Hon. Edward A. Infante (Ret.)

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Intellectual Property

A former Chief Magistrate Judge of the U.S. District Court, Northern District of California, Hon. Edward A. Infante (Ret.) has adjudicated and settled intellectual property cases involving patents, trademark, copyright, and trade secrets.

Since joining JAMS, he has mediated more than 200 intellectual property disputes. These disputes have pitted competitors against each other and non-practicing entities against manufacturers in various stages of the disputes ranging from pre-litigation, before and after claim construction, post-trial, on appeal and remand. As a business savvy, no-nonsense closer, Judge Infante understands what is necessary to get these complex and often highly publicized disputes settled.

Judge Infante is experienced with mediating cases set before various venues including the U.S. State and Federal Courts, U.S. International Trade Commission (ITC), U.S. Patent and Trademark Office (PTO), and various international venues.

Technology Areas: Biotechnology (Pharmaceutical and Medical Device), Semiconductor, Network, Peripherals, Microprocessors, Internet and e-commerce, and Consumer Electronics

Representative Matters

  • Copyright
    • Mediated multiple copyright infringement and piracy of software claims
    • Mediated a dispute alleging violation of the Digital Millennium Copyright Act involving internet content
    • Special Master in copyright dispute rights over billion dollar doll market between a company and a former employee and between competitors
    • Settled copyright infringement dispute between artist and motion picture studio over the creation of a character in a major motion picture
  • Patents
    • Nikon v. ASML, international patent dispute involving multiple patents resulting in complex cross-licensing agreements
    • Mediated a multi-million dollar web browser plug-in patent dispute
    • Settled an international patent infringement dispute involving multiple patents, resulting in complex cross-licensing agreements
    • Mediated a method patent for surgically treating farsightedness with laser technology; the settlement agreement included a consent decree for infringement and validity, and covenants not to sue
    • Mediated a multi-million dollar patent infringement and breach of licensing agreement involving a design chip set used in smart phone technology
    • Mediated pre-litigation patent infringement claims between two Fortune 500 companies resulting in a cross licensing agreement involving patent portfolios
    • Mediated several biotech patent infringement disputes, including a case with antitrust counterclaims involving multiple patents for DNA sequencing methods and apparatus
    • Mediated a web browser plug-in patent dispute between a non-practicing entity and a fortune 500 company
    • Mediated a multi-patent dispute involving remote control technology
    • Global Settlement of three patent-infringement lawsuits involving multiple software and audio technology patents
    • As a federal judge, he has adjudicated patent infringement matters including: Markman Claim Construction hearings, Motions for Summary Judgment involving infringement and validity claims, and presided over several jury trial
  • Trade Secrets
    • Settled numerous disputes alleging unfair business competition between competitors in various industries, including internet and e-commerce, computer software and hardware, and financial markets
  • Trademark
    • Mediated a trademark infringement, unfair competition, and cybersquatting claim under the Lanham Act regarding the Formula 1 mark developed in connection with auto racing; the settlement involved the transfer of domain names to plaintiff
    • Settled multi-million dollar dispute involving luxury brand alcoholic beverage
    • Settled a putative class action alleging virtual infringement of registered trademarks
    • Settled a dispute arising from the use of the title, character, name, text, and photographs associated with a book
    • Settled trademark disputes involving fragrance and related products

Honors, Memberships, and Professional Activities

  • Included on "National Mediators" list, Chambers USA America’s Leading Lawyers for Business, 2016-2017
  • Recognized as an “ADR Champion,” National Law Journal, 2016-2017
  • Recognized as a "Top California Neutral," Daily Journal, 2003-2004, 2006-2012
  • Recognized as the Best Neutral in the Bay Area (2007-2008) and as one of top Best Neutrals in the Bay Area (2009-2012), through an open survey of attorneys, The Recorder
  • Member, Federal Magistrate Judges Association, 1973-present
    • President, 1981, 1982; Vice President, 1979-1980
    • Moderator and panelist in various federal practice seminars including the Federal Practice Institute, 1983-1993
  • Adjunct professor at Santa Clara University Law School
    • Lectured in evidence, judicial administration, and alternative dispute resolution, 1990-2002

Background and Education

  • Chief Magistrate Judge, U.S. District Court, Northern District of California, 1990-2001
  • United States Trustee, U.S. Dept. of Justice, Region XV Southern District of California, District of Hawaii, Territory of Guam, and Commonwealth of the Northern Marianas Islands, 1988-1990
  • Partner, Schall, Boudreau & Gore, San Diego, CA, 1986-1988
  • U.S. Magistrate Judge, U.S. District Court, Southern District of California, 1972-1986
  • J.D., Boston University School of Law, 1965
  • A.B., Boston College, 1962

Disclaimer

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