Adam R. Alper

Alper leads Kirkland’s intellectual property group in the Bay Area. He also represents clients in high stakes patent ad trade secret litigation involving major entities in the semiconductor, telecommunications, computer hardware and software industries. Clients include Intel Corp., Cisco Systems Inc., Energy Labs Inc., Motorola Solutions Inc., Zebra Technologies Corp., EagleView Technology Corp. and LivePerson Inc.

In one of several major recent wins, Alper was lead counsel representing Energy Labs when rival Nortek Air Solutions Inc. accused it of infringing six of Nortek’s patents covering air ventilation technology. “Nortek is a large conglomerate that makes and sells commercial HVAC equipment. This was a Goliath v. David story,” Alper said, adding that Nortek had long been looking to shut down Energy Labs’ business. “They were asking for millions in past damages and ongoing royalties and trying to get an injunction to exclude us from the marketplace entirely.”

A Northern District jury thought otherwise following a two-week trial in San Jose before U.S. District Judge Beth Labson Freeman. Alper’s firm replaced another set of lawyers after the close of discovery and persuaded the court to reopen discovery, during which it found evidence of the invalidity of the asserted patents and of the real motivations behind the plaintiff’s suit.

Alper and the Kirkland team obtained several key victories pretrial, including a successful Daubert motion that led Freeman to exclude the patent owner’s primary expert opinion on damages.

A major moment came when the Alper team inspected Nortek’s job files and discovered heating, ventilation and air conditioning projects from the early 2000s using technology that Nortek did not patent until years later. The photos from the files became exhibits at trial to show that the technology existed long before Nortek sought to protect it. Alper obtained repeated, critical admission on cross-examination that the inventor did not actually invent what Nortek claimed. Nortek Air Solutions LLC v. Energy Labs Inc., 5:14-cv-02919 (N.D. Cal., filed June 24, 2014).

In August 2016, after deliberating for three full days, the jury found no infringement of any of the six patents and also found that a majority of the plaintiff’s claims were invalid. The plaintiff’s motion to overturn the verdict and Alper’s motion for fees and costs were settled on confidential terms. “They got zero damages and the little guy was vindicated,” Alper said. “That was very satisfying for a client with its back against the wall.”

Alper was also one of the Kirkland lawyers for Cisco in its action against Arista Networks Inc. at the International Trade Commission. That case resulted in multiple findings of intentional infringement by Arista and a ban on Arista importing and selling its switch products.

— John Roemer