Douglas E. Lumish

As a key IP trial lawyer for Latham & Watkins LLP, Douglas E. Lumish—an eight-year veteran of the firm— said two chief factors have boosted his caseload.

“We’ve never been busier. The patent docket is busier than ever and the trade secrets docket is even more so,” he noted, explaining that courts are scrambling to schedule cases delayed by the pandemic. Also, notable trade secrets case outcomes such as a big settlement over self-driving car technology in 2018 encouraged lawyers to file more claims, he said.

“Those caught the attention of the trade secrets bar. Uber v. Waymo came at the beginning of that inflection point. And lawyers came to see that trade secrets claims are a way of avoiding the legal principles that can slow down patent cases.”

Last year Lumish successfully defended client Peloton Interactive Inc. against a rival’s claims that it infringed patents. Just months before a scheduled trial, Lumish moved for dismissal on the grounds that the asserted patents failed to meet subject matter eligibility requirements—even as the parties moved forward with claim construction, fact and expert discovery and trial preparation. Mad Dogg Athletics Inc. v. Peloton Interactive Inc., 2:20-cv-00382 (E.D. Texas, filed Dec. 14, 2020).

Over discovery, Lumish’s team gained ground by obtaining key admissions about the technology at issue, assembled evidence of invalidating prior art and produced voluminous expert reports detailing Peloton’s non-infringement and the invalidity of Mad Dogg’s patents. In September 2021, the judge dismissed the case less than a year after it was filed.

Other Lumish clients include Zoom Video Communications Inc., Velodyne Lidar, Inc., LG Display Co. Ltd., Rivian Automotive Inc. and BBB Industries LLC.

For Zoom, Lumish obtained an affirmance at the 9th U.S. Circuit Court of Appeals of his earlier win in a relationship termination case with RingCentral Inc. The two had been in business together for seven years when Zoom exited the arrangement. RingCentral sued in an effort to extend it. The battle now moves to a dispute over whether Zoom needs to continue to service existing RingCentral customers after the end of the parties’ agreed sunset period. Zoom Video Communications Inc. v. RingCentral Inc., 21-15792 (9th Cir., op filed Oct. 14, 2021).

Lumish said he got into IP work when a law school professor arranged for him to meet veteran patent litigator Matthew D. Powers, then the managing partner at Weil, Gotshal & Manges LLP.

“I wanted to be a trial lawyer and I thought patent law was boring. But he showed me to my happy surprise that with high-stakes trials, patents can change the world,” Lumish said.

– John Roemer