Rick Frenkel is a partner in the Litigation & Trial Department of Latham & Watkins and has experience in every aspect of patent litigation, from initial investigations through trial and appeals. Mr. Frenkel was recognized as one of 75 Leading IP Litigators in California by the Daily Journal in 2013 and 2014, and was selected as a Northern California Super Lawyer in 2016.
Mr. Frenkel brings a combined experience of 17 years as a patent litigator and trial lawyer, two years as in-house counsel, and 10 years as an engineer. He has litigated patent cases for a variety of industries, including:
- Information technology
- Life sciences
- Internet and digital media
- Oil & gas
Representative clients include Amazon, Constant Contact, Endurance International Group, Facebook/WhatsApp, Newegg, NVIDIA, Synopsys, and Western Digital.
Mr. Frenkel is currently serving on the board of the Silicon Valley Law Foundation. From July 2016 through June 2017 he was a Vice-Chair of the Federal Circuit Bar Association’s Regional Programs committee. As of July 1, 2018, he will be one of the Vice-Chairs for the Patent Litigation committee of the Federal Circuit Bar Association. Prior to joining Latham, Mr. Frenkel served as the Director of Intellectual Property for Consumer and Emerging Technologies at Cisco Systems. In this position, he managed patent litigation, advised on patent assertions and patent-purchase opportunities, negotiated patent licenses, analyzed patent issues in mergers and acquisitions, and provided counseling on IP strategy. Prior to practicing law, he worked as an aerospace engineer at Allied Signal and GE Aircraft Engines.
Mr. Frenkel's representative experience includes:
- TriPlay, Inc. v. WhatsApp Inc.: Counsel for WhatsApp in a 4-patent case relating to cross-platform messaging systems filed in the District of Delaware. After favorable claim construction ruling conducted early in the case prior to discovery, obtained dismissal of entire case and invalidation of 2 out of 4 asserted patents under 35 U.S.C. § 101, after other two patents were withdrawn by plaintiff in response to institution of IPR.
- Ultravision Inc. v. Lamar Advertising Co.: Lead counsel for Lamar in case involving 9 patents, as well as allegations of misappropriation of trade secrets and breach contract, pending in the Eastern District of Texas. Technology related to LED lights to optimize billboard illumination. After favorable ruling on motion relating to breach of contract, plaintiff narrowed case, which then settled following a successful claim construction hearing and on the eve of the close of fact discovery.
- Telebuyer LLC v. Amazon.com: Counsel for Amazon in a 7-patent case relating to computer systems and storage used for e-commerce in the Western District of Washington. Obtained summary judgment of invalidity on all 32 asserted claims.
- OIP Technologies, Inc. v. Amazon.com, Inc.: Counsel for Amazon in a patent case related to automated pricing for goods sold online allegedly used by www.amazon.com in the Northern District of California. Obtained summary judgment of invalidity on all 62 asserted claims.
- Guzik Technical Enterprises, Inc. v. Western Digital Corp.: Counsel for Western Digital in the Northern District of California in a patent case relating to testing equipment for hard disk drive heads. Successfully narrowed the case from a start of 62 patent claims and 14 trade secrets to 12 patent claims and 0 trade secrets, including obtaining summary judgment of invalidity on some claims and summary judgment of non-infringement on other claims.
- Adjustacam, LLC v Newegg, Inc. et al.: Lead counsel for Newegg Computers in a patent infringement case on appeal to the US Court of Appeals for the Federal Circuit from the US District Court for the Eastern District of Texas. The case related to a patent for a portable camera clip. Newegg appealed the denial of attorneys’ fees following a successful case at the district court. Secured victory on appeal at the Federal Circuit, getting the denial of attorneys’ fees vacated and remanded. In addition, Newegg won a motion on appeal that Adjustacam’s cross-appeal was frivolous, and was awarded its attorneys’ fees relating to the frivolous cross-appeal.
- Rembrandt Data, LP v. Western Digital Corp.: Lead counsel for Western Digital in the Western District of Wisconsin in a patent case relating to the design of magnetic heads and related technology used in modern hard disk drives. Obtained stipulation of non-infringement following favorable claim construction order. Lead counsel for Western Digital in appeal by plaintiff of claim construction order. Lower court order affirmed by Federal Circuit.
- Ricoh Co. v. Synopsys, Inc.: Counsel for Synopsys in a patent case in the Northern District of California in which Synopsys' system for allowing chip designers to optimize their designs was accused of infringing a Ricoh patent. Obtained summary judgment of non-infringement, which was affirmed by the Federal Circuit. Obtained over US$650 million in costs, much relating to e-discovery. Argued appeal for Synopsys and obtained affirmance from Federal Circuit.
- Levine v. Telenav, Inc.: Counsel for Telenav in a patent case in the Eastern District of Texas relating to computerized navigation systems and methods. Obtained favorable claim construction, after which the case settled on favorable terms.
- WRE-Hol LLC v. Telenav, Inc.: Lead counsel for Telenav in a patent case in the Western District of Washington relating to networking of computers used in navigation systems. Successfully got case stayed pending inter partes reexamination based on prior art discovered by Latham team. Reexamination resulted in all 84 claims of the asserted patent being invalidated.
- Datatern, Inc. v. Blazent, Inc.: Lead counsel for Blazent in a patent case in the District of Massachusetts relating to database technology. Obtained stipulated summary judgment of non-infringement following successful claim construction. Appeal pending at Federal Circuit.
- Minkus Electronic Display Systems v. Lamar Advertising Co.: Counsel for Lamar in the District of Delaware in a patent case relating to digital billboards and related networking and storage technologies. Obtained favorable settlement after providing videotaped declaration of prior art witness and other multimedia prior art.
- “Patent Venue Wars and TC Heartland,” Stanford Law School, May 4, 2017
- Panelist, “Outside Counsel And Academic Perspectives: Important Issues at the Intersection of Federal Court and Patent Trial and Appeal Board Proceedings,” Patent Litigation 2016: The Courts and Patent Trial and Appeal Board, February 2016
- Panelist, “The Post-Alice/CLS Bank Jurisprudence – How the Supreme Court Has Altered the Way Courts Are Reviewing and Deciding Section 101 Patent Challenges,” The State Bar of California, February 2015
- Panelist, “Proposed Changes in Discovery Rules,” The Federal Circuit Bar Association Bench & Bar webcast, March 2014
- Presenter, “Anatomy of a Patent Infringement Settlement,” UC Berkeley School of Law, October 2012
- “Beyond Bilski: Drawing the Patentability Line for Methods of Doing Business over the Internet,” Berkeley Center for Law and Technology, October 2011
- Panelist, “The Evolving IP Marketplace - The Federal Trade Commission's Perspective on Aligning Patent Notice and Remedies with Competition,” May 2011
- Panelist, “Cost Control in IP Litigation,” 8th Annual Advanced Patent Law Institute, November 2007
- “Stating the Obvious: Patent Protection after KSR,” Managing IP webinar, May 2007
- “Managing the IP Legal Department,” Atlanta General Counsel Roundtable, April 2007
- “From Sewing Machines to Video Machines: 150 Years of Patent Pools,” Patent Pools and Proactive Licensing Strategies Conference, March 2007
- Panelist, “IP Transactional Intermediaries—Who Are They and What Do They Do?” panel co-sponsored by Licensing Executive Society and High Tech Law Institute of Santa Clara University, October 2006