- UCLA School of Law (J.D., 1987), Order of the Coif
- University of California, Berkeley (B.S., Electrical Engineering and Computer Sciences), magna cum laude
Gary Frischling is a partner in the Los Angeles office of Irell & Manella LLP. Mr. Frischling has served as co-chair of the firm’s intellectual property department and as a member of the firm’s executive committee. He is also a registered patent attorney.
Mr. Frischling’s practice focuses on intellectual property litigation and pre-litigation counseling, as well as a variety of other intellectual property transactions and matters. He has represented clients in matters involving technology ranging from digital circuit simulators and computer software to new drugs. His litigation practice includes patent, copyright, trademark, unfair competition, and trade secret litigation for a diverse range of clients, from Fortune 10 companies to startups. On the transactional and counseling side, his practice includes IP licensing, software development, and acquisition deals; IP reviews in connection with mergers, acquisitions, and asset purchases; trademark advice and prosecution; patent prosecution; and general IP advice and counseling.
Mr. Frischling has been selected for inclusion in The Best Lawyers in America for the years 2007-2013 in the specialty area of intellectual property law and named to the Southern California "Super Lawyers" list by Los Angeles Magazine for the years 2006-2013. The Los Angeles and San Francisco Daily Journal has recognized Mr. Frischling as one of California's "75 Leading IP Litigators" every year since 2008. Intellectual Asset Management magazine also listed him among the top patent litigators in California in both the 2010 and 2011 edition of the IAM Patent Litigation 250, describing him as an "excellent practitioner." In its Patent Litigation: full coverage section, The Legal 500 US 2010 describes Mr. Frischling as "versatile" and "noted for his expertise in high tech and pharmaceutical disputes." He has also been named by the Los Angeles Times Magazine as one of the best lawyers in Southern California for IP Litigation.
The following is a list of selected litigation and transactional/counseling matters for which Mr. Frischling has had primary responsibility:
- Acacia Research/Microprocessor Enhancement Corp., et al v. Texas Instruments Incorporated. – Mr. Frischling served as lead counsel and obtained summary judgment for TI in this second patent infringement case, SACV 08-1123 SVW (C.D. Cal.), brought against TI by Microprocessor Enhancement Corporation ("MEC"), a subsidiary of publicly-traded patent holding company Acacia Research Corporation. MEC alleged that TI's OMAP 2 and OMAP 3 families of products, which incorporate ARM1136 and ARM Cortex-A8 processors, respectively, infringed one of MEC's patents. MEC sought unspecified damages and a permanent injunction against TI. TI's OMAP processors are designed for multimedia, gaming and wireless mobile use, including in smart phones, GPS units and mobile internet devices. FBR Capital Markets projected that annual sales of OMAP products would soon exceed $700 million. MEC's infringement claims went beyond just TI, as ARM-licensed processors are made by many companies and MEC asserted infringement based on key aspects of ARM architecture. By some estimates over 3 billion ARM processors are sold every year. MEC also asserted claims against ARM, STMicroelectronics, Emulex Corporation and others in the same court. Irell & Manella took the lead on noninfringement, filing separate motions for summary judgment of noninfringement with respect to each of the two families of accused products. All of the other defendants joined TI's motions. Judge Stephen V. Wilson granted both of TI's motions, finding two independent bases for noninfringement with respect to each motion and awarding TI its costs of suit. Final judgment in favor of TI was entered and MEC appealed, but that appeal was later dismissed.
The Salk Institute for Biological Studies v. Ferring Pharmaceuticals, Inc. – Mr. Frischling represented Ferring Pharmaceuticals (“Ferring”), a European biopharmaceutical company, in this litigation brought by The Salk Institute for Biological Studies (“Salk”) in federal court in San Diego. In 1995, Ferring discovered “degarelix,” a peptide-based drug effective for treating prostate cancer. Soon thereafter it filed a patent on degarelix. This discovery occurred as part of a collaboration between Ferring and an independent consultant who also was a professor at Salk. From 1995 until 2008, Ferring further researched and developed degarelix, and it obtained FDA approval to market the product in December 2008. Salk filed suit in December 2010 – more than a decade after Ferring's first degarelix patent issued – alleging that Salk should be the exclusive owner of the patent rights in degarelix, that Ferring had engaged in unfair competition, and that Ferring's sales of degarelix infringe a Salk patent. Ferring moved to dismiss Salk's claims as failing to state a claim, time-barred and otherwise defective. The court held a preliminary telephonic hearing on the motion. Within a month of filing formal briefs, the case was settled and all claims against Ferring were dismissed with prejudice.
- Wisconsin Alumni Research Foundation v. Intel Corp., – Mr. Frischling represented the Wisconsin Alumni Research Foundation ("WARF"), the patent management and licensing entity for the University of Wisconsin, in this litigation against Intel. WARF alleged that Intel's flagship Core Microarchitecture infringed a patent that arose from research at the University of Wisconsin, Madison. In addition to invalidity and non-infringement defenses, Intel claimed that it had obtained a license to the patent in suit based on funding provided to one of the Wisconsin inventors. Two weeks before trial, the court granted WARF's summary judgment motion that Intel had no license to the patent. The Court also denied Intel's motion for summary judgment that the patent was invalid for anticipation, adopting WARF's construction of a key claim limitation. The Court stated that the construction "is fatal to defendant's contention" of anticipation in its motion. Two weeks later, three days before trial, Intel and WARF settled the case.
- Microprocessor Enhancement Corp. v. Texas Instruments, Inc. – Mr. Frischling represented Texas Instruments in this case in the Central District of California. Microprocessor Enhancement Corporation is a subsidiary of patent holding and enforcement company Acacia Research. Acacia is one of the country's largest and most aggressive serial filers of patent litigation, claiming to control some 60 separate patent portfolios. Acacia sued Texas Instruments for patent infringement, asserting that the architecture of TI's high-performance C6000 line of digital signal processing chips infringed Acacia's patent. Acacia sought over $94 million in damages and a permanent injunction against future sales of these products. Mr. Frischling and his colleagues obtained a complete victory for TI. Following the close of discovery, Chief Judge Alicemarie H. Stotler ruled in TI's favor on summary judgment, finding that TI did not infringe the Acacia patent, that all claims of the patent are invalid, and that TI should recover its litigation costs. MEC appealed this decision and Mr. Firschling argued the case before the United States Court of Appeals for the Federal Circuit. On April 1, 2008, the Federal Circuit affirmed the judgment of non-infringement in favor TI, in a published decision.
- Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc./Guidant Corp. v. St. Jude Medical, Inc. – Mr. Frischling represented Pacesetter, Inc., and St. Jude Medical in this patent infringement case in Delaware. Pacesetter is a subsidiary of St. Jude that designs, develops and manufactures Implantable Cardioverter Defibrillators (ICDs) and other devices for treating heart problems such as life-threatening ventricular arrhythmias and congestive heart failure. ICDs continually monitor the rhythms of the heart and, when necessary, can deliver a life-saving electrical jolt. Following a hearing on summary judgment and claim construction issues in March 2007, the case was settled successfully.
- Santarus, Inc. v. TAP Pharmaceuticals – Mr. Frischling represented Santarus, Inc., a startup pharmaceutical company, in an arbitration against TAP (Takeda Abbott Pharmaceuticals) in a license agreement involving its blockbuster drug lansoprazole (marketed as Prevacid, with over $2.5 billion in sales in 2004). After a two-day trial the arbitrator awarded Santarus the entire relief it sought, plus attorneys fees and interest.
- Intergraph Hardware Technologies Co., Inc. v. Hewlett-Packard Co. – Mr. Frischling represented Hewlett-Packard in this case in the Eastern District of Texas involving patents relating to multi-processor computer server systems. The plaintiff alleged that HP’s high-end server systems, representing $2 billion a year in revenues, infringed the patents. Following a very favorable claim construction ruling, the case was successfully settled before trial.
- Townshend Intellectual Property, L.L.C. v. Cisco Systems, Inc. – Mr. Frischling served as lead counsel for Cisco in this complex multi-party lawsuit involving eight patents that allegedly cover substantially all dial-up modems in use today. After several years of litigation, the case was favorably settled at the close of discovery.
- Pitney Bowes Inc. v. Stamps.com Inc./Stamps.com Inc. v. Pitney Bowes Inc. – Mr. Frischling was lead counsel representing Stamps.com in this multi-faceted litigation against Pitney Bowes involving technology for delivering postage, or other evidence of value, over the internet. The case involved over a dozen patents asserted in four lawsuits, pending at various times before three different courts. Following favorable Markman and summary judgment rulings in the two lead cases, a successful global settlement was reached.
- Novartis Consumer Health, Inc. v. Elan Transdermal Technologies, Inc. – Mr. Frischling represented Elan in connection with litigation involving transdermal nicotine patches. The matter was successfully settled before trial.
- Bayer AG v. Elan Pharmaceutical Research Corp. – Mr. Frischling obtained a summary judgment in favor of our client, Elan, in a lawsuit involving the first generic alternative to Bayer’s $400 million per year blood pressure drug Adalat CC. The decision was affirmed by the Court of Appeals for the Federal Circuit.
- Sonus Pharmaceuticals, Inc. v. Molecular Biosystems, Inc. – Mr. Frischling was lead counsel for Sonus in this multi-patent suit involving a novel injectable ultrasound contrast agent. Following highly favorable rulings on claim construction and summary judgment motions, the case was successfully settled.
- Centillion Data Systems, Inc. v. AT&T Corp. – Mr. Frischling represented AT&T Corp. in a patent infringement case involving telecommunications billing software. The matter was settled successfully before trial.
- Pfizer, Inc. v. Elan Pharmaceutical Research Corp., et al. – This case involved the interplay of patent law and the law governing FDA approval of new drugs. Pfizer filed a patent infringement lawsuit against Elan in federal court in Delaware, seeking an injunction to block FDA approval of Elan’s once-daily version of the cardiovascular drug Nifedipine, which would compete with Pfizer’s Procardia XL (a blockbuster drug with over $1 billion in annual sales). Mr. Frischling acted as Elan’s principal counsel on issues of patent infringement and validity, successfully defeating a preliminary injunction motion and prevailing on a motion to dismiss.
- AT&T Corp. v. Microsoft Corporation – In this case, AT&T sought access to source code for Windows NT 5.0 pursuant to a contract with Microsoft. After a week-long preliminary injunction hearing, the matter was settled successfully.
- Catalina Marketing, Inc. v. Advanced Promotion Technologies, Inc. – Mr. Frischling successfully represented Catalina, a firm specializing in point-of-sale promotions, in enforcing its patents related to automatic coupon generation at the checkstand.
- Beckman Instruments v. Hi Chem Diagnostics, Inc. – This case involves the assertion of two chemical patents relating to medical test equipment technology. Mr. Frischling was responsible for successfully resolving the case on summary judgment.
- Hollywood Casino Corporation v. Hollywood Park, Inc., et al. – Mr. Frischling successfully represented Hollywood Park in a trademark dispute concerning the Hollywood Park Casino.
- Negotiated $100 million patent license of substantial patent portfolio.
- Represents major non-profit research institution in licensing its biotechnology patents.
- Represented a client in a multi-million dollar software rights acquisition from a major database software vendor.
- Advised Fortune 100 company regarding strategies for protecting and licensing sophisticated operating system software package.
- Advised a Fortune 100 company on the allocation of its IP rights in connection with a divestiture.
- Responsible for formulating and preparing response to Department of Justice’s "second request" in connection with the merger of two software companies.
- Represented a computer-based archive and clearinghouse for commercial photographs in developing its standard licensing arrangements.
- Represented a video game developer in a multi-million dollar development deal with a major software publisher.
- New Developments In Controlling E-Discovery Costs, Law360, January 30, 2012.
- Q&A with Irell & Manella’s Gary N. Frischling, Law360, November 12, 2007.
- Grokking Grokster: Has the Supreme Court Changed Inducement Under Patent Law?, AIPLA Quarterly Journal, Vol. 34, No. 3, Fall 2006.
- Intellectual Property Litigation, Guide to Intellectual Property, Supplement to BioPharm International, August 2005 (co-author).
- The Metamorphosis of Contract Into Expand, California Law Review, Vol. 87, No. 1, January 1999 (co-author).
- Designer Genes? Religious Arguments Against Patenting Life Forms Are Misplaced, Los Angeles Daily Journal, July 10, 1995.
- The Shape of Things to Come: Design Patent Protection for Computers, The Computer Lawyer, November 1992; The Shape of Things to Come: Trademark Protection for Computers, The Computer Lawyer, December 1992 (co-author).
- A Structured Approach to Analyzing the Substantial Similarity of Computer Software in Copyright Infringement Cases, 20 Arizona State Law Journal 625, 1988 (co-author).
Seminars & Speaking Engagements
- “Implementing ReExam in Litigation Panel Discussion,” 2010 AIPLA Electronics & Computer Law Summit, June 2010, Denver.
- “Creative Strategies for Successful Teaming—Outside Counsel Perspective,” Patent Disputes: Bridging the Gap between In-House Counsel and Law Firms (West Legal Ed Center), March 2010, San Jose.
- “Reexamination and Concurrent Patent Litigation,” 2010 Advanced Patent Law Institute (UTCLE), January 2010, USPTO.
- “Ethical Issues Surrounding Client Representation,” 4th Annual Advanced Patent Litigation Course (UTCLE), August 2008, San Diego.
- “Recent Federal Circuit Decisions re Impace of the Tangentiality and ‘Some Other Reason’ Criteria on Application of Prosecution History Estoppel and the Doctrine of Equivalents,” Patent Law Committee Meeting, AIPLA 2007 Annual Meeting, October 2007, Washington, D.C.
- "Grokking Grokster: Has the Supreme Court Changed Inducement under Patent Law?," 2005 Advanced Patent Law Institute, December 2005, San Jose.
- "Prosecution Laches & Inequitable Conduct: An Outline of Recent Developments," PLI Patent Litigation 2004, October 2004, San Francisco.
- "Prosecution Laches & Inequitable Conduct: An Outline of Recent Developments," PLI Patent Litigation 2003, October 2003, San Francisco.
- "Limitations on Claim Scope Drawn from a Patent’s File History: Overcoming the Heavy Presumption in Favor of Ordinary Meaning," presented at IPO Annual Meeting, November 2002, Los Angeles.
- "Patents in an On-Line World: Navigating the Minefield, Hot Risks, Opportunities and Strategies for Succeeding in a Digital World," Computer Law Association and John Marshall Law School, November 1999, Chicago.
- "Willful Infringement and Enhanced Damages: A Ritual Drama in Patent Litigation," Jury Trials in Patent and Technology Litigation, November 1998, Palo Alto.
- "The Legal Labyrinth of Multimedia," Interactive ‘97, June, Denver.
- "Evaluating Intellectual Property Rights in the Context of Corporate Acquisitions: What is Your Client Buying and What is it Worth," Century City Bar Association, November 1996.
- "Online Providers: Should We Blame the Messengers," panelist, Business and Legal Aspects of the Internet, Online Services and the World Wide Web, October 1996, San Francisco.
- "Internet Anxiety," panelist, House Counsel, Summer 1996.
- "Copyright Protection and Other Rights and Remedies in a Digital World," panelist, 5th Multimedia Law Institute, May 1996, Santa Monica.
- "Recent Trends and Developments in Copyright Law," Orange County Patent Law Association/San Diego Intellectual Property Law Association 1996 Spring Seminar, April 1996, Rancho Santa Fe.
- "Trying to Create Order from the Chaos: Standards in the World of Software Patents," Interactive Multimedia Association/DAVIC Conference, September 1995, Los Angeles.
- "Litigation Between Competitors: Antitrust and Tort Limits on Marketplace Rivalry, Unfair Competition and Intellectual Property Misuse," ABA Section of Antitrust Law, September 1995, San Francisco.
- "Litigation Tactics and Enforcement Strategies," Price Waterhouse Intellectual Property Conference, February 1994.
Bar & Court Admissions
- 1987, California
- U.S. District Court, Central, Northern and Southern Districts of California
- U.S. District Court, Western District of Wisconsin
- U.S. Court of Appeals, Ninth, Eleventh and Federal Circuits
- U.S. Supreme Court
- U.S. Patent and Trademark Office