Rick Frenkel helps clients navigate intellectual property disputes, providing analysis and preventative counseling and advising on the IP aspects of both license agreements and mergers and acquisitions. He draws on his experience as a trial lawyer, engineer, and former in-house counsel, representing clients in all aspects of litigation.

Mr. Frenkel advises a full range of clients, from startups to Fortune 50 companies active in a variety of industries, including:

  • Telecommunications
  • Semiconductors and LEDs
  • Information technology – including security, software, and storage
  • Medical devices
  • Internet & digital media
  • Energy

Prior to joining Latham, Mr. Frenkel served as the Director of Intellectual Property for Consumer and Emerging Technologies at Cisco Systems. Prior to practicing law, he worked as an aerospace engineer at Allied Signal and GE Aircraft Engines.

With more than 30 years of experience at the intersection of engineering and law, he excels at integrating the technical, legal, and business issues clients face, to arrive at practical solutions.

Mr. Frenkel’s representative clients include Amazon, Meta, Lamar Outdoor Advertising, Mimecast, Amphenol, Extreme Networks, and Western Digital.

Mr. Frenkel serves on the board of the Silicon Valley Law Foundation and was until recently the Vice-Chair of the Federal Circuit Bar Association’s Patent Litigation Committee. 

Mr. Frenkel’s representative experience includes:

  • Eolas v. Amazon (E.D. Tex., N.D. Cal.): Counsel for Amazon in case relating to hyperlinking on the internet. Obtained transfer of case from Texas to California, and then obtained summary judgment of patent ineligibility, which was affirmed on appeal.
  • New Millennium Software v. Starship Technologies (N.D. Cal.): Represented Starship in case relating to remote control of food delivery robots. Won motion to dismiss based on patent ineligibility. 
  • PPC Broadband v. Amphenol Corp. (D. Del.): Counsel for Amphenol in case relating to cable connectors. Filed IPRs and got pre-institution stay; four patents all found invalid by PTAB.
  • WSOU v. Arista (W.D. Tex., N.D. Cal.): Counsel for Arista in case relating to switches and access points. Obtained transfer of case from Texas to California; opponent dropped one patent in response to motion for judgment on the pleadings filed after transfer. Obtained invalidity of second patent in IPR while litigation stayed pending IPR.
  • TriPlay v. WhatsApp (D. Del.): Counsel for WhatsApp in a four-patent case relating to cross-platform messaging systems. Obtained dismissal of entire case and invalidation of two asserted patents under 35 U.S.C. § 101.
  • The Nielsen Company v. TVSquared Ltd. (W.D. Tex., S.D.N.Y.): Counsel for TVSquared in case relating to identity protection in online advertising and consumer tracking. Obtained transfer of case from Texas to New York, case in discovery.
  • CoolTV.com v. Ooyala (D. Del.): Counsel for Ooyala in case relating to hot spots in interactive video presentations. Obtained judgment of invalidity under 35 U.S.C. § 112 following claim construction, which was affirmed on appeal.
  • Western Digital Patent Litigation (W.D. Tex., N.D. Cal., W.D. Pa., W.D. Wisc.): Counsel for Western Digital in several patent litigations, including four-patent case relating to SSD technology in Waco, Texas, a patent/ copyright/ trade secret litigation involving hard disk drive testing equipment in San Jose, and patent cases relating to hard disk drive magnetic head design in Pittsburgh and in Madison.
  • Pacific Coast Building Prods. v. Certainteed Gypsum (N.D. Cal.): Counsel for Certainteed in case relating to gypsum boards for home construction. Case settled very favorably on the eve of summary judgment.
  • Automated Packaging v. FPI (N.D. Ohio, N.D. Cal.): Lead counsel for FPI in a multi-jurisdictional competitor case involving inflatable cushioning used in packaging. After extensive venue motion practice, maneuvered opponent’s six-patent case to California, where the court adopted FPI’s proposed claim constructions entirely, leading to a favorable settlement.
  • Ultravision v. Lamar Advertising (E. D. Tex.): Lead counsel for Lamar in case involving nine patents related to LED lights for billboard illumination, as well as trade secret and breach of contract allegations. Case settled favorably following ruling on motion relating to breach of contract.
  • Adjustacam v Newegg (Fed. Cir.): Lead counsel for Newegg in a patent infringement appeal relating to a patent for a portable camera clip. Secured victory on appeal, vacating, and remanding the District Court’s denial of attorneys’ fees.

Bar Qualification

  • California
  • US Patent and Trademark Office

Education

  • JD, Loyola Law School, Los Angeles, 1999
    magna cum laude
  • MS in Mechanical Engineering, Massachusetts Institute of Technology, 1990
    summa cum laude
  • BS in Aerospace Engineering, University of Michigan, 1987
    magna cum laude
General Recognition Thumbnail
August 6, 2018Recognition

Latham in the Lead

You know those air-filled plastic pouches that pad the contents of just about every box you get in the mail? They’re called dunnage. And two companies that make them are involved in a big patent fight, including Latham client Free-Flow Packaging International Inc.