W. Paul Schuck
University of Michigan School of Law, J.D., 1999 (cum laude, Michigan Law Review)
University of Wisconsin, M.A., 1985 (American History)
Yale College, B.A., 1983 (History)
Intellectual Property Litigation, including patent, trade secret, trademark/trade dress and right of publicity disputes
Complex Commercial Litigation
Paul Schuck, a principal in the firm, represents plaintiffs and defendants in intellectual property and complex commercial litigation, typically technology related. Mr. Schuck focuses on patent litigation and has litigated patent disputes involving a broad array of technologies ranging from biotech to software to mechanical devices such oil drilling equipment and gaming machines. He also has extensive experience with trade secret, trademark, right of publicity and licensing matters. His practice has included matters in district courts across the country. Mr. Schuck also regularly counsels clients on intellectual property matters in order to avoid future liabilities. In addition, Mr. Schuck has handled appellate matters before the Federal Circuit, the Ninth Circuit and California Appellate Courts.
Natera, Inc. v. Sequenom, Inc. (N.D. Cal.) Lead counsel representing declaratory judgment plaintiff asserting that patent-in-suit relating to non-invasive, prenatal genetic testing is not valid and not infringed. Obtained summary judgment of patent invalidity for lack of patentable subject matter under 35 U.S.C. § 101. Judgment unanimously affirmed in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015).
Xilinx, Inc. v. Papst Licensing GMBH & Co.; Altera Corporation v. Papst Licensing GMBH & Co. (N.D. Cal.) Co-counsel representing German defendant in declaratory judgment actions regarding patent invalidity and non-infringement. Court dismissed all claims in favor of client after granting motion to dismiss for lack of personal jurisdiction.
Genetic Technologies Limited v. Natera, Inc. (D. Del.) Lead counsel defending genetic testing company against claims of patent infringement by non-practicing entity. After obtaining transfer to the Northern District of California, the plaintiff dismissed all claims in a “walk away” agreement without payment of any damages.
Antennatech, LLC v. Jamba, Inc. (D. Del.) Represented juice drink provider in patent dispute with non-practicing entity that was successfully resolved prior to any significant litigation.
Advised beverage company developing new product on potential patent issues and implications of doctrine of exhaustion.
Innovus Prime, LLC v. LG Electronics, Inc.; Innovus Prime LLC v. VIZIO, Inc. (N.D. Cal.) Defended VIZIO in patent infringement litigation initially brought by non-practicing entity against eighteen leading television producers.
Duhn Oil Tool, Inc. v. Cooper Cameron Corp. (E.D. Cal.) Member of trial team on patent infringement action related to oil and natural gas drilling equipment. At trial, the jury awarded client nearly $10,000,000 in damages. The case settled while on appeal.
EBS Automotive Systems, et al. v. Illinois Tool Works, et al.; Illinois Tool Works v. MOC Products Company, et al. (S.D. Cal.) Represented Illinois Tool Works in two patent infringement cases involving motor vehicle maintenance equipment.
AntiCancer, Inc. v. Carestream Health, Inc. (S.D. Cal.) Defended medical equipment company against claims of infringement of patents concerning use of cancer cells transformed to express green fluorescing proteins. The case settled favorably after partial summary judgment of non-infringement was granted in favor of client.
International Printer Corp. v. Brother International Corp. et al. (E.D. Tex.) Defended producer of imaging and printing equipment in patent infringement suit in the Eastern District of Texas regarding systems and methods for monitoring and controlling copy machines.
DR Systems, Inc. v. Fujifilm Med. Sys. USA Inc., et al. (S.D. Cal.); DR Systems, Inc. v. Eastman Kodak Company (S.D. Cal.) Represented leading imaging company in two separate patent infringement suits regarding picture archiving and communications systems (PACS) for medical images such as MRI and CT scans.
Board of Regents of the University of Texas, et al. v. Eastman Kodak Company, et al. (W.D. Tex.) Successfully defended provider of dental image management software against claims of patent infringement.
In re Columbia University Patent Litigation (M.D.L., D. Mass., N.D. Cal.) Represented major biotechnology company in high-profile, multidistrict litigation regarding validity of basic DNA technology patent for co-transformation of cells. The litigation was resolved favorably when the patent holder entered into a covenant not to sue and terminated its infringement claims. The Patent Office, after reexamination proceedings, ultimately found the patent to be invalid for double patenting.
Tegic v. Zi Corporation (N.D. Cal.) Member of team representing Tegic in trial involving cross claims for patent infringement of multiple patents. Successfully handled post-trial briefing sustaining a jury award of over $8,000,000 in Tegic’s favor.
Shuffle Master v. Alliance Gaming, et al. (D. Nev.) Represented a gaming industry company in patent and trade secret disputes involving numerous patents for table game monitoring technology. Summary judgment granted in favor of client on most major issues.
Hoffer v. Microsoft Corp., et al. (N.D. Cal. and Fed. Cir.); Hoffer v. International Business Machines Corp. (S.D. Cal., N.D. Cal. and 9th Cir.) Defended a leading computer company in patent litigation concerning internet databases. Obtained summary judgment of non-infringement, affirmed in Hoffer v. Microsoft Corp., et al., 405 F.3d 1326 (Fed. Cir. 2005). Successfully obtained dismissal of claims in a related trade secret and business torts case also affirmed on appeal.
Webgain, Inc. v. Borland Software Corporation (N.D. Cal.) Represented Borland in complex patent litigation involving multiple patents concerning programming environments for creating software. The case settled favorably after positive rulings on claim construction and motions for partial summary judgment.
Davis, et al. v. Electronic Arts, Inc. (N.D. Cal.) Represented retired NFL football players in class action asserting right of publicity and related claims against leading sports video game producer. Successfully defended against anti-SLAPP motion to dismiss case. The case is currently on appeal.
LumaSense v. Neoptix, Inc. (N.D. Cal.) Defended Neoptix, a manufacturer of fiber-optic temperature sensors, against allegations of cybersquatting, trademark infringement and trade secret misappropriation. Achieved early settlement in mediation.
Hannah v. Currie Acquisitions, LLC (Cal. Sup. Ct., Los Angeles) Represented well-known actress in right of publicity suit based on defendants’ unlicensed use of photographs of actress in advertising and promotional materials.
Defended a start-up semiconductor producer and its employees in a trade secret and wrongful hiring dispute.
Bancorp v. Hartford Life Insurance (E.D. Mo.) Represented the plaintiff in patent and trade secret cases concerning business methods for insurance investment products that resulted in nine-figure verdict in favor of client.
Represented leading toy company in multiple trademark and domain name disputes, many implicating Constitutional issues of fair use and free speech.
Sedona Corporation v. Open Solutions, Inc. (D. Conn.) Represented developer of customer relationship management software alleging misuse of proprietary technology in breach of license and trade secret case.
AvAero Noise Reduction Joint Venture v. AeroTech Services, Inc. (C.D. Cal.) Represented inventors of fuel-saving aircraft modification asserting breach of contract claims for license granting rights to patent and FAA-issued certificate permitting use of the modification, and related patent infringement claims.
Towantic Energy, L.L.C. v. General Electric Company (N.D. Cal.) Represented producer of gas and steam turbine generators in breach of contract dispute regarding contractual termination fee of over $20,000,000.