Court of Appeals for the Federal Circuit
- Kara Technology v. Stamps.com, 582 F.3d 1341 (2009). Argued this appeal for electronic postage company asserting claims of patent infringement and theft of trade secrets. Obtained vacatur of adverse jury verdict and new trial in precedential opinion from the Federal Circuit.
- Customedia Techs, LLC v. Dish Network Corp., 941 F.3d 1173 (2019); 941 F.3d 1174 (2019); 951 F.3d 1359 (2020). Argued a series of five appeals for supplier of satellite broadcast services that had prevailed in several PTAB Trial proceedings involving patents related to video on demand and targeted advertisement technologies. Obtained several precedential and non-precedential opinions affirming the PTAB’s invalidation of all challenged claims as being directed to unpatentable abstract ideas, and establishing precedential procedural law regarding the manner of preserving for appeal any challenge to the appointment of PTAB Judges under the U.S. Constitution.
- Sony Corp. v. Fujifilm Corp. (2019). Argued this appeal for supplier of magnetic tape for use in data archival systems that had prevailed at the PTAB in invalidating various claims of a patent related to memory-in-cassette tape systems. Granted affirmance of PTAB’s invalidation of the challenged claims.
- Stambler v. MasterCard International Inc. (2017). Argued this appeal for payment company that had prevailed at the PTAB in invalidating various claims of a patent related to cryptographic authentication of payment information. The patent had been asserted in dozens of cases and upheld in several prior court decisions. Granted affirmance of the PTAB’s decision invalidating the asserted claims.
- CRFD Research, Inc. v. Dish Network Corp., 876 F.3d 1330 (2017). Argued this appeal for supplier of satellite broadcast services that had prevailed at the PTAB in invalidating various claims of a patent related to transferring a computing session between devices. Obtained precedential opinion agreeing with the PTAB’s decision invalidating the challenged claims.
- Dragon Intellectual Property LLC v. Dish Network LLC (2017). Argued this appeal for supplier of satellite broadcast services that had prevailed at the PTAB in invalidating various claims of a patent related to a time-shifting television playback device. Obtained affirmance of the PTAB’s decision to invalidate all asserted claims.
- D’Agastino v. MasterCard International Inc. (2018). Argued this appeal for payment company that had prevailed at the PTAB in invalidating various claims of a patent related to limited use credit card numbers. Obtained affirmance of the PTAB’s decision invalidating the asserted claims.
Patent Trial and Appeal Board - Business Method Reviews and Inter Partes Reviews
Mr. Williams has appeared in over 160 PTAB Trial matters, including over 20 covered business method reviews and 140 inter partes reviews, involving such diverse technologies as: ridesharing technologies, streaming media, cryptographic authentication of data, systems for presenting menu data to users, payment system technologies, internet search technologies, data encoding algorithms, data compression algorithms, set top box technologies, magnetic tape systems, semiconductor manufacturing, memory circuits, portable device user-interfaces, cellular telephony systems, drug formulations, catheter-delivered medical devices, and heterologous protein expression.
IP Litigation Matters
- D’Agostino v. MasterCard Inc. et al. (D. Delaware) – represented a leading payments industry company in defense of patent infringement suit relating to controlled payment numbers. Obtained stay of district court litigation in view of co-pending PTAB trials related to validity of the asserted patents. Case was dismissed after all asserted claims invalidated by PTAB.
- Ameranth, Inc. v. Seamless North America, LLC; Ameranth, Inc. v. GrubHub, Inc. (United States District Court for the Southern District of California) – representing leading online and mobile food ordering company in defense of patent infringement suit relating to food ordering systems.
- Enovsys LLC v. AT&T Mobility LLC et al. (United States District Court for the Central District of California) – Granted verdict of non-infringement and invalidity of asserted patents directed to location based services on behalf of telecommunications company.
- Orbis Patents Ltd. v. Verient, Inc. (United States District Court for the Southern District of New York) – Represented payment technology company in asserting patents related to controlled payment numbers. Matter settled prior to trial.
- Every Penny Counts v. American Express Company et al. (United States District Court for the Middle District of Florida; Federal Circuit Court of Appeals, 563 F.3d 1378 (2009)) – defense of MasterCard International Incorporated in a patent infringement suit involving point-of-sale automatic savings systems; case was dismissed after MasterCard and other defendants successfully obtained from the District Court a construction of the claims that precluded a finding of infringement; successfully represented MasterCard on appeal to the U.S. Court of Appeals for the Federal Circuit.
- Privasys, Inc. v. MasterCard International Inc. and MasterCard International Inc. v. Privasys, Inc. (United States District Courts for the Southern District of New York and the Northern District of California) – represented MasterCard in defense against allegations of trade secret misappropriation and misnaming of patent inventorship involving contactless payment device security techniques.
- Honeywell International Inc. v. Renesas Technology Corp. (United States District Court for the Eastern District of Texas) – represented Renesas Technology Corp. and Renesas Technology America Inc. in a patent infringement suit relating to LCD display driver technology; case settled on favorable terms after Baker Botts filed a motion to dismiss the complaint based on unconstitutionality of the Patent Act as applied to foreign manufacturing activity.
- Lexar Media, Inc. v. Fuji Photo Film U.S.A., Inc. (United States District Courts for the Eastern District of Texas and the Northern District of California) – defense of Fuji Photo Film U.S.A. (now Fujifilm USA) against allegations of infringement of patents involving flash memory systems used in digital still cameras; settled on favorable terms prior to jury selection after Baker Botts successfully moved to transfer the case from the Eastern District of Texas
- Acacia Media Technologies Corp. v. On Command Corp. (United States District Court for the Central District of California) – representation of On Command Corporation in a patent infringement action involving transmission of compressed audio/video signals.
- MasterCard International Inc. et al. v. Lexcel Solutions Inc. (United States District Court for the District of Arizona) – representation of MasterCard in a declaratory judgment action against owner of a patent related to automated software testing products; case settled on favorable terms after a claim construction hearing
- Pitney Bowes Inc. v. Xerox Corp. et al. (United States District Courts for the District of Connecticut and the Eastern District of Kentucky) – representation of plaintiff in a patent infringement suit against a printer manufacturer relating to enhancement of laser printing resolution; case settled during discovery on favorable terms.
- Taylor et al. v. IBM et al. and Taylor v. MasterCard International Inc. (United States District Court for the Northern District of Texas and United States Court of Appeals for the Fifth Circuit) – representation of MasterCard International in defending against allegations of patent and copyright infringement related to prepaid card programs; Baker Botts prevailed in having the cases dismissed by the District Court and successfully defended the dismissal at the U.S. Court of Appeals for the Fifth Circuit, which awarded attorneys’ fees against plaintiff.
- ACTV Inc. v. The Walt Disney Company (United States District Court for the Southern District of New York) – representation of plaintiff in a patent infringement suit against broadcast/cable networks over interactive television patents.
Other Litigation Experience
- Kaczmarek v. International Business Machines Corporation (United States District Court for the Southern District of New York) – representation of IBM in defense of a putative consumer class action suit involving civil claims under the RICO and Magnuson-Moss Warranty Acts relating to allegedly defective modem/sound card used in personal computers
- In re Nine West Shoes Litigation (United States District Court for the Southern District of New York) – representation of company accused of minimum resale price maintenance against private litigants and multiple state attorneys general acting in parens patriae capacity under the antitrust laws
- Brown & Williamson v. Philip Morris (Middle District of North Carolina) – representation of Brown & Williamson as plaintiff in an antitrust action against Philip Morris involving claims of attempted monopolization of the retail cigarette market
Transactional/IP Consulting Matters
- Various clients – counseling regarding open source software risk management and license compliance.
- MasterCard International Inc. – outside intellectual property counsel for acquirer in acquisition of payment software company. Transaction publicly valued at approximately $100 million
- Fortune 250 company – counsel regarding patent issues in asset acquisition involving business method patent and patent applications
- Various clients – negotiation of patent licenses and settlement agreements resolving numerous IP litigation matters
- Digital Security Software Provider – prosecution of patents related to secure communications and content distribution
