Lisa K. Nguyen

Silicon Valley
  • 140 Scott Drive
  • Menlo Park, CA 94025
  • USA
 
 

Lisa Nguyen represents cutting-edge companies in intellectual property matters, particularly in litigation brought by non-practicing entities. She is adept at resolving disputes efficiently and identifying pragmatic solutions for her clients.

Ms. Nguyen represents both plaintiffs and defendants in complex multi-defendant, multi-patent cases. She has substantial experience handling cases pending before district courts across the country, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB).

Ms. Nguyen takes a practical and deliberate approach to prepare cases for trial, and regularly disposes of claims early in the process. She has obtained successful trial verdicts, summary judgment rulings, and dismissals at the pleading stage. She has also obtained multiple walk aways for defendants (obtaining dismissals with no payment to plaintiffs), as well as attorneys’ fees.

After the Supreme Court decision in Bilski v. Kappos (2010), she briefed the first successful motion to dismiss based on 35 U.S.C. § 101, which was later affirmed by the Federal Circuit in Ultramercial Inc. v. Hulu LLC (Fed. Cir. 2014).

Ms. Nguyen regularly speaks and writes on patent counseling and IP issues. Her speaking engagements include presentations at the Advanced Patent Law Institute, Berkeley Center for Law and Technology, the National Conference of Vietnamese American Attorneys, and the National Asian Pacific American Bar Association.

Ms. Nguyen’s representative matters include:

Technology Cases

  • RetailMeNot v. Honey Science Corporation (D. Del.). Representing Honey both defensively and offensively in two multi-patent suits brought by RetailMeNot involving browser extensions, web technology, and affiliate networks.
  • No Spill v. Scepter Manufacturing (D. Kan.). Representing Scepter Manufacturing and Scepter Canada in a litigation brought by No Spill asserting patent, contract, and trade dress claims involving flame mitigation devices.
  • Samsung Electronics. v. NVIDIA Corporation (E.D. Va.). Defended NVIDIA in an eight-patent suit involving various semiconductor technologies, including fabrication, memory controllers, and SDRAMs. By the time of trial, only three patents remained. The judge declared a mistrial as to two patents, and the jury found the remaining patent not infringed.
  • Altera v. LSI (C.D. Cal.). Defended LSI against assertion of 12 patents by competitor Altera and represented LSI offensively in assertion of 12 additional patents in responsive counterclaims. The case settled after infringement contentions were served.

Non-Practicing Entity Cases

  • Intellectual Ventures v. Symantec (D. Del.). Represented Symantec and Veritas in a second lawsuit brought by IV alleging infringement of three patents. By the completion of summary judgment briefing, only two claims of one patent remained. Successfully obtained summary judgment of both non-infringement and invalidity based on § 101.
  • Realtime Data v. Veritas Technologies (E.D. Tex.; N.D. Cal.). Defending Veritas in a patent litigation asserting five patents relating to data compression technology filed in the Eastern District of Texas. Successfully obtained transfer to the Northern District of California.
  • Vehicle Interface Technologies v. Jaguar Land Rover (D. Del.; Fed. Cir.). Defended Jaguar in a patent litigation involving instrument clusters. Successfully obtained summary judgment of invalidity and award of attorneys’ fees and costs. The Federal Circuit summarily affirmed both decisions.
  • Uniloc USA. v. Symantec (E.D. Tex.). Represented Symantec in a second lawsuit brought by Uniloc involving software activation and anti-piracy software. Obtained favorable settlement for Symantec prior to claim construction.
  • MacroSolve, Inc. v. GEICO (E.D. Tex.). Defended GEICO in a patent litigation involving mobile applications. The case resulted in a walk away by the plaintiff months before trial.
  • IP Co., LLC v. Tropos Networks, Inc. (N.D. Ga.). Represented defendant Tropos Networks in a patent litigation involving two patents related to mesh networking. Although the case had been pending for more than seven years, obtained a stay pending inter partes reexamination. The case settled on favorable terms during the stay.
  • Bonutti Skeletal Innovations v. Linvatec Corporation (M.D. Fla.). Represented defendant Linvatec against an Acacia entity in a patent litigation involving nine patents related to suture anchors. Successfully ran the table on claim construction issues on all patents to obtain a favorable settlement shortly after the claim construction order issued.
  • Ronald A. Katz Technology Licensing v. GEICO (D. Del.). Represented defendant GEICO in a patent litigation involving multiple patents related to call center processing. The case settled on favorable terms after it was remanded from the MDL court to the trial court.

ITC Cases

  • In the Matter of Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same II. Represented Honda against Intellectual Ventures in a patent case related to electric motors, successfully obtaining an initial determination of no violation after a one-week trial.
  • In the Matter of Certain Liquid Crystal Display Devices, Including Monitors, Televisions, And Modules, And Components Thereof. Represented respondent AU Optronics in ITC investigation involving multiple patents related to LCD panels and semiconductor devices. After a one-week trial, the Administrative Law Judge issued an initial determination, finding that AU Optronics did not infringe any of Thomson’s patents, and invalidating most of the asserted claims. The finding of no violation was upheld by the Commission.
 
 
 
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