News & Analysis

Bloomberg Law has named Kayvan Noroozi as one of five intellectual property lawyers nationwide whom "you should know," identifying him as a lawyer who is "changing the game" in the field.

Intellectual Asset Magazine, a leading publication in the field of intellectual property management, has once again named Kayvan Noroozi among its highly selective list of the IAM Strategy 300: The World's Leading IP Strategists. According to IAM, the list identifies "world-class IP strategists" who are "leading the way in the development and implementation of strategies that maximize the value of IP portfolios." The selection is Mr. Noroozi's second in a row. IAM has described Mr. Noroozi as "highly experienced at trial, before the Federal Circuit and in inter partes review proceedings," particularly recognizing "his profound expertise on SEPs and Section 101," as well as his "successes on behalf of industry leaders."

Based on peer reviews and independent analysis, Super Lawyers has once again named Kayvan Noroozi to its list of Southern California Rising Stars. Super Lawyers has recognized Mr. Noroozi as a Rising Star in every year since 2014, when Noroozi PC was founded.

In two Rule 36 decisions, the Federal Circuit has affirmed the validity of multiple claims of Lighting Science Group's U.S. Patent 8,967,844. Noroozi PC represented Lighting Science Group as lead counsel on appeal. The '844 patent is directed to low-profile recessed LED downlights, and has been widely licensed. The patent is also the subject of several pending litigation matters between Lighting Science Group and major LED companies, who now face invalidity estoppel bars under 35 U.S.C. § 315.

In a series of decisions this month, the PTAB rejected four of five IPR petitions (80%) brought by LED giants Nichia and Osram against three patents owned by Noroozi PC's client, Lighting Science Group ("LSG"). See IPR2019-01260, -1261, -1487, -1488. LSG has asserted the three patents at issue in a pending ITC investigation against Nichia, Osram, and eight other leading companies in the LED industry. With these decisions, Noroozi PC has now obtained twenty non-institution decisions in favor of patent owners in IPR proceedings.

In summary Rule 36 decisions, the Federal Circuit has affirmed that the PTAB's decisions upholding all claims of Realtime Data's U.S. Patents 9,054,728, 7,415,530, and 9,116,908 were not in error. Noroozi PC represented Realtime Data as lead counsel on appeal and before the PTAB.

On August 27, 2019, the PTAB issued a final written decision upholding the validity of all challenged claims of a wireless communication patent owned by Noroozi PC's client, Vivato Technologies.

On June 25, 2019, the PTAB entered a final written decision upholding all challenged claims of a patent covering double-sided USB devices, finding in favor of Noroozi PC's client Reversible Connections, LLC.

On June 20, 2019, the International Trade Commission announced that it has launched an investigation into patent infringement and false advertising claims brought by Noroozi PC's client, Lighting Science Group Corporation.

On May 22, 2019, the Federal Circuit issued a highly rare reversal and remand of a PTAB invalidity decision in an inter partes review proceeding.

Serial IPR challenges had become a fixture of PTAB practice until the PTAB's decision in Realtime v. NetApp, in which the Board ruled in favor of Noroozi PC's client Realtime Data and refused to institute a follow on petition because another party had previously brought a similar challenge to the same patent.

The conflicting views on standard essential patents expressed by the Department of Justice, Federal Trade Commission, and certain district court judges has become the subject of widespread interest in the patent community.

On May 25, 2018, the Patent Trial and Appeal Board ("PTAB") issued a final written decision upholding all claims of Realtime Data's U.S. Patent 9,054,728. The decision sided against Dell, EMC, HP, HP Enterprise, Teradata, and Veritas, each of which was represented by major law firms.

On May 15, 2018, the Patent Trial and Appeal Board ("PTAB") issued a final written decision upholding all challenged claims of Realtime Data's U.S. Patent 7,415,530. The decision emphasized that Petitioners' allegations could not be "reconcile[d]" with the cross-examination admissions of their expert witness.

In a unanimous decision issued on May 3, 2018, the full Federal Circuit denied LG's request that the court reconsider, en banc, its precedential decision in Core Wireless v. LG, 800 F.3d 1356 (Fed. Cir. 2018). LG had argued that the decision was "entirely inconsistent" with the Supreme Court's decision in Alice v. CLS Bank, and created a "sweeping exception" to that case.

On April 10, 2018, the Patent Trial and Appeal Board ("PTAB") issued a decision in which it fully denied institution of an inter partes review challenge filed by Commvault Systems, Inc. against U.S. Patent 9,054,728, belonging to Realtime Data LLC.

On March 27, 2018, the Patent Trial and Appeal Board fully denied institution of an inter partes review challenge brought by Unified Patents against Noroozi PC's client, Realtime Data. Citing numerous "deficiencies" in the Unified Patents petition, the Board found the petition inadequate to warrant further consideration. The patent at issue, U.S. Patent 8,717,204, is directed to accelerated transmission of data using data compression and decompression.
 

The Assistant Attorney General of the United States for the Antitrust Division, Makan Delrahim, recently announced a significant policy shift in the DOJ's view of potential antitrust concerns with respect to standard-essential patents and FRAND commitments.

In recognition of the firm's recent victory against Apple, ALM has featured the firm in its "Skilled in the Art" IP briefing for the second time in two months.

On Monday, March 19, Noroozi PC obtained its fifth victory in five consecutive business days. The Patent Trial and Appeal Board issued a decision fully denying institution of an inter partes review challenge brought by Commvault Systems, Inc. against U.S. Patent 7,415,530, belonging to Realtime Data LLC.

On March 15, 2018, the Patent Trial and Appeal Board fully denied institution of an inter partes review challenge brought by Commvault Systems, Inc. against U.S. Patent 9,116,908, belonging to Realtime Data LLC.

On March 14, 2018, the PTAB denied a request for adverse judgment brought by petition Commvault Systems, Inc. with respect to certain claims of U.S. Patent 8,717,204, owned by Realtime Data LLC. CBM2017-00061, Paper 18. Commvault had filed a petition for Covered Business Method Review ("CBM"), challenging all thirty claims of the '204 patent.