Frank Scherkenbach is a leading patent trial lawyer who specializes in complex, high-technology litigation. He has particular expertise in cases related to computer software, semiconductors, medical devices, and life sciences. He is known for his ability to craft novel legal theories and present compelling, persuasive arguments to juries and judges – skills developed while trying more than 40 patent cases to jury verdict, as well as many district court and ITC bench trials.
Mr. Scherkenbach’s wins in district court, the Federal Circuit, and the ITC earned him recognition as Benchmark Litigation’s 2019 “Intellectual Property Attorney of the Year.” His remarkable successes include:
Jury verdicts worth hundreds of millions of dollarsin damages and injunctions against more than 175 infringing products for Power Integrations. Mr. Scherkenbach has led Power Integrations’ contentious patent infringement battles against Fairchild and its subsidiaries for 15 years, and secured victories in multiple cases in various courts.
A $23.7 million jury award in the District of Delaware for client SRI International (recently affirmed by the Federal Circuit).
Beating a $56.7 million damages request in a jury-verdict win for Adobe Systems, invalidating all asserted claims in the two patents at issue against Adobe’s Photoshop software.
A limited exclusion order at the ITC on behalf of Aspen Aerogels that stopped two foreign competitors from importing their aerogel composite blankets into the U.S.
On appeal to the Federal Circuit, Mr. Scherkenbach has argued for and secured many wins, including industry-changing decisions, which include:
Successfully arguing for reversal of the PTAB’s cancellation of client Power Integrations’ patent claims. In finding for Power Integrations, the court opined on important issues surrounding privity and the time-bar on petitioning for inter partes review.
Obtaining a landmark decision on damages on behalf of Microsoft that eliminated the “25 percent rule.” This had been previously used by plaintiff-side damages experts for decades as a starting point for royalties in intellectual property cases.
Securing affirmance of a jury award of $23.7 million and a compulsory license grant for patent-holder SRI. This case was closely watched because it tested whether SRI’s inventions were patent-eligible under the Supreme Court’s Alice decision (the Federal Circuit affirmed validity).
Convincing the Federal Circuit to uphold a summary judgment ruling of non-infringement for client Microsoft in litigation over Windows and Office products. The Federal Circuit revised the trial judge’s construction of two terms in the patent, but found these modifications did not change the outcome. It also upheld the district court ruling that plaintiff ViaTech could not prove infringement under the doctrine of equivalents.
Harvard Law School 1989 J.D. Co-Founder, Editor-in-Chief, Harvard Journal of Law & Technology
Stanford University 1986 Mechanical Engineering, B.S. with distinction, Phi Beta Kappa, Tau Beta Pi
Stanford University 1986 Classics, A.B. with distinction
U.S. Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit, The Honorable Haldane Robert Mayer, 1989 - 1991
Memberships & Affiliations
Member of the Federal Circuit Bar Association, the American Bar Association, and the American Intellectual Property Law Association
“Lawyer of the Year for Litigation- Intellectual Property in Boston” by The Best Lawyers in America, 2020 “Intellectual Property Attorney of the Year” by Benchmark Litigation, 2019 “IP Star” by Managing Intellectual Property, 2013 – 2019 “Trademark IP Star” by Managing Intellectual Property, 2018 Massachusetts Super Lawyer, 2009 – 2018 Leading practitioner in patent law by IAM Patent 1000: The World’s Leading Patent Practitioners, 2012 – 2017 Recognized by Chambers USA as a notable practitioner in Intellectual Property, 2005 – 2017 Named “Trial Ace” by Law360, 2015 Named “Local Litigation Star for Massachusetts and California” and “National Litigation Star” by Benchmark Litigation, 2013 – 2015 Named a “Client Service All-Star” by BTI Consulting Group, 2015 IAM 250, The World’s Leading Patent Litigator, 2011
Microsoft Corp. v. Corel Corporation, et al., N.D. Cal. (2018) Idenix Pharmaceuticals LLC et al. v. Gilead Sciences Inc., D. Del. (2016) SRI International Inc. v. Cisco Systems Inc., D. Del. (2016) EveryScape Inc. v. Adobe Systems Inc., D. Mass. (2015) Power Integrations Inc. v. Fairchild Semiconductor International Inc. et al., N.D. Cal. (2015) St. Jude Medical, et al. v. Volcano Corp., D. Del (2012) Tarkus Imaging Inc. v. Adobe Systems Inc., et al., D. Del. (2012) IMRA America Inc. v. IPG Photonics Corp., E.D. Mich. (2011) SRI International Inc. v. Internet Security Systems Inc., et al., D. Del. (2008) Callaway Golf Co. v. Acushnet Co., D. Del. (2007) Kyphon Inc. v. Disc-O-Tech Medical, et al., D. Del. (2005) Arendi USA Inc., et al. v. Microsoft Corp., et al., D.R.I. (2004) Intuitive Surgical, et al. v. Computer Motion, D. Del. (2002)
Power Integrations Inc. v. Semiconductor Components, Fed. Cir. (2019) Power Integrations Inc. v. Fairchild Semiconductor Corp., et al., Fed. Cir. (2018) Williamson v. Citrix Online LLC, et al., en banc rehearing, Fed. Cir. (2017) Storer, et al. v. Clark, Fed. Cir. (2017) St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., Fed. Cir. (2014) Uniloc v. Microsoft, Fed. Cir. (2011) Morrow, et al. v. Microsoft Corp., Fed. Cir. (2007)
Section 337 Investigations – International Trade Commission
Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same (2018) Certain Digital Cameras, Software, and Components Thereof (2018) Certain Sleep-Disordered Breathing Treatment Mask Systems and Components Thereof (2018)