Alexander ''Lex'' Brainerd, Esq.

T: 415-982-5267
F: 415-982-5287
Available worldwide
Intellectual Property

Alexander (“Lex”) Brainerd has extensive experience successfully resolving intellectual property matters. Prior to joining JAMS as a full-time neutral, Mr. Brainerd spent the last 20 years of his 42-year trial practice litigating and trying primarily intellectual property cases. A fellow in the American College of Trial Lawyers, he litigated well over 30 patent cases and tried 10 of those cases to verdict. In addition, he litigated several significant trade secret cases, as well as copyright and trademark matters. Mr. Brainerd’s extensive experience trying intellectual property cases gives him a unique insight into the issues fundamental to resolving these cases in an ADR setting.

Since joining JAMS in 2010, Mr. Brainerd has successfully mediated numerous complex, high stakes patent and other intellectual property matters. His experience as a neutral and a trial lawyer allows him to assist the parties in fully understanding and evaluating the risks associated with their cases. In that regard, he strongly believes that an essential foundation for a successful mediation is a thorough discussion with the parties regarding the strengths and weaknesses of their respective positions.  Mr. Brainerd has a reputation for being extremely prepared, diligent, and tenacious, and for having a very high settlement rate.

Representative Mediations

  • Three-day mediation of a 13-party patent dispute concerning technology for the wireless transmission of e-mail

  • Mediated three patent infringement cases concerning technology relating to the ability of a host device, such as a computer, DVD or Blue Ray, to automatically play a CD without rebooting

  • Mediated an ITC patent infringement case relating to patents covering certain aspects of television tuners

  • Mediated patent infringement case arising from patents relating to computerized, electronic faxing, whereby a fax may be converted to email and an email to fax

  • Mediated a patent infringement case arising from a patent directed to a method of compressing digital images such as pictures taken with a digital camera, which method was adopted by the JPEG standard

  • Mediated a patent infringement and licensing case concerning technology for the surface treatment of metal and dialectric materials to promote adhesion during the manufacture of circuit boards

  • Mediated a patent infringement case involving patents relating to surface mount packages used to house various electrical components on printed circuit boards

  • Mediated a patent infringement case concerning technology covering an improved method at connecting components on a circuit board

  • Mediated patent infringement matter involving patents covering diagnostics for optoelectronic communication transceivers

  • Mediated a patent infringement case involving technology for high-throughput DNA sequencing

  • Mediated a patent infringement a case involving patent covering a wide range of Alzheimer’s Disease research and technology including nucleic acids for the Swedish mutation and related vectors and cell lines

  • Mediated a contract dispute arising out of a patent license for patents covering a surgical wand that uses RF signals to remove and ablate tissue during orthopedic surgical procedures

  • Mediated a patent infringement case involving patents covering a crash sled system used in automotive testing and other applications that utilizes reverse-acceleration with a closed loop feedback

  • Mediated a patent infringement case arising from a patent claiming methods and systems for the automated valuation of real estate

  • Mediated a legal malpractice case arising from failed patent litigation involving a patent directed at user manipulation of certain features of a graphic user interface; plaintiff accused the law firm of improperly conducting claim construction and failing to prepare competent expert reports

  • Mediated a trade secret case alleging theft and misuse of trade secrets relating to specialized switches used to route traffic along a high performance optical network 

 

Other Intellectual Property

  • Mediated a trade secret case involving technology for hybrid electrical systems for use in trucks, cars and other types of vehicles.
  • Mediation of a copyright dispute concerning the content and use of web pages and the internet to market customized tee shirts.
  • Mediation of a copyright infringement case arising out of the designs for decorative garden lighting.
  • Mediated a trademark dispute concerning trademarks for fine food items

Representative Arbitrations

  • Sole arbitrator for an arbitration concerning reverse engineering source code
  • Sole arbitrator for an arbitration concerning a joint development agreement relating to protocol stock software used in the wireless transmission of voice and data
  • Sole arbitrator for an arbitration of a legal malpractice case arising from failed patent litigation against a major software company
  • Sole arbitrator in an arbitration concerning alleged breaches of a patent license agreement
  • Member of three arbitrator panel in an arbitration concerning alleged breach of contract for the sale of semiconductor manufacturing equipment  
     

Mock Trial Experience

  • Acted as one of three judges in a mock trial of a Hatch Waxman case
  • Acted as one of three arbitrators in a mock arbitration exercise
  • As a trial lawyer, participated in well over 30 mock trials 
     

Special Master

  • Appointed as a Special Master to resolve all discovery and pretrial disputes in a patent and trade secret case in the U.S. District Court for the Northern District of California
  • Appointed as a Special Master in the Northern District of California to resolve the terms and conditions of a license agreement and all pretrial disputes in an antitrust action relating to computer hardware and software technology

Representative Trial Experience

  • Patent infringement case involving pulse oximeters for measuring oxygen levels
  • Patent infringement case involving tissue expanders used in connection with breast reconstructive surgery
  • Patent infringement case involving DNA microarray technology
  • Patent litigation under the Hatch Waxman Act involving a pharmaceutical formulation
  • Patent litigation involving the removal of pollutants from diesel exhaust using non-thermal plasma technology
  • Patent and antitrust litigation arising from certain patents relating to ADSL high-speed modem technology
  • Patent litigation involving the application of superconductor technology to the transmission and filtering of wireless telephone transmissions
  • Patent infringement litigation regarding three patents covering various aspects of field programmable logic technology
  • Trade secret litigation involving the design of an expandable coronary stent
  • Trade secret litigation concerning thin film head and disk drive technology
  • Breach of contract and misappropriation of trade secrets case relating to ultra-high molecular weight polymer technology
  • Breach of contract and misappropriation of trade secret case relating to high-speed modems
  • Breach of contract action arising from the sale of automated blood separation technology

Honors, Memberships, and Professional Activities

  • Fellow, American College of Trial Lawyers
  • Recognized as a Northern California Super Lawyer, ADR Category, 2011-2014
  • Recognized as a Northern California Super Lawyer, Intellectual Property Litigation, 2005-2010
  • Early neutral evaluator and mediator, U.S. District Court for the Northern District of California
  • Evaluator for Legal Evaluation Group, a firm providing early neutral evaluation
  • San Francisco Superior Court Arbitration Committee, 1981-1991
  • Master, Intellectual Property Chapter of American Inns of Court
  • Member, The Fellows of the American Bar Association
  • Member of the Executive Committee of the Litigation Section, Bar Association of San Francisco, 1989-1996
  • Board of Governors, Association of Business Trial Lawyers of Northern California, 1992-1999
  • Delegate to the Ninth Circuit Judicial Council, 1992-1995
  • Board of Directors, National Center for Youth Law
  • Former member, Local Patent Rules Committee for U.S. District Court for Northern District of California
  • State Bar of California
  • "Golfing will have to wait," Daily Journal, ADR Profile, December 21, 2012

Background and Education

  • Partner, Sonnenshein Nath & Rosenthal, 2008-2010
  • Partner, Heller Ehrman, 1999-2008
  • Partner, Quinn Emmanuel Urquhart Oliver & Hedges, 1997-1999
  • Partner/Associate, Bronson, Bronson & McKinnon, 1968-1997
  • J.D., University of California, Berkeley School of Law (formerly Boalt Hall School of Law), 1968
  • B.A., Amherst College, 1963

Disclaimer

This page is for general information purposes.  JAMS makes no representations or warranties regarding its accuracy or completeness.  Interested persons should conduct their own research regarding information on this website before deciding to use JAMS, including investigation and research of JAMS neutrals. See More

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