Steven Katz works closely with his clients to solve their most intractable intellectual property issues. Primarily, Mr. Katz leads patent litigations, where he has successfully defended both large and small clients in patent disputes. For example, Mr. Katz recently obtained summary judgment of non-infringement in a suit targeting a substantial portion of a Fortune 50 company. Mr. Katz has also successfully defended bet-the-company patent litigations for smaller companies where patents were asserted against the entire product line of the companies. In each matter, Mr. Katz works closely with the clients to devise winning strategies, which typically includes fighting for and obtaining early litigation victories to bring about favorable settlements.
Mr. Katz routinely argues at Markman hearings, the key event in any patent litigation, and has a winning track record of presenting claim construction arguments in an easy-to-understand manner that delivers positive results for his clients. He also develops and presents technology tutorials to federal judges in connection with the Markman hearings.
Mr. Katz counsels clients in advance of litigation concerning patent disputes and patent portfolio development, and when necessary, he helps clients negotiate patent licenses to avoid litigation. Mr. Katz also leads due diligence projects in connection with patent acquisitions and patent assertions.
Mr. Katz is a passionate and zealous advocate for every client and tailors his advice and strategy based on each client’s unique business and business objectives. Mr. Katz also prides himself on mastering the technology of each client so that he can devise the most effective strategy for each IP dispute.
Mr. Katz practices in federal courts throughout the country, representing both plaintiffs and defendants in patent litigation, before the International Trade Commission in Section 337 proceedings, and before the Federal Circuit Court of Appeals. Mr. Katz also practices before the Patent Trial and Appeal Board in inter partes review proceedings.
Mr. Katz has experience in a wide range of technologies, ranging from telecommunications and networking to medical devices. Mr. Katz’s experience spans operating systems, digital signal processors, telecommunication standards, semiconductors, LED technologies, robotics, consumer devices, surgical instruments, cryptography, seismic detection, digital television, e-commerce systems, image processing, electronic circuits, and enterprise and consumer software.
Mr. Katz has also served as an adjunct professor at Boston University School of Law where he taught Trial Advocacy.
Prior to joining Fish & Richardson, Mr. Katz was a law clerk for Judge Lourie of the United States Court of Appeals for the Federal Circuit. Prior to becoming a lawyer, Mr. Katz was a practicing electrical engineer and circuit designer for Telecommunications Techniques Corporation, a leading supplier of digital telecommunication circuit analyzers.
J.D., Columbia University Law School 1995 Staff Editor, Columbia-VLA Journal of Law & the ArtsHarlan Fiske Stone Scholar
M.S., Johns Hopkins University 1992 Electrical Engineering
B.S., University of Pennsylvania 1988 Electrical Engineering magna cum laude
U.S. Patent and Trademark Office 1999
New York 1996
U.S. Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit, The Honorable Alan D. Lourie, 1996 - 1998
Instructor, National Institutes of Trial Advocacy, Regional Trial Skills Course
Adjunct Professor, Boston University School of Law, Trial Advocacy
“Negotiating Arbitration Clauses for Patent Disputes,” The Resolver, Federal Bar Association, Spring 2016.
“Uniloc: The 25% Rule and the Entire Market Value Rule,” Boston Breakfast Series, Boston, Massachusetts, April, 2011.
“Patent Damages: Recent Developments and their Impact on Patent Valuation,” Fish & Richardson P.C. Intellectual Property Seminar, Munich, Germany, 2011.
“Claim Drafting – A Litigator’s Perspective,” Fish & Richardson P.C. Intellectual Property Seminar, Munich, Germany, 2010.
ViaTech, Inc. v. Microsoft Corp. (D.Del) (software) Representing Microsoft. Case pending.
Certain Network Devices, Related Software and Components Thereof II, 337-TA-945 (ITC) (switches and routers) Representing respondent Arista Networks. Case pending.
SafeNet, Inc. v. Uniloc Luxembourg & Uniloc USA, Inc. (ED.Tex) (software) Represented SafeNet and ten customers in patent suit involving license servers. Case settled favorably after SafeNet filed motion for summary judgment.
Fairfield Industries, Inc. v. Wireless Seismic, Inc (SD.Tex) (wireless communications for seismic detectors) Defended Wireless Seismic. Invalidated one of four patents and obtained favorable claim constructions for remaining three patents. Case settled favorably after claim construction order.
EveryScape, Inc. v. Adobe Systems Incorporated (D. Mass.) Represented Adobe in case involving multiple patents relating to photo editing software. Following jury trial, all claims found invalid.
Symantec Corp. v. Acronis, Inc (ND.Cal) (backup and recovery software) Defended Acronis in multi-patent case, argued at Markman hearing. Case settled after favorable Markman ruling.
Sybase, Inc. v. Vertica Systems, Inc. (ED.Tex) (databases) 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.
Brooktrout v. Eicon Networks (ED.Tex) (fax servers) Counsel for plaintiff Brooktrout in patent infringement suit against Eicon concerning the automatic routing of faxes over a computer network. Obtained injunction following jury verdict finding patents valid and infringed.
Bellcore v. FORE Systems (D.Del) (high speed digital networking) Defended FORE against assertion of six patents relating to telecommunications technology. Won summary judgment after claim construction.
Control Resources v. Delta Electronics and LSI Logic Storage Systems (D.Mass) (control circuitry) Defended Delta Electronics and LSI Logic Storage Systems in a patent infringement suit by Control Resources on two patents relating to automatic control circuitry for variable speed cooling equipment. Obtained summary judgment of no infringement on one patent. Plaintiff dismissed its remaining claims with prejudice.
Bose Corp. v. Cambridge Soundworks (D.Mass) (control electronics for audio equipment) Counsel for plaintiff Bose in suit brought against Cambridge Soundworks for infringement of patents concerning Wave® radio technology and for false advertising. Case settled.
Bose Corp. v. JBL, Inc. et al. (D.Mass) (audio equipment) Counsel for plaintiff Bose in suit for patent infringement brought against JBL and sister companies concerning loudspeaker and port tube design technology. Judgment for Bose after bench trial. Case affirmed on appeal to the Federal Circuit.
Schawbel Corp. and Helen of Troy v. Conair Corp. (D.Mass) (gas powered personal care appliances, patent infringement, interference with contract) Represented Conair in complex dispute between three parties involving claims of patent infringement related to a gas powered curling iron and claims of breach of contract and interference with contract. Case settled one month before trial.
ATI v. TRW Vehicle Safety Systems (ED.Mich) (airbag construction) Defended TRW in patent infringement suit involving the manufacture of airbags for vehicles. Case settled favorably hours before jury was to be empaneled after the Court granted many of TRW’s motions in limine.
Computer Motion, Inc. v. Intuitive Surgical, Inc. (CD.Cal) (robotically-assisted surgery) Defended Intuitive Surgical in a nine patent case relating to various aspects of surgical robots, including electrical, mechanical and computer software components, used to perform laparoscopic and thoracic surgery. Case settled.