Eliot D. Williams

Partner

eliot.williams@bakerbotts.com

Palo Alto

P: +1.650.739.7511 F: +1.650.739.7611

San Francisco

P: +1.415.291.6200 F: +1.415.291.6300
Eliot Williams Photo

Eliot Williams has over fifteen years of experience as a creative advocate and practical advisor to his clients. Mr. Williams has extensive experience with disputed Intellectual Property matters, in federal courts throughout the country and in the Patent Trial and Appeal Board of the United States Patent Office.  He has testified on patent law before the Judiciary Committee of the United States House of Representatives and has taught patent litigation as an adjunct assistant professor of law. Mr. Williams also frequently advises clients seeking to protect their R&D investments and on open source software issues.

Related Experience

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

Awards & Community

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

News

Publications, Speeches & Presentations

Events

Recent

Baker Botts California MCLE Event

With the January MCLE compliance deadline rapidly approaching, please join Baker Botts for a day of hard-to-get MCLE credits on various issues including elimination of bias, competence/substance abuse, and legal ethics.