Site People

Katherine Kelly Lutton

Principal

Silicon Valley

650-839-5070

Principal Kathi Lutton leads and tries high-profile, high-stakes, high-tech patent litigation in a myriad of technologies, including semiconductor technology, telecommunications, circuits and systems, computer technology, software, and Internet applications. She advises clients ranging from Fortune 100 companies to start-ups on their portfolios, patent protection, patent enforcement, patent defensive efforts, patent prosecution, and other intellectual property matters. She protects innovative companies who are wrongfully accused of patent infringement. Where the other side is reasonable and honest about their case, Ms. Lutton can often reach an agreement short of trial and often very early in the case. Inside and outside of the courtroom, Ms. Lutton is often called upon as an expert on case strategy and hot topics in the law.

Ms. Lutton served for four years in firm management (2007-2011), leading the firm's litigation group (60% of the firm) and separately serving on the firm’s Management Committee. She led the firm's largest practice group of 270 lawyers in 11 offices worldwide. Ms. Lutton maintained Fish & Richardson's position as one of the top patent litigation firms in the world. She also led Fish's commercial litigation group, which tries some of the most high profile cases in the country including the 9/11 litigation.

Ms. Lutton has received numerous accolades for her work, including being inducted as a 2012 Fellow by Litigation Counsel of America, named by The Recorder as one of 2012's Women Leaders in Law, being listed in Chambers USA for her leadership in her practice area in 2012, listed in 2010 and 2011 Super Lawyers Corporate Counsel Edition, listed as one California's Top 100 Lawyers of 2008 by the Daily Journal, and listed on the Daily Journal's list of 50 Leading Intellectual Property Litigators in California (2008) and the Daily Journal's list of the 75 Leading Intellectual Property Litigators in California (2009 & 2010). Ms. Lutton was recently recognized by Benchmark Litigation and was named to the Top 250 Women in Litigation list. Ms. Lutton was also recognized by the Daily Journal in 2007, 2008 and 2009 as one of the Top Women Litigators in the State of California, won the 2007 Women of Distinction Award in the "Law" category, presented by the Silicon Valley/San Jose Business Journal, was distinguished as one of the "Forty under Forty People to Watch" in Silicon Valley by the Silicon Valley/San Jose Business Journal, was recognized by the Silicon Valley/San Jose Business Journal as a Woman of Influence in Silicon Valley (2008), and was recognized by the San Francisco Business Times as one of the Most Influential Women in the Bay Area (2008) and since 2008 has been named 'Forever Influential'. Ms. Lutton was also one of five 2008 Legal Momentum Women of Achievement Honorees and was ranked in the Chambers 2008 Guide for America's Leading Lawyers for Business as a Leader in Intellectual Property. Ms. Lutton is recognized as a Northern California Super Lawyer (2009-2012). Ms. Lutton served on the Board of Directors of the Federal Circuit Bar Association from 2008-2011.

Ms. Lutton started her career as an electrical engineer. She worked for five years as a systems and software design engineer with General Electric, where she graduated from the prestigious Edison Engineering Program and designed one of the first leading edge expert systems (neural networks, fuzzy logic) for aircraft. Through the rotational management program, Ms. Lutton designed aircraft control systems which are currently employed on military aircraft. She also led design teams in a number of departments (software design, systems design, hardware design, research & development, manufacturing) that gave her broad exposure to industry and technologies. Ms. Lutton was a member of the IEEE (Institute of Electrical and Electronics Engineers) and won their North East Regional Design Contest when she was in school (designing a “smart” basketball system). Ms. Lutton can read and fully understand source code, schematics and technical materials and explains concepts clearly to courts and juries. Ms. Lutton's technical background includes a solid background in mathematical physics and programming, combined with a bachelors and masters in electrical engineering.

Admissions

California 1998
United States Patent and Trademark Office 2000
United States Court of Appeals for the Federal Circuit
United States District Court for the Northern District of California
United States District Court for the Central District of California
United States District Court for the Eastern District of California

Clerkships

The Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit, 1996 - 1997

Memberships and Affiliations

Adjunct Professor of Patent Law, Santa Clara University School of Law (2002).  Member: Intellectual Property Owners' ("IPO") Litigation Committee, American Intellectual  Property Law Association (AIPLA).  Masters thesis: "Application of Fuzzy Logic to Fault Diagnostics.”  Started college and her NCAA volleyball career at age 16.

In her spare time, Ms. Lutton runs marathons (Austin 02.15.2009; Big Sur 04.26.2009; San Francisco 07.26.2009; Alaska (Humpey's Anchorage) 08.10.2009; Maui 09.20.2009; Marine Corp. 10.25.2009; New York City 11.2.2009; Napa Valley 3.7.10; Big Sur 4.25.10; Nike Women's Marathon San Francisco 10.17.10; Morgan Hill Marathon 11.7.10).

Four years ago Ms. Lutton joined the Fortune/US State Department Global Women's Mentoring Partnership. Her incredible experience with one of her mentees was published in the Watson Review by Binghamton University, her alma mater. The article can be viewed here as a pdf, or via link here. "A foremost objective of the global women's program is to 'pay forward' or to encourage the women to empower other women in their countries upon their return." As the Huffington Post explains in "When Powerful Women in the World Unite," this is seems like a no-brainer for Kathi, saying "How could I not be a mentor?"

See also http://postcards.blogs.fortune.cnn.com/2010/05/04/career-counseling-goes-global-in-silicon-valley/, http://postcards.blogs.fortune.cnn.com/2010/07/01/africas-growth-vehicle-women//, and http://postcards.blogs.fortune.cnn.com/2010/06/22/on-the-road-in-south-africa/. Ms. Lutton has mentored Susan Rammekwa from South Africa (2009), Gaelle Pierre from Haiti (2010) and Manal Elattir from Morocco (2011). Ms. Lutton is also involved with The Big Pink Ribbon and is actively involved with Freshwater Haven and helping Michealene Risley expose the brutal treatment of young girls in Zimbabwe. See http://savehope.blogspot.com/2007/07/video-on-betty-makoni-and-zimbabwe.html. Ms. Lutton also enjoys photography and has had pictures she has taken of President Obama and Hillary Clinton published in Fortune. See http://postcards.blogs.fortune.cnn.com/2010/10/15/president-obamas-speech-to-fortunes-most-powerful-women/ and http://postcards.blogs.fortune.cnn.com/2010/10/07/the-biggest-emerging-market-women/.

Other Distinctions

Speeches and publications 
Ms. Lutton is often asked to speak on a wide range of topics, including the America Invents Act and strategies relating to the same, strategic prosecution, hot topics in litigation, Supreme Court jurisprudence, indemnity, reexamination strategies in litigation, willfulness, doctrine of equivalents, and topics relating to the mentoring and empowerment of women. She is also called upon to moderate panels involving issues of import to the patent community. Her representative speeches and publications (which do not include the numerous talks she gives at individual client events) include:

Upcoming Speaking Engagements

Katherine Lutton (speaker), SVAGC All Hands Meeting (Santa Clara Convention Center, December 5-6, 2012)

Katherine Lutton (moderator), 13th Annual Advanced Patent Law Insitute (Four Seasons, Palo Alto, December 6-7, 2012)

Past Speaking Engagements 

Katherine Lutton, Becoming a Change Agent, WiLpower Workshop (Fish & Richardson, Redwood City, October 18, 2012)

Katherine Lutton (moderator), ChIPs inaugural Women in IP National Summit (Federal Circuit Judges Panel, Washington, DC, October 10, 2012)

Katherine Lutton (panelist), Silicon Valley Women's Club Launch Party (Quadros, Menlo Park, October 4, 2012).

Katherine Lutton (panelist), Renee Lawson (Zynga, panelist), Hilary Ware (Netflix, panelist), Karen Johnson-McKewan (Orrick, Herrington & Sutcliffe, moderator), Paths to Success for Women in IP, Successful Women in IP Banner (Orrick, Herrington & Sutcliffe LLP, Menlo Park, September 12, 2012).

Katherine Lutton, Bernard Knight (USPTO), Emily Ward (eBay), Ted Joe (Salesforce.com), Eric McAlpine (Groupon), America Invents Act: Strategic Considerations, The IP Counsel Café (Palo Alto, April 18, 2012).

Katherine Lutton (moderator), Judge Lucy Koh, & Judge Paul Grewal, Judicial Panel, Advanced Patent Law Institute (Four Seasons Palo Alto, December 8, 2011).

Katherine Lutton, Jeff Joyner, Karen Williams (Sybase), Mary Fuller (Maxim Integrated Products), Mike Edelman (Sony Computer Entertainment), Patent Reform and Recent Trends in Patent Disputes; New Legislation, Court Decisions and Administrative Changes and How They Affect Business Models and Practice, Patent Disputes Conference (Santa Clara, November 9, 2011) (also Conference Co-Chair).

Katherine Lutton, Circuit Judge Sharon Prost, Judge Ichiro Ohtaka (Tokyo D. Court), Shoichi Okuyama, Naoki Yoshida, Robert Mukai, The Doctrine of Equivalents, Federal Circuit International Series, Tokyo (Tokyo, October 26, 2011).

Katherine Lutton and panelists, Careers, Mentoring and Networking, Inaugural Women@Google, Tokyo Conference (Tokyo, October 25, 2011)

Katherine Lutton, Becoming a Change Agent, WiLpower Workshop (Fish & Richardson, Redwood City, October 13, 2011)

Katherine Lutton, Emily Ward (eBay), Mallun Yen (RPX), Mona Sabet (Cadence), Julie Mar-Spinola (Alta Devices), Michelle Lee (Google), Noreen Krall (Apple), and Anirma Gupta (Intuit), Career Transitions – Viewpoint from 7 ChIPsters, ChIPs, (Fish & Richardson P.C., Redwood City, October 10, 2011)

Katherine Lutton, Emily Ward (eBay), Steve Carlson, Alexander Harguth, Positioning for Patent Reform (Bacchus, Redwood City, August 18, 2011).

Katherine Lutton, Emily Ward (eBay), Steve Carlson, Alexander Harguth, Positioning for Patent Reform, Silicon Valley Association of General Counsel Luncheon (Santa Clara Marriott, August 19, 2011).

Katherine Lutton, David Bloch, Julie Holloway, Michael Jacobs, Lee Van Pelt, Practitioners Panel, Conference on Improving the PTO-US Court Interface (Berkeley, June 2011).

Katherine Lutton, Mona Sabet, Ida Abbott, Ann Cathcart-Chaplin, Championing Women, LEAD Conference (Menlo Park, May 2011).

Katherine Kelly Lutton, Circuit Judge Kimberly Moore, Circuit Judge Sharon Prost, Judicial Panel, Association of Corporate Patent Counsel Winter Meeting (Naples Grande Resort & Club, Naples, FL, January 23-26, 2011).

Katherine Kelly Lutton (moderator), Chief Judge James F. Holderman (NDIll), Judge Lee Yeakel (WDTX), Magistrate Judge Elizabeth Laporte (NDCal), Judicial Panel, 2011 Advanced Patent Law Institute (USPTO, January 21, 2011).

Katherine Kelly Lutton, From the Alley to the Valley, 85 Broads & Betty Confidential 2010 Investor Forum (Menlo Park, CA, November 12, 2010).

Katherine Kelly Lutton, Noreen Krall, Anirma Gupta, Corrin Drakulich, Change Management, CHiPs (Menlo Park, CA, October 28, 2010).

Katherine Kelly Lutton, Kelly Hunsaker and Kim Frank, Becoming a Strategic Advisor / A Change Agent, WiLPower Program (Redwood City, October 14, 2010).

Katherine Kelly Lutton, Robyn Denholm, Terri Kelly, Kathy Murphy, and Maggie Wilderotter, The Power of Your Network, Fortune Most Powerful Women Summit (Washington, D.C., October 4, 2010).

Katherine Kelly Lutton, T. Rao Coca (NVIDIA), Christopher Marchese, Taraneh Maghame & Brian Napper (FTI Consulting), Damages Law & Policy: Legislative Role of Patent Damages, IP Counsel Café (Palo Alto, April 2010).

Hon. Jeremy Fogel (NDCA), Hon. Elizabeth Laporte (NDCA), Hon. Lee Yeakel (WDTX), Katherine Lutton, Judicial Panel, Daily Journal Advanced Legal Forum (Litigating Patent Disputes: Bridging the Gap Between In-house Counsel and Law Firm) (San Jose, March 2010).

Katherine Kelly Lutton (on panel), Client Relationships: How to Build Them and Get Credit for Them, Women in Law Empowerment Forum (WILEF) (Palo Alto, June 2009).

Hon. David J. Folsom (EDTX), Hon. T. John Ward (EDTX), Hon. Lee Yeakel (WDTX), Katherine Lutton, Judicial Panel, 2008 Advanced Patent Law Institute (Austin, October 2008).

Co-chair, 10th Annual Federal Circuit Bench & Bar Conference (Monterey, June 2008).

Katherine Lutton, Todd Dickinson (GE), Doug Luftman (Palm) & Taraneh Maghame (Tessera), Patent Reform: Is it Dead or Alive? Where are We Now?, IP Law & Business IP Counsel Forum (San Jose, March 2008).

Katherine Lutton, Kelly Hunsaker & Barbara Benoit, Practical Implications of Recent Supreme Court and Federal Circuit Court Decisions, EE Times Intellectual Property Symposium (San Jose, April 2008).

Hon. Chad Everingham (EDTX), Hon. Liam O’Grady (EDVA), Hon. Patti Saris (D.Mass.), Katherine Lutton, Judicial Panel, 2008 Advanced Patent Law Institute, (USPTO, January 2008) (moderated).

Katherine Lutton & Kelly Hunsaker, Latest News on the Patent Reform Front, Litigating Patent Disputes: The Advanced Legal Forum (San Francisco, December 2007).

Hon. David Folsom (EDTX), Hon. Ronald Whyte (NDCA), Hon. Lee Yeakel (WDTX), Katherine Lutton, Judicial Panel, Eighth Annual Advanced Patent Law Institute (San Jose, November 2007) (moderated).

Katherine Lutton, Claude Ducloux, D. Hull Youngblood & Peter Flocos, Drafting and Enforcing Complex Indemnification Provisions, Texas State Bar and ALI-ABA (Austin and Live by Webcast, November 2007).

Rep. Daryl Issa, Hon. Kimberly Moore (Fed. Cir.), Hon. Lee Yeakel (WDTX), Katherine Lutton & Nick Groombridge, Strategic Considerations in an Evolving Patent Venue Landscape, Federal Circuit Bench & Bar Conference (Maryland, June 2007) (moderated).   Katherine Lutton, Rick Frenkel (Cisco), Kevin Rhodes (3M), John Dragseth, KSR, Managing Intellectual Property (Webinar, May 2007).

Katherine Lutton, John Gartman, Jared Bobrow, Darryl Woo, Daniel Johnson, David Doyle, David Makous, Chuleenan Svetvilas (moderator), Patent Litigation Update, California Lawyer (July 2007).

Katherine Lutton, Doug Luftman (Palm), Joe Fitzgerald (Symantec), Derek Minihane (Intermolecular) & Alison Tucher, The Use of Opinions of Counsel, IP Law & Business Spring Briefing (San Jose,May 2007).

Katherine Lutton, Ann Cathcart Chaplin & Jennifer Bush, Don’t Kill the Patient to Kill the Disease: Avoiding Willfulness and Inducement Findings Without Giving up the Case, LEAD Conference (San Diego, April2007).   Katherine Lutton & Ed Reines, DSU Medical Corp. v. JMS Co. Ltd. Decision: Strategic Considerations for the New Inducement Landscape, PLI Briefing (February 2007).

Katherine Lutton & David L McCombs, Reexaminations During the Course of Litigation: What Should You Do?, Seventh Annual Advanced Patent Law Institute, (San Jose, November 2006).

Katherine Lutton & John Benassi, Update on Patent Reform Legislation and Regulations, 31st Annual Intellectual Property Institute Presented by the IP Section of the California State Bar (Santa Barbara, November 2006).

Katherine Lutton, Rose Hagan (Google) & Jennifer Seibly (Lucas Films), Technology Law on the Move, Women in Technology International, Women and Technology Summit (Santa Clara, 2006).

Katherine Lutton and Henry Su, TRO's, Preliminary Injunctions and Stays Pending Reexamination, Practicing Law Institute (San Francisco, 2006).

Co-Chair, IP Law & Business Conference: Innovations in IP Litigation (San Jose, 2006).

Katherine Lutton, Patent Reform: A Perspective, LEAD Conference (Half Moon Bay, 2006).

Katherine Lutton, Dale Lazar, and William Galliani Prosecution Strategies: Looking Ahead to Prevent Challenges, Invalidations, and Design Arounds, Sixth Annual Advanced Patent Law Institute (San Jose, 2005).

Katherine Lutton, Kelly Hunsaker, and Mary Ann Dillahunty, Patent Reform & Legislative Changes on the Horizon, presented in multiple venues on request (2005).

Katherine Lutton & Mary Ann Dillahunty, Strategic Litigation and Prosecution presented in multiple venues on request (2005).

Katherine Lutton, Kelly Hunsaker, and Mary Ann Dillahunty, Proactive Patent Strategies: Thriving in an Era of Patent Reform and Evolving Law, LEAD Conference (San Diego, 2005).

Katherine Lutton and Mary Ann Dillahunty, Strategic Prosecution: How to Come out of Due Diligence Alive, 5th Annual Advanced Patent Law Institute (San Jose, 2004).

Katherine Lutton, Strategic Prosecution: Prosecuting for Trial & Appeals, 4th Annual Advanced Patent Law Institute, (San Jose, 2003).

Katherine Lutton, Prosecution Laches, 3rd Annual Advance Patent Law Institute (San Jose, 2002).

Intellectual Property Reform After the Uruguay Round, Minnesota Institute of Legal Education Conference on Global Markets and the Law (1995) (Presented at Conference by Jon Tuttle).

Selected Publications

Katherine Lutton, "Side Bar: Practical Aspects of the Sorensen Patent," printed in Donald S. Chisum, et al., Principles of Patent Law: Case and Materials (3d ed. 2005).

Katherine Kelly, "The Assumption of Risk Defense and the Sexual Transmission of AIDS: A Proposal for the Application of Comparative Knowledge", 143 University of Pennsylvania Law Review 1121 (1995). (noted as "Worth Reading," National Law Journal, Sept. 25, 1995).

Co-editor, Patent Case Summaries, Federal Circuit Bar Journal, 1998-2002. Article cited in Group One, Ltd. v. Hallmark Cards, Inc. 2001 WL 668549, at *5 n.1 (Fed. Cir. 2001) (Plager, J.).

Education

BS, Binghamton University 1990
Electrical Engineering
MS, Syracuse University 1992
Electrical Engineering
JD, University of Pennsylvania Law School 1996
Editor-in-Chief, University of Pennsylvania Law Review, 1995-1996

Experience

Litigation Examples

Ms. Lutton has first-chaired, led and consulted in numerous litigations in multiple venues including Texas (EDTX, NDTX and WDTX), Delaware, Washington, Wisconsin, California, Illinois (NDIll), Arizona, Florida, Massachusetts, Minnesota, New Mexico, Northern District of New York and Maryland. Ms. Lutton represents and has represented numerous high-tech companies, including eBay, PayPal, SAP, Intel, HP, VMware, NVIDIA, Sun, Cisco, Scientific Atlanta, Arris, Thomson, Johnson Controls, Palm, Micron, Cypress Semiconductor, Dell, LSI Logic, Applied Materials, Red Hat, Tesla, Microsoft, Schonbek, Zeiss, SHEEX, Obsidian, Federal Express and Bauer Hockey. Ms. Lutton has also worked with companies on Amicus briefing before the Federal Circuit and on patent prosecution. In addition to the many disputes Ms. Lutton has creatively resolved prior to litigation (including some with $0 settlements), Ms. Lutton's litigation examples include the following resolved cases:

Ms. Lutton took over a competitor case in the District of Delaware (Judge Gregory M. Sleet) mid-stream for Plaintiff Zeiss, achieving all of the client's objectives with minimal time and expenditure. The case settled shortly after Ms. Lutton filed a related Declaratory Judgement action against Optovue and MIT in the District of Massachusetts (Judge Patti B. Saris). The technology related to optical coherence tomography.

Ms. Lutton was hired to join another firm in leading a copyright case for Schonbek Worldwide Lighting against competitor Lowe's iCompanies and Lowe's Home Goods in the Northern District of New York (Judge Glenn T. Suddaby; Magistrate David E. Peebles). The case was settled favorably to Schonbek shortly after Ms. Lutton took key depositions in the case. The case involved lighting fixtures and included claims of false advertising, deceptive trade practices and unfair competition.

Ms. Lutton successfully positioned the multi-venue case between her client Wattstopper and its competitor Hubbell such that it settled favorably to Watt Stopper one month prior to trial. (WDTX, Judge Lee Yeakel)

On the eve of trial and through a series of wins, Ms. Lutton achieved all her client Johnson Controls and co-plaintiff Chamberlain’s objectives in the contested garage door opener case adverse to Lear in the NDIll (Circuit Judge Richard Posner, sitting by designation).

Ms. Lutton successfully settled numerous cases brought by Implicit Networks, including cases brought against SAP, NVIDIA, Sun, Palm, VMware, Red Hat in the NDCA (Judge Susan Illston) and WDWash.

Successfully resolved litigation for client Johnson Controls, Inc. adverse to SIPCO, LLC. filed in the Eastern District of Texas (Judge Leonard Davis). The case involved wireless networking technologies.

Ms. Lutton successfully settled prior to the scheduling conference, a declaratory judgment patent action filed by Ms. Lutton's clients Cisco, Scientific Atlanta, Arris and Thomson in the District of Delaware against GPNE. The case related to cable modems.

Ms. Lutton successfully settled prior to the scheduling conference, a declaratory judgment patent action she filed in the District of New Mexico on behalf of her client SAP against Emergis Technology. The case related to enterprise solutions.

Ms. Lutton led a patent case involving electronic design automatic software in the District of Delaware. She represented EDA leader Magma Design Automation, Inc. adverse to Synopsys, Inc. The case settled favorably.

Ms. Lutton led the last remaining suit by Jerome Lemelson against the semiconductor industry, which proceeded in the district of Arizona. Ms. Lutton's clients included Cypress Semiconductor, LSI Logic, Linear Technology, and Micrel. The case settled favorably.

Ms. Lutton successfully settled prior to the scheduling conference, a complex multi-defendant patent case in the Eastern District of Texas for her client SAP. The case was brought by Triton and involved sales software.

Ms. Lutton successfully settled a 34-patent case between Micron Technology (client; defendant and counterclaimant on 24 patents) and Motorola and Freescale Semiconductor (a Motorola spin-off) that was pending in the Western District of Texas. The case was settled before discovery was completed and shortly after a few critical motions argued by Ms. Lutton were decided in Micron's favor.

Ms. Lutton successfully settled a telecommunications patent case between NetMotion Wireless and Padcom.

Ms. Lutton successfully submitted an Amicus Brief in Symbol Technology v. Lemelson Medical, Educational, and Research Foundation, arguing that the Federal Circuit's ruling of unenforceability of the Lemelson machine vision patents should render even the unasserted claims invalid.

Ms. Lutton successfully ran the Power Integrations v. Motorola lawsuit, taking the case to trial in Delaware with a team that brought in a 32.3 million dollar jury verdict and a finding of willful infringement for her client Power Integrations. Ms. Lutton crossed Motorola's "surprise" witness and elicited testimony that despite Motorola's position that they no longer made the accused product that they would resume production as soon as they solved their quality problems.

Ms. Lutton formerly led multiple suits pending between Cypress Semiconductor and Integrated Circuit Systems involving timing circuitry and phase lock loops. The cases were favorably resolved shortly after Markman.

Ms. Lutton successfully represented General Electric in an appeal before the Federal Circuit.

Ms. Lutton successfully led the patent lawsuit between her client, Genesys Telecommunications Laboratories, and defendant Kana Communications to successful settlement. The case involved e-mail routing software.

Ms. Lutton successfully led the patent lawsuit between her client Exciss and Featherlite to a favorable settlement. The case involved horse trailer latches.

Ms. Lutton successfully defended Derwent against SmartPatents in a patent case involving computer database technology.

Ms. Lutton has successfully settled numerous other cases in the early stage, pleading process.

Katherine Kelly Lutton

Admissions

Clerkships

Memberships and Affiliations

Other Distinctions

Education

Experience

News

Speaking Engagements

Publications

Services

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