Shawn G. Hansen

What do you focus on?

I am dedicated to helping research institutions and other clients in the life sciences, technology, and media industries craft and execute IP strategies optimized for their business objectives, from high stakes litigation to tech transfer and licensing.

Presentations

• “Direct Enforcement of University IP—A Case Study of UC Santa Barbara’s Enforcement of Patent Rights Against Retailers,” AUTM 2019 Eastern Region Meeting, Raleigh, NC, October 3, 2019
• Panelist, “Direct Enforcement of University IP—A Case Study of UC Santa Barbara’s Enforcement of Patent Rights Against Retailers,” AUTM 2019 Western Region Meeting, Seattle, WA, September 20, 2019
• Speaker, “Optimizing IP Strategy for Life Sciences Startups,” Pasadena Bio Collaborative Incubator, Pasadena, CA, October 18, 2017

Representative Experience

• Represent The Regents of the University of California in a groundbreaking patent enforcement campaign to protect its rights in a revolutionary new generation of light bulb technology known as filament LED that was invented by a Nobel laureate-led team at UC Santa Barbara. As the accused products are made by foreign manufacturers, this campaign is brought against major U.S. retailers in parallel proceedings before the U.S. International Trade Commission and in the U.S. District Court for the Central District of California.
• Astellas Institute for Regenerative Medicine and Stem Cell & Regenerative Medicine International v. ImStem Biotechnology et al. (D. Mass.)—Represented Stem Cell & Regenerative Medicine International (SCRMI) in action for correction of patent inventorship and for state law claims alleging wrongful acquisition, misuse, disclosure, and conversion of Astellas’s and SCRMI’s patented mesenchymal stem cell inventions.
• Yardi Systems, Inc. v. Property Solutions International Inc. (C.D. Cal.)—Counsel for plaintiff in action for trade secret misappropriation, copyright infringement, violation of the Digital Millennium Copyright Act, tortious interference, and breach of contract relating to property management accounting software and services.
• TrickleStar LLC v. Embertec Pty Ltd. (PTAB)—Lead counsel for Australian manufacturer of power management technology in petition for inter partes review regarding patent owned by another Australian power management technology company.
• Salix Pharmaceuticals, Ltd. et al. v. Actavis Laboratories FL, Inc. (D. Del.)—Counsel for co-plaintiff Cedars-Sinai Medical Center in ANDA action regarding generic version of Xifaxan® antibiotic for reduction in risk of overt hepatic encephalopathy (HE) recurrence in adults and treatment of irritable bowel syndrome with diarrhea (IBS-D) in adults.
• Johnstech International Corp. v. JF Technology Berhad et al. (N.D. Cal.)—Lead counsel for Malaysian manufacturer defendant in patent infringement action regarding semiconductor device testing equipment.
• In the Matter of Certain Laser Abraded Denim Garments (ITC)—Counsel for Swedish apparel retailer H&M in defense of Section 337 action regarding patents relating to methods for treating textiles with lasers.
• Akeso Health Sciences, LLC v. Nutraceutical Corporation (C.D. Cal.)—Lead counsel for dietary supplement patent owner in action for patent infringement regarding migraine headache dietary supplements.
• Akeso Health Sciences, LLC v. Knowles Enterprises, Inc. (C.D. Cal.)—Lead counsel for dietary supplement patent owner in action for patent infringement regarding migraine headache dietary supplements.
• Akeso Health Sciences, LLC v. Treasure Valley Services, Inc. DBA Migraine Treatment Group (C.D. Cal.)—Lead counsel for dietary supplement manufacturer patentee in action for patent infringement regarding migraine headache dietary supplements.
• Techmark Software Pty Ltd. TA Woolich Racing v. FT ECU Inc.(C.D. Cal.)—Local counsel for Australian plaintiff in action for violation of Computer Fraud Abuse Act, misappropriation of trade secrets, and breach of contract.
• Skywalker Holdings v. Vuly Trampolines (D. Utah)—Lead counsel for Australian manufacturer defendant in patent infringement action regarding trampoline safety equipment. The case has been settled and dismissed.
• Priewasser v. Lintec Corporation et al. (D. Ariz.)—Counsel for Germany-based plaintiff against Japanese defendant in action for fraud and correction of inventorship related to semiconductor back grinding tape technology. Conducted numerous depositions in the United States consulate in Osaka, Japan.
• Digital Air Technologies, LLC v. Volkswagen Group of America, Inc. (C.D. Cal.)—Lead counsel for patentee plaintiff in patent infringement action regarding special effects technology used in production of advertisements.
• HID Global Corporation et al. v. Soundcraft, Inc. (C.D. Cal.)—Counsel for defendant in patent infringement action regarding RFID reader technology. The case has been settled and dismissed.
• Arrowhead Media Holdings, LLC v. David Keighley Productions 70MM Inc. (C.D. Cal.)—Co-lead counsel for David Keighley Productions 70MM Inc. (a wholly owned subsidiary of IMAX Corporation) in defense of patent infringement claims under patent purporting to cover processes for recomposing large format motion picture media for transfer to conventional formats. The case has been settled and dismissed.
• Fuhu, Inc. v. Toys “R” Us, Inc.—Co-lead counsel for Fuhu in action against Toys “R” Us (TRU) for trade secret misappropriation in connection with TRU’s launch of Tabeo, a competitor of Fuhu’s groundbreaking, full-featured Android tablet for children, the nabi™.
• Jerry Leigh of California, Inc. v. Dragon Crowd Garment Inc. dba Colorfast Apparel, Inc., and Lowdown Distribution, Inc., dba Colorfast Apparel, Inc. (C.D. Cal.)—Lead counsel for major apparel manufacturer in action against competitor for false designation of origin under the Lanham Act, false advertising under California Business and Professions Code Section 17500, unfair competition under California Business and Professions Code Section 17200, common law unfair competition and common law misappropriation. Jerry Leigh is the developer and manufacturer of the Hoodie Buddie™ and HB3 Technology™ products, in which a conventional drawstring is replaced by a specially designed lanyard with integrated ear buds and wiring to connect to an audio device, such as an iPhone or other mp3 player. Jerry Leigh’s claims against Dragon Crowd and Lowdown concerned their Active Audio™ products and related marketing and promotional activities. The case has been settled and dismissed. Jerry Leigh’s president, Andrew Leigh, said in a press release, “We are very pleased with this settlement. The outcome reinforces Jerry Leigh’s position as the original developer of our exclusive HoodieBuddie™ and HB3 Technology™ products and the owner of the underlying intellectual property. Together with our existing portfolio of intellectual property, including pending patents, trademarks and other rights, the patents acquired in this settlement further extend the intellectual property protection we provide for our customers and licensees.”
• LL&L Innovations, LLC, and Lowdown Distribution, Inc. v. Jerry Leigh of California, Kohl’s, J.C. Penney, Rusty, Hot Topic and Sun Coast (D. Utah)—Lead counsel for major retailers and manufacturer in defense of patent infringement claims against Hoodie Buddie™ and HB3 Technology™ products. LL&L and Lowdown filed a complaint and concurrent motion for a temporary restraining order and preliminary injunction against Jerry Leigh, Kohl’s, JC Penney, Rusty, Hot Topic and Sun Coast for infringement of U.S. Patent No. 7,519,192 (’192 patent) in connection with the Hoodie Buddie™ and HB3 Technology™ products. Mr. Hansen first-chaired hearings on the temporary restraining order and preliminary injunction, both of which were denied. The case has been settled and dismissed.
• PartsRiver v. Microsoft, E-Bay, et al.; Microsoft & eBay v. Kelora Systems; Kelora Systems v. Target et al.; Cabela’s v. Kelora Systems; Nebraska Furniture Mart v. Kelora Systems (N.D. Cal.)—Represented patent owners in patent infringement case and related declaratory judgment actions regarding recently reexamined U.S. Patent No. 6,275,821 (’821 patent). The ’821 patent is directed to websites that employ parametric step searching, a feature used on many e-commerce websites.
• EMG Technology v. Apple Computer et al.; and EMG Technology v. Microsoft et al. (E.D. Tex.)—Successfully settled patent infringement actions against Apple, Microsoft, Comcast, Dell and others in the Eastern District of Texas (Tyler). EMG asserted patent claims involving mobile device interfaces for websites.
• Joao Bock Transaction Systems of California v. Cathay Bank, et al.(C.D. Cal.)—Representing Defendants Pacific Capital Bank, N.A., Santa Barbara Bank & Trust, First National Bank of Central California, South Valley National Bank, San Benito Bank and First Bank of San Luis Obispo in patent infringement action in the Central District of California. The asserted patent purports to relate to account security in connection with financial transactions.
• ExitExchange v. Casale Media Inc. et al. (E.D. Tex.)—Represented Defendant TrafficMarketplace, operator of an online media network for advertisers and publishers, in patent infringement action in the Eastern District of Texas. The asserted patent purports to relate to “pop-under” advertisements.
• Visto Corp. v. Microsoft (E.D. Tex.)—Settled patent infringement action against Microsoft in the Eastern District of Texas (Marshall/Texarkana). Visto holds a portfolio of patents directed to wireless messaging and e-mail, calendar and contact synchronization, including U.S. Patent No. 6,085,192, which recently emerged from reexamination. Microsoft announced Messaging and Security Feature Pack (MSFP) for Windows Mobile 5.0 and Service Pack 2 (SP2) for Microsoft Exchange Server 2003. Direct Push technology in MSFP and Exchange Server 2003 SP2 is designed to allow Exchange Server to send messages and other PIM information directly to Windows Mobile 5.0 devices over the air (OTA) through wireless accounts. The case settled for a confidential amount just before trial in March 2008.
• Visto Corp. v. Research In Motion (E.D. Tex.)—One of several patent infringement actions on the Visto patent portfolio against RIM, which settled for $267.5 million.
• Research In Motion v. Visto Corp. (Canada)—Concluded patent infringement action pending against Visto in Canada involving RIM patents.
• Research In Motion v. Visto Corp. (U.K.)—Action by RIM seeking revocation of the U.K. designation of Visto’s European Patent and declaration of noninfringement regarding the same. Visto counterclaimed against RIM for infringement in connection with RIM’s BlackBerry Mail Connector products. Visto also sought revocation of two RIM patents, with respect to which RIM consented before the trial.
• Research In Motion v. Visto Corp. (Italy)—Action by RIM seeking revocation of Italian designation of Visto’s European Patent.
• Research In Motion v. Visto Corp. (N.D. Cal.)—Patent infringement action pending in Northern District of California involving recently issued patents in the Visto portfolio.
• Visto Corp. v. Research In Motion (E.D. Tex.)—Patent infringement action pending against RIM in the Eastern District of Texas (Marshall) involving patents formerly owned by Seven Networks, Inc.
• Visto Corp. v. Seven Networks, Inc. (E.D. Tex.)—Obtained jury verdict of willful patent infringement and order declaring the case exceptional and granting double damages and permanent injunctive relief against Seven in the Eastern District of Texas (Marshall). The parties subsequently entered into a settlement in which Seven acknowledged the validity and enforceability of Visto’s patent portfolio and agreed to licensing terms including monetary and non-monetary considerations. Seven is the provider of Sprint Business Connection software and Cingular Xpress Mail software.
• Visto Corp. v. Good Technology, Inc. (E.D. Tex.)—Patent infringement action against Good Technology, Inc., in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. Motorola Good Technology Group provides the Good Mobile Messaging mobile e-mail solution. In connection with settling the case, Visto acquired Good Technology from Motorola in 2009; the combined companies adopted the Good Technology name.
• Visto Corp. v. Smartner Information Systems Ltd. (E.D. Tex.)—Settled patent infringement action in the Eastern District of Texas (Marshall) involving the Visto patent portfolio. The parties entered into a settlement in which Smartner acknowledged the validity and enforceability of Visto’s patent portfolio and agreed to licensing terms, including monetary and nonmonetary considerations.
• Visto Corp. v. Sproqit (N.D. Cal.)—Dismissed patent infringement action against Sproqit in the Northern District of California involving the Visto patent portfolio.
• Visto Corp. v. Infowave Software, Inc. (E.D. Tex.)—Settled patent infringement action against Infowave in the Eastern District of Texas (Marshall). As part of the settlement, Infowave acknowledged the validity of Visto’s complete patent portfolio and took a royalty-bearing license to those patents.
• Philips v. Concord Records, Inc., Concord Music Group, Inc. et al. (SDNY)—Patent infringement action pending in the Southern District of New York. Philips asserts claims for breach of license agreements and, in the alternative, for infringement of U.S. Patent 5,068,846 (’846 patent), entitled “Reflective, Optical Record Carrier.” Philips asserts in its complaint against the Concord entities and other content publishers and CD manufacturers that use of the ’846 patent is essential to manufacturing CDs that conform to standard specifications.
• Crossroads Systems, Inc. v. DataDirect Networks, Inc. et al. (W.D. Tex.)—Settled patent infringement action in the Western District of Texas, Austin Division. DataDirect is a world leader in data connectivity and mainframe integration. Crossroads sued DataDirect and others for alleged infringement of U.S. Patent 6,425,035, entitled “Storage Router and Method for Providing Virtual Local Storage.”
• Large Scale Biology Corporation v. ProdiGene, Inc. (N.D. Cal.)—Successfully defended patent infringement action involving biotechnology patents in the Northern District of California. Large Scale Biology Corporation (LSBC) provides pioneering viral vector technologies and biomanufacturing of pharmaceuticals in plants. Mr. Hansen filed on behalf of LSBC a preemptive declaratory judgment action seeking declarations of noninfringement, invalidity and unenforceability after ProdiGene demanded that LSBC license a ProdiGene patent relating to the production of pharmaceutical proteins in plants. ProdiGene counterclaimed and brought a motion for preliminary injunction against LSBC seeking to enjoin LSBC’s recombinant aprotinin products. ProdiGene agreed to dismiss its patent infringement claims with prejudice after Judge Armstrong denied ProdiGene’s motion for preliminary injunction based on findings of fact and law that strongly favored LSBC.
• Gracenote, Inc. v. Musicmatch, Inc. (N.D. Cal.)—Successfully defended patent infringement action in the Northern District of California. Gracenote asserted several patents directed to Internet-based music recognition software and services. Musicmatch asserted counterclaims of invalidity and unenforceability due to fraudulent withholding of material information about Gracenote’s prior systems from the USPTO during prosecution of the Gracenote “CDDB” patents, as well as antitrust violations based on the same conduct. The parties agreed to settle the case after Musicmatch obtained summary judgment on all patent claims.
• Macrovision Corp. v. 321 Studios (SDNY)—Patent infringement and Digital Millennium Copyright Act (DMCA) action against 321 Studios in the Southern District of New York (Manhattan). Macrovision obtained a preliminary injunction against the sale of 321 Studios’ popular “DVD X Copy” DVD copying products. Paramount and other motion picture studios had previously received a similar injunction, but 321 Studios avoided those injunctions by removing so-called “ripper” decryption functionality. Macrovision’s injunction went a step further, blocking the new DVD X Copy “RF” (Ripper Free) products, which were being sold by 321 Studios online with a link to a third-party ripper. 321 Studios filed an interlocutory appeal of the preliminary injunction to the Court of Appeals for the Federal Circuit, challenging the constitutionality of the DMCA. However, while the appeal was pending, 321 Studios agreed to a settlement. Under the settlement, 321 Studios acknowledged the validity and enforceability of the Macrovision patents, as well as its infringement thereof and violation of the DMCA, and was permanently enjoined.
• Macrovision Corp. v. Sima Corp. (SDNY)—Patent infringement and DMCA action against Sima in the Southern District of New York (Manhattan). After the district court granted Macrovision's motion for a preliminary injunction against the sale of Sima’s products based on Macrovision’s claims for violation of the DMCA, Sima filed an interlocutory appeal and an emergency motion for a stay of the preliminary injunction pending appeal with the federal circuit. The federal circuit denied Sima’s motion for a stay in an order detailing the reasons why Sima’s appeal was not likely to succeed on the merits. Sima agreed to a settlement shortly thereafter. As a part of the settlement, Sima acknowledged the validity of the Macrovision patents and was permanently enjoined.
• E-Data v. Ticketmaster, Fandango, et al. (SDNY)—Dismissed patent infringement action in the Southern District of New York (Manhattan) regarding the Freeny patent brought by E-Data (formerly Interactive Gift Express Inc).
• Kahn v. WAGIC Inc. (NDNY/AAA San Francisco)—Successfully concluded patent dispute in the Northern District of New York and the San Francisco office of the American Arbitration Association relating to patented tool accessories. WAGIC held an exclusive license on patented tool accessories. After the patent owner attempted unsuccessfully to renegotiate the license, the patent owner sued WAGIC for patent infringement in the Northern District of New York. WAGIC successfully obtained an order from the New York court compelling arbitration and staying Kahn’s district court litigation. Mr. Hansen successfully first-chaired an arbitration before the American Arbitration Association in San Francisco and obtained significant relief for WAGIC, including an injunction against the patent owner’s sales of the patented items within WAGIC’s exclusive distribution territory and an order confirming that WAGIC’s exclusive distribution territory included the largest home improvement retailer in the world.
• CBS Interactive Inc. (formerly CNET Networks, Inc.) v. Etilize, Inc. (N.D. Cal.)—Patent infringement action in the Northern District of California. CBS Interactive (CBSi) asserted claims against Etilize, Inc., for infringement of patents relating to methods and processes of compiling information about consumer products into catalogued databases for online merchants. Etilize denied all of CBSi’s patent infringement allegations and asserted counterclaims for antitrust violations under Section 2 of the Sherman Act, unfair competition under Section 17200 of the California Business and Professions Code, intentional and negligent interference with prospective economic advantage, and for declarations of invalidity, unenforceability and noninfringement of CBSi’s patents.