Jennifer Hayes

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.