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    1. Home
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    3. Jennifer HayesPeople
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    3. Jennifer HayesPeople

    Jennifer Hayes

    Partner


    • Los Angeles
    • Office213.629.6179
    • jenhayes@nixonpeabody.com
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    Introduction

    Jennifer Hayes focuses her practice on patent litigation, including inter partes review (IPR) and other post-grant review proceedings. Additionally, she has experience with cases involving trade secrets and copyrights.

    Practice Areas

    Intellectual Property

    My focus

    Patent Litigation

    My practice concentrates on resolving patent disputes in high-tech industries, such as wireless, lithium-ion batteries, medical device, software, internet of things (IOT) and other technology industries. I have successfully argued motions in district court, deposed key fact and expert witnesses and negotiated settlements. I am also well-versed in appearing before the Patent Trial and Appeal Board (PTAB), a venue which I have used to effectively resolve a number of patent disputes. Leveraging my engineering background and patent litigation experience allows me to create comprehensive strategies that prioritize success as defined by my clients’ business priorities.

    Patent Portfolio Development and Strategy

    I strategize with my clients to develop strong and effective patent portfolios in a variety of different industries.

    Trade Secrets and Other Intellectual Property Advice

    I also handle trade secret, copyright and commercial litigation matters. This portion of my practice involves advising clients on trade secret protection plans, copyright take-down notices and IP clauses in various business contracts.

    Representative experience

    • Represented Workspot Inc. in a patent infringement lawsuit and several inter partes reviews relating to remote application access using virtual machine technology. The case settled. Citrix Systems Inc. v. Workspot, Inc. (D. Del.)
    • Represented JF Microtechnology, an integrated circuit testing device company, in a patent infringement lawsuit through trial relating to integrated circuit testing devices. Johnstech International Corp. v. JF Technology Berhad, et al. (N.D. Cal.)
    • Represented plaintiff and counter-defendant in state court in a breach of contract and trade secret dispute involving a sale of a patent portfolio. Invention Capital Partners v. Phoenix Technologies
    • In the Matter of Certain Laser Abraded Denim Garments (ITC). Represented Hennes & Mauritz AB (H&M), a multinational clothing-retail company, in the ITC in a patent dispute regarding laser abraded denim patents.
    • Successfully invalidated all instituted claims in IPR2016-01336 on behalf of client TrickleStar LLC, an electrical and electronic manufacturing company.
    • Successfully invalidated all but one instituted claim on all grounds in IPR2016-01528 on behalf of client OneD Material LLC (OneD), a company that supports the development of advanced lithium-ion batteries.  Represented OneD in related, copending district court litigations involving the same technology (Del. and Cal.) and a Federal Circuit appeal of the IPR decision.
    • Represent Sierra Wireless, a multinational wireless communications equipment designer and manufacturer, in numerous cases including:
      • A patent infringement case related to components that boost connections between mobile devices and 3G networks. The case settled. Golden Bridge Technology Inc. v. Apple Inc., et al. (D. Del.)
      • A patent infringement case related to sales of wireless network adapters. The case settled on favorable terms following a jury verdict of non-infringement and invalidity. DNT, LLC v. Sprint Nextel Corporation, et al. (E.D. Va.)
      • A patent litigation matter relating to claims arising from OFDM (LTE) and multi-code CDMA technology. The case settled on favorable terms before trial. Wi-Lan v. Sierra Wireless, et al. (E.D. Tex.)
      • A patent litigation matter relating to dual channel CDMA modulators, Spreading Factor selectors and MAC layer collision avoidance. The case settled on highly favorable terms shortly before trial. SPH v. Sierra Wireless, et al. (S.D. Cal.)
      • A patent infringement case and inter partes review proceedings (IPR2016-00055; IPR2015-01823) regarding wireless modules used in IoT devices. Successfully obtained summary judgment of non-infringement, collateral estoppel and Daubert and invalidated instituted claims in the IPRs. M2M Solutions v. Sierra Wireless America, Inc. (D. Del., PTAB)
      • A patent infringement case related to methods for the wireless transmission of data through a communications channel. The case was terminated. Magnacross LLC v. Sierra Wireless America, Inc. (E.D. Tex.)

    Looking ahead

    New patent litigation cases remain brisk, and IPRs and other post-grant reviews continue as a frontline defense in many cases. This is an important consideration for both plaintiffs and defendants in patent litigation.

    I am interested in health and wellness and am excited by the industry’s adoption of technology to improve all aspects of an individual’s health and wellness. There are opportunities for players in this industry to develop strong patent portfolios but there are also potential risks for increased litigation as the adoption of technology and competition increases.

    In the news

    • Law360

      PTAB rejects CBM challenges to profit measurement patents

      This article mentions Chicago Intellectual Property counsel Matt Werber and Los Angeles Intellectual Property partner Jennifer Hayes for their representation of B*IEOR in a matter before the Patent Trial and Appeal Board.
      May 31, 2019
    • Rochester Business Journal

      Patent office issues new guidance on patent applications

      Rochester Corporate partner Jeremy Wolk, with the help of Los Angeles Intellectual Property partner Jennifer Hayes and Washington, DC, Intellectual Property associates Anthony Duncan and Emily Sandhaus, authored this column the United States Patent and Trademark Office’s new guidance on software patent applications.
      Feb 22, 2019
    • Los Angeles/San Francisco Daily Journal

      Justices agree that secret sales bar patent protection

      Los Angeles Intellectual Property partner Jennifer Hayes and Chicago Intellectual Property associate Ben Rosborough authored this column about the U.S. Supreme Court’s recent decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals U.S. and how it impacts patent protection.
      Feb 4, 2019
    • Law360

      4 Times To File A Continuation Patent Application

      Silicon Valley IP litigation partner Jennifer Hayes provides third-party commentary throughout this article about when to file a continuation patent application.
      March 17, 2016
    • The Recorder

      On the Move

      This coverage notes Silicon Valley IP litigation partner Jennifer Hayes election to the partnership news.
      Feb 5, 2016
    • Law360

      Get Ready For EU Unified Patent Court and Unitary Patent

      San Francisco IP litigation partner Ron Lopez and Silicon Valley IP litigation associate Jennifer Hayes co-authored this column on the new single Unified Patent Court with jurisdiction over European patents.
      Jan 8, 2016

    Admitted to practice

    California
    U.S. Patent and Trademark Office
    U.S. District Court, Northern District of California
    U.S. District Court, Southern District of California
    U.S. District Court, Central District of California
    U.S. Court of Appeals, Ninth Circuit
    U.S. Court of Appeals, Federal Circuit

    Education

    California Polytechnic State University, B.S., Mechanical Engineering
    University of San Diego School of Law, J.D.

    Professional activities

    • American Bar Association (ABA), Intellectual Property Section
    • American Intellectual Property Law Association (AIPLA)
    • Leading Women in Technology

    Recognition

    • PTAB Bar Association—Listed as one of the top Top 50 Women in PTAB Trials, which recognizes female practitioners in private practice or at companies who have appeared in the highest number of PTAB trial proceedings since 2012 (2019)
    • Super Lawyers—Recognized as a “Rising Star” in Northern California (2009 and 2013–present)

    Pro bono services

    Jennifer is a member of the Pro Bono Committee.  She has performed pro bono work for Legal Services for Children and Legal Aid Society of San Mateo County. She is also responsible for introducing a patent pro bono program to Nixon Peabody through the California Lawyer for the Arts patent pro bono referral service initiated by the USPTO.

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      IP litigation during the pandemic

      Intellectual Property
      Oct 2, 2020
    • Alert

      New Federal Circuit case confirms the value of design patents covering component parts of a design

      Aug 1, 2019
    • Alert

      Patent office issues new guidance on patentability of software patent applications

      Jan 23, 2019
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