Theodore Brown

Theodore G. Brown focuses his practice on patents in the areas of semiconductor devices and circuits, semiconductor manufacturing, testing and design processes, computer systems and architecture, computer software, and genetic sequencing and (small molecule) pharmaceuticals. He also drafts and negotiates license agreements, analyzes the validity and infringement of patents in all technical fields and evaluates intellectual property for potential acquisitions and related matters.

Prior to joining the firm, Dr. Brown was a legal intern responsible for hazardous waste site case development for the U.S. Environmental Protection Agency in San Francisco. Before that, he spent two years as a visiting professor for the Department of Chemistry at the University of California, Davis.

Dr. Brown has been recognized as a Northern California “Super Lawyer” since 2014 in the area of Intellectual Property Litigation by Super Lawyers magazine. In 2016, he was also named to The International Who’s Who of Business Lawyers for Patents.

Experience:

• Represented Hyundai Electronics Industries, Co., Ltd., now known as SK hynix Inc., one of the world’s largest semiconductor companies, in a patent infringement and breach of contract case involving memory semiconductors. The patent infringement portion of the case settled pursuant to a court-ordered mediation. Hyundai Electronics won the breach of contract case after a three-day bench trial. Thorn EMI N. v. Hyundai Elecs., No. 94-0332 (D. Del. filed Jun. 17, 1994).
• Represented Hynix Semiconductor Inc. in Chapter 15 bankruptcy proceedings and trial in which Qimonda sought to reject patent cross-license agreements under German law; trial resulted in rejection of Qimonda attempts; affirmed by US Court of Appeals for the Fourth Circuit. In re Qimonda, Case No. 09-14766 (E.D.Va. Bkr. filed Jun. 15, 2009); aff’d, Jaffe v Samsung Electronics, et al., 737 F.3d 14 (4th Cir. 2013).
• Coordinating counsel for multipatent, international litigation involving memory circuitry and manufacturing processes; settled with portfolio cross-license. Hyundai Electronics Industries Co. Ltd. v. Siemens Corp. (multiple actions in multiple countries and jurisdictions, including N.D. Cal., No. C-99-20860, filed Aug. 25, 1999)
  /P>We successfully instituted five IPRs against Intellectual Ventures on behalf of Motorola Mobility. Three of these patents related to sending URLs in email over the Internet, multiple traffic classification based-queues to provide preferential access to a shared communications channel, and a mobile wireless access point in a vehicle for Internet access. The Board instituted all of the IPRs and recently issued final decisions invalidating all of the patent claims challenged in two of the three IPRs, and most of the claims in the third. The Board concluded that the prior art cited by Motorola illustrated that the claimed inventions of the challenged patents were invalid. PTAB Case Numbers IPR2014-00500; IPR2014-00501 and IPR2014-00504.
• Associate trial counsel for defendant and counterclaimant on patents involving semiconductor process technology and microprocessor architecture; settled with portfolio cross-license. Intel Corporation v. Hyundai Electronics Industries Co., Ltd., (D. Or. 3:94−cv−01129−HA, filed Sep. 19, 1994)
• Coordinating counsel for multipatent litigation involving memory circuitry and manufacturing processes; settled with portfolio cross-license. NEC Corporation v. Hyundai Electronics Industries Co. Ltd. (multiple actions, including E. D. Va. No. 97-1967; filed Dec. 5, 1997)
• Defended Hynix Semiconductor, Inc. in its long-standing battle against Rambus in dispute involving DRAM patents, antitrust cliams, and spoliation of evidence. Rambus Inc. v. Hynix Semiconductor Inc. et al., Nos. 00-cv-20905 (N.D. Cal. filed Aug. 29, 2000); 5:05-cv-00334 (N.D. Cal. filed Jan. 25, 2005).
• Co-lead counsel for defendant accused of patent infringement and trade secret misappropriation regarding business intelligence database software and wireless internet report distribution; jury verdict on essentially all issue for client, followed by favorable settlement. MicroStrategy Incorporated v. Business Objects S.A. (E.D.Va. No. 2:01cv826, filed Dec. 2001)
• Co-lead counsel and coordinating patent counsel for multi-patent, international litigation relating to semiconductor manufacture and circuits and networking protocols; settled with portfolio cross-license. Texas Instruments Incorporated v. Hyundai Electronics Industries Co., Ltd., (multiple actions in multiple countries and jurisdictions, including No. 2-98CV0073 (E.D. Texas, filed May 1, 1998))

Education:

• University of California, Berkeley, J.D. (1984)
• Northwestern University, Ph.D., Physical Chemistry (1979)
• Northwestern University, M.S., Physical Chemistry (1976)
• College of Wooster, B.A., Chemistry (1974) with honors

Admissions:

• California (1984)

Court Admissions:

• U.S. Patent and Trademark Office (1985)
• U.S. District Court for the Eastern District of Texas
• U.S. District Court for the Northern District of California
• U.S. District Court for the Eastern District of California
• U.S. District Court for the Central District of California
• U.S. Court of Appeals for the Fourth Circuit
• U.S. Court of Appeals for the Ninth Circuit
• U.S. Court of Appeals for the Federal Circuit
• U.S. Supreme Court