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Christopher
Marchese
Principal
858-678-4314
Christopher Marchese is a Principal in the Southern California office of Fish & Richardson. His practice focuses on patent litigation, including cases involving computer networking, hardware, and software, as well as integrated circuits, compression technology, and wireless communications. Mr. Marchese has substantial experience handling trials, pivotal motions, and other key aspects of patent litigation matters, including summary judgment arguments, tutorials and argument at Markman hearings, and mock jury trials. He has litigated or tried major patent cases in multiple jurisdictions across the United States, including the Central, Southern, and Northern Districts of California, the District of Delaware, and the Western District of New York. In addition to patent litigation, Mr. Marchese also represents his clients in cases involving trademarks, copyrights, unfair competition, and trade secrets.
As a complement to his litigation practice, Mr. Marchese also performs patent portfolio analyses for his clients, both in connection with potential litigation and for corporate acquisitions. He also has prepared and prosecuted numerous patent and trademark applications.
Mr. Marchese’s technical expertise and knowledge extends to a variety of technologies that include:
- Video compression (MPEG-1, MPEG-2, H.264, and VC-1 standards and related technology);
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Audio compression (including MP3 standard and related technology);
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Speech compression (including G.723.1 standard and related technology);
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Computer networking (including ATM, Ethernet, DOCSIS, and WiMAX technologies);
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Semiconductors and integrated circuitry;
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Software (various operating systems and a wide range of application software); and
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Satellite technology.
In 1999, Mr. Marchese co-authored a comprehensive treatise on patent damages that is updated annually and has been cited by the Federal Circuit in Lucent v. Gateway, as well as numerous district courts. He has participated in panel discussions and given speeches and seminars around the country on patent damages, and he lead a team that developed Fish & Richardson’s patent damages web page. In addition, he has written numerous law review articles on subjects that include patent damages, federal jurisdiction, and the best mode requirement. His articles have been cited by district courts and the Federal Circuit.
Admissions
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California
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United States Patent and Trademark Office
- United States Court of Appeals for the Federal Circuit
Other Distinctions
Acclaimed Litigation Victories
National Law Journal, 2009 "Appellate Hot List," Predicate Logic v. Distributive Software, 544 F.3d 1298 (Fed. Cir. 2008).
National Law Journal, 2000 “Top Defense Victory,” Bellcore v. FORE Systems, Inc.
Selected Publications
Co-author of treatise entitled "Patent Damages Law & Practice" (West Group Publishing).
Author of numerous articles, including:
"Runaway Patent Damages Awards: Is Statutory Reform on the Way?,” Los Angeles Daily Journal, August 11, 2010.
"Patent Damages," Corp. Counsel Rev., 17, 3 (1998).
"Patent Infringement and Future Lost Profits Damages," Arizona State L.J., 26 (1994).
"Challenging Subject Matter Jurisdiction in Patent Infringement Suits," UMKC L. Rev., 61 (1993).
"Promoting the Progress of the Useful Arts by Narrowing Best Mode Disclosure Requirements in Patent Law," U. Pitt. L. Rev., 54, 589 (1993).
"The Dormant Commerce Clause and Airport Noise: A Case for Narrow Judicial Review," Baylor L. Rev., 44, 645 (1992).
"Confusion, Uncertainty, and the Best Mode Requirement," Fed. Cir. Bar. J., 2 (1992).
Quoted in a San Diego Daily Transcript article, “Damage Awards a Sticking Point in Patent Reform Debate,” by Doug Sherwin (September 22, 2010).
Selected Speaking Engagements
March 18, 2010 - Christopher Marchese, Heidi Harvey, John Dragseth, “Beyond Forest: What Do You Really Need to Know about Patent Marking,” Fish & Richardson webinar.
April 14, 2010 - Christopher Marchese participated in a panel discussion on “The Legislative Role of Patent Damages,” IP Counsel Café, Palo Alto, California.
May 18, 2010 - Christopher Marchese, Justin Barnes, Michael Florey, John Skenyon presenting “Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?” in Minneapolis.
May 20, 2010 - Christopher Marchese, Justin Barnes, Michael Florey, John Skenyon presenting “Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?” in Boston.
May 26, 2010 – Christopher Marchese, Justin Barnes, Michael Florey, John Skenyon presenting “Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?” in San Diego. Education
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BA,
Centre College of Kentucky
1987
Mathematics
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BS,
University of Kentucky
1987
Electrical Engineering
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JD,
George Washington University Law School
1992
Experience
Patent Infringement Cases
Applied Signal Technology, Inc. v. Paradise Datacom LLC and ViaSat, Inc. (N.D. Cal.) – Represent ViaSat and Paradise Datacom in five-patent case.
Lucent v. Gateway/Microsoft and Multimedia Patent Trust v. Microsoft cases:
Multimedia Patent Trust v. Microsoft No. 06-CV-0684 H (S.D. Cal.) - Defended Microsoft against video compression patent asserted by MPT. MPT claimed infringement by MPEG-2 and VC-1 decoders and sought more than $400 million in damages. Jury returned verdict of no infringement and awarded no damages.
Lucent and MPT v. Microsoft No. 07-CV-2000 H (S.D. Cal.) - Defended Microsoft against video compression patent asserted by Lucent/MPT and other patents. Lucent/MPT claimed all MPEG-1, MPEG-2, and VC-1 decoders infringed and sought nearly $1 billion in damages. Jury returned a verdict of no infringement and invalidity and awarded no damages for the video patent.
Lucent v. Microsoft No. 02-CV-2060 B consolidated with 03-CV-0699 B and 03-CV-1198 B (S.D. Cal.) - Defended Microsoft in multi-part lawsuit. In one part, Lucent claimed Microsoft infringed three speech compression patents. Obtained dismissal of two speech patents, one during fact discovery, and the other after completion of expert discovery. Summary judgment granted on third speech patent (Lucent had sought more than $170 million in damages). Federal Circuit affirmed (525 F.3d 1200). In another part, Lucent claimed MP3 software infringed three audio compression patents. Obtained dismissal of one audio patent during fact discovery. District court overturned jury verdict of $1.5 billion on remaining two patents. Federal Circuit affirmed (2008 WL 4349326). Named by IP Law & Business to “Top 10 Litigation Wins” of 2008.
National Law Journal's 2009 "Appellate Hot List": Predicate Logic v. Distributive Software (S.D. Cal.) – Lead counsel for Predicate Logic in patent infringement action on software patent. Obtained complete reversal by Federal Circuit of district court decision invalidating claims after patent reexamination. Reported at 544 F.3d 1298 (Fed. Cir. Oct. 9 2008). Case settled after remand.
National Law Journal’s 2000 “Top Defense Victories”: Bellcore v. FORE Systems (D. Del.) - Defended FORE against assertion of four patents relating to telecommunications technology, including ATM and Ethernet. Bellcore dismissed two patents after expert discovery. On eve of jury trial involving claim for hundreds of millions in damages, court issued favorable Markman ruling on the two remaining patents. Bellcore admitted it could not prove infringement and final judgment of no infringement was entered for FORE. Named top defense victory by National Law Journal in 2000. Federal Circuit affirmed on one patent (unreported opinion 2003 WL 1720080). Case settled after remand of remaining patent.
LG v. Kodak (S.D. Cal., WDNY, ITC) – Represented LG in multi-jurisdiction case involving numerous patents. Global settlement reached.
Intel v. Broadcom (D. Del.) - Represented Intel asserting four patents on digital video compression and another on computer networking. Jury trial for Broadcom on video patent overturned and new trial granted. Case settled after grant of new trial.
Dimension One Spas v. Coverplay (S.D. Cal.) – Lead counsel for Dimension One on patent related to spa covers. Won bench trial rejecting defense of inequitable conduct. Case settled after winning summary judgment of infringement.
Dimension One Spas v. Ouellette (S.D. Cal.) – Lead counsel for Dimension One on patent related to spa covers. Obtained final judgment of $654,000 in actual damages, $1.3 million in enhanced damages, and $250,000 in attorneys' fees.
Trademark/Unfair Competition Cases
USP v. Innotek (S.D. Cal.) – Lead counsel for Innotek in two separate actions involving allegations of design patent infringement, trademark infringement, and unfair competition. Cases settled favorably for Innotek.
PeopleWeb v. The PeopleWeb Inc. (TPI) (N.D. Cal., D. Mass.) – Lead counsel for PeopleWeb in domain name and Internet trademark infringement cases. Case settled after defeating TPI’s motions to dismiss for lack of jurisdiction.
Property Assessment Adjusters cases (S.D. Cal.) – Lead counsel for PAA in series of trademark infringement and unfair competition cases.
Counterfeiting
Adaptec v. Chang (N.D. Cal.) - Represented Adaptec in counterfeiting case involving SCSI adapters and chips. Won seizure of counterfeit adapter boards and chips and worked with U.S. Customs to identify counterfeit products.
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