It’s no secret that patent litigation is expensive—especially when multiple patents and a multitude of claims are in play. In 2015, the American Intellectual Property Law Association estimated the median cost of patent litigation, through trial, ranged from $600,000 in lawsuits with less than $1 Million at risk to $5 Million in lawsuits with more than $ 25 Million at risk. Given this expense and the complexity of these cases, it’s not surprising that courts and parties have sought ways to minimize the resources consumed by patent litigation through various narrowing tools particular to patent lawsuits, including by limiting the number of claims and/or patents litigated in a given lawsuit. READ MORE
Johanna has represented a broad range of technology companies in Federal and State Court, with a primary focus on bio-technology, high-tech laboratory equipment, and the healthcare industry. In addition, Johanna is a member of the firm's life sciences working group.
Johanna is also a registered patent attorney.
Prior to law school, Johanna conducted neuro-physiological research in the Vision Center Laboratory at the Salk Institute. During her time at Boston University, Johanna researched cellular signaling in prostate cancer at the Cancer Research Center in Boston University’s School of Medicine. Johanna also externed at Macropore Biosurgery in San Diego and in the Aerospace and Mechanical Engineering laboratory at Boston University.Some of Johanna's representative engagements include the following:
- AllCells v. Cepheus Bio. Johanna represented AllCells in trade secret litigation related to the commercial purification and sale of primary cells. Johanna successfully obtained a preliminary injunction for AllCells under the DTSA.
- Bio-Rad v. 10X Genomics. Johanna represented 10X and its founders in trade secret litigation, brought by Bio-Rad, related to single cell and genome sequencing.
- Oracle/State of Oregon. Johanna is a member of a team that represented Oracle in high stakes litigation arising from Oregon's failure to launch its health insurance exchange under the Affordable Care Act.
- Fluidigm Corp. v. NanoString Tech. Inc. Represented NanoString Technologies in a case involving allegations of false advertising and unfair competition.
- Blue Spike LLC v. Audible Magic Corp. Johanna is a member of a team that successfully defended Audible Magic Corporation in a patent infringement action brought by Blue Spike LLC. Audible Magic obtained summary judgment of noninfringement for all asserted patents.
- DISH Networks. Johanna is a member of a team that represented DISH Networks and its related entities in various patent infringement litigations.
Posts by: Johanna Jacob
Order Regarding Discovery Dispute Joint Report #1, VIA Tech., Inc. v. ASUS Computer Int’l et al., Case No. 14-cv-3586 (Magistrate Judge Howard Lloyd)
There is a tension in many IP cases between disclosure rules that require a plaintiff to identify its liability theories early in the case, and the understandable desire of the plaintiff to keep open its options for seeking recovery. Some plaintiffs respond to these tensions by stating their allegations in highly general terms, often leading defendants to ask for more specifics. Other plaintiffs attempt to overwhelm their opponents with detail, triggering calls by their opponents to narrow the relevant claims. Sometimes such obfuscatory tactics work, but they can backfire too. That was the recent result in VIA Tech., Inc. v. ASUS Computer Int’l et al., in which a plaintiff seeking recovery for misappropriation of trade secrets was ordered not only to trim its case, but also to disclose the alleged trade secrets to the defendant (rather than only to defense counsel). READ MORE
Order Denying Finjan, Inc.’s Motion for Summary Judgment, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)
In a battle that likely felt like déjà vu for the parties, Finjan for the second time argued its patents were valid over Sophos’s prior art because Sophos failed to produce sufficient evidence of public availability. The first time was in a 2010 Delaware action, when Finjan unsuccessfully made this same argument with respect to similar patents and similar prior art. Those patents were ultimately held invalid based on the prior art. In the present case, Sophos’s invalidity case survived yet again. But Sophos could have had a more resounding victory had it adequately disclosed all of its prior art earlier in the case. READ MORE
Order Denying Defendant’s Motion for Leave to Supplement Invalidity Contentions, MLC Intellectual Property, LLC v. Micron Tech., Inc., Case No. 14-cv-03657 (Judge Susan Illston)
In the Northern District of California, as with other districts, invalidity contentions are meant to crystalize theories early in litigation and prevent the “shifting sands approach to claim construction.” Once disclosed, those invalidity contentions may only be amended “by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. Defendant Micron failed to demonstrate good cause when it recently sought to amend its January 2015 invalidity contentions to add (1) two well-known textbooks from 1973 and 1990 and (2) two of MLC’s non-asserted, expired patents. Judge Illston thus denied Micron’s motion in its entirety. READ MORE
In a recent order in VIA Techs., Inc. v. ASUS Computer Int’l, Magistrate Judge Grewal Court found VIA’s expert disclosures insufficient under the “straightforward” claim construction process of the Northern District’s Patent Local Rules. Despite VIA’s failure to strictly comply with the rules, the Court rejected the “last resort” penalty of striking the expert’s testimony altogether, and instead granted ASUS additional deposition time to inquire into his opinions. In so ruling, the Court considered the “relative banality” of the undisclosed opinions and the weeks remaining before the claim construction hearing. READ MORE
Order Denying Further Discovery, Enplas Display Device Corp., et al. v. Seoul Semiconductor Co., Ltd., Case No. 13-cv-05038 (U.S. Magistrate Judge Nathanael M. Cousins)
A recent order by Magistrate Judge Cousins in Enplas v. Seoul, a case which the NorCal IP Blog previously reported on here, illustrates the perils of failing to diligently pursue discovery. Magistrate Judge Cousins previously permitted the parties to meet and confer and request further discovery, but set a deadline of January 6, 2016. Neither party sought further discovery by that date. READ MORE
Order Re: “Other Enplas Lenses”, Enplas Display Device Corp., et al. v. Seoul Semiconductor Co., Ltd., Case No. 13-cv-05038 (U.S. Magistrate Judge Nathanael M. Cousins)
Sometimes, it works to a patent owner’s advantage not to allege infringement by products other than those specifically identified in preliminary infringement contentions, even where discovery is not complete. This unusual procedural tactic led Magistrate Judge Nathanael Cousins to recently deny summary judgment of non-infringement. READ MORE
Order Granting Motion for Judgment on the Pleadings, Protegrity USA, Inc., et al. v. Netskope Inc., Case No. 15-cv-02515-YGR (Judge Yvonne Gonzalez Rogers)
The NorCal IP Blog has extensively covered the increasing popularity of 35 U.S.C. §101 motions post-Alice, most recently here. In Protegrity, Judge Rogers continued the trend of increased judicial scrutiny of software patents in granting Netskope’s motion for judgment on the pleadings under FRCP 12(c). Judge Rogers granted the motion without the benefit of Markman proceedings or substantial discovery, just eight months after Protegrity filed its complaint. READ MORE
Order Denying Motion for Judgment on the Pleadings, Klaustech, Inc. v. AdMob, Inc., Case No. 10-cv-05899-JSW(Judge Jeffrey S. White)
As noted previously on Orrick’s blog, here, here, and here, 35 U.S.C. §101 motions are gaining increasing popularity post-Alice due in part to their high success rate. In this case, however, AdMob was unsuccessful in its effort to invalidate the at-issue patent after it survived Ex Parte Reexamination proceedings. Ex Parte Reexamination proceedings can only be brought based on patents or printed publications forming either 35 U.S.C. §§ 102 or 103 grounds for rejection, and thus the Patent Office did not during reexamination reach the question of Section 101 invalidity. Nevertheless, Judge White not only agreed with the Examiner’s validity findings, but the findings contributed to his holding that the claims are directed to patent eligible subject matter. READ MORE
Further highlighting the inconsistent treatment of Seagate recently noted on this blog, Judge Donato granted MacAfee’s and Symantec’s motions to dismiss CAP’s willful, induced and contributory infringement allegations, holding that failure to plead pre-suit knowledge of the patents-in-suit precludes recovery. The court held, among other things, that Seagate created a per se requirement that a Patentee move for a preliminary injunction in order to collect post-filing enhanced damages. Judge Donato also held that a complaint is sufficient notice to plead induced and contributory infringement based on post-filing knowledge. READ MORE