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Software

Fish assists clients in the computer software industry to obtain protection via patents and copyrights and in licensing and other transactions.

We have extensive experience in the prosecution of software patent applications. Our clients include multinational software vendors such as Adobe Systems Incorporated, a range of small enterprises and start-ups, and individual inventors. Subjects include computer networks, parallel processing, optimization algorithms, voice recognition, imaging, operating systems, and user interfaces.

We have implemented copyright registration programs in the United States and advised on international protection of software via copyright and trade secret laws.

We have counseled clients on validity and infringement of software patents in diverse fields, including computer networks, CASE and CAD systems, windowing, operating systems, industrial and consumer application programs, image processing, graphics, fax, general ledger accounting, and modem control.

Our software licensing experience includes ongoing, across-the-board representation of software and database suppliers, and individual projects for other clients. We have drafted and negotiated agreements for the development and distribution of application programs and databases, as well as drafted and reviewed shrink-wrap licenses.

Our licensing work has included source code licensing and negotiation of source code escrow arrangements. In 1988, we compiled a compendium of packaged software licensing agreements that remains a primary source of model agreements for the software industry.

With 140 attorneys who have experience with various software, many with prior careers within the industry, we are uniquely positioned to provide a full range of IP services to organizations within the software industry. In fact, more of the 50 most innovative companies in America, as ranked by IP Law & Business, referenced our patent prosecution work than that of any other law firm.

CEATS Inc. v. Continental Airlines Inc.
Represented United, Continental, Delta, US Airways, Virgin, Ticketmaster, Live Nation, and TicketsNow. Invalidated 4 claims from 4 patents based on anticipation and obviousness in patent infringement suit concerning interactive seat map technology.

Tarkus Imaging, Inc. v. Adobe Sys., Inc. et al.
Represented Adobe Systems, Inc. in patent litigation in the District of Delaware over Adobe Photoshop, one of the leading digital imaging products worldwide. Won a jury verdict of no infringement.

Eolas Technologies Inc. et al. v. Adobe Systems Incorporated et al.
Represented Adobe and Go Daddy in a multi-defendant, multi-patent litigation in the Eastern District of Texas relating to interactive content in browsers. Jury verdict of invalidity of all asserted claims.

Predicate Logic v. Distributive Software (No. 2007-1539)
Fish successfully represented Predicate Logic in obtaining a reversal of the district court’s summary judgment of invalidity. The patent at issue involved a method for data measurement and analysis that could be used in software development.

Lucent Technologies Inc., et al. v. Gateway Inc., et al.
Fish successfully obtained affirmance of the district court’s ruling of noninfringement and lack of standing that set aside a $1.52 billion damage award (the largest patent infringement verdict in history) against client Microsoft. The patents at issue related to encoding and decoding of audio into the digital MP3 format. (Fed. Cir. docket nos: 2007-1546, -1580, 2008-1022. Cite: 2008 WL4349236.)

SRI International, Inc. v. Symantec Corporation and Internet Security Systems, Inc
Fish successfully represented SRI International as co-lead counsel in the District of Delaware in securing a jury verdict of infringement and patent validity against both defendants Symantec and ISS. Technology at issue related to computer network intrusion detection. The case is currently in the post-trial motions stage and the issues of damages and willful infringement have been bifurcated.

Morrow v. Microsoft Corp. (499 F.3d 1332)
Fish successfully obtained reversal of district court’s decision that creditors of bankrupt Internet service provider had standing to sue Fish client Microsoft for patent infringement. The patents at issue involved hypertext technology.

Data Encryption Corp. v. Microsoft Corp. (248 F. App’x 166)
Fish represented Microsoft against Data Encryption, a subsidiary of infamous patent assertion company Acacia Technologies Group, who had accused the encrypting file system of Microsoft Windows of infringing its patent. Fish successfully obtained affirmance of district court’s summary judgment on non-infringement. The patents at issue related to file encryption and decryption.

Toshiba Corp. v. Juniper Networks, Inc. (248 F. App’x 170)
Fish successfully obtained affirmance of district court’s claim construction, which had resulted in summary judgment of non-infringement favorable to client Juniper Networks. The patents at issue involved a routing scheme for sending data between computers and disparate types of networks.

JuxtaComm Technologies Inc. v. Ascential Software Corp., et al.
Represented Microsoft in a multi-defendant patent infringement case filed in the Eastern District of Texas involving database technologies and data integration software. Case settled favorably.

Accolade Systems LLC v. Citrix Systems Inc.
Obtained summary judgment in favor of client Citrix releasing Citrix from all asserted claims in software patent infringement suit.

Northeastern University, et al. v. Google, Inc.
Defending Google against claims for patent infringement. The technology at issue relates to techniques for searching large, distributed databases.

Witness Systems Inc. v. NICE Systems Inc., et al.
Fish successfully represented Witness in a patent infringement case involving speech analytics. The case was tried verdict and the jury found infringement and awarded precise damages demand advanced at trial.

HyperPhrase Technologies, LLC and HyperPhrase, Inc. v. Google, Inc.
Successfully defended Google, Inc. in a multi-patent case brought by HyperPhrase. The accused technology included Google Search, AdSense, and the autolink feature of the Google toolbar. Won summary judgment of noninfringement of all asserted claims.

Arendi U.S.A. Inc., et al. v. Microsoft Corp., et al.
Defended Microsoft in a patent case relating to Office XP "smart tag" technology, which involves associating actions with certain content in an electronic document. Won jury verdict of non-infringement (the first ever for Microsoft) after a two week trial. Verdict selected by the National Law Journal as one of the ten top defense verdicts of 2004.

Uniloc USA Inc., et al. v. Microsoft Corp., et al.
Defending Microsoft in patent infringement lawsuit accusing Microsoft Product Activation. District court granted post-trial JMOL of non-infringement and no willfulness, along with, in the alternative, a new trial. Appeal currently pending before the Federal Circuit.

Sybase, Inc. v. Vertica Systems, Inc. (E.D. Texas)
Successfully defended Vertica in bet-the-company litigation involving two patents and column-oriented databases. Obtained summary judgment of invalidity on one half of one patent and a stipulation of no infringement based on the Court’s claim construction on the other half. Case settled on favorable, but confidential, license terms one week before scheduled invalidity hearing on second patent.

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