Alan A. Limbach

Alan A. Limbach

Partner
About

Alan Limbach concentrates on strategic patent counseling, domestic and foreign patent prosecution, and patent litigation in federal courts, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). Alan also works on IP due diligence and opinions on patent validity and infringement. He has been prosecuting and litigating patents for over 25 years.  

Alan primarily focuses on semiconductor, mechanical, medical, optical, computer, electro-optical, and electronic inventions, with a strong emphasis on semiconductor manufacturing technologies, semiconductor devices including non-volatile memory, and computer system architectures and components. He builds and manages extensive worldwide patent portfolios, and typically serves as the technical lead in patent litigation. Alan also represents clients in patent matters involving LED design and applications, disk drive technologies, and laser based medical devices and procedures.

Bar admissionsCaliforniaUnited States Patent and Trademark Office

EXPERIENCE

Recent Patent Litigation Matters
  • Intellectual Ventures v. Toshiba Corporation – United States District Court, Delaware. Represented Toshiba against claims of patent infringement involving NAND flash memory products. Successfully invalidated one patent in Inter Partes Review. Successfully obtained jury verdict that the remaining patents were invalid or not infringed
  • Optical Devices v. Toshiba Corporation – Represented Toshiba in ITC and district court actions involving optical drive technology.  Successfully invalidated three patents in Inter Partes Review
  • LG Electronics, Inc. v. TSST Corporation – Represented TSST in district court action (Delaware). Successfully invalidated two patents in Inter Partes Review
  • Cypress Semiconductor Corporation v. GSI Technology – United States International Trade Commission. Represented GSI against claims of patent infringement involving SRAM products. Obtained favorable settlement after ALJ found patents not infringed
  • Voxpath v. Toshiba Corporation – Represented Toshiba in a district court action involving optical disc drive technology. Obtained favorable settlement
  • Klausner Technologies v Oracle – Represented Oracle in a district court action involving automated voice mail systems. Obtained favorable settlement
  • Brooks Automation v. Telemark – Represented Telemark in a district court action involving cryogenic refrigeration systems. Obtained favorable settlement
  • Techshell v. Speck Products – Represented Speck Products in a district court action involving protective covers for laptop computers. Obtained favorable settlement
  • Acqis v. Ericsson – Represented Ericsson in a district court action involving blade computer systems.  Obtained favorable settlement
  • Acqis v. Oracle – Represented Oracle in a district court action involving blade computer systems. Obtained favorable settlement
  • Ricoh v. Oki Data – Represented Ricoh in a district court action involving printer and facsimile technologies. Obtained favorable settlement
  • Hewlett-Packard v. Acer – United States International Trade Commission and United States District Court, Eastern District of Texas. Represented HP in asserting claims of patent infringement involving patents covering the structure and operation of read-only memory, central processors and graphics controllers for notebook and desktop computer systems. Obtained favorable settlement after ITC trial before issuance of Initial Determination
  • Hynix Semiconductor v. Toshiba Corporation – United States International Trade Commission. Represented Toshiba against claims of patent infringement involving NAND flash memory manufacturing techniques. In the ALJ's initial determination, both patents-in-suit were found not infringed and unenforceable due to inequitable conduct, and that Hynix failed to prove it had a domestic industry
  • Hewlett-Packard v. Gateway – United States International Trade Commission and United States District Court, Southern District of California. Represented HP in asserting claims of patent infringement involving notebook computers. Obtained favorable settlement of US$47 million after claim construction hearings in both cases
  • Rackable Systems, Inc. v. Super Micro Computers, Inc. – United States District Court, Northern District of California. Represented Super Micro against claims of patent infringement involving server systems. Obtained favorable settlement after key patent claims were held invalid in claims construction proceedings
  • USA Products Group v. Eurow Corporation et al. – United States District Court, Northern District of California. Represented USA Products Group in asserting claims of patent infringement involving automobile seat covers. Obtained favorable settlement early in proceedings
  • Rae Systems Inc. v. Ion Science LTD et al. – United States District Court, Northern District of California. Represented Rae Systems in asserting claims of patent infringement involving photo-ionization detectors. Obtained favorable settlement early in proceedings
Education
  • J.D., Golden Gate University 1994
    with honors
  • A.B., Physics, Occidental College 1985

Prior Experience

Before beginning his legal career, Alan was an applications engineer with Coherent, Inc., specializing in the design and characterization of solid state, dye and gas laser systems.

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