Stephen S. Korniczky: Lawyer with Sheppard, Mullin, Richter & Hampton LLP

Stephen S. Korniczky

Phone858.720.7443

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Practice Areas

  • Intellectual Property
  • Copyrights
  • False Advertising, Lanham Act and Unfair Competition
  • Patent Litigation
  • Patent Prosecution and Counseling
  • Trade Secrets
  • Trademarks and Trade Dress
  • Litigation
  • International Practice
  • Antitrust and Trade Regulation
  • Video Game
  • Entertainment, Technology and Advertising
  • Aerospace and Defense
  • Automotive
  • Energy
  • Climate Change and Clean Technology
  • Communications
  • Digital Business
  • Emerging Growth/Venture Capital
  • Life Sciences and FDA
  • Sports
 
University Polytechnic University, B.S., Mechanical Engineering, 1984
 
Law SchoolState University of New York - Buffalo School of Law, J.D., 1987
 
Admitted1988, California; United States Patent and Trademark Office
 
Biography

Mr. Korniczky is a trial lawyer who focuses his practice on patent litigation as well as strategic counseling on patent, trademark, trade secret and copyright matters. He has litigated more than 100 patent and other IP lawsuits, including some of the largest multi-patent infringement actions in the United States. He has invalidated numerous patents asserted against his clients and has substantial experience handling nationwide patent and trademark enforcement campaigns against multiple infringers. He represents internationally based, publicly traded and emerging companies in many areas, including in the automotive, semiconductor, computer, mobile communications, internet/e-commerce, consumer electronics, life sciences and medical device industries.

Most recently, Mr. Korniczky was lead counsel for Defendants HTC Corporation, HTC America and Exdea Inc. (collectively "HTC") in a patent infringement action brought by WiLAN, Inc. in the Eastern District of Texas. WiLAN alleged that HTC infringed its standard essential patent (SEP) covering the 3GPP HSDPA mobile phone standard. After a six day trial, the jury awarded a complete defense victory finding that HTC did not infringe the asserted patent, and that the patent claims are invalid based on anticipation and/or obviousness.

Mr. Korniczky was also lead counsel for Defendants HTC Corporation and HTC America, Inc. in a two-patent infringement action brought by Intellect Wireless in the Northern District of Illinois. At trial, the Honorable William T. Hart ruled that Intellect Wireless had engaged in inequitable conduct before the Patent Office rendering the patents unenforceable and dismissed the lawsuit. The patents covered wireless portable communication devices that receive and display caller ID information, non-facsimile pictures, video messages and/or Multimedia Messaging Service.

In addition, Mr. Korniczky was lead counsel for Defendants, Samsung SDI Co., Ltd. and Samsung SDI America, Inc., in a patent infringement action brought by Honeywell International, Inc. in the District of Delaware. On the eve of trial, he successfully invalidated the patent in suit which related to LCD backlighting technology when the Honorable Joseph J. Farnan granted the motion for summary judgment of invalidity filed by Mr. Korniczky on behalf of his clients. The decision was subsequently upheld on appeal to the U.S. Court of Appeals for the Federal Circuit.

Moreover, Mr. Korniczky successfully defended Norel Corporation in a patent infringement action filed by Plaintiff Church & Dwight Co. et al. in the District of Nevada by invalidating the two asserted patents covering a long chain fatty acid based cattle feed supplement. The court granted our motion for summary judgment invalidating the first patent and the U.S. Patent and Trademark Office granted our request for reexamination finding all the claims in the second patent unpatentable.

Mr. Korniczky is registered to practice before the U.S. Patent and Trademark Office, and has significant experience prosecuting patent applications. He utilizes his combined prosecution and litigation background to advise clients on business oriented IP licensing and portfolio development strategies. He has successfully designed and implemented value-added strategies to raise venture capital, generate licensing revenue, cross-license competing IP and position companies for acquisition.

For example, Mr. Korniczky designed and implemented a patent strategy for Cameron Health, a Carlsbad medical device company, to protect its Subcutaneous Cardio Implantable Defibrillator (S-ICD) system and attract over $25 million in venture capital. Subsequently, Cameron Health received an equity investment from Boston Scientific in exchange for an exclusive option to buy the company.

Clerkships

· Judicial Law Clerk to the Honorable Giles Sutherland Rich, U.S. Court of Appeals for the Federal Circuit from 1991 to 1993

Experience

Representative Cases

High Technology

· Allied Steel & Tractor Products, Inc. v. Pierce Arrow Int'l, Inc., et al. (E.D. Wis.)

· Represented the plaintiff/patentee in a 3-week infringement trial involving a patent in the pneumatic tool industry. The patent was held valid and infringed, and $14 million in damages were awarded.

· Conexant Systems, Inc. v. Novellus Corporation (Orange County Sup. Ct.)

· Arbitrated an indemnity action on behalf of Conexant against supplier of semiconductor manufacturing equipment. Client was awarded a confidential sum of money.

· Directed Electronics, Inc. v. Allen Hayes and LTH Electronics (S.D. Cal.)

· Represented plaintiff in a multiple patent infringement action in the field of electromagnetic sensors in the vehicle security industry. Case settled after preliminary injunction obtained.

· Directed Electronics, Inc. Patent Enforcement Campaign (California, Texas and New York District Courts)

· Represented plaintiff in a multiple patent infringement action against over 40 infringers in the field of electromagnetic sensors in the vehicle security industry. Consent judgment, permanent injunctions and/or damages obtained in all cases.

· Intellect Wireless v. Sharp Corporation, et al. (N.D. Ill.)

· Represent Defendants Hewlett-Packard Co. and Palm, Inc. in a two patent infringement matter regarding wireless portable communication devices that receive and display caller ID information, non-facsimile pictures, video messages and/or Multimedia Messaging Service. Judge Pallmeyer granted HP/Palm's motion for summary judgment that the patent is not directly infringed and dismissed the case.

· Litex, Inc. v. Delphi Automotive Systems Corp. et al. (D. Mass)

· Represented plaintiff in a two patent infringement action covering non-thermal plasma enhanced catalytic converters for reducing pollutant emissions from motor vehicles. Case settled in arbitration under confidential terms.

· MediaTek, Inc. v. Sanyo Electric Co. (E.D. Tex.)

· Represented plaintiff in a three patent infringement action covering integrated chipset solutions for compressing video and audio data in cameras, DVDs and televisions. Case favorably settled on eve of trial. Client valued settlement at $200 million.

· Taiwan Semiconductor Mfg. Co. v. Semiconductor Mfg. Int'l Corp. (N.D. Cal.)

· Represented defendant in an action of over $1 billion in damages claimed based on the alleged misappropriation of trade secrets and infringement of fourteen patents regarding a variety of semiconductor fabrication processes, SRAM designs and related technologies. Case favorably settled for a cross-license in exchange for $175 million.

· Turn-Key-Tech LLC v. Hitachi-Maxwell Ltd., et al. (S.D. Cal.)

· Represented plaintiff in a patent infringement action in the field of injection molding. Case favorably settled and defendant agreed to license patent under confidential terms.

· Wi-LAN Inc. v. Research in Motion, et al. (E.D. Tex.)

· Represent defendant Personal Communications Devices, LLC in a two patent infringement action against sellers of cell phones. The matter settled favorably.

Life Sciences and Medical Devices

· Amersham Pharmacia Biotech, Inc. v. The Perkin-Elmer Corporation (and Celera Genomics) (N.D. Cal.)

· Represented the plaintiff/patentee in an infringement action in the DNA sequencing industry seeking over $1 billion in damages. Won motion for summary judgment that patent is infringed. Case favorably settled on confidential terms.

· IDEXX Laboratories, Inc., et al. v. Neogen Corporation (D. Conn)

· Represented the plaintiffs in a patent infringement action in the field of diagnostics for E.coli and total coliforms. Case favorably settled after preliminary injunction obtained.

· Environetics, Inc. et al. v. Millipore Corporation (D. Conn)

· Represented Plaintiffs Environetics, Inc., Access Medical Systems, Inc. and two Yale Professors in a patent infringement action against Millipore Corporation to enforce a patent covering a system for testing water samples for the presence of certain bacteria and microbes, specifically E. coli and coliforms. On the eve of trial, Millipore agreed to exit the business, discontinue selling its infringing product and pay Plaintiffs a confidential sum of money.

· Edberg v. CPI-The Alternative Supplier, Inc. (D. Conn.)

· Represented plaintiff in patent infringement suit to enforce patents covering diagnostic for E. Coli and total coliforms. Case favorably settled.

· GenSci Regeneration Lab., Inc. v. Osteotech, Inc. (C.D. Cal.)

· Represented Plaintiff in declaratory judgment, unfair competition and business tort action involving bone regeneration patents and technology. Case favorably settled.

· Nanogen, Inc. v. Motorola, Inc., et al. (S.D. Cal.)

· Represented the plaintiff in a declaratory judgment action of non-infringement and patent invalidity in the area of DNA biochip arrays. Case favorably settled.

Copyright/Trademark/Trade Secret

· DigiVision, Inc. v. DigiVision Satellite Services, Inc., et al. (S.D. Cal.)

· Successfully represented plaintiff, a national video enhancement technology producer, against trademark infringer. Case settled in mediation after defendant agreed to discontinue use of mark.

· Laminating Co. of America v. Tri-Star Laminates (C.D. Cal.)

· Represented the defendants in a trade secret theft action in the printed circuit board industry. Case favorably settled.

· Martin v. Walt Disney Internet Group and ESPN (S.D. Cal.)

· Successfully defended Disney and ESPN against motion for preliminary injunction. Decision was subsequently upheld by the Ninth Circuit Court of Appeals.

· Microsoft Corporation v. Lindows.com, Inc. (W.D. Wa.)

· Represented defendant, a computer operating system developer, in trademark and unfair business practice action. Defeated Microsoft's motion for preliminary injunction and obtained ruling from the Court questioning the validity of the "Windows" trademark.

Honors

· Mr. Korniczky is a fellow in the Litigation Counsel of America. In addition, he is listed in Chambers USA and Legal 500, and is recognized by his peers as among "The Best Lawyers in America." He has also been honored as one of the "Top 30 IP Attorneys in California" by the Daily Journal, a "San Diego Super Lawyer," and one of the "Top 10 IP Litigators in San Diego" by the San Diego Daily Transcript.

Memberships

· Committee Member, 2014 USC Intellectual Property Institute

· American Bar Association - Amicus Brief Committee

· American Intellectual Property Law Association - Federal Litigation Committee, Model Patent Jury Instructions Subcommittee

· Juvenile Diabetes Research Foundation, San Diego Chapter - Board Member; Chair, Promise Ball Sponsorship Committee

· Polytechnic University Alumni Association - Executive Council (1997-2001)

· San Diego Intellectual Property Law Association - president, 2000-2001, Board member (1997-2002)

· State Bar of California

· San Diego County Bar Association

Articles

· "Federal Circuit Affirms Inequitable Conduct Determination Under Therasense "But For" Exception and Reaffirms Significance of Rohm & Haas," Sheppard Mullin Intellectual Property Law Blog, October 9, 2013

· "Lawyers Explains How To Bag A Patent Troll At Trial," Forbes, July 23, 2013

· "Lawyers Weigh In On Obama 'Patent troll' Initiatives," Law360, June 5, 2013

· "Q&A With Sheppard Mullin's Steve Korniczky," Law360, May 3, 2013

· "Ex-Sidley Austin Patent Attorney Joins Sheppard Mullin," Law360, March 5, 2012

· "Vying for the Best in Intellectual Property," Daily Journal, February 9, 2011

· "Building A Great Wall For Your Intellectual Property in China - Challenges and Opportunities for U.S. Companies" (2004)

· "Verdict Forms: A Peek Into The 'Black Box'," Jury Trials In Patent And Other High Tech Litigation § V (1995)

· "An Alternative View: The Hilton Davis Decision," New Matter, State Bar of California Intellectual Property Section, Vol. 21, No. 4 (Winter/Spring 1997)

· "Supreme Court Clarifies Doctrine of Equivalents," San Diego Business Journal (March 31, 1997)

· "Proving Infringement In View Of Markman v. Westview Instruments, Inc., and Hilton Davis Chemical Co. v. Warner-Jenkinson Co.: Who Does What and When?," Advanced Intellectual Property Litigation Techniques 101-119 (December 1995) (also on file with the American Bar Association)

· "So Your Company is Growing and Prospering: Are Your Patents Still Enforceable?," San Diego Business Journal, Vol. 19, No. 21 (May 25, 1998)

· "How to Expand the Value of Your Patent Portfolio," San Diego Business Journal, Special Law Report Section (February 24, 1997)

· "China Issues White Paper Setting Forth Efforts, Progress In Protecting IP," San Diego Transcript, Law Week 2005 (May 3, 2005)

· "China's Intellectual Property Law Changes Will Help U.S.," Los Angeles Daily Journal, August 9, 2004

· Editor, San Diego Intellectual Property Law Association Newsletter, 1998

Speeches

· "Thinking Outside The Box - A Case Study For Defeating The Patent Troll," The State Bar of California 31st Annual Intellectual Property Institute, Santa Barbara (November 2-4, 2006)

· "A View From the Bench - Exploring Regional Patent Litigation Practices in the California District Courts," The State Bar of California 30th Annual Intellectual Property Institute, Napa Valley (November 4-5, 2005)

· "Patent Litigation - Local Rules and Practices in the California Courts - Using Early Discovery Rules, Markman Hearings, and Court Directed Settlement Conferences to Manage and Budget Your Case," The State Bar of California 29th Annual Intellectual Property Institute Conference, Anaheim (November 6, 2004)

· "Inequitable Conduct - Knaves, Jackals and Defiling the Temple of Justice," ABA - Section of Intellectual Property Law, Summer IPL Conference, San Diego (June 19, 2003)

· Co-chair, "Patent Procurement, Licensing and Litigation In China," the Center for American and International Law, ILT Forum, San Francisco (January 19-20, 2006)

· "Building A Great Wall For Your Intellectual Property in China - Challenges and Opportunities for U.S. Companies" (2004)

· "Understanding Intellectual Property Strategies Under The New Accounting Model," San Diego (March 28, 2002)

· "Owning Markets: Proven Strategies For Intellectual Property Success," San Diego (April 26, 2002)

 
ISLN900626898
 

Documents by this lawyer on Martindale.com

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Federal Circuit Affirms Inequitable Conduct Determination Under Therasense “But For” Exception and Reaffirms Significance of Rohm & Haas
Martin Bader,Stephen S. Korniczky,Matthew M. Mueller, October 14, 2013
Today, the Federal Circuit upheld the District Court’s inequitable conduct verdict based on the submission of false affidavits to the United States Patent & Trademark Office (“PTO”). Intellect Wireless, Inc. v. HTC Corp., 2012-1658. In its precedential opinion, the Federal...


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Office Information

Stephen S. Korniczky

12275 El Camino Real, Suite 200 (Del Mar Heights)
San DiegoCA 92130




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