David Fehrman works out of the Tokyo and Los Angeles offices of the firm. He handles litigation and post-grant Patent Office matters before the Patent Trial and Appeal Board (PTAB) primarily related to electronics, semiconductor, electromechanical and software technologies. With his strong foundation in technology and patent prosecution, he brings a unique skill set and perspective to litigation matters. Mr. Fehrman has been involved in more than 40 PTO reexamination proceedings, and has obtained cancellation of the asserted claims in numerous cases. He is now active in the new inter partes review (IPR) proceedings which took effect with the new America Invents Act, and has already successfully challenged all asserted claims in more than 12 IPR trials. He is one of only 40 practitioners recognized for post-grant procedures in the IAM Patent 1000.
Mr. Fehrman wrote the patent and was one of the lead attorneys in the case of Odetics v. Storage Technology, which went through two successful appeals to the Federal Circuit and resulted in a $71 million verdict and a $100 million settlement for the patent owner. The Federal Circuit’s opinion is one of the most frequently cited cases relating to “means plus function” claim limitations.
Mr. Fehrman has worked in the consumer electronics area for more than 30 years. He has been involved in numerous litigation matters on behalf of clients such as Yamaha Corporation, Mitsubishi Electric Corporation, Warner Bros., Fox, NBC Universal, Paramount Studios, Fujitsu and Ricoh. He has also worked on numerous matters for a number of movie studios in cases relating to feature film editing, DVD and Blu-Ray authoring and production and video compression including MPEG-2 and MPEG-4/H.264 video coding.
Mr. Fehrman is active on behalf of several clients in various patent pools including MPEG-2 and DVD-6C licensing pools.
Mr. Fehrman is admitted to practice in California, Japan as a Gaikokuho-Jimu-Bengoshi (registered foreign lawyer), and the U.S. Patent and Trademark Office.
Nikon Corporation v. ASML Netherlands B.V.(Patent Trial and Appeal Board) Represents Nikon as petitioner in two IPR proceedings on patents relating to photolithography. Trials instituted and all claims cancelled.
Yamaha Corporation of America v. Black Hills Media, LLC(Central District of California; Patent Trial and Appeal Board) Represents Yamaha in litigation and as petitioner in six IPR proceedings on patents relating to streaming media. All asserted claims cancelled in IPR proceedings.
CB Distributors v. Fontem Holdings(Patent Trial and Appeal Board) Represents an E-cigarette company as petitioner in IPR proceeding. All asserted claims cancelled.
Printless Previews v. Twentieth Century Fox, et al.(Central District of California). Represented numerous movie studios in patent infringement action relating to feature film editing. Filed two ex parte reexamination requests. Case stayed pending reexamination result. All claims rejected by the Patent Office and cancelled following an unsuccessful Federal Circuit appeal by the Patent Owner.
Patent Harbor v. Fox, et al.(Eastern District of Texas). Represented numerous media and entertainment companies in patent infringement suit involving DVD and Blu-ray authoring technologies and obtained favorable settlements.
Multimedia Patent Trust v. Disney, et al.(Southern District of California). Represented several large media and entertainment companies in patent infringement suit involving video compression and obtained favorable settlements.
MONKEYMedia v. Buena Vista Home Entertainment, Inc.(Western District of Texas). Representing numerous media and entertainment companies in patent infringement case involving DVD and Blu-ray technology. Filed reexamination requests on 4 patents, resulting in cancellation of all original claims.
Cheetah Omni v. Samsung, et al.(Eastern District of Texas). Represented Mitsubishi in a patent infringement case involving DLP televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction, and affirmed on appeal.
Genoa Color Technologies, Ltd. v. Mitsubishi Electric Corp., et al.(Southern District of New York). Represented Mitsubishi in a patent infringement action involving DLP color display technology in televisions and projectors. Filed inter partes reexam, resulting in cancellation of all claims.
Nissim Corp. v. Time Warner Inc., et al.(Southern District of Florida). Represented Time Warner, Warner Bros., and New Line Cinema in a patent infringement case involving several aspects of DVD technology. Filed several reexamination requests, all of which were granted, leading to favorable settlements.
Interactive Music Technology LLC v. Roland Corp. U.S., et al.(Central District of California). Represented Yamaha in a patent infringement action relating to electronic keyboard instruments. Filed reexamination requests on the two asserted patents. Reexaminations concluded with all claims of both patents cancelled.
Amado v. Microsoft Corporation(Central District of California). Represented individual inventor in a patent infringement case against Microsoft Corp., resulting in a jury verdict for the inventor, which was affirmed on appeal. Successfully defended the patent in reexamination proceeding.
Mitsubishi Digital Electronics America Inc. v. Guardian Media Technologies, Ltd.(Southern District of California). Represented Mitsubishi in declaratory judgment of non-infringement action regarding use of V-chip parental control technology in televisions. Filed reexamination requests against two patents, resulting in cancellation of broad claims and subsequent summary judgment decisions of non-infringement on remaining claims.
David Fehrman is recommended as a leading lawyer by Legal 500 US 2010. He was recognized by IAM Patent 1000 – The World’s Leading Patent Practitioners in 2014 and 2015 for both litigation and post-grant procedures. He was also selected as an “IP Star” for the Managing Intellectual Property’s World IP Survey 2018–2019.
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