Education and Honors

  • J.D. (cum laude), New York University School of Law, 1999
  • B.S. (magna cum laude with university honors), electrical engineering, Texas A&M University, 1996
    Tau Beta Pi
    Eta Kappa Nu
  • Recognized as a Northern California Super Lawyer “Rising Star,” 2014

    Recognized as a New York Super Lawyer “Rising Star,” 2012 & 2013

    Recognized in The Legal 500 U.S. for IP Litigation, 2010 & 2011

    Recognized in Managing Intellectual Property, IP Handbook 2010

Admissions and Affiliations

New York State Bar

State Bar of California

United States Supreme Court

United States Patent and Trademark Office

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Fifth Circuit

Eliot D. Williams

Partner

1001 Page Mill Road
Building One, Suite 200
Palo Alto, California 94304-1007
United States
Phone:
+1.650.739.7511
Fax:
+1.650.739.7611

Concentration

Patent litigation, PTAB trials, patent portfolio and intellectual property risk management and general IP counseling

Summary

Eliot Williams has over a decade of experience as a creative and aggressive advocate for his clients in disputed intellectual property matters, and as a client counselor. He has briefed and argued numerous Markman (claim construction), preliminary injunction and summary judgment hearings in patent cases around the country; has jury trial experience, including examining and cross-examining technical and expert witnesses; and has briefed and argued appeals before the Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over appeals from all patent trials around the country. Mr. Williams holds a B.S. (magna cum laude, with university honors) degree in electrical engineering from Texas A&M University and a J.D. (cum laude) from New York University School of Law.

Mr. Williams has testified on patent law before the Judiciary Committee of the United States House of Representatives and, prior to relocating to Silicon Valley from the firm’s New York office, he was an adjunct assistant professor of law at Brooklyn Law School, where he taught patent litigation. He was named a Rising Star by Super Lawyers, for the New York Metro area in 2012 and 2013, and was recognized by The Legal 500 in 2010 and 2011 as having “100% strength in all aspects” of patent litigation and as a “very strong business partner” with his clients.

In addition to his extensive IP litigation and trial experience, Mr. Williams also regularly assists clients seeking to protect their R&D investments by working with those clients to secure patent protection for their inventions, and advises clients regarding third party patent assertions, IP portfolio licensing, IP aspects of transactions (including mergers & acquisitions) and open source software issues.

Representative Engagements

Patent Trial and Appeal Board - Business Method Reviews

  • Covered Business Method Review of U.S. Patent No. 8,036,988 – System and method for performing secure credit card transactions
  • Covered Business Method Review of U.S. Patent No. 7,840,486 – System and method for performing secure credit card transactions
  • Covered Business Method Review of U.S. Patent No. 8,146,077 – Information management and synchronous communications system with menu generation, and handwriting and voice modification of orders
  • Covered Business Method Review of U.S. Patent No. 6,384,850 – Information management and synchronous communications system with menu generation
  • Covered Business Method Review of U.S. Patent No. 6,871,325 – Information management and synchronous communications system with menu generation
  • Covered Business Method Review of U.S. Patent No. 8,479,246 – System and method for interactive video content programming
  • Covered Business Method Review of U.S. Patent No. 8,468,099 – Information management and synchronous communications

Patent Trial and Appeal Board - Inter Partes Reviews

  • Inter Partes Review of U.S. Patent No. 6,791,298 – Monolithic battery charging device
  • Inter Partes Review of U.S. Patent No. 8,036,988 – System and method for performing secure credit card transactions
  • Inter Partes Review of U.S. Patent No. 7,840,486 – System and method for performing secure credit card transactions

IP Litigation Matters

  • D’Agostino v. MasterCard Inc. et al. (D. Delaware) – representing a leading payments industry company in defense of patent infringement suit relating to controlled payment numbers. Obtained stay of district court litigation in view of co-pending PTAB trials related to validity of the asserted patents.
  • Ameranth, Inc. v. Seamless North America, LLC; Ameranth, Inc. v. GrubHub, Inc. (United States District Court for the Southern District of California) – representing leading online and mobile food ordering company in defense of patent infringement suit relating to food ordering systems. Obtained stay of district court litigation in view of co-pending PTAB trials related to validity of the asserted patents.
  • Enovsys LLC v. AT&T Mobility LLC et al. (United States District Court for the Central District of California) – representing wireless carrier against allegations of patent infringement related to location based services.
  • SoftView LLC v. Huawei Technologies Co. Ltd. et al. (United States District Court for the District of Delaware) – representing worldwide telecommunications company in defense of patent infringement allegations relating to mobile web browser technologies. Obtained stay of district court litigation in view of co-pending PTAB trials related to validity of the asserted patents.
  • Orbis Patents Ltd. v. Verient, Inc. (United States District Court for the Southern District of New York) – Represented payment technology company in asserting patents related to controlled payment numbers. Matter settled prior to trial.
  • Kara Technology Incorporated v. Stamps.com Inc. (United States District Court for the Central District of California; Federal Circuit Court of Appeals, 582 F. 3d 1341 (2009)) – argued appeal and obtained reversal of unfavorable jury verdict and unfavorable summary judgment ruling while representing company founded by the inventor of PC-based postage in a patent infringement and misappropriation of trade secret suit against Stamps.com
  • Red Bend Software Inc. v. Google Inc. (United States District Court for the District of Massachusetts; Federal Circuit Court of Appeals) – represented market leader in mobile software management in patent infringement suit against Google related to technology used to update Google’s Chrome web browser.
  • Every Penny Counts v. American Express Company et al. (United States District Court for the Middle District of Florida; Federal Circuit Court of Appeals, 563 F.3d 1378 (2009)) – defense of MasterCard International Incorporated in a patent infringement suit involving point-of-sale automatic savings systems; case was dismissed after MasterCard and other defendants successfully obtained from the District Court a construction of the claims that precluded a finding of infringement; successfully represented MasterCard on appeal to the U.S. Court of Appeals for the Federal Circuit.
  • Privasys, Inc. v. MasterCard International Inc. and MasterCard International Inc. v. Privasys, Inc. (United States District Courts for the Southern District of New York and the Northern District of California) – representation of MasterCard in defense against allegations of trade secret misappropriation and misnaming of patent inventorship involving contactless payment device security techniques.
  • Honeywell International Inc. v. Renesas Technology Corp. (United States District Court for the Eastern District of Texas) – representation of Renesas Technology Corp. and Renesas Technology America Inc. in a patent infringement suit relating to LCD display driver technology; case settled on favorable terms after Baker Botts filed a motion to dismiss the complaint based on unconstitutionality of the Patent Act as applied to foreign manufacturing activity.
  • Lexar Media, Inc. v. Fuji Photo Film U.S.A., Inc. (United States District Courts for the Eastern District of Texas and the Northern District of California) – defense of Fuji Photo Film U.S.A. (now Fujifilm USA) against allegations of infringement of patents involving flash memory systems used in digital still cameras; settled on favorable terms prior to jury selection after Baker Botts successfully moved to transfer the case from the Eastern District of Texas
  • Fuji Photo Film U.S.A., Inc. v. Lexar Media, Inc. (United States District Court for the Northern District of California) – representation of patentee in an infringement suit against a flash memory system manufacturer.
  • Acacia Media Technologies Corp. v. On Command Corp. (United States District Court for the Central District of California) – representation of On Command Corporation in a patent infringement action involving transmission of compressed audio/video signals.
  • MasterCard International Inc. et al. v. Lexcel Solutions Inc. (United States District Court for the District of Arizona) – representation of MasterCard in a declaratory judgment action against owner of a patent related to automated software testing products; case settled on favorable terms after a claim construction hearing
  • Pitney Bowes Inc. v. Xerox Corp. et al. (United States District Courts for the District of Connecticut and the Eastern District of Kentucky) – representation of plaintiff in a patent infringement suit against a printer manufacturer relating to enhancement of laser printing resolution; case settled during discovery on favorable terms.
  • Taylor et al. v. IBM et al. and Taylor v. MasterCard International Inc. (United States District Court for the Northern District of Texas and United States Court of Appeals for the Fifth Circuit) – representation of MasterCard International in defending against allegations of patent and copyright infringement related to prepaid card programs; Baker Botts prevailed in having the cases dismissed by the District Court and successfully defended the dismissal at the U.S. Court of Appeals for the Fifth Circuit, which awarded attorneys’ fees against plaintiff.
  • ACTV Inc. v. The Walt Disney Company (United States District Court for the Southern District of New York) – representation of plaintiff in a patent infringement suit against broadcast/cable networks over interactive television patents.

Other Litigation Experience

  • Kaczmarek v. International Business Machines Corporation (United States District Court for the Southern District of New York) – representation of IBM in defense of a putative consumer class action suit involving civil claims under the RICO and Magnuson-Moss Warranty Acts relating to allegedly defective modem/sound card used in personal computers
  • In re Nine West Shoes Litigation (United States District Court for the Southern District of New York) – representation of company accused of minimum resale price maintenance against private litigants and multiple state attorneys general acting in parens patriae capacity under the antitrust laws
  • Brown & Williamson v. Philip Morris (Middle District of North Carolina) – representation of Brown & Williamson as plaintiff in an antitrust action against Philip Morris involving claims of attempted monopolization of the retail cigarette market

Transactional/IP Consulting Matters

  • Various clients - counseling regarding open source software risk management and license compliance.
  • MasterCard International Inc. – outside intellectual property counsel for acquirer in acquisition of payment software company. Transaction publicly valued at approximately $100 million
  • Fortune 250 company – counsel regarding patent issues in asset acquisition involving business method patent and patent applications
  • Various clients – negotiation of patent licenses and settlement agreements resolving numerous IP litigation matters
  • Digital Security Software Provider – prosecution of patents related to secure communications and content distribution

Publications, Speeches and Presentations

  • “Privity And Strategic Considerations in PTAB Trials,” IP360, March 28, 2014
  • Panelist, “Navigating the America Invents Act - What Your Company Needs to Know Now to Manage Changes to the Patent Laws,” Baker Botts Seminar, September 2012
  • Panelist, “Patent Reform Update: The America Invents Act,” Baker Botts IP Law Roundtable, November 2011
  • “Proving Direct Infringement of Software and Business Method Patent Claims Involving Multiple Actors,” IPO Articles and Reports, June 2009
  • “Antitrust and IP Pitfalls Associated With Participation in Standard Setting Bodies,” The AIPLA Antitrust News, October 2007
  • “Protection of Inventions Disclosed in Pending Patent Applications,”Baker Botts IP Report, October 2002
  • “Sharing Information While Maintaining the Attorney-Client Privilege in Patent Matters,” Baker Botts IP Report, October 2001