OCIPLA November 2017 Luncheon

Summary
OCIPLA is pleased to present a very special patent panel:

Lessons Learned from the Mistakes of Others:

• How to minimize lost profit patent infringement damages;
• How to word your license grant clause in view of the changing nature of patent licenses implied by legal estoppel; and,
• How to learn what your judge might be thinking before you write your brief.

Featuring speakers:
William C. Rooklidge, Brooke Myers Wallace, and Casey McCracken, Gibson, Dunn & Crutcher, LLP

Speakers

William C. Rooklidge
Partner, Gibson, Dunn & Crutcher LLP

William C. Rooklidge, a partner in the Orange County office of Gibson, Dunn & Crutcher LLP, joined the firm in 2015.  A member of the firm’s Litigation Department and Intellectual Property Practice Group, he has extensive experience in patent and trademark infringement litigation in the federal district courts and before the United States Court of Appeals for the Federal Circuit, as well as arbitration of patent disputes.

Mr. Rooklidge is an experienced trial lawyer who has successfully handled many significant intellectual property cases since trying his first case as lead trial counsel, a patent infringement case involving power tools, in 1994, when he obtained for his patentee client a judgment of treble damages and attorney fees.  Highlights include earning a 2011 defense verdict for his client in a patent infringement case involving internet search advertising in the Eastern District of Texas and securing a 2014 award for his client in a breach of contract arbitration involving a telephony patent license agreement in Zurich, Switzerland.  Appellate highlights include overturning a denial of preliminary injunction on patent infringement and defending a client’s trademark registration from charges of abandonment.

Mr. Rooklidge earned a Bachelor of Science degree in mechanical engineering from the University of Portland in 1979 and subsequently worked as an engineer with Tube Forgings of America, earning his Professional Engineers Registration.  He earned his law degree from Northwestern School of Law of Lewis & Clark College in 1984, where he served as Associate Editor of Environmental Law, and then a Master of Laws degree in patent and trade regulation from The National Law Center of George Washington University in 1985.  After completing his legal education, he served as a law clerk to the Honorable Helen W. Nies, Circuit Judge of the United States Court of Appeals for the Federal Circuit, from 1985 to 1987.

Mr. Rooklidge has served as President of the Orange County Patent Law Association, President of the American Intellectual Property Law Association, and Founding Master  of the Howard T. Markey Inn of Court.  He was recently was listed in The Legal 500 and has been selected by the Southern California legal community for inclusion in The Best Lawyers in America® since 2006 (including being named Orange County Lawyer of the Year in 2011 (Intellectual Property Law), 2015 (Litigation – Patent), and 2016 and 2018 (Litigation – Intellectual Property)).  He has authored or co-authored over 60 legal publications, including 2011 and 2017 editions of the Federal Judicial Center’s Compensatory Damages Issues in Patent Infringement Cases: A Pocket Guide For Federal District Court Judges.

Mr. Rooklidge is admitted to practice in the federal district courts of California, the Eastern District of Texas, the Central District of Illinois, and the Western District of Wisconsin, as well as the United State Courts of Appeals for the Ninth and Federal Circuits and the United States Supreme Court.  He also is admitted to practice before the United States Patent and Trademark Office.

Before joining Gibson Dunn, Mr. Rooklidge was a partner at Jones Day, Howrey, Howard Rice, and Knobbe Martens Olson & Bear.

Brooke Myers Wallace
Associate Attorney, Gibson, Dunn & Crutcher LLP

Brooke Myers Wallace is a senior associate in the Los Angeles office of Gibson, Dunn & Crutcher, and a member of the Litigation and Intellectual Property Departments.  She is also a member of the Firm’s Media, Entertainment, and Technology Practice Group, the Emerging Companies Practice Group, and the Electronic Discovery and Information Law Practice Group.

Ms. Wallace has significant experience working on high-stakes intellectual property disputes involving new media and personal consumer electronics, including software, mobile devices, mobile applications, video games, and electronic books.  Much of her recent litigation experience has been on behalf of a confidential client, a world-wide leader in the development of revolutionary personal consumer electronics, computers, applications, and software.  She has also represented other industry leaders like Amazon.com, Viacom, and Harmonix Music Systems in patent disputes relating to the Kindle and the Rock Band video game series, respectively.  She has litigated patent infringement suits in the District of Delaware, District of Nevada, Northern District of California, the Eastern District of Texas, and the International Trade Commission.

Ms. Wallace also has experience with copyright and trademark cases. She was a key member of a team that negotiated a favorable consent judgment with the Federal Trade Commission on behalf of a confidential client in a data privacy case.

She was also a key member of a team that represented a medical device company asserting claims of trade secret misappropriation, breach of contract, and interference with prospective economic advantage. That case culminated in a two-week jury trial in the Central District of California.

Ms. Wallace began her career at the Firm focusing on tax law. She has experience with corporate and partnership tax law.

Representative Accomplishments

• Decreased client’s damages exposure by 25% by persuading N.D. Cal. court to reject district precedent on patent marking.
• Persuaded first N.D. Cal. court, and only the second court in the country, to exclude survey-based valuation of a patent, reducing client’s damages exposure by $62 million.
• Convinced first ever district court to extend Federal Circuit precedent to exclude economic model used to value patent, reducing client’s damages exposure by 80% ($335 million).
• Persuaded E.D. Tex. court to preclude plaintiff from touting at trial the results of prior successful litigation against her client, leading to a favorable settlement days before trial.
• Initiated investigation of plaintiff’s bona fide presence in venue that led D. Nev. court to transfer case to N.D. Cal. Plaintiff’s concurrent litigation against similarly situated defendant was not transferred, due to failure to investigate plaintiff’s presence.
• Proposed claim construction that established patent was not directed to client’s sophisticated products. Construction was adopted by the U.S.I.T.C. and D. Del., and upheld on appeal to the Federal Circuit.
• First chair in bench trial. Successfully obtained permanent restraining order for pro bono client.

Publications and Presentations

• Author, lexpracticum.com, a blog on practical approaches to general litigation and intellectual property law.
• Author, “Clarity at Long Last: Post-Verdict Compensatory Patent Infringement Damages,” Patent, Trademark, & Copyright Journal (Bloomberg BNA, September 15, 2017).
• Author, “How to Get a Patent Survey Kicked Before Trial,” Law360 (August 16, 2017).
• Author, “The Continued Relevance of the Intellectual Property Umbrella: What Patent, Copyright, and Trademark Lawyers Can Learn from One Another,” Patent, Trademark, & Copyright Journal (Bloomberg BNA, August 8, 2017).
• Co-author with William C. Rooklidge, “Patent Assignments and Licenses: The Grant Clause and Related Patents,” Patent, Trademark, & Copyright Journal (Bloomberg BNA July 13, 2017).
• Author, chapter on patent law in Fashion Law and Business: Brands and Retailers, by Lois F. Herzeca and Howard S. Hogan (Practising Law Institute (2013).
• Co-author with Jennifer Reardon, “Non-Party . . . Party?  When It Comes to Deleted ESI, Is There a Difference Anymore?” (Bloomberg BNA 2014).
• Co-presenter with Dana Lynn Craig, “What Is E-Discovery?” (Orange County Bar Ass’n 2017).
• Author, “Treaties and Federal Question Jurisdiction: Enforcing Treaty-based Rights in Federal Court,” Loyola of Los Angeles L.R. (2007).
• She is also a regular contributor to the firm’s client alerts relating to intellectual property and e-discovery law developments.

Ms. Wallace earned her law degree in 2008 from Loyola Law School, where she graduated magna cum laude and Order of the Coif. She served as an Editor of the Loyola of Los Angeles Law Review.  She received a Bachelor of Arts degree in 2002 from Brown University with a major in Environmental Studies.

Ms. Wallace is admitted to practice in the State of California.  She is also admitted to practice at the Federal Circuit, and in the Central and Northern Districts of California and the Eastern District of Texas.

Casey McCracken
Associate Attorney, Gibson, Dunn & Crutcher LLP