Sean Cunningham focuses on patent litigation, in particular complex patent litigation involving multiple parties, patents and jurisdictions. He has extensive experience handling patent cases through trial in district courts and in the International Trade Commission (ITC).

Mr. Cunningham has represented Fortune 100 technology companies in a number of patent trials, including five jury trials, in the past 10 years. Most recently, he participated in a two-week bench trial in the ITC (Hewlett-Packard v. Acer Computer, in early 2008) and a two-week jury trial in the Northern District of New York (Cornell v. Hewlett-Packard, in mid-2008), which was presided over by Federal Circuit Court of Appeals Judge Randall Rader sitting by designation. That case also involved a three-day bench trial at the Federal Circuit on various equitable defenses, which is believed to be the first evidentiary hearing ever held at the Federal Circuit.

Representative Matters

• Cornell v. Hewlett-Packard – Represented Hewlett-Packard in a patent infringement suit filed by Cornell University involving a patent related to instruction issuance in superscalar processors. The case was tried to a jury in May 2008, resulting in a finding of infringement and validity, but no willful infringement. The case then proceeded to a bench trial before Judge Randall Rader of the Federal Circuit (sitting by designation) on several HP defenses, including inequitable conduct. A decision by Judge Rader is pending.
• Hewlett-Packard v. Acer Computer – Managed multi-jurisdictional patent infringement dispute involving five US lawsuits in three venues and a total of 26 patents (15 asserted by HP; 11 by Acer). The first of two lawsuits in the ITC involving three HP patents was tried in February 2008. The cases were settled favorably for HP while the ITC decision was pending. By the time of the settlement, HP had successfully disposed of four of the 11 asserted Acer patents.
• Hewlett-Packard Company v. Gateway & eMachines – Managed multi-jurisdictional patent infringement offensive against Gateway and its subsidiaries involving 34 patents (23 HP patents and 11 Gateway patents) in lawsuits in the ITC, the Southern District of California, and the Eastern and Southern Districts of Texas. The first ITC trial resulted in a finding of infringement against Gateway on two HP patents, while the second ITC trial resulted in a finding of invalidity and inequitable conduct on a single Gateway patent. Following those trials, the cases were settled favorably for HP.
• Broadcom v. Qualcomm – Managed the defense of multiple patent suits involving cellular technology, primarily in the ITC and the Central District of California. A month-long jury trial of three Broadcom patents in the Central District resulted in a finding of infringement on some but not all asserted claims. The case is presently on appeal.
• Qualcomm v. Nokia – Represented Qualcomm in a multi-jurisdiction patent and licensing dispute with Nokia involving numerous Qualcomm and Nokia patents. The dispute was globally settled on terms favorable to Qualcomm.
• Compression Labs/Forgent Networks v. Hewlett-Packard Company, et al. – Assumed the role of lead defendant in a 40-defendant patent infringement suit filed in the Eastern District of Texas involving a patent related to JPEG image compression. Managed the joint defense group and formulated a strategy for transferring the case to the District of Delaware or the Northern District of California.
• Agilent Technologies v. Micromuse – Managed multi-patent offensive on behalf of Agilent against Micromuse in two lawsuits in the Southern District of New York involving service assurance software products. The suits were settled favorably for Agilent during discovery.
• Plasma Physics v. Agilent Technologies, et al. – Represented Agilent in a multi-party patent suit involving semiconductor manufacturing processes in the Eastern District of New York. The case settled during trial.
• Micron Technology v. Rambus; Hynix v. Rambus; Rambus v. Infineon Technologies – Represented Rambus in a series of patent lawsuits involving semiconductor technology and claims of antitrust violations and related claims based on conduct in the JEDEC standard-setting organization. The Infineon case was tried to a jury in 2001, resulting in dismissal of Rambus’ infringement claims and a fraud finding. The case was reversed in all respects by the Federal Circuit and thereafter settled on terms favorable to Rambus.
• Research Corporation Technologies v. Hewlett-Packard Company – Represented Hewlett-Packard in a patent suit filed by RCT in District of Arizona involving digital halftoning algorithms. The case settled during trial.

PŘIJETÍ

• California
• All California state courts
• United States Court of Appeals for the Federal Circuit
• United States Court of Appeals for the Ninth Circuit
• United States District Court for the Southern District of California
• United States District Court for the Northern District of California
• United States District Court for the Central District of California

Členství

• Federal Circuit Bar Association
• American Intellectual Property Law Association
• Intellectual Property Section, California Bar Association

Publikace

• “Filing and Defending Patents in Different Jurisdictions,” in Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (Centre for the Management of Intellectual Property in Health and Research Development, March 2007)
• “Rambus Decision Sheds Light on Intellectual Property Issues in Industry Standard Setting,” Gray Cary IP Client e-Alert (February 2003)
• “The When, Who, What and Why of Patent Opinion Letters,” Gray Cary IP On-Line News (October 2002)
• “Noncompete, Nonsolicitation and Nondisclosure Agreements,” Gray Cary Employment Law Briefing (February 2000)
• “New Age: Recent Developments Bolster Protections for Older Workers,” Los Angeles Daily Journal (December 1999)

Semináře

• Presenter, “Effective Use of Demonstrative Evidence—Elmos, PowerPoint & Videos,” Second Annual Judith N. Keep Federal Civil Practice Seminar (September 2006)
• Presenter, “Advanced Use of Graphics at Jury Trials—and Well Beforehand,” Chicago Bar Association Seminar on Patent Litigation (January 2005)
• Presenter, “Rambus: The Tension Between Standard-Setting and Patent Law,” 28th Annual Intellectual Property Institute, Intellectual Property Section of the State of California  (November 2003)
• Presenter, “Technology & Antitrust: Setting Industry Stands,” 23rd Annual Institute on Computer Law, Practising Law Institute (January 2003)