Christopher Marchese is a Principal in the Southern California office of Fish & Richardson. His practice focuses on patent litigation, including cases involving computer networking, hardware, software, and chemistry, as well as integrated circuits, compression technology, and wireless communications. Mr. Marchese has substantial experience handling trials, pivotal motions, and other key aspects of patent litigation matters, including summary judgment arguments, tutorials and argument at Markman hearings, and mock jury trials. He has litigated or tried major patent cases in multiple jurisdictions across the United States, including the Central, Southern, and Northern Districts of California, the District of Delaware, District of Massachusetts, the Eastern District of Wisconsin, and the International Trade Commission. In addition to patent litigation, Mr. Marchese also represents his clients in cases involving inter partes review, trademarks, design patents, copyrights, unfair competition, and trade secrets.
As a complement to his litigation practice, Mr. Marchese also performs patent portfolio analyses for his clients, both in connection with potential litigation and for corporate acquisitions. He also has prepared and prosecuted numerous patent and trademark applications.
Mr. Marchese’s technical expertise and knowledge extends to a variety of technologies that include:
- Video compression (MPEG-1, MPEG-2, H.264, and VC-1 standards and related technology);
- Audio compression (including MP3 standard and related technology);
- Speech compression (including G.723.1 standard and related technology);
- Computer networking (including ATM, Ethernet, DOCSIS, and WiMAX technologies);
- Semiconductors and integrated circuitry;
- Software (various operating systems and a wide range of application software);
- Satellite technology; and
- Chemistry and Cleantech.
In 1999, Mr. Marchese co-authored a comprehensive treatise on patent damages that is updated annually and has been cited by the Federal Circuit in Astetek Danmark a/s v. CMI USA Inc. and Lucent v. Gateway, as well as numerous district courts. He has participated in panel discussions and given speeches and seminars around the country on patent damages, and he led a team that developed Fish & Richardson’s patent damages web page. He also co-authors a blog focused on patent damages: www.patent-damages.com. You can follow his blog on Twitter at https://twitter.com/patentdamages. In addition, he has written numerous law review articles on subjects that include patent damages, federal jurisdiction, and the best mode requirement. His articles have been cited by the Federal Circuit and district courts.
J.D., George Washington University Law School 1992
B.A., Centre College of Kentucky 1987
B.S., University of Kentucky 1987
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
IP Star, Managing Intellectual Property magazine (2013-2016).
Listed as a “2014 Top Lawyer” for Litigation in San Diego Magazine.
Top Rated – AV® PreeminentTM Lawyers in Intellectual Property Law (2013)
Acclaimed Litigation Victories
National Law Journal, 2009 “Appellate Hot List,” Predicate Logic v. Distributive Software, 544 F.3d 1298 (Fed. Cir. 2008).
IP Law & Business to “Top 10 Litigation Wins” of 2008, Microsoft v. Lucent.
National Law Journal, 2000 “Top Defense Victory,” Bellcore v. FORE Systems
Quoted in “New patent damages analysis meets with mixed results,” Daily Journal (August 21, 2013).
Quoted in “Social media use can lead to ethical dilemmas,” San Diego Daily Transcript (April 30, 2013).
Quoted in “Damage Awards a Sticking Point in Patent Reform Debate,” San Diego Daily Transcript (September 22, 2010).
Co-author of treatise entitled “Patent Damages Law & Practice” (West Group Publishing).
Co-author of blog on patent damages, www.patent-damages.com.
Author of numerous articles, including:
Co-author, “How to Build Daubert-Proof Patent Damages Cases,” Daily Journal (December 07, 2016).
Fish & Richardson 2012 Patent Damages Newsletter, also available on Lexology.
“Runaway Patent Damages Awards: Is Statutory Reform on the Way?,” Los Angeles Daily Journal (August 11, 2010).
“Patent Damages,” Corp. Counsel Rev., 17, 3 (1998).
“Patent Infringement and Future Lost Profits Damages,” Arizona State L.J., 26 (1994).
“Challenging Subject Matter Jurisdiction in Patent Infringement Suits,” UMKC L. Rev., 61 (1993).
“Promoting the Progress of the Useful Arts by Narrowing Best Mode Disclosure Requirements in Patent Law,” U. Pitt. L. Rev., 54, 589 (1993).
“The Dormant Commerce Clause and Airport Noise: A Case for Narrow Judicial Review,” Baylor L. Rev., 44, 645 (1992).
“Confusion, Uncertainty, and the Best Mode Requirement,” Fed. Cir. Bar. J., 2 (1992).
Selected Speaking Engagements
October 19, 2016 – Christopher Marchese, “Presenting Damages at Trial: How to Relate Your Damages Case to the Jury,” Patent Disputes Forum South, Costa Mesa, CA (October 19, 2016)
December 2, 2015 – Christopher Marchese, Danielle Williams, “Patent Damages: The Success and Failure of a Theory,” Fish INSIGHTS Webinar.
September 23, 2015 & October, 7, 2015 – Christopher Marchese, Danielle Williams, “Patent Damages,” Fish INSIGHTS Webinar.
January 29, 2014 – Judge Janis Sammartino, Christopher Marchese, “Parallel Patent Office Proceedings, Intervention and Bifurcation: Unique Issues of Patent Case Management Under the America Invents Act,” 2014 Advanced Complex Litigation Series.
May 29 & 30, 2014 – Christopher Marchese, “Case Law Trends for Patent Damages,” Litigation Patent Damages Conference.
April 9, 2014 – Christopher Marchese, Karl Renner, Dorothy Whelan, “Dramatic Changes in District Court Litigation as a Consequence of PTAB Proceedings,” Fish Post-Grant for Practitioners webinar.
December, 2013 – Christopher Marchese, Justin Barnes, “The Continuing Evolution of Patent Damages: What You Don’t Know May Hurt You,” Fish INSIGHTS webinar.
July 11, 2012 – Christopher Marchese, Mike Amon, “The AIAs Impact on Patent Litigation,” ACCA San Diego Chapter Brown Bag CLE.
March 18, 2010 – Christopher Marchese, Heidi Harvey, John Dragseth, “Beyond Forest: What Do You Really Need to Know about Patent Marking,” Fish & Richardson webinar
April 14, 2010 – Mr. Marchese participated in a panel discussion on “The Legislative Role of Patent Damages,” IP Counsel Café, Palo Alto, California.
May 18, 2010 – Christopher Marchese, Justin Barnes, Michael Florey, John Skenyon presenting “Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?” in Minneapolis.
May 20, 2010 – Christopher Marchese, Justin Barnes, Michael Florey, John Skenyon presenting “Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?” in Boston.
May 26, 2010 – Christopher Marchese, Justin Barnes, Michael Florey, John Skenyon presenting “Taming the Wild West of Patent Damages: Is There a New Sheriff in Town?” in San Diego.
ArcSoft adv. e.Digital (S.D. Cal.) – Lead counsel for ArcSoft in five-patent case involving software.
CH2O v. Meras & Houweling’s (C.D. Cal.) – Lead counsel for CH2O in patent case involving chemical technology for treating irrigation systems.
Valerie Ince v. Jack Russell (Cal. State Ct.) – Lead counsel for Valerie Ince in breach of contract and labor code case involving musician management contract.
ScentAir adv. Prolitec (E.D. Wisc.) – Defended ScentAir in multi-patent district court litigation and IPRs involving automated scenting devices.
ViXS adv. Entropic, DirecTV, Wistron, and CyberTan (S.D. Cal. and ITC) – Represented ViXS in parallel cases in district court and the ITC, in which 8 patents were asserted, including patents related to the MoCA standard.
Samsung adv. Ericsson – Represented Samsung in patent litigation against Ericsson involving cellular handset and base station technology, including 3G and LTE technologies.
ArcSoft adv. JVC (C.D. Cal.) – Defended ArcSoft in 14-patent case involving DVD technology.
LG adv. Sony (C.D. Cal., S.D. Cal., ITC) – Represented LG against Sony in global patent litigation spanning the ITC, several district courts, and foreign jurisdictions. Lead teams handling four cases involving more than 20 patents in the Southern and Central Districts of California. Technologies and products included televisions, Blu-ray, cellular telephones, telecommunications, personal computers, and PlayStation.
Raytheon AST v. Teledyne Paradise Datacom and ViaSat (N.D. Cal.) – Represented ViaSat and Teledyne Paradise Datacom in five-patent competitor case involving satellite modems and cancellation technology.
Lucent v. Gateway/Microsoft and Multimedia Patent Trust v. Microsoft cases:
Multimedia Patent Trust v. Microsoft No. 06-CV-0684 H (S.D. Cal.) – Defended Microsoft against video compression patent asserted by MPT. MPT claimed infringement by MPEG-2 and VC-1 decoders and sought more than $400 million in damages. Jury returned verdict of no infringement and awarded no damages.
Lucent and MPT v. Microsoft No. 07-CV-2000 H (S.D. Cal.) – Defended Microsoft against video compression patent asserted by Lucent/MPT, as well as other Lucent patents. Lucent/MPT claimed all MPEG-1, MPEG-2, and VC-1 decoders infringed and sought nearly $1 billion in damages. Jury returned a verdict of no infringement and invalidity and awarded no damages for the video patent.
Lucent v. Microsoft No. 02-CV-2060 B consolidated with 03-CV-0699 B and 03-CV-1198 B (S.D. Cal.) – Defended Microsoft in multi-part lawsuit. In one part, Lucent claimed Microsoft infringed three speech compression patents. Obtained dismissal of two speech patents, one during fact discovery, and the other after completion of expert discovery. Summary judgment granted on third speech patent (Lucent had sought more than $170 million in damages). Federal Circuit affirmed (525 F.3d 1200). In another part, Lucent claimed MP3 software infringed three audio compression patents. Obtained dismissal of one audio patent during fact discovery. District court overturned jury verdict of $1.5 billion on remaining two patents. Federal Circuit affirmed (2008 WL 4349326). Named by IP Law & Business to “Top 10 Litigation Wins” of 2008.
National Law Journal’s 2009 “Appellate Hot List”: Predicate Logic v. Distributive Software (S.D. Cal.) – Lead counsel for Predicate Logic in patent infringement action on software patent. Obtained complete reversal in Federal Circuit of district court decision invalidating claims. Reported at 544 F.3d 1298. Case settled after remand.
National Law Journal’s 2000 “Top Defense Victories”: Bellcore v. FORE Systems (D. Del.) – Defended FORE against assertion of four patents relating to telecommunications technology, including ATM and Ethernet. Bellcore dismissed two patents after expert discovery. On eve of jury trial involving damages claim for more than $200M, court issued favorable Markman ruling on the two remaining patents. Bellcore admitted it could not prove infringement and Delaware court entered final judgment for FORE. Named top defense victory by National Law Journal in 2000. Federal Circuit affirmed on one patent (unreported opinion 2003 WL 1720080). Case settled after remand of remaining patent.
LG v. Kodak (S.D. Cal., W.D.N.Y., ITC) – Represented LG in multi-jurisdiction case involving numerous patents. Global settlement reached.
Intel v. Broadcom (D. Del.) – Represented Intel on four digital video compression patents and a fifth computer networking patent. Jury trial for Broadcom on video patent overturned and new trial granted. Case settled after grant of new trial.
Dimension One Spas v. Coverplay (S.D. Cal.) – Lead counsel for Dimension One on spa cover patent. Won bench trial rejecting defense of inequitable conduct. Case settled after obtaining summary judgment of infringement. Dimension One Spas v. Ouellette (S.D. Cal.) – Lead counsel for Dimension One on spa cover patent. Obtained final judgment of $654,000 in actual damages, $1.3 million in enhanced damages, and $250,000 in attorneys’ fees.
Trademark/Unfair Competition Cases
Wooden Camera adv. RED (S.C. Cal.)— Lead counsel for Wooden Camera in design patent, trade dress, and unfair competition case involving camera accessories.
USP v. Innotek (S.D. Cal.) – Lead counsel for Innotek in two separate actions involving allegations of design patent infringement, trademark infringement, and unfair competition. Cases settled favorably for Innotek.
PeopleWeb v. The PeopleWeb Inc. (TPI) (N.D. Cal., D. Mass.) – Lead counsel for PeopleWeb in domain name and Internet trademark infringement cases. Case settled after defeating TPI’s motions to dismiss for lack of jurisdiction.
Property Assessment Adjusters (PAA) cases (S.D. Cal.) – Lead counsel for PAA in series of trademark infringement and unfair competition cases. Cases settled favorably for PAA.
Adaptec v. Chang (N.D. Cal.) – Represented Adaptec in counterfeiting case involving SCSI adapters and chips. Won seizure of counterfeit adapter boards and chips and worked with U.S. Customs to identify counterfeit products.