Steven M. Bauer is a trial lawyer who practices exclusively in the areas of complex patent, trade secret, trademark, copyright and technology litigation. He is head of the firm’s litigation practice in Boston, and co-head of the firm’s national Patent Law Group. He was the first managing partner of the Boston office and has been a member of the firm’s Executive Committee.
Since 2004 Chambers USA has ranked Steve as one of six “Band 1” patent litigators in Boston, having earned a reputation for being a client’s “number one choice, ‘results-oriented,’ ‘a great strategist,’ ‘a proven trial attorney,’ ‘pragmatic and flexible,’ and ‘the litigator that clients want.’” Steve has tried cases in every major U.S. forum, including the courts in Massachusetts, California, Texas, Illinois, Florida, and Delaware and the International Trade Commission. Steve has now appeared in more than twenty-five cases in the Eastern District of Texas. Steve also regularly argues appeals to the Federal Circuit.
Steve has been lead trial counsel in cases involving the communications protocols and systems used in satellite, cable, wireless, VoIP, RFID and SONET networks; the algorithms used in voice recognition, speech generation, data encryption, digital signal processing and error correction processes; analog and digital circuit design, lasers, optics, and high-energy plasma devices; life sciences technologies including surgical, medical, genetic and bio-molecular diagnostic, research and therapeutic tools and technologies; business and financial methods performed over the Internet; and materials, such as semiconductors, nano-materials, polymers and high-temperature superconductors.
Steve’s clients include (or have recently included) American Honda, Analog Devices, Athenahealth, Brocade, Celgene, Cognex, Endeca Technologies, Massachusetts Institute of Technology, MKS Instruments, Inc., Payless ShoeSource, Progress Software, SeaChange International, Sonus Networks, T-Mobile, and Transamerica Life Insurance.
Steve is a Visiting Lecturer at MIT, where he teaches a course on intellectual property at the MIT Sloan School and the Department of Electrical Engineering. Steve has also been invited to speak at some of the leading industry groups involved with patent policy, including The Sedona Conference, MIT Sloan School Entrepreneurship Conferences, and National Bureau of Economic Research, and he is regularly quoted in the national press on intellectual property issues, including in The Economist, Nature, Associated Press, Forbes, and InfoWorld.
Steve is on the Roster of Neutrals of the American Arbitration Association and is called upon to act as an arbitrator in disputes relating to technically complex license and patent matters. He also has been a member of the Executive Committee of the United States chapter of the international AIPPI; Vice Chair of the Litigation Committee of the IPO; editor of the American Intellectual Property Law Association (AIPLA) Quarterly Journal; on the Board of Advisors of the Boston University Law School Science and Technology Journal; and was an Adjunct Professor at Boston University School of Law for fifteen years, where he taught trial advocacy and patent and computer law courses.
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Representative Patent Litigation Matters
Trials and Dispositive Judgments:
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Transamerica Life Insurance Co. v. Lincoln National Life Insurance Co. (N.D. Iowa, N.D. Ind., Fed. Cir.) Represented Transamerica in defending against three patents relating to annuity insurance products in three separate cases. Steve was retained after an adverse jury verdict, and obtained reversal of a $13 million judgment on appeal. The other cases then settled.
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Biax Corp. v. Analog Devices, Inc. (E.D. Tex) Represented Analog Devices in defending against five patents relating to digital signal processing in parallel computers. After jury selection, the plaintiff agreed to settle the case against Analog for a token payment.
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Analog Devices v. Knowles Electronics (D. Del., N.D.III, U.S.I.T.C) Represented Analog in two district court and two ITC cases, asserting two patents and defending against two patents, relating to Micromechanical Electronic (MEMS) microphones. After an evidentiary hearing, the ITC found the Knowles patents invalid, and entered an exclusion order against Knowles for its infringement of Analog’s rights.
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Jacobson v. Celgene Corporation (D. New Jersey) Represented Celgene in an action for misappropriation of an idea and unjust enrichment seeking more than $50 million. We obtained summary judgment in our client’s favor.
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C2 v. Global Crossing, Qwest, Level 3 (E.D. Tex). Represented three major telecommunications companies and their supplier (Sonus Networks) in the defense of a patent case relating to VoIP switching technologies. The case settled during trial on favorable terms to our clients.
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PSN v. Ivoclar Vivadent (N.D. Ill) Represented Ivoclar the world’s leading manufacturer of dental crowns and implants in the defense of a patent case seeking over $50 million in damages. Ivoclar obtained summary judgment of non-infringement
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Beam Laser Systems, Inc. v. SeaChange International, Inc. and Cox Communications, Inc. (E.D. Va.) Represented SeaChange International, the leading manufacturer of video-on-demand servers, and its customer, Cox Communications, in defending against three patents in a case with a demand of $100 million. After an evidentiary Markman hearing, the court granted summary judgment of non-infringement.
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Candela Corp v. The Regents of the University of California (American Arbitration Association) Represented Candela in an arbitration relating to a patent license dispute involving cryogenic cooling devices used for cosmetic laser surgery. After a one-week evidentiary hearing, the matter was resolved by license.
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Digital Privacy, Inc. v. RSA Security Inc. (E.D. Va.) Defended RSA Security against claims that its SecurID® Passage computer security product infringed three patents. After an evidentiary Markman hearing, the court granted summary judgment that the product did not infringe. The court’s decision is reported at Digital Privacy, Inc. v. RSA Security Inc., _ F. Supp. 2d _, 62 USPQ2d 1773 (E.D. Va. 2002)
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France Telecom v. RSA Security Inc. (International Chamber of Commerce, Paris, France) Represented RSA Security in a patent license dispute relating to an encryption algorithm in which the demand against RSA was for more than $100 million. After a one-week evidentiary hearing in Paris, the arbitrator found in RSA’s favor and awarded legal fees
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Hypertherm, Inc. v. American Torch Tip Co. (M.D. Fla. (Tampa), D.N.H.) Represented Hypertherm in iasserting six patents involving high-energy plasma torches. After a trial, the jury found that the defendant willfully infringed Hypertherm’s patents, and Hypertherm was awarded its damages and attorney fees.
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Massachusetts Institute of Technology &. American Superconductor Corp. v. Rogan (D. Mass.) Represented MIT (a co-plaintiff with American Superconductor) in this 35 U.S.C. § 146 appeal from the Patent Office regarding the scope of MIT’s seminal patent on high-temperature superconducting technology. After a bench trial, the court affirmed the validity and broad scope for this MIT patent
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MKS Instruments, Inc. v. Advanced Energy Corp. (D. Del.) Represented MKS Instruments in two patent actions against Advanced Energy Corp., in cases relating to high-energy plasma processing equipment used by the semiconductor industry. In the first case, the jury returned a verdict of infringement and awarded damages of more than $4 million. In a second trial against Advanced Energy’s “revised” product, the jury again found infringement in our client’s favor
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MKS Instruments, Inc. v. NPP (N.D. Calif) Represented MKS in obtaining a TRO and then preliminary injunction against the sale of accused products being imported by a Korean company
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Pall Corp. v. Micron Separations, Inc. (D. Mass.; Fed. Cir.; U.S. Bankruptcy Ct.) Represented Micron Separations in its appeal of an infringement decision adverse to it, and simultaneously, in a trial relating to its revised product. Micron Separation’s appeal was heard en banc by the Federal Circuit as the non-jury companion case to the Federal Circuit’s seminal decision in Markman v. Westview. Also, Represented Micron Separations simultaneously in a tort and breach of contract trial in bankruptcy court alleging Pall’s bad faith patent litigation. After trial, the bankruptcy court issued a ruling awarding a $3.7 million judgment in our client’s favor.
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Polyclad Laminates Inc. v. MacDermid Corp. (D.N.H.) Represented MacDermid in its defense of a patent infringement action brought by a competitor relating to the chemical components used in printed circuit board manufacture. After a two-day evidentiary Markman hearing, the court issued a summary judgment of non-infringement in our client’s favor
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ReSource America, Inc. v. Republic Packaging Corp. (N.D. Ill.) Represented ReSource America in a trial involving a business method for recycling products efficiently. Ater trial, the court found that the defendant willfully infringed our client’s patents and increased the damages award accordingly
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Rubbermaid Incorporated v. Tucker Housewares Corp. (D. Mass.) Represented Rubbermaid in this action against its largest competitor, Tucker Housewares, for infringement of utility and design patents, trade dress and copyrights in connection with various storage products. After trial, Tucker Housewares was found liable, and an injunction issued that required Tucker to make product changes
Other Significant Cases
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Puma v. Payless ShoeSource (D. Mass.) Represented Payless ShoeSource, the country’s largest retailer of shoes, in a trademark dispute relating to the stripes on running shoes
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Enterasys v. Foundry Networks (D. Mass.) Represented Foundry, a leading manufacturer of routers and bridges, in defense of six patents relating to technology first patented by Digital Equipment and others 15 years ago
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Speedtrack v. Wal-Mart and Endeca Technologies (N.D. Cal.) Represented Endeca, the leading supplier of Internet search engines for online retail, and its customers, in a case relating to the search algorithms.
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Agere Systems, Inc. v. Multiplex, Inc. (D. Del.) Defended Multiplex, a manufacturer of lasers and optical devices, against patent infringement and trade secret claims brought by Agere relating to four patents on high-speed optical switching devices
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Arrival Star, Inc. v. Descartes Systems Group Inc. (S.D. N.Y.) Represented Descartes in defending against a fifteen-patent complaint relating to the tracking of packages using GPS and other technologies
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Boston Scientific Corp. v. Circon, Inc. (D. Mass.; E.D. Wisc.) Represented Boston Scientific Corp. in asserting and then defending against patents relating to urological surgical devices in this seven-patent action in two federal courts
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Comtec Inc. v. Monarch Marking Systems, Inc. (D.R.I.) Defended Comtec against charges brought by a competitor accusing Comtec of infringing nine patents covering portable electronic printers
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Comtech AHA Corp. v. Efficient Channel Coding, Inc. (N.D. Ohio) Represented Comtech in a breach of patent license agreement dispute relating to error correction codes used in satellite communications
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Davox Corporation, Inc. v. Digital Systems, Inc. (W.D. Wash.) Represented Davox in asserting and defending against patents in a litigation against its primary competitor concerning systems for managing automated call centers
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Excel Switching Corp. v. Cisco Systems, Inc. (D. Mass.) Represented Excel Switching in its patent infringement action against Cisco asserting a number of patents relating to digital switching technology
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Hypertherm, Inc. v. Inner Logic, Inc. (D.N.H.) Represented Hypertherm in its assertion of two patents relating to a plasma ignition circuit
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Luyster v. RSA Security Inc. (D. Mass.) Defended RSA Security in this patent infringement action relating to RSA’s RC6 encryption algorithm
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Massachusetts Institute of Technology v. Sony Electronics Corp.; Sharp Corp.; Toshiba Corp. (D. Mass.) Represented MIT in the enforcement of its twenty-patent digital television patent portfolio
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Massachusetts Institute of Technology v. Dharmacon (D. Mass.) Represented MIT in a license dispute involving its foundational patents on siRNA technology
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Mediacom, Inc. v. Rates Technology, Inc. (U.S. District Court, District of Massachusetts) Represented Mediacom in its defense of this two-patent case involving telephone dialing networks
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Nortel Networks Ltd v. Foundry Networks, Inc. (D. Mass.) Represented Foundry in its defense of a four-patent litigation involving packet switching devices
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Rubbermaid Incorporated v. Sterilite Corporation (D. Mass.) Represented Rubbermaid against a competitor involving claims of design patent and trade dress infringement
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ScanSoft, Inc. v. ART Advanced Recognition Technologies, Inc. (D. Mass.) Represented ART in its defense of a patent infringement action relating to speech recognition technology; the case ended after ScanSoft acquired our client.
Appeals:
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Transamerica v. Lincoln. Argued for the reversal of a judgment of infringement. Case reversed.
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Asymmetryx v. Biocare. Argued for a reversal of a summary judgment of no breach of patent license. Vacated and remanded for additional proceedings.
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SeaChange v. NCube. Argued for a reversal of jury verdict of infringement. Case affirmed, on a 2-1 decision.
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Micron Systems v. Pall
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