Douglas E. Lumish

Lumish, the global vice chair of Latham’s litigation and trial department, represents innovative companies in IP and technology matters. Clients include Facebook Inc., Velodyne Lidar Inc., LG Display, Rivian Automotive Inc. and BBB Industries LLC.

Defending Facebook, he successfully fought off a former employer’s motion for preliminary injunction over claims that a prominent engineer, Aleksandar Zlateski, who is now working for his client, had published code that was allegedly a trade secret.

“The judge agreed with Facebook’s position on virtually every argument,” Lumish said. The case has proceeded to discovery. Neural Magic Inc. v. Facebook Inc., 20-CV10444 (D. Mass., filed March 4, 2020).

As autonomous automotive technology develops, Lumish represents the maker of a key component.

“This is super-cool technology,” he said of San Jose-based Velodyne’s lidar devices. Chinese competitors Hesai Photonics Technology Co. Ltd., RoboSense Lidar and Quanergy Systems Inc. all have allegedly infringed Velodyne’s patents; litigation ensued.

“My client is a pioneer in the vision systems you see on these self-driving cars,” Lumish said. “The thing that looks like the bubble lights on old-fashioned police cars is actually extremely advanced technology that captures measurements of the world around you.”

Velodyne alleged that the rivals infringe its patent for a spinning lidar sensor used to detect and map terrain in three dimensions, acting as the vehicles’ eyes.

“It tells the car whether there’s a tree or a cat or the open road ahead,” he said.

Lumish noted that Velodyne entered a vehicle in an early driverless car race called the DARPA Grand Challenge, sponsored by the government, and then developed new sensors for a perception detection system used by entrants in later races.

“Stanford and Carnegie Mellon tried and failed but Velodyne figured it out,” he said. “I get to work with the people who did this first. Now, most of the challenges come from people who are trying to find technical arguments to invalidate Velodyne’s patents.”

Velodyne’s foundational technology is used by most of the companies in the autonomous vehicle industry, including major automakers, leading technology companies and various startups.

Lumish led Velodyne’s defense after a district court judge issued a claim construction order adopting most of Velodyne’s proposed constructions and Quanergy filed two petitions for inter partes review.

At a Patent Trial and Appeal Board trial, Lumish prevailed. The case is on appeal at the U.S. Court of Appeals for the Federal Circuit. Quanergy Systems Inc. v. Velodyne Lidar Inc., IPR2018-00255 and IPR2018-00256 (PTAB, filed Nov. 29, 2017).

The Hesai and RoboSense cases settled last September. Lumish relied in part on secondary considerations of non-obviousness, including acknowledgments by experts in the field of Velodyne’s achievements.

“We were able to bring out this common sense argument that everyone can grasp,” he said. “I’ve been doing this kind of work for 25 years, and it’s fun to have a case I can get fired up about.”

— John Roemer