PAUL D. TRIPODI II

Partner
Litigation

EXPERIENCE:

Paul D. Tripodi II is a partner in the Los Angeles office of Wilson Sonsini Goodrich & Rosati, where his practice focuses on intellectual property litigation, including patent litigation, contract disputes involving intellectual property, and trade secret misappropriation. He has been involved in both bench and jury trials, as well as proceedings before various international tribunals and the International Trade Commission (ITC).

Paul specializes in complex litigation involving multiple patents, counter-claims of infringement, RAND licensing obligations, foreign counterpart litigation, and competitor-to-competitor litigation. He has litigated matters involving a broad range of technologies, including the following:

  • Medical devices, instrumentation, methods, and biologic materials relating to spinal surgery as lead counsel on behalf of NuVasive.
  • Software and electronics relating to video game technology, smartphones, graphical user interfaces, geolocation and mapping, wireless navigation, authentication and encryption, integrated circuits, power management/voltage regulation, and circuit board manufacturing on behalf of multinational companies such as Microsoft, Research In Motion (Blackberry), International Game Technology (IGT), and others.
  • BRCA-1 and BRCA-2 genetic testing as lead counsel on behalf of Pathway Genomics in multi-district litigation brought by Myriad Genetics.
  • Compounds related to peptide hormones released into the bloodstream by the β-cells of the pancreas on behalf of the University of Minnesota and Swedish inventor Dr. Per Westermark.
  • Monoclonal antibodies produced by recombinant DNA technology and used in the prevention of respiratory syncytial virus (RSV) infection on behalf of Genentech Corporation.
  • Electroluminescent phosphors and materials incorporating the same on behalf of a 3M subsidiary, Durel Corporation.
  • Rubber compounding, polyurethane chemistry, and a variety of physical and chemical technologies relating to golf ball manufacturing on behalf of Callaway Corporation.
  • Chemical processes for the desulfurization of flue gas on behalf of Joy Manufacturing.

Paul's litigation experience is complemented by his experience with the preparation and prosecution of patent and trademark applications, as well as his continued involvement as an instructor and conference organizer in connection with matters related to intellectual property litigation and trial tactics.

Prior to joining the firm, Paul was a partner in the Los Angeles office of Sidley Austin LLP, where he was a member of the West Coast intellectual property and technology practice.

Paul is certified as a Pro Bono Publico Prosecutor on behalf of the State of California and serves as a volunteer prosecutor in criminal matters on an ongoing basis. While in law school, he served as an extern in the Office of the Assistant General Counsel for Intelligence and International Affairs in the Department of Defense at the Pentagon.

SELECT REPRESENTATIVE MATTERS:
  • NuVasive v. Medtronic (Multiple Matters – SDCA). Lead counsel in multiple matters pending the Southern District of California relating to medical devices, instrumentation, methods, and biologic materials relating to spinal surgery as lead counsel on behalf of NuVasive involving more than a dozen patents, along with related IPR proceedings and multiple reexamination proceedings.
  • Myriad Genetics et al v. Pathway Genomics (SDCA) and related multi-district litigation proceedings entitled In Re: BRCA1- and BRCA2- Based Hereditary Cancer Test Patent Litigation (MDL, D.Utah). Lead counsel on behalf of defendant Pathway Genomics in case involving assertions of infringement of 13 patents relating to breast cancer genetic testing and methods. Asserted claims invalidated; case dismissed with prejudice after covenant not to sue.
  • Microsoft v. Motorola (Hearing – ITC). Trial counsel for complainant Microsoft in the International Trade Commission (ITC) in a Section 337 investigation involving multiple patents related to smartphone design and graphical user interfaces. Exclusion order issued. ITC 337-TA-744.
  • Pioneer v. Samsung (Jury Trial – E.D. Tex.). Trial counsel for defendant Samsung in a jury trial in the Eastern District of Texas in a matter involving multiple patents related to flat-screen television technology and damage claims of nearly $100 million. Paul and his team entered appearances in this matter only months before trial. Jury returned a verdict for Pioneer, but at significantly reduced damages.
  • Funai v. AmTRAN and Vizio (Hearing – ITC). Trial counsel for respondents AmTRAN and Vizio in the ITC in a Section 337 investigation involving multiple patents related to digital televisions and displays. Exclusion order issued, but redesign deemed non-infringing by customs.
  • Durel Corporation v. Osram Sylvania Inc. (Jury Trial – D. Ariz.). Trial counsel for plaintiff Durel Corporation in a jury trial in the District of Arizona. Paul successfully obtained a patent infringement jury verdict of $49 million and findings of non-infringement on each of the multiple patent infringement counterclaims brought by the defendant.
  • Joy Technologies v. ABB Flakt, Inc. (Bench Trial – D. Del.). Trial counsel for plaintiff Joy Technologies Inc. in a bench trial in the District of Delaware related to damages and willful infringement. Paul was part of a trial team that obtained a patent infringement verdict of $30 million, including a finding of willful infringement and enhanced damages. In a related case, Paul and his colleagues were successful in invalidating patent claims asserted by ABB Flakt.
EDUCATION:
  • J.D., UCLA School of Law, 1992
  • M.S., Chemical Physics, California Institute of Technology, 1989
    Conducted research into ultrafast chemical reaction dynamics under the direction of Professor Ahmed H. Zewail, recipient of the 2000 Nobel Prize in Chemistry
  • B.S., Chemistry, Pennsylvania State University, 1987
    With Honors and Distinction; Member, University Scholars Program; Conducted independent research in laser spectroscopy under the direction of Professor Robert Bernheim
ASSOCIATIONS AND MEMBERSHIPS:
  • Member, Intellectual Property Section, American Bar Association
  • Member, California Bar Association
  • Fellow, Los Angeles County Bar Foundation, 2002-present
  • Member, The Judge Paul R. Michel Intellectual Property American Inn of Court, 2008-2011
  • Director, Los Angeles County Bar Foundation, 2007-2011
  • Los Angeles Intellectual Property Law Association: President, 2005-2006; Vice President/President-Elect, 2004-2005; Secretary, 2003-2004; Treasurer, 2002-2003; and Board of Directors, 1998-2002
  • Chair, Education Committee, American Intellectual Property Law Association, 2001-2003
  • Chair, Young Lawyers Committee, American Intellectual Property Law Association, 1999-2001
  • Member, Barristers Board of Directors, Los Angeles County Bar Association, 2002-2003
HONORS:
  • AV Preeminent Peer Review Rating, Martindale-Hubbell
  • Selected for inclusion in the 2004 and 2006-2017 editions of Southern California Super Lawyers in the area of Intellectual Property Litigation
SELECT PUBLICATIONS:
  • "Patent Litigation Other Than District Court Infringement Actions," Chapter 14, PLI Patent Litigation, Second Edition, Annually 2014-2017
  • "Using Experts in Patent Litigation," Los Angeles Lawyer, December 2002
  • Co-author with E.G. Poplawski, "The Impact of Federal Circuit Precedent on the 'On-Sale' and 'Public-Use' Bars to Patentability," 44(6) The American University Law Review 2351-91, 1995
  • "Achieving Equal Justice for Women in the Courts," 1 UCLA Women's Law Journal 209, 1991
SELECT SPEAKING ENGAGEMENTS:
  • Panelist, "Is Litigation Serving Innovation," The Judge Paul R. Michel Intellectual Property American Inn of Court, along with co-panelists Hon. Paul R. Michel (CAFC, retired), Hon. André Birotte Jr. (CDCA), Magistrate Judge Alexander MacKinnon (CDCA), Charles S. Barquist, and Nick G. Saros, October 30, 2017
  • Panelist, "Examining Expert Witnesses: An AIPLA Mock Jury Experience," American Intellectual Property Law Association, Annual Meeting, along with co-panelists Patrick J. Coyne, Philip K. Anthony (Jury Consultant, DecisionQuest), Nicholas Godici (Former Commissioner of Patents), and Moderator Terry Rea (Former Deputy Director of the USPTO), Washington, D.C., October 19, 2017
  • Moderator, "Views from the Bench—The Continuing Evolution of Patent Litigation in the Post-AIA World," featuring Judge James V. Selna (CDCA), Judge Andrew J. Guilford, and Judge Cathy Ann Bencivengo (SDCA), Los Angeles Intellectual Property Association, Spring Seminar, May 6, 2017
  • Moderator, LAIPLA Law School Road Show, UCLA School of Law, November 2, 2016
  • Speaker, "Prosecution Tips from a Patent Litigator's Perspective," American Intellectual Property Patent Law Association Patent Prosecution Basic Training, Los Angeles, California, October 25, 2016
  • Moderator, LAIPLA Law School Road Show, UCLA School of Law, October 15, 2015
  • Panelist, "Practical Strategies for Addressing the Evolving Patent Damages Landscape," Federal Bar Association Annual Meeting, Salt Lake City, Utah, September 11, 2015
  • Moderator, "Hot Topics and Emerging Trends in Inter Partes Review," Los Angeles IP Law Association, Spring Seminar, Laguna Beach, California, May 30, 2015
  • Dialogue Leader, "Impact of Teva v. Sandoz on the Claim Construction Process," Sedona Conference, Miami, Florida, May 18, 2015
  • Speaker, "Prosecution Tips from a Patent Litigator's Perspective," American Intellectual Property Patent Law Association Patent Prosecution Basic Training, Los Angeles, California, April 29, 2015
  • Speaker, "Prosecution Tips from a Patent Litigator's Perspective," Orange County Patent Law Association, January 2015
  • Moderator, LAIPLA Law School Road Show, UCLA School of Law, October 8, 2014
  • Speaker, "Navigating Patent Disputes," BAIMA, October 2013
  • Panelist, "Tried and True Strategies for Working with Expert Witnesses: Advice from the Trenches," Los Angeles Intellectual Property Law Association, Los Angeles, California, October 8, 2013
  • Moderator, Los Angeles Intellectual Property Law Association Law School Road Show, September 2013
  • Panelist, "Avoiding and Navigating Patent Disputes: A Roundtable Discussion," addressing creative approaches and strategies for navigating patent disputes that successful, emerging companies are likely to face in the patent arena, along with co-panelists Bill Becker, Vice President and Associate General Counsel of Intellectual Property at Align Technology, and Vera M. Elson and Edward G. Poplawski of Wilson Sonsini Goodrich & Rosati, WSGR Medical Device Conference, San Francisco, CA, 2013
  • Moderator, "Remedies," a panel presentation addressing damages, standard essential patents, and injunctions, LAIPLA Spring Seminar 2013
  • Faculty, "Dealing with Experts, Including Rule 26 Employee Experts," Practising Law Institute's Patent Litigation 2012, September 2012
  • Moderator, "Patent Litigation 2012," Practising Law Institute, September 2012
  • Moderator, "Consideration of Local Patent Rules for the Central District of California," featuring District Court Judges S. James Otero and Andrew J. Guilford, Combined Meeting of the Los Angeles County Bar Association, Litigation Section, and Los Angeles Intellectual Property Law Association, December 2011
  • Program Committee Member, "New Patent Litigation Pilot Program in the Central District of California: What Every Patent Litigator Needs to Know," featuring Chief Judge Audrey Collins and District Court Judges S. James Otero, Andrew J. Guilford, Otis D. Wright, II, and George H. Wu, Combined Meeting of the Los Angeles County Bar Association, Litigation Section, and Los Angeles Intellectual Property Law Association, December 2011
  • Speaker, "Breadth and Clarity in Claim Construction, 'Patent Wars – Prosecutors v. Litigators,'" AIPLA Annual Meeting, October 2011
  • Speaker, "Patent Prosecution from the Litigation Perspective," AIPLA Practical Patent Prosecution Training for New Lawyers, August 2011
  • Moderator, "The Patent Litigator: IP Trial Strategies and War Stories," Los Angeles Intellectual Property Law Association Spring Seminar, June 2011
  • Moderator, "Views from the Benches," featuring Chief Judge Randall R. Rader of the Court of Appeals for the Federal Circuit and District Court Judges S. James Otero, Andrew J. Guilford, and Stephen Larson (Ret.) of the Central District of California, Combined Meeting of the Los Angeles Intellectual Property Law Association and Judge Paul R. Michel Intellectual Property American Inn of Court, September 2010
  • Speaker, "Patent Prosecution Tips from the Litigation Perspective," AIPLA Practical Patent Prosecution Training for New Lawyers, August 2010
  • Speaker, "Best Practices: Dealing with In-House Counsel," Los Angeles Intellectual Property Law Association Spring Seminar, May 2010
  • Speaker, "Prosecution from the Litigation Perspective," AIPLA Practical Patent Prosecution Training for New Lawyers, August 2009
  • Moderator, "Are the Courts Meeting the Needs of the Technology Community?" Los Angeles Intellectual Property Law Association Judge's Night, December 2008
  • Speaker, "Patent Prosecution Tips from a Patent Litigator," AIPLA Practical Patent Prosecution Training for New Lawyers, August 2007 and August 2008
  • Faculty, "Section 337: Litigation at the ITC," Practising Law Institute's Patent Litigation 2006, September 2006
  • Speaker, "Prosecution Tips and Argument & Amendment Estoppel," AIPLA Practical Patent Prosecution Training for New Lawyers, 2005 and 2006
  • Chair, AIPLA Patent Prosecution Basic Training, August 2002 and August 2003
  • Moderator, "Prosecution Lessons from Patent Litigators," AIPLA Patent Prosecution Basic Training, August 2002
  • Speaker, "Mediation and Arbitration – How to Use It in a Cost-Effective and Productive Manner," Creative Strategies Seminar, 2002
  • Instructor, "Searching and Reporting on Patentability," AIPLA Patent Prosecution Basic Training Course, August 2000 and August 2001
ADMISSIONS:
  • State Bar of California
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the Eastern District of Texas
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court

Contact Information

633 West Fifth Street
Suite 1550
Los Angeles, CA 90071
Phone | 323-210-2902

Email | Paul Tripodi IIptripodi@wsgr.com


Areas of Expertise

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