Los Angeles, California 90017
James C. Brooks,
a partner in the Los Angeles office, is a member of the Intellectual Property Group. His current practice focuses primarily on intellectual property disputes, including patent and trade secret lawsuits, between various U.S. and foreign technology companies. During the course of his legal career, Mr. Brooks has had substantial experience litigating and trying complex cases in federal and state courts around the country and in Europe, involving technologies ranging from microprocessor architectures, hardware logic emulation systems, fax and e-mail systems, telephony systems, scanning electron microscopes, automated assembly machines, disk drive operating systems, semiconductor memory chips and semiconductor process flows to pneumatic earth boring tools and pallet storage racks. He has also litigated for medical device manufacturers and blood products companies.
Mr. Brooks has successfully presented appellate arguments in the United States Courts of Appeals for the Federal Circuit, the Second Circuit and the District of Columbia Circuit. He has significant experience before the Federal District Courts, as well as in the United States International Trade Commission (ITC) in Section 337 proceedings, where he has been involved in all phases of an ITC practice, including Temporary Exclusion Order trials, Permanent Exclusion Order trials, sanctions proceedings, advisory opinion proceedings, Commission appeals and appeals to the Federal Circuit.
Mr. Brooks is registered to practice before the United States Patent Office, where he has engaged in patent prosecution, re-examinations and litigated reissue proceedings. In addition to helping his clients manage their patent portfolios, he has prosecuted a number of key patents which have later proved vital to those clients in maintaining and enhancing their market position.
Some of Mr. Brooks’ more noteworthy cases are summarized below:
Fujitsu Limited. Mr. Brooks shares lead counsel responsibilities for Fujitsu, who is asserting multiple patents covering optical amplifier technology in a suit pending in the Northern District of Illinois.
Teligence Corporation. Mr. Brooks is lead trial counsel for Teligence, a Canadian provider of telephone-based networking services, in a large multi-defendant, multi-district patent infringement action currently consolidated in the Central District of California. Mr. Brooks was also lead counsel for Teligence in an earlier action for patent infringement that was brought against Teligence in a Washington State district court but settled favorably for Teligence after Teligence presented a strong showing of patent invalidity during summary judgment argument. Both of these actions involve the field of telephony, telephone switching and IVR technology.
Belkin International, Inc. Mr. Brooks served as co-counsel for Belkin, a major supplier of peripheral computer switching components, in a patent infringement lawsuit originally brought against Belkin in the Eastern District of Texas but successfully transferred by Belkin to a California district court. The case settled very favorably for Belkin.
Acer Incorporated. Mr. Brooks served as co-counsel for Acer Incorporated, the world's third-largest pc and laptop brand seller, in a complicated patent infringement action brought against Acer in the ITC. The action involved multiple patents covering various aspects of pc and laptop design, including microprocessor architecture. During a two-week trial at the ITC, Mr. Brooks conducted cross-examinations of the complainant's expert on microprocessor architecture and one of the named inventors on the microprocessor patent asserted against Acer in the action, as well as direct examination of one of Acer's microprocessor experts. The action settled favorably for Acer after the ITC Staff Attorney sided with Acer, shortly before the Administrative Law Judge was to issue his Initial Determination.
Fujitsu Limited. Mr. Brooks served as co-counsel in a complex, multi-year adversarial negotiation with a major semiconductor company, involving patent portfolios that included patents covering a wide range of technologies from microprocessor design to disk drives to semiconductor processes. The negotiation ended in a successful cross-license for Fujitsu.
Universal Instruments Corporation. Mr. Brooks successfully defended Universal Instruments, a subsidiary of Fortune 500 company Dover Corporation, in a patent infringement suit brought by a patent "troll" in the Southern District of Texas. The suit, closely monitored by members of the electronics industry, involved a software patent directed to robotic assembly machines for manufacturing printed circuit boards used in cell phones, computers, networking equipment, and other electronic devices. Following a three week jury trial, all 17 asserted claims of the patent were found invalid and not infringed - a complete victory for Universal. At trial, Mr. Brooks conducted the cross-examination of one of the two named patentees, as well as all of the plaintiffs’ technical experts.
Cadence Design Systems, Inc. Mr. Brooks, as lead counsel for a multi-office trial team, won a major victory for Cadence before a Northern California jury in a patent and trade secrets trial. The plaintiffs, Mentor Graphics Corporation and Meta Systems, originally accused Cadence and its subsidiary Quickturn Design Systems of infringing six Mentor patents, and of stealing Meta technology. Mentor and Meta sought damages of approximately $1 billion (US) in the case. Cadence prevailed on all counts asserted against it, first invalidating three of the six Mentor patents during summary judgment proceedings. Following a four-week trial, Cadence invalidated the remaining three Mentor patents and defeated plaintiffs’ claims of trade secret misappropriation and other common law causes of action. The jury trial victory for Cadence is remarkable because the Court, prior to trial, had found that Quickturn infringed two of the three remaining patents presented to the jury. The jury nevertheless invalidated all three of these patents, including the two subject to the Court’s infringement findings. Mr. Brooks' victory was selected as Defense Verdict of the Year by the San Francisco Daily Journal and a Top Ten Defense Verdict for 2003 by the National Law Journal.
Quickturn Design Systems, Inc. Prior to Cadence’s acquisition of Quickturn, Mr. Brooks successfully represented Quickturn in a series of District Court and International Trade Commission actions seeking to enforce Quickturn’s fundamental hardware logic emulation patents. These actions involved three bench trials and one jury trial which resulted in judgments favorable to Quickturn. One of Quickturn’s ITC proceedings produced the first-ever ITC prohibition against importation of infringing software via electronic transmission, and another resulted in Quickturn obtaining a rare Temporary Exclusion Order.
Quickturn Design Systems. Mr. Brooks also successfully represented Quickturn in a patent infringement action brought against Quickturn by Aptix Corporation, a manufacturer of programmable logic prototyping boards. The action ended in a complete vindication of Quickturn, when the Court determined that Aptix's founder had fabricated certain critical evidence concerning the date the alleged invention was conceived. The Court, in a ruling upheld by the Federal Circuit, thereafter dismissed the action with prejudice and awarded Quickturn $4 million (US) in attorneys fees.
Quantum Corporation. Mr. Brooks successfully represented Quantum Corporation in a series of lawsuits brought to enforce certain basic Quantum patents covering disk drive servo mechanisms. All of these lawsuits settled favorably, some after summary judgment rulings were entered for Quantum, and Quantum received over $16 million (US) in settlement payments.
Cedars-Sinai Medical Center. Mr. Brooks participated as counsel, representing Cedars-Sinai Medical Center in successful enforcement of a Cedars patent dealing with blood products. Royalty payments from numerous medical products manufacturers around the world have totaled in excess of $40 million (US) for Cedars-Sinai.
SEEQ Technology. Mr. Brooks participated as counsel representing EEPROM and EPROM memory chip maker SEEQ Technology in a series of trade secret and patent lawsuits in Federal District Court and before the International Trade Commission. In one of these trade secret suits, SEEQ as defendant was cleared of charges that SEEQ’s co-founders had misappropriated Intel trade secrets when they left Intel to form SEEQ. In another trade secret suit, SEEQ as plaintiff obtained both preliminary and permanent injunctions against Atmel Corporation, preventing Atmel from practicing certain semiconductor process flows originated at SEEQ.
Mr. Brooks continues to successfully represent various other U.S., Asian and European technology companies in complex patent infringement and antitrust lawsuits. He also continues to serve as intellectual property counsel to several of these companies in the areas of patent procurement and technology licensing.
|Areas of Practice||1) Trademark, 2) Copyright & False Advertising Litigation & Counseling, 3) Patent Litigation, 4) Patent Prosecution & Counseling and 5) Trade Secrets Litigation|
|Law School||J.D., Dean's List, Georgetown University Law Center, 1979|
|Education||B.S., Aeronautical and Astronautical Engineering, University of Washington, 1970|
|Bar Member / Association||State bar of California,State bar of Washington|
|Most recent firm||Orrick, Herrington & Sutcliffe LLP|
Coleen M. Meehan is a partner and trial lawyer in Morgan Lewis's Litigation Practice, resident in the Philadelphia office.
David W. Marston, Jr. is a partner in Morgan Lewis's Intellectual Property and Litigation practices and is a member of the firm's Class Action Working Group. He handles all aspects of litigation from inception through trial and post-trial appeals.