Michael A. Jacobs

This year, Juniper Networks and Palo Alto Networks Inc. ended their contentious patent dispute with a multimillion-dollar settlement.

Jacobs had represented the Santa Clara-based PAN as co-lead trial counsel against allegations that it had infringed on patents related to rival Juniper's firewall technology.

A mistrial was declared in March when jurors were unable to reach a verdict. Juniper Networks Inc. v. Palo Alto Networks inc., 1:11-cv-1258 (D. Del., filed Dec. 19, 2011).

"Our challenge was to bring effective counterclaims against Juniper for patent infringement and drive the case to a favorable settlement," Jacobs said.

But the highly technical case had another wrinkle: the assignor estoppel doctrine.

"It is a strange doctrine," Jacobs said.

In this case, the founder of PAN had invented some of the patents that were assigned to Juniper and that Juniper was asserting against PAN.

Therefore, Jacobs said, "PAN was barred from presenting an invalidity case under the estoppel doctrine."

Jacobs then filed a state court lawsuit, challenging whether the assignment was valid in view of Juniper's assertion of assignor estoppel, which, he said, "amounts to an illegal covenant to compete."

"We were working on the appeal when the case settled," Jacobs said.

Under the terms, PAN will make a one-time payment to Juniper of $75 million in cash and $100 million in shares of common stock and warrants to purchase common stock.

As to the potential impact of the litigation, Jacobs said, "We pushed the envelope on the estoppel doctrine. Somebody might pick up the mantel and press it further."

In another significant matter, Jacobs represented Apple Inc. in lengthy and high-profile litigation against Samsung Electronics Co. Ltd. over smartphone technology.

He served as co-lead counsel in the August 2012 trial between the two companies that resulted in a verdict of more than $1 billion in Apple's favor.

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