Fabio E. Marino

Marino heads Polsinelli’s intellectual property litigation practice as a first chair for networking, software and hardware companies. He’s preparing for a major patent infringement trial before U.S. District Judge Susan Y. Illston of San Francisco.

Marino represents MLC Intellectual Property LLC, which alleges technology giant Micron Technology Inc. infringed its patent related to electrically alterable non-volatile memory cells for flash drives.

“Micron’s defense is invalidity,” Marino said. “The don’t really have much on infringement. They moved for summary judgment twice, but the court granted it in our favor. It’s primarily going to be a damages case at this point. We’re asking for hundreds of millions of dollars, and they’ll try to cut it down.”

The trial is set for August.

“At this point, trial prep is the majority of my team’s work,” Marino said. “We’re in expert discovery, prepping witnesses and analyzing issues. Then, we try to synthesize issues to their core elements to be presented to the jury. The art of getting ready for trial includes trying to tell a story about people — in this case, for our main inventor, we try to tell why what he did was better than what came before. For damages, we’ll tell how Micron sold billions of dollars of unlicensed product.”

The pretrial maneuvering has so far involved two unusual elements, Marino said. At one point, Micron challenged the litigation funding sources behind MLC’s lawsuit. Illston rejected Micron’s discovery request into the funding arrangements, ruling the question not relevant.

“Such attacks are becoming more prevalent,” Marino said. “The judge has made it clear that it is not discoverable in a patent case.”

The other unusual question has been Micron’s efforts to obtain testimony by MLC’s main inventor W. Jerry Banks that he gave as a third party witness before the International Trade Commission under confidentiality rules.

“Micron is trying to force the judge to turn it over,” Marino said. “It could change the way that district courts and the ITC overlap.” MLC Intellectual Property LLC v. Micron Technology Inc., 14-CV03657 (N.D. Cal., filed Aug. 12, 2014).

“A lot of our preparation is designed to counter what the other side will have to say,” Marino noted. “We do a lot of work to try to anticipate the other side. It’s the creative part of the job, and I take that role, putting myself in their shoes and letting my team figure out our response.”

Marino began his life prior to law school as a software architect developing commercial artificial intelligence systems.

“Sure, I keep up with the field,” he said. “One can only hope it’s about to become a lot more active.”

— John Roemer