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OVERVIEW

EXPERIENCE

Experience

Jayne v. Sprint PCS

Granting client’s motion to dismiss § 1983 claims under the Stored Communications Act.

CTIA - Wireless Ass'n v. Telecommunications Regulatory Bd. of Puerto Rico

Denying opponent’s motion to dismiss and subsequently granting client’s request for permanent injunction of state law under the Stored Communications Act.

Wallace v. Universal Music Group, et al.

Represented a mobile content provider in a putative class action arising out of charges for downloaded ring tones under California’s unfair competition and computer crime statutes. Filed motion to dismiss based in part on Section 230 of the Communications Decency Act. Obtained voluntary dismissal of the complaint.

US WEST Inc. v. Time Warner Inc.

Court of Chancery of Delaware

Assistance in representation of the former US WEST in claims against Time Warner arising out of Time Warner’s acquisition of Turner Broadcasting Systems. 1996 WL 307445 (Del. Ch. 1996)

TracFone Wireless ETC Application

Public Utility Commission of Oregon

Represented wireless telecommunications provider in obtaining eligible telecommunications carrier (ETC) status for Lifeline service.

Talk America, Inc. v. Michigan Bell Telephone Co.

Supreme Court of the United States

Filed an amici curiae brief on behalf of CenturyLink, Qwest Communications International, and Windstream in support of Michigan Bell Telephone Company arguing that requiring incumbents, like AT&T, to provide non-bottleneck network elements at cost-based rates undermines the objectives of the 1996 Telecommunications Act, and that the Act does not impose an obligation on incumbents lease their existing entrance facilities for interconnection to competitive local exchange carriers at cost-based rates. 131 S.Ct. 2254 (2011).

SimpleAir, Inc., v. Microsoft Corporation, et al.

U.S. District Court for the Eastern District of Texas

Counsel for HTC in two patent case related to remote notification technology for mobile devices; plaintiff voluntarily dismissed claims against HTC.

Representation of US WEST

Representation of the former U S WEST in claims against Time Warner arising out of Time Warner's acquisition of Turner Broadcasting Systems. Successful appeal of adverse ruling before the PUC in a $500 million rate case to the Oregon District Court.

Qwest Corporation v. Public Utilities Commission of Colorado

U.S. Court of Appeals for the Tenth Circuit

Appeal under the Telecommunications Act of 1996 regarding the jurisdiction of state administrative agencies to review commercial agreements between telecommunications carriers.

Qwest Corporation v. Public Service Commission of Utah

U.S. Court of Appeals for the Tenth Circuit

Appeal under the Telecommunications Act of 1996 regarding the jurisdiction of state administrative agencies to review commercial agreements between telecommunications carriers.

Qwest Corporation v. Arizona Corporation Commission, et al.

U.S. District Court for the District of Arizona

Prosecution of claims under sections 251 & 271 of the Telecommunications Act of 1996.

Qwest Communications Corporation v. City of New York

U.S. District Court for the Eastern District of New York

Challenge to municipal telecommunications franchise agreement, under section 253 of the Telecommunications Act of 1996 and the Civil Rights Act.

People v. Harris

A case of first impression granting in part and denying in part communications provider’s motion to quash subpoena for user records.

Pacific Bell Telephone Company v. California Public Utilities Commission, et al.

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

Defense of action related to an appeal from a state commission rate-setting order.

Level 3 Communications v. Public Utilities Commission of Colorado

U.S. District Court for the District of Colorado

Appeal of arbitration under Telecommunications Act of 1996. 300 F. Supp. 2d 1069 (D. Colo. 2003)

Fujinon Corporation v. HTC Corporation and HTC America Inc.

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

Counsel for HTC in patent litigation before Judge Gilmore concerning optical lens structures found in cellular phones; pending.

Figa v. HTC Corporation

U.S. District Court for the District of Massachusetts

Counsel for HTC in patent litigation related to caller-id functionality on mobile phones.

e.spire Communications Inc. v. Baca

U.S. District Court for the District of New Mexico

Appeal of complaint proceeding under Telecommunications Act of 1996.

Carns v. Sprint Corp.

U.S. District Court for the District of Oregon

Defense of communications company against former employee's gender discrimination claim.

AT&T Corporation v. BellSouth Long Distance Inc. & Qwest Communications Corporation

U.S. District Court for the Southern District of New York

Defense of action for tortious interference with contract and unjust enrichment.

Apple Inc. v. High Tech Computer (HTC) Corporation

International Trade Commission
U.S. District Court for the District of Delaware

Defended HTC in actions in the International Trade Commission (ITC) and district court alleging infringement of twenty patents relating to operating systems and mobile handsets.

American Council on Education v. F.C.C.

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

Appeal of F.C.C. order regarding CALEA and broadband access and services.

Advanced Audio Devices, LLC v. HTC America, Inc.

U.S. District Court for the Northern District of Illinois

Counsel for HTC America in patent litigation related to audio playlists.

Acquisitions by Rapid Communications

Represented Rapid Communications in its acquisition of cable systems from Charter Communications, as well as multiple similar acquisitions and dispositions.

In the Matter of Certain Electronic Imaging Devices, U.S. International Trade Commission Investigation No. 337-TA-850

Counsel for Respondents HTC Corporation and HTC America Inc. in a four-patent investigation before ALJ Essex concerning camera functionality, messaging, and image processing systems in smartphones; prior to the hearing one patent was dismissed; obtained final determination finding non-infringement, and none of the domestic industry licensees practiced two of the remaining three asserted patents. Complainant FlashPoint Technology, Inc. did not appeal the final determination.

Flashpoint Technology Inc. v. HTC Corporation, et al.

U.S. District Court for the District of Delaware

Counsel for HTC in patent litigation concerning 10 patents related to mobile technologies; pending.

Openwave Systems Inc.

Patent prosecution, strategic IP counseling, third party patent analyses and opinions, and offensive infringement analyses relating to client and server software for interfacing mobile communication devices with the Internet.

Nuance Communications Inc.

Patent prosecution and strategic IP counseling relating to speech recognition software and related applications.

Spectrum Lease Court and Regulatory Agency Counsel and Defense

Represent a leading wireless carrier in disputes arising from spectrum leases before the courts and FCC.

RFP and Master Services Agreements

Counseled a leading wireless carrier in the negotiation of vendor procurement RFPs, master services agreements and compliance counseling relating to wireless devices.

Insurance and Warranty Compliance Counseling

Advised numerous companies on legal compliance matters relating to device insurance and service contract/extended warranty products and services.

Communications and Compliance Counsel on Rebranding Initiative

Advised Sprint (including Nextel Communications prior to its merger with Sprint) on its multibillion dollar strategic spectrum rebranding initiative, over the course of a decade, affecting public safety communications and commercial wireless operations before the FCC and other federal agencies, and in related transactions and litigation matters.

Communications Act Compliance Reports

Represented companies, including a leading online streaming music provider and a leading mobile wireless carrier, in investigating and writing stockholder ownership citizenship reports for purposes of compliance with the Communications Act in the context of mergers and acquisitions subject to FCC prior consent.

Acquisition of Wireless Charging Technologies Patents

Represented a large electronics company in its acquisition of patents and patent applications related to wireless charging technologies.

Nonend Inventions, N.V. v. Microsoft Corporation, et al.

U.S. District Court for the Eastern District of Texas

Counsel for Microsoft, HTC America, HP, and Fujitsu in patent case related to media streaming.

Nonend Inventions, N.V. v. HTC America, Inc.

U.S. District Court for the Eastern District of Texas

Counsel for HTC America, Inc. in a one patent case before Judge Gilstrap concerning streaming media content and media playback; dismissed as a result of settlement.

Graphics Properties Holdings Inc. v. HTC Corporation, HTC America, Inc., et al.

U.S. District Court for the District of Delaware

Counsel for HTC in two cases before Judge Andrews concerning four patents involving CPU architecture, floating point rasterization and framebuffering, and large area wide aspect ratio flat panel technologies; stayed pending collateral U.S. ITC proceeding (Inv. No. 337-TA-836); dismissed as a result of settlement.

MyPort IP Inc. v. HTC Corporation and HTC America, Inc., et al.

U.S. District Court for the Eastern District of Texas

Counsel for HTC in a two patent case before Judge Davis concerning techniques for embedding searchable information in a file for transmission, storage and retrieval; prepared and filed inter partes reexamination requests that were subsequently granted and as a result obtained a stay of the case just weeks before claim construction hearing; stayed during pendency of proceedings before the USPTO; the PTAB affirmed the examiner’s rejection of all claims of both asserted patents.

e-Watch, Inc. and e-Watch Corporation v. HTC Corporation and HTC America, Inc.

U.S. District Court for the Eastern District of Texas

Counsel for HTC in a two patent case before Judge Gilstrap concerning capture and transmission of digital images; filed two inter partes review petitions against the asserted patents, and two inter partes review trials were instituted; stayed during the pendency of the inter partes review trials; the parties jointly moved for entry of a stipulated order of dismissal of all claims with prejudice; the order was granted, terminating the litigation.

FCC Compliance Counsel to Equipment Manufacturers

  • Advised a leading technology company on FCC issues concerning the development, importation and marketing of wearable wireless devices.
  • Counseled equipment manufacturers on FCC requirements covering smart-TVs, tablets and mobile telephones.
  • Developed and conducted companywide training on FCC compliance issues for a leading device manufacturer.
  • Counseled several equipment manufacturers on compliance matters before the FCC’s Enforcement Bureau.
  • Advised FCC-licensed equipment manufacturers on Open Internet rules and related litigation.*
  • Counseled a startup company on FCC certification issues relating to an unmanned automated vehicle in development.*
  • Counseled an automobile manufacturer on FCC compliance and experimental license issues.* 

Broadband and Cable Services

  • Advised a broadband provider on federal, state and local laws governing broadband services.
  • Counseled a new entrant in the wireless broadband service market on compliance with federal and state laws.
  • Advised major cable broadband service providers on infrastructure lease agreements and related regulatory matters before federal and state regulatory authorities.
  • Advised a provider of cable and broadband services on compliance with federal privacy laws and state and local consumer protection laws.*
  • Represented video service providers in FCC proceedings assessing competition in the media and broadband markets.*

NFC Technology LLC v. HTC America, Inc., et al.

U.S. District Court for the Eastern District of Texas

Counsel for HTC America in patent litigation related to near field communications.

Immersion Corporation v. HTC Corporation

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

Representing HTC in a case related to mobile handset software. Secured partial summary judgment of invalidity; remaining claims resolved prior to trial. Judgment of invalidity currently under appeal.

Rothschild Storage Retrieval Innovations, LLC v. HTC Corporation and HTC America, Inc.

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

Counsel for HTC in a one patent case before Magistrate Judge Laporte concerning camera, image filtering, and image transmission functionality in smartphones; case transferred to the Northern District of California; stayed during the pendency of an inter partes review trial involving the asserted patent; the parties jointly moved for entry of a stipulated order of dismissal of all claims with prejudice; the order was granted, terminating the litigation.

High Point SARL v. T-Mobile USA, et al.

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

Represented T-Mobile in a patent case relating to cellular radio and core network components for UMTS voice calls. Secured summary judgment of patent exhaustion and stipulated judgment of noninfringement. Case currently on appeal.

Superguide Corporation v. DirecTV

U.S. District Court for the Western District of North Carolina

Represented EchoStar with respect to a patent lawsuit involving EPG technology. Case No. 00 CV 00144

Marlowe Patent Holdings LLC v. DICE Electronics, LLC

U.S. District Court for the District of New Jersey

Represented VAIS Technology with respect to a patent lawsuit involving mobile (i.e., automotive) audio technology. Civil Action No. 10-1199

Forgent Networks, Inc. v. EchoStar Communications Corp.

U.S. District Court for the Eastern District of Texas

Represented EchoStar with respect to a patent lawsuit involving DVR technology. Case No. 2:05-CV-318

EchoStar Technologies Corp. v. TiVo

U.S. District Court for the Eastern District of Texas

Represented EchoStar with respect to a patent lawsuit involving digital video recorder (DVR) technology. Case No. 5-05CV-81

EchoStar Satellite LLC, et al. v. Finisar Corp.

U.S. District Court for the District of Delaware

Represented EchoStar with respect to a patent lawsuit involving electronic program guide (EPG) and digital video transmission technology. Case No. 06 CV 425

Barry W. Thomas v. EchoStar Satellite, LLC

U.S. District Court for the Western District of North Carolina

Represented EchoStar with respect to a patent lawsuit involving pay-per-view television technology. Case No. 05 CV 494

HTC Corporation

Represented HTC in inter partes reexaminations of third-party communications patents asserted against HTC and obtained judgment by Patent Trial and Appeal Board (PTAB) finding all claims of patent to be unpatentable in inter partes reexamination 95/001,212. Also served as lead counsel for HTC before the U.S. Court of Appeals for the Federal Circuit in a subsequent appeal by the patent owner, where the patent owner withdrew appeal after full briefing on the merits, preserving HTC victory.

FlashPoint Technology Inc. v. HTC Corporation, HTC America Inc., et al.

U.S. International Trade Commission

Counsel for HTC in patent litigation concerning camera functionality in smart phones; win at trial and initial ID. ITC proceeding 337-TA-726

In the Matter of Certain Consumer Electronics And Display Devices And Products, No. 337-TA-836

U.S. International Trade Commission

Defended HTC in a four-patent investigation before ALJ Essex, brought by patent assertion entity against Graphic Properties Inc,. directed to smartphones, including the CPU architecture, floating point rasterization and framebuffering in graphics processing units, and large-area, wide aspect ratio, flat-panel technologies. The effective use of statements made by the patent owner during IPR proceedings helped to limit the scope of the claims. The matter was terminated as a result of settlement.

In the Matter of Certain Portable Electronic Devices and Related Software, No. 337-TA-797

Defended HTC in a six-patent investigation before ALJ Gildea relating to hardware and software used by smartphones and tablets. Dismissed as a result of settlement after the hearing.

In the Matter of Certain Electronic Imaging Devices Inv. No. 337-TA-726

U.S. International Trade Commission

Defended HTC in an investigation before CALJ Luckern in which FlashPoint Technology, Inc., a spinoff from Apple, asserted that all of HTC’s (and most of the rest of the smartphone market’s) Android and Windows-based phones infringed three patents, relating primarily to digital imaging functionality and device capability querying technologies. Almost all respondents, including Nokia and RIM, settled before the trial. CALJ Luckern found that none of the asserted patents were infringed, FlashPoint failed to prove a domestic industry for its patents, and one of Flashpoint’s patents was invalid. The Commission and Federal Circuit affirmed. 

Wireless Mobile Devices LLC v. HTC Corporation and HTC America, Inc.

U.S. District Court for the Northern District of Texas

Counsel for HTC in a six patent case before Judge Godbey concerning navigation devices, and synchronization of data over a network; filed six inter partes review petitions against the asserted patents; dismissed as a result of settlement before institution of inter partes review petitions.

FlashPoint Technology, Inc. v. HTC Corporation and HTC America, Inc.

U.S. District Court for the Eastern District of North Carolina
U.S. District Court for the District of Delaware

Counsel for HTC in a six patent case before Judge Sleet concerning camera, file system, and graphics processing functionality in smartphones; case transferred to the District of Delaware; filed five inter partes review petitions against the asserted patents, and five inter partes review trials were instituted; dismissed as a result of settlement.

FlashPoint Technology Inc. v. Aiptek Inc., et al.

U.S. District Court for the District of Delaware

Counsel for HTC in a 10 patent case before Judge Sleet concerning camera user interface functionality in smartphones; obtained a stay of the entire case after Judge Sleet lifted previous stay due to completion of reexaminations, in light of FlashPoint’s filing of a complaint asserting four of the 10 patents before the U.S. International Trade Commission (Inv. No. 337-TA-850); dismissed as a result of settlement.

Datascape, Inc. v. Kyocera Wireless Corp.

U.S. District Court for the Northern District of Georgia

Counsel for Kyocera in a six patent case before Judge Cooper relating to data transaction systems which communicate over a network with a plurality of non-standard I/O remote terminals. Datascape accused Kyocera cellular handsets and smartphones of infringement. Settled favorably before trial.

Rate Case: Qwest Communications International Inc. Oregon Rate CaseQwest Communications International Inc. Oregon Rate Case

Public Utility Commission of Oregon
Circuit Court of Oregon, Marion County

Appealed successfully a PUC order, obtaining reversal of a $97 million annual revenue reduction and obtained the desired rate design.

Power Grid Communications

Represented Broadband Over Power Line provider in negotiating operating, service and purchase agreements with electric utilities.

Pole Attachment: Central Electric Cooperative Inc. v. Qwest Communications International Inc.

U.S. District Court for the District of Oregon
Public Utility Commission of Oregon

Defended Qwest Successfully against a claim for $20 million in regulatory penalties for unlawful pole attachments. Obtained a full summary judgment and negotiated a new pole attachment agreement.

Northwest Public Communications Council v. Qwest Corporation

U.S. District Court for the District of Oregon
U.S. Court of Appeals for the Ninth Circuit
Court of Appeals of Oregon
Public Utility Commission of Oregon

Defended Qwest successfully against refund claims by payphone service providers in multiple forums and appeals.

Attorney General Investigations of Qwest Communications

Represented the telecommunications utility and wireless provider in multistate attorneys general investigations into alleged unlawful trade practices; negotiated favorable settlements.

Trademark Re-brand of International Communications Company

Managed a major re-brand for an international communication network company, involving domestic and international clearance, selection of a new corporate name, mark and logo, and trademark filings. Facilitated associated international trademark registration strategy and filings.

* Prior Experience

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