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

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.

Representative clients include Endurance International Group, Facebook/WhatsApp, Lamar Outdoor Advertising, Mimecast, Newegg, Synopsys, and Western Digital.

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

Mr. Frenkel’s representative experience includes:

  • 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.
  • 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.
  • Guzik Technical Enterprises v. Western Digital (N.D. Cal.): Counsel for Western Digital in a patent, trade secret, and contract case relating to testing equipment for hard disk drive heads. Case settled favorably on eve of trial following partial grant of summary judgment of non-infringement and invalidity.
  • 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.
  • Rembrandt Data v. Western Digital (W.D. Wisc.): Lead counsel for Western Digital in a patent case relating to hard disk drive magnetic head design. Obtained stipulation of non-infringement following favorable claim construction order, and obtained affirmance on appeal.

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.