Brian is an intellectual property law specialist who has represented clients for many years in intellectual property matters, including patent, copyright, trade secret, and trademark matters. Before founding Mitchell + Company in 2010, Brian was a partner with one of the nation's leading technology-focused law firms, Cooley Godward Kronish.
Brian is an expert at mastering the intersection between technology and the law, and has handled matters involving a wide range of products and technological areas, including hardware and software for mobile devices, consumer electronics, and telecommunications, as well as Internet, e-commerce, and business method patents.
Some of Brian’s more notable matters include:
- Represented Qualcomm in key areas of its worldwide, four-year patent dispute with Broadcom, including a hearing with the International Trade Commission (ITC), one of the ITC's largest hearings to date. All litigation between the companies was dismissed due to a settlement and multi-year patent agreement, which ended a threat to Qualcomm's 3G networking technology, the widely used worldwide standard cellular technology.
- Represented Qualcomm in patent litigation in the Eastern District of Texas as part of its worldwide patent infringement and licensing dispute with Nokia. This dispute involved, among other things, issues of first impression regarding a FRAND declaration, and it settled at the start of a scheduled trial, resulting in a 15-year license agreement between Qualcomm and Nokia.
- Secured a defense jury victory for clients Monolithic Power Systems, Inc. (MPS), Asustek Computer Inc. (ASUS), and Advanced Semiconductor Manufacturing Corp. (ASMC) in a bet-the-company patent dispute with $500 million at stake and threatening MPS's line of analog and mixed-signal semiconductors. The clients won a jury verdict invalidating the plaintiff's patent, and the case ended a seven-year, worldwide dispute between MPS and competitor O2 Micro International Ltd.
- Tried a trademark infringement case for eBay Inc., obtaining a permanent injunction against an online perfume seller's use of the name PerfumeBay. This victory established an important precedent in defending against the dilution of eBay's trademark and corresponding recognition as the world's leading online marketplace, with a market cap over $27 billion.
- Represented Taiwan-based Hon Hai Precision Industry Co. Ltd. in a patent infringement action in the Eastern District of Texas involving controllers for switching power used in LCD backlighting applications. This litigation settled favorably to the client on the eve of trial, saving the client significant expense and protecting its inverter controller module product line.
- Achieved a cost-effective, favorable settlement for Emulation and Verification Engineering, SA (EVE), a developer of emulation and verification devices that accelerate the design of complex integrated circuits. This favorable outcome came about as a result of uncovering compelling evidence of inequitable conduct and adverse claim construction admissions during a contentious discovery period.
- Obtained a case terminating decision on summary judgment on behalf of Flyswat, an Internet software and advertising company, invalidating the plaintiff's patent on three separate grounds. The summary judgment was entered prior to trial and resulted in the continued use of the client's important software.
- Defended a national consulting firm in a suit alleging trade secret misappropriation and copyright infringement concerning computer software used to run multimillion dollar auctions. The court ruled in favor of the defense, denied all claims set forth by the plaintiff, and ruled that the defendant's employees were entitled to a declaratory judgment that they could continue to freely use and develop computer software with all of the features wrongfully accused of infringement.
Brian is admitted to practice before the Federal Circuit, and has passed the United States Patent & Trademark Office's examination (referred to as the Patent Bar). He is also admitted to practice before the U.S. District Courts for the Northern, Eastern, Southern, and Central Districts of California, Eastern District of Texas and the United States Court of Appeals for the Ninth Circuit.