Kerr & Wagstaffe LLP has taken on some of the most difficult intellectual property cases of the past decade—and won. Over the course of the firm’s twelve-year history we have helped our clients recover more than $450 million in patent, trademark, trade secret, domain name and copyright litigation. We have also successfully defended numerous clients in infringement challenges, efficiently and effectively protecting their creative efforts and business interests.
Our Approach
We maximize success by preparing for trial from day one. Though the vast majority of intellectual property cases resolve before trial, our experience shows that clients get the best results when we focus from the start on what it takes to win. Our settlements—which include eight- and nine-figure royalties on individual patents—bear out the strength of that approach.
Preparing for trial means putting together an effective strategy for communicating our story to juries, charting a course of motion practice to set up the case in the optimal position, and seeking out the key evidence that will have the maximum impact on the ultimate decision-makers.
We help our clients tell their stories to juries. Intellectual property cases often involve complex technologies, confusing procedural histories, and counter-intuitive economic concepts. Building from a base of technical expertise and rigorous analysis, we develop our cases around the narratives that allow jurors to grasp the critical concepts and frame the facts in the way most favorable to our clients.
At the same time, we establish and maintain credibility with judges, laying the groundwork for victory at trial through effective motion practice. Our lawyers literally wrote the book on federal civil procedure–authoring and contributing to the leading practice guide—and train new federal judges every year on how to manage their cases. Whether in court on a discovery dispute or arguing critical Markman or summary judgment hearings, we take every opportunity to reinforce our clients’ reputations, and to help the court side with our clients by establishing the legal and factual footing for our positions. We do not take a scattershot approach to motion practice, but only seek relief when doing so will help our clients win—a practice that helps us prevail when it counts.
We approach discovery with similar focus. By targeting the evidence necessary to prevail at trial, we take control of discovery without letting it take control of us—or our clients. Our lawyers efficiently seek out the key documents and testimony that will have the maximum persuasive force, and we utilize cutting-edge technology to avoid unnecessary expenditures on document review. We keep our case teams lean, and don’t expect our clients to pay for junior attorneys to learn on the job. Each attorney understands both the global strategy and tactical details of the case, so all of our effort is directed to executing on improving the outcome.
Our Experience
We have successfully vindicated the rights of inventors seeking fair compensation for their innovations, protected the rights of businesses against those seeking to improperly gain from misuse of their brands, and asserted the rights of authors and other creative professionals to control use of their works. Our experience includes not just major patent litigation but trademark, trade secret, domain name and copyright matters.
We are often asked to step into existing cases to help formulate strategy, to handle especially difficult issues, or to protect a client’s right to their selected counsel when challenged for an alleged conflict of interest. Though we practice in federal courts around the country, we bring particular familiarity with the Northern District of California, where many of our attorneys clerked and where our former partner now sits as a magistrate judge.
Representative Cases
Adrian Sawyer Speaks at 2nd Annual Advanced Trade Secret/Employee Mobility Practicum
Kerr & Wagstaffe Partner Adrian Sawyer spoke at the Second Annual Advanced Trade Secret/Employee Mobility Practicum: Winning Strategies for Litigation Complex Trade Secret and Employee Mobility Cases on March 29, 2013 in San Francisco. Mr. Sawyer, along with other leading trade secret practitioners, provided advice on how to protect company trade secrets, guard against employee raids, recruit from competitors without getting sued, and how to handle employees that leave to compete with their former employers. The program delivered perspectives from both the plaintiff and defense sides in one of the hottest areas in intellectual property and employment litigation.
Commonwealth Scientific and Industrial Research Organisation v. Broadcom, Qualcomm-Atheros, Sony, Acer, Lenovo, AT&T, Verizon and T-Mobile (E.D. Texas, N.D. Cal., C.D. Cal, Federal Circuit)
The firm represents CSIRO, Australia’s national science agency, in litigation to enforce its United States patent on the wireless LAN technology underlying the IEEE 802.11 a, g and n standards, commonly referred to as Wi-Fi. The firm led the highly successful recent litigation in the Eastern District of Texas against Broadcom, Qualcomm-Atheros, Sony, Acer, Lenovo, AT&T, Verizon and T-Mobile that resolved just before trial in April 2012. (See Law 360, “CSIRO To Rake in $230M After WLAN Patent Settlements”). Kerr & Wagstaffe also represented CSIRO in previous rounds of litigation against major semiconductor, laptop, networking hardware and consumer electronics manufacturers in the Northern District of California, Central District of California, Eastern District of Texas and the Federal Circuit. The firm successfully charted and executed a procedural and appellate strategy to optimize CSIRO’s enforcement efforts, including a rare successful motion to transfer venue from the Northern District of California to the Eastern District of Texas and victory on several novel issues addressed at both the district court and appellate levels.
The Fort Miller Co. v. Con-Fab California Corp. (N.D. Cal.)
We represent defendants in an infringement suit relating to prefabricated concrete slabs used for highway construction projects, including a large renovation of Interstate 680 in Northern California. Our client Con-Fab California has developed innovative methods for manufacturing concrete slabs for roadways and other applications, and faces an industry-wide effort to challenge a broad range of construction technologies that promise lower costs for billions of dollars of public works projects.
International Trademark and Trade Dress Dispute
We were asked to represent an American consumer products manufacturer whose key product design had been unlawfully copied by a Chinese competitor in cooperation with the major domestic corporation it supplied. Our strategy of aggressive preparation allowed us to apply pressure at the retail level and led to an immediate cessation of the infringing activity with a successful and efficient resolution of the dispute.
Qualcomm Inc. v. Broadcom Corp.
In a highly-publicized case, Kerr & Wagstaffe attorneys persuaded a federal magistrate judge to reverse her prior sanctions of the trial lawyers representing Qualcomm Inc. in its patent dispute with Broadcom Corp. The Court had previously sanctioned several of the attorneys in connection with alleged discovery misconduct. Following that ruling, and after extensive discovery and a three-day evidentiary hearing, Judge Barbara Major changed course and declined to impose any sanctions on the firm’s client and the other lawyers who had represented Qualcomm. Judge Major’s order expressly recognized the numerous reasonable steps the firm’s client took to ascertain the truth during the underlying case.
Kerr & Wagstaffe Wins Patent Settlement for Australian Inventors of Wi-Fi
The firm’s intellectual property team won a favorable settlement on behalf of its client, the Commonwealth Scientific and Industrial Research Organisation (CSIRO), the Australian national science agency. CSIRO holds the U.S. patent on the technology underlying the IEEE 802.11a, g and n wireless LAN standards, commonly known as Wi-Fi, which is now used in billions of devices worldwide. CSIRO was prepared to try the case against cellular carriers AT&T, Verizon and T-Mobile, consumer electronics companies Sony, Acer and Lenovo, and semiconductor chipmakers Broadcom and Atheros, beginning April 2 before Judge Leonard E. Davis in the Eastern District of Texas. The resolution brings to a close the latest round in CSIRO’s longstanding efforts to win recognition and a fair royalty for its transformational invention, which has included litigation in the Eastern District of Texas, Northern District of California and three appeals to the Federal Circuit. The terms of the settlements are confidential.
Kremen v. Cohen ("sex.com")
Kerr & Wagstaffe LLP represented plaintiff, the owner of the “sex.com” domain name, in one of the foundational cases establishing the rights of internet domain name holders. After our client’s domain name was stolen by use of a forged signature sent to Network Solutions, Inc., the domain registrar, we obtained a groundbreaking decision from the Ninth Circuit holding that our client had a property right to the stolen domain and that Network Solutions was potentially liable for giving it away without proper authorization. The firm successfully obtained a court order returning the name to the plaintiff and additionally secured a judgment for the plaintiff, which also was affirmed on appeal.