Stephen Korniczky

Sheppard, Mullin, Richter & Hampton LLP

$ $$$

El Camino Real 12275
San Diego 92130 CA US

Stephen S. Korniczky is a partner and former Practice Leader of the firm’s Intellectual Property Practice Group, which has more than 100 attorneys. Mr. Korniczky is a trial lawyer who focuses his practice on litigating patent, trade secret and other intellectual property cases.

Over the past 30 years, he has handled over 175 patent and other IP lawsuits including suits relating to standard essential patents (SEPs) and worldwide FRAND license obligations in district courts throughout the US, before the International Trade Commission and on appeal to the US Court of Appeals for the Federal Circuit.

He has litigated patent cases on behalf of internationally based, publicly traded and emerging companies in many diverse technologies, including wireless communications, CDMA, WCDMA, WiMAX, HSPA, Wi-Fi, GPS, USB and wireless modems, LTE, Video and Audio compression, CDMA2000, Multimedia Messaging Service (MMS), Android Operating System (OS), Internet systems, web-browsers for wireless devices, software, liquid crystal displays (LCD), televisions, IC devices and semiconductor processes, artificial intelligence and fuzzy logic systems, automotive technologies, and medical devices.

Recently, Mr. Korniczky was lead counsel for TCL Communication Technology Holdings in a three-week trial in a breach of contract and declaratory judgment action it filed against Ericsson Inc. et al. in the Central District of California seeking a FRAND license to Ericsson’s 2G, 3G and 4G SEP portfolio.

Leading up to the trial, Mr. Korniczky secured a worldwide anti-suit injunction against Ericsson preventing it from pursuing a dozen actions it filed against TCL in six foreign jurisdictions. Likewise, when Ericsson filed a related action asserting five implementation patents in the Eastern District of Texas, Mr. Korniczky filed 17 IPR petitions which were subsequently instituted by the Patent Office resulting in the invalidation of four of the five patents.

Mr. Korniczky was also lead counsel for Defendants HTC Corporation, HTC America and Exedea Inc. (collectively “HTC”) in a patent infringement action brought by Wi-LAN, Inc. in the Eastern District of Texas. Wi-LAN alleged that HTC infringed its standard essential patent (SEP) covering the 3GPP HSDPA mobile phone standard. After a six-day trial, the jury awarded a complete defense victory finding that HTC did not infringe the asserted patent, and that the patent claims are invalid based on anticipation and/or obviousness.

Mr. Korniczky also represented Defendants HTC Corporation and HTC America, Inc. in a two patent infringement action brought by Intellect Wireless in the Northern District of Illinois. At trial, the Honorable William T. Hart ruled that Intellect Wireless had engaged in inequitable conduct before the Patent Office rendering the patents unenforceable and dismissed the lawsuit.

The decision was upheld on appeal to the Federal Circuit and, subsequently, the case was found to be exceptional, and Intellect Wireless and its litigation counsel were held jointly and severally liable for HTC’s attorney fees and costs. The patents covered wireless portable communication devices that receive and display caller ID information, non-facsimile pictures, video messages and/or Multimedia Messaging Service.

Mr. Korniczky is registered to practice before the U.S. Patent and Trademark Office, and has significant experience prosecuting patent applications and handling reexamination and IPR procedures. He utilizes his combined prosecution and litigation background to provide strategic counseling to clients on business oriented IP licensing and portfolio development plans. He has successfully designed and implemented value-added strategies to raise venture capital, generate licensing revenue, cross-license competing IP and position companies for acquisition.

For example, Mr. Korniczky designed and implemented a patent strategy for Cameron Health, a Carlsbad medical device company, to protect its Subcutaneous Cardio Implantable Defibrillator (S-ICD) system and attract over $25 million in venture capital. Subsequently, Cameron Health received an equity investment from Boston Scientific in exchange for an exclusive option to buy the company.

Education:

  • J.D., State University of New York – Buffalo School of Law, 1987
  • B.S., Mechanical Engineering, Polytechnic University, 1984

Admissions:

  • California
  • United States Patent and Trademark Office

Memberships:

  • American Bar Association (ABA), Member
  • American Intellectual Property Law Association (AIPLA), Member
  • Juvenile Diabetes Research Foundation (JDRF), San Diego Chapter — Board Member (2008-2014); Nominating Committee (2015-present)
  • San Diego Intellectual Property Law Association — President, (2000-2001), Board Member (1997-2002)
  • San Diego SWAT Officers Association, San Diego Police Department — Board Member (2012-present)
  • USC Intellectual Property Institute — Committee Member (2010-present)

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El Camino Real 12275
San Diego 92130 CA US
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Lina Stillman

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Broadway 42
New York 10006 NY US
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