Systems, Inc. v. WESCO Distribution, Inc., AAA Case No. 55 171 00493
05 (Pittsburgh, PA). Served as an expert for respondent in a case
alleging misappropriation of trade secrets in a computerized inventory
system. Contact:
Kirsten Rydstrom, Esq.,
Reed Smith LLP,
225 Fifth Ave., Pittsburgh, PA 15222. (D,R)
36. SyncSort, Inc. v.
Innovative Routines International, Inc., Civil Action No.
04-3623 (WHW) (D. New Jersey). Served as an expert witness for
defendant in an action alleging misappropriation of trade secrets
embodied in plaintiff's Unix sorting software. Dr. Shamos
testified at a bench trial in January 2011. Case settled after an
appeal to the Third Circuit was filed.
Contact: David R. Fine, Esq.,
K&L Gates LLP, 17 N. Second Street,
18th Floor, Harrisburg, PA 17101-1507. (D,R,T)
37. Digital Impact, Inc.
v. Bigfoot Interactive, Inc., Civil Action C05 00636 (CW) (N.D.
Cal.). Served as an expert witness for defendant in an action
alleging infringement of U.S. Patent
6,449,634, relating to determining which file formats can be
processed by an email client. Result: defendant obtained
summary judgment of non-infringement, upheld by the Federal Circuit. Contact:
Arthur Dresner, Esq.,
Duane Morris LLP, 1540 Broadway, New York, NY 10036.
(D,R)
38. Prism Technologies LLC
v. Verisign, Inc. et al., CA 05-214-JJF (D. Del.). Served as
an expert for plaintiff in an action alleging infringement of U.S.
Patent
6,516,416, relating to use of a hardware key for authentication over
networks. Defendants prevailed on summary judgment of
non-infringement, which was upheld on appeal. Firm:
Robins Kaplan Miller & Ciresi LLP.
Contact:
Dirk D.
Thomas. Esq., McKool Smith,
1999 K Street, N.W., Suite 600,
Washington, DC 20006. (R)
39. AdvanceMe, Inc.
v. RapidPay LLC et al., Civil Action 6:05-cv-424 LED (E.D. Tex., Tyler
Division). Served as an expert witness for plaintiff in an action
alleging infringement of U.S. Patent
6,941,281,
relating to an automated payment system for dividing credit card
proceeds between a merchant and another party. Testified at a
bench trial in July 2007 before Judge Davis, who held the patent
infringed but invalid for obviousness. Firm:
Paul, Hastings LLP, Five Palo Alto Sq., Palo
Alto, CA 94306. Contact:
Ronald
S. Lemieux, Esq.,
Singularity LLP, 275 Shoreline Drive, Redwood Shores, CA 94065. (D,R,T)
40. IBM Corp. v. Amazon.com, Inc., CA 9:06-CV-242-RHC
(E.D. Tex., Lufkin Div.) and IBM Corp. v. Amazon.com, Inc., CA
6:06-CV-452-LED (E.D. Tex., Marshall Div.). Served as an expert for IBM
in related actions alleging infringement of U.S. Patents 5,319,542,
5,442,771,
5,446,891,
5,796,967
and 7,072,849, all concerning methods of conducting electronic
transactions, and a counterclaim for infringement of U.S. Patent 5,826,258,
concerning a method for querying semistructured data. Case settled
early in discovery when the parties cross-licensed each other's
patents. Contact: Mark
J. Ziegelbein, Esq., Dentons US LLP,
2000 McKinney Ave., Suite 1900, Dallas, TX 75201-1858.
41. The MathWorks, Inc. v.
COMSOL AB et al., CA 6:06-CV-334 (E.D. Tex., Tyler Division).
Served as an expert for plaintiff The MathWorks, providers of the mathematical
software system MATLAB, in an action alleging copyright infringement and infringement of U.S.
Patents
7,051,338 and
7,181,745 concerning methods for invoking object
methods from external environments. After trial, the case settled
with defendant admitting infringement, paying $12,000,000 in damages and
waiving appeal rights.
Contact: Krista Schwartz,
Esq., Jones Day, 77 W. Wacker
Dr., Chicago, IL 60601-1692.
42. Avante Int'l.
Technology Corp. v. Diebold Election Systems et al., Case 4:06-CV-0978
TCM (E.D.
Mo., Eastern Division).
Served as an expert for defendants Sequoia Voting Systems and Premier
Election Systems in an action alleging infringement of U.S.
Patents
6,892,944,
7,036,730 and
7,077,313 concerning
electronic voting technology. Dr. Shamos testified at a 5-day
trial in February 2009. Result: The jury found Plaintiff's
asserted claims invalid as anticipated and obvious.
Contact: Peter
T. Ewald,
Esq., Oliff & Berridge, PLC, 277 South Washington Street, Suite 500, Alexandria, VA 22314.
(D,R,T)
43. Netcraft Corp. v.
eBay, Inc. and PayPal, Inc., Case 3:07-cv:00254-bbc (W.D. Wisc.
2007). Served as an expert for defendants in an action alleging
infringement of U.S. Patents
6,351,739 and
6,976,008
concerning methods of billing for ecommerce transactions over the
Internet. Defendants were granted summary judgment of
non-infringement on Dec, 10, 2007, upheld on appeal. Firm: Irell & Manella
LLP, 180 Avenue of the Stars, Los Angeles, CA 90067. Contact:
Kenneth
Weatherwax, Esq., Goldberg,
Lowenstein & Weatherwax LLP, 1925 Century Park East, Suite 2120, Los
Angeles, CA 90067.
44. ACLU of Ohio et al. v.
Brunner et al., Case 1:09 CV 0145 (N.D. Ohio 2008). Served as
an expert witness in an action alleging that the use of central count
optical scan voting should not be permitted in Cuyahoga County, as had
been ordered by the county board of elections. A preliminary
injunction was denied in February 2008. The case became moot and
was dismissed in May 2008 when the Ohio Legislature granted by statute
the relief requested by plaintiff, prohibiting the use of central count
opscan in Cuyahoga County.
Contact: Meredith Bell-Platts, Esq.,
ACLU Voting Rights Project, 2600 Marquis One Tower, Atlanta, GA
30303. (R)
45. Ariba, Inc. v. Emptoris, Inc., Civil Action 9:07-CV-90-RHC (E.D. Tex. 2007).
Served as an expert for Ariba in an action alleging infringement of
U.S. Patents
6,216,114 and
6,499,018, relating to the conduct of electronic auctions.
Dr. Shamos testified in a jury trial on infringement and validity.
Result: verdict finding all asserted claims valid and willfully infringed. Contact:
Robert Fram, Esq.,
Covington & Burling
LLP, One Front St., San Francisco, CA 94111. (D,R,T)
46. EpicRealm Licensing,
LP v. Autoflex Leasing Inc. et al., CA 5:07-CV-125 (E.D. Tex. 2005).
Served as an expert for defendant Herbalife International of America,
Inc. in an action alleging infringement
of U.S. patents
5,894,554 and
6,415,335, relating to a system for
managing generation of dynamic Internet web pages. All original defendants
settled. See also the Oracle case below. Contact:
Ognian
Shentov, Esq.,
Jones Day, 222 E. 41st St., New
York, NY 10017. Also served as an expert for defendant
FriendFinder in a separate trial in this action. After a jury trial
before Judge Folsom, the
patents were found valid and infringed, but the jury awarded only $1.1M, the
smallest amount testified to by defendant's damages expert. Contact:
Michael J.
Sacksteder, Esq.,
Fenwick & West LLP, 555 California
St., San Francisco, CA 94104. (D,R,T)
47. Oracle Corporation v. EpicRealm Licensing,
LP, CA 2-06-414 (D. Del. 2006), later Oracle Corporation v.
Parallel Networks, LLC.
Served as an expert for Oracle in a declaratory judgment alleging
invalidity
of U.S. patents
5,894,554 and
6,415,335, relating to a system for
managing generation of dynamic Internet web pages. The patents are
the same as those in the EpicRealm case, above. Oracle obtained
summary judgment of non-infringement, reversed on appeal to the Federal
Circuit. Case settled in May 2011 on the eve of trial. Firm:
Kilpatrick Townsend &
Stockton, LLP,
379 Lytton Ave., Palo Alto. CA 94301. Contact:
Theodore T. Herhold,
Singularity LLP, 275 Shoreline
Drive, Redwood Shores, CA 94065. (D,R)
48. Saulic v. Symantec Corporation et al.,
Case No. SA CV 07-610 AHS (C.D. Cal., Santa Ana Division, 2007).
Served as an expert for defendant Symantec in a removal action alleging
violation of California Civil Code §1747.8, relating to the collection
of personal identification information in connection with credit card
transactions. Case settled. Original firm: Heller Ehrman. Contact:
Chad R. Fuller, Esq.,
Troutman Sanders LLP, 11682
El Camino Real, Suite 400, San Diego, CA 92121. (R)
49. Gusciora et al. v. McGreevey et al. (now Gusciora v.
Christie), Docket No.
MER-L-2691-04 (N.J. Super., Mercer County). Served as an expert
for defendants, including the Governor and Attorney General of New
Jersey, in a case alleging that the state's AVC Advantage voting
machines are unconstitutionally insecure. A bench trial was held
from January-May, 2009 before Judge Linda Feinberg.
The Court's
opinion adopts Dr. Shamos' testimony and comments on it extensively.
Affirmed on appeal in October 2013. Contact: Leslie Gore, Esq., Asst. Atty. Gen'l., 25 Market Street, P.O.
Box 112, Trenton, NJ 08625. (D,R,T)
50. R.R. Donnelley &
Sons Company v. Quark, Inc. et al., C.A. No. 06-00032-JJF (D. Del.).
Served as an expert for plaintiff R.R. Donnelley in a case alleging
infringement of U.S. Patents
6,205,452,
6,327,599,
6,844,940 and
6,952,801, relating to book assembly, imposition of graphics and
control of electronic presses. Case has settled. Contact:
Stuart W. Yothers,
Esq., Ropes & Gray LLP, 1251
Avenue of the Americas, New York, NY 10020.
51. MOAEC, Inc. v. Pandora
Media, Inc. et al., Case No. 07-cv-654-bbc (W.D. Wisc.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patents
5,969,283,
6,232,539,
6,953,886 and
7,205,471, relating to systems for organizing and retrieving digital
music. Two defendants obtained summary judgment of noninfringement;
the remaining defendant settled. Contact:
Joshua Krumholz, Esq.,
Holland & Knight, LLP,
10 St. James Avenue,
11th Floor,
Boston, MA
02116. (D,R)
52. Web.com, Inc. v. The
Go Daddy Group, Inc., Case No. CV07-01552-PHX-MHM (D. Ariz.).
Served as an expert for defendant in a case alleging infringement of
U.S. Patents
6,654,804,
6,789,103,
6,842,769 and
6,868,444, relating to methods for managing configuration of web
servers and provision of Internet services. Case has settled.
Firm:
Wilson Sonsini Goodrich &
Rosati,
650 Page Mill
Road, Palo Alto, CA 94304. Contact:
Richard G. Frenkel, Esq., Latham &
Watkins LLP, 140 Scott Drive, Menlo Park, CA 94025.
53. Hummel et al. v. Dynacraft BSC, Inc. et
al., Case No. CV 052214 (Cal. Super. Marin Cty.). Served as
an expert for defendants in an action alleging breach of contract for
web hosting services. Dr. Shamos provided four hours of trial
testimony. Result: verdict for the defense. Contact:
Joe B.
Harrison, Esq., Gardere Wynne
Sewell LLP, 1601 Elm St., Suite 3000, Dallas, TX 75201. (T)
54. Tegg Corp. v.
Beckstrom Electric Co. et al., Civil Action No. 2:08-CV-00435-NBF (W.D.
Pa.).
Served as an expert for defendants in a case alleging infringement of
copyright in computer software for administering field maintenance of
electrical equipment. Case has settled. Original firm:
Reed Smith LLP. Contact:
Richard
D. Kelley, Esq.,
Bean Kinney & Korman,
2300 Wilson Blvd., Suite 700, Arlington, VA 22220.
55. Cordance Corporation v. Amazon.com, Inc., Civil Action No. 06-491-MPT (D. Del.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patents
5,862,525,
6,088,717 and
6,757,710, relating to an infrastructure for conducting online
transactions. In August 2009 a jury found the '717 patent valid but not
infringed and the '710 patent infringed but invalid. The finding
of invalidity of the '710 patent was vacated by the Court on judgment as
a matter of law. The Federal Circuit reversed and reinstated the
jury's finding. Contact:
Robert M. Abrahamsen, Esq.,
Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, MA 02210.
(D,R, T)
56. Anthurium Solutions, Inc. v.
MedQuist, Inc. et al., Case No. 2:07-vcv-484 (DF/CE) (E.D. Tex.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patent
7,031,998, relating to a distributed workflow system. Case
settled ten days after responsive expert reports were served.
Contact:
Joshua Krumholz, Esq.,
Holland & Knight, LLP,
10 St. James Avenue,
11th Floor,
Boston,
MA 02116. (R)
57. Performance Pricing, Inc. v.
Google, Inc. et al., Case No. 2:07-cv-432(LED) (E.D. Tex.).
Served as an expert for defendant Yahoo! in a case alleging infringement
of U.S. Patent
6,978,253, relating to determining prices for items sold online.
Case has settled as to defendant Yahoo!. Contact:
Michael A.
Jacobs. Esq., Morrison & Foerster LLP,
425 Market Street, San Francisco, CA 94105.
Also served as an expert for remaining defendants Google
and AOL. In March 2010 the Court granted defendants' motion
for summary judgment of noninfringement, affirmed by the Federal Circuit. Contact:
David A. Perlson. Esq., Quinn
Emanuel Urquhart & Sullivan, LLP,
50 California Street, San Francisco, CA 94111.
(D,R)
58. Nationwide Power Solutions, Inc. et
al., v. Eaton Electrical Inc., Case No. CV-8:07-0883-JVS (C.D.
Cal.). Served as an expert for defendant/counterclaimant Eaton in
a case alleging antitrust violations by Eaton arising out of proprietary
servicing software in its uninterruptible power supplies. Case has
settled. Contact:
James L.
Day, Esq., Latham & Watkins LLP,
505 Montgomery Street, Suite 2000 San Francisco, CA 94111.
59. CBS Interactive, Inc.
v. Etilize, Inc., Case No. C -6-05378 (MHP) (N.D. Cal.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patents
6,714,933 and
7,082,426, relating to web crawling technology to aggregate product
information. Defendant consented to an injunction against further
infringement and the case settled. Firm:
Winston & Strawn, LLP, 101
California Street, San Francisco, CA 94111.
Contact:
Glenn E. Westreich, Esq.,
Hayes and Boone, LLP, 2033 Gateway Place, San Jose, CA 95110.
60. Geographic Services,
Inc. v. Anthony Collelo, Case 2008-9961 (Fairfax Cty., Va.). Served as an expert for plaintiff in a case alleging misappropriation
of trade secrets involving determining and proofing geographic names as
applied to maps and satellite imagery. Case was dismissed by Judge
Ney on technical legal grounds at the close of Plaintiff's case.
The Virginia Supreme Court
reversed and remanded the case for further proceedings. Case
has settled. Contact:
Mark W. Wasserman, Esq.,
Reed Smith LLP, 3110
Fairview Park Drive, Suite 1400, Falls Church, VA 22042.
(D,R,T)
61. ODS Technologies, LP v. Magna Entertainment
Corp., et al., CV 07-03265 DDP (D. Del.). Served as an
expert for defendants in a case alleging infringement of U.S. Patents
5,830,068,
6,004,211,
6,089,981,
6,554,709 and
7,229,354, relating to off-track wagering systems and methods for
restricting wagering based on location. Dr. Shamos submitted a
declaration in support of summary judgment. Case settled before
expert reports were due.
Contact:
Virginia DeMarchi, Esq., Fenwick &
West, LLP, 801 California Street,
Mountain View, CA 94041. (R)
62. Gannett Satellite Information Network,
Inc. v. Office Media Network, Inc., C.A. No. 08-96-GMS (D.Del.).
Served as an expert for defendant in a case alleging infringement of
U.S. Patents
6,288,688,
6,622,826,
6,981,576 and
7,270,219, relating to display of advertising information on screens
in elevators. Case settled shortly after Dr. Shamos's deposition. Contact:
Steven R. Trybus,
Esq., Jenner & Block LLP, 353
N. Clark St., Chicago, IL 60654. (D,R)
63. Avante Int'l.
Technology Corp. v. Premier Election Solutions et al., Case
4:06-CV-091367-ERW (E.D.
Mo., Eastern Division).
Served as an expert for defendants Sequoia Voting Systems and Premier
Election Systems in an action alleging infringement of U.S.
Patents
7,422,150,
and
7,431,209 concerning
electronic voting technology.
Case settled in December 2009. Contact:
Peter T. Ewald,
Esq., Oliff & Berridge, PLC, 277 South Washington Street, Suite 500, Alexandria, VA 22314.
(R)
64. Accenture Global Services GmbH et al. v.
Guidewire Software, Inc., Civ. No. 07-826-SLR (D. Del.).
Served as an expert for Accenture in a case alleging misappropriation
of trade secrets and infringement of U.S. Patents
7,013,284 and
7,017,111, relating to automated insurance claim handling. The
District Court found the asserted system claims invalid under 35 U.S.C.
§ 101, affirmed by the Federal Circuit at 2011-1486. Case settled
in Oct. 2011. Original firm: Morrison & Foerster, LLP. Contact:
L.
Scott Oliver, Esq.,
K&L Gates LLP,
630 Hansen
Way, Palo Alto, CA 94304. (D,R)
65. Alexsam, Inc. v. Evolution Benefits, Inc.
et al., Case No. 2:07cv288-TJW (E.D. Tex.). Served as an
expert for plaintiff in a case alleging infringement of U.S. Patent
6,000,608, relating to multifunction epayment cards. Case
settled four weeks after Dr. Shamos's deposition. Original firm:
Wolf, Greenfield & Sacks, P.C. Contact:
James
Foster, Esq.,
Hayes Messina
Gilman Hayes LLC, 200 State St., 6th Floor, Boson, MA 02109.
(D,R)
66. Motivation Innovations, LLC v. DSW Inc.
et al., C.A. No. 08-334-SLR (D. Del.). Served as an expert for
defendant DSW, Inc. in a case alleging infringement of U.S. Patent
5,612,527, relating to a system for redeeming discount offers at
point of sale. Case has settled. Contact:
Drew Blatt, Ph.D.,
Esq., Wood, Heron & Evans LLP,
2700 Carew Tower 441 Vine Street Cincinnati, Ohio 45202.
67. Discovery Communications, Inc. v.
Amazon.com, Inc., C.A. No. 09-178-ER (D. Del.). Served as an
expert for plaintiff Discovery Communications in a case alleging
infringement of plaintiff's U.S. Patents
5,986,690,
6,657,173,
7,298,851,
7,299,501,
7,336,788 and
7,401,286, relating to electronic book viewers and electronic book
selection and delivery systems, and defendant-counterclaimant's U.S.
Patents
6,029,141 and
7,337,133, relating to Internet-based customer referral systems.
Case has settled. Contact:
Brent
P. Lorimer, Esq.,
Workman | Nydegger, 1000 Eagle Gate Tower, 60 East South Temple Salt
Lake City, UT 84111.
68. Amazon.com v. Discovery
Communications, Inc., No. 2:09-cv-0681-RSL (W.D. Wash.). Served as
an expert for defendant Discovery Communications in a case alleging
infringement of U.S. Patents 6,006,225 and 6,169,986,
relating to refinement of online search queries, and U.S. Patents 6,266,649 and 6,317,722.,
relating to generation of online recommendations. Case has
settled. Contact: Brent P.
Lorimer, Esq., Workman |
Nydegger, 1000 Eagle Gate Tower, 60 East South Temple Salt Lake City, UT
84111.
69. IMX, Inc. v. E-Loan, Inc. and Banco
Popular North America, Inc., No. 09-cv-20965 (S.D. Fla.). Served
as an expert for defendants in a case alleging infringement of U.S.
Patent 5,995,947, relating to an interactive loan processing and mortgage
trading system. Case was stayed pending reexamination. On
appeal after reexamination, all but four of the asserted claims were
cancelled. In CBM2015-00012, all asserted claims were found unpatentable under
§101. Case has settled. Contact: Samuel A. Lewis, Esq., Feldman
Gale, PA, One Biscayne Tower, 30th Floor, 2 South Biscayne Blvd.,
Miami, FL 33131. (D,R)
70.
Soverain Software LLC
v. CDW Corp. et al., C.A. No. 6:07-CV-511 (E.D. Tex.). Served as
an expert for plaintiff in a case alleging infringement of U.S. Patents
5,715,314,
5,909,492,
and
7,272,639, relating to methods of conducting electronic commerce.
All defendants settled except Newegg, Inc. Dr. Shamos
testified on validity at a jury trial in April 2010. Result: all
claims valid; the '314 and '492 claims infringed, with a running royalty
assessed against Newegg. After trial, the Court found the '639
patent infringed as a matter of law. In January 2013 the Federal
Circuit found the asserted claims obvious as a matter of law, The Supreme Court
declined review. Contact:
Ognian Shentov, Esq.,
Jones Day, 222 E. 41st St., New
York, NY 10017. (D,R,T)
71. Netcraft Corp. v. AT&T Mobility LLC et
al., C.A. No. 07-651-GMS (D. Del.). Served as an expert for
defendants in a case alleging infringement of U.S. Patents
5,974,221,
6,351,738 and
6,411,940, relating to electronic commerce billing methods.
Case settled two months after Dr. Shamos's deposition. Contact:
H.
Jonathan Redway, Esq.,
Dickinson Wright
PLLC, 1875 Eye St., Washington, DC 20006. (D,R)
72. ValueClick, Inc. v. Tacoda, Inc., AOL,
LLC and Platform-A, Inc., Case No. 2:08-cv-04619 DSF (JCx) (C.D.
Cal.). Served as an expert for defendants in a case alleging
infringement of U.S. Patents
5,848,396 and
5,991,735, relating to software and methods for creating
psychographic profiles of network users. Case settled in May 2010.
Original firm: Orrick, Herrington & Sutliffe, LLP. Contact:
Paul
R. Gupta, Esq., DLA Piper,
1251 Avenue of the Americas, New York, NY 10020.
73. SP Technologies, Inc. v. Garmin Limited
et al., Civil Action No. 08-CV-3248 (N.D. Ill.). Served as an
expert for defendant TomTom, Inc. in a case alleging infringement of U.S. Patent
6,784,873, relating to graphical keyboards on touchscreens.
Defendants prevailed on summary judgment of invalidity. Contact:
Brian
Pandya, Esq., Wiley Rein LLP,
1776 K Street NW, Washington DC 20006. (D,R)
74. ePlus, Inc. v. Lawson Software, Inc.,
Civil Action No. 3:09-cv-620 (E.D. Va.). Served as an expert for
defendant in a case alleging infringement of U.S. Patents
6,023,683,
6,055,516 and
6,505,172, relating to electronic procurement systems. Dr.
Shamos testified at a jury trial in Richmond in January 2011.
Result: No infringement as to most accused configurations;
infringement as to others. Past damages were precluded by the
Court. On appeal. the Federal Circuit found the system claims
invalid as indefinite. Contact:
Daniel McDonald, Esq.,
Merchant & Gould PC, 3200 IDS Center, 80 South Eighth Street,
Minneapolis, MN, 55402. (D,R,T)
75. Bed Bath & Beyond, Inc. v. Sears Brands,
LLC, Civil Action 08 CV 5839-SDW-MCA (D. N.J.). Served as an
expert for plaintiff in a declaratory judgment action regarding alleged
infringement of U.S. Patent
5,970,474, relating to retail gift registry systems. Case has
settled. Contact:
William Mentlik, Esq.,
Lerner David Littenberg, Krumholz & Mentlik LLP, 600 South Avenue
West, Westfield, NJ 07090. (D,R)
76. Transauction,
LLC v. eBay, Inc.,
Case No. 3:09-cv-3705-SJ (N.D. Cal.). Served as an expert for
defendant in a case alleging infringement of U.S. Patent
7,343,339, relating to guarantees in online auctions. Case
settled after expert reports were submitted. Firm: Irell & Manella LLP, 1800
Avenue of the Stars, Suite 900, Los Angeles, CA 90067. Contact:
Peter E. Gratzinger,
Esq., Munger, Tolles & Olson LLP,
355 South Grand Avenue, Los Angeles, CA 90071. (R)
77. SDG Corporation v. Patrizzi & Co.
Auctioneers SA et al., ICDR Case No. 50 117 T 00313 09 (Int'l.
Centre for Dispute Resolution). Served as an expert for claimant
in an arbitration alleging breach of contract to produce software for
operating online auctions. Dr. Shamos testified at arbitration in
October 2010. Award for SDG on all claims and denial of all of
Patrizzi's counterclaims. Contact:
Bruce Fox, Esq., Obermayer
Rebmann Maxwell & Hippel LLP, One Mellon Center, Suite 5240,
Pittsburgh, PA 15219. (D,R,T)
78. Walker Digital, LLC v. Capital One
Services, LLC et al., Civil Action 1:10cv212 (JFA) (E.D. Va.).
Served as an expert for defendants in a case alleging infringement of
U.S. Patents
5,970,478 and
6,374,230, relating to customizing and pricing credit card accounts.
Defendants prevailed on summary judgment of non-infringement supported
by a declaration from Dr. Shamos. Affirmed by the Federal Circuit
on July 28, 2011. Contact:
Charles S. Barquist,
Esq., Morrison & Foerster LLP,
555 West Fifth Street, Suite 3500, Los Angeles, CA 90013. (R)
79. Voter Verified, Inc. v. Premier Election
Solutions, Inc. et al., Case No. 6:09-cv-1968-19KRS (M.D. Fla.).
Served as an expert for defendants, manufacturers of voting equipment,
in a case alleging infringement of U.S. Patents
6,769,613 and
RE40,449, relating to paper trail verification of ballots.
The Court
denied
a Daubert motion to exclude testimony by Dr. Shamos. Summary
judgment of non-infringement granted July 28, 2011, affirmed by the
Federal Circuit on November 5, 2012. All claims of the '449
patent were found non-statutory by the Federal Circuit in 2018. Contact: Robert M. Evans, Jr., Esq., Stinson LLP,
7700 Forsyth Blvd. Suite 1100, St. Louis, MO 63105. (R)
80. Elder et al. v. National Conference of
Bar Examiners, No. C 11-00199
SI (N.D.
Cal.).
Served as an expert for disabled plaintiffs in a case seeking an
injunction to permit them to take the bar examination in electronic
format. Preliminary injunction granted Feb. 16, 2011.
Plaintiff took the bar exam, passed and was awarded $224,000 in
attorney's fees. Contact:
Daniel F.
Goldstein, Esq., Brown,
Goldstein & Levy, LLP, 120 E. Baltimore St., Suite 1700, Baltimore,
MD 21202. (R)
81. Ameranth, Inc. v. Menusoft Systems Corp.,
et al., Civil Action 2-07-CV-271 TJW/CE (E.D. Tex.). Served as an expert for plaintiff in a case alleging infringement of U.S.
Patents
6,
384,850,
6,871,325 and
6,982,733,
relating to synchronous updating of restaurant menus on wireless
devices. After trial, the jury found the patents not infringed.
Case settled while an appeal to the Federal Circuit was pending.
Contact: John W. Osborne, Esq., Osborne Law LLC, 33 Habitat Lane,
Cortlandt Manor, NY 10567. (D,R,T)
82. BuyFigure.com, Inc. v. Autotrader.com
et al., Case No. 06391 (Ct. of Common Pleas of Philadelphia County,
PA, 2010). Served as an expert for defendants in a case alleging
misappropriation of trade secrets concerning a method of selling
automobiles over the Internet. Summary judgment was granted in
Defendants' favor in August 2012. Contact:
Howard D.
Scher, Esq., Buchanan
Ingersoll & Rooney, P.C., Two Liberty Place, 50 S. 16th Street,
Philadelphia, PA 19102. (R)
83.
Soverain Software LLC
v. J.C. Penney Corp., Inc. et al., C.A. No. 6:09-CV-274 (E.D. Tex.). Served as
an expert for plaintiff on validity issues in a case alleging infringement of U.S. Patents
5,715,314,
5,909,492,
and
7,272,639, relating to methods of conducting electronic commerce.
The '639 patent was dropped before trial and all defendants settled
except Avon Products and Victoria's Secret. After trial, the jury
found all claims valid and infringed, and awarded damages of $9.2
million against Victoria's Secret and $8.7 million against Avon. Contact:
Robert B. Wilson, Esq., Quinn
Emanuel Urquhart & Sullivan, LLP,
51 Madison Avenue, 22nd Floor, New York, NY 10010. (D,R,T)
84. AOL, LLC, et al. v. Yahoo! Inc. et al.,
No. 09 Civ. 3774 (WHP) (S.D.N.Y). Served as an expert for
declaratory judgment plaintiff AOL in a case alleging infringement of
U.S. Patents
6,078,866,
6,269,361,
6,546,386,
6,907,566,
7,043,483,
7,107,264,
7,373,599, and
7,702,541, relating to online advertising placement and targeted
e-commerce. Case settled in Feb. 2011. Original firm:
Orrick, Herrington & Sutliffe LLP. Contact: William B.
Tabler II, Esq., Flextronics,
6201 America Center Drive, San Jose, CA 95002.
85. Accenture Global Services GmbH et al. v.
Guidewire Software, Inc., Civ. No. 09-848-SLR (D. Del.).
Served as an expert for Accenture in a case alleging infringement of
U.S. Patent
7,617,240,
relating to automated insurance claim handling. Case settled in
Oct. 2011. Original firm: Morrison & Foerster, LLP. Contact:
L.
Scott Oliver, Esq.,
K&L Gates LLP,
630
Hansen Way, Palo Alto, CA 94304.
(D,R)
86. Amdocs (Israel) Limited v. Openet
Telecom, Inc. et al., Case 1:10-cv-00910-LMB-TRJ (D. Del.).
Served as an expert for Defendant Openet in a case alleging
infringement of U.S. Patents 6,836,797 and 7,631,065, relating to aggregated billing for network services.
Summary judgment of non-infringement granted in favor of Defendants in
Sept. 2012. The Court's opinion cites Dr. Shamos' testimony. Judgment reversed on appeal in 2014,
but on remand, all claims were invalidated as claiming non-statutory
subject matter. After a second appeal, the §101 ruling was reversed. Case settled during trial in 2018. Contact: Kevin Anderson, Esq., Duane Morris LLP, 505 9th Street, N.W., Suite 1000, Washington, DC 20004-2166 (D,R)
87. Cross-Atlantic Capital Partners,
Inc. v. Facebook, Inc. et al., Case 07-CV-2768 JP (E.D. Pa.). Served
as an expert for plaintiff in a case alleging infringement of U.S.
Patent
6,519,629, relating to establishment of online communities.
Asserted claims were cancelled upon reexamination. Case has been
dismissed. Original
firm: McShea/Tecce PC. Contact:
Frederick Tecce, Esq.,
Panitch Schwarze Belisario & Nadel
LLP, One Commerce Square, 2005 Market Street, Suite 2200,
Philadelphia, PA 19103. (R)
88. Chavez et al. v. Bennett et al., CV
2006-007000 (Ariz. Super., Maricopa Cty.). Served as an expert for
defendant Secretary of State of Arizona and county defendants in a case
alleging that the electronic voting systems used in Arizona violated the
rights of voters. Case was voluntarily dismissed by plaintiffs in
May 2011. Contact: Laurence G. Tinsley, Jr., Esq, Senior General
Counsel, Maricopa County Office of General Litigation Services, 301 W.
Jefferson St., Phoenix, AZ 85003.
89. Bonnette v. District of Columbia Court of
Appeals and National Conference of
Bar Examiners, No. 11-cv-01053-CKK (D.
D.C.).
Served as an expert for a disabled plaintiff in a case seeking a
preliminary
injunction permitting her to take the bar examination in electronic
format. Injunction granted. Case subsequently settled with
Plaintiff receiving $141,000 in attorneys' fees and costs. Contact:
Daniel F.
Goldstein, Esq., Brown,
Goldstein & Levy, LLP, 120 E. Baltimore St., Suite 1700, Baltimore,
MD 21202.
90. Jones v. National Conference of
Bar Examiners et al., No. 5:11-cv-00174-cr (D.
Vermont).
Served as an expert for a disabled plaintiff in a case seeking an
injunction permitting to take the bar examination using assistive
technology. The preliminary injunction was granted.
Plaintiff was awarded $275,000 in attorneys' fees and costs. Contact:
Daniel F.
Goldstein, Esq., Brown,
Goldstein & Levy, LLP, 120 E. Baltimore St., Suite 1700, Baltimore,
MD 21202. (R)
91. AlmondNet, Inc. v. Microsoft Corporation,
Case 10-CV-298 (W.D. Wisc.). Served as an expert for plaintiff
and counterclaim defendant AlmondNet in a case alleging infringement of
U.S. Patents
6,973,436,
7,072,853,
7,454,364 and
7,822,637 by Microsoft, relating to bidding for Internet ad
placement, and infringement of U.S. Patent
6,632,248 by AlmondNet, relating to customization of network
documents via a unique user identifier. Microsoft obtained summary
judgment of non-infringement. Contact:
Meredith Zinanni, Esq., Kirkland
& Ellis LLP, 300 N. LaSalle, Chicago, IL 60604.
92. Kelora Systems, LLC. v. Target Corporation
et al.,
Case 10-CV-683 (W.D. Wisc.). Served as an expert for defendant
Mason Companies, Inc. in a case alleging infringement of U.S. Patent
6,275,821,
relating to guided parametric searching in online catalogs. Case
settled as to this defendant in July 2011. The Court granted
summary judgment of invalidity and non-infringement as to the other
defendants, affirmed by the Federal Circuit. Contact:
Shane A. Brunner, Esq.,
Merchant & Gould, 10 East Doty St., Suite 600, Madison, WI 53703.
93. TNS Media
Research, LLC et al. v. TRA Global, Inc., Case 1:2011-CV-4039 (SAS) (S.D.
N.Y.). Served as an expert for declaratory judgment plaintiffs in case
alleging infringement of U.S. Patent 7,729,940,
relating to anonymous matching of program viewing data from television
set-top boxes with purchase data from other sources. Patentee's motion
for preliminary injunction was denied on Sept. 23, 2011. Plaintiffs' motion for summary judgment of
non-infringement was granted on October 3, 2013. Reversed and remanded by the Federal Circuit. Contact: Michael Albert,
Esq., Wolf, Greenfield &
Sacks, P.C., 600 Atlantic Avenue, Boston, MA 02210. (R)
94. Accenture Global Services GmbH et al. v.
Guidewire Software, Inc., Case 3:11-03563-JSW (N.D. Cal.);
Guidewire Software, Inc. v. Accenture PLC et al., Case
4:11-cv-04686-LB (N.D. Cal.).
Served as an expert for Accenture in related cases alleging infringement
by Guidewire of
U.S. Patents
6,574,636,
7,409,355 and
7,979,382, relating to
systems for insurance claim handling and alleging infringement by
Accenture of U.S. Patents
5,630,069,
5,734,837,
6,058,413 and
6,073,109, relating to workflow management systems.
Cases settled in Oct. 2011. Contact:
Colleen Garlington, Esq.,
Kirkland & Ellis LLP,
300 N. LaSalle St., Chicago, IL 60604.
95. XPRT Ventures, LLC v. eBay, Inc. et
al., C.A. 10-595 (SLR) (D. Del.). Served as an expert for
Defendants eBay and PayPal in a case alleging infringement of U.S.
Patents
7,483,856,
7,512,563,
7,567,937,
7,599,881,
7,610,244,
7,627,528, relating to methods of paying for items purchased through
electronic auctions. Case has settled. Contact:
Adrian Percer, Esq.,
Weil, Gotshal & Manges, LLP, 201
Redwood Shores Parkway, Redwood Shores, CA 94065. (D,R)
96. Rich Media Club, LLC et al. v.
Nikolai Mentchoukov et al., Civil No. 2:11-cv-01202-SA (D. Utah).
Served as an expert for Plaintiffs in a case alleging breach of an
employment contract, unfair competition concerning systems for placing
advertisements on web pages and infringement of U.S. Patent
7,313,590, relating to communication between client and server
computers without requiring a browser. Contact:
Jared Richards,
Esq., Bennett Tueller
Johnson & Deere, LLC, 3165
East Millrock Drive, Suite 500, Salt Lake City, Utah 84121.
(R)
97. Franklin Inventions LLC
v. Election Systems & Software, Inc., Case No: 2:09-cv-377 (E.D.
Tex.). Served as an expert for Defendants in a case alleging
infringement of U.S. Patents 6,986,999, 7,243,846 and 7,575,164,
relating to voter-verifiable voting systems. Case settled after a
declaration concerning invalidity was submitted by Dr. Shamos. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC,
600 Washington Avenue, Suite 2500, St. Louis, MO 63101. (R)
98. Illinois Computer Research, LLC v.
HarperCollins Publishers, LLC, et al., Case No.: 10-cv-9124 (S.D.N.Y).
Served as an expert for Defendants in a case alleging infringement of
U.S. Patent
7,111,252, relating to limiting access to electronic books.
Case settled after Markman. Contact:
Brian S.
Rosenbloom. Esq., Rothwell,
Figg, Ernst & Manbeck, P.C., 607 14th Street, N.W., Suite 800,
Washington, DC 20005. (R)
99. Realtime Data, LLC d/b/a IXO v.
Morgan Stanley et al., Case No.: 11 Civ. 6696 (RJH), Realtime
Data, LLC d/b/a IXO v. CME Group Inc. et al., Case No.: 11 Civ. 6701
(RJH), Realtime Data, LLC d/b/a IXO v. Thompson Reuters, et al., Case No.:
1:2011-cv-06704 (RJH) (S.D.N.Y).
Served as an expert for Plaintiff in three consolidated cases alleging infringement of
U.S. Patents
7,417,568,
7,714,747, and
7,777,651, relating to compression and decompression of financial
data streams. Summary judgment granted for defendants, upheld by
the Federal Circuit. Contact:
Dirk D.
Thomas. Esq., McKool Smith,
1999 K Street, N.W., Suite 600,
Washington, DC 20006. (D,R,T)
100. Mulhern Belting, Inc. v. Tele-Data
Solutions, Inc., Civil Action L-2258-10 (Sup. Ct. Bergen Cty. NJ).
Served as an expert for defendant Vertical Communications, Inc. in a
case alleging breach of contract and fraud in connection with the
installation of an integrated voice-over-IP (VoIP) telecommunications
system. Case has settled. Contact:
John J. Abromitis,
Esq., Courter, Kobert & Cohen P.C.,
1001 Route 517, Hackettstown, NJ 07840. (R)
101. Decision Support, LLC v. Election
Systems & Software, Inc., Case No: 3:10cv90 (W.D. N.C.).
Served as an expert for Defendants in a case alleging infringement of
U.S. Patent
7,497,377, relating to electronic voter registration and pollbook
systems. Case has settled. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC,
600 Washington Avenue, Suite 2500, St. Louis, MO 63101. (R)
102. Rovi Corporation et al. v. Amazon.com,
Inc. et al., Case No. 11-cv-00003-RGA (D. Del.). Served as an
expert for Plaintiffs in a case alleging infringement of U.S. Patents
5,988,078,
6,275,268,
6,769,128,
7,493,643 and
7,603,690, relating to customized on-screen television guides.
The parties stipulated to entry of judgment of noninfringement. Contact:
Ragesh L. Tangri, Esq., Durie
Tangri LLP, 217 Leidesdorff Street, San Francisco, CA 94111.
103. Certain Products
Containing Interactive Program Guide and Parental Control Technology,
USITC Inv. No. 337-TA-820. Served as an expert for Complainants Rovi
Corporation et al. and against Vizio, Inc. et al. in an International Trade
Commission proceeding involving alleged infringement of U.S. Patents
6,701,523,
7,047,547,
7,493,643
and
RE41,993,
relating to v-chips and electronic TV program guides. Case has
settled. Contact:
Hong S. Lin,
Esq.,
Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304. (R)
104. Rovi Corporation et
al. v. Roku, Inc., Case No. 12-cv-2185 EJD (N.D. Cal.). Served as an
expert for Plaintiffs in a case alleging infringement of U.S. Patent
6,898,762,
relating to a client/server electronic television program guide. Voluntarily dismissed by plaintiff without prejudice. Contact:
Hong S. Lin,
Esq.,
Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304.
105. Rovi Corporation et
al. v. LG Electronics, Inc. et al., Case No. 12-cv-00545-SLR (D. Del.).
Served as an expert for Plaintiffs in a case alleging infringement of U.S.
Patents
6,898,762,
7,065,709,
7,225,455,
7,493,643
and
8,112,776,
relating to electronic television program guides. Case has
settled. Contact:
Hong S. Lin,
Esq.,
Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304.
106. Rovi Corporation et
al. v. Vizio, Inc., Case No. 12-cv-00546-SLR (D. Del.). Served as an
expert for Plaintiffs in a case alleging infringement of U.S. Patents
6,898,762,
7,065,709,
7,103,996
and
8,112,776,
relating to electronic television program guides. Case has settled.
Contact:
Hong S. Lin,
Esq.,
Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304.
107. Rovi Corporation et
al. v. Mitsubishi Electric Corp. et al., Case No. 12-cv-00547-SLR (D.
Del.). Served as an expert for Plaintiffs in a case alleging infringement of
U.S. Patents
6,701,523,
7,225,455
and
7,493,643,
relating to electronic television program guides. Case has settled. Contact:
Hong S. Lin,
Esq.,
Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304.
108. Netflix, Inc. v. Rovi
Corporation et al., Case No. 11-cv-06591-PJH (N.D. Cal.). Served as an
expert for Defendants in a declaratory judgment case seeking a declaration of
non-infringement of U.S. Patents 6,305,016, 6,898,762, 7,100,185, 7,103,906 and 7,945,929,
relating to electronic television program guides. Summary judgment was
granted declaring all asserted claims invalid under 35 U.S.C. §101, affirmed by the Federal Circuit. Contact: Hong S. Lin,
Esq., Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304.
(R)
109. Certain Products Containing
Interactive Program Guide and Parental Control Technology, USITC
Inv. No. 337-TA-845. Served as an expert for Complainants Rovi
Corporation et al. and against Netflix, Inc. et al. in an International
Trade Commission proceeding involving alleged infringement of U.S.
Patents
6,701,523,
6,898,762,
7,065,709,
7,103,906,
7,225,455,
7,493,643 and
8,112,776, relating to v-chips and electronic TV program guides.
On Initial Determination, all claims Dr. Shamos testified about were
found valid. The import requirement was found not satisfied and
no infringement was found. Contact:
Hong S. Lin,
Esq.,
Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304. (D,R,T)
110. Yardi Systems, Inc. v. Realpage,
Inc. et
al., Case No. 2:11-cv-0090-ODW-JEM (C.D. Cal.). Served as an expert
for Defendants in an action alleging misappropriation of trade secrets,
unfair competition, violation of the Computer Fraud and Abuse Act, the
Comprehensive Computer Data Access and Fraud Act (Cal. Penal Code §502)
and the Digital Millennium Copyright Act, arising out of provision of
cloud-based property management systems. Case has settled. Contact:
Susan van Keulen, Esq.,
O'Melveny & Myers LLP, 2765
Sand Hill Road, Menlo Park, CA 94025.
111. Long Range Systems, LLC v. HME
Wireless, Inc., Civil Action 3:12-cv-03659-P (N.D. Tex.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patent
6,712,278, relating to a wireless system for locating a customer's
table in a restaurant. Case was dismissed by plaintiff. Contact: David
Cabello, Esq., Wong, Cabello,
Lutsch, Rutherford & Brucculeri, LLP, 20333 SH 249, Suite 600,
Houston, Texas 77070. (R)
112. EdiSync Systems, LLC v. Centra
Software, Inc. et al., Civil Action 03-cv-01587-WYD-MEH (D. Colo.).
Served as an expert for Defendant Saba Software Inc. in a case alleging
infringement of U.S. Patent
5,799,320, relating to multi-author document editing systems.
Case has settled. Contact:
Robert M. Abrahamsen, Esq.,
Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, MA 02210.
(D,R)
113. TecSec, Inc. v. IBM et al., Case
No. 1:10-cv-115-LMB/TCB (E.D. Va.). Served as an expert for
Defendant SAS Institute, Inc. in a case alleging infringement of U.S.
Patents
5,369,702,
5,680,452,
5,717,755 and
5,898,781, relating to the Distributed Cryptographic Object Method,
allowing embedding of encrypted objects within other objects. The
Court entered judgment of non-infringement after Markman.
Affirmed by the Federal Circuit at 2011-1303. Contact:
Thomas R. Goots, Esq.,
Jones Day, North Point, 901
Lakeside Avenue, Cleveland, Ohio 44114-1190.
114. Integrated Technological Systems,
Inc. v. Green Dot Corporation, Civ. Action No. 2:11-cv-01626-GMN-(GWF)
(D. Nev.). Served as an expert for Defendant in a case alleging
infringement of U.S. Patent
7,912,786, relating to an electronic payment system for transferring
money between debit card accounts. Case has settled.
Contact: Benjamin J.
Sodey, Esq., Bryan Cave LLP,
One Metropolitan Square (211 North Broadway), Suite 3600, St. Louis, MO
63102-2750.
115. Hausen et al. v. PS Illinois Trust,
Case No. 11-cv-06888 (N.D. Ill.). Served as an expert for
Plaintiff in a case concerning the reasonableness of credit card and
email notification practices employed by a public storage facility prior
to selling customers' stored goods. Case has settled. Contact:
Jeffrey S. Becker, Esq.,
Swanson, Martin & Bell, LLP, 330 N.
Wabash, Suite 3300, Chicago, IL 60611. (D,R)
116. Linksmart Wireless
Technology, LLC v. T-Mobile, USA, Inc. et al., Case 2:08-cv-264-DF-CE
(E.D. Texas). Served as an expert for Defendant Choice Hotels
International, Inc. in a case alleging infringement of U.S. Patent 6,779,118,
relating to rule-based redirection of Internet service requests based on a
user ID. Case has settled. Contact: Gregory
R. Lyons, Esq., Wiley Rein LLP,
1776 K Street NW, Washington DC 20006.
117. SAP America, Inc. v. Purple Leaf,
LLC et al., Case No. 4:11-cv-04601-PJH (N.D. Cal.). Served as
an expert for declaratory judgment plaintiff SAP in a case alleging
infringement of U.S. Patents
7,603,311 and
8,027,913, relating to methods for conducting payment transactions
over the Internet. Case has settled. Original firm: Simpson
Thatcher & Bartlett LLP. Contact:
Brian McCloskey,
Esq., Greenberg Traurig, LLP,
MetLife Building, 200 Park Ave., New York, NY 10166.
118. Ameranth, Inc. v.
PAR Technology Corp.,
et al., Civil Action 2-10-CV-294 JRG-RSP (E.D. Tex.). Served as an expert for plaintiff in a case alleging infringement of U.S.
Patents
6,384,850
and
6,871,325, relating to synchronous updating of hospitality
applications and data on wireless devices. Case settled after
expert reports were served. Contact: John W. Osborne, Esq.,
Osborne Law LLC, 33 Habitat Lane, Cortlandt Manor, NY 10567. (R)
119. Digital-Vending Services
International, LLC, v. The University of Phoenix, Inc. et al., Civil
Action 2:09-cv-555-AWA-TEM (E.D. Va.). Served as an expert for
plaintiff in a case alleging infringement of U.S. Patents
6,170,014,
6,282,573 and
6,606,664, relating to content delivery methods particularly
applicable to online courseware. Summary judgment of
non-infringement granted October 4, 2013. Contact:
Andrew G. DiNovo, Esq.,
DiNovo Price Ellwanger & Hardy LLP,
7000 N. MoPac Expressway, Suite 350, Austin, TX 78731. (D,R)
120. Analytical Mechanics Associates,
Inc. v. Rhythm Engineering, LLC et al., Case No. 4:12-cv-00008 (E.D.
Va.). Served as an expert for defendants in a case alleging
breach of a contract relating to development of an image processing
system to detect vehicles at intersections and control traffic signals.
Case was resolved by binding arbitration. Contact:
John K. Power, Esq.,
Husch Blackwell LLP, 4801
Main Street, Suite 1000, Kansas City, MO 64112. (D,R,T)
121. Protegrity Corporation v. Voltage
Security, Inc., Case No. 3:10-CV-755 (RNC) (D. Conn.). Served
as an expert for defendant in a case alleging infringement of U.S.
Patents
6,321,201,
6,963,980 and
7,325,129, relating to methods of encrypting databases. Case
settled during trial. Contact:
Edward G. Poplawski, Esq.,
Wilson Sonsini Goodrich
& Rosati Professional Corporation, 650 Page Mill Road, Palo Alto, CA
94304-1050. (D,R,T)
122. Progressive Casualty Insurance
Company v. Allstate Insurance Company et al., Case No.
1:11-cv-00082-BYP (N.D.Ohio). Served as an expert for defendant Allstate in a
case alleging infringement of U.S. Patent 6,064,970,
relating to determining the cost of automobile insurance by monitoring
the location and activity of a vehicle, and U.S. Patent
7,124,088, relating to online modification and quoting of insurance
policies. Case has settled as to Allstate. Contact:
James Medek, Esq., Kirkland &
Ellis LLP, 300 North LaSalle Chicago, IL 60654.
123. Symantec Corporation v. Acronis, Inc.
et al., Case No. 3:11-cv-05310 EMC (N.D. Cal.). Served as an
expert for plaintiff and infringement counterclaim defendant Symantec in
a case alleging infringement of U.S. Patents
6,615,365,
7,047,380,
7,246,211 and
7,266,655, relating to online disk backup, imaging and recovery
systems, U.S. Patent
7,093,086, relating to backup of virtual machines, U.S. Patent
7,322,010, relating to graphic views of computer configurations and
U.S. Patent
7,565,517, relating to retargeting hardware configuration images to
new hardware. Case has settled. Contact:
Jennifer Kash, Esq.,
Quinn Emanuel Urquhart & Sullivan LLP, 50 California Street, 22nd
Floor, San Francisco, California 94111. (D,R)
124.
Secure Axcess, LLC v. Bank of America Corp.
et al., Civil Action No. 6:10-cv-670-LED (E.D. Tex.). Served as an
expert for defendants Zions First National Bank and Amegy Bank N.A. in a case alleging infringement of U.S. Patent
7,631,191, relating to authenticating web pages.
Case has settled as to those defendants. Contact:
Brian
Pandya, Esq., Wiley Rein LLP,
1776 K Street NW, Washington DC 20006.
125. The MoneySuite Company v. Insurance
Answer Center, LLC et al., Case No. SACV 11-1847-AG (C.D. Cal.).
Served as an expert for defendants, including The Allstate Corporation,
in a case alleging infringement of U.S. Patent
6,684,189, relating to online quoting of insurance policy rates.
Case has settled. Contact:
Garret A. Leach, Esq., Kirkland &
Ellis LLP, 300 N. LaSalle, Chicago. IL 60654. (D,R)
126. e-LYNXX Corporation v. Innerworkings,
Inc. et al., CA 1:10-cv-02535-CCC (M.D. Pa.). Served as an
expert for defendants, including R.R. Donnelley & Sons Company, in a
case alleging infringement of U.S. Patents
7,451,106 and
7,788,143, relating to electronic procurement of customized goods
and services. The Court granted summary judgment of
non-infringement in July 2013. Contact:
James R. Nuttall,
Esq., Steptoe & Johnson, LLP,
115 South LaSalle Street, Suite 3100, Chicago, IL 60603. (R)
127. Vasudevan Software,
Inc. v. Microstrategy, Inc., Case No. 3:11-cv-06637-RS-PSG (N.D.
Cal.). Served as an expert for defendant in a case alleging
infringement of U.S. Patents 6,877,006, 7,167,864, 7,720,861 and 8,082,268,
relating to methods of online analytical processing (OLAP). The
patents were found invalid on summary judgment. On appeal, the Federal
Circuit upheld the Court's claim constructions and judgment of
non-infringement. Declaratory judgment counterclaims voluntarily
dismissed. Contact: Kevin A.
Smith, Esq., Quinn Emanuel Urquhart & Sullivan,
LLP, 50 California Street, San Francisco, CA 94111. (R)
128. Digonex Technologies, Inc. v. Qcue,
Inc., Case No. 1:12-cv-00801-SS (W.D. Texas). Served as an expert
for plaintiff in a case alleging infringement of U.S Patents
8,095,424 and
8,112,303, relating to computerized methods for dynamic pricing.
In a Markman order, the Court found the claims indefinite. Contact:
David D. Schumann,
Fenwick & West LLP,
555 California Street, 12th Floor, San Francisco, CA 94104. (D,R,T)
129. Peter Mayer Publishers, Inc. v.
Daria Shilovskaya et al., Case No. 12-CV-8867-PG (S.D. N.Y.).
Served as an expert for declaratory judgment defendants in a case of
first impression to determine whether a reliance party under 17 U.S.C.
§104A(d)(3)(B) may issue an ebook version of a work to which copyright
has been restored. The Court ruled that ebooks are not
transformative and hence not derivative works. Contact: Timothy
O'Donnell, Esq., 40 Exchange Place, 19th Fl., New York, NY 10005.
(R)
130. SIPCO, LLC v. Control4 Corporation
et al., CA 1:11-cv-00612-JEC (N.D. Georgia). Served as an
expert for defendants Schneider Electric Buildings Americas, Inc. and
Schneider Electric USA, Inc. in a case alleging infringement of U.S.
Patents
7,103,511,
7,468,661 and
7,697,492, relating to systems for monitoring remote sensors and
controlling remote devices. Case has settled. Contact:
Benjamin Bradford,
Esq., Jenner & Block LLP, 353 N.
Clark St., Chicago, IL 60654-3456.
131. Unified Messaging Solutions LLC v.
Google, Inc. et al., Case 1:12-cv-06286 (N.D. Ill.). Served as
an expert for defendant eBay, Inc. in a case alleging infringement of
U.S. Patents
6,857,074,
7,836,141,
7,895,306,
7,895,313, and
7,934,148, relating to message storage and delivery systems.
Case has settled as to defendant eBay, Inc. Contact:
Yar R. Chaikovsky, Esq.,
McDermott Will & Emery LLP, 275
Middlefield Road, Suite 100, Menlo Park, CA 94025.
132. Credit Card Fraud Control
Corporation v. PayPal, Inc., Case No. 9:12-CV-81143 (S.D. Fla.).
Served as an expert for defendant PayPal in a case alleging infringement
of U.S. Patent
8,229,844, relating to reduction of fraud in online transactions.
Plaintiff dismissed the case with prejudice based on prior art located
by PayPal. Contact:
Adrian Percer, Esq.,
Weil, Gotshal & Manges, LLP, 201
Redwood Shores Parkway, Redwood Shores, CA 94065.
133. Comscore, Inc. v. Integral Ad
Science, Inc., Civil Action 2:12-cv-00351-HCM-DEM (E.D. Va.).
Served as an expert for defendant Integral in a case alleging
infringement of U.S. Patents
6,108,637,
6,115,680,
6,327,619,
6,418,470,
7,386,473,
7,613,635,
7,716,326 and
7,756,974, relating to determining whether a portion of a displayed
page is visible to a user.
Case has settled as to defendant Integral. Contact:
Robert M. Abrahamsen, Esq.,
Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, MA 02210.
134. Ariba, Inc. v. Coupa Software, Inc.,
Case No. 3:12-cv-01484 JST (N.D. Cal.). Served as an expert for
plaintiff Ariba in a case alleging infringement of U.S. Patent
7,117,165, relating to electronic methods for approving requisitions
and generating purchase orders. Case has settled. Contact:
Amy Van Zant, Esq.,
Covington & Burling
LLP, 333 Twin Dolphin Drive, Redwood Shores, CA 94605-1418. (D,R)
135. Lowe v. National
Board for Respiratory Care, Inc. et al., Docket 1:12-cv-00345-DBH
(D. Maine). Served as an expert for disabled plaintiff in
a case seeking an injunction permitting to take a professional
qualification examination using assistive computer technology.
Case settled shortly after Dr. Shamos's declaration in support of
preliminary injunction was filed. Contact:
Kristin Aiello, Esq., Managing Attorney,
Disability Rights Center, 24 Stone St., Augusta, ME 04338. (R)
136. Checkfree Corporation
et al. v. Metavante Corporation et al., Case No. 3:12-cv-15-J-34JBT (M.D.
Fla.) Served as an expert for defendant Metavante in a case alleging
infringement of U.S. Patents 7,383,223, 7,792,749, 7,853,524 and 7,966,311,
relating to transferring funds in electronic payment networks.
Defendants have counterclaimed, alleging infringement of U.S. Patents. 7,370,014, 7,734,543 and 7,958,049,
relating to electronic invoice presentment. All claims of all four
patents asserted by Plaintiff have been found invalid by the Patent Office. Case was stayed pending
appeal, followed by voluntary dismissal by Plaintiff. Contact: Jeffrey A. Berkowitz, Esq., Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P., Two Freedom Square, 11955 Freedom Drive, Reston, VA
20190-5675. (D,R)
137. PPS Data, LLC v. Passport Health
Communications, Inc., Case No. 2:12-cv-00438-DN (C.D. Utah).
Served as an expert for defendant Passport in a case alleging
infringement of U.S. Patents
6,341,265 and
7,194,416, relating to preparing and correcting health
insurance claim forms. Case settled shortly after Dr. Shamos's
claim construction report was served. Contact:
Edward
J. Pardon, Esq., Merchant &
Gould, 10 East Doty Street, Suite 600, Madison, WI 53703. (R)
138. Lodsys, LLC v. Combay, Inc. et al.,
Civil Action 2:11-cv-272 (E.D. Texas). Served as an expert for
defendant Symantec Corporation in a case alleging infringement of U.S.
Patents
7,222,078 and
7,620,565, relating to gathering feedback from products through a
user interface. Case settled two weeks after Dr. Shamos's
deposition. Contact:
David D. Schumann,
Fenwick & West LLP,
555 California Street, 12th Floor, San Francisco, CA 94104. (D,R)
139. Long Range Systems, LLC v. HME
Wireless, Inc., Civil Action 3:12-cv-04162M (N.D. Tex.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patents
6,542,751
and
7,062,281,
relating to methods of paging customers at a restaurant. Case was
dismissed by plaintiff after a tentative Markman ruling.
Contact: David
Cabello, Esq., Wong, Cabello,
Lutsch, Rutherford & Brucculeri, LLP, 20333 SH 249, Suite 600,
Houston, Texas 77070. (R)
140. Symantec Corporation v. Veeam
Software Corporation, Case No. 3:12-cv-0700-SI (N.D. Cal.). Served as an
expert for plaintiff Symantec in
a case alleging infringement of U.S. Patents 6,931,558, relating to methods for restoring network devices after
failure, 7,024,527, relating to methods of backing up disk while applications
are active, 7,093,086, relating to methods for backing up virtual machines, 7,254,682,
relating to snapshot disk backup, 7,480,822, relating to restoring running states of computing
systems, 7,831,861, relating to restoring application data and 8,117,168,
relating to virtual disk backups. Case is stayed pending PTAB
review. All asserted claims have been found unpatentable. On
appeal to the Federal Circuit, the PTAB's claim construction and
obviousness determinations were upheld, case remanded to allow
amendment of claims. Case subsequently settled. Contact: Jennifer Kash, Esq., Quinn Emanuel Urquhart & Sullivan LLP, 50 California Street, 22nd
Floor, San Francisco, California 94111. (R)
141. EMG Technology, LLC v. Green
Mountain Coffee Roasters and Keurig, Inc., Case No. 6:13-cv-144 (E.D.
Texas) (Lead case: 6:13-cv-134). Served as an expert for
Defendants in a case alleging infringement of U.S. Patent
7,441,196, relating to a method of navigating a Web page linked to a
sister web site. Case has settled. Contact:
Michael
A. Albert, Esq.,
Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, MA 02210.
142. eDirect Publishing, Inc. v. Live
Career, Ltd., et al., Case No. 12-CV-1123-JAH-JMA (S.D. Cal.).
Served as an expert for plaintiff eDirect in a case alleging
infringement of U.S. Patents
6.363,376 and
6,757,674, relating to automatic submission of information to career
websites. Case has settled. Contact:
Ryan Baker, Esq.,
Baker Marquart LLP, 10990 Wilshire Blvd., Los Angeles, CA 90024. (D,R)
143. Motivation Innovations, LLC v. Ulta
Salon Cosmetics and Fragrance, Inc.
et al., C.A. No. 11-615-SLR-MPT (D. Del.). Served as an expert for
defendant Ulta in a case alleging infringement of U.S. Patent
5,612,527, relating to a system for redeeming discount offers at
point of sale. The Court granted summary judgment of
noninfringement. Contact:
Julie Heaney, Esq.,
Morris, Nichols, Arsht & Tunnell, LLP,
1201 North Market Street, Wilmington, DE 19899-1347. (D,R)
144. Computer Software Protection, LLC v.
Autodesk, Inc., C.A. No. 12-452-SLR (D. Del.). Served as an
expert for Defendant Autodesk in a case alleging infringement of U.S.
Patent
6,460,140, relating to unlocking the use of software remotely using
validation number, a registration key and a license key. Case has
settled. Contact:
Cheryl T.
Burgess, Esq., Knobbe, Martens,
Olson & Bear, L.L.P., 2040 Main Street, 14th Floor Irvine, CA 92614.
(R)
145. Voltage Security, Inc. v. Protegrity Corporation,
CBM2014-0024, Patent Trial and Appeal Board. Served
as an expert for petitioner in a covered business method petition
seeking review of U.S. Patent
8,402,281, relating to methods of encrypting databases.
Matter has settled. Contact:
Matthew Argenti, Esq.,
Wilson Sonsini Goodrich
& Rosati Professional Corporation, 650 Page Mill Road, Palo
Alto, CA 94304-1050. (R)
146. United Video
Properties, Inc. et al. v. Haier Group Corp. et al., C.A. No. 11-1140-KAJ
(D.Del.). Served as an expert for Plaintiffs in a case alleging infringement
of U.S. Patents 6,701,523
and 7,047,547,
relating to television parental control technology. Case has
settled. Contact:
Hong S. Lin,
Esq., Paul Hastings LLP,
1117 S. California Avenue, Palo Alto, CA 94304. (D,R)
147. Droplets, Inc. v.
E*TRADE Financial Corporation et al., Case No.: 1:12-CV-02326-CM
(S.D.N.Y.). Served as an expert for defendants in an action alleging
infringement of U.S. Patents 6,687,745 and 7,502,838,
and 8,402,115, relating to delivering interactive links for presenting applications on a
client computer. Defendants prevailed on a summary judgment of
non-infringement on the '745 Patent. All claims of the '115 and '838 Patents
were found invalid after IPRs, affirmed by the Federal Circuit in 2016-2504 and 2016-2602. Contact: Michael
Levin, Esq., Wilson
Sonsini Goodrich & Rosati Professional Corporation, 650 Page Mill
Road, Palo Alto, CA 94304-1050. (D,R,T)
148. Symantec Corporation v. Acronis, Inc.
et al., Case No. 3:11-cv-05331 JST (N.D. Cal.). Served as an
expert for plaintiff and infringement counterclaim defendant Symantec in
a case alleging infringement by Symantec of U.S. Patents
7,366,859 and
7,831,789, relating to incremental disk backup, and infringement by
Acronis of U.S. Patent
7,024,527, and
7,996,708, relating to disk backup and restore, U.S. Patent
7,454,592, and U.S. Patent
7,941,459, relating to single instance disk storage, and
U.S. Patent
7,680,957, relating to modifiable representations of computer
configurations. Case has settled. Contact:
Jennifer Kash, Esq.,
Quinn Emanuel Urquhart & Sullivan LLP, 50 California Street,
22nd Floor, San Francisco, California 94111. (D,R)
149. Jazz Pharmaceuticals, Inc. v. Roxane
Laboratories, Inc., CA 2:10-cv-06108-ES-MCA (D. N.J.).
Served as an expert for defendant in a case alleging infringement of
U.S. Patents
7,668,730,
7,765,106,
7,765,107,
7,797,171 and
7,895,059, relating to methods of controlling the distribution of
sensitive drugs. Case has settled. Contact:
Alan B. Clement, Esq.,
Locke Lord LLP, Brookfield Place, 200 Vesey Street, 20th Floor, New York, NY 10281-2101. (R)
150. TuitionFund, LLC v. SunTrust Banks,
Inc. et al., CA 3:11-cv-00069 (M.D. Tenn.). Served as an
expert for defendants Cardlytics, Inc., Regions Financial Corp., and
Regions Bank in a case alleging infringement of U.S. Patents
7,499,872,
7,653,572 and
7,899,704, relating to methods for awarding rebates for credit and
debit card purchases. Case settled. Contact:
Michael S.
Connor, Esq., Alston & Bird LLP,
Bank of America Plaza, 101
South Tryon Street, Suite 4000,
Charlotte,
NC
28280-4000. (D,R)
151. Pollin Patent
Licensing, LLC et al. v. AT&T Corporation et al., Case No.
1:11-cv-07855 (N.D. Ill.). Served as an expert for defendants in a
case alleging infringement of U.S. Patent
7,117,171, relating to verifying financial institution
identification in electronic payment systems. Case has settled.
Contact:
James L. Howard, Esq.,
Kilpatrick Townsend & Stockton LLP, 1001 West Fourth Street
Winston-Salem, NC, 27101.
152. PPS
Data, LLC v. Bluepoint Solutions, Inc., Case 2:13-cv-01351 (D.
Nev.). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patents 7,181,430,
7,216,106,
7,440,924,
7,624,071
and 8,126,809,
relating to methods for processing check images in electronic payment
systems. Case has settled. Contact: Anthony H. Son, Esq., Maddox Edwards, PLLC, 1900 K Street NW, Suite 725, Washington, DC 20006. (Original firm: Wiley Rein).
153. e-LYNXX Corporation v. Ariba,
Inc., CA 1:12-cv-01771-CCC (M.D. Pa.). Served as an
expert for defendant Ariba, in a
case alleging infringement of U.S. Patents
7,451,106,
7,788,143 and
8,209,227, relating to electronic procurement of customized goods
and services. Case has settled. Contact:
Amy Van Zant, Esq.,
Covington & Burling
LLP, 333 Twin Dolphin Drive, Redwood Shores, CA 94605-1418.
154. EMG Technology, LLC v. AutoZone,
Inc., C.A. 6:13-cv-134 (E.D. Tex.) (Lead case: 6:12-cv-543).
Served as an expert for defendant AutoZone in a case alleging
infringement of U.S. Patent
7,441,196, relating to transcoding web sites into mobile sites.
Defendant obtained summary judgment of non-infringement. Contact:
Terry
L. Clark, Esq., Bass, Berry &
Sims PLC, 1201 Pennsylvania Ave. N.W., Washington, D.C. 20004.
(R)
155. In re: Oil Spill by the Oil Rig
“Deepwater Horizon” in the Gulf of Mexico, on April 20, 2010, MDL
No. 2179 (E.D. La.). Served as an expert for litigants BP
Exploration & Production Inc. et al. on an issue relating to
identification of an anonymous person through Internet searching.
Contact:
Mark. J. Nomellini, Esq.,
Kirkland & Ellis LLP, 300 N. LaSalle, Chicago, IL 60654.
(R)
156. EC Data Systems, Inc., v. J2 Global,
Inc. et al., CV 12-07544 (C.D. Cal.). Served as an expert for
declaratory judgment plaintiff EC Data Systems in a case alleging
infringement of U.S. Patents
6,208,638 and
6,350,066,
6,597,688 and
7,020,132, relating to electronic distribution of faxes through
email. Case has settled. Contact:
Matthew
Spohn, Esq. Norton
Rose Fulbright LLP., Tabor Center, 1200 17th Street, Suite
1000, Denver, Colorado 80202.
157. MoneyCat, Ltd. v.
PayPal, Inc., CA 1:13-cv-01358-RGA (D. Del.), now 3:14-cv-02490-PSG (N.D.
Cal.). Served as an expert for defendant PayPal in a case alleging
infringement of U.S. Patents 7,590,602, 8,195,578 and 8,051,011,
relating to issuance and transfer of electronic currency. On CBM
review, the PTAB found all asserted claims of all three patents
invalid, affirmed by the Federal Circuit. Case was subsequently
dismissed. Contact: Adrian Percer, Esq., Weil, Gotshal & Manges, LLP, 201 Redwood
Shores Parkway, Redwood Shores, CA 94065. (D,R)
158. GSI Commerce
Solutions, Inc. v. Clear With Computers, Inc., Patent Trial and
Appeal Board Case CBM2013-00055. Served as an expert for petitioner,
an eBay company, in a covered business method review of U.S. Patent 8,266,015,
relating to methods of presenting lists of product customization
options. Review was instituted but the CBM was terminated by settlement. Contact: Scott McKeown, Esq., Ropes & Gray, L.L.P., 2099 Pennsylvania Avenue, Washington, DC 20006-6807. (D,R)
159. Fidelity National
Information Services, Inc. v. Cashedge, Inc. and Checkfree Corporation,
Patent Trial and Appeal Board Cases CBM2013-00028, 30, 31 and 32. Served as an expert for petitioner in
covered business method reviews of U.S. Patents 7,383,223, 7,792,749, 7,853,524 and 7,966,311,
relating to transferring funds in electronic payment networks. Reviews
have been instituted. All claims of the four patents were invalidated by the PTAB in December
2014. Appeal was taken to the Federal Circuit but terminated by agreement. Contact: Jeffrey A. Berkowitz, Esq., Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P., Two Freedom Square, 11955 Freedom Drive, Reston, VA
20190-5675. (D,R)
160. Boku, Inc. v.
Xilidev, Inc., Patent Trial and Appeal Board Cases CBM2014-00140 and CBM2014-00148. Served as an expert for petitioner in two covered business method reviews of U.S. Patent 7,273,168,
relating to authorizing payments via handheld devices. Result: claims 1-18 and 20-23 found invalid. Claim 19 cancelled. Contact: Frank Pietrantonio, Esq., Cooley LLP, One Freedom Square,
11951 Freedom Drive, Reston, VA 20190. (R)
161. Protegrity Corporation v. Phoenix
Payment Systems, Inc. d/b/a Electronic Payment Exchange, Case No. 3:13-CV-1386-VKB (D. Conn.). Served
as an expert for defendant in a case alleging infringement of U.S.
Patents
6,321,201 and
8,402,281, relating to methods of encrypting databases. Case
has settled. Contact:
David
J. Wolfsohn, Esq.,
Duane Morris LLP, 20 South
17th Street, Philadelphia, PA 19103. (R)
162. Ameranth, Inc. v.
Genesis Gaming Solutions, Inc. et al., Case No. SACV 8:11-0189-AG (C.D.
Cal.). Served as an expert for Ameranth in a case alleging infringement of U.S.
Patents
7,431,650,
7,878,909
and
8,393,969,
relating to systems for managing casino operations, particularly in poker
rooms. Case has settled. Contact: John W. Osborne, Esq., Osborne Law LLC, 33 Habitat
Lane, Cortlandt Manor, NY 10567. (D,R)
163. Telebuyer, LLC v. Amazon.com, Inc., Case No. 2:13-cv-01677-BJR (W.D. Wash.). Served
as an expert for Telebuyer in a case alleging infringement by Amazon.com of
U.S. Patents
6,323,894,
7,835,508,
7,835,509,
7,839,984,
8,059,796,
8,098,272,
and
8,315,364,
relating to systems for interfacing buyers and sellers via communication
networks. Summary judgment was entered declaring all asserted claims
invalid under 35 U.S. §101.
Contact:
Brian
Berliner, Esq.,
O'Melveny & Myers LLP,
400 South Hope Street, Los Angeles, CA 90071. (D,R)
164. GlobeRanger
Corporation v. Software AG, et al., Civil Action No. 3:11-CV-403-B (N.D.
Texas). Served as an expert for GlobeRanger in a case alleging
misappropriation of trade secrets and civil conspiracy involving
radio-frequency identification (RFID) software and business processes.
Result: jury verdict of $15 million in favor of GlobeRanger, upheld on appeal to the Fifth Circuit. Contact: Ophelia
Camiña, Esq., Susman Godfrey,
L.L.P., 901 Main St., Suite 5100, Dallas, TX 75202-3775. (D,R,T)
165. In re: ProvideRx of Grapevine, LLC
and CERx Pharmacy Partners, LP v. Provider Meds, LP, et al., Adv.
Proc. No. 13-03015-BJH (Bankr. N.D. Tex). Served as an
expert for creditor CERx in a Chapter 7 bankruptcy case involving
security interests in software for remote dispensing pharmacies and
whether certain licenses constitute encumbrances under Texas law.
Case has settled. Contact:
Bill
Whitehill, Esq., Gardere Wynne Sewell
LLP, 1601 Elm St., Dallas, TX 75201. (R)
166. Square, Inc. v. Protegrity
Corporation,
CBM2014-00182, Patent Trial and Appeal Board (2014). Served as an expert for petitioner in a covered business method
petition seeking review of U.S. Patent 8,402,281, relating to methods of encrypting databases. Result: all claims invalid under §101. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich
& Rosati Professional Corporation, 650 Page Mill Road, Palo
Alto, CA 94304-1050. (D,R)
167. VigLink, Inc. v.
Linkgine, Inc., Patent Trial and Appeal Board (2014). Served as an expert for petitioner in covered business method petitions
2014-00184 and 2014-00185 seeking review of U.S. Patents 7,818,214 and 8,027,883,
relating to modifying affiliate links onwebpages. Result: all challenged claims found invalid. Affirmed by the Federal Circuit at 2016-2087, 2016-2088. Contact: Robert C.
Hilton, Esq., McGuireWoods LLP,
2000 McKinney Ave., Suite 1400, Dallas, TX 75201. (R)
168. Juhline et al. v. Ben
Bridge Jewelers Inc. et al., Case 11-cv-2096-GPC-NLS (S.D. Cal.). Served as an expert
for defendant Ben Bridge in a class action alleging violation of California
Civil Code §1747.8, relating to the collection of personal identification
information in connection with credit card transactions. Case has
settled. Contact: Rosemarie
T. Ring. Esq., Munger, Tolles
& Olson LLP, 560 Mission St., 27th Fl., San Francisco, CA 94105.
169. Catch Curve, Inc. v.
Integrated Global Concepts, Inc. v. j2 Global Communications, Inc. et al.,
Case 1:06-CV-02199 (N.D. Ga.). Served as an expert for defendant and
counterclaim plaintiff Integrated Global Concepts in a case alleging
infringement of U.S. Patents 4,994,926,
5,291,302,
5,459,584,
6,643,034,
6,785,021,
7,365,884
and 7,525,691,
relating to store-and-forward fax systems. Infringement claims were
dropped. The issue at bar is whether j2 Global had an objective basis
to believe that Integrated Global was infringing. Case has settled. Contact: James Heiser, Esq.,
Chapman and Cutler, LLP, 111 West
Monroe St., Chicago, IL 60603. (D,R)
170. Phoenix Payment Systems, Inc. v. Protegrity
Corporation, CBM2014-00121, Patent Trial and Appeal Board (2014).
Served as an expert for petitioner in a covered business method
petition seeking review of U.S. Patent
8,402,281, relating to methods of encrypting databases. Underlying
litigation settled before CBM could be instituted.
Contact: Contact:
David
J. Wolfsohn, Esq.,
Duane Morris LLP, 20 South
17th Street, Philadelphia, PA 19103. (R)
171. Informatica
Corporation v. Protegrity Corporation, CBM2015-00010,
CBM2015-00021, Patent Trial and Appeal Board (2014). Served as an expert for petitioner in
two covered business method petitions seeking review of U.S. Patents 8,402,281 and 6,321,201,
relating to methods of encrypting databases. Result: all claims found invalid under 35 U.S.C. §101. The Board's opinions in the '201 case and the '281 case comment favorably on Dr. Shamos's testimony. Contact: Mark S. Kaufman, Esq., Reed Smith LLP, 1301 K Street N.W.,
Washington, DC 20005. (D,R)
172. Qualtrics, LLC v.
OpinionLab, Inc., IPR2014-00314, IPR2014-00356, IPR2014-00366, IPR2014-00406,
IPR2014-00420, and IPR2014-00421, Patent Trial and Appeal Board (2014). Served as an expert for patent owner
OpinionLab, Inc. in inter partes reviews of U.S. Patents 6,421,724, 6,606,581,
8,041,805,
7,085,820,
7,370,285
and 8,024,668,
relating to methods of soliciting page-specific feedback regarding web
pages. All challenged claims have been found invalid except as to the '805 patent. '724 was not instituted. Contact: Chris
Kennerly, Esq., Paul Hastings LLP,
1117 S. California Ave., Palo Alto, CA 94304. (D,R)
173. Callwave
Communications, LLC v. AT&T Mobility, LLC et al., Case
1:12-cv-01788-RGA (D. Del.). Served as an expert for defendant
Research In Motion, Corp. in a case alleging infringement of U.S. Patent 7,907,933,
relating to methods of billing for purchases by placing a call to a
pay-per-call service. Plaintiff stipulated to non-infringement for
appeal purposes, but the Federal Circuit upheld on January 10, 2017. Contact: John V. Gorman, Esq., Morgan, Lewis & Bockius LLP, 1701
Market Street, Philadelphia, PA 19103.
174. SoftVault
Systems, Inc. v. Dassault Systèmes
Solidworks Corporation, Case
5:14-cv-03221-LHK (N.D. Cal.). Served as an expert for defendant
Solidworks. in a case alleging infringement of U.S. Patents
6,249,868 and
6,594,765
relating to embedded agents for protecting computer systems against theft.
Case has settled. Contact: Cheryl T. Burgess, Esq.,
Knobbe, Martens, Olson & Bear, L.L.P.,
2040 Main Street, 14th Floor Irvine, CA 92614.
175.
PPS Data, LLC v. TransCentra, Inc., Case 13-359-LPS (D. Del.).
Served as an expert for plaintiff in a case alleging infringement of
U.S. Patents 7,181,430,
7,440,924,
7,624,071
and
8,126,809, relating to methods for processing check images in
electronic payment systems. Case has settled. Contact:Anthony H. Son, Esq., Maddox Edwards, PLLC, 1900 K Street NW, Suite 725, Washington, DC 20006. (Original
firm: Wiley Rein).
176. Clear With Computers, Inc.
v. Spanx, Inc., C.A. 6:12-cv-950-LED (E.D. Texas). Served as an expert for
defendant, an eBay company, in a case alleging infringement of U.S.
Patent 8,266,015,
relating to methods of presenting lists of product customization
options. Judgment on the pleadings was granted, invalidating the
asserted claims under 35 U.S.C. §101.
Case was appealed to the Federal Circuit, but the appeal with withdrawn. Case has settled. Contact:Contact: Scott McKeown, Esq., Ropes & Gray, L.L.P., 2099 Pennsylvania Avenue, Washington, DC 20006-6807.
177. Integrated Global
Concepts, Inc. v. Advanced Messaging Technologies, Inc., IPR2014-01027
and IPR2014-01028 Patent Trial and Appeal Board (2014). Served as an expert for petitioner
seeking inter partes review of U.S. Patents
6,020,980,
relating to delivering faxes through electronic mail. The PTAB declined
to institute review. Contact:
Robert
J. Schneider, Esq.,
Taft Stettinius & Hollister LLP,
111 East Wacker, Suite 2800, Chicago, IL 60601. (R)
178. athenahealth,
Inc. v. AdvancedMD Software, Inc., Civil Action 1:11-cv-11260-GAO (D.
Mass.). Served as an expert for Plaintiff athenahealth, Inc. in a case
alleging infringement of U.S. Patents
7,617,116 and
7,720,701,
relating to detecting errors in medical insurance claim submissions and
automated configuration of medical practice management systems. Case has
settled. Contact: Robert M.
Abrahamsen, Esq., Wolf,
Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, MA 02210.
179. CEATS, Inc. v.
Orbitz Worldwide, Inc., Civil Action 2:13-cv-01385-MMD-PAL (D.
Nev.). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patents
7,548,667,
7,640,178,
7,660,727,
8,219,448,
8,229,774 and
8,244,561,
relating to systems and methods for managing airline seat reservations. Case has
settled. Contact:
Jared Bunker, Esq.,
Knobbe, Martens, Olson & Bear, L.L.P.,
2040 Main Street, 14th Floor Irvine, CA 92614.
180. Audatex North
America, Inc. v.
Mitchell International, Inc., Civil Action 3:13-cv-01523-BEN (BLM) (S.D.
Cal.). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patents 7,912,740, 8,200,513 and 8,468,038,
relating to systems and methods for determining the valuation of a damaged
vehicle for insurance purposes. Claims found invalid after CBM review, affirmed by the Federal Circuit. Contact: David McPhie, Esq., Irell
& Manella LLP, 840
Newport Center Dr., Newport Beach, CA 29660. (R)
181. Skimlinks, Inc.
et al. v. Linkgine, Inc., Patent Trial and Appeal Board (2015). Served as an expert for petitioners in
covered business method petitions 2015-00086 and 2015-00087 seeking review of U.S. Patents 7,818,214 and 8,027,883,
relating to modifying affiliate links on webpages. Result: all claims found invalid, affirmed by the Federal Circuit. Contact: Richard F. Martinelli. Esq., Orrick,
Herrington & Sutcliffe LLP,
51 West 52nd St., New York, NY 10019. (R)
182. Advanced Auctions,
LLC. v. eBay, Inc., Case 12-cv-1612-BEN (JLB) (S.D. Cal.).
Served as an expert for defendant eBay in case alleging infringement of
U.S. Patent
8,266,000, relating to methods of conducting Internet auctions.
Defendant obtained judgment of invalidity on the pleadings under 35
U.S.C. §101.
Contact: Adrian Percer, Esq., Weil, Gotshal & Manges, LLP, 201 Redwood
Shores Parkway, Redwood Shores, CA 94065.
183. MaxMind, Inc. et al. v.
Fraud Control Systems.com Corporation, CBM2015-00094,
Patent Trial and Appeal Board (2014). Served as an expert for petitioner in a
covered business method petition seeking review of U.S. Patent 8,630,942,
relating to methods of determining whether a payment transaction may be
fraudulent based on IP addresses. Review was instituted on §101 grounds and Patent Owner requested adverse judgment. Contact:Anthony H. Son, Esq., Maddox Edwards, PLLC, 1900 K Street NW, Suite 725, Washington, DC 20006 (original firm Adrews Kurth). (R)
184. Square, Inc. v.
Unwired Planet, LLC, CBM2014-00156, Patent Trial and Appeal
Board (2014).
Served as an expert for
petitioner in a covered business method petition seeking review of U.S.
Patent
7,711,100,
relating to conducting point-of-sale transactions based on the location of a
wireless device. Challenged claims found invalid. Contact:
Sasha G. Rao, Esq.,
Maynard Cooper and Gale PC, 275 Battery St., San Francisco, CA 94111 (D,R)
185. Unified Patents, Inc. v.
Finnavations LLC, IPR2015-01209, Patent Trial and Appeal
Board (2015).
Served as an expert for
petitioner in an inter partes review of U.S.
Patent
8,132,720,
relating to verifying online transaction data through a graphical user
interface. Status: not instituted. Contact:
Paul C. Haughey, Esq.,
Kilpatrick Townsend & Stockton LLP, Eighth Floor, Two Embarcadero
Center San Francisco, CA 94111 (R)
186. Hoskin Hogan et al. v.
BP West Coast Products LLC et al., Case BC 460880 (Super. Ct. Los
Angeles Cty. CA, 2011). Served as an expert for defendant Retalix
Ltd., alleging negligence in the development and testing of software for
processing point-of-sale transactions. Summary judgment granted in
favor of Retalix. Contact: Richard H. Zelichov,
Esq., Katten Muchin Rosenman LLP,
2029 Century Park East, Suite 2600, Los Angeles, CA 90067-3012. (D,R)
187. In re U.S. Patent
Application 12/912,726 (USPTO). Served as an expert for applicant
AlmondNet, Inc. in an application for a patent relating to distributing
digital advertising based on a recipient profile. PTAB affirmed the Examiner's § 101 rejection. Contact: Louis J. Hoffman, Esq., Hoffman Patent Firm. (R)
188. Wickfire, LLC v. TriMax
Media, Inc. et al., C.A. 1:14-CV-34 (W.D. Tex). Served as an
expert for defendants in a case alleging click fraud in Internet
advertising. Jury verdict for Plaintiff, reversed on appeal to the Fifth Circuit. Contact: Barry M.
Golden, Esq., Miller, Egan, Molter & Nelson LLP,
2911 Turtle Creek Blvd., Suite 1100 Dallas, TX 75219. (D,R,T)
189. Square, Inc. v.
Unwired Planet, LLC, CBM2015-00148, Patent Trial and Appeal
Board. Served as an expert for
petitioner in a covered business method petition seeking review of U.S.
Patent 7,711,100,
relating to conducting point-of-sale transactions based on the location of a
wireless device. Not instituted because claims were found invalid under § 101 in CBM2014-00156. Contact: Sasha G. Rao, Esq., Maynard Cooper and Gale PC, 275
Battery St., San Francisco, CA 94111. (D,R)
190. Datatrak International
Inc. v. Medidata Solutions, Inc., C.A. 1:11-cv-00458-PAG (N.D. Ohio).
Served as an expert for defendant in a case alleging infringement of U.S.
Patent 7,464,087, relating to federated database queries. Defendant obtained summary judgment of invalidity under 35 U.S.C. §101. Contact: Duane-David Hough, Esq., Mayer
Brown LLP, 1675 Broadway, New York, NY 10019. (R)
191. SNMP Research, Inc. et
al. v. Avaya, Inc., C.A. 1:12-cv-00191-RGA-MPT (D. Del.). Served as
an expert for Avaya in an action alleging breach of contract, trade secret
misappropriation and copyright infringement involving software implementing
the Simple Network Management Protocol (SNMP). Case has settled. Contact: Joshua Krumholz, Esq., Holland & Knight, LLP, 10 St. James Avenue, 11th Floor, Boston, MA 02116. (D,R)
192. Certain Automated Teller Machines and Point of Sale Devices and
Associated Software Therefor, USITC
Inv. No. 337-TA-958. Served as an expert for Respondents NRT
Technology Corp. et al. in an International
Trade Commission proceeding brought by Complainant Global Cash Access
Inc. involving alleged infringement of U.S. Patent 6,081,792,
relating to structuring ATM and POS transactions with respect to
withdrawal limits. Result: all claims found invalid as
indefinite. In affirming
this determination, the Commission wrote: "should the extrinsic
evidence be considered, the Commission finds NRT’s expert testimony
credible, see Rebuttal Expert Report of Michael Shamos Regarding Claim
Construction ¶¶ 52-58, and that Everi’s expert’s testimony is not
credible." Contact: Colby B. Springer,
Esq., Polsinelli LLP (formerly at Lewis Roca Rothgerber LLP), Three Embarcadero Center, Suite 1350, San Francisco, CA 94111.
(D,R)
193. Better Mouse Company, L.L.C. v. SteelSeries ApS, Inc. et al., C.A. 2:14-cv-198-JRG (E.D. Texas). Served as an expert for defendant in a case alleging infringement of U.S. Patent 7,532,200,
relating to computer mouse whose resolution can be set without external
software. Dr. Shamos testified at trial on non-infringement. The jury
found for defendant on non-infringement. Contact: Joshua M. Masur, Esq., Zuber Lawler & Del Duca LLP, 2000 Broadway, Suite 154, Redwood City, California 94063. (Original firm: Turner Boyd LLP) (R,T)
194. Vesta Corporation v. Amdocs Management Limited et al.,
No. 3:14-cv-01142-HZ (D. Ore.). Served as an expert for defendants in a
case alleging misappropriation of trade secrets relating to billing in
the prepaid mobile phone payment processing market. Case has settled.
Contact: Yonaton M. Rosenzweig, Esq., Katten Muchin Rosenman LLP,
2029 Century Park East, Suite 2600, Los Angeles, CA 90067-3012. (D,R)
195. Benefit Funding Systems, LLC et al. v. U.S. Bancorp,
CA 1:12-cv-00803-LPS (D. Del.). Served as an expert for defendant U.S.
Bancorp in an action alleging infringement of U.S Patent 6,625,582,
relating to a method of establishing a financial account based on the
present value of future retirement payments. All asserted claims were
found invalid under 35 U.S.C. §101, a decision affirmed by the Federal
Circuit. Contact: Anthony H. Son, Esq., Maddox Edwards, PLLC, 1900 K Street NW, Suite 725, Washington, DC 20006. (Original firm: Wiley Rein).
196. Telesign Corporation v. Twilio, Inc., C.A. 3:18-cv-03279-VC (N.D. Cal.). Served as an expert for defendant Twilio in an action alleging infringement of U.S. Patent 7,945,034,
relating to verification of telephone users based on characteristics of
the telephone number, such as carrier and geographic location.
Defendant successfully resisted issuance of a preliminary injunction.
Case is stayed pending PTAB review. After PTAB review, Twilio's motion
for judgment on the pleadings was granted. Contact: Thomas J. Friel, Jr., Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304. (R)
197. Cronos Technologies, LLC v. Expedia, Inc., C.A. 13-1538-LPS (D. Del.), Cronos Technologies, LLC v. Priceline.com, Inc., C.A. 13-1541-LPS (D. Del.) and Cronos Technologies, LLC v. Travelocity.com L.P.,
C.A. 13-1544-LPS (D. Del.). Served as an expert for defendants in three
cases, consolidated for some purposes, in actions alleging infringement
of U.S. Patent 5,664,110,
relating to a remote ordering system enabling a user to build lists of
products to be ordered. The Court found non-infringement on summary
judgment, affirmed unanimously by the Federal Circuit. Contact: Matthew C. Acosta, Esq., Jackson Walker LLP, KPMG Plaza at Hall Arts, 2323 Ross Avenue, Suite 600, Dallas, TX 75201. (D,R)
198. Ex Parte Reexamination of U.S. Patent 7,333,430, Control No. 90/013,532. Served as an expert for patent owner Fortinet, Inc. in a reexamination of U.S. Patent 7,333,430,
drawn to distributing network packets for intermediate security
processing based on the ultimate destination of the packet. Result: all
challenged claims and newly presented claims patentable. Contact: Michael A. DeSanctis, Hamilton DeSanctis & Cha LLP, Financial Plaza at Union Square, 225 Union Boulevard, Ste. 150, Lakewood, CO 80228. (R)
199. ServiceNow, Inc. v. Hewlett-Packard Company, IPR2015-00717 (PTAB). Served as an expert for patent owner Hewlett-Packard Company in an inter partes review of U.S. Patent 7,027,411, drawn to efficient determination of changes in network topology. Status: settled. Contact: Monica Grewal, Esq., Wilmer Cutler Pickering Hall and Dorr LLP, 60 State Street, Boston, MA 02109. (D,R)
200. Intellectual Ventures I LLC v. Nextel Operations, Inc. and Sprint Spectrum L.P., C.A. No. 13-1634 (D.Del) and related cases 13-1635; Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., C.A. No. 13-1632; 13-1633; Intellectual Ventures I LLC v. United States Cellular Corporation,
C.A. No. 13-1636 and related case 13-1637, all D. Del. Served as an
expert for defendants Sprint, T-Mobile and U.S. Cellular in related
cases alleging infringement of U.S. Patent 6,115,737,
drawn to use of an Internet gateway for processing customer service
requests to a web server. The Court invalidated the '737 patent on §101 grounds. Contact: Jason W. Cook, Esq., McGuireWoods LLP,
2000 McKinney Ave., Suite 1400, Dallas, TX 75201.
(D,R)
201. Ex Parte Reexamination of U.S. Patent 7,968,744, Control No. 90/013,533. Served as an expert for patent owner Fortinet, Inc. in a reexamination of U.S. Patent 7,968,744,
drawn to systems and methods for allowing execution of authorized
computer code and for protecting computer systems and networks from
unauthorized code execution. Result: challenged claim and 14 new claims
determined patentable. Contact: Michael A. DeSanctis, Hamilton DeSanctis & Cha LLP, Financial Plaza at Union Square, 225 Union Boulevard, Ste. 150, Lakewood, CO 80228. (R)
202. Ex Parte Reexamination of U.S. Patent 7,376,125, Control No. 90/013,531. Served as an expert for patent owner Fortinet, Inc. in a reexamination of U.S. Patent 7,376,125, drawn to a virtual routing engine for software-based packet routing. Result: newly presented claims patentable. Contact: Michael A. DeSanctis, Hamilton DeSanctis & Cha LLP, Financial Plaza at Union Square, 225 Union Boulevard, Ste. 150, Lakewood, CO 80228. (R)
203. Twilio, Inc. v.
Telesign Corporation, IPR2016-00360. Served as an expert for requester Twilio in an inter partes review of U.S. Patent 7,945,034,
relating to verification of telephone users based on characteristics of
the telephone number, such as carrier and geographic location.
Challenged claims confirmed. Contact: Thomas J. Friel, Jr., Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304. (D,R)
204. Twilio, Inc. v.
Telesign Corporation, IPR2016-00450, Patent Trial and Appeal Board (2016). Served as an expert for petitioner
in an inter partes review of U.S. Patent 8,462,920,
relating to verification of telephone users based on characteristics of
the telephone number, such as carrier and geographic location.
Trial was not instituted. Contact: Contact: Carrie J. Richie, Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304. (R)
205. Smart Systems Innovations, LLC v. Chicago Transit Authority, et al., C.A. 14-cv-08053 (N.D. Ill.). Served as an expert for defendants in an action alleging infringement of U.S. Patent 5,828,044,
relating to a radio-frequency ID (RFID) credit card system. Defendant
successfully resisted issuance of a preliminary injunction. All claims
invalidated as non-statutory under 35 U.S.C. §101. Affirmed by the Federal Circuit in October 2017. Contact: Jeffrey M. Connor., Esq., formerly at Kilpatrick Townsend & Stockton LLP, now IP counsel at Honeywell. (D,R)
206. Unwired Planet LLC v. Google, LLC, C.A. 3:12-cv-00504-MMD-VPC (D. Nevada). Served as an expert for Google in an action alleging infringement of U.S. Patents 6,292,657, 6,654,786, 6,662,016, 6,684,087, 6,895,240, 6,944,760, 7,024,205, 7,035,647, 7,203,752 and 7,463,151,
relating to provision of wireless services. All asserted claims of the
'151, '205 and '751 patents have been found invalid by the Patent Trial
and Appeal Board. After appeal to the Federal Circuit, the case
continued with respect to certain claims of the '752 Patent but these
were dismissed by stipulation. Contact: Peter
E. Gratzinger, Esq., Munger, Tolles &
Olson LLP, 355 South Grand Avenue, Los Angeles, CA 90071.
207. Xilidev, Inc. v. Boku, Inc. et al., C.A. 3:13-cv-02793 (S.D. Cal.). Served as an expert for defendants in an action alleging infringement of U.S. Patent 7,273,168,
relating to point-of-sale billing on handheld devices. Claims 1-18 and
20-23 of the '168 patent have been found invalid by the Patent Trial
and Appeal Board. Plaintiff agreed to a voluntary dismissal with prejudice. Contact: Frank Pietrantonio, Esq., Cooley LLP, One Freedom Square,
11951 Freedom Drive, Reston, VA 20190.
208. Intellectual Ventures II LLC v. Commerce Bancshares, Inc. et al., C.A. 2:13-CV-04160 (W.D. Mo.). Served as an expert for defendants in an action alleging infringement of U.S. Patents 5,745,574, relating to security in electronic transactions, 6,314,409 and 6,826,694, relating to controlling access to digital property, 6,715,084, relating to intrusion detection, and 7,634,666, relating to a cryptographic engine. All asserted claims have been declared invalid by the Patent Trial and Appeal Board. Decision affirmed by the Federal Circuit in December 2016. Contact: Mark Vander Tuig, Esq., Senniger Powers LLP,
100 North Broadway, 17th Floor, St. Louis, MO 63102.
209. Hy-Vee, Inc. v. Inmar Digital Promotions Network, Inc.,
C.A. 4:15-cv-00275 (S.D. Iowa). Served as an expert for defendant in an
action seeking indemnity for infringement of U.S. Patents 8,219,445, 8,370,199 and 8,538,805, relating to point-of-sale processing of promotions, such as coupons. Hy-Vee had been sued for infringing these patents in Advanced Marketing Systems, LLC v. Hy-Vee, Inc., C.A. 3:15-cv-00103 (W.D. Wisc.). Both cases have settled. Contact: Richard J. Keshian, Esq., Kilpatrick
Townsend & Stockton LLP, 1001 West Fourth Street Winston-Salem, NC,
27101.
(R)
210. Motivation Innovations, LLC v. PetSmart, Inc., C.A. 1:13-cv-00957 (D.Del.). Served as an expert for defendant in an action alleging infringement of U.S. Patent 5,612,527, relating to a system for redeeming discount offers at point of sale. On motion for judgment on the pleadings, all asserted claims were found invalid under 35 U.S.C. §101. Contact: Kevin A. Zeck, Esq., Perkins Coie, LLP, 1201 Third Avenue, Suite 4900, Seattle, WA 98101-3099.
211. PPS
Data, LLC v. VSoft Corporation et al., Case 1:15-cv-00084 (N.D. Ga.). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patents 7,181,430, 7,216,106, 7,440,924, 7,624,071 and 8,660,956,
relating to methods for processing check images in electronic payment
systems. Case has settled. Contact:Anthony H. Son, Esq., Maddox Edwards, PLLC, 1900 K Street NW, Suite 725, Washington, DC 20006 (original firm: Andrews Kurth).
212. Sally Beauty Holdings et al. v.
Intellectual Ventures I LLC, CBM2016-00029, Patent Trial and Appeal
Board. Served as an expert for
petitioner in a covered business method petition seeking review of U.S.
Patent 5,969,324,
relating to accounting methods utilizing a non-predictable bar code. Trial was instituted, the PTAB writing in its decision: "We credit the testimony of Dr. Michael Shamos." Case has settled. Contact: Derek Swanson, Esq., McGuireWoods LLP, Gateway Plaza, 800 East Canal Street, Richmond, VA 23219. (R)
213. Square, Inc. v. Protegrity Corporation, CBM2015-00014, Patent Trial and Appeal Board (2016). Served as an expert for petitioner in a covered business method petition seeking review of U.S. Patent 6,321,201,
relating to methods of encrypting databases. Result: all challenged claims found invalid under 35 U.S. §§101 and 103. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich
& Rosati Professional Corporation, 650 Page Mill Road, Palo
Alto, CA 94304-1050. (R)
214. T-Mobile US, Inc. v.
Intellectual Ventures II LLC, CBM2016-00083, Patent Trial and Appeal
Board. Served as an expert for
petitioner in a covered business method petition seeking review of U.S.
Patent 6,115,737, relating to use of an Internet gateway for processing customer service requests to a web server. The PTAB determined that the patent did not claim a covered business method. Contact: Alison R. Watkins, Esq., Gibson, Dunn & Crutcher LLP, 1881 Page Mill Road, Palo Alto, CA 94304-1211. (R)
215. Twin Peaks Software, Inc. v. IBM Corporation,
Case 3:14-cv-03933-JST (N.D. Cal.). Served as an expert witness for
defendant IBM in an action alleging infringement of U.S. Patent 7,418,439,
relating to a system for storing and sharing networked files. All
asserted claims found invalid during claim construction. Contact: Andrew Bramhall, Esq., Quinn Emanuel Urquhart & Sullivan, LLP, 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, CA 94065-2139.
216. Live Face on Web, LLC v. The Control Group Media Company, Inc. et al.,
Case 2:15-cv-01306 (E.D. Pa.). Served as an expert witness for
defendants in an action alleging breach of contract and infringement of
copyrights relating to web media players and video productions in which
recorded actors promote products for websites. Case has settled.
Contact: Damon W.D. Wright, Esq., Venable LLP, 575 Seventh St. N.W., Washington, DC 20004.
217. Nomadix, Inc. v. Hospitality Core Services, LLC, Case 2:14-cv-08256-DDP (C.D. Cal.) Served as an expert witness for defendant in a case alleging infringement of U.S. Patents 6,636,894 and 6,868,399, relating to network gateways, U.S. Patent 7,698,432, relating to bandwidth management, U.S. Patent 7,953,857, relating to dynamic data transfer over networks, U.S. Patent 8,266,266, relating to dynamic network authorization, and U.S. Patents 8,156,246, 8,266,269, 8,364,806, 8,725,888 and 8,788,690,
relating to providing network content. Case has settled. Contact:
Michael J. Mehrman, Merhman Law Office, P.C., 150 Spalding Creek Court,
Sandy Springs, GA 30350.
218. Certain Digital Video Receivers and Hardware and Software Components Thereof, USITC
Inv. No. 337-TA-1001. Served as an expert for Complainants Rovi
Corporation et al. against Comcast Corporation et al. in an International
Trade Commission proceeding involving alleged infringement of U.S.
Patents 8,006,263 , 8,046,801 and 8,578,413, relating to remote and local electronic TV program guides.
On Final Determination, a violation was found with respect to the '263 and '413 patents. Affirmed by the Federal Circuit on March 20, 2020. Contact: Richard A. Kamprath,
Esq., McKool Smith,
300 Crescent Court, Suite 1500, Dallas, TX 75201.
(D,R,T)
219. ZKey Investments, LLC v. Facebook, Inc.,Case 2:16-cv-00782-RSWL-KS (C.D. Cal.). Served as an expert for defendant in a case alleging infringement of U.S.
Patent 6,820,204, relating to providing granular control over access to data.
Affirmed by the Federal Circuit on Jan. 10, 2018. Result: all claims found invalid under §101. Contact: Andrew C. Mace, Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304.
(R)
220. In re: The Matter of the 2016 Presidential Election,
659 MD 2016 (Pa. Cmwlth. Ct., 2016). Served as an expert for
intervenors opposing an action brought seeking a recount of votes in
Pennsylvania on the grounds that the state's voting systems are
unsecure and vulnerable to hacking by foreign actors. Petitioners
discontinued the suit before hearing, refusing to post the required
bond. Contact: Lawrence J. Tabas, Esq., Obermayer Rebmann Maxwell & Hippel LLP, One Penn Center, 19th Floor, 1617 John F. Kennedy Blvd., Philadelphia, PA 19103.
221. Stein v. Cortés, Case
2:16-cv-06287-PD (E.D. Pa.). Served as an expert for defendant
Secretary of the Commonwealth of Pennsylvania in an action for a
mandatory injunction to compel a recount and forensic examination of
voting systems. Result: injunction denied. The Court's memorandum
comments favorably on Dr. Shamos's qualification and testimony. Most
claims have been dismissed on summary judgment. Case has settled.
Contact: Timothy Gates, Esq., Chief Counsel, PA Department of State, 3306 North Office Bldg., Harrisburg, PA 17120.
(R,T)
222. Free Stream Media Corp. (d.b.a. Samba) v. Alphonso Inc.,
Case No. 3:17-cv-02107 (N.D. Cal., transferred from E.D. Tex.). Served
as an expert for defendant Alphonso in an action alleging infringement
of U.S. Patents 9,026,668 and 9,386,356,
relating to a system for targeting data, such as advertising, to a
device, such as a tablet, based on content that is identified as
playing on a different device, such as a television. Alphonso won
summary judgment of non-infringement. Contact: Neel Chatterjee, Esq., Goodwin Procter LLP, 601 Marshall Street, Redwood City, CA 94063. (D,R)
223. Copart, Inc. v. Sparta Consulting, Inc.,
Case 2:14-cv-00046-KJM-CKD (E.D. Cal.). Served as an expert for
defendant Sparta in an action alleging misappropriation of trade
secrets relating to imaging batches of items to be offered at auction.
Misappropriation counts were dropped during trial. Contact: Frederick Brown, Esq., Gibson, Dunn & Crutcher LLP, 555 Mission Street, Suite 3000, San Francisco, CA 94105. (D,R)
224. Apple
Inc. v. Masa LLC., IPR2016-00748, Patent Trial and Appeal Board (2016). Served as an expert for patent owner in an inter partes review of U.S.
Patent 8,519,834,
relating to a wearable device to alert a user to an incoming cellphone
call. All challenged claims found invalid. Affirmed by the
Federal Circuit. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC,
600 Washington Avenue, Suite 2500, St. Louis, MO 63101. (R)
225. Tele-Publishing, LLC v. Facebook, Inc. et al., Case 1:09-cv-11686-DPW (D. Mass.). Served as an expert for defendants in a case alleging infringement of U.S.
Patent 6,253,216, relating to controlling access to information on personal web pages.
Result: all claims found invalid under §101; judgment for defendants. Case settled during appeal to the Federal Circuit. Contact: Reuben Chen, Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304.
(R)
226. Groupon, Inc. v. International Business Machines Corporation, Case 1:16-cv-5064 (N.D. Ill.). Served as an expert for Groupon in a case alleging infringement of U.S.
Patent 7,856,360, relating to gathering information from attendees at a venue. Case has settled. Contact: Saina Shamilov, Esq., Fenwick & West LLP, 801 California Street, Mountain View, CA 94041. (R)
227. Stingray Digital Group Inc. v. Music Choice, Patent Trial and Appeal Board. Served as an expert for petitioner in six inter partes reviews of U.S.
Patents 7,320,025 (IPR2017-00888) and 9,351,045
(IPR2017-01191), relating to providing supplementing a broadcast media
service with an on-demand, personalized media service and U.S. Patents 8,769,602 (IPR2017-01192), 9,357,245 (IPR2017-1193, IPR 2018-0114), relating to providing a visual complement to an audio program, and 9,414,121
(IPR 2017-1450), relating to systems and methods for providing
on-demand entertainment. Trial has been instituted in '025, '045, '121
and '602. Patent owner requested adverse judgment in IPR2017-1193. Two
claims survived in IPR2018-00114. Contact: Heath Briggs, Esq., Greenberg Traurig, LLP, 1200 17th St., Suite 2400, Denver, CO 80202. (D,R)
228. Music Choice v. Stingray Digital Group Inc. et al., C.A. No. 2:16-CV-0586-JRG-RSP (E.D. Texas). Served as an expert for defendants in a case alleging infringement U.S.
Patents 7,320,025 and 9,351,045, relating to providing supplementing a broadcast media service with an on-demand, personalized media service, U.S. Patents 8,769,602 and 9,357,245, relating to providing a visual complement to an audio program, and U.S. Patent 9,414,121, relating to systems and methods for providing on-demand entertainment. Case has settled. Contact: Joshua Raskin, Esq., Greenberg Traurig, LLP, MetLife Bldg., 200 Park Avenue, New York, NY 10166. (R)
229. LivePerson, Inc. v. 24[7] Customer, Inc., IPR2017-00609, Patent Trial and Appeal Board. Served as an expert for patent owner in an inter partes review of U.S. Patent 6,970,553, relating to converting a voice call into a chat session. Four of six challenged claims were not found unpatentable. Contact: Bill Trac, Esq., O'Melveny & Myers LLP, Two Embarcadero Center, 28th Floor, San Francisco, CA 94111. (R)
230. Blackberry Limited v. Blu Products, Inc.,
Case 1:16-cv-23535-FAM (S.D. Fla.). Served as an expert for defendants
in a case alleging infringement of 15 patents, including U.S. Patent 6,271,605, relating to a battery disconnect system, U.S. Patent 8,169,449, relating to a multilayer graphics controller, and U.S. Patent 8,411,845, relating to the display of call logs on mobile phones. Case has settled. Contact: Victor Castellucci, Esq., Cozen O'Connor, 2 South Biscayne Blvd., 30th Floor, Miami, FL 33131. (R)
231. Twitter, Inc. v. YouToo Technologies, LLC., Patent Trial and Appeal Board. Served as an expert for patent owner in two inter partes reviews of U.S. Patent 9,083,997 (IPR2017-00829, IRP2017-00830), relating to publishing content on social media sites. All challenged claims found unpatentable. Contact: Samuel E. Joyner, Esq., Carrington, Coleman, Sloman & Blumenthal, LLP, 901 Main Street, Suite 5500, Dallas, TX 75202. (R)
232. IPDEV Co. v. Ameranth, Inc.,
Case No. 3:14-cv-01303-GPC-JLB (S.D. Cal.). Served as an expert
for defendant in an action to determine priority of invention among
interfering patents involving U.S. Patents 6,384,850 and 6,871,325, assigned to Ameranth and relating to synchronous updating of restaurant menus on wireless
devices, and U.S. Patents 5,991,739 and 8,738,449,
relating to Internet ordering methods. Consolidated with Case
233, below. On summary judgment, the Court awarded priority to
Ameranth. Contact: John W. Osborne, Esq., Osborne Law LLC, 33 Habitat
Lane, Cortlandt Manor, NY 10567.
(D,R)
233. In re: Ameranth Patent Litigation,
Case No. 3:11-cv-01810-DMS-WSG (S.D. Cal.). Served as an expert
for Ameranth in an action against numerous defendants alleging
infringement of U.S. Patents 8,146,077,
relating to synchronous updating of restaurant menus on wireless
devices. All asserted claims were found invalid under 35 U.S.C. §
101, affirmed by the Federal Circuit. Contact: John W. Osborne,
Esq., Osborne Law LLC, 33 Habitat Lane, Cortlandt Manor, NY 10567. (D,R)
234. Google Inc. v. Spring Ventures, Ltd., IPR2017-01652 and 01653, Patent Trial and Appeal Board. Served as an expert for petitioner in inter partes reviews of U.S. Patent 8,661,094,
relating to WWW addressing. Trial instituted in 2017-01653, denied in
2017-01652. Result: all claims of the '094 patent were determined to be
unpatentable. Affirmed on appeal to the Federal Circuit. At oral argument, Dr. Shamos's qualifications were challenged unsuccessfully. Contact: Scott McKeown, Esq., Ropes & Gray, L.L.P., 2099 Pennsylvania Avenue, Washington, DC 20006-6807. (D,R)
235. Rovi Guides, Inc. et al. v. Comcast Corporation et al., Case No. 1:16-cv-09278-JPO (S.D.N.Y.). Served as an expert for plaintiffs in an action alleging infringement of U.S.
Patent 8,713,595, relating to electronic TV program guides and 9,172,987, relating to the use of markup language to alter the functionality of set-top boxes.
Case has settled. Contact: Richard A. Kamprath,
Esq., McKool Smith,
300 Crescent Court, Suite 1500, Dallas, TX 75201.
(D,R)
236. StrikeForce Technologies, Inc. v.Entrust, Inc. et al., Case No. 1:17-cv-00309-LMB-TCB (E.D. Va.). Served as an expert for plaintiff in an action alleging infringement of U.S.
Patents 8,484,698, and 8,713,701, relating to out-of-band authentication using mobile devices.
Case has settled. Contact: Josef Schenker,
Esq., Ropes & Gray LLP,
1211 Avenue of the Americas, New York, NY 10036.
(R)
237. Level One Technologies, Inc. v. Penske Truck Leasing Co, Inc. and Penske Logistics, LLC, Case No. 4:14-cv-1305-RWS (E.D. Mo.). Served as an expert for defendant in an action alleging
trade secret misappropriation and contractual breach of confidentiality
relating to a computer system for invoicing and rendering electronic
payments in the trucking industry.
Case has settled. Contact: Douglas Y. Christian, Esq., Ballard Spahr LLP, 1735 Market Street, 51st Floor, Philadelphia, PA 19103.
(D,R)
238. Uniloc USA Inc. et al. v. Netsuite Inc., Case No. 2:16-cv-00862-RWS (E.D. Texas) and Uniloc USA Inc. et al. v. Nutanix Inc.,
Case No. 2:16-cv-01193-RWS (E.D. Texas). Served as an expert for
plaintiff on claim construction issues in an action alleging
infringement of U.S. Patent 6,324,578,
relating to management of configurable application programs on a
network. Later, the asserted claims were found invalid under 35 U.S.C.
§ 101. Contact: James J. Foster, Esq., Prince Lobel Tye LLP, One International Place, Suite 3700, Boston, MA 02110. (R)
239. Muransky v. The Cheesecake Factory, Inc. et al., Case
2:17-cv-07569-CJC-RAO (C.D. Cal). Served as an expert for defendants in
a case involving alleged violations of the Fair Credit Reporting Act,
15 U.S.C. § 1681 ("FCRA") arising from display of more than five digits
of a credit card number on customer receipts. Case has settled.
Contact: John L. McManus, Esq., Greenberg Traurig, P.A., 401 E. Los Olas Blvd., Suite 2000, Fort Lauderdale, FL 33301. (R)
240. Twilio, Inc. v.
Telesign Corporation, IPR2016-00451, Patent Trial and Appeal Board (2016). Served as an expert for petitioner
in an inter partes review of U.S. Patent 8,687,038,
relating to verifying an online registration via an out-of-band
telephone connection. Trial was not instituted. Contact: Contact:
Carrie J. Richie, Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304. (R)
241. Twilio, Inc. v.
Telesign Corporation, IPR2016-01688, Patent Trial and Appeal Board (2016). Served as an expert for petitioner
in an inter partes review of U.S. Patent 9,300,792,
relating to verification of telephone users based on characteristics of
the telephone number, such as carrier and geographic location.
All challenged claims found unpatentable. Contact: Contact: Carrie J. Richie, Esq., Cooley LLP, 3175 Hanover Street, Palo Alto, CA 94304. (R)
242. EdiSync Systems, LLC
v. Adobe Systems, Inc., Civil Action 12-cv-02231-MSK-MEH (D.
Colo.). Served as an expert for Defendant Adobe in a case
alleging infringement of U.S. Patent 5,799,320,
relating to multi-author document editing systems. Case has
settled. Contact: David Sipiora, Esq., Kirkpatrick Townsend & Stockton LLP, Suite 600, 1400 Wewatta Street, Denver, CO 80202.
243. Ford Motor Company v. Versata Software, Inc. et al.,
Case No. 2:15-cv-10628-MFL-EAS (E.D. Mich.). Served as an expert
for defendant/counter-plaintiff Versata in a declaratory judgment action
relating to alleged infringement of U.S. Patents 5,825,651, 6,405,308 and 6,675,294, relating to product configuration through a graphical user interface; U.S. Patent 7,882,057, relating to complex product configuration using submodels; U.S. Patents 7,200,582 and 7,464,064, relating to checking the consistency of a product configuration model using set equations; and U.S. Patent 8,805,825, relating to product configuration in which attributes are prioritized. Result: jury vedict for Versata for $105 million. Contact: Steve Mitby, Esq., Mitby Pacholder Johnson PLLC, 1001 McKinney St., Suite 925, Houston, TX 77002. (D,R)
244. Improved Search LLC v. Microsoft Corporation, C.A. No. 16-cv-650-JFB-SRF (D.Del.). Served as an expert for plaintiff in an action alleging infringement of U.S. Patents 6,604,101 and 7,516,154,
relating to methods and systems for translingual searching. Plaintiff
sought a judgment of non-infringement so claim constructions could be
appealed to the Federal Circuit. Result: affirmed. Contact: Robert Yorio, Esq., Carr & Ferrell LLP, 120 Constitution Drive, Menlo Park, CA 94025. (D,R)
245. Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2017-00866, IPR2017-00867, Patent Trial and Appeal Board. Served as an expert for patent owner in inter partes reviews of U.S. Patent 8,713,595, relating to electronic television program guides. All challenged claims found unpatentable. Contact: Josef B. Schenker, Ropes & Gray LLP, 1211 Avenue of the Americas, New York, NY 10036. (D,R)
246. Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2017-00950, IPR2017-00951, IPR2017-00952, Patent Trial and Appeal Board. Served as an expert for patent owner in inter partes reviews of U.S. Patent 8,006,263, relating to electronic television program guides. All challenged claims found unpatentable. Contact: Josef B. Schenker, Ropes & Gray LLP, 1211 Avenue of the Americas, New York, NY 10036. (D,R)
247. Unified Patents, Inc. v. Anuwave LLC., IPR2018-00223, Patent Trial and Appeal Board. Served as an expert for petitioner in inter partes reviews of U.S. Patent 8,295,862, relating to enabling short message system (SMS) communication without using IP services. Terminated by settlement. Contact: Robert High, Esq., Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 271 17th St. N.W., Suite 1400, Atlanta, GA 30363-6209. (R)
248. Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2017-01048, IPR2017-01049, IPR2017-01050, Patent Trial and Appeal Board. Served as an expert for patent owner in inter partes reviews of U.S. Patent 8,578,413, relating to electronic television program guides. All challenged claims found unpatentable. Contact: Josef B. Schenker, Ropes & Gray LLP, 1211 Avenue of the Americas, New York, NY 10036. (D,R)
249. Comcast Cable Communications, LLC v. Rovi Guides, Inc., IPR2017-01065, IPR2017-01066, IPR2017-01143, Patent Trial and Appeal Board. Served as an expert for patent owner in inter partes review of U.S. Patent 8,046,801, relating to electronic television program guides. All challenged claims found unpatentable. Contact: Josef B. Schenker, Ropes & Gray LLP, 1211 Avenue of the Americas, New York, NY 10036. (D,R)
250. DevFactory FZ-LLC v. Magnitude Software, Inc.,
Arbitration WIPOA300617. Served as an expert for Claimant DevFactory in
an arbitration relating to a claim of breach of a software Technology
Services Agreement. Arbitration has terminated. Contact: Steve Mitby, Esq., Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C., 1221 McKinney, Suite 2500, Houston, TX 77010.
251. BookIT Oy Ajanvarauspalvelu v. Bank of America Corporation et al., 3:17-cv-02577-K (N.D. Texas). Served as an expert for BookIT in an action alleging infringement of U.S. Patents 8,589,194 and 9,177,268, relating to mediating communications between a service provider and a user in a telecommunications network. Plaintiff
sought a judgment of non-infringement so that claim constructions could
be appealed to the Federal Circuit, which affirmed. Contact: Richard A. Kamprath,
Esq., McKool Smith,
300 Crescent Court, Suite 1500, Dallas, TX 75201. (D,R)
252. Promptu Systems Corporation v. Comcast Corporation et al., 2:16-cv-06516-JS (E.D. Pa.). Served as an expert for plaintiff in an action alleging infringement of U.S. Patents 7,047, 196, 7,260,538 and RE44,326,
relating to voice control of television set-top boxes. Plaintiff is appealing an adverse claim construction. Contact: Robert Yorio, Esq., Carr & Ferrell LLP, 120 Constitution Drive, Menlo Park, CA 94025. (D,R)
253. Snap Inc. v. Vaporstream, Inc.,
IPR2018-00200, IPR2018-00312, IPR2018-00369, IPR2018-00397,
IPR2018-00404, IPR2018-00408, IPR2018-00416, IPR2018-00439,
IPR2018-00455, IPR2018-00458, Patent Trial and Appeal Board. Served
as an expert for patent owner in inter partes reviews of U.S. Patents 8,886,739, 8,935,351, 9,306,885, 9,306,886, 9,313,155, 9,313,156, 9,313,157, 9,338,111 and 9,413,711,
relating to reducing traceability of electronic messages. In
IPR2018-00312, IPR2018-00369, IPR2018-00404 and IPR2018-00408 and
IPR2018-00458, all challenged claims were found unpatentable. In
IPR2018-00397, IPR2018-00416, IPR2018-00439 and IPR2018-00455, and IPR2018-00458, all
challenged claims were found patentable. Contact: Douglas R. Wilson, Esq., Heim, Payne & Chorush, LLP, Heritage Plaza, 111 Bagby, Suite 2100, Houston, TX 77002. (R)
254. Shopify, Inc. v. DDR Holdings, LLC,
IPR2018-01008, IPR2018-01009, IPR2018-01010, IPR2018-01011,
IPR2018-01012, IPR2018-01014, Patent Trial and Appeal Board. Served as
an expert for petitioner in inter partes reviews of U.S. Patents 8,515,825, 9,043,228, and 9,639,876,
relating to online affiliate marketing. In 2018-01008 and
2018-01009, the PTAB found all challenged claims patentable. In
2018-01010, 2018-01011, 2018-01012 and 2018-01014, the PTAB found most
challenged claims unpatentable, affirmed by the Federal Circuit in 2018-01011, 2018-01012 and 2018-01014. Contact: Jinnie L. Reed, Esq., Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., One Financial Center, Boston. MA 02111. (D,R)
255. Election Systems & Software, LLC v. Dominion Voting Systems, Inc., 1:17-cv-01172-CJB (D. Del.). Served as an expert for plaintiff in a case alleging infringement of U.S. Patent 8,991,701, relating to an accessible voting system. Case has settled. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC,
600 Washington Avenue, Suite 2500, St. Louis, MO 63101.
256. General Motors LLC et al. v. Dorman Products, Inc. et al.,
2:15-cv-129170-VAR-EAS (E.D. Mich.). Served as an expert for plaintiff
in a case alleging copyright infringement and violation of the
anti-circumvention provisions of the Digital Millennium Copyright Act
relating to offloading of transmission control software from
automobiles. Case has settled. Contact: Aaron A. Barlow, Esq., Jenner & Block LLP,
353 North Clark Street, Chicago, IL 60654-3456.
257. PPS
Data, LLC v. Jack Henry & Associates, Inc., Case 2:18-cv-00007-JRG (E.D. Texas). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patents 7,181,430, 7,216,106, 7,440,924, 7,624,071 and 8,126,809,
relating to methods for processing check images in electronic payment
systems. The '430, '924, '071 and '809 patent were found invalid by the Court under 35 U.S.C. § 101. After a jury trial, all asserted claims of the '106 patent were found not infringed and invalid. Contact: Anthony H. Son, Esq., Maddox Edwards, PLLC, 1900 K Street NW, Suite 725, Washington, DC 20006. (D,R,T)
258. NEXT Payment Solutions, Inc. v. CLEAResult Consulting, Inc.,
Case 1:17-cv-08829 (N.D. Illinois). Served as an expert for
defendant in a case alleging misappropriation of trade secrets relating
to a system for managing energy rebate appointments and inspections.
The trade secret counts were dismissed on summary judgment. Contact: Anthony Fuga, Esq., Holland & Knight LLP, 131 S. Dearborn Street, 30th Floor, Chicago, IL 60603. (R)
259. Certain Digital Video Receivers and Related Hardware and Software Components, USITC
Inv. No. 337-TA-1103. Served as an expert for Complainants Rovi
Corporation et al. against Comcast Corporation et al. in an International
Trade Commission proceeding involving alleged infringement of U.S.
Patents 9,294,799, relating to resumption on a second device of video paused on a first device, and 9,578,363,
relating to providing video in a format suitable for a particular
device. Those patents were subsequently dropped. Dr. Shamos
testified about his observation of user focus groups. The ITC issued an
exclusion order, upheld by the Federal Circuit. Contact: Richard A. Kamprath,
Esq., McKool Smith,
300 Crescent Court, Suite 1500, Dallas, TX 75201.
(D,R,T)
260. ARM Ltd. et al. v. Complex Memory, LLC, IPR2019-00053, IPR2019-00058, Patent Trial and Appeal Board. Served as an expert for petitioners in inter partes reviews of U.S. Patent 5,890,195, relating to cache memory (SRAM) integrated with main memory (DRAM) and U.S. Patent 6,658,576, relating to an energy-conserving computer operating system. Outcome: both IPRs terminated by settlement. Contact: Kevin Anderson, Esq., Duane Morris LLP,
505 9th Street, NW, Suite 1000, Washington, DC 20004-2166.
(R)
261. Supercell Oy v. Gree, Inc.,
PGR2018-00070, PGR2018-00071, Patent Trial and Appeal Board. Served as
an expert for patent owner in post-grant reviews of U.S. Patents 9,770,656 and 9,770,664, relating to user interfaces for multiplayer online games. Institution denied in both PGRs. Contact: Scott McKeown, Esq., Ropes & Gray, L.L.P., 2099 Pennsylvania Avenue, Washington, DC 20006-6807. (R)
262. Amazon Services, LLC v. South Carolina Dept. of Revenue,
Docket No. 17-ALJ-0238-CC. Served as an expert for South Carolina in a
tax dispute relating to online sales through Amazon's Merchant
Fulfillment Network. Result: Amazon found liable to pay tax. Contact: John Hoefer, Esq., Willoughby & Hoefer, P.A., 940 Richland St., P.O. Box 8416, Columbia, SC 29202-8416. (D)
263.
Supercell Oy v. Gree, Inc., PGR2019-00018, Patent Trial and Appeal
Board. Served as an expert for patent owner in a post-grant review of
U.S. Patent 9,891,799, relating to a method for moving a plurality of
objects in a computer game. All claims found unpatentable under 35
U.S.C. § 101. Affirmed by the Federal Circuit. Contact: Scott
McKeown, Esq., Ropes & Gray, L.L.P., 2099 Pennsylvania Avenue,
Washington, DC 20006-6807. (D,R)
264. Beal v. Outfield Brew House, LLC.,
Case 2:18-cv-4028 (W.D. Missouri). Served as an expert for
plaintiff, representative of a putative class, in a case alleging
violation of the Telephone Consumer Protection Act, 47 U.S.C. § 227,
specifically on the issue whether certain dialing systems constitute an
"Automatic Telephone Dialing System" under the statute. The
District Court ruled for defendant on summary judgment based on
statutory interpretation, now on appeal to the Eighth Circuit. Contact:
Bill Kenney, Esq., Bill Kenney Law Firm, LLC., 1100 Main St. Suite 1800, Kansas City, MO 64105. (D,R)
265. Smartmatic USA Corporation v. Election Systems & Software, LLC, IPR2019-00531, Patent Trial and Appeal Board. Served as an expert for patent owner in an inter partes review of U.S. Patent 8,096,471, relating to a ballot marking device having an attached ballot box and IPR2019-00527 of U.S. Patent 7,753,273. All '471 claims found patentable. Four '273 claims found patentable. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC,
600 Washington Avenue, Suite 2500, St. Louis, MO 63101. (D,R)
266. Curling et al. v. Raffensperger et al.,
Case 1:17-CV-2989AT (N.D. Georgia). Served as an expert for
defendants Secretary of State and State Election Board in a case in
which plaintiffs seek an injunction of forbid use of DRE voting
machines in Georgia in 2019. Preliminary injunction denied as to the November 2019 election. Contact: Vincent Russo, Esq., Robbins Ross Alloy Belinfante Littlefield LLC, 500 14th Street N.W., Atlanta, GA 30318. (D,R)
267. Smith v. Truman Road Development, LLC d/b/a No OtherPub,
Case 4:18-cv-670-NKL (W.D. Missouri). Served as an expert for
plaintiff, representative of a putative class, in a case alleging
violation of the Telephone Consumer Protection Act, 47 U.S.C. § 227,
specifically on the issue whether certain dialing systems constitute an
"Automatic Telephone Dialing System" under the statute. The
District Court ruled for defendant on summary judgment based on
statutory interpretation. Contact: Bill Kenney, Esq., Bill Kenney Law Firm, LLC., 1100 Main St. Suite 1800, Kansas City, MO 64105. (R)
268. J. T. Hand et al. v. Beach Entertainment, LLC d/b/a Shark Bar, Case 4:18-cv-668-NKL (W.D. Missouri). Served as an expert for
plaintiff, representative of a putative class, in a case alleging
violation of the Telephone Consumer Protection Act, 47 U.S.C. § 227,
specifically on the issue whether certain dialing systems constitute an
"Automatic Telephone Dialing System" under the statute. Partial summary judgment was granted, now on appeal to the Eighth Circuit. Contact: Bill Kenney, Esq., Bill Kenney Law Firm, LLC., 1100 Main St. Suite 1800, Kansas City, MO 64105. (R)
269. WhereverTV, Inc. v. Comcast Corporation, et al., Case 2:18-cv-00529-UA-CM (M.D. Florida). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patent 8,656,431,
relating to a system for integrating television and IPTV channels into a global interactive program guide. Contact: Adam Sanderson, Esq., Reese Marketos LLP, 750 N. St. Paul St., Suite 600, Dallas, TX 75201. (R)
270. Droplets, Inc. v. Nordstrom, Inc., Case 3:12-CV-04049-JST
(N.D. Cal.). Served as an expert for defendant in an action alleging
infringement of U.S. Patent 8,402,115, relating to delivering interactive links for presenting applications on a
client computer. Case has settled. Contact: Benjamin Kleinman, Esq., Kilpatrick Townsend & Stockton LLP, Two Embarcadero Center Suite 1900, San Francisco, CA 94111. (D,R)
271. Droplets, Inc. v. Yahoo!, Inc., Case 3:12-CV-03733-JST
(N.D. Cal.). Serving as an expert for defendant in an action alleging
infringement of U.S. Patent 8,402,115, relating to delivering interactive links for presenting applications on a
client computer. At trial, Plaintiff sought $250 million, was awarded $15 million. Contact: Kevin P. Anderson. Esq., Duane Morris LLP, 505 9th Street, N.W., Suite 1000, Washington, DC 20004-2166. (D,R,T)
272. Square, Inc. v. 4361423 Canada, Inc. d/b/a AnywhereCommerce, IPR2019-01651, IPR2019-01652, IPR2019-01653, and IPR2019-001654, Patent Trial and Appeal Board. Served as
an expert for petitioner in inter-partes reviews of U.S. Patents 9,443,239, 9,613,351, and 9,818,107, relating to an attachment to a cellphone to facilitate credit card transactions. Result: all challenged claims umpatentable in all four IPRs. Contact: David Tennant, Esq., White & Case, L.L.P., 701 Thirteenth Street, NW, Washington, DC 20005. (R)
273. Uniloc 2017 LLC. v. Netflix, Inc. et al., Lead Consolidated Case SACV8:18-cv-2055-GW-DFMx (C.D. Cal.). Served as
an expert for plaintiff in a case alleging infringement of U.S. Patents 8,407,609, relating to tracking the amount of time a presentation is watched online, and 9,721,273, relating to aggregating and presenting audio and video over a network. Case has settled. Contact: Sal Lim, Esq., Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP, 1600 El Camino Real, Suite 280, Menlo Park, CA 94025. (R)
274. Comcast Cable Communications, LLC v. WhereverTV, Inc.,
IPR2019-01482, and IPR2019-001483, Patent Trial and Appeal Board.
Served as an expert for Patent Owner in inter-partes reviews of U.S.
Patent 8,656,431,
relating to a system for integrating television and IPTV channels into
a global interactive program guide. Institution denied in both
cases. Contact: Adam Sanderson, Esq., Reese Marketos LLP, 750 N. St. Paul St., Suite 600, Dallas, TX 75201. (R)
275. Boom! Payments, Inc. v. Stripe, Inc. et al.,
Case 3:19-cv-0050-VC (N.D. Cal.). Served as an expert for
Defendants Shopify, Inc. and Shopify (USA) Inc. in an action alleging
infringement of U.S. Patents 8,429,084,
and 9,235,857, relating to a system for confirming that a physical exchange of goods has occurred in an online transaction. All asserted claims found invalid under 35 U.S.C. § 101 upon Defendants' motion to dismiss. Contact: Vincent M. Ferraro, Esq., Mintz, Levin, Cohn, Ferris, Glovsky and Popeo P.C., Chrysler Center, 666 Third Avenue, New York, NY 10017.
276. Curb Mobility, LLC. v. Kaptyn, Inc. et al.,
Case 2:18-cv-02416-MMD-GWF (D. Nev.). Served as an expert for
Defendants in an action alleging infringement of U.S. Patent 6,347,739,
relating to a system for accepting credit cards in taxicabs. All asserted claims found invalid under 35 U.S.C. § 101. Contact: Robert Yorio, Esq., Carr & Ferrell LLP, 120 Constitution Drive, Menlo Park, CA 94025. (R)
277. Canon, Inc. v. TCL Electronics Holdings, Ltd., et al.,
Case 2:18-cv-00546-JRG (E.D. Texas). Served as an expert for
Plaintiff in an action alleging infringement of U.S. Patent 7,810,130,
relating to buffering video content, U.S. Patent 7,746,413, relating to interpreting instructions from a television remote control, and U.S. Patents 8,078,767, 8,346,986 and 8,713,206, relating to controlling a digital display when an external device has been disconnected. Case has settled. Contact: Kyotaro Ozawa, Esq., Paul Hastings LLC, Ark Hills Sengokuyama Mori Tower, Fortieth Floor 1-9-10 Roppongi, Minato-ku, Tokyo 106-0032 Japan. (D,R)
278. Uniloc 2017 LLC v. Paychex, Inc., Case No. 1:19-cv-11272-RGS (D. Mass.), consolidated for certain purposes with Uniloc 2017 LLC v. AthenaHealth Inc.,
Case No. 1:19-cv-11278-RGS (D. Mass.). Served as an expert for
plaintiff in actions alleging
infringement of U.S. Patent 6,324,578,
relating to management of configurable application programs on a
network. Paychex case dismissed for lack of jurisdiction. Cases have settled. Contact: James J. Foster, Esq., Prince Lobel Tye LLP, One International Place, Suite 3700, Boston, MA 02110. (D,R)
279. H2O Resources, LLC v. Oilfield Tracking Services, LLC,
AAA Case No. 01-18-0003 6309 (Houston, Texas). Served as an expert for
defendants in an arbitration alleging misappropriation of trade secrets
under 18 U.S.C. § 1836 and 12 P.S. §
5301 (Pennsylvania) relating to a system for tracking movement of
produced water generated from oil and gas drilling. Matter has settled.
Contact: Paul Greco, Esq., Fisher Philips LLP, 150 N. Radnor Chester Road, Suite C300, Radnor, PA 19087. (D,R)
280. J.T. Hand et al. v. ARB KC, LLC d/b/a Angels Rocks Bar, Case 4:19-cv-108-BCW (W.D. Missouri). Served as an expert for
plaintiff, representative of a putative class, in a case alleging
violation of the Telephone Consumer Protection Act, 47 U.S.C. § 227,
specifically on the issue whether certain dialing systems constitute an
"Automatic Telephone Dialing System" under the statute. Contact: Bill Kenney, Esq., Bill Kenney Law Firm, LLC., 1100 Main St. Suite 1800, Kansas City, MO 64105. (R)
281. Doohan et al. v. CTB Investors, LLC d/b/a PBR Big Sky Cowboy Bar et al., Case 4:19-cv-111-FJG (W.D. Missouri). Served as an expert for
plaintiff, representative of a putative class, in a case alleging
violation of the Telephone Consumer Protection Act, 47 U.S.C. § 227,
specifically on the issue whether certain dialing systems constitute an
"Automatic Telephone Dialing System" under the statute. Contact: Bill Kenney, Esq., Bill Kenney Law Firm, LLC., 1100 Main St. Suite 1800, Kansas City, MO 64105. (R)
282. Taylor et al. v. KC Vin, LLC d/b/a/ Pizza Bar, et al., Case 4:19-cv-110-NKL (W.D. Missouri). Served as an expert for
plaintiff, representative of a putative class, in a case alleging
violation of the Telephone Consumer Protection Act, 47 U.S.C. § 227,
specifically on the issue whether certain dialing systems constitute an
"Automatic Telephone Dialing System" under the statute. Contact: Bill Kenney, Esq., Bill Kenney Law Firm, LLC., 1100 Main St. Suite 1800, Kansas City, MO 64105. (R)
283. The Thomas L. Pearson and The Pearson Family Members Foundation, et al. v. The University of Chicago,
Case 4:18-cv-00099-GKF-FHM (N.D. Oklahoma). Serving as an expert
for plaintiffs in an action alleging breach of an agreement granting
$100 million to the University of Chicago. Contact: Isaac Ellis, Esq., Conner & Winters, LLP, 4000 One Williams Center, Tulsa, OK 74172-0148. (D,R)
284. ESW Holdings, Inc. v. Roku, Inc.,
Case 6:19-cv-00044-ADA (W.D. Texas). Serving as an expert for
Plaintiff in an action alleging infringement of U.S. Patent 9,420,349,
relating to monitoring a digital media stream and identifying media objects through fingerprinting. Jury verdict for defendent. Contact: Conor Civins, Esq., Bracewell LLP, 111 Congress Avenue, Suite 2300, Austin, TX 78701-4061 (D,R,T)
285. Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Patent Trial and Appeal Board. Served as an
expert for Patent Owner in an inter-partes review of U.S. Patent 8,843,125,
relating to a system and method for managing a mobile wallet through a Trusted Service Manager (TSM). Institution denied. Contact: Marcus Barber, Esq., Kasowitz Benson Torres LLP, 333 Twin Dolphin Drive, Suite 200, Redwood Shores, CA 94065. (D, R)
286. Election Systems & Software, LLC v. Hart InterCivic, Inc., PGR2020-00031, Patent Trial and Appeal Board. Served as an expert for petitioner in a post-grant review of U.S. Patent 10,445,966,
relating to conversion of printed ballots into cast vote records by
optical character recognition. Result: all challenged claims unpatentable. Federal Circuit appeal was dismissed by Patent Owner. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC,
600 Washington Avenue, Suite 2500, St. Louis, MO 63101. (D,R)
287. Launius v. Flores, in her official capacity as Presiding Officer, Chair of Trustees, of Dallas County Community College District,
Cause DC-19-08429 (Dist. Ct., Dallas Cty., Texas). Served as an expert
for contestee in an action alleging that an election held May 4, 2019
approving a $1 billion bond issue should be overturned because "the
true outcome of the election cannot be ascertained." After a bench
trial, the Court granted judgment in favor of contestee. Affirdmed by the Court of Appeals. The Texas Supreme Court declined review. Contact: Adam Rothey, Esq., Thompson & Horton LLP, 500 N. Akard St., Suite 3150, Dallas, TX 75201. (D,T)
288. Slyce Acquisition, Inc. v. Syte - Visual Conception Ltd. et al.,
Case 6:19-cv-00257-ADA (W.D. Texas). Served as an expert for Plaintiff
in an action alleging infringement of U.S. Patent 9,152,624, relating
to navigating Web content via image analysis. Case has settled. Contact:
Michael Chibib, Esq., Bracewell LLP, 111 Congress Avenue, Suite 2300,
Austin, TX 78701-4061 (R)
289. Early Warning Services, LLC v. William Grecia, IPR2020-00763, Patent Trial and Appeal Board. Served as an expert for petitioner in an inter partes review of U.S. Patent 8,887,308,
relating to generation of tokens authenticating users seeking access to
digital cloud content. Review was not instituted, but the patent was
found invalid on § 101 grounds in litigation. Contact: Cory Smith, Esq., Bryan Cave Leighton Paisner LLP, Two North Central Avenue, Suite 2100, Phoenix, AZ 85004-4406. (R)
290. Supercell Oy v. Gree, Inc., PGR2020-00063, Patent Trial and Appeal Board. Served as an expert for patent owner in a post-grant review of U.S. Patent 10,406,432, relating to a method for providing information in a head-mounted display based on gaze sensing. Institution denied. Contact: Scott McKeown, Esq., Ropes & Gray, L.L.P., 2099 Pennsylvania Avenue, Washington, DC 20006-6807. (R)
291. Digital Retail Apps, Inc. v. H-E-B Grocery Company, LP,
Case 6:19-cv-00167-ADAP (W.D. Texas). Served as an expert for
defendant in an action alleging infringement of U.S. Patents 9,262,781, and 9,934,506,
relating to use of QR codes in point-of-sale electronic payment
applications. Case settled before trial. Contact: Andrew Klein, Esq., Perkins Coie LLP, 3150 Porter Drive, Palo Alto, CA 94304-1212. (D,R)
292. HLFIP Holding, Inc. d/b/a/ Smart Communications IP Holdings v. Rutherford County, Tennessee et al., Case 3:19-cv-00714 (M.D. Tenn.). Served as an expert for
intervenor VendEngine, Inc. in an action alleging infringement of U.S.
Patent 10,291,167, relating to a computerized method of eliminating contraband in mail directed to correctional facilities. Defendant and intervenor prevailed on judgment on the pleadings that the patent was ineligible under 35 U.S.C. § 101. Contact: W. Edward Ramage, Esq., Baker Donelson, Bearman, Caldwell & Berkowitz, P.C., Monarch Plaza, Suite 1600, 3414 Peachtree Road N.E., Atlanta, GA 30326. (D,R)
293. Broadband iTV, Inc. v. AT&T Services, Inc. et al., Case 1:20-cv-717-ADA (W.D. Texas). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 9,648,388, 9,998,791, 10,023,026, 10,349,101, and 10,506,269, relating to hierarchical navigation of video-on-demand television menus. Case has settled. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (D,R)
294. Broadband iTV, Inc. v. DISH Network, L.L.C., Case 6:19-cv-716-ADA (W.D. Texas). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 9,648,388, 9,998,791, 10,023,026 and 10,506.269, relating to hierarchical navigation of video-on-demand television menus. Case has settled. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (D,R)
295. Arendi S.A.R.L. v. Blackberry Limited et al., Case 1:12-cv-01595-LPS (D. Del.). Serving as an expert for Defendant in an action alleging infringement of U.S. Patents 7,917,843 and 8,306,993,
relating to a touchscreen mechanism for providing name and address
handling by an associated information system. Contact: Jason W. Cook, Esq., McGuireWoods LLP,
2000 McKinney Ave., Suite 1400, Dallas, TX 75201. (D,R)
296. Unified Patents, LLC v. Monarch Networking Solutions LLC, IPR2020-01708, Patent Trial and Appeal Board. Served as an expert for petitioner in an inter partes review of U.S. Patent 7,756,507,
relating to out-of-band authentication to obtain access to a digital
network. All challenged claims found unpatentable. Contact: John M. Baird, Esq., Duane Morris LLP, 505 9th Street, N.W., Suite 1000, Washington, DC 20004-2166. (R)
297. Aqua Connect, Inc. et al. v. TeamViewer U.S. Inc. et al., Case 1:18-cv-01572-MN (D. Del.). Served as an expert for Plaintiffs in an action alleging infringement of U.S. Patents RE46,386 and 8,924,502, relating to updating a user session in a Mach-derived system environment. At trial, the jury awarded Plaintiffs $5.7 million, before prejudgment interest. Contact: Ryan E. Hatch, Esq., Hatch Law, P.C.,
13323 Washington Blvd., Suite 100, Los Angeles, CA 90066. (D,R,T)
298. PayPal, Inc. v. RetailMeNot, Inc.,
Case 6:20-cv-00339-ADA (W.D. Texas). Serving as an expert for PayPal
in an action alleging infringement by RetailMeNot of U.S. Patents 6,917,961 and 7,693,937, relating to evolving interactive browser dialog boxes, U.S. Patent 7,659,905, relating to pre-fetching data on a network, U.S. Patents 8,909,248 and 9,654,932, relating to provision of location-based services, and U.S. Patents 9,053,514 and 9,082,153, relating to automatic rebate and coupon redemption, and alleging in counterclaims infringement by PayPal of U.S. Patents 10,296,931, and 10,489,814,
relating to accessing promotional offers displayed on websites by
circumventing secure sandbox protections. Case has settled. Contact: Steve Marshall, Esq., Fish & Richardson, P.C., 1000 Maine Avenue, S.W., Suite 1000, Washington, DC 20024.
299. Rovi Guides, Inc. et al. v. Comcast Corporation et al., Case No. 2:18-cv-00253-AG-FFM (C.D. Cal.). Served as an expert for plaintiffs in an action alleging infringement of U.S.
Patents 7,827,585, relating to electronic TV program guides, 9,294,799, relating to an on-demand media delivery system, 9,369,741, relating to an interactive television reminder system, 9,578,363, relating to accessing video content via standard and high-definition channels, 9,621,956, relating to a television transport control interface, and 9,668,014, relating to methods for storing video assets. Case has settled. Contact: Richard A. Kamprath,
Esq., McKool Smith,
300 Crescent Court, Suite 1500, Dallas, TX 75201.
300. RetailMeNot, Inc. v. Honey Science, LLC,
Case 1:18-cv-00937-CFC-MPT (D. Del.). Served as an expert for defendant in an action alleging infringement of U.S.
Patents 9,626,688, 10,290,015, 10,296,931, and 10,489,814,
relating to accessing promotional offers displayed on websites by
circumventing secure sandbox protections. Case has settled.
Contact: Richard Birnholz, Esq., Irell & Manella LLP, 1800 Avenue of the Stars, Suite 900, Los Angeles, CA 90067-4276.
301. Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same,
USITC Inv. No. 337-TA-1222. Served as an expert for Complainant
DivX, LLC against numerous smart television manufacturers in an
International Trade Commission proceeding involving alleged
infringement of, inter alia, U.S. Patent 8,832,297, relating to multiphase adaptive bitrate streaming. Case has settled. Contact: Jessica Perry, Esq., Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., One Financial Center, Boston, MA 02111.
302. Google LLC v. Sonos, Inc., Case No. 3:20-cv-03845-EMC (N.D. Cal.). Served as an expert for Google in an action alleging infringement of U.S.
Patent 7,065,206, relating to echo and noise control, 7,899,187, relating to digital rights management, 8,583,489, relating to notification of availability of media content, 10,140,375, relating to personalized network searching, and 10,229,586, relating to communication via wireless sensor systems. Result: all claims dismissed on summary judgment. Contact: Patrick D. Curran Esq., Quinn Emanuel Urquhart & Sullivan LLP, 111 Huntington Avenue, Suite 520, Boston, MA 02199. (R)
303. Hitel Technologies LLC v. Nike, Inc.,
Case 6:20-cv-00591-ADA (W.D. Texas). Served as an expert for Nike in an action alleging infringement of U.S. Patent 7,689,617, relating to adaptive learning during Web navigation. Case was dropped by plaintiff during claim construction.
Contact: Christopher Renk, Esq., Arnold & Porter Kaye Scholer LLP, 70 West Madison Street, Suite 4200, Chicago, IL 60602-4231.
304. Hitel Technologies LLC v. Levi Strauss & Co.Case
6:20-cv-00589-ADA (W.D. Texas). Served as an expert for Levi
Strauss in an action alleging infringement of U.S. Patent 7,689,617, relating to adaptive learning during Web navigation. Case was dropped by plaintiff during claim construction.
Contact: Robert A. McFarlane, Esq., Hanson Bridgett LLP, 425 Market Street, 26th Floor, San Francisco, CA 94105.
305. Unified Patents, LLC v. Caselas, LLC, IPR2021-00799, Patent Trial and Appeal Board. Served as an expert for petitioner in an inter partes review of U.S. Patent 9,716,691, relating to providing information about charge-backs in credit reports.
Result: all challenged claims found unpatentable. See Final Written Decision. Contact: Larissa Bifano, Esq., DLA Piper LLP, 33 Arch Street, 26th Floor, Boston, MA 02110-1447. (D,R)
306. Fortinet, Inc. v. Forescout Technologies, Inc., Case
3:20-cv-03343-EMC-ADA (N.D. Cal.). Serving as an expert for plaintiff in an action alleging infringement of U.S. Patents 8,458,314, relating to administration of network security privileges, 9,369,299, relating to methods for controlling remote network access, 9,503,421, relating to security information and event management, 9,894,034, relating to configuration of network endpoint security, and 9,948,662, relating to application layer network security. Contact: Rachel Blitzer, Esq., Skadden, Arps, Slate, Meagher & Flom LLP, One Manhattan West, New York, NY 10001. (R)
307. Delaware North iGaming, Inc. v. Miomni Gaming Ltd. et al., C.A. 2019-0301-JTL (Del. Ch.). Served as a court-appointed expert in a matter alleging breach of contract to provide software and computing services.
Case has settled. Contact: Vice-Chancellor J. Travis Laster, Court of Chancery, 500 North King Street, Wilmington, DE 19801.
308. Zillow Group et al. v. International Business Machines Corp., IPR2020-01656, Patent Trial and Appeal Board. Served as an expert for patent owner in an inter partes review of U.S.
Patent 8,315,904,
relating to a computerized method for managing promotions. Review was instituted, but all Challenged Claims were found patentable. Contact: Gautam Patnaik, Esq., Desmarais, LLP, 1701 Pennsylvania Avenue NW, Suite 200, Washington, D.C. 20006. (D,R)
309. ByteDance Ltd. and TikTok Inc. v. Triller, Inc., IPR2021-00099, Patent Trial and Appeal Board. Served as an expert for patent owner in an inter partes review of U.S. Patent 9,691,429, relating to systems and methods for creating music videos synchronized with an audio track. Case has settled. Contact: Brent Lorimer, Esq., Workman Nydegger, 60 East South Temple, Suite 1000, Salt Lake City, UT 84111. (D,R)
310. Broadband iTV, Inc. v. Amazon.Com, Inc. et al., Case 6:20-cv-921-ADA (W.D. Texas). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 9,648,388, 9,973,826, 10,023,026, 10,506,269, 10,536,750 and 10,536,751, relating to hierarchical navigation of video-on-demand television menus. Asserted claims found invalid as non-statutory, affirmed by the Federal Circuit. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (D,R)
311. DISH Network, L.L.C, v. Broadband iTV, Inc., IPR2020-01267, Patent Trial and Appeal Board. Served as an expert for patent owner in in an inter partes review of U.S.
Patent 10,028,026, relating to hierarchical navigation of video-on-demand television menus. Case has settled. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (D,R)
312. DISH Network, L.L.C, v. Broadband iTV, Inc., IPR2020-01280, Patent Trial and Appeal Board. Served as an expert for patent owner in in an inter partes review of U.S.
Patent 9,998,791, relating to hierarchical navigation of video-on-demand television menus. Case has settled. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (D,R)
313. DISH Network, L.L.C, v. Broadband iTV, Inc., IPR2020-01359, Patent Trial and Appeal Board. Served as an expert for patent owner in in an inter partes review of U.S.
Patent 9,648,388, relating to hierarchical navigation of video-on-demand television menus. Case has settled. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (D,R)
314. Justservice.net, LLC. v. Dropbox, Inc., Case 6:20-cv-00070-ADA (W.D. Texas). Served as an expert for Defendants in an action alleging infringement of U.S. Patents 8,126,990, 8,195,776, 8,392,542, 9,722,993, 10,387,270 and 10,476,868, relating to network-based file backup systems. Case has settled. Contact: Monica Grewal, Esq., Wilmer Cutler Pickering Hale and Dorr LLP, 60 State Street, Boston, MA 02109.
315. Dropbox, Inc. v. Motion Offense, LLP, Case 6:20-cv-00251-ADA (W.D. Texas). Served as an expert for declaratory judgment plaintiff Dropbox in an action relating to alleged infringement of U.S. Patents 10,013,158, 10,021,052, 10,303,353, 10,587,548, and 10,613,737, relating to file-sharing systems. At trial, all asserted claims were found not infringed, not entitled to priority to 2012, and were found invalid. Contact: Monica Grewal, Esq., Wilmer Cutler Pickering Hale and Dorr LLP, 60 State Street, Boston, MA 02109. (D,R,T)
316. HealthPlanCRM, LLC d/b/a Cavulus v. AvMed, Inc. et al., Case
01-19-0002-2557 (American Arbitration Association). Served as an expert for respondents in an arbitration alleging misappropriation of trade secrets concerning a customer relationship management (CRM) platform relating to Medicare Advantage Plans. Result: all claims dismissed by arbitrator. Contact: Chris Schwing, Esq., Holland & Knight LLP, 50 N. Laura Street, Suite 3900, Jacksonville, FL 32202. (R)
317. Talavera et al. v. Global Payments, Inc. et al., Case
3:21-cv-1585-TWR-AGS (S.D. Cal.). Served as an expert for defendants in an action alleging infringement of copyright in a computer program that operates storefronts for online purchase of school supplies.
Contact: Matthew D. Murphey, Esq., Murphey & Murphey, 120 Vantis Drive, Suite 300, Aliso Viejo, California 92656. (R)
318. AlphaSense Oy et al. v. Sentieo, Inc., C.A.
No. Case 1:21-cv-01011-CFC/JLH-MPT (D. Del.). Served as an expert for defendant in
a case alleging infringement of U.S. Patent 11,023,675,
relating to a user interface for a financial document search engine. Case has settled. Contact: Jennifer Ying, Esq., Morris, Nichols, Arsht & Tunnell, LLP,
1201 North Market Street, 16th Floor, Wilmington, DE 19899-1347. (R)
319. Triller, Inc. v. TikTok PTE, Ltd., IPR2022-00179, IPR2021-00180, and IPR2021-00181, Patent Trial and Appeal Board. Served as an expert for petitioner in inter partes reviews of U.S. Patents 9,294,430, 9,648,132, and 9,992,232, relating to systems and methods for locating and downloading digital music to a wireless device. Review was instituted in 2022-00179 and 2022-00180; denied in 2022-00181. Case has settled. Contact: Brent Lorimer, Esq., Workman Nydegger, 60 East South Temple, Suites 1000, Salt Lake City, UT 84111. (D,R)
320. RFCyber Corp. v. Google LLC and Google Payment Corp., C.A. 2:20-cv-00274-JRG (E.D. Texas). Served as an expert for Google in an action alleging infringement of U.S. Patents 6,292,657, 8,118,218, 8,448,855, 9,189,787, 9,240,009, and 10,600,046,
relating to electronic commerce payment methods. Case has settled. Contact: Heather Takahashi, Esq., Munger, Tolles &
Olson LLP, 355 South Grand Avenue, Los Angeles, CA 90071.
321. KioSoft Technologies, LLC et al. v. PayRange, Inc., PGR2021-00077, Patent Trial and Appeal Board. Served as an expert for patent owner in a post-grant review of U.S.
Patent 10,719,833,
relating to methods for authorizing payments wirelessly at vending machines. Result: claim 1 unpatentable; claims 2-27 not unpatentable. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304. (D,R)
322. Fintiv, Inc. v. Apple, Inc. C.A. 1:21-cv-00896-ADA (W.D. Texas). Serving as an
expert for plaintiff in an action alleging infringement of U.S. Patent 8,843,125,
relating to a system and method for managing a mobile wallet through a Trusted Service Manager (TSM). Defendant obtained summary judgment of non-infringement, now on appeal to the Federal Circuit. Contact: Marcus Barber, Esq., Kasowitz Benson Torres LLP, 333 Twin Dolphin Drive, Suite 200, Redwood Shores, CA 94065. (D, R)
323. NRT Technology Corp. et al. v. Everi Holdings Inc. et al., C.A. 1:19-cv-00804-MN (D. Del.). Serving as an expert for Plaintiffs in an action alleging misuse of U.S. Patent 6,081,792,
relating to structuring ATM and POS transactions with respect to
withdrawal limits. Contact: Colby B. Springer,
Esq., Polsinelli LLP (formerly at Lewis Roca Rothgerber LLP), Three Embarcadero Center, Suite 1350, San Francisco, CA 94111.
(D,R)
324. KioSoft Technologies, LLC et al. v. PayRange, Inc., PGR2021-00093, Patent Trial and Appeal Board. Served as an expert for patent owner in a post-grant review of U.S. Patent 10,891,614, relating to methods for authorizing payments wirelessly at vending machines. Claims 7, 11-13, 16 and 17 found not unpatentable. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304. (D,R)
325. OANDA Corporation v. GAIN Capital Holdings Inc. et al., C.A. 3:20-cv-05784-ZNQ-DEA (D. N.J.). Serving as an expert for Plaintiff in an action alleging infringement of U.S. Patents 7,146,336 and 8,392,311,
relating to systems and methods of online currency trading. Contact: Drew Koning,
Esq., Koning Zolar LLP 169 Saxony Road, Suite 115, Encitas, CA 92024-6780. (R)
326. AnywhereCommerce, Inc. et al. v. Ingenico, Inc. et al., C.A. 1:19-cv-11457-IT (D. Mass.). Served as an expert for Defendants in an action alleging infringement misappropriation of trade secrets involving card reading devices connecting to cellphones via audio jack. Result: verdict for Defendants. Contact: Jeffrey Techentin, Esq., Adler Pollock & Sheehan P.C., One Citizens Plaza, 8th Floor, Providence, RI 02903-1345. (D,R,T)
327. Samsung Electronics Co. Ltd. v. Aire Technology Ltd,, IPR2022-00875, Patent Trial and Appeal Board. Served as an expert for petitioner in an inter partes review of U.S. Patent 8,205,249, relating to a method for carrying out a secure electronic transaction. Terminated by settlement prior to institution. Contact: Daniel Tishman, Esq., Fish & Richardson, P.C., 1000 Maine Avenue, S.W., Suite 1000,
Washington, DC 20024. (R)
328. Content Square SAS v. Quantum Metric, Inc., IPR2022-01167, Patent Trial and Appeal Board. Served as an expert for petitioner in an inter partes review of U.S.
Patent 11,036,823, relating to a method for capturing and replaying user interactions with a webpage through a Document Object Model (DOM) tree. Terminated by Settlement. Contact: Stephen R. Smith, Esq., Cooley LLP, 1299 Pennsylvania Avenue, NW, Suite 700, Washington, DC 20004-2400. (R)
329. Open Text Corporation et al. v. SAS C6, C.A. 2084-cv-02578-BLS1 (Mass. Super.). Served as an expert for Defendant in an action alleging breach of a software license agreement and misappropriation of trade secrets involving enterprise content management systems. Case has settled. Contact: Matthew C. Hurley, Esq., Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., One Financial Center, Boston, MA 02111. (R)
330. ABG Intermediate Holdings 2, LLC at al. v. Bolt Financial, Inc., C.A. 22-cv-00473-IT (S.D. N.Y.). Served as an expert for Plaintiff in a case alleging breach of contract for development of an ecommerce software platform and misuse of proprietary information. Case has settled. Contact: Bill Natbony, Esq., Cadwalader, Wickersham & Taft LLP, 200 Liberty Street, New York, NY 10281.
331. In the Matter of Certain Digital Set-Top Boxes and Systems and Services Including the Same, USITC Inv. No. 337-TA-1315. Served as an expert for Complainant Broadband iTV, Inc. in an ITC proceeding alleging infringement of U.S. Patents 9,866,909, 9,936,240, 10,555,014, and 11,277,669, relating to hierarchical navigation of video-on-demand television menus. Case has settled. Contact: Sal Lim, Esq., Kramer Day Alberti Lim Tonkovich & Belloli LLP, 577 Airport Boulevard, Suite 250, Burlingame, California 94010. (R)
332. Proofpoint, Inc. et al. v. Vade Secure Incorporated et al., Case
3:19-cv-04238-MMC (N.D. Cal.). Served as an expert for plaintiffs in an action alleging misappropriation of trade secrets and breach of employment and confidentiality agreements relating to cybersecurity technology. Result: jury verdict for plaintiffs for $13.9 million. Contact: Sean Pak, Esq., Quinn Emanuel Urquhart & Sullivan, LLP, 50 California Street, 22nd Floor
San Francisco, California 94111.
333. Apple, Inc. v. Fintiv, Inc., IPR2022-00976, Patent Trial and Appeal Board. Served as an expert for Patent Owner in an inter-partes review of U.S. Patent 9,892,386,
relating to a mobile financial services system for making payments using mobile wallets. All challenged claims found unpatentable, now on appeal to the Federal Circuit. Contact: Marcus Barber, Esq., Kasowitz Benson Torres LLP, 333 Twin Dolphin Drive, Suite 200, Redwood Shores, CA 94065. (D,R)
334. BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC., IPR2022-01471, Patent Trial and Appeal Board. Served as an expert for Petitioner in an inter-partes review of U.S. Patent 10,121,133, relating to a method for retail self-checkout using a mobile device. Institution was denied. Contact: Michael Messinger, Esq., Vorys, Sater, Seymour and Pease LLP, 1909 K Street NW, Suite 900, Washington, DC 20006-1152. (D,R)
335. KioSoft Technologies, LLC et al. v. PayRange, Inc., PGR2021-00084, Patent Trial and Appeal Board. Served as an expert for patent owner in a post-grant review of U.S.
Patent 10,891,608,
relating to methods for authorizing payments wirelessly at vending machines. Review was not instituted. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304. (D,R)
336. Versata Software, Inc., et al. v. Configit A/S, Case 2:20-cv-09019-JAK-MRW (C.D. Cal.). Served as an expert for
Plaintiff in an action alleging trade secret misappropriation and infringement of U.S. Patents 6,836,766 and 10,360,612, relating to product configuration systems. Case has settled. Contact: Michael Chibib, Esq., Bracewell LLP, 111 Congress Avenue, Suite 2300, Austin, TX 78701-4061 (R)
337. Apple, Inc. v. Mozido-Corfire-Korea, Ltd., IPR2022-01149, Patent Trial and Appeal Board. Served as an expert for real party in interest Fintiv, Inc. in an inter-partes review of U.S. Patent 10,223,692,
relating to a method for establishing a temporary payment cards on a mobile device. All challenged claims found unpatentable. Contact: Marcus Barber, Esq., Kasowitz Benson Torres LLP, 333 Twin Dolphin Drive, Suite 200, Redwood Shores, CA 94065. (D,R)
338. Apple, Inc. v. Mozido, Inc., IPR2022-01150, Patent Trial and Appeal Board. Served as an expert for real party in interest Fintiv, Inc. in an inter-partes review of U.S. Patent 9,189,785,
relating to a method for selecting a debit network using a scannable code. Some challenged claims found unpatentable. Claims 5, 12, and 19 found patentable. Contact: Marcus Barber, Esq., Kasowitz Benson Torres LLP, 333 Twin Dolphin Drive, Suite 200, Redwood Shores, CA 94065. (D,R)
339. In re Xyrem (Sodium Oxybate) Antitrust Litigation, Case 5:20-md-02966-RS (N.D. Cal.). Deposed as a fact witnesss concerning expert reports submitted in case 149, Jazz Pharmaceuticals, Inc. v. Roxane Laboratories, Inc., regarding methods for controlling the distribution of sensitive drugs. Contact: Jack E. Pace III, Esq., White & Case LLP, 1221 Avenue of the Americas, New York, NY 10020 (D)
340. Roku, Inc. v. IOENGINE, LLC, IPR2022-01257, IPR2022-01258, Patent Trial and Appeal Board. Served as an expert for Patent Owner in inter-partes reviews of U.S. Patent 10,447,819,
relating to a secure portable device implementing a plug-n-play VPN. Institution denied in both IPRs. Contact: Greg Chuebon, Esq., Dechert LLP, Three Bryant Park, 1095 Avenue of the Americas, New York, NY 10036-6797. (D,R)
341. Beijing Meishe Network Technology Co., Ltd. v. TikTok Inc., C.A. 6:21-cv-00504-ADA-JCM (W.D. Texas). Serving as an
expert for plaintiff in an action alleging copyright infringement and trade secret misappropriation of software for editing video and audio on mobile devices. Contact: Stephanie Wood, Esq., Cherian LLP, 8350 N. Central Expressway, Suite 1900, Dallas, TX 75206.
342. Ivanti, Inc. v. Patch My PC, LLC, C.A. 1:22-cv-00643-NYW-SKC (D. Col.). Served as an expert for defendant in an action alleging infringement of U.S. Patents 6,990,660, 7,823,147 and 8,407,687, relating to methods for updating software remotely over a network by using patch fingerprints. On summary judgment, all asserted claims were found paten-ineligible under 35 U.S.C. § 101. Contact: Daniel W. McDonald, Esq., Merchant & Gould P.C., Suite 220, 150 S. Fifth St., Minneapolis MN 55402. (D,R)
343. Samsung Electronics, Co. Ltd. v. Cardware, Inc., IPR2023-00196, IPR2023-00210, IPR2023-00211, and IPR2023-00219, Patent Trial and Appeal Board. Served as an expert for Petitioner in inter-partes reviews of U.S. Patents 10,810,579 (IPR 196), 10,339,520 (IPRs 210, 211), and 11,176,538 (IPR 219),
relating to a device for simulating a magnetic-stripe credit card. Institution was denied in IPR2023-00210; the remainder settled. Contact: Nicholas Stevens, Esq., Fish & Richardson, 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402. (D,R)
344. Snap, Inc. v. YouMap, Inc., IPR2022-00568, Patent Trial and Appeal Board. Served as an expert for Patent Owner in an inter-partes review of U.S. Patent 10,616,727,
relating to providing location information associated with social network posts. Result: 16 subtitute claims found patentable. Contact: Richard A. Catalina, Esq., Jardim, Meisner & Susser, P.C., 766 Shrewsbury Ave., Suite E-202, Tinton Falls, NJ 07724. (D,R)
345. Everi Payments, Inc. v. Sightline Payments LLC, IPR2022-00614, IPR2022-00663, and, IPR2022-00696, Patent Trial and Appeal Board. Serving as an expert for Patent Owner in inter-partes reviews of U.S. Patents 8,708,809 (IPR 614), 8,998,708 (IPR 663), 9,196,123 (IPR 696), 9,466,176 (IPR 706), and 9,785,926 (IPR 707),
relating to systems for funding casino gaming accounts also usable for non-gaming purposes. All challenged claims found unpatentable. Contact: James Murphy, Esq., Polsinelli LLP, 1000 Louisiana Street, 64 Fl, Houston, TX 77002. (D,R)
346. SurgeTech, LLC v. Uber Technologies, Inc., C.A. 1:22-cv-00882-GBW-CJB (D. Del.). Served as an
expert for plaintiff in an action alleging infringement of U.S. Patents 11,334,598, 11,360,999 and 11,475,047, relating to methods for allocating and pricing transportation services based on supply, demand and performance factors. The asserted claims were found patent-ineligible on a motion of judgment on the pleadings, now on appeal to the Federal Circuit. Contact: James Glass, Esq., Quinn Emanuel Urquhart & Sullivan LLP, 51 Madison Avenue, 22nd Floor, New York, New York 10010.
347. Samsung Electronics, Co. Ltd. v. Cardware, Inc., IPR2023-00314, Patent Trial and Appeal Board. Served as an expert for Petitioner in an inter-partes review of U.S. Patent 10,628,820,
relating to a device for simulating a magnetic-stripe credit card. Case has settled. Contact: Nicholas Stevens, Esq., Fish & Richardson, 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402. (R)
348. Election Systems & Software, LLC v. Smartmatic USA Corporation, 1:18-cv-01259-UNA (D. Del.). Served as an expert for plaintiff in a case alleging infringement of U.S. Patent 8,096,471, relating to a ballot marking device having an attached ballot box. The asserted claims were found ineligible under 35 U.S.C. § 101. Affirmed by the Federal Circuit. Contact: Robert M. Evans, Jr., Esq., Lewis Rice LLC, 600 Washington Avenue, Suite 2500, St. Louis, MO 63101. (D,R)
349. Textile Computer Systems, Inc. v. Broadway National Bank et al., 6:21-cv-00150-ADA (W.D. Tex.). Served as an expert for defendants in cases (including 6:21-cv-00152, 6:21-cv-00154, 6:21-cv-00156 and 6:21-cv-00157) alleging infringement of U.S. Patents 8,505,079, 8,533,802, 9,584,499, 10,148,659, and 10,560,454 relating to online authentication methods. Case has settled. Contact: Jeffrey D. Blake, Esq., Merchant & Gould,
191 Peachtree Street NE, Suite 3800, Atlanta, GA 30303.
350. Kroy IP Holdings, LLC v. Groupon, Inc., 1:17-cv-01405-MN (D. Del.). Served as an expert for defendant in a case alleging infringement of U.S. Patent 6,061,660, relating to online incentive and award fulfillment methods. All claims found invalid on a motion to dismiss. Contact: Ryan Phelan, Esq., Marshall, Gerstein & Borun, LLP,
233 South Wacker Drive, 300 Willis Tower, Chicago, IL 60606-6357.
351. Underwood v. IFA Holdings, LLC dba Cygnal, 1:21-cv-00830-ACA (N.D. Ala.). Served as an expert for defendant in a case alleging violations of the Telephone Consumer Protection Act (TCPA), 47 U.S.C. § 227. Case has settled. Contact: Stephen J. Baumgarner, Esq., Maynard Cooper & Gale LLP, 1901 Sixth Ave. North, Suite 1700, Birmingham, AL 35203.
352. BJ's Wholesale Club Holdings, Inc. v. Walmart Apollo, LLC., IPR2022-01528, -01561, -01563, -01564, Patent Trial and Appeal Board. Served as an expert for Petitioner in an inter-partes reviews of U.S. Patent 10,803,435, relating to a method for retail self-checkout using a mobile device. Institution was denied in 1561. In 1528, 1563, and 1564, all challenged claims were found unpatentable. Contact: Michael Messinger, Esq., Vorys, Sater, Seymour and Pease LLP, 1909 K Street NW, Suite 900, Washington, DC 20006-1152. (D,R)
353. Samsung Electronics, Co. Ltd. v. Cardware, Inc., PGR2023-00012, PGR2023-00013, Patent Trial and Appeal Board. Served as an expert for Petitioner in post-grant reviews of U.S. Patent 11,328,286, relating to a device for simulating a magnetic-stripe credit card. Trial has been instituted in both cases. Case has settled. Contact: Nicholas Stevens, Esq., Fish & Richardson, 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402. (R)
354. Daedalus Blue, LLC v. Microsoft Corporation, Case 6:20-cv-01152-ADA (W.D. Texas). Served as an expert for
plaintiff in an action alleging infringement by of U.S.
Patent 7,177,886, relating to reliable backup to remote servers, U.S. Patent 7,437,730, relating to scalable on-demand virtual machine deployment, U.S. Patent 8,381,209, relating to hypervisor access control mechanisms, U.S. Patent 8,572,612, relating to scaling of virtual machines in a cloud computing environment, and U.S. Patent 8,671,232, relating to policy-based data management in storage-area networks. Case has settled.
Contact: Robin Curtis, Esq., Bunsow De Mory LLP, 701 El Camino Real, Redwood City, CA 94063.
355. Ebates Performance Marketing, Inc. d/b/a Rakuten Rewards v. International Business Machines Corporation, IPR2022-00646, Patent Trial and Appeal Board. Served as an expert for patent owner in an inter partes review of U.S. Patent 7,631,646,
relating to single sign-on in a federated computing environment. Claims 1–4, 12–16, 18, 19 found unpatentable; claims 5–11, 17, and 20 not unpatentable. Contact: Karim Oussayef, Esq., Desmarais, LLP, 230 Park Avenue, 26th Floor, New York, NY 10169. (D,R)
356. Roku, Inc. v. IOENGINE, LLC, IPR2022-01551, IPR2022-01552, IPR2022-01553, IPR2022-01554, Patent Trial and Appeal Board. Serving as an expert for Patent Owner in inter-partes reviews of U.S. Patent 10,972,584,
relating to a secure portable device implementing a plug-n-play VPN. Contact: Greg Chuebon, Esq., Dechert LLP, Three Bryant Park, 1095 Avenue of the Americas, New York, NY 10036-6797. (R)
357. Apple, Inc. v. Fintiv, Inc., IPR2023-00398, IPR2023-00399, Patent Trial and Appeal Board. Serving as an expert for Patent Owner in inter-partes reviews of U.S. Patents 10,438,196 and 9,208,488, respectively, relating to an infrastructure supporting multiple mobile wallet providers. Result: no challenged claims unpatentable in either case. Contact: Marcus Barber, Esq., Kasowitz Benson Torres LLP, 333 Twin Dolphin Drive, Suite 200, Redwood Shores, CA 94065. (R)
358. IOENGINE, LLC v. Roku, Inc., Case 6:21-cv-01296-ADA (W.D. Texas). Served as an expert for Patent Owner in a case alleging infringement of U.S. Patents 10,447,819 and 10,972,584,
relating to a secure portable device implementing a plug-n-play VPN. Result: jury verdict of non-infringement, now subject to post-trial motions. Contact: Greg Chuebon, Esq., Dechert LLP, Three Bryant Park, 1095 Avenue of the Americas, New York, NY 10036-6797. (D,R,T)
359. United States v. David Gerald Minkkinen et al., Case 2:22-cr-00613 (S.D. W.Va ). Serving as an expert for defendant Minkkinen in a case alleging theft of trade secrets relating to statewide unemployment insurance systems. Contact: Mike Nogay, Esq., Sellitti, Nogay & Nogay, PLLC, 3125 Pennsylvania Avenue, Weirton, West Virginia 26062. (R)
360. Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc., IPR2023-00538, IPR2023-00539, IPR2023-00540, Patent Trial and Appeal Board. Served as an expert for Patent Owner in inter-partes reviews of U.S. Patents 9,365,223, 9,981,673, and 10,137,915, repectively,
relating to systems for detecting anomalies in train consists and railcars. Results: in 538, some claims found unpatenable. In 539, all challenged claims unpatentable. In 540, all challenged claims unpatentable. All decision on appeal to the Federal Circuit. Contact: Ryan N. Miller, Esq., Fox Rothschild LLP, 2000 Market Street, 20th Floor, Philadelphia, PA 19103-3222. (R)
361. Entain Corporate Services Ltd. et al. v. GAN (UK) Limited, IPR2023-00027, Patent Trial and Appeal Board. Served as an expert for Patent Owner in an inter-partes review of U.S. Patent 8,821,296,
relating to casino management systems for linking online and offline gaming accounts. Result: all challenged claims unpatentable. Contact: Jarrad M. Gunther, Esq., Duane Morris LLP, 30 South 17th Street, Philadelphia, PA 19103-4196. (D,R)
362. Ex Parte Reexamination of U.S. Patent 8,762,498, Control No. 90/015,238. Served as an expert for Unified Patents in a reexamination of U.S. Patent 8,762,498,
drawn to Internet communications through a virtual domain. All reexamined claims cancelled. Contact: Michael H. Jones. Esq., Rothwell, Figg, Ernst & Manbeck, P.C., 901 New York Avenue, N.W., Suite 900 East, Washington. DC 20001. (R)
363. FaceTec, Inc. v. iProov Ltd., Case 2:21-cv-02252-ART-BNW (D. Nevada). Serving as an expert for Defendant/Counterclaim Plaintiff in an action alleging infringement of U.S. Patents 10,776,471 and 11,157,606 by iProov, relating to authentication through facial recognition, and infringement of U.S. Patent 9,621,548 by FaceTec, relating to online identity validation. Contact: Ryan E. Hatch, Esq., Hatch Law, P.C.,
13323 Washington Blvd., Suite 100, Los Angeles, CA 90066.
364. Lexos Media IP, LLC v. Abt Electronics, Inc., Case 1:22-cv-04878 (N.D. Ill.). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 5,995,102, 6,118,449, and 7,975,241, relating to modifying a cursor image. Contact: Ken P. Kula, Esq., Buether Joe & Counselors, LLC, 1700 Pacific Avenue, Suite 4750
Dallas, Texas 75201.
365. Lexos Media IP, LLC v. Amazon.com, Inc., Case 2:22-cv-00169-JRG (E.D. Texas), consolidated with Lexos Media IP, LLC v. Target Corporation, Case 2:22-cv-00175-JRG (E.D. Texas) and Lexos Media IP, LLC v. Office Depot, Case 2:22-cv-00273-JRG (E.D. Texas). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 5,995,102, 6,118,449, and 7,975,241, relating to modifying a cursor image. Case has settled as to all defendants.Contact: Ken P. Kula, Esq., Buether Joe & Counselors, LLC, 1700 Pacific Avenue, Suite 4750
Dallas, Texas 75201. (D,R)
366. Lexos Media IP, LLC v. MSC Industrial Direct Co., Inc., Case 3:22-cv-01736-X (N.D. Texas). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 5,995,102, 6,118,449, and 7,975,241, relating to modifying a cursor image. Case has settled. Contact: Ken P. Kula, Esq., Buether Joe & Counselors, LLC, 1700 Pacific Avenue, Suite 4750
Dallas, Texas 75201.
367. Lexos Media IP, LLC v. Nike, Inc., Case 2:22-cv-00311-JRG (E.D. Texas), consolidated with Lexos Media IP, LLC v. Walmart, Inc., Case 2:22-cv-00175-JRG (E.D. Texas), Lexos Media IP, LLC v. Ulta Beauty, Inc., 2:22-cv-00292-JRG (E.D. Texas), Lexos Media IP, LLC v. Northern Tool and Equipment, Inc., 2:22-cv-00355-JRG (E.D. Texas), Lexos Media IP, LLC v. The Gap, Inc., 2:22-cv-00299-JRG (E.D. Texas), and Lexos Media IP, LLC v. CDW LLC, 2:22-cv-00275-JRG (E.D. Texas). Served as an expert for Plaintiff in an action alleging infringement of U.S. Patents 5,995,102, 6,118,449, and 7,975,241, relating to modifying a cursor image. Case has settled as to all defendants. Contact: Ken P. Kula, Esq., Buether Joe & Counselors, LLC, 1700 Pacific Avenue, Suite 4750
Dallas, Texas 75201. (D,R)
368. Lexos Media IP, LLC v. Overstock.Com, Inc., Case 1:22-cv-02324-JAR-ADM (D. Kan.). Serving as an expert for Plaintiff in an action alleging infringement of U.S. Patents 5,995,102, 6,118,449, and 7,975,241, relating to modifying a cursor image. Contact: Ken P. Kula, Esq., Buether Joe & Counselors, LLC, 1700 Pacific Avenue, Suite 4750
Dallas, Texas 75201.
369. CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., 1:18-cv-1477
(D. Del.). Serving as an expert for plaintiff in a case alleging infringement
of U.S. Patent 9,246,903,
relating to online authentication using two communication channels.
Contact: John
Paul Padro, Esq., Goodwin Procter
LLP, The New York Times Building, 620 Eighth Avenue, New York, NY 10018. (R)
370. United Services Automobile Association v. Truist Bank, 2:22-cv-00291-JRG-RSP
(E.D. Texas). Served as an expert for plaintiff in a case alleging
infringement of U.S. Patents 9,818,090, 10,482,432, 11,182,753, 11,544,944,
and 11,625,770,
relating to remote check deposit. Defendant has counterclaimed, asserting
infringement of U.S. Patents 7,336,813, 7,519,214,
relating to determining skew in digital images, U.S. Patents 7,283,644, 7,899,210,
and 9.760,797,
relating to an image-based security system, and U.S. Patent 8,136,721,
relating to improvements in optical character recognition. Case has settled. Contact: Anthony Rowles, Esq., Irell & Manella LLP, 1800
Avenue of the Stars, Los Angeles, CA 90067-4276.
371. RFCyber Corp. v. Visa U.S.A., Inc., 6:22-cv-00697-ADA
(W.D. Texas). Served as an expert for Visa in a case alleging
infringement of U.S. Patents 8,118,218, 8,448,855, 9,189,787, and 9,240,009,
relating to mobile payment devices and funding electronic purses. Case has settled. Contact: James C. Yoon, Esq., Wilson Sonsini Goodrich & Rosati P.C., 650 Page Mill Road, Palo Alto, CA 94304-1050. (R)
372. SitePro, Inc. v. Waterbridge Resources, LLC et al., 6:23-cv-00115-ADA-DTG
(W.D. Texas). Serving as an expert for SitePro in a case alleging
infringement of U.S. Patents 8,649,909, 9,342,078, 9,898,014, 10,488,871, 11,175,680, and 11,294,403,
relating to remote control of fluid-handling devices. Contact: M. Craig Tyler, Esq., Perkins Coie LLP, 405 Colorado Street, Suite 1700, Austin, TX 78701-0089.
373. Diogenes Limited and Colossus (IOM) Limited v. DraftKings Inc., 1:21-cv-01695-MN-CJB (D. Del.). Serving as an expert for DraftKings in a case alleging
infringement of U.S. Patents 8,721,439, 9,117,341, 9,275,516, 9,424,716, 9,704,338, 10,970,969, 10,997,822,and 11,200,779,
relating to wagering methods, in particular, offering to cash out a wager on an event before the event has terminated. Contact: Jamie R. Lynn, Esq., Baker Botts L.L.P., 700 K Street N.W., Washington, DC 20001.
374. Truist Bank v. United Services Automobile Association, IPR2023-00183
(PTAB). Served as an expert for Patent Owner in an inter-partes review of U.S. Patent 11,182,753, relating to remote check deposit. Case has settled. Contact: Anthony Rowles, Esq., Irell & Manella LLP, 1800 Avenue of the Stars, Los Angeles, CA 90067-4276. (R)
375. Redmon Jeang LLC v. TurnSignl, Inc. et al., 0:22-cv-02749-NEB-LIB (D. Minn.). Served as an expert for defendant in a case alleging infringement of U.S. Patents 11,443,395, 11,494,861, and 11,494,862,
relating to systems and methods for contacting an attorney during a traffic stop. Defendant won a judgment on the pleadings that the claims were patent-ineligible. Contact: Mark Nelson, Esq., Barnes & Thornburg LLP, 2121 N. Pearl Street, Suite 700, Dallas, TX 75201.
376. TurnSignl, Inc. et al. v. Redmon Jeang LLC, IPR2024-00103, IPR2024-00104, IPR2024-00105, Patent Trial and Appeal Board. Served as an expert for Patent Owner in inter-partes reviews of U.S. Patents 11,443,395, 11,494,861, and 11,494,862, repectively,
relating to systems and methods for contacting an attorney during a traffic stop. Petitions were withdrawn before institution based on the outcome of case 375, above. Contact: Mark Nelson, Esq., Barnes & Thornburg LLP, 2121 N. Pearl Street, Suite 700, Dallas, TX 75201. (R)
377. MessageBird, B.V. et al. v. Validity, Inc. , 1:22-cv-12116-NMG (D. Mass.). Served as an expert for defendant in a case alleging infringement of U.S. Patent 8,719,356,
relating to monitoring deliverability of electronic mail. Case has settled. Contact: Jennifer Hayes, Esq., Nixon Peabody LLP, 305 S. Grand Avenue, Suite 4100, Los Angeles, CA 90071-3151.
378. Cardware, Inc. v. Samsung Electronics, Co. Ltd. et al, 2:22-cv-00141-JRG-RSP (E.D. Texas). Served as an expert for Defendants in a case alleging infringement of U.S. Patents 10,339,520, 10,628,820, 10,810,579, 11,176,538, and 11,328,286, relating to a device for simulating a magnetic-stripe credit card. Case has settled. Contact: Nicholas Stevens, Esq., Fish & Richardson, 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402.
379. Cortex MCP, Inc. v. VISA Inc., 5-23-cv-05720-FB (N.D. Cal.). Serving as an expert for defendant in an action alleging infringement of U.S. Patents 9,251,531, 9,954,854, 10,749,859, and 11,329,973, all relating to tokenization methods for securing electronic credentials, e.g., in electronic payment systems. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304.
380. VISA Inc. v. Cortex MCP, Inc. v. VISA Inc., IPR2024-00486, IPR2024-00487, IPR2024-00488, IPR2024-00489, and IPR2024-00490, Patent Trial and Appeal Board. Serving as an expert for petitioner in inter partes reviews of U.S. Patents 9,251,531 (IPR2024-00486, IPR2024-00487), 9,954,854 (IPR2024-00488), 10,749,859 (IPR2024-00489), and 11,329,973 (IPR2024-00490), all relating to tokenization methods for securing electronic credentials, e.g., in electronic payment systems. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304.
381. Snap Inc v. Playvuu, Inc., IPR2023-00848
(PTAB). Served as an expert for Patent Owner in an inter-partes review of U.S. Patent 10,931,911, relating to compositing multimedia content. Review has been instituted. Patent Owner requested adverse judgment. Contact: David Tsai, Esq., Pillsbury Winthrop Shaw Pittman LLP, Four Embarcadero Center, 22nd Floor
San Francisco, CA 94111-5998. (R)
382. Zigen, Inc. et al. v. Cabin Management Solutions et al., 4-23-cv-00210 (S.D. Texas). Serving as an expert for defendant in an action alleging misappropriation of trade secrets relating to customized aircraft audiovisual systems. Contact: Peter Vogel, Esq., VogelITLaw, 5925 Forest Lane, Suite 136, Dallas, TX 75230. (R)
383. The Chosen, Inc. v. Angel Studios, Inc. v. Come and See Foundation, Inc., AAA 01-23-001-5829. Served as an expert for interested party Educational Media Foundation in an action alleging software copyright infringement. Contact: Thor Y. Urness, Esq., Bradley Arant Boult Cummings LLP, Roundabout Plaza, 1600 Division Street, Suite 700, Nashville, TN 37203.
384. AirSlate, Inc. v. Inkit, Inc., 1:23-cv-01307-RGA-SRF
(D. Del.). Serving as an expert for defendant in a case alleging
infringement of U.S. Patent 11,449,815, relating to automating document workflows. Contact: John M. Hintz, Esq.., Maynard Nexsen PC, 551 Fifth Avenue, The Fred F. French Building, Suite 1600, New York, NY 10176. (R)
385. CSC Serviceworks, Inc.. v. PayRange, Inc., IPR2023-01186, Patent Trial and Appeal Board. Served as an expert for patent owner in a post-grant review of U.S. Patent 8,856,045, relating to methods for authorizing payments wirelessly at vending machines. Case has settled. Contact: Matthew Argenti, Esq., Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304. (R)
386. Mynette Technologies, Inc. et al. v. United States et al., 1:16-cv-01647-RTH (Fed. Claims). Serving as an expert for plaintiff in a case alleging
infringement of U.S. Patents 7,719,425, 7,924,156, 9,524,458, and 9,569,777, relating to the use of NFC chips in passports. Contact: Robert Yorio, Esq., Carr & Ferrell LLP, 120 Constitution Drive, Menlo Park, CA 94025. (R)
387. Ex Parte Reexamination of U.S. Patents RE46,386 and 8,924,502, Control Nos. 90/019,142 and 90/019,143. Served as an expert for patent owner Aqua Connect in a reexamination of U.S. Patents RE46,386 and 8,924,502, relating to updating a user session in a Mach-derived system environment. All reexamined claims affirmed. Contact: Ryan E. Hatch, Esq., Hatch Law, P.C.,
13323 Washington Blvd., Suite 100, Los Angeles, CA 90066. (R)
388. Touchstream Technologies, Inc. v. Charter Communications, Inc. et al., 2:23-cv-00059-JRG (E.D. Texas). Serving as an expert for defendant in a case alleging
infringement of U.S. Patents 8,356,251, 11,048,751, and 11,086,934, relating to controlling a television display from a mobile device. Contact: Dina M. Hayes, Esq., Arnold & Porter Kaye Scholer LLP, 70 West Madison Street, Suite 4200, Chicago, IL 60602-4231. (D,R)
389. Autoscribe Corporation v. Repay Holdings Corporation et al., 2:23-cv-0349-JRG (E.D. Texas). Serving as an expert for defendants in a case alleging
infringement of U.S. Patent 11,620,621, relating to tokenization in an electronic payment system. Contact: David Harper, Esq., Haynes and Boone, LLP, 2801 N. Harwood Street, Suite 2300 Dallas, TX 75201. (R)
390. SportsCastr Inc. d/b/a PANDA Interactive v. Genius Sports Ltd., 2:23-cv-0471-JRG (E.D. Texas). Serving as an expert for plaintiff in a case alleging
infringement of U.S. Patents 10,425,697, 10,805,687, 11,039,218, and 11,871,088,
all relating to synchonizing livestreamed video with related event information. Contact: Patrick Lafferty, Esq., King & Spalding LLP, 1700 Pennsylvania Avenue, NW, Suite 900, Washington, D.C. 20006. (R)
391. SportsCastr Inc. d/b/a PANDA Interactive v. Sportradar Group AG, 2:23-cv-0472-JRG (E.D. Texas). Serving as an expert for plaintiff in a case alleging
infringement of U.S. Patents 10,425,697, 10,805,687, 11,039,218, and 11,871,088,
all relating to synchonizing livestreamed video with related event information. Contact: Patrick Lafferty, Esq., King & Spalding LLP, 1700 Pennsylvania Avenue, NW, Suite 900, Washington, D.C. 20006.
392. Adeia Guides, Inc. v. Videotron Ltd., T-841-21 (Fed. Ct. of Canada). Serving as an expert for plaintiff in a case alleging
infringement of Canadian Patents 2,553,922, relating to providing a streaming version of a broadcast television program, 2,635,571, relating to delivering television program based on the receiver's display capabilities, 2,775,674, relating to selectively disabling trick play functions, and 2,967,187,
relating to monitoring a user's viewing progress with a serial television program. Contact: Daniel Cappe, Esq., Goodmans LLP, Bay Adelaide Centre - West Tower, 333 Bay Street, Suite 3400, Toronto, ON M5H 2S7.
393. Ex Parte Reexamination of U.S. Patents 10,449,819 and 10,972,584, Control Nos. 90/019,292 and 90/019,293. Served as an expert for patent owner IOENGINE, LLC in reexaminations of U.S. Patents 10,447,819 and 10,972,584, relating to relating to a secure portable device implementing a plug-n-play VPN. Contact: Greg Chuebon, Esq., Dechert LLP, Three Bryant Park, 1095 Avenue of the Americas, New York, NY 10036-6797. (R)
394. Thentia Corporation v. Julian Cardarelli, GovCore Canada, Inc., et al., CV-24-00726669-0000 (Ontario Super. Ct.). Serving as an expert for plaintiff in a case alleging
misappropriation of trade secrets relating to a system for automating regulatory agency activities. Contact: Dena Varah, Esq., Lenczner Slaght LLP, 130 Adelaide St. W., Suite 2600, Toronto, ON, Canada M5H 3P5. (R)
395. Ex Parte Reexamination of U.S. Patent 8,407,722, Control No. 90/019,662. Served as an expert for Unified Patents in a reexamination of U.S. Patent 8,407,722,
drawn to an Internet routing architecture. Contact: Jessica Marks, Esq., Unified Patents, 4445 Willard Avenue, Suite 600, Chevy Chase, MD 20815. (R)
396. Monticello Enterprises LLC. v. Macy’s Inc., et al., 6:23-00753-XR (W.D. Texas) (lead case), consolidated with Monticello Enterprises LLC. v. Petco Health & Wellness Co, Inc. et al., 6:23-cv-00761-XR and Monticello Enterprises LLC. v. Starbucks Corporation, 6:23-cv-00763. Serving as an expert for defendants in a case alleging
infringement of U.S. Patents 9,824,408, 10,121,186, 10,643,266, 11,004,139, 11,461,828, and 11,468,497,
relating to on-line, wireless, and in-app payment systems. Contact: Bryan P. Clark, Esq., The Webb Law Firm, One Gateway Center, 420 Ft. Duquesne Blvd., Suite 1200, Pittsburgh, PA 15222. (R)
397. Ex Parte Reexamination of U.S. Patent 8,370,457. Served as an expert for Unified Patents in a reexamination of U.S. Patent 8,370,457,
drawn to network communication through a virtual domain. Contact: Stephen A. Courtiaus, Esq., Slater Matsil, LLP, 17304 Preston Rd., Suite 900, Dallas, TX 75252. (R)
398. Hanshow Technology Co., Ltd. v. SES-Imagotag SA et al., 2:23-cv-00174-RWS-RSP (E.D. Texas). Serving as an expert for defendants in a case alleging
infringement of U.S. Patents 8,436,210, 9,641,994, and 11,540,216,
relating to managing services through the use of RFID and NFC tags. Contact: Matt Acosta, Esq., Platt Richmond PLLC, 101 N. Riverfront Blvd., Suite 150, Dallas, TX 75207. (D,R)