Ian Neville Feinberg

Partner

contact

650.825.4300 x101

ifeinberg@feinday.com

Ian focuses his practice on intellectual property, antitrust and complex commercial litigation in district court and complex intellectual property and commercial arbitration. He has managed highly complex patent, copyright, trade secret and antitrust cases involving a myriad of technological areas.

Ian has experience in all phases of intellectual property litigation, including arguing at Markman hearings, taking and defending fact and expert witness depositions, and leading trial teams.

Ian has more than 40 years of intellectual property, antitrust and complex commercial litigation. Prior to founding Feinberg Day, Ian was a litigation associate at a premier San Francisco firm, an associate and partner for more than 20 years at a large West Coast law firm (now part of a major international law firm), and was a partner and lead intellectual property group practice leader in a prominent international law firm.

significant matters
Patent Litigation
Nalco Co. v. Turner Designs, United States District Court – San Francisco. Represented Turner Designs in action alleging infringement of patent on a method for using a fluorometer. Result: Favorable confidential settlement.
TriStrata, Inc. v. Microsoft Corporation and Adobe Systems Incorporated. Represented Adobe in action alleging infringement of patents claiming a method for encrypting electronic documents so they could be distributed over the Internet yet accessible only by authorized recipients. Result: summary judgment for Adobe, affirmed by Federal Circuit.
Adobe Systems Incorporated v. Macromedia Systems, United States District Court - Delaware. Tried two patent infringement cases back-to back, one representing Adobe as plaintiff and the other representing Adobe as defendant. Result: favorable confidential settlement following jury verdict of the plaintiff in both cases.
IpVenture, Inc. v. Sony Corporation., et al., United States District Court – Delaware. Represented Sony Corporation and two other Sony entities in an action alleging infringement of more than 100 claims in four patents involving power and thermal management for notebook computers that allegedly read on all notebook computers using Microsoft Windows operating system. Result: favorable confidential settlement.
Technology Patents LLC v. Deutsche Telekom AG, et al., United States District Court-Maryland and Federal Circuit. Represented approximately 15 Vodafone entities in a patent infringement action against some 131 defendants alleging infringement of patents on international text and SMS messaging. Result: dismissal on the ground of lack of personal jurisdiction based on oral argument made on behalf of all (115) foreign mobile telephone carriers, upheld by Federal Circuit.
Cryptography Research, Inc. v. Visa International Service Association, United States District Court – San Jose. Represented Visa in an action alleging infringement of more than 100 claims in eight-patents in addition to a Sherman Act Section 1 conspiracy claim and a Sherman Act Section 2 Walker Process monopolization counter- claim involving patents on countermeasures to cryptographic attacks on smart card. Result: favorable confidential settlement.
 Tried two patent infringement actions to two juries for Adobe, one as plaintiff and one as defendant, involving user interface and other patents. Result: favorable confidential settlement following both jury verdicts.
Society for Worldwide Interbank Financial Telecommunications SCRL d/b/a/ SWIFT v. Network Signatures, Inc., United States District Court – San Francisco. Represented SWIFT, a Belgium-based cooperative provider of messaging services and interface software to financial institutions in more than 200 countries, in a declaratory relief action arising out of the assertion of a patent entitled “Intermediate Network Authentication” licensed from the U.S. Navy against numerous large financial institution members of the plaintiff. Result: favorable confidential settlement.
IpVenture, Inc. v. ProStar Computer, Inc., et al., United States District Court – Los Angeles. Represented notebook computer manufacturers ProStar and Midern in an action alleging infringement of a patent involving power and thermal management that allegedly reads on all notebook computers using Microsoft Windows operating system. Result: complaint dismissed on the ground that patent was not wholly owned by the plaintiff, reversed by Federal Circuit, leading to favorable confidential settlement.
Monster Cable Products, Inc. v. AudioQuest, Inc., United States District Court – San Francisco.  Represented plaintiff in alleging infringement of a patent involving audio cables. Result: summary judgment in favor of defendant, affirmed by Federal Circuit on claim construction grounds.
NeoMagic, Inc. v. Trident MicroSystems, Inc., United States District Court - Delaware. Represented Trident in an action alleging infringement of two patents involving embedded memory semiconductors (logic and memory on the same chip). Result: summary judgment in favor of client on both patents, affirmed as to one patent and reversed as to the other by Federal Circuit; on remand, summary judgment again granted in favor of client on remanded patent and affirmed by the Federal Circuit.
Mindfabric, Inc. v. Banter, Inc., United States District Court - San Francisco. Represented defendant in an action alleging infringement of multiple patents involving customer relationship management software. Result: favorable confidential settlement.
Monster Cable Products, Inc. v. Ultralink, United States District Court - San Francisco. Represented Monster Cable Products, Inc. in a patent infringement action involving consumer electronics products. Result: favorable confidential settlement.
Methode Electronics, Inc. and Stratos Lighwave, Inc. v. Finisar Corporation, United States District Court – Oakland, San Francisco and San Jose. Represented Finisar in four Northern District of California patent infringement actions involving optoelectronic products. Result: favorable confidential settlement.
Berman v. Wink Communications, Inc., United States District Court - San Francisco. Represented Wink in action alleging infringement of two patents relating to interactive television. Result: favorable confidential settlement.
Trident MicroSystems, Inc. v. VIA Technologies, Inc., United States District Court - San Jose. Represented plaintiff in a patent infringement and copyright case involving embedded memory semiconductors. Result: favorable confidential settlement.
Applied Materials, Inc. v. Moore Technologies, Inc., United States District Court - San Francisco.  Represented defendant in a patent infringement and trade secret misappropriation action involving epitaxial reactors. Result: favorable confidential settlement.
Moore Technologies, Inc. v. Process Support International, United States District Court - San Francisco.  Represented plaintiff in a patent infringement action involving epitaxial reactors. Result: favorable confidential settlement, as well as favorable confidential settlement from non-party user of infringing device.
MTI v. Falcon Systems, United States District Court - San Francisco. Represented defendant in a patent infringement action arising out of the sale of RAID (redundant array of independent disk) memory systems, in which the plaintiff sought more than $100 million in damages. Result: favorable confidential settlement.
Copyright Litigation
International Typeface Corporation v. Adobe Systems Incorporated, United States District Court – Chicago.  Represented Adobe in a complex dispute regarding the scope of a license to produce and distribute font software from licensed typefaces, and the right of Adobe to continue to license the ubiquitous Adobe Acrobat software program. Result: favorable confidential settlement for Adobe recognizing Adobe’s right to continue to distribute Adobe Acrobat.
Agfa Monotype Corporation and International Typeface Corporation v. Adobe Systems Incorporated, United States District Court - Chicago. Represented Adobe in a case asserting that Adobe Acrobat was a “circumvention device” in violation of the Digital Millennium Copyright Act. Result: summary judgment for Adobe.
Adobe Systems v. Southern Software, United States District Court - San Jose. Represented Adobe in a copyright infringement action against another major software publisher (The Learning Company) alleging infringement of Sony’s font software. Result: published decision holding for first time that font software is protectable by copyright, as well as a $2 million public settlement and permanent injunction.
Adobe Systems Incorporated v. One Stop Micro – United States District Court- San Jose. Represented Adobe Systems Incorporated in copyright and trademark case in which key question was whether Adobe software was licensed or sold (and thus subject to a first sale defense). Result: published summary judgment for Adobe and confidential favorable settlement.
Hi Tek Software LLC v. Foxconn (Hon Hai Precision Industry Co.) – United States District Court – Los Angeles.  Represented Foxconn in copyright case alleging unlawful copying of software. Result: confidential favorable settlement.
Trademark Litigation
FreecycleSunnyvale v. The Freecycle Network, United States District Court - San Francisco and Ninth Circuit. Obtained declaratory judgment in district court, affirmed by the Ninth Circuit, that “freecycle” and related terms were nakedly licensed to client, FreecycleSunnyvale, by The Freecycle Network and thus abandoned as trade- marks. In addition, obtained reversal in the Ninth Circuit of a preliminary injunction issued in a separate case brought by The Freecycle Network enjoining Mr. Oey from “tending to disparage” the validity of the alleged “freecycle” trademarks and from encouraging others to use the word “freecycle” in its generic sense. The case is the first to hold that the there is no cognizable claim for trademark disparagement under the Lanham Act.
Adobe Systems Incorporated v. MacUSA, United States District Court - San Jose . Represented Adobe in a trademark infringement arising out of the removal of educational labels from Adobe software. Result: court entered a preliminary injunction enjoining the defendant’s distribution of educational versions of Adobe software from which the educational labels were removed, followed by favorable confidential settlement. defeated Oracle’s motion for preliminary injunction followed by favorable confidential settlement.
Adobe Systems Incorporated v. One Stop Micro, Inc., United States District Court - San Jose.  Represented Adobe in a trademark infringement action. Result: court entered partial summary judgment for Adobe that the defendant’s removal of educational labels from Adobe software and its subsequent distribution of Adobe software in such adulterated packaging constitutes trademark infringement, followed by favorable confidential settlement agreement.
Trade Secret Litigation
Magic Leap v. Bradski, United States District Court – San Francisco.  Represented Arraiy, Inc. in trade secret litigation. Result: confidential settlement agreement not affecting Arraiy’s ability to develop its products.
Advanced Micro Devices, Inc. v. Hyundai Electronics America, Inc., Santa Clara Superior Court. Represented a division of Hyundai, now Hynix Semiconductor, in an action alleging inevitable disclosure of trade secrets relating to flash memory devices. Result: confidential settlement allowing continued development of client’s products.
Alza Corporation v. Andrx, Inc., United States District Court - San Jose. Represented defendant in a misappropriation of trade secrets/inevitable disclosure of trade secrets case relating to osmotic drug delivery systems . Result: favorable confidential settlement.
Charles Evans Associates v. Accrual, Santa Clara Superior Court. Represented leading provider of SIMS analysis services against a former employee and his new employer. Result: obtained temporary restraining order and preliminary injunction, followed by favorable confidential settlement.
Antitrust Litigation
Intellectual Ventures v. Capital One Financial Corporation, District Court – Alexandria, VA.  Represented Intellectual Ventures in defending counterclaim alleging monopolization of a market consisting of Intellectual Ventures’ own patents. Result: dismissal for client.
In Re International Neutronics, Inc., Robertson v. Isomeric, Inc., United States District Court - San Francisco. Represented a defendant in bid-rigging and antitrust claims arising out of a joint purchase of radioactive cobalt-60 at a bankruptcy sale. Result: summary judgment for client, affirmed by Ninth Circuit.
In Re Hayes Modem Patent Litigation, United States District Court - San Francisco.  Represented a defendant in an antitrust action alleging that a patent infringement action was brought in an attempt to monopolize the modem market, after court entered judgment that patent was invalid as obvious. Result: summary judgment for client on the ground that invalidity for obviousness cannot support antitrust action based on the filing of a patent infringement action.
Licensing Litigation and Arbitration
The Monotype Corporation v. Adobe Systems Incorporated, ad hoc arbitration – London.  Represented Adobe in a complex dispute regarding the scope of a license to produce and distribute font software from licensed typefaces, and particular the right of Adobe to continue to license the ubiquitous Adobe Acrobat software program. Result: arbitration award for Adobe on all key issues, followed by confidential settlement for Adobe recognizing Adobe’s right to continue to distribute Adobe Acrobat.
Sierra Wireless v. Foxconn (Hon Hai Precision Industry Co.) – American Arbitration Association – San Francisco.  Represented Foxconn in licensing dispute. Result: summary judgment for Foxconn and confidential favorable settlement.
Kensington v. Targus Group International, California Superior Court - San Mateo. Represented Targus in an action alleging breach of patent license. Result: favorable confidential settlement with favorable modification of terms of license.
Intrado v. Openwave Systems, Inc., American Arbitration Association – Boulder. Represented Openwave in an arbitration arising out of the licensing of wireless 911 technologies. Result: favorable confidential settlement. Represented plaintiff-software licensor in a breach of contract dispute with a licensee. Result: favorable confidential settlement.
Microtech v. Integrated Systems, JAMS - Palo Alto Represented a public company in a JAMS arbitration against its public company distributor/OEM in which each party asserted substantial claims. Result: arbitration award for client on all claims.
The Pan Group v. Solcas Polymer, AAA - San Francisco.
 Represented developer of PAN film manufacturing technology in an arbitration brought by an entity asserting a right to 30 percent of the proceeds from exploitation of technology pursuant to an earlier settlement agreement, which dispute turned in large part on the validity and interpretation of certain patents relating to the manufacture of PAN film. Result: favorable confidential settlement.
Live Picture, Inc. v. MetaTools, Inc., AAA - Palo Alto . Represented claimant in an AAA arbitration seeking unpaid royalties under a software license. Result: arbitration award for claimant, including attorneys’ fees.
education
Juris Doctor, Stanford Law School, Stanford, CA
Bachelor of Arts (with Distinction and Phi Beta Kapa), Economics, Stanford University, Stanford, CA
admissions
Admitted to practice in California
N.D. California, C.D. California, E.D. California, S.D. California, Ninth Circuit, Federal Circuit
venue experience
N.D. California
C.D. California
Delaware
S.D. New York
N.D. Illinois
S.D. Illinois
D. Maryland
D. Nevada
E.D. Texas
E.D. Virginia
American Arbitration Association
Judicial Arbitration and Mediation Service
London Court of International Arbitration
London Ad Hoc Arbitration