Areas of Practice
As one of the first generation of lead IP trial lawyers in the Silicon Valley, Ed has litigated some of the historic IP cases in the Silicon Valley and the International Trade Commission. Ed has represented national and international clients in the computer, consumer electronics, medical device, semiconductor, software, and telecommunications industries for more than 40 years. He has extensive litigation and jury trial experience in complex intellectual property, antitrust and commercial cases before Federal, State and Appellate Courts, and especially before the International Trade Commission. Ed has provided experienced counsel to a wide range of major and emerging technology companies in managing their intellectual property interests. Ed also has extensive mediation and arbitration experience, both as a representative and as an arbitrator and mediator. He is a frequent speaker at industry and academic workshops on intellectual property and arbitration issues.
Ed has consistently been recognized as one of the top intellectual property attorneys in California and the United States. Ed has been named one of Silicon Valley’s top 300 lawyers and for multiple years was named one of the Daily Journal’s leading IP litigators in California. Ed is recognized in the 2019 and numerous prior editions of The Best Lawyers in America and SuperLawyers in Intellectual Property Law. He was recognized by Legal 500 as being one of the best-known ITC practitioners, having served as lead counsel in numerous ITC litigation cases, noting that he is a “responsive, smart and an excellent attorney.” His marquee clients have included ATT; Canadian Solar; Centrify Software; Chevron; Digital Instruments; Etec Systems; LG Electronics; Hyundai Electronics; JDS Uniphase; Integrated Device Technology; NexGen Semiconductors; LendingTree; Microsoft; Monster; Mosel-Vitelic; PCTel; ProMOS; QuickLogic; Lotes; Samsung; STMicroelectronics; Tandem Computers; Toho Titanium; and Xilinx.
Ed also has played a critical role in the establishment, leadership and growth of intellectual property practices for four law firms since the earliest days of the Silicon Valley. Ed started his career with Pillsbury, Madison and Sutro as a summer associate, associate and partner from 1977 through 1993, where he led the effort to build its intellectual property practice in the Silicon Valley starting in 1981. The practice group joined Skjerven Morrill MacPherson LLP starting in 1993, where he became the firm’s managing partner and led the firm's growth to over one hundred and thirty attorneys, the largest IP firm in Silicon Valley history. In 2003, the practice group joined Sidley Austin LLP where Ed was a founding partner of the Silicon Valley office and led Sidley’s Northern California IP practice and Nationwide ITC practice for almost a decade. In 2012, Ed joined the Silicon Valley office of Sheppard Mullin LLP and has served as its co-managing partner and head of its ITC practice.
Throughout his career, Ed has undertaken numerous leadership roles in the profession as well as in serving organizations in his community. As a young lawyer, he undertook numerous pro bono matters for the ACLU and the Silicon Valley Law Foundation. Later Ed joined the Board of the Silicon Valley Law Foundation, the largest provider of pro bono legal services in the Silicon Valley, where he has served for more than 20 years. Ed also has served on the boards of educational institutions. He served for 17 years, including three years as President, on the Board of Lick-Wilmerding High School, a San Francisco private high school with the public purpose of serving a diverse and inclusive community. He served from 1998 to 2005 as a Board Member and Vice President of the Hamlin School for Girls in San Francisco. He served from 2007 to 2014 as a Board Member of the Stanford Law School Board of Visitors and has served as a Reunion chair, class leader and volunteer of the Stanford Class of 1975 and Stanford Law School Class of 1978 reunion and giving efforts for numerous years. Ed is a native San Franciscan and an Eagle Scout. Ed also has served on the Board of San Francisco Beautiful, the St. Francis Wood Homes Association, Western Neighborhoods Project and the parish council of St. Mary the Virgin Episcopal Church in San Francisco.
Ed has acted as lead trial counsel in Federal Courts nationwide, the U.S. International Trade Commission, California state courts and as appellate counsel before the Federal and Ninth Circuit. Ed has represented clients in over a dozen investigations through or shortly before trial in the U.S. ITC, including successfully trying two ITC cases during a single summer. He is currently and has recently represented clients in significant competitor IP litigation pending in the ITC; the Eastern District of Texas; the Northern District of California; the Central District of California; the District of Delaware; the Eastern District of Virginia; the Western District of North Carolina; the District of Utah; the District of Massachusetts; the District of Colorado; and the Superior Court of Santa Clara County in California. Representative engagements include the following litigation matters:
Extensive trial experience in the International Trade Commission:
•In Re Certain LTE and 3G Compliant Cellular communication Devices, 337-TA-1138. Representing HTC in a pending ITC case before Judge McNamara.
•In Re Footwear Products, 337-TA-936 (2015). Representing a respondent in a pending ITC case before Judge Bullock filed by Converse concerning trademarks.
•In Re Earpiece Devices Having Positioning and Retaining Structure and Components Thereof, 337-TA-912 (2014). Represented Monster in an ITC case filed by Bose concerning headphones. Favorably settled two weeks before trial.
•In Re Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same, 337-TA-855 (2012). Represented Monster in an ITC case filed by Hitachi concerning headphones. Favorably settled three weeks before trial.
•In Re Integrated Solar Power Systems and Components Thereof, 337-TA-811 (2011). Represented Canadian Solar in an ITC case filed by Westinghouse Solar, Inc. concerning solar panels. Favorably settled before trial.
•In Re Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same Investigation, 337-TA-605 (2007). Represented respondent STMicroelectronics N.V. The complainant, Tessera Technologies, Inc., asserted two patents against ST NV and other respondents Qualcomm, Motorola, Freescale, AMD and Spansion. Acted as lead counsel for all respondents at a three week trial. The ALJ ruled that the respondents did not infringe the asserted patents. Subsequently the Commission reversed the ALJ's determination but, after remand, no exclusion order was entered. The matter was later settled.
•In Re Certain Semiconductor Memory Devices and Products Containing Same, 337-TA-470 (2002) (Micron Technology, Inc. v. Mosel Vitelic). Represented respondent Mosel Vitelic Corporation in a patent investigation brought against Hitachi’s and Elpida. The litigation settled favorably before trial.
•In Re Certain Programmable Logic Devices and Products Containing Same, 337-TA-453 (2001). Represented respondent Xilinx in an investigation by Altera involving patents relating to programmable logic device semiconductor chips. The investigation settled favorably for our client prior to trial.
•In Re Certain Field Programmable Gate Arrays and Products Containing Same, 337-TA-441 (2000). Represented complainant Xilinx in patent infringement investigation against Altera involving semiconductor circuit patents, asserting three patents on field programmable gate arrays. Acted as lead counsel in a three week trial. The investigation settled favorably for our client after trial.
•In Re Certain HSP Modems, Software and Hardware Components Thereof, and Products Containing Same, 337-TA-439 (2000). Represented complainant PCTel in patent infringement investigation involving telecommunication modems, filed against ESS. Acted as lead counsel in a three week trial. The ALJ ruled that ESS infringed one of PCTel's patents. The investigation settled favorably for our client.
•In Re Certain Semiconductor Memory Devices and Products Containing Same, 337-TA-414 (1998). Represented respondent Mosel Vitelic Corporation in a patent investigation brought by Micron Technology with respect to six semiconductor process patents. Acted as lead counsel in a four week trial. Micron withdrew three patents prior to trial and after trial, the ALJ found that all three remaining patents were not infringed, invalid over prior art, unenforceable due to inequitable conduct, and lacking a domestic industry (a so-called “grand slam” defense victory). Thereafter, the investigation was settled.
•In Re Certain Catalyst Components and Catalysts For The Polymerization of Olefins, 337-TA-307 (1989). Represented respondent Toho Titanium in patent infringement investigation brought by Montedison and Himont. The investigation settled favorably for Toho shortly before trial.
•Trial counsel in the ITC for numerous other parties settled before trial.
Extensive trial experience in Federal District Courts, including experience in the District Courts in California, the District Court of Delaware and the District Courts of Texas:
•Trial counsel for ZTE Corporation in a case brought by TFT in the Eastern District of Texas (2015). Following a favorable Markman ruling, the case was favorably resolved.
•Trial Counsel in numerous patent cases for Centrify Software, including cases brought by ORG Structures and SoftVault. (E. D. Texas and N. D. CA, 2012 -15). Cases favorably resolved.
•Trial Counsel in numerous patent cases for Corsair Components, including cases brought by Better Mouse, Data Carriers, EDigital, Novocrypt (E. D. Texas and N. D. CA, 2013 -15 ). Cases favorably resolved.
•Trial Counsel for Aerohive in patent cases brought by Airtight and Linex (E. D., S. D. Florida and N. D. CA, 2012 -15 ). Cases pending.
•Trial Counsel for LendingTree brought against Zillow and others. (W. D. North Carolina, 2012-15). Case pending in the Federal Circuit.
•Trial Counsel for LendingTree brought by Internet Patent Corporation ( N. D. CA, 2012 -15). Summary Judgment granted for LendingTree and upheld by the Federal Circuit.
•Trial Counsel for Lotes in patent case brought by Hon Hai Corporation ( N. D. CA, 2012 -15). Case stayed and pending reexamination.
•Trial Counsel for Nextec in patent case against Brookwood (S. D. NY, 2012). Matter pending.
•Trial Counsel for Walmart in cases brought by Round Rock and JC Trading. (D. Del. 2013 -2014). Cases favorably resolved.
•Trial Counsel for Centrify Software in patent litigation against Quest Software (N. D. CA, and D. Utah, 2011). Cases favorably resolved.
•Trial Counsel for STMicroelectronics in Breach of Contract and Unfair Business Practice by STMicroelectronics against Eli Harari (2009). Case favorably settled shortly before trial.
•Trial Counsel for Cordis and Johnson and Johnson brought by Target and Boston Scientific in the Northern District of CA. (2008). Case favorably settled shortly before trial.
•Trial Counsel for ST Microelectronics in a patent case brought by BenQ America in the Northern District of CA. (2005). Case successfully dismissed on motion.
•Trial Counsel for STMicroelectronics in a patent and antitrust Case for STMicroelectronics filed by SanDisk (2005). Case favorably settled.
•Trial Counsel for Nanometrics in a case brought by KLA/Tencor in the Northern District of CA. (2005). Case favorably settled.
•Trial Counsel for ATT in a trade secret case brought by Excite/At Home in the Northern District of CA. (2004). Case favorably settled.
•Trial Counsel for Microsoft in a patent case brought by Burst in the Northern District of CA. (2003). Case favorably settled.
•Trial counsel for Mosel Vitelic in patent litigation against Micron in District of Delaware (2000). Extensive press reports that the case was settled favorably for Mosel on the first day of trial.
•Trial counsel for Samsung in patent litigation brought against Northern Telecom in the Northern District of CA. (1998). Case favorably settled before trial.
•Trial counsel for Samsung in patent litigation brought by Northern Telecom in the Northern District of CA. (1997). Case favorably settled before trial.
•Trial counsel for QuickLogic in patent litigation brought by Actel the Northern District of CA. (1996). Settled favorably before trial.
•Trial counsel for Digital Instruments against Topometrix in patent litigation in the Northern District of CA. (1994). Favorably resolved.
•Trial counsel for Uniphase in patent litigation brought by Spectra Physics the Northern District of CA. (1993). Settled favorably two weeks before trial.
•Trial counsel for Integrated Device Technology in patent litigation filed against AT&T in the Western District of Texas (1992). Settled favorably shortly before trial.
•Trial counsel for NexGen in patent dispute with Intel (N. D. Cal. 1992). Matter favorably settled.
•Trial counsel for Integrated Device Technology in patent litigation filed against AT&T in the Western District of Texas (1991). Settled favorably shortly before trial.
•Trial counsel for Integrated Device Technology in patent litigation filed by AT&T in the Northern District of CA. (1990). Settled favorably shortly before trial.
•Trial counsel for Alameda Instruments in patent litigation brought by Athens Corp. in the Northern District of CA. (1989). Settled favorably after trial.
Extensive trial experience in patent, trademark, trade secret and antitrust cases over a thirty year period:
•Benson, et al. v. Chevron (Antitrust)
•DeLaveaga v. Chevron (Antitrust)
•Etec Systems v. Ateq (Patent)
•Mobil/Philips/Chevron v. Arco/Exxon/Sohio (Contract)
•Motorola v. PCTel (Patent)
•Novadyne v. Tandem (Antitrust)
•Rayteck v. Omega (Patent)
•Spectra Physics v. Uniphase (Patent)
•Townsend v. PCTEL (Patent)
•Unitrode v. Pioneer (Patent)
•VE Corp. v. Esco (Alleged Unfair Business Practices)
•Best Lawyer in America, Best Lawyers, 2011-2019
•Northern California Super Lawyers, Super Lawyers, 2009-2018
•Named to Daily Journal's List of the Top Intellectual Property Lawyers in California, 2008-2009
• Ex-Sidley Austin Patent Attorney Joins Sheppard Mullin, Law360, March 5, 2012
• ITC v the Internet: Fighting to Protect IP Rights Against Online Sales of Infringing Imports, International Law Office, March 5, 2010
• The Battle Brewing Over Kyocera, Law360, December 18, 2009
• General Exclusion Orders in the Wake of Kyocera, International Law Office, November 20, 2009
•Co-authored chapter in Rules, Practices and Case Studies of U.S. Section 337 Investigation, 2012
Intellectual Property Law Blog Posts
• Federal Circuit Extends ResQNet and Allows Discovery of Settlement Negotiations, April 20, 2012
•Rules, Practices and Case Studies of U.S. Section 337 Investigation
•Recent Victories by Sheppard Mullin’s Intellectual Property Group
Legal Times (Korea), March 5, 2015
•Co-Presenter, Strategies for the Counterattack in Section 337 Litigation, The 5th China IP Counsel Congress 2013, Shenzhen, China, March 2013
(Also at Palo Alto Office)
•Special Master and Mediator, American Arbitration Association
•Former Editor, The IP Litigator
•Former Editor, Antitrust Law Developments
•Board Member, Stanford Law School Board of Visitors (2007 to present)
•Board Member and former Vice President, Silicon Valley Law Foundation (1994 to present)
•Board Member and former Vice President, Hamlin School for Girls (1998 to 2005)
•Board Member and former President, Lick-Wilmerding High School (1983 to 1998)