William S. Coats

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East Palo Alto,  CA  U.S.A.
Phone650.289.7889

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Practice Areas

  • Intellectual Property & Technology
  • Intellectual Property Litigation
 
Contact InfoTelephone: 650.289.7889
Fax: 650.328.8508
http://www.gtlaw.com/People/William-S-Coats
 
University University of San Francisco, B.A., 1972
 
Law SchoolUniversity of California, Hastings College of the Law, J.D., 1980
 
Admitted1980, California; U.S. Court of Appeals for the Federal Circuit; U.S. Court of Appeals for the Ninth Circuit; U.S. District Court for the Central District of California; U.S. District Court for the Eastern District of California; U.S. District Court for the Eastern District of Texas; U.S. District Court for the Northern District of California; U.S. District Court for the Southern District of California; Supreme Court of the United States
 
Memberships Santa Clara County Bar Association (President, Blue Ribbon Commission on Diversity in the Legal Profession in Silicon Valley, American Chemical Society); American Bar Association (Past Chair, Section of Science & Technology Law, Computer Law Division, Task Force on Biometrics).
 
BornFresno, California, March 31, 1950
 
Biography

William Sloan Coats focuses his practice on intellectual property litigation, specifically involving patents, copyrights, trademarks and trade secret disputes for the computer, electronics, entertainment and movie industries. He is the past Chair of the Science and Technology Law Section of the American Bar Association and was appointed by the U.S. government to the United Nations Centre for Trade Facilitation and Electronic Business Task Team on Intellectual Property Rights and Related Issues in 2008.

Areas of Concentration

· Patents

· Copyrights

· Trademarks

· Trade Secrets

Professional & Community Involvement

· Member, United Nations Centre for Trade Facilitation and Electronic Business Task Team On Intellectual Property Rights and Related Issues

· Delegate, United Nations Commission on International Trade Law (UNCITRAL) Working Group on Electronic Commerce

· President, Santa Clara County Bar Association's Blue Ribbon Commission on Diversity in the Legal Profession in Silicon Valley, American Chemical Society

· Past Chair, American Bar Association, Section of Science & Technology Law

· Past Chair, American Bar Association, Computer Law Division

· Past Chair, American Bar Association, Task Force on Biometrics

Awards & Recognition

· Listed, The Best Lawyers in America, Technology Law, 2007-2014

· Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013

· Listed, Super Lawyers magazine, Northern California Super Lawyers, 2010-2013

· Listed, The International Who's Who - Internet, e-Commerce and Data Protection, 2011

· Listed, Chambers USA Guide, America's Leading Lawyers for Business, 2010

· Listed, The Best Lawyers in America, Technology Law, 2010

· Listed, Chambers USA Guide, America's Leading Lawyers for Business, Intellectual Property (Patent), 2010

· Listed, The Legal 500 United States, Patent Litigation (Life Sciences/Chemical), 2010

· Listed, The Legal 500 United States, Intellectual Property (Copyright), 2010

· Listed, PLC Which Lawyer?, Intellectual Property, 2010

Professional Experience

Significant Representations

Patents

· Represented Rolls-Royce before the International Trade Commission in In the Matter of Certain Turbomachinery Blades Engines and Components Thereof brought by UTC involving a patent on jet engine fan blades.

· Represented ASUSTeK and ASUS in a patent declaratory judgment action pending in the Northern District of California against Technology Properties Ltd. relating to patents for microprocessor and flash memory storage technologies, and in a patent infringement action brought by TPL in the Eastern District of Texas.°

· Represented HTC in a patent declaratory judgment action against Technology Properties Ltd., pending in the Northern District of California, relating to patents for microprocessor technology, and patent infringement actions against Technology Properties Ltd.°

· Represents ATEN in a patent infringement action against Belkin pending in the Eastern District of Texas, and against Emine pending in the Eastern District of Texas.°

· Represented Acer and Gateway in a patent declaratory judgment action against Technology Properties Ltd.°

· Represented Chunghwa Picture Tubes, Tatung Company and Tatung Company of America in a patent infringement suit relating to photolithography.°

· Represented Toshiba in its declaratory judgment action against a patent holding company in Toshiba America, et al. v. Patriot Scientific Corporation (N.D. Cal. 2005).°

· Lead trial counsel representing In-Three, developer of cutting edge technology that converts 2-D movies into realistic 3-D, against IMAX. In-Three defeated a motion for preliminary injunction filed by IMAX that threatened to shut down In-Three's operations. IMAX v. In-Three (C.D. Cal. 2005).°

· Lead trial counsel for the successful defense of APT against claims of patent infringement by IXYS on APT's industry-leading power MOSFET technology. APT prevailed on summary judgment and was held to not infringe the two patents in suit. In addition, in this pre-KSR case, the court held that the patents were invalid as obvious. The court's summary judgment decision is reported as IXYS Corp. v. Advanced Power Technology, Inc. 321 F. Supp. 2d 1133 (N.D. Cal. 2004). APT's favorable claim construction decision is reported at 301 F. Supp. 2d 1065 (N.D. Cal 2004).°

· Lead counsel for Connectix in resolving copyright, trade secret and patent disputes over the creation of a PlayStation emulator. These disputes were decided in part by the Ninth Circuit in its major fair use decision in Sony Computer Entertainment, Inc. et al. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000).°

· Lead trial counsel for Mesa/Boogie, a leading manufacturer of musical instrument amplifiers, in various patent infringement cases involving amplification circuits:
- Mesa/Boogie, Ltd. v. Bad Cat Amplifier Co., Inc. (N.D. Cal 2008)°
- Mesa/Boogie, Ltd. v. Fender Musical Instruments Corporation (N.D. Cal 2007)°
- Mesa/Boogie, Ltd. v. Korg USA, Inc. and Marshall Amplification, PLC (N.D. Cal. 2005).°

· Lead trial counsel for Indivos, the developer of the Pay-By-Touch biometrics-enabled electronic payment service, in Indivos Corporation v. Biometric Access Corporation (N.D. Cal.), a patent infringement case. Mr. Coats also defended Indivos in a related case in the Western District of Texas (Biometric Access Corp. vs. Pay-By-Touch, et al.).°

· In VMWare, Inc. v. Microsoft, 2003 WL 23857336 (N.D. Cal. 2003), led a team of lawyers who defeated a preliminary injunction motion brought by VMWare based on its patents to enjoin the sale and release of Virtual PC and Virtual Server software by Microsoft.°

· In Gracenote, Inc. v. Musicmatch, served as lead trial counsel for Gracenote, the leader in online and device music recognition and related information services, in a patent, trademark, and breach of contract case.°

Copyrights, Trademarks and Trade Secrets

· Defended OG, International against allegations of copyright infringement and trade dress infringement brought by Ubisoft involving rival dance videogames Get Up and Dance and Just Dance. Successfully defended a preliminary injunction motion brought by Ubisoft, OG International, LTD. et. al. v. Ubisoft Entertainment et. al., 2011 WL 5079552 (N.D. Cal. 2011), allowing the product to be released and summarily affirmed by the Ninth Circuit.

· Representing the DVD Copy Control Association in RealNetworks, Inc., et. al. v. DVD Copy Control Association, Inc., et. al. (U.S. District Court, N.D. Cal. Case No. C08-4548 MHP). The DVD CCA and the major motion picture studios have sued Real Networks for violating the Digital Millennium Copyright Act and being in breach of Real's license with the DVD CCA.°

· In Edelman v. N2H2, Inc., obtained a dismissal of all claims against N2H2, a leading maker of filtering software. The plaintiff, a so-called "researcher" represented by the ACLU, sought a declaratory judgment that he not be liable for violation of the DMCA, infringement of copyrights and trademarks, theft of trade secrets, and breach of contract. This high-profile case was reported at 263 F. Supp. 2d 137 (W.D. Mass. 2003) and 67 U.S.P.Q.2d 1382.°

· In Lucasfilm Ltd. et. al. v. Media Market Group, Ltd. 182 F. Supp. 2d 897 (N.D. Cal. 2002), represented the Lucas entities in a copyright and trademark case involving fair use and parody issues.°

· Represented BBC Technology (the BBC's technology arm) in negotiations for its license to ESPN of its Colledia for Sports product. Colledia for Sports will be part of ESPN's Digital Conversion Project.°

· Sony Computer Entertainment, Inc. et. al. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000). For a description of the engagement, please refer to the Patent section above.°

· Gracenote Inc. v. MusicMatch. For a description of the engagement, please refer to the patent section above.°

· In Sega Enterprises v. Accolade, Inc. 977 F.2d 1510 (9th Cir. 1992), served as lead counsel for Accolade and won a landmark case upholding the reverse engineering of software for compatibility and prohibiting use of trademarks for security systems. In Accolade, Inc. v. Distinctive Software, Inc. 1990 WL 180239 (N.D. Cal. 1990), he also acted as lead counsel for Accolade in the first case involving the ownership and legality of re-using copyrighted software libraries.°

· In Creative Technology v. Aztech Systems PTE 61 F.3d 696 (9th Cir. 1995), acted as lead counsel for Aztech Systems, Ltd. in landmark case regarding software copyright in sound cards and the international choice of law.°

· In LucasArts Entertainment v. Humongous Entertainment, 870 F. Supp. 285 (N.D. Cal. 1993), acted as lead counsel in case of first impression regarding the interrelation of antitrust and copyright law.°

· In IMAX Corp. v. Cinema Technologies, Inc.152 F.3d 1161, (9th Cir. 1998), served as lead counsel and won an often-cited trade secret and patent case.°

· Defended these clients in a copyright infringement case involving the movie, The Lost World: Jurassic Park.°

Standards Bodies

· Represents Pioneer in various copy protection organizations and initiatives, such as the Copy Protection Technical Working Group, The Broadcast Protection Discussion Group, the Analog Reconversion Discussion Group, and many other technical and standards bodies affecting the content and consumer electronic industries.°

· Representing the DVD Copy Control Association in RealNetworks, Inc., et. al. v. DVD Copy Control Association, Inc., et. al. (U.S. District Court, N.D. Cal. Case No. C08-4548 MHP). For a description of the engagement, please refer to the copyright section above.°

· Trial counsel for the DVD Copy Control Association in its case against Kaleidescape, in its efforts to combat unauthorized copying of CSS-protected content and enforce the CSS license and specifications (176 Cal.App.4th 697 (2009)).°

°The above representations were handled by Mr. Coats prior to his joining Greenberg Traurig, LLP.

Publications & Presentations

Articles, Lectures & Publications

William S. Coats frequently speaks on intellectual property issues in the computer, entertainment and music industries.

Speaking Engagements

· Speaker, "Copyright Update," Intellectual Property Law Institute 2013, Practising Law Institute, New York, NY, September 9, 2013 and San Francisco, CA, October 7, 2013

· Moderator, "Current Software Patent Issues," Stanford eCommerce Best Practices Conference, Stanford Law School, Menlo Park, CA, June 28, 2013

· Speaker, "Litigation Update (Part 1) - Rights to Publicity and Privacy; Top 10 Case Study," ABA Forum on the Entertainment and Sports Industries: Video Games and Digital Media Conference, Los Angeles, CA, June 10, 2013

Articles

· Co-Author, "Conflicting Post-Bilski Cases: Classen and CyberSource," IP Law 360, September 16, 2011

· Author, "Federal Circuit's Latest Restriction on Method Patents," IP Law 360, August 19, 2011

· Co-Author, "Twitter's Legal Challenges: Lessons for Startups," E-Commerce Times, September 21, 2009

· Co-Author, "New Tech = New Problems," Corporate Counsel, September 14, 2009

· Co-Author, "Search Engine Advertisements and U.S. Trademark Law: Are American Airlines and Yahoo! in for the Long Haul?" E-Commerce Law Reports, September 2009

· Co-Author, "Fame Dahling: Rights of Publicity and Entertainment Licensing," The Licensing Journal, March 2006

Publications

· Co-Author, "Lara Croft is a Star: Protecting and Licensing Characters in the Video Game and Movie Industries," Practising Law Institute, December 2008

· Co-Author, "From Star Wars to Second Life: User Generated Content and Copyright Law in the Entertainment Industry," 14th Annual Institute on Intellectual Property Law, Course Handbook Series No. 947, Practising Law Institute, 2008, 2008

· Co-Author, The Practitioner's Guide to Biometrics, 2007

· Co-Author, "Phillips v. AWH Corp.: Reaffirming the Claim Construction Status Quo," The Colorado Lawyer, Volume 34, Number 11, November 2005

 
ISLN908327612
 


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William S. Coats

1900 University Avenue, 5th Floor
East Palo AltoCA 94303




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