Mr. Herhold is a litigation partner in the firm's Palo Alto office where he specializes in patent infringement, trade secret and other intellectual property and antitrust litigation. He has substantial trial experience in both federal and state courts throughout the country. He has litigated cases involving a wide range of technologies, including computer hardware and software, telecommunications, Internet, semiconductors, photolithography, medical devices, and other electrical, mechanical and biotechnology patents.
Mr. Herhold has been recognized by his peers and selected by Super Lawyers magazine as one of the top intellectual property litigators in California in 2009. He is active in the legal community, serving on the board of directors of the Silicon Valley Campaign for Legal Services and frequently speaks at events and seminars throughout the country and internationally.
Representative Cases and Matters
Patent Infringement
- Textscape v. Adobe Systems. Lead counsel in defense of patent infringement action involving computer systems and methods for processing text.
- Brilliant Instruments v. GuideTech. Lead counsel in defense of patent infringement action involving time interval analyzers used in the integrated circuit design and repair.
- epicRealm v. Oracle Corp. Co-lead counsel for Oracle in defense of patent infringement action involving webservers and related Internet technology.
- Apple v. Atico International. Lead counsel in prosecution of patent and trademark infringement case involving accessories used with various media devices.
- Honeywell v. Novatek. Lead counsel in defense of patent infringement case involving integrated circuits used in flat panel displays.
- WebEx Communications, Inc. v. Raindance. Lead counsel for WebEx in prosecution of a patent infringement action involving web conferencing and related software systems.
- Valyd, Inc. v. Communication Intelligence Corp. Lead counsel for CIC in defense of patent declaratory relief action and infringement counterclaims involving electronic signature software.
- Topaz Systems, Inc. v. Communication Intelligence Corp. Lead counsel for CIC in defense of patent declaratory relief action and infringement counterclaims involving electronic signature software.
- Charles E. Hill & Associates, Inc. v. Zappos.com. Lead counsel in defense of patent litigation action involving electronic cataloging systems and methods.
- Synvasive Corp. v. Stryker Corp. Lead counsel for Synvasive in prosecution of patent infringement action involving surgical saw blades.
- Datascape, Inc. v. Visa U.S.A. Inc. Lead counsel for Visa in defense of patent infringement action involving “smart card” technology and networking systems.
- Dressel, et. al v. Visa U.S.A. Inc. Lead counsel for Visa in defense of patent infringement action involving check presenters.
- KAI U.S.A., Ltd. v. Buck Knives, Inc. Lead counsel for Buck in defense and prosecution of patent infringement action involving spring-assisted folding knives.
- Buck Knives, Inc. v. Leatherman Tool Group, Inc. Lead counsel for Buck in prosecution of patent infringement action involving locking mechanisms for combination tools, and follow-on licensing program.
- APM Design Laboratories, Inc. v. Sagantec North America, Inc. Lead counsel for Sagantec in defense of patent infringement action involving IC design migration software.
- Monster Cable v. Ultralink. Lead counsel for Ultralink in defense of patent infringement action involving cable connectors.
- Business Objects, S.A. v. Cognos, Inc. Co-lead counsel for Business Objects in prosecution of patent infringement action involving relational database query engines.
- Storage Technology Corp., v. Cisco Systems, Inc. Co-lead counsel for Cisco in defense of patent infringement action involving communication networks.
- Kensey Nash Corporation v. Perclose, Inc. Co-lead counsel for Perclose in defense of patent infringement action involving medical device and method for closing incisions in blood vessels during vascular surgery.
- White v. Seagate Technologies, Inc. Lead counsel for White in prosecution of patent infringement action and follow-on licensing program involving patents for slider assemblies (read/write heads) used in computer disk drives.
- Texas Instruments v. Hyundai Electronics Industries Co., Ltd. Counsel for Hyundai in defense of patent infringement action involving semiconductor process and circuit patents.
- Harris Corporation v. Hyundai Electronics Industries Co., Ltd. Counsel for Hyundai in defense of patent infringement action involving semiconductor process and circuit patents.
- Bingo Card Minder Corporation v. Gametech International, Inc. Lead counsel for Bingo Card in prosecution of patent infringement action involving hand-held electronic bingo device and system.
- Johns Manville Corp. v. UPF Corp. Co-lead counsel for Johns Manville in prosecution of patent infringement action involving faced fiberglass insulation used on aircraft.
- United Security Products v. Innotek, Inc. Lead counsel for United Security in prosecution of patent infringement action involving design patent for sound activated animal modification device.
Other Intellectual Property
- Legacy Electronics v. Wintec Industries, Inc. Lead counsel in defense of trade secret and antitrust action involving memory modules for the computer and computer related industry.
- Flotsam v. Huntington Beach Conference and Visitors Bureau. Lead counsel in prosecution of trademark declaratory judgment action seeking to invalidate the mark "Surf City USA" used in conjunction with the sale of goods and services.
- Golan v. Ashcroft. Lead trial counsel for plaintiffs in action involving copyright restoration under The Uruguay Round Agreements Act.
- Fogarty Engineering v. Revivant. Lead counsel for Fogarty in prosecution of action for breach of patent royalty agreement and related claims involving automated cardiopulmonary resuscitation devices.
- BioGenex Laboratories Inc. v. Rashidi. Lead counsel for BioGenex in prosecution of trade secret case involving automated molecular pathology staining and imaging systems.
- Q.R. Spex v. frog design, Inc. Lead counsel for frog design in defense of trade secret and patent infringement action involving wireless eyewear.
- A and G, Inc. v. American Activewear. Lead counsel for A and G in prosecution of trademark infringement action involving t-shirt labels.
- Sony Computer Entertainment America, Inc. v. Bleem, Inc. Co-lead counsel for Sony in prosecution of software copyright infringement and trade secret action involving computer games.
- Sony Computer Entertainment America, Inc. v. Connectix, Inc. Co-lead counsel for Sony in prosecution of software copyright infringement and trade secret action involving computer games.
- Adobe Systems, Inc., et al. v. Chu. Lead counsel for Adobe in prosecution of software copyright infringement action involving computer graphics.
- Ciphergen Biosystems, Inc. v. Molecular Analytical Systems, Inc. Co-lead counsel for Ciphergen in prosecution of trade secret/breach of patent license action involving technology for identifying and analyzing molecules at the protein level (proteomics).
- Ultratech Stepper v. Megapanel Corporation. Lead counsel for Megapanel in defense of trade secret action involving ownership of patent for transferring a reticle pattern onto a substrate through scanning (photolithography).
- Versatron v. Aerial Motive. Counsel for Aerial Motive in defense of trade secret action involving stabilized mounts for cameras on helicopters (“gimbals”).
- Raster Graphics, Inc. v. Topaz Technologies, Inc. Co-lead counsel for Raster Graphics in prosecution of trade secret action involving inkjet printing technology.
- Alamar Biosciences v. Difco Laboratories, Inc. Co-lead counsel for Alamar in prosecution of trade secret action involving ownership of patent for identifying bacteria and determining bacterial susceptibility to antibiotics.
- Intellectual Property Counsel for Synvasive Technology, Inc., a global orthopedic instrumentation company.
- Intellectual Property Counsel for frog design, Inc., a global innovation and design services company.
- Intellectual Property Counsel for International Manufacturing Group, a medical device manufacturer and distributor.
- Intellectual Property Counsel for Zappos.com, an e-commerce retailer of shoes and apparel.
Antitrust and Commercial
- Theme Co-op Promotions v. News America FSI, Inc. Lead counsel for Theme Co-op in prosecution of antitrust/unfair business practices action involving free standing inserts used for advertising packaged goods products.
- Lingo v. Microsoft (Coordinated proceedings). Counsel for plaintiffs in prosecution of antitrust class action involving claims for unlawful monopolization and business practices in the computer software industry.
- TriCom, Inc. v. Electronic Data Services Corporation (EDS). Counsel for EDS in defense of antitrust action involving claims of unlawful tying and monopolization in the computer-assisted car design industry.
- MRW Technologies, Inc. v. Soudronic, Ltd. Co-lead counsel for Soudronic in defense of antitrust action involving claims of unlawful tying and monopolization in the can manufacturing equipment industry.
Other
- Co-lead author of amicus brief in Phillips v. AWH Corp., leading Federal Circuit case on patent claim construction, 2005.
- Judge Pro Tem Santa Clara County Superior Court, Small Claims Division.
Speaking Engagements
Chair, 6th Annual IP Counsel Forum, ALM, San Jose, California.
Speaker, “Critical Issues that Win a Patent Case.” 2010 PLI Seminar, San Francisco, CA.
Speaker, “Effective Management of U.S. Patent Litigation.” 2009 Patent Litigation Seminars, Hsinchu, Taiwan and Tokyo, Japan.
Speaker, “U.S. Patent Law – Recent Developments and Trends.” 2009 Berkeley Center for Law and Technology, Berkeley, CA.
Speaker, "Current U.S. Patent Developments and Trends." 2008 International Conference on Patent Litigation, Seoul, Korea.
Speaker, "KSR and Obviousness - How it Has Played Out in the Courts and Patent Office." 2008 Rocky Mountain Intellectual Property & Technology Institute, Denver, CO.
Moderator and Speaker, “Navigating Unpredictable Patent Waters - Recent Developments in Patent Law and Reform.” 2007 ALM Seminar, San Jose, CA.
Moderator and Speaker, “Cease and Desist Letters and Other Pre-Litigation Considerations.” 2007 Intellectual Property for In-House Counsel, California State Bar, Los Angeles, CA.
Chair and Speaker, "Patent Claim Construction." 2007 LSI Seminar, San Francisco, CA.
Speaker, "Trademark Bully: The Battle Over Rights to Surf City." 2006 Intellectual Property Section of the Santa Cruz Bar Association, Santa Cruz, CA.
Speaker, "Effective Development & Presentation of Expert Testimony." 2006 LSI Seminar, Chicago, IL.
Speaker, “Intellectual Property Litigation Issues for In-House Counsel.” 2005, California State Bar, San Jose, CA.
Speaker, “Patent Reform Roundtables.” 2005 Townsend Presentations, Palo Alto, San Francisco and San Diego, CA.
Speaker, “Intellectual Property Considerations in Joint Marketing, Cross-Selling and Outsourcing.” 2004 Marketing Law Seminar, Chicago, IL.
Speaker, “Attorney-Client Privilege in Patent Litigation: What the Patent Prosecutor and In-House Counsel Should Know.” 2004 High Technology Protection Summit, University of Washington.
Speaker, “Review of Federal Circuit Claim Construction Precedent.” 2003 San Francisco Intellectual Property Law Association, San Francisco, CA.
Speaker, “The Anatomy of an Antitrust Trial - Trying a Tie-In Case.” 1999 ABA Antitrust Conference, Washington, D.C.