Expert witnesses play a critical role in patent litigation, particularly where the subject matter is highly technical. The more specialized the technology, the more common it is for an expert witness to have had some prior relationship with the opposing party. To determine whether such an expert should be disqualified, courts analyze the relationship under a three-part test: (1) whether the relationship between the expert and the opposing party was confidential; (2) whether the confidential information that the expert obtained under that relationship is relevant to the present lawsuit; and (3) how granting or denying a disqualification motion may prejudice the parties or affect the integrity of the legal process. A recent opinion from the District of Oregon sheds light on this test. READ MORE
Johannes Hsu draws on his business, technical, and legal acumen developed over more than 20 years in engineering, management, and law to serve technology clients. His experience enables him to take a holistic approach in his legal services.
Johannes's practice focuses on patent litigation, especially in the fields of electronics, circuits, computer and network systems, software, and telecommunications. He has litigation experience in district courts, the Patent Trial and Appeal Board, and the U.S. International Trade Commission. He also leverages his technical and operational experience in data-privacy and data-security matters.
Before joining Orrick, Johannes clerked for the Honorable R. Gary Klausner in the Central District of California. He assisted Judge Klausner on a wide variety of civil matters. In particular, he worked on many intellectual-property disputes involving patents, trademarks, copyrights, and trade secrets. Johannes began his legal career primarily as a patent prosecutor at one of the largest intellectual-property boutique firms in the United States.
Before becoming an attorney, Johannes worked for over 20 years as an engineer in high-tech and aerospace industries. He held increasing responsibilities and was last a manager and a senior principal engineer at one of the top two fabless-semiconductor companies in the world. His work in those positions had a direct and significant impact on virtually every chip of a one-billion-dollar product line. A technical leader and a functional manager, he interacted regularly with upper management in engineering and marketing and worked closely with cross-disciplinary teams. His substantial engineering experience encompasses a wide array of technologies, from communication systems, digital-security systems, to hardware and embedded-software design. In addition to developing digital-security technologies, Johannes also set operational security policies for his engineering organization and developed a secure infrastructure which he led through a successful third-party audit.
Posts by: Johannes Hsu
37 C.F.R. § 42.23(b) limits a petitioner’s inter partes review (“IPR”) reply papers to arguments raised by the patent owner in its opposition. Under this rule, a petitioner cannot assert new invalidity arguments, cite previously unidentified parts of a prior art reference, or introduce new evidence such as a new prior art reference. The line between this and what is merely responsive, however, can be blurry. The Federal Circuit’s recent decision in Ericsson sheds some light on this line. READ MORE
In a rare grant of a mandamus petition, the Federal Circuit made two key holdings related to venue in patent cases in the wake of TC Heartland: (1) Federal Circuit law, not regional circuit law, governs patent-litigation venue; and (2) plaintiffs bear the burden to show proper venue. The court called these “basic” and “undecided” issues and found “exceptional circumstances” to grant the petition, vacating the district court’s denial of a motion to dismiss and remanding the case for application of the proper standard. This precedential order sets a nationwide rule in patent cases on which courts had been divided. READ MORE
On April 24, 2018 the Supreme Court issued two decisions that preserve Inter Partes Review (“IPR”) but dictate changes to IPR procedures. The Court, however, left room for Director Iancu to consider many options to implement changes. Read the full Client Alert here.
Actively inducing patent infringement incurs liability under 35 U.S.C. § 271(b). Inducement occurs when the alleged inducer knew of the patent, knew that the induced act would infringe the patent, and intended to bring about the infringement. Under the plausibility requirement, a complaint incorporating an infringement analysis of a seller’s product can satisfy the requisite knowledge of the patent and of the infringing act. A recent opinion from the Western District of Washington, however, shows that alleging the requisite intent requires more than alleging that a defendant created and distributed general marketing and technical materials about the accused product. Rather, to survive a motion to dismiss, a complaint must include facts connecting the defendant’s acts or materials to an infringing use of the patent. READ MORE
We previously reported here about the Federal Circuit’s guidance in In re Cray, Inc. on what is a “regular and established place of business” for purposes of establishing venue over a corporation in patent infringement actions under 28 U.S.C. § 1400(b). Venue is proper only if the corporation has a “physical place in the district” that is “a regular and established place of business,” and is also “the place of the defendant.” A recent opinion from the Northern District of Illinois applies that guidance to address whether venue lies in a state where a company: (1) is registered to do business as a foreign corporation; (2) has a registered agent for service of process; and (3) maintains several work-at-home employees. Chief Judge Ruben Castillo concludes that, under In re Cray, Inc., these facts are insufficient to establish venue. READ MORE