Douglas E. Lumish

Lumish worked as co-counsel with Texas attorney Jennifer Doan to invalidate two patents that enable Internet browsers to host embedded interactive applications, such as streaming video, in a landmark trial in February.

The case was one of two major wins during the past year for Lumish, who in both cases represented clients who decided to fight a tough case while co-defendants settled.

"When you have clients who are willing to fight, you can win these cases despite the conventional wisdom," Lumish said.

In the most recent case, Lumish represented Google Inc. and subsidiary YouTube in a major win for Silicon Valley technology companies that feared holding company Eolas Technologies Inc.'s patents would cover all modern, interactive Web pages. The company was founded by a former UCSF biologist, Dr. Michael Doyle, and had the backing of the University of California because Doyle was a UC employee at the time of his invention.

Most of the original group of nearly two dozen defendants, aware that Microsoft Corp. had settled the case after getting a $521 million damages verdict overturned, decided to settle too.

The case was particularly daunting because the U.S. Patent and Trademark Office affirmed the patents on reexamination. But Lumish promised the Tyler, Tex.-based jury they would hear new evidence that would convince them to invalidate the patents.

"You have to make it clear that [he jury] is going to hear something different from the patent office," Lumish said.

Working with Doan along with Edward R. Reines of Weil, Gotshal & Manges LLP, Lumish called some of the Internet's pioneers, including Tim Berners-Lee, regarded as the founder of the World Wide Web, and Yahoo Inc. co-founder David Filo.

The jury returned a defense verdict within 2 ½ hours, Lumish said. Eolas Technologies Inc. v. Adobe Systems Inc. et al, 11-646 (E.D. Tx., filed Oct. 6, 2009).

In July, Lumish represented Hitachi Ltd. in a patent infringement case filed by Convolve Inc., which was seeking more than $200 million in a case involving hard disk drive technology. A jury reached a compromise verdict that required Hitachi to pay just $1.4 million. Convolve Inc. v. Dell Inc. et al, 08-00244 (E.D. Tx., filed June 18, 2008).

- CRAIG ANDERSON

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