Jonathan Kagan focuses his practice on complex intellectual property disputes, with a particular emphasis on patent litigation. He also counsels clients in other areas of intellectual property, including trademark and copyright. Jonathan serves on the firm's Executive Committee and chairs its Hiring Committee.
Known as a "brilliant thinker who employs some very creative strategies” (Chambers USA), Jonathan represents clients in multiple industries, concentrating on the electronics sector, including semiconductors and internet infrastructure. He brings a sophisticated understanding of technology to his work and immerses himself in the technical details involved in each dispute. Jonathan has extensive experience leading teams of lawyers and coordinating with inter partes reviews before the Patent Trial and Appeal Board (PTAB). He is also adept at addressing indemnity issues when they arise in patent infringement lawsuits.
Jonathan provides ongoing counsel on patent portfolios as well as the purchase and licensing of patents. Additionally, he provides strategic advice on patent pooling, swaps and other creative ways of acquiring and managing intellectual property.
Jonathan is a past president of the Century City Bar Association and serves on the Editorial Advisory Board of the National Institute for Trial Advocacy. He is frequently invited to speak about the litigation of complex commercial and intellectual property disputes.
- Finjan Inc. v. Juniper Networks Inc. Successfully defended Juniper Networks Inc. against a patent infringement lawsuit, convincing a jury in the U.S. District Court for the Northern District of California that Juniper did not infringe a malware detection patent held by Finjan Inc. Finjan asserted seven patents against Juniper as part of the litigation, which involved complex matters of computer science. The judge ordered each party to select the patent claim they felt was the strongest and move for early summary judgment on that claim. Juniper prevailed on summary judgment for the claim it selected, and defeated Finjan’s summary judgment motion – setting up the trial on what Finjan had selected as its strongest claim. During the trial, Irell persuaded the court that Finjan, which sought $60 million in damages, had not presented sufficient evidence to support a damages claim. The eight-member jury delivered a unanimous finding of non-infringement for Juniper. Five other patents remain unresolved, as well as other claims in the first two patents.
- Juniper Networks Inc. v. Palo Alto Networks Inc. Secured a victory for Juniper Networks in May 2014, when Palo Alto Networks Inc. agreed to pay $175 million to resolve the patent litigation between the two network security companies pending in California and Delaware. Juniper Networks sued Palo Alto Networks (PAN), a company founded by former Juniper employees, in Delaware federal court for allegedly infringing seven Juniper patents. The patents at issue were invented by the founders of PAN when they were employed by Juniper. Irell successfully moved the district court to strike PAN’s defense of invalidity by invoking the federal common law doctrine of assignor estoppel, which prevents an inventor who assigns a patent to a buyer from later challenging its validity. The trial in February 2014 ended in a mistrial, leading to the settlement.
- Juniper Networks v. Toshiba America Information Systems. Represented Juniper Networks in a number of intellectual property matters, including this protracted patent infringement dispute with Toshiba. In response to a motion filed by Juniper Networks shortly before trial, the court issued a sanctions order against Toshiba that, among other things, barred Toshiba from calling its expert witness on noninfringement and severely limited Toshiba’s time for its opening statement and closing argument. The case settled in late 2007, shortly after the court issued the sanctions order.
- Ultratech Stepper v. ASML. Served as trial counsel for ASML, one of the world’s leading suppliers of semiconductor manufacturing equipment, in this patent infringement case. While both of ASML’s competitors (who were initially co-defendants in this action) entered into substantial settlements with the plaintiff, ASML elected to litigate. After a four-week trial—and with less than one day of deliberation—the jury found the plaintiff’s patent invalid on multiple grounds. The Federal Circuit affirmed the jury’s verdict in its entirety. The Daily Journal recognized this victory as one of the top 10 defense verdicts of 2005.
- Aviza Technology v. ASML. Served as lead counsel for ASML in this arbitration in which the claimant accused ASML of fraud and negligence. After a one-week hearing, the arbitrator found in favor of ASML on all causes of action and determined that ASML was entitled to recover its litigation expenses, including attorneys’ fees.
- Sharper Image v. Ionic Pro. Defended a patent and trademark case brought by Sharper Image against retailers and manufacturers of air purifiers that competed against its flagship Ionic Breeze. This case settled after Sharper Image’s claims of trade dress and design patent infringement were dismissed on summary judgment.
- Stac Electronics v. Microsoft. Represented Stac Electronics, a small software company, in a patent infringement suit it brought against industry giant Microsoft. After an extensive trial, the jury awarded Stac Electronics $120 million in patent damages. Stac also obtained a worldwide injunction against the sale of Microsoft’s operating system.
- Novellus Systems v. Applied Materials. Represented Novellus Systems, a manufacturer of semiconductor manufacturing equipment, in a patent infringement lawsuit filed against it by industry leader Applied Materials. Over a period of seven years, each of the patents Applied Materials had asserted against Novellus was declared invalid, held not to be infringed or withdrawn from the case. The parties then reached a settlement of the case, which involved a payment from Applied Materials to Novellus.
Honors & Awards
- Recognized as a leading IP litigator by the Daily Journal (which has named his defense victories to its annual list of top defense verdicts three times)
- Recognized by The Legal 500 for his work in the area of Patent Litigation: High-Tech Electronics and IT
- Selected for inclusion in The Best Lawyers in America (2010-present)
- Named to the Southern California Super Lawyers list in the area of intellectual property litigation (2004-present)
- "Trademark Bootcamp," Los Angeles Intellectual Property Law Association (October 24, 2013)
- "Remedies-Or-," LAIPLA Spring Seminar (June 8, 2013)