Bob Steinberg

  • Partner
  • Ebob.steinberg@lw.com
  • 10250 Constellation Blvd.
  • Suite 1100
  • Los Angeles, CA 90067
  • USA
  • T +1.213.891.8989
  •  
 

Profile

Bob Steinberg is a partner in the Century City office of Latham & Watkins. Mr. Steinberg is a member of the firm's Litigation & Trial Department as well as former Global Co-Chair of the Intellectual Property Litigation Practice and current Chair of Latham’s Patent Trial and Appeal Board (PTAB) Practice. Mr. Steinberg’s contributions to the group’s strategic initiatives, including the development of its PTAB capabilities, were featured in an article in The Recorder, an ALM publication.

Mr. Steinberg is a trial lawyer focusing on patent litigation in the technology sector. His matters include IP disputes involving software, semiconductors, cloud computing, communications, internet, robotics, and automation. He combines his years of IP litigation, IP licensing, and business experiences to provide practical and efficient outcomes litigating contentious disputes, negotiating IP transactions, and strategically helping to manage IP portfolios for many of the Fortune 100 companies. He is a founding member of the national PTAB Bar Association and was elected as the first President to the Association (www.PTABBar.org). He is also a registered patent attorney.

Among his contributions to Latham’s IP Litigation group’s success, he was instrumental in establishing Latham’s PTAB Practice. The group pioneered innovative approaches to the burgeoning area of PTAB proceedings. Mr. Steinberg was recognized as an IP Trail Blazer for his efforts by The National Law Journal.

Prior to joining Latham, Mr. Steinberg worked as the Chairman and CEO of xSides Corporation, a developer of desktop security software. He also spent 11 years at a California-based law firm where he was IP litigation partner and member of the Executive Committee.

Experience

Select Litigation Experience
  • Veritas Operating Corp. v. Microsoft Corp. – Mr. Steinberg represented the patent owner, Veritas Operating Corp. (Symantec) in an action related to critical volume management technology. The case involved claims of patent infringement, trade secret misappropriation, and breach of contract that Veritas brought against Microsoft in the US District Court for the Western District of Washington. The case settled to the mutual satisfaction of the parties.
  • Stac Electronics v. Microsoft Corp. – Mr. Steinberg authored the Stac Electronics patent, which he helped litigate against Microsoft in a suit that asserted that Microsoft had infringed Stac’s patented data compression technology. The case concluded in a month-long jury trial where the jury found that Microsoft infringed on two Stac patents and awarded Stac US$120 million. Afterwards, in a sweeping post-verdict injunction, Microsoft was required to recall infringing products worldwide. The case settled with over US$80 million paid to Stac and a variety of mutually beneficial cross-licenses.
    Other Representative IP Litigation Experience
    • Patent & Insurance Coverage
      • CMG Financial Services v. Pacific Trust Bank et al. – Mr. Steinberg was the lead trial attorney representing Pacific Trust Bank and other defendants in a patent infringement lawsuit brought in the US District Court for the Central District of California. Pacific Trust Bank moved for summary judgment that the patent was invalid under section 101 of the Patent Act because it claimed an un-patentable abstract idea. The court granted summary judgment invalidating every claim of the asserted patents, resulting in a complete victory for Pacific Trust Bank. Mr. Steinberg also represented Pacific Trust Bank in a related dispute with its insurance carrier regarding whether its Bankers Professional Liability insurance policy covered the patent infringement lawsuit. The insurance carrier ultimately agreed to cover the claim and to pay the majority of Pacific Trust’s fees and costs related to the lawsuit.
    • Patent, Antitrust & Unfair Competition
      • Adobe Systems, Inc. v. Wowza Media Systems, Inc. – Mr. Steinberg was lead trial attorney in a patent infringement action and unfair competition claim filed against Wowza Media Systems, Inc. in the US District Court for the Northern District of California over certain protocols for streaming from Adobe’s Flash Media Server. Wowza developed a competing server to the Flash Media Server called the Wowza Media Server. Wowza counter claimed for fraud, Sherman 2 Act violation, and unfair competition. Latham filed a motion to strike and dismiss Wowza’s counterclaims, which was granted by the court. The court also granted Adobe its attorneys’ fees and costs for the motion. This case later settled.
    • Trade Secret & Copyright
      • Optimal Markets v. FTI Consulting et al. – Mr. Steinberg was the lead trial attorney representing FTI Consulting, Inc. and other defendants in a trade secret misappropriation and copyright action originally filed in Federal Court. The action was moved to State Court, and then moved to arbitration, which lasted two and a half weeks. The copyright action was dismissed and the arbitrator determined that there was no trade secret misappropriation by FTI Consulting, Inc. and other defendants. FTI won a complete defensive verdict and was awarded its attorneys' fees. 
    • Trademark & Copyright
      • Ansel Adams Publishing Rights Trust – Mr. Steinberg was lead trial counsel representing the Trust, which handles the publishing rights to Ansel Adams’ works, in a trademark and copyright related dispute in the US District Court for the Northern District of California. The Trust sued an individual and a media company that sold products derived from what they alleged to be long-lost negatives of the famous photographer Ansel Adams. This case involved several cutting-edge trademark and copyright issues, and has been publicized in the New York Times, Wall Street Journal, Los Angeles Times, San Francisco Chronicle, and in various other media outlets, including national TV. Ultimately the case settled with defendants agreeing not use Ansel Adams' name and likeness. 
    • Trademark, Unfair Competition & Contract
      • Getty Trust v. Getty Images – Represented Getty Trust, the owner of the Getty Museum in Los Angeles, in a case filed in the US District Court for the Central District of California against Getty Images, a photo stock house located in Seattle, Washington. This case involved a breach of contract, unfair competition, and trademark infringement claims. This case settled before going to trial. 
    PTAB Experience
    • RetailMeNot, Inc. v. Honey Science LLC – Mr. Steinberg represented Honey Science in a patent infringement lawsuit brought in the US District Court for the District of Delaware. RetailMeNot asserted four coupon code patents against Honey Science. Latham filed a counterclaim asserting a Honey Science patent against RetailMeNot, to which RetailMeNot responded with three petitions (two PGRs and an IPR) at the PTAB attacking the Honey patent making Section 101, 112, and 103 arguments. RetailMeNot moved to stay Honey’s patent based on the filed petitions, and the district court agreed, pending the outcome of the institution decisions. Honey filed POPRs in all three proceedings, and in its detailed decisions denying institution of the two PGRs and the IPR, the PTAB provided 50 page substantive determinations finding the Honey patent claims subject matter eligible under the USPTO 101 Guidelines and non-obvious against the asserted prior art.
    Other PTAB Experience
    • Mr. Steinberg was part of Latham’s team to successfully obtain final written decision in the PTAB on behalf of Actifio against Delphix, with a sweeping victory, invalidating 109 of 111 challenged claims across five patents; Jaguar Land Rover to defeat Cruise Control Technologies (a shell company of patent troll Empire IP); and Qualtrics to invalidate four of OpinionLab, Inc. patents. Mr. Steinberg also worked with the team that obtained a denial of institution on behalf of AbbVie in Amgen’s IPR petitions filed against AbbVie’s patent covering the block buster biosimilar drug Humira.
    Contentious IP Transactions
    • AMD v. Intel. Mr. Steinberg represented AMD in a dispute and later settlement and cross license agreement in which Intel agreed to pay AMD US$1.25 billion.

    Thought Leadership

    • USPTO Seeks Comments on PTAB’s Discretionary Denials of Review -  October 22, 2020
    • US Supreme Court Will Decide Constitutionality of PTAB Judge Appointments  -  October 14, 2020
    • Reading the Tea Leaves of PTAB's Motion to Amend Study -  July 28, 2020
    • Federal Circuit: A Party Cannot Join Itself in Existing PTAB Proceeding  -  March 20, 2020
    • US Federal Circuit Court of Appeals Holds Appointment of Administrative Patent Judges Unconstitutional -  November 01, 2019
    • PTAB Update: Patent Office Issues Final Pilot Program for Motions to Amend  -  March 15, 2019
    • PTAB Update: New Motion to Amend Procedures Proposed  -  October 30, 2018
    • USPTO Harmonizes New Claim Construction Standard in PTAB Proceedings  -  October 15, 2018
    • En Banc Federal Circuit Overturns PTAB’s IPR Time-Bar Ruling -  August 23, 2018
    • Patent Office Issues New Guidance for PTAB Challenges -  August 15, 2018
    • PTAB Spotlight -  July 19, 2018
    • SAS Institute Follow-Up: New PTAB Procedures and Strategies -  May 11, 2018
    • Supreme Court Rulings Increase the PTAB’s Importance -  April 26, 2018
    • Aqua Products Levels the Playing Field at the PTAB -  October 18, 2017
    • Why the Patent Trial and Appeal Board Should Fully Decide Instituted Petitions -  September 11, 2017
    • Motions To Amend: Are They Worth Reconsidering During PTAB Proceedings? -  June 29, 2017
    • Supreme Court to Determine the Future of the PTAB’s Post-Grant Reviews -  June 16, 2017
    • Patent Owner Statements During IPR May Limit Claim Scope -  June 06, 2017
    • A Proposed Rule For En Banc PTAB Review -  February 24, 2017
    • Federal Circuit to Address En Banc Appeals Based on AIA Time-Bar -  January 18, 2017
    • Burden Of Proof At PTAB: Will Magnum Oil And Aqua Mix? -  September 30, 2016
    • Keeping Tabs on PTAB -  September 19, 2016
    • Supreme Court Affirms PTAB’s “Broadest Reasonable” Claim Construction Standard -  June 22, 2016
    • PTO Issues New Final Rules for PTAB Proceedings (March 31, 2016) -  April 05, 2016
    • The Latest on PTAB -  August 31, 2015
    • The PTAB’s Proposed Rule Changes (August 20, 2015) -  August 26, 2015
    • Let PTAB Decide -  April 01, 2015
    • Does Your Cyberinsurance Policy Have You Covered?: Part 2 -  May 08, 2014
    • Cyberinsurance: Does Your Policy Have You Covered? -  May 07, 2014
    • Cyber Insurance: A Last Line of Defense When Technology Fails -  April 15, 2014
    • Patent Law and Litigation Newsletter, Issue 1, April 2013 -  April 01, 2013
    • IT Byte, Issue 1, September 2011 -  September 12, 2011
    • An End to the Rule of Thumb: Uniloc USA, Inc. v. Microsoft Corp. -  March 1, 2011
    • Federal Circuit Rules That False Marking Statute Requires Penalties Per Article -  January 27, 2010
    Mr. Steinberg was named an IP Trailblazer.The National Law Journal 2017
    Bar Qualification
    • California
    • District of Columbia
    • US Patent and Trademark Office
    Education
    • JD, Georgetown University Law Center, 1986
    • BS in Systems Science Engineering, University of Pennsylvania, Moore School of Engineering, 1982
    • BS in Economics & Jerome Fisher M&T Program, University of Pennsylvania, Wharton School of Business, 1982
    Industries
    • Entertainment, Sports & Media
    • Technology
    • Automotive
    Practices
    • Intellectual Property Litigation
    • Litigation & Trial Practice
    • Technology Transactions
    • Payments & Emerging Financial Services
    • Israel Practice
    • International Trade Commission (ITC) Patent Litigation