Concentration

Intellectual property counseling and litigation involving patents, copyrights, trademarks and trade secrets for technologies primarily in the electrical and mechanical fields

Summary

Scott Partridge is former head of the intellectual property department in Houston. He has extensive intellectual property law experience, concentrating on litigation involving patents, copyrights and trade secrets for technologies in the electrical, computer systems, telecommunications and mechanical fields. He has particular experience representing clients in litigation matters before the International Trade Commission and in numerous federal and state courts across the United States and has served as an arbitrator and special master in patent matters.

From 1969 through 1971, Mr. Partridge was a patent examiner in the U.S. Patent and Trademark Office, and from 1972 to 1974 he was employed as an international and legislative specialist for the Office of Legislation and International Affairs of the Patent and Trademark Office. In 1973 and 1974 he served as executive secretary of the U.S. Side of the Joint Working Group on Intellectual Property for the U.S./U.S.S.R. Agreements on Scientific Cooperation. He was the assistant deputy general counsel and section director for the United States Presidential Clemency Board in 1975.

Mr. Partridge is a frequent lecturer on intellectual property law and has addressed many audiences (both in the United States and internationally) regarding intellectual property law issues. For seven years, he taught intellectual property law as an adjunct professor at Georgetown University Law Center.

Representative Engagements

• Alcatel USA Resources, Inc. v. Microsoft Corp. (Eastern District of Texas) Baker Botts represented Alcatel in asserting three Alcatel patents directed to network management systems against Microsoft’s operating system environment. This case settled shortly before trial.
• Alcatel USA Resources, Inc. v. Microsoft Corp. (Eastern District of Texas) Baker Botts represented Alcatel in a separate action from the previous case in which four Alcatel patents directed to video delivery systems were asserted against Microsoft media services software. This case settled several months before trial.
• Alcatel USA, Inc. v. Samsung Electronics Co., Ltd. (Texas state court) Baker Botts represented Alcatel in prosecuting and successfully resolving a trade secret misappropriation lawsuit relating to telecommunications equipment. The case involved claims for hundreds of millions of dollars in damages, and resulted in a confidential agreement after two weeks of trial in what was anticipated as a three-month jury trial.
• Avia Group International (a Reebok company) v. Nike, Inc. (District of Oregon) Baker Botts defended Nike in a patent infringement case involving five patents covering support structures for athletic shoes. After close of discovery, with various summary judgment motions pending, the case settled on favorable terms.
• Board of Regents, The University of Texas System and the University of Texas M.D. Anderson Cancer Center v. CTI Molecular Imaging, Inc., et al. (Federal Circuit Court of Appeals, appealed from the Eastern District of Tennessee) Baker Botts represents M.D. Anderson in an appeal of a summary judgment determination of non-infringement in a patent case involving medical imaging technology. Baker Botts did not handle the case in district court. The summary judgment determination was affirmed.
• Cirrus Logic, Inc. v. ATI Technologies and Nvidia Corp. (Western District of Texas) Baker Botts represented Cirrus Logic in asserting a Cirrus Logic patent involving video graphics chips against the leading providers of such chips to the computer industry. The case settled early in discovery with a significant payment to Cirrus Logic.
• Convolve v. Dell, Inc. et al. (Eastern District of Texas) Baker Botts represents Dell in a two-patent case related to vibration reduction in computer hard drives. This case is set for trial in 2011.
• Crane Co. v. SandenVendo America et al. (Eastern District of Texas) Baker Botts represents SandenVendo in a case involving refrigerated vending machines. Baker Botts filed reexamination requests that were granted by the Patent Office, and resulted in final rejections. This case settled on favorable terms on the eve of trial in September of 2009. 
• Data Network Storage Corp. v. Hewlett Packard Co. et al. (Northern District of Texas) Baker Botts represents Dell in a case pending in Dallas before Judge Godbey. The case involves command formats for computer systems. A summary judgment motion is pending. No trial date has been set.
• Digital Choice of Texas v. Dell, Inc. (Eastern District of Texas) Baker Botts represents Dell in a case pending before Judge Ward. The case involves parental control for DVD players. This case settled on favorable terms in 2010.  
• Dimango v. Hunter Fan Company (Eastern District of Michigan) Baker Botts represented Hunter in a patent infringement case involving five Dimango patents concerning fan control devices. With various summary judgment motions pending, the case settled with all claims dismissed and Dimango taking nothing.
• DSC v. Next Level (Eastern District of Texas) Baker Botts represented DSC in a trade secret misappropriation case relating to telecommunications equipment. Baker Botts obtained a $370 million jury verdict for our client and ended up collecting nearly $150 million through appeal.
• Electronic Trading Systems and eSpeed, Inc. v. The Board of Trade of the City of Chicago and The Chicago Mercantile Exchange (Northern District of Texas) Baker Botts represented plaintiffs in infringement litigation involving a business method patent related to electronic futures trading exchanges. The case settled for an estimated $30 million following mediation on the eve of trial.
• Elonex v. Dell Computer Corp. (District of Delaware) Baker Botts defended Dell Computer against an allegation that Dell was infringing a patent involving power-saving technique in computer systems. The case settled on favorable terms after close of discovery.
• Edward T. Englehardt v. Medela, Inc. (Northern District of Illinois) Baker Botts represents Medela in a false patent marking case involving the alleged false marking of certain Medela products with expired patent numbers. The case is in its early stages with a motion to dismiss pending.
• EOLAS Technologies Inc. v. Adobe et al. (Eastern District of Texas) Baker Botts is defending Perot Systems Corp. in a multi-defendant patent infringement action pending before Judge Leonard Davis in Tyler, Texas. The patents involve the interactive processing of an embedded object in a website page. The case is in discovery and is set for trial in October of 2011.
• Fenner v. Juniper Networks, Inc., et al. (Eastern District of Texas) Baker Botts defended Cisco Systems in a two-patent case involving router technology and billing technology for mobile communication systems. After a Markman ruling, this matter settled on favorable terms.
• Fotomedia Technologies, L.L.C. v. AOL L.L.C. et al. (Eastern District of Texas) Baker Botts represents Yahoo! Inc. in a three-patent case involving photo sharing techniques for websites. After a claim construction ruling, this case settled in 2009 on favorable terms.
• Gammino v. SBC Management Services, Inc. (Eastern District of Pennsylvania) and Gammino v. SBC, et al. (Northern District of Texas) Baker Botts defended SBC in a patent infringement case involving international call blocking technology. Motions to dismiss for seventeen of nineteen defendants were granted. Companion cases were filed in the Northern District of Texas, the Northern District of Illinois, and the Southern District of Ohio. In the Texas case, summary judgment was granted in early 2007 in favor of our client on the basis of non-infringement, which was later affirmed on appeal to the Federal Circuit.
• Imonex Services v. W.H. Münzprüfer (Eastern District of Texas) Baker Botts is representing W.H. Münzprüfer on an appeal by plaintiff Imonex of the damage award in patent litigation concerning coin acceptors for vending and laundry machines. At trial, Baker Botts successfully reduced a damage claim from nearly $100 million to less than two million dollars. On appeal, the Federal Circuit ruled in favor of Münzprüfer on the damages award.
• In re Certain Home Vacuum Packaging Products (U.S.I.T.C.) Baker Botts represented Applica (which includes the consumer products business of Black & Decker) in the International Trade Commission in a case relating to home vacuum packaging appliances. The complainant, Tilia Inc., sought a temporary exclusion order among other relief. Baker Botts won the temporary relief proceeding, and the case settled on favorable terms shortly before the permanent relief trial.
• In re Certain Refrigerators and Components Thereof (U.S.I.T.C.) Baker Botts represents Whirlpool in the International Trade Commission in a case involving indoor ice making systems for refrigerators. After trial and post trial briefing before both the Administrative Law Judge and the Commission, no violation was found. However, no appeal was taken in view of a favorable jury verdict in a companion case involving the same patent in federal district court in the District of Delaware.
• In re Certain Hard Disk Drives (U.S.I.T.C.) Baker Botts represented Dell in the International Trade Commission in a case involving the manufacture of hard disk drives for computers. After substantial discovery and other motion practice, the complaint was withdrawn, and a companion district court action in the Central District of California dismissed with prejudice. 
• Intellectual Property Development v. Telecommunications Inc. (AT&T Broadband) (Southern District of New York) Baker Botts successfully defended TCI and over fifty related companies in separate actions (multi-district litigation) in a patent infringement suit involving hybrid fiber coax cable television systems. Plaintiffs were seeking over $100 million in damages. Baker Botts obtained summary judgment on behalf of TCI holding the patent invalid and not infringed, and the Federal Circuit affirmed on non-infringement grounds in 2003.
• Intellisync v. NCR Corporation (Northern District of California) Baker Botts represented NCR in a case involving data synchronization technology, and succeeded in have a motion to dismiss granted. An appeal by Intellisync was dismissed after briefing.
• International Printer Corp. v. Brother International et al. (Eastern District of Texas) Baker Botts represented Toshiba in a multi-patent case involving networkable multi-function printers. After initial discovery, the case settled on favorable terms.
• Intervideo Digital Tech. Corp. v. Dell Inc. (Northern District of California and USITC) Baker Botts represented Dell in a patent infringement case involving a system for integrating multidevice functions (e.g., DVDs) into personal computers. Dell’s motion to stay the California action was granted pending reexamination, and for the first time in over a decade, the ITC has granted a stay pending reexamination. While the stay was lifted in early 2007, dismissal of the district court action and withdrawal of the ITC complaint followed thereafter.
• Keranos, LLC v. Analog Devices, Inc., et al. (Eastern District of Texas) Baker Botts is representing Toshiba Corp. in a multi-defendant patent infringement case involving three patents directed to semiconductor chips using split gate memory cells. This case is in its early stages.
• Kinetic Concepts Inc. (KCI) v. Bluesky Inc., Medela AG, et al. (Western District of Texas) In this case, Baker Botts represented defendant Medela in a patent infringement, breach of contract, and miscellaneous state tort claims case. After substantial discovery, a Markman hearing and substantial motion practice, a seven-week jury trial, and six days of jury deliberation, we obtained a defense verdict on all claims against our client. Final judgment was entered in our client’s favor in early 2007, and this case is now on appeal.
• Kinetic Concepts Inc. (KCI) v. Medela AG, et al. (Eastern District of Texas) Baker Botts represents Medela in a second patent infringement action brought by KCI involving wound healing patents. A motion to transfer to the Western District of Texas was granted, and the case now is pending in the Western District of Texas.
• LG Electronics, Inc. v. Whirlpool (District Court for the District of Delaware) Baker Botts represents Whirlpool in an eight patent case involving refrigerator and freezer technology. Four patents were asserted by LG and Whirlpool counterclaimed with four of its patents. At trial in March of 2010, Whirlpool obtained a favorable jury verdict on both its key patent and on the one patent LG pursued at trial. Post trial motions are pending.  
• LG Electronics, Inc. v. Whirlpool Corp. (District of New Jersey) Baker Botts is defending Whirlpool in a four patent case brought by LG Electronics. The patents relate to ice and water delivery systems for refrigerator/freezers. The case is in its early stages with no trial date set.
• LG Electronics, Inc. v. Whirlpool Corp. (District of Delaware) We are representing Whirlpool in a declaratory judgment action brought by LG Electronics following Whirlpool’s favorable jury verdict on earlier designs of LG’s refrigerator products. LG is seeking a declaratory judgment regarding its redesigned products and Whirlpool is seeking a preliminary injunction as to those products. This case is in its early stages.
• Lans v. Dell Computer Corporation and Uniboard v. Dell Computer Corporation (District Court for the District of Columbia) Baker Botts represented Dell in two related cases involving display technology, and succeeded in having motions granted dismissing both cases. Both dismissals were affirmed on appeal, and an award of attorney fees has been ordered. In October 2006, the award of attorney fees was affirmed on appeal to the Federal Circuit.
• MacLeod v. Dell, Inc., et al. (Central District of California) Baker Botts represented Dell in a patent infringement case involving a display device. This case settled in its early stages.
• Macrovision Corp. v. Wise Solutions and Altiris, Inc. (Northern District of California) Baker Botts represents the defendants and counterclaim plaintiffs involving patents of both sides directed to IT management software. This case settled in its early stages.
• Mediostream, Inc. v. Acer America Corp. et al. (Eastern District of Texas) Baker Botts is representing Dell in a multi-defendant case involving patents directed to video conversion software. This case is set for trial in January of 2011.
• Multimedia Patent Trust v. Microsoft and Microsoft v. Alcatel-Lucent et al. (Southern District of California) Baker Botts represented Alcatel-Lucent with respect to counterclaims of patent infringement related to various computer technologies. Originally eight patents were asserted but only three ended up being tried against Alcatel-Lucent. After a six week jury trial and a one day bench trial, Alcatel-Lucent prevailed on all Microsoft patents. The case settled during the appeal process. 
• Orion v. Edelbrock Corp. (Eastern District of Texas) Baker Botts represents Toshiba in a patent infringement case involving Web systems for product and parts ordering. This case settled on favorable terms.
• Orion IP, LLC v. Yokohama Tire Corp., et al. (Eastern District of Texas) Baker Botts represented Dell, Inc., in an infringement case involving patents related to Web sites. An early favorable settlement was negotiated.
• PGI International, Ltd. v. Anderson, Greenwood & Co. (Western District of Texas) Baker Botts is representing the plaintiff, PGI, in a patent infringement case involving stabilized connectors for instrument manifolds for pipelines. This case settled after the Markman hearing on favorable terms.
• Premier International Associates LLC v. Microsoft et al. (Eastern District of Texas) Baker Botts represents Toshiba in a two-patent case before Judge Folsom which involves digital music delivery systems. The case was stayed pending resolution of reexamination, and subsequently was dismissed with prejudice.
• Realtime Data, L.L.C. v. CME Group Inc. et al. (Eastern District of Texas) Baker Botts represents the CME Group including the Chicago Mercantile Exchange, the Chicago Board of Trade and the New York Mercantile Exchange in a patent infringement case involving five patents directed to the use of data compression techniques in the financial services market. The case is in its discovery stage with trial set before Judge Davis in February of 2012.
• Symantec Corporation et al. v. Altiris, Inc. (Eastern District of Texas) Baker Botts is defending Altiris in a patent infringement case involving patents directed to computer network management, and asserting Altiris patents by way of counterclaims involving similar technology. This case settled upon payment of $10 million by Symantec to our client Altiris.
• Synthecon, Inc. v. Vivorx, Inc., Vivorx Pharmaceutical Inc., et al. (Texas state court) Baker Botts represented Vivorx in a dispute over patent license agreements covering medical devices and a treatment for diabetes. A favorable settlement was achieved through mediation.
• Technology Properties, Ltd., Inc. (TPL) v. Fujitsu, Limited, et al. (Eastern District of Texas) and Toshiba America, Inc., et al. v. Patriot Scientific, et al. (Northern District of California) Baker Botts represents Toshiba in a multipatent case involving microprocessor technology. These cases arise from earlier litigation involving Patriot Scientific, which case has been dismissed. The California case was stayed and the Texas case settled on favorable terms shortly before trial.
• Teleguia v. Liberty Media Corp. (District of Puerto Rico) Patent infringement action in which Teleguia asserted patents directed to television cable distribution equipment. Settled for a nominal amount covered by insurance early in the discovery process.
• Trounson L.L.C. v. Yaskawa Electric Corp., et al. (Eastern District of Texas) Baker Botts represents Sanyo in a patent infringement case involving numerical control systems. This case settled on favorable terms.
• Tulip Computers International B.V. v. Dell Computer Corp. (District of Delaware) Patent infringement case involving a patent directed to personal computer form factors in which Tulip sought over $400 million in damages. Baker Botts obtained summary judgment of noninfringement on half the products at issue prior to trial. Case settled shortly before jury deliberation with Dell paying less than $10 million and balance of payment covered by insurance carriers.
• Virtual Hold Technology, L.L.C. v. Genesys Telecommunication Laboratories, Inc. (Eastern District of Texas, Tyler) Baker Botts is representing Genesys, a subsidiary of Alcatel, in a patent infringement case involving call processing technology. Genesys also has counterclaimed for infringement of its patent covering similar technology. This case settled on favorable terms.
• Webmap Technologies LLC v. City Accommodations Network et al. (Eastern District of Texas) We are defending Yahoo! Inc. in a multi-defendant patent infringement case pending before Judge Folsom in Marshall. The patents involve the display of geographically linked data on a website. The case is in discovery with trial set in March of 2012.

Arbitrator Engagements

• BMC Software, Inc. v. NetIQ Corp. (American Arbitration Association) Mr. Partridge serves as an arbitrator in a patent case involving three patents concerning methods and apparatus for managing computers in a network. Various motions and claim construction were the subject of evidentiary hearings. The case settled just prior to the start of trial in April 2007.
• R2 Technology, Inc. v. iCAD (American Arbitration Association) Mr. Partridge served as chair of an arbitration panel in a seven-patent case involving medical imaging technology. A claim construction hearing was conducted, various motions resolved and trial was held in 2005 under the Expedited Rules of the American Arbitration Association.

Special Master Engagements

• Broadcom Corp. v. SiRF Technology, Inc. (Central District of California, Judge James V. Selna) Mr. Partridge served as a special master for claim construction of two Broadcom patents directed to video image processing. After briefing and a one day hearing, a report and recommendation on over 20 claim terms was rendered, which was thereafter substantially adopted by the court.

Publications, Speeches and Presentations

Publications (recent only)

• “Amended Rule 702: Powerful Tool in Trade Secret Litigation,” Texas Lawyer, February 2002 (Nellie A. Fisher, co-author)

Speeches and Presentations (recent only)

• “Damages Abroad: Extraterritorial and Comparative IP Damages,” Recent Developments, Strategies, and Tactics in IP Damages Law, Intellectual Property Owners Association National Conference, Washington, D.C., March 2007
• “Rules Aren’t Made to be Broken: Follow Them or Risk the Consequences,” Intellectual Property Owners Annual Meeting, Seattle, Washington, September 2005
• “Recent Developments in Electronic Discovery,” Tokyo, Japan, October 2004
• “Insured-Insurer Communications and the Attorney-Client Privilege,” 19th Annual Institute on Intellectual Property Law, Galveston, October 2003
• Moderator, “Unlocking, Discovering, and Using Digital Evidence,” American Bar Association, San Francisco, August 2003
• “Tomorrow’s Technology Challenges Today’s Legal Structures,” Seoul, Korea, April 2003 (presentation to an audience of eight U.S. senators, 30 South Korean legislators, and South Korean business leaders)
• “Trade Secret Update,” 18th Annual Institute on Intellectual Property Law, Galveston, September 2002
• “Protecting Trade Secrets in a Transient Employment Marketplace,” Association of Corporate Patent Counsel, Farmington, Pennsylvania, June 2002
• “Markman Hearings in Practice,” 39th Annual Institute on Intellectual Property Law, Center for American and International Law, Dallas, November 2001
• “The Daubert World Gets Bigger: New Kinds of Experts and New Kinds of Procedures,” American Bar Association Annual Meeting, Chicago, August 2001
• “Emerging and Hot Topics in the High-Tech Area,” Advanced Business and Commercial Litigation, State Bar of Texas, Houston, May 2001
• “Joint Defense Coordination in Patent Cases,” Advanced Patent Institute, San Jose, California, November 2000
• “Biotechnology and the Law in the New Millennium,” American Bar Association Annual Meeting, London, July 2000 (moderated panel including Dr. Keith Campbell who cloned “Dolly the Sheep,” Dame Fiona Caldicott, Dr. Richard Durbin, and Dr. Tom Wilkie)