Maclain focuses on patent and trademark litigation. He has assisted clients in numerous intellectual property matters, including cases relating to digital video recorders, computer hard drives, LCD panels, software, pharmaceuticals, cancer diagnostics and treatment methods and online business methods. He also has experience in evaluating and licensing intellectual property portfolios.

Education

• University of Colorado Law School (J.D.); Order of the Coif; Seaman Scholar; Galland Scholarship; George Kerr Memorial Scholarship; Colorado Trial Lawyers Association Litigation Award; Business Law Society; Intellectual Property Law Society; Moot Court
• University of North Carolina, Chapel Hill (B.S., Biology, Minor in Chemistry), with distinction

Admissions

• State Bar of California, 2002
• U.S. District Court for the Northern and Central Districts of California
• U.S. District Court for the District of Colorado
• U.S. District Court for the Western District of Texas
• U.S. Courts of Appeals for the Ninth and Federal Circuits
• U.S. Patent and Trademark Office

Representative Matters

Optis Wireless Technology LLC et al. v. Apple Inc. (E.D. Tex.) Secured a $506.2 million jury award for PanOptis in a patent infringement suit against Apple involving 4G LTE technology. The jury found Apple infringed claims of the five patents at issue, determined all asserted claims were valid and found Apple’s infringement was willful. The case was the first patent jury trial in the U.S. since the pandemic began.

Juno Therapeutics, Inc. et al. v. Kite Pharma, Inc. (C.D. Cal.). Represented Juno Therapeutics, Memorial Sloan Kettering Cancer Center and Sloan Kettering Institute for Cancer Research in declaratory judgment action of patent infringement against Kite Pharma relating to chimeric antigen receptor technology for the treatment of B cell cancers resulting in a judgment exceeding $1 billion.

Immersion v. Apple. Represented Immersion in multipatent action pending before the International Trade Commission and the Patent Trial and Appeal Board. The dispute involved several Immersion patents relating to tactile feedback technologies that were asserted against Apple devices. The dispute settled when Immersion entered into settlement and license agreements with Apple, the terms of which are confidential.

TiVo v. Samsung. Represented TiVo in patent infringement against Samsung in the U.S. District Court for the Eastern District of Texas. The case involved TiVo’s claims under four patents relating to digital video recording technologies. The dispute settled on favorable terms.

Motorola v. TiVo/TiVo v. Cisco. Represented TiVo in patent litigation over DVR technology against Motorola Mobility and Cisco Systems. On June 6, 2013, shortly before the start of trial, Motorola and Cisco agreed to pay $490 million to TiVo to resolve the litigation.

TiVo v. Verizon. Represented TiVo in a patent infringement suit against Verizon accusing the company of infringing three of TiVo’s DVR technology patents. In September 2012, shortly before trial was scheduled to begin, a settlement was reached in which Verizon agreed to provide TiVo with total compensation worth at least $250.4 million. As part of the settlement, TiVo and Verizon agreed to dismiss all pending litigation between the companies with prejudice. The parties also entered into a cross license of their respective patent portfolios in the advanced television field.

TiVo v. AT&T. Represented TiVo in a suit against AT&T, alleging that AT&T’s U-verse products and services infringed three of TiVo’s patents covering DVR technology. In 2010, AT&T launched a counter-suit in California accusing TiVo DVRs of violating three AT&T patents. In January 2012, just days before a trial on TiVo’s patents, AT&T agreed to pay TiVo a minimum of $215 million, plus additional fees in case AT&T’s DVR subscriber base exceeds certain levels.

TiVo v. EchoStar. Represents TiVo in connection with patent infringement suits in the U.S. District Court for the Eastern District of Texas involving DVR products and services. In May 2011, the court dismissed the case pursuant to TiVo’s settlement with EchoStar under which EchoStar agreed to pay TiVo a total of $500 million.

Koninklijke Philips N.V. v. ZOLL. Part of the Irell & Manella LLP team that secured multiple victories for ZOLL, resulting in settlement on favorable terms.

St. Jude Medical v. Access Closure. Represented St. Jude Medical in a patent case alleging infringement of St. Jude’s patents relating to vascular closure devices. In December 2010, the jury returned a verdict of willful patent infringement and awarded St. Jude $27.1 million in damages, reportedly the largest jury verdict in any area of law in the Western District of Arkansas. The Federal Circuit affirmed the damages judgment on appeal.

LG Display v. Chi Mei Optoelectronics. Represented Chi Mei Optoelectronics in a set of patent litigations involving LCD panel technology.

NXP v. LSI and Agere. Represented LSI and Agere in a set of patent litigations involving semiconductor manufacturing technology and circuit design.

Netcraft v. eBay/PayPal. Represented eBay/PayPal in a patent infringement suit brought by a non-practicing entity. In 2007, eBay/PayPal were awarded summary judgment of noninfringement. In 2008, the Federal Circuit affirmed the district court’s ruling.

AmberWave v. Intel. Represented AmberWave, a company founded by an MIT professor and his students, in a set of patent litigations relating to advanced semiconductor materials and manufacturing processes.

Represented various clients in preparation for litigation, in arbitration and in inter partes review on patents relating to online advertisement generation, online payment methods, nucleic acid therapeutics, genomic testing and more.

Honors & Awards

Named to the Southern California Rising Stars list (2012)

Publications

• “Indefiniteness In Inter Partes Review Proceedings,” Journal of the Patent & Trademark Office Society (March 2016)
• “2015 Patent Reform: Is It Happening?” Westlaw Journal Intellectual Property (October 14, 2015)
• “It’s Finally Time to Modernize Our Patent System,” Los Angeles Daily Journal (July 5, 2011)
• “The Patent Reform Act of 2007: Attempting to Modernize the U.S. Patent System,” Federal Bar Association Newsletter (Winter 2008)
• “Redefining Prior Art Under Proposed Patent Reform Measures,” ALM’s Patent Strategy and Management Journal (June and July 2008)