Todd M. Friedman, P.C.
Overview
Todd Friedman is an intellectual property litigator and partner in Kirkland’s New York office, with a primary focus on patent disputes. In particular, Todd has significant experience representing clients in high-stakes litigation in all areas of technology, including semiconductors, computer software and hardware, telecommunications, and medical devices. Todd has tried numerous cases to verdict, and his clients have included some of the nation’s largest companies, such as Intel, Samsung, and IBM, among others.
The Legal 500 U.S. has consistently recognized Todd’s work on the Firm’s Tier 1 Patent Litigation team and in the Firm’s International Trade Commission patent practice, and noted that he is an “excellent strategist” and “responsive, organized and an effective oral advocate.”
Todd has tried and led patent cases in federal courts across the country and in the United States International Trade Commission. In addition to his trial work, Todd has served as lead counsel in many inter partes reviews before the United States Patent and Trademark Office’s Patent Trial and Appeal Board. He also has extensive experience conducting infringement assessments, coordinating clients’ efforts in multinational patent disputes, and helping companies manage their patent portfolios through active licensing programs.
Experience
Representative Matters
Representing Intel, Lenovo, Acer, Micro-Star International, and ASUSTek in ITC and district court litigation matters, in which Tela Innovations, Inc. alleges infringement of multiple patents related to layout optimization technology for computer processors.
Representing Samsung in an ITC matter, in which BitMicro alleges infringement of multiple patents related to solid state drives and stacked semiconductor modules.
Representing Samsung in a Northern District of California action involving multiple patents covering systems and methods for mobile tethering and technology relating to remote control of mobile communication devices.
Defended IBM in a District of Delaware action, in which the plaintiff alleged infringement of a single patent related to RAID controllers. The case successfully settled after filing multiple IPR petitions to challenge the validity of the asserted patent.
Represented Samsung in an Eastern District of Texas action involving eight patents covering systems and methods for USB power supply and charging. The case successfully settled after Samsung obtained favorable claim construction rulings for all asserted patents.
Defended Intel in a patent infringement action in the Eastern District of Texas, in which the plaintiff alleged infringement of multiple patents related to computer processing technology. Based on key admissions obtained from the plaintiff’s witnesses and in view of threatened Rule 11 sanctions, the plaintiff was forced to drop the patents-in-suit with prejudice.
Defended Intel in a patent infringement action in the Southern District of California, in which the plaintiff alleged infringement of a single patent related to a flash memory management system. The case successfully settled after Intel challenged the validity of the asserted patent through multiple IPR petitions.
Defended ContentGuard Holdings, Inc. in four IPR proceedings, which challenged the validity of four ContentGuard patents relating to digital rights management. The PTAB ruled in favor of ContentGuard and found that ZTE, the petitioner in the proceedings, failed to prove that any of the challenged patent claims in those proceedings were unpatentable, resulting in a complete victory for ContentGuard.
Represented Samsung against Ericsson in an ITC action involving multiple patents covering wireless communication technologies.
Represented a leading computer, mobile device and media player company against HTC in an ITC case and District of Delaware case involving 20 patents covering smartphone technologies. Findings of infringement by the Administrative Law Judge and the full Commission ultimately resulted in the entry of an exclusion order barring HTC’s infringing products from importation into the U.S. market. Shortly thereafter, the parties reached a confidential settlement and licensing agreement.
Defended Intel in a patent infringement action in the Northern District of Georgia, in which the plaintiff alleged infringement of a single patent related to computer processing technology. Through an aggressive approach to discovery, the Kirkland team developed a number of defenses for Intel, and obtained testimony that proved the patent was invalid, did not cover Intel’s products and suffered from multiple flaws. The court ultimately granted summary judgment of invalidity in favor of Intel, and found all four asserted claims of the patent invalid on multiple grounds. The court also issued a claim construction order that adopted Intel’s proposed constructions, which forced the plaintiff to admit Intel could not infringe its patent.
Defended Samsung in an ITC case involving four patents relating to flash memory technologies. After significant pre-trial victories, the complainant was forced to drop with prejudice two of the four patents prior to trial. With regard to the two remaining patents, after a two-week bench trial, the ITC ruled in favor of Samsung, finding that the complainant was not entitled to any remedy against Samsung.
Defended Samsung in a patent infringement action in the Eastern District of Texas involving four patents relating to flash memory technologies. After motion practice attacking the plaintiff’s infringement allegations and Rule 11 basis for asserting two patents against Samsung, the plaintiff was forced to drop with prejudice those patents and its remaining infringement allegations against nearly 70 products. Immediately after obtaining this result, the case settled favorably for Samsung.
Defended Alcatel-Lucent in a patent infringement trial in the Southern District of California involving five patents in which the jury returned a favorable verdict finding non-infringement or invalidity with respect to each asserted patent.
Defended Siemens in a patent infringement action in the District of Delaware involving two patents related to programmable hearing aids. After developing key non-infringement and invalidity positions, the case was successfully settled.
Represented Xerox Corporation in a large patent infringement action in the Eastern District of Texas involving 29 patents relating to printer and copier technologies. After filing summary judgment motions on invalidity and non-infringement, which had the potential to eliminate nearly all of Xerox’s exposure, a favorable settlement was reached.
Represented Samsung in four related ITC and Eastern District of Texas cases collectively involving 59 patents. The patents-in-suit spanned dozens of technologies related to GSM mobile phones and cellular network equipment. Shortly before the first trial and after a series of positive court rulings for Samsung, the cases were successfully settled.
Represented Samsung as an intervenor in a three-patent ITC action in which the complainant sought to exclude 100% of Samsung phones with a third-party chipset found to infringe complainant’s patents. After a one-week bench trial, the ITC ruled in favor of Samsung, finding that the complainant was not entitled to any remedy against Samsung despite a finding of liability in an earlier case tried against the third-party chipset manufacturer.
Represented Infineon Technologies in a declaratory judgment action in the District of New Jersey involving seven patents relating to DRAM memory circuit technologies. After a hearing on several case-dispositive summary judgment motions, the Court ruled in favor of Infineon, finding that Infineon did not infringe six of the seven patents at issue in the summary judgment motions and precluding the patentee from relying on the doctrine of equivalents. The case settled shortly thereafter.
Defended Infineon Technologies in a closely watched patent infringement action involving SDRAM and DDR SDRAM memory chips. During the course of a two-week jury trial in the Eastern District of Virginia, the Court dismissed all 57 asserted claims of the four patents-in-suit. In addition, the jury found that the plaintiff had committed fraud on a standards body and awarded our client several million dollars in punitive damages. After trial, the Court awarded our client its attorneys’ fees and issued an anti-suit injunction.
Defended Lucent Technologies in a patent litigation involving cellular-network technology. After a two-week jury trial, the jury returned a verdict of non-infringement and patent invalidity.
Represented Agere Systems in a pair of patent and trade secret actions in New Jersey state court and in the District of New Jersey against a competitor in the field of optical communications. In the trade secret case, through the use of a company informant, evidence of significant wrongdoing was uncovered, resulting in a criminal investigation and a favorable settlement of the case once the defendant’s motion to stay was denied.
Defended Agere Systems in a patent infringement action in the Northern District of California involving seven patents and Agere’s entire 56k modem product line. The plaintiff accused every Agere modem marketed as being compliant with the ITU’s V.90 Standard. The case was successfully settled at the end of fact discovery after documentation and testimony by several key witnesses demonstrated that Agere’s predecessor, AT&T Bell Labs, was the first to invent the claimed technology.
More
Thought Leadership
Seminars
Panelist: “How to Extract Value from an IP Portfolio,” American Bar Association’s 24th Annual Intellectual Property Law Conference
Panelist: “Intellectual Property and Value Creation,” 24th International Conference on Digital Printing Technologies
Presenter: “Trends and Developments in Global FRAND Litigation,” Feb. 2019 Continuing Legal Education Presentation
Presenter: “Defending Against Willful Infringement Post-Halo,” Feb. 2017 Continuing Legal Education Presentation
Recognition
Memberships & Affiliations
New York Intellectual Property Law Association
American Intellectual Property Law Association
American Bar Association
Credentials
Admissions & Qualifications
- 1999, New York
- Registered to practice before the United States Patent and Trademark Office
Courts
- United States District Court for the Southern District of New York
- United States District Court for the Eastern District of New York
- United States Court of Appeals for the Federal Circuit
- Supreme Court of the United States
Education
- Albany Law SchoolJ.D.cum laude1998
Graduated Top 10%
Matthew Bender Award
Executive Editor, Albany Law Review, 1997–1998
- State University of New York, Maritime CollegeB.E., Electrical Engineeringwith Distinction1994