Practice Expertise
Areas of Practice
- Intellectual Property Law
Profile
Robert Becker is a Shareholder in the Firm’s San Francisco office and a member of the Intellectual Property practice group. He represents both emerging and developed companies in complex patent, trademark, copyright, antitrust, trade secret, and unfair competition trials and appeals in federal courts throughout the United States.
Mr. Becker represents clients in patent litigation and prosecution, including inter partes review (IPR) proceedings, and has successfully represented clients in disputes relating to a wide variety of technologies, including gaming hardware and software; optical, wired, wireless, and cellular networks; solar cells and panels; e-mail, e-commerce, and Internet business methods; facial recognition, music recognition and downloads; content encryption and copy protection; data storage, access and synchronization; analog and digital signal processing; computer software, hardware and peripherals; medical devices; and physics and related engineering.
Awards and Honors
- In 2005, he was named as one of the best intellectual property lawyers in the bay area by Bay Area Lawyer Magazine and one of the best intellectual property litigation lawyers by Northern California Super Lawyers.
- Top 20 lawyers under 40 in California in 2005 by the Daily Journal
- “500 New Stars, New Worlds” in the Lawdragon guide, 2006
- “Lawdragon 3000 Leading Lawyers in America,” 2006
- Top 50 lawyers under 45 by IP Law & Business in May, 2008
- Top patent lawyers by the Daily Journal in April 2008
- Top 75 Litigators in California by the Daily Journal, 2010
- Daily Journal’s 2010 list of California’s Leading Intellectual Property Lawyers, published in the San Francisco and Los Angeles editions. The list recognizes “lawyers whose work had the most impact on their clients and more importantly on the area of law” during the past year. He was recognized for his high profile work on behalf of client Visto Corp., the maker of push e-mail products for mobile phones, on its patent infringement lawsuits against Research in Motion, parent company to Blackberry. This was Mr. Becker’s second appearance on the Top IP Litigators list.
- Super Lawyers®, part of Thomson Reuters, 2005 – 2007, 2010 – 2018
Professional Involvement
- Member, State Bar of California
- Registered to Practice before the United States Patent and Trademark Office
Bar Admissions
- California
Areas of Practice
- Intellectual Property Law
Professional Career
Significant Accomplishments
<p>presentative Litigation:</p><ul><li><em>*Ironburg Inventions Ltd. v. Valve Corporation </em>(U.S. District Court, Western District, Washington). Lead trial counsel for Ironburg Inventions in the first patent infringement trial in the nation held via Zoom. Ironburg Inventions, the patent holding arm of Scuf Gaming, based in Atlanta Georgia, accused Valve of patent infringement and willfully ignoring demand letters concerning infringement by its popular Steam Controller. The Seattle based remote jury agreed and held Valve Corp. accountable for willful infringement.</li><li><em>Riggs Tech. Holdings v. *Relias Learning LLC </em>(U.S. District Court, Southern District, New York). Lead trial counsel for Defendant Relias Learning LLC in patent infringement action.</li><li><em>*Ironburg Inventions Ltd. v. Valve Corporation</em>—Patent infringement action involving multiple patents to address Valve’s unlicensed sales of the popular Steam controller. The patents cover revolutionary reprogrammable controls on the back of controllers that are widely used by professional gamers. The litigation includes a jury verdict on one patent, multiple IPR requests filed by Valve and related appeals. Trials on related patents remain pending.</li><li><em>*Capella Photonics, Inc. v. Cisco Systems, Inc.—</em>Lead trial counsel for Capella Photonics in patent infringement actions throughout the United States to address large scale infringement by Cisco, Tellabs, Fujitsu, Infinera and Ciena and other telecom equipment manufacturers. The defendants provide the fiber-optic switching systems that power the Internet as we know it today. The patents cover reconfigurable optical add-drop multiplexers (ROADMs), which are used to route (or to switch), on the wavelength level, optical signal traffic in fiber optic networks. The litigation involved multiple district court actions, eight IPR requests and related appeals.</li><li><em>Zenith Electronics LLC et al. v. *ViewSonic Corporation</em>—Complex patent infringement and antitrust case involving patents that were alleged to be essential to digital television transmission standards. In addition to the traditional non-infringement and invalidity issues, the case involved the Plaintiffs’ failures to license patents on FRAND terms and related antitrust injuries attendant to Plaintiffs’ breaches of their FRAND obligations.</li><li><em>*Clairmail Inc. v. Maxim Integrated Products, Inc</em>.—Filed a declaratory judgment complaint against Maxim Integrated Products on behalf of Clairmail Inc., a company that provides mobile banking applications, and whose banking customers had been sued or had received demand letters from Maxim for alleged infringement of patents for secure mobile banking transactions. The Clairmail action was consolidated in a multidistrict litigation along with other cases involving Maxim’s claims of infringement.</li><li><em>Crossroads Systems, Inc. v. *DataDirect Networks, Inc. et al. </em>(W.D. Tex.)—Patent infringement action against DataDirect Networks in the Western District of Texas. Crossroads Systems asserted patent claims involving a storage router for providing virtual local storage on remote storage devices to devices.</li><li><em>*Visto Corp. v. Microsoft </em>(E.D. Tex.)—Patent infringement action against Microsoft in the Eastern District of Texas (Marshall/Texarkana). The litigation involved Visto’s portfolio of patents directed to wireless e-mail, calendar and contact synchronization, including U.S. Patent No. 6,085,192, which emerged from reexamination. Microsoft announced Messaging and Security Feature Pack (MSFP) for Windows Mobile 5.0 and Service Pack 2 (SP2) for Microsoft Exchange Server 2003. Direct Push technology in MSFP and Exchange Server 2003 SP2 was designed to allow Exchange Server to send messages and other PIM information directly to Windows Mobile 5.0 devices over the air (OTA) through wireless accounts. The case settled for a confidential amount just before trial.</li><li><em>*Visto Corp. v. Research In Motion </em>(E.D. Tex.)—One of several patent infringement actions on the Visto patent portfolio against RIM in the Eastern District of Texas (Marshall/Texarkana). The cases settled for $267.5 million.</li><li><em>Philips v. *Concord Records, Inc., *Concord Music Group, Inc. et al. </em>(S.D. N.Y.)—Patent infringement action in the Southern District of New York. Philips asserted claims for infringement of U.S. Patent 5,068,846 (“’846 patent”), entitled “Reflective, Optical Record Carrier”. Philips asserted in its Complaint against the Concord entities and other content publishers and CD manufacturers that use of the ‘846 patent is essential to manufacturing CDs that conform to standard specifications. A dismissal for our clients was obtained on the basis of exhaustion.</li><li><em>*Visto Corp. v. Good Technology, Inc. </em>(E.D. Tex.)—Settled patent infringement action in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. Visto acquired Good and became the provider of GoodLink wireless messaging software.</li><li><em>*Visto Corp. v. Seven Networks, Inc. </em>(E.D. Tex.)—Settled patent infringement action in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. Seven was the provider of Sprint Business Connection software and CingularXpress Mail software. After a jury verdict of willful infringement in favor of Visto in April2006 (19.75% royalty rate), the court doubled damages, awarded attorneys’ fees and entered a stayed injunction. The case subsequently settled. As part of the settlement agreement, Seven acknowledged the validity and enforceability of Visto’s patent portfolio and agreed to licensing terms.</li><li><em>*Visto Corp. v. Smartner Information Systems Ltd. </em>(E.D. Tex.)—Patent infringement action involving the Visto patent portfolio. The action was pending in the Eastern District of Texas (Marshall), and settled as part of a global settlement with Seven Networks, Inc.</li><li><em>*Visto Corp. v. Infowave Software, Inc. </em>(E.D. Tex.)—Settled patent infringement action against Infowave in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. As part of the settlement, Infowave acknowledged the validity of Visto’s and agreed to licensing terms.</li><li><em>*Visto Corp. v. Sproqit </em>(N.D. Cal.)—Patent infringement action involving the Visto patent portfolio. Sproqit ceased operations and the action was dismissed.</li><li><em>Gracenote, Inc. v. *Musicmatch, Inc. </em>(N.D. Cal.)— Patent infringement action in the Northern District of California. Gracenote asserted several patents directed to Internet-based music recognition software and services. Musicmatch asserted counterclaims of invalidity and unenforceability due to material information about Gracenote’s prior systems that was fraudulently withheld from the USPTO during prosecution of the Gracenote “CDDB” patents, as well as antitrust violations based on the same conduct. The parties agreed to settle the case after Musicmatch obtained summary judgment on all patent claims.</li><li><em>*Macrovision Corp. v. 321 Studios </em>(S.D.N.Y.)—Patent infringement and Digital Millennium Copyright Act action against 321 Studios. Macrovision received both preliminary and permanent injunctions enjoining the sale of 321’s popular DVD X Copyproducts. Paramount and other motion picture studios received a similar injunction first, but 321 avoided those injunctions by removing the CSS breaking ripper. Macrovision’s injunction goes one step further, and blocks the new DVD X “RF” (Ripper Free) products, which were being sold online with a link to a third-party ripper.</li><li><em>E-Data v. *Ticketmaster, *Fandango, et. al. </em>(S.D.N.Y.)—Patent infringement action regarding the Freeny patent brought by E-Data (formerly Interactive Gift Express Inc).</li><li><em>*Macrovision Corp. v. Sima Corp. </em>(S.D.N.Y.)— Settled patent infringement and Digital Millennium Copyright Act action against Sima and Interburn in the southern District of New York. As a part of the settlement, Interburn acknowledged the validity of the Macrovision patents and was permanently enjoined.</li><li><em>The Braun Corp. v. *Maxon Lift Corp. </em>(N.D. Ind.)—Patent infringement action brought by The Braun Corp. After obtaining summary judgment on all of Braun’s claims, we secured an affirmance from the Federal Circuit. The decision was based on a controversial “Scimed” type subject matter disclaimer.</li><li><em>*Maxon Lift Corp. v. Ricon, Corp. and The Braun Corp. </em>(C.D. Cal.)—Antitrust action filed in the Central District of California to block the proposed merger between Ricon, Corp. and The Braun Corp. The case was dismissed after the defendants abandoned the proposed combination.</li><li><em>Atmel v. Information Storage Devices, Inc. </em>(N.D. Cal.)—Patent infringement action concerning nonvolatile memory chips in the Northern District of California. Represented third party Xicor, Inc.</li><li><em>*Flying J v. Central California Kenworth </em>(E.D. Cal.)—Copyright infringement action that resulted in a multimillion dollar jury verdict in favor of Flying J.</li><li><em>Abbott Labs and Mitsubishi Tokyo Pharmaceuticals, Inc. v. *Dey, Inc. </em>(N.D. Ill.)—Patent infringement action regarding two patents assigned to Tokyo Tanabe (now Mitsubishi Tokyo Pharmaceuticals). The patents are directed to pulmonary surfactants and methods for use in alleviating infant respiratory distress syndrome (IRDS).</li><li><em>Adrain v. *Hypertech </em>(D. Utah)—Patent infringement action in the District of Utah. Adrain asserted two patents directed to apparatus and software for modifying the controlprovided by automotive engine control modules.</li><li><em>*ICMI, Inc. v. Ricoh </em>(W.D. Pa.)—Patent infringement action concerning toner cartridges for laser printers. Summary judgment in favor of ICMI upheld by the Federal Circuit on appeal.</li><li><em>Hewlett-Packard v. *Nu-kote </em>(N.D. Cal.)—Patent infringement action concerning numerous patents on ink formulations and ink cartridges for ink jet printers. Settled after trial and numerous summary judgments in favor of Nu-kote.</li><li><em>Canon v. *Nu-kote </em>(C.D. Cal.)—Patent infringement action concerning numerous patents on ink and ink cartridges for ink jet printers. Settled after summary judgment on invalidity of critical ink patent.</li><li><em>Seiko-Epson v. *Nu-kote </em>(C.D. Cal.)—Patent infringement action concerning numerous patents on ink cartridges for ink jet printers. Settled after partial summary judgment in favor of Nu-kote.</li><li><em>Rainin Instrument Co. v. *Sherwood Medical </em>(N.D. Cal.)—Patent infringement action concerning medical pipettes. Summary judgment of no infringement granted in favor of Sherwood Medical.</li><li><em>Comora v. *Thoratec Laboratories </em>(N.D. Cal.)—Patent infringement action concerning left ventricular assist devices. Summary judgment of no infringement granted in favor of Thoratec.</li><li><em>In re Left Ventricular Assist Device Patent Litigation </em>(D. Nev)—Consolidated patent infringement actions concerning left ventricular assist devices. See description, above.</li></ul><p>(* indicates party representation)</p>
<p>presentative Litigation:</p><ul><li><em>*Ironburg Inventions Ltd. v. Valve Corporation </em>(U.S. District Court, Western District, Washington). Lead trial counsel for Ironburg Inventions in the first patent infringement trial in the nation held via Zoom. Ironburg Inventions, the patent holding arm of Scuf Gaming, based in Atlanta Georgia, accused Valve of patent infringement and willfully ignoring demand letters concerning infringement by its popular Steam Controller. The Seattle based remote jury agreed and held Valve Corp. accountable for willful infringement.</li><li><em>Riggs Tech. Holdings v. *Relias Learning LLC </em>(U.S. District Court, Southern District, New York). Lead trial counsel for Defendant Relias Learning LLC in patent infringement action.</li><li><em>*Ironburg Inventions Ltd. v. Valve Corporation</em>—Patent infringement action involving multiple patents to address Valve’s unlicensed sales of the popular Steam controller. The patents cover revolutionary reprogrammable controls on the back of controllers that are widely used by professional gamers. The litigation includes a jury verdict on one patent, multiple IPR requests filed by Valve and related appeals. Trials on related patents remain pending.</li><li><em>*Capella Photonics, Inc. v. Cisco Systems, Inc.—</em>Lead trial counsel for Capella Photonics in patent infringement actions throughout the United States to address large scale infringement by Cisco, Tellabs, Fujitsu, Infinera and Ciena and other telecom equipment manufacturers. The defendants provide the fiber-optic switching systems that power the Internet as we know it today. The patents cover reconfigurable optical add-drop multiplexers (ROADMs), which are used to route (or to switch), on the wavelength level, optical signal traffic in fiber optic networks. The litigation involved multiple district court actions, eight IPR requests and related appeals.</li><li><em>Zenith Electronics LLC et al. v. *ViewSonic Corporation</em>—Complex patent infringement and antitrust case involving patents that were alleged to be essential to digital television transmission standards. In addition to the traditional non-infringement and invalidity issues, the case involved the Plaintiffs’ failures to license patents on FRAND terms and related antitrust injuries attendant to Plaintiffs’ breaches of their FRAND obligations.</li><li><em>*Clairmail Inc. v. Maxim Integrated Products, Inc</em>.—Filed a declaratory judgment complaint against Maxim Integrated Products on behalf of Clairmail Inc., a company that provides mobile banking applications, and whose banking customers had been sued or had received demand letters from Maxim for alleged infringement of patents for secure mobile banking transactions. The Clairmail action was consolidated in a multidistrict litigation along with other cases involving Maxim’s claims of infringement.</li><li><em>Crossroads Systems, Inc. v. *DataDirect Networks, Inc. et al. </em>(W.D. Tex.)—Patent infringement action against DataDirect Networks in the Western District of Texas. Crossroads Systems asserted patent claims involving a storage router for providing virtual local storage on remote storage devices to devices.</li><li><em>*Visto Corp. v. Microsoft </em>(E.D. Tex.)—Patent infringement action against Microsoft in the Eastern District of Texas (Marshall/Texarkana). The litigation involved Visto’s portfolio of patents directed to wireless e-mail, calendar and contact synchronization, including U.S. Patent No. 6,085,192, which emerged from reexamination. Microsoft announced Messaging and Security Feature Pack (MSFP) for Windows Mobile 5.0 and Service Pack 2 (SP2) for Microsoft Exchange Server 2003. Direct Push technology in MSFP and Exchange Server 2003 SP2 was designed to allow Exchange Server to send messages and other PIM information directly to Windows Mobile 5.0 devices over the air (OTA) through wireless accounts. The case settled for a confidential amount just before trial.</li><li><em>*Visto Corp. v. Research In Motion </em>(E.D. Tex.)—One of several patent infringement actions on the Visto patent portfolio against RIM in the Eastern District of Texas (Marshall/Texarkana). The cases settled for $267.5 million.</li><li><em>Philips v. *Concord Records, Inc., *Concord Music Group, Inc. et al. </em>(S.D. N.Y.)—Patent infringement action in the Southern District of New York. Philips asserted claims for infringement of U.S. Patent 5,068,846 (“’846 patent”), entitled “Reflective, Optical Record Carrier”. Philips asserted in its Complaint against the Concord entities and other content publishers and CD manufacturers that use of the ‘846 patent is essential to manufacturing CDs that conform to standard specifications. A dismissal for our clients was obtained on the basis of exhaustion.</li><li><em>*Visto Corp. v. Good Technology, Inc. </em>(E.D. Tex.)—Settled patent infringement action in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. Visto acquired Good and became the provider of GoodLink wireless messaging software.</li><li><em>*Visto Corp. v. Seven Networks, Inc. </em>(E.D. Tex.)—Settled patent infringement action in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. Seven was the provider of Sprint Business Connection software and CingularXpress Mail software. After a jury verdict of willful infringement in favor of Visto in April2006 (19.75% royalty rate), the court doubled damages, awarded attorneys’ fees and entered a stayed injunction. The case subsequently settled. As part of the settlement agreement, Seven acknowledged the validity and enforceability of Visto’s patent portfolio and agreed to licensing terms.</li><li><em>*Visto Corp. v. Smartner Information Systems Ltd. </em>(E.D. Tex.)—Patent infringement action involving the Visto patent portfolio. The action was pending in the Eastern District of Texas (Marshall), and settled as part of a global settlement with Seven Networks, Inc.</li><li><em>*Visto Corp. v. Infowave Software, Inc. </em>(E.D. Tex.)—Settled patent infringement action against Infowave in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. As part of the settlement, Infowave acknowledged the validity of Visto’s and agreed to licensing terms.</li><li><em>*Visto Corp. v. Sproqit </em>(N.D. Cal.)—Patent infringement action involving the Visto patent portfolio. Sproqit ceased operations and the action was dismissed.</li><li><em>Gracenote, Inc. v. *Musicmatch, Inc. </em>(N.D. Cal.)— Patent infringement action in the Northern District of California. Gracenote asserted several patents directed to Internet-based music recognition software and services. Musicmatch asserted counterclaims of invalidity and unenforceability due to material information about Gracenote’s prior systems that was fraudulently withheld from the USPTO during prosecution of the Gracenote “CDDB” patents, as well as antitrust violations based on the same conduct. The parties agreed to settle the case after Musicmatch obtained summary judgment on all patent claims.</li><li><em>*Macrovision Corp. v. 321 Studios </em>(S.D.N.Y.)—Patent infringement and Digital Millennium Copyright Act action against 321 Studios. Macrovision received both preliminary and permanent injunctions enjoining the sale of 321’s popular DVD X Copyproducts. Paramount and other motion picture studios received a similar injunction first, but 321 avoided those injunctions by removing the CSS breaking ripper. Macrovision’s injunction goes one step further, and blocks the new DVD X “RF” (Ripper Free) products, which were being sold online with a link to a third-party ripper.</li><li><em>E-Data v. *Ticketmaster, *Fandango, et. al. </em>(S.D.N.Y.)—Patent infringement action regarding the Freeny patent brought by E-Data (formerly Interactive Gift Express Inc).</li><li><em>*Macrovision Corp. v. Sima Corp. </em>(S.D.N.Y.)— Settled patent infringement and Digital Millennium Copyright Act action against Sima and Interburn in the southern District of New York. As a part of the settlement, Interburn acknowledged the validity of the Macrovision patents and was permanently enjoined.</li><li><em>The Braun Corp. v. *Maxon Lift Corp. </em>(N.D. Ind.)—Patent infringement action brought by The Braun Corp. After obtaining summary judgment on all of Braun’s claims, we secured an affirmance from the Federal Circuit. The decision was based on a controversial “Scimed” type subject matter disclaimer.</li><li><em>*Maxon Lift Corp. v. Ricon, Corp. and The Braun Corp. </em>(C.D. Cal.)—Antitrust action filed in the Central District of California to block the proposed merger between Ricon, Corp. and The Braun Corp. The case was dismissed after the defendants abandoned the proposed combination.</li><li><em>Atmel v. Information Storage Devices, Inc. </em>(N.D. Cal.)—Patent infringement action concerning nonvolatile memory chips in the Northern District of California. Represented third party Xicor, Inc.</li><li><em>*Flying J v. Central California Kenworth </em>(E.D. Cal.)—Copyright infringement action that resulted in a multimillion dollar jury verdict in favor of Flying J.</li><li><em>Abbott Labs and Mitsubishi Tokyo Pharmaceuticals, Inc. v. *Dey, Inc. </em>(N.D. Ill.)—Patent infringement action regarding two patents assigned to Tokyo Tanabe (now Mitsubishi Tokyo Pharmaceuticals). The patents are directed to pulmonary surfactants and methods for use in alleviating infant respiratory distress syndrome (IRDS).</li><li><em>Adrain v. *Hypertech </em>(D. Utah)—Patent infringement action in the District of Utah. Adrain asserted two patents directed to apparatus and software for modifying the controlprovided by automotive engine control modules.</li><li><em>*ICMI, Inc. v. Ricoh </em>(W.D. Pa.)—Patent infringement action concerning toner cartridges for laser printers. Summary judgment in favor of ICMI upheld by the Federal Circuit on appeal.</li><li><em>Hewlett-Packard v. *Nu-kote </em>(N.D. Cal.)—Patent infringement action concerning numerous patents on ink formulations and ink cartridges for ink jet printers. Settled after trial and numerous summary judgments in favor of Nu-kote.</li><li><em>Canon v. *Nu-kote </em>(C.D. Cal.)—Patent infringement action concerning numerous patents on ink and ink cartridges for ink jet printers. Settled after summary judgment on invalidity of critical ink patent.</li><li><em>Seiko-Epson v. *Nu-kote </em>(C.D. Cal.)—Patent infringement action concerning numerous patents on ink cartridges for ink jet printers. Settled after partial summary judgment in favor of Nu-kote.</li><li><em>Rainin Instrument Co. v. *Sherwood Medical </em>(N.D. Cal.)—Patent infringement action concerning medical pipettes. Summary judgment of no infringement granted in favor of Sherwood Medical.</li><li><em>Comora v. *Thoratec Laboratories </em>(N.D. Cal.)—Patent infringement action concerning left ventricular assist devices. Summary judgment of no infringement granted in favor of Thoratec.</li><li><em>In re Left Ventricular Assist Device Patent Litigation </em>(D. Nev)—Consolidated patent infringement actions concerning left ventricular assist devices. See description, above.</li></ul><p>(* indicates party representation)</p>
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