John (Jay) Neukom

Clients new and old have crowded John (Jay) Neukom’s calendar since he moved to Debevoise & Plimpton LLP’s new San Francisco shop a year ago.

Neukom is the former head of the West Coast IP litigation practice group at Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates. He was also co-head of Skadden’s firmwide IP group. He said the transition has gone well.

“It’s beyond smooth. I’m in my fourteenth month here now, and I couldn’t be more delighted. Our new office is feeling gusts of wind in our sails.”

Neukom was recently retained as lead counsel to defend Arizona-based integrated circuit provider Microchip Technology Inc. against patent infringement claims by Aptiv Technologies Ltd., which makes software and hardware features for vehicles. The case was filed in late March. Aptiv Technologies Ltd. v. Microchip Technology Inc., 1:23-cv-00307 (D. Del., filed March 20, 2023).

“It’s a six- or seven-patent competitor suit, and I’ll be going against Daralyn Durie,” Neukom said, naming the Morrison Foerster LLP IP litigation partner who represents Aptiv.

Neukom made an innovative move in April for longtime client GAF Materials LLC, a major building supplier that provides roofing for one-quarter of U.S. homes. He’s defending GAF against patent infringement claims by a rival over software used in aerial roof survey techniques. Eagle View Technologies et al. v. GAF Materials LLC, 2:22-cv-00215 (D. Utah, filed March 28, 2022).

After successfully moving to have the case transferred from New Jersey to Utah, where the same plaintiff has a similar matter pending against a different defendant, Neukom came back with a patent misuse defense and a counterclaim accusing Eagle View of anticompetitive conduct.

“Sherman Act violations are very rare in cases like this,” Neukom said. Much of the substance of the counterclaim is redacted in the public version of the pleading. The matter remains ongoing.

In February, Neukom was at the lectern at the U.S. Court of Appeals for the Federal Circuit defending a win he obtained in Delaware, where a judge invalidated more than 120 claims involving seven data compression patents asserted against his client, cybersecurity provider Fortinet Inc. A decision is pending. Realtime Data LLC v. Fortinet Inc., 21-2251 (Fed. Cir., argued Feb. 10, 2023).

Neukom was arguing not only for his client, Fortinet, but also on behalf of nine additional defendants that had been sued over the same patents.

“It made sense to put only one lawyer before the [Federal Circuit] panel,” Neukom said. “Based on how the oral argument went, we are cautiously optimistic.”

—John Roemer