Nagendra (Nick) Setty

Mr. Setty is a partner and a co-chair of the Intellectual Property practice group in the firm's Palo Alto and San Francisco offices.

Mr. Setty has an international practice representing leading global businesses such as Bank of America, Cipla, Cisco, EchoStar, Landis + Gyr, LG, McKesson, Samsung, Siemens and Verint.  His practice focuses on litigating jury, bench and arbitration trials in patent, trademark, trade secrets, and copyright cases.  Over the past 20 years, he has served as lead counsel in more than 120 IP cases, spanning a broad range of technologies.  Mr. Setty is a frequent lecturer and author on IP related topics, and is recognized for his IP litigation expertise in Chambers USA. 

Mr. Setty has handled numerous patent, trade secret, and unfair competition cases involving parties in the software, telecommunications, and electronics industries.  He has successfully represented clients in the areas of flash memory, Lifecycle Product Management systems, computer aided design (CAD) systems, optical disk drives, LCD televisions, parental control systems, Picture Archiving and Communication Systems (PACS), speech analytics systems, database and menu driven template systems, wireless network systems, network security systems, messaging security systems, debit card database and management systems, analog and digital video technologies, anti-spam and virus scanning technologies, interactive voice response (IVR) systems, memory management systems, notification and messaging systems, satellite communications, screen capture and monitoring systems, short message system (SMS) communications, simulation technologies, time division multiplex (TDM) switches and systems, voice and data switching technologies, voice mail systems, and Voice over Internet Protocol (VoIP) systems. 

Education

• J.D., Emory University School of Law, 1992
• B.S., Emory University, 1987

Admissions

• Georgia
• United States Patent and Trademark Office

Spansion LLC v. Samsung Electronics Co, LTD. (W.D. Wisc. 2010, Connelly, J.) – Counsel for Samsung in flash memory dispute involving multiple actions in the ITC and 4 district courts.

Extricom, Inc. v. Meru Networks LLC (D. Del. 2010) – Lead counsel for Extricom in dispute involving patent infringement claims relating to WLAN and Wifi technologies and advanced managerial functions.

Patent Truth, LLC v. Bank of America Corp. and Production Services Assocs. LLC (E. D. Pa. 2010 O'Neil, J.) - Lead counsel for BofA in false marking dispute relating to USPN 6,961,737 and the marking of credit cards.

I*Rise Learning Center & Outreach, LLC v. Samsung Telecommunications America, LLC & Samsung Electronics America, Inc. (W. D. Mo. 2011 Kelly, J.) - Lead counsel for Samsung entities in false marking dispute involving USPN 5,060,220, 5,099,204, 5,103,459, and 5,107,225 and Samsung consumer electronics products, such as LCDs, DVDs, DVRs with expired patent markings.

Consumers Protecting Consumers, LLC v. Samsung Electronics Company, Ltd., Samsung Electronics America, Inc. & Tianjin Samsung Electronics Co., Ltd., LG Electronics, Inc., LG Electronics Indonesia, and LG Electronics USA, Inc., Vizio, Inc. (E. D. Pa. 2010) - Lead counsel for Samsung entities in false marking dispute involving USPN 4,631,603, 4,819,098, 4,930,158, 4,930,160, 5,060,220 and Samsung consumer electronics products, such as LCDs, DVDs, DVRs with expired patent markings.

Michael M. Mueller v. Scantron Corp., Harland Clarke Holding Corp. and M & F Worldwide Corp. (SD CA, Major, B.) – Counsel for defendants Scantron Corp. in dispute involving the false marking of test scoring apparatus.

Kellstrom Integration Solutions, LLC v. Siemens PLM Software, Inc., et al  (E.D. Tex. 2010, Davis, J.) – Lead counsel for Siemens PLM in dispute involving product lifecycle management software and systems.

Patent Truth, LLC v. Bank of America Corp. and Production Services Associates LLC (E.D. PA 2010, O’Neil, T.) – Counsel for defendants Bank of America Corp. in dispute involving the false marking of method of embossing cards.

SIPCO, LLC. v. Siemens Industry, Inc. et al (E.D. Tex. 2010, Davis, J.) – Lead counsel for defendants Siemens Industry and DIGI International in dispute involving utility networking technologies.

Spansion LLC v. Samsung Electronics Co, LTD.  (W.D. Wisc. 2010, Conley, J., E.D. VA 2010, Anderson, J.) – Counsel for Samsung in Wisconsin and Virginia component of multi-jurisdictional dispute involving flash memory technologies.

Openwave Systems v. 724 Solutions, Inc. (N. D. Cal. 2010, Seeborg, J.) – Lead counsel for 724 Solutions in dispute involving mobile device web interface and data rendering systems.

Mesh Comm LLC v. Landis+Gyr, Inc. and Oncor Electric Delivery Company LLC  (E.D. Tex. 2009, Ward, J.) – Lead counsel for defendant Landis+Gyr in dispute involving networking technologies.

Synchrome Technology, Inc. v. Samsung Electronics America, Inc., LG Electronics USA, Inc., Toshiba American Information Systems, Inc., Panasonic Corporation of North America, Hitachi America LTD. (N.D. Ga. 2009, Carnes, J.) - Lead counsel for Samsung in 2 patent dispute involving Optical Disk Drives (ODDs) and interfaces; case currently in discovery.

Guardian Media Technologies, LTD. v. Cisco Systems, Inc. and Scientific Atlanta LLC (C.D. Cal. 2009; Real, J.) Lead counsel for Cisco in multi-defendant case involving parental control patents; case resolved favorably.

AVL Technologies, Inc. v, General Dynamics Satcom Technologies, Inc. and General Dynamics Corporation (Sup. Ct. N.C. 2009) – Counsel for plaintiff AVL in misappropriation and non-compete action involving satellite dish positioning systems; case currently in discovery.

LG Electronics, Inc. v. Vizio, Polaroid Corporation, Proview, Westinghouse Digital (E. D. Tex. 2008; Folsom, J.) - Lead counsel for LGE in 5 patent dispute in E. D. Texas versus several large LCD television makers; case stayed pending resolution of ITC proceedings.

Document Generation Corporation v. McKesson Information Solutions LLC, Inc, et al. (E. D. Tex. 2008; Davis, J.) – Lead counsel for McKesson in multi-defendant (9 co-defendants) patent infringement claim involving medical personnel report and notes generating systems; case resolved favorably.

Document Generation Corporation v. McKesson Information Solutions LLC, Physicians Micro Systems, Inc, et al. (S. D. Ill. 2007; Murphy, J.) - Lead counsel for McKesson and PMS in multi-defendant (18 codefendants) patent infringement claim involving medical personnel report and notes generating systems; case settled favorably.

Radiant Systems, Inc. v. Ameranth, Inc. (N.D. Ga. 2007; Batten, J.) - Counsel for Radiant, declaratory judgment plaintiff, in patent infringement claim involving point of sale computing systems; case settled favorably before discovery.

Hospital Systems Corporation v. McKesson Information Solutions LLC, et al. (E. D. Tex. 2007; Ward, J.) - Lead counsel for McKesson in multi-defendant (6 co-defendants) patent infringement claim involving Picture Archiving and Communication Systems (PACS); case resolved favorably.

PSKW, Inc. v. McKesson Specialty AZ, Inc. (Sup. Ct. N.Y. 2007, Kapnick, J.) - Lead counsel for McKesson in trade secrets case involving multi-payor pharmaceutical purchases and related database and computing systems; case currently in discovery. 

NICE Systems, Ltd. and NICE Systems, Inc. v. Witness Systems, Inc. (D. Del. 2006; Farnan, J.) – Lead trial counsel for Witness in patent infringement claim involving 10 patents in the fields of telecommunications, voice recording, databases and storage, VOIP conferencing and conference recording, etc. and damages claim of $276M; tried case to jury in 2008, which ended in mistrial.

Ablaise Ltd. & General Inventors Institute A, Inc. v. Bank of America Corp. (D. Del. 2006; Robinson, J.; N. D. Cal. 2006, Armstrong, J.) - Lead counsel for Bank of America in patent infringement case involving web-based formatting and rendering systems; succeeded in transfer motion to N. D. Cal.; case currently in discovery.

IPCO, Inc. v. Cellnet Technologies, Inc., Hunt Technologies, Inc. (N. D. Ga. 2006; Carnes, J.) - Lead counsel for Cellnet and Hunt (2 co-defendants) in patent infringement claim involving "Smart Meter" technologies and networks, including Automated Meter Reading (AMR) and Advanced Metering Infrastructure (AMI) technologies; case resolved favorably.

AirDefense, Inc. v. AirTight Networks, Inc. (D. N.J. and N. D. Cal. 2006, Fogel, J.) - Lead counsel for AirDefense in trade secrets case involving wireless network security systems and technologies; case settled favorably with consent injunction during discovery.

DR Systems, Inc. v. McKesson Information Systems LLC (S. D. Cal. 2006; Brewster, J.) - Lead counsel for McKesson in multi-defendant patent infringement claim involving Picture Archiving and Communication Systems (PACS); chosen to argue Markman positions for all co-defendants; case settled favorably after Markman.

Blue Pumpkin Software, LLC v. IEX Corp. (N.D. Ga. 2005, Story, J.) - Lead counsel for Blue Pumpkin in patent infringement claim involving various aspects of scheduling software and systems; case settled favorably.

IPCO, Inc. v. Cellnet Technologies, Inc., et al. (N. D. Ga. 2005, Cooper. J.) - Lead counsel for Cellnet in multidefendant (3 co-defendants) patent infringement claim involving mesh network technologies for use in the utilities industries, including Automated Meter Reading (AMR); case stayed in favor of reexamination during discovery.

Hydro-Mobile, Inc. v. Hydek, Inc. and Valco, Inc. (N.D. Ohio 2005) - Lead counsel for defendants in patent infringement case involving hydraulic lift platforms and control systems therefor; case settled favorably with assignment of patents to clients. 

iEntertainment, Inc. v. Valve LLC and Vivendi Universal Games, Inc. (W.D.N.C. 2004) - Lead counsel for defendants in patent infringement action involving network latency in massively multi-player gaming environments; settled case highly favorably in discovery and after disclosure of prior art.

Witness Systems, Inc. v. NICE Systems, Inc. and NICE Systems, Ltd. (N.D. Ga. 2004; Pannell, J.) – Lead counsel for Witness Systems in patent infringement claim involving agent monitoring and synchronized replay software and systems.

STS Software Systems, Ltd. v. Witness Systems, Inc. (S.D.N.Y. 2004 and N.D. Ga. 2004; Story, J.) - Lead trial counsel for Witness in patent infringement claim involving Voice over IP (VOIP) recording patents, including original asserted patent dismissed with covenant not to sue, two additional patents prosecuted during litigation dismissed with covenant not to sue and bench trial in 2008 on fourth asserted patent, resulting in highly favorable judgment of non-infringement.

Donner, Inc. v. Delphi Corporation, et al. (N.D. Ga. 2003; Thrash, J.) - Lead counsel for Delphi entities in action concerning patents covering audio and other electronic systems on board vehicles; case settled favorably for client.

CAPS Logistics, Inc. v. Velant, Inc. et al. (Fulton Superior Court, Ga. 2003) - Lead trial counsel for transportation software optimization software company in trade secrets and tortious interference case; case tried in 2004; defense judgment on all counts. Nominated as one of the defense verdicts of the year for 2005 to the National Law Journal.

Hilgraeve, Inc. v. Ciphertrust, Inc. and Sophos, Inc. (E.D. Mich. 2002) - Lead counsel for e-mail security systems provider in action involving patent on intercepting e-mail traffic for virus scanning before availability to other network resources.

Arrival Star v. SITA Information Technology Computing USA, Inc., et al. (N.D. Ga. 2002; Forrester, J.) - Lead counsel for SITA, telecommunications vendor to airline industry, in multi-defendant (13 codefendants) action involving six patents covering flight notification systems to passengers; case dismissed with prejudice against SITA after client produced Swiss witnesses who established noninfringement.

IEX Corporation v. Blue Pumpkin Software, Inc. (E.D. Tex. 2002) - Counsel for Blue Pumpkin in Federal Circuit remand of patent infringement action involving specific aspects of scheduling simulation software and systems; settled favorably in 2005.

Witness Systems, Inc. v. Knowlagent, Inc. (N.D. Ga. 2002; Story, J.) - Lead counsel for Witness Systems in declaratory judgment action concerning two patents covering integration of learning management systems (LMS) and telephone interaction recording and evaluation systems used in call center environments; received highly favorable Markman ruling in 2005; case settled favorably thereafter.

SuperGuide Corp. v. DIRECTV Enterprises, Inc., EchoStar Technologies, Inc., Thomson Consumer Electronics, Inc. v. Gemstar Development Corp. 169 F. Supp. 2d 492 (W.D. N.C. 2001) - Counsel for EchoStar in complex patent infringement litigation involving three patents owned by SuperGuide, licensed to Gemstar in certain fields of use, and directed to various aspects of interactive program guides (IPG) software and systems used in satellite television services; summary judgment of non-infringement on all three patents, affirmed in part and reversed and remanded in part at Federal Circuit.

DOT Connectors, Inc. v. J.B. Nottingham, Inc. d.b.a. Duraline, 4-99-CV311-WS (N.D. Fla. 2000) – Lead counsel in declaratory judgment action based on noninfringement, invalidity, and unenforceability of Duraline patent on behalf of DOT Connectors, a manufacturer of electrical connectors used in roadway lighting; highly favorable settlement.      

Honors

• America's Leading Business Lawyers, Chambers USA, 2004 - 2010
• Georgia Super Lawyers, Super Lawyers, 2004 - 2011
• Georgia's Legal Elite, Georgia Trend Magazine, 2006 - 2008

Memberships

• APAA (Asian Patent Attorneys Association)
• NASABA (North American South Asian Bar Association)
• NAPABA (National Asian Pacific American Bar Association)
• Atlanta Bar Association
• State Bar of Georgia
• INTA (International Trademark Association)

Articles

• Sheppard Mullin Snags Fish & Richardson IP Litigator, Law360, October 18, 2011
• "A Review of Recent Intellectual Property Damages Developments," coauthor, paper presented at Fifteenth Annual IP Institute, State Bar of Georgia Conference and the PLI Patent Litigation Conference, Atlanta Georgia (2009).
• "Enablement and Written Description - Sometimes Forgotten and Often Confused Defenses to Patent Infringement," 841 PLI/Pat 399, Patent Litigation (2005).
• "Knorr-Bremse: Step One Toward Overhaul," ABA IPL Newsletter, 22:2, 3-4 (2004).
• "Claim Construction - Is There a Perfect Path?" ABA IPL Newsletter, 22:4, 4-5 (2004).
• "Protective Orders and Other Devices for Protecting Source Code and Sensitive Technical Information in Litigation," coauthor, paper for Third Annual Conference on IT Litigation, Law Seminars International, Atlanta, Georgia (2003).
• "Markman Strategies Post-Festo," 18th Annual ABA Intellectual Property Conference, Washington, D.C. (2003).
• "Cracking the Code - Protective Orders and other Confidentiality Tools in IT Software Litigation," coauthor, paper presented at Second Annual Conference on IT Litigation, Law Seminars International, Atlanta, Georgia (2002).
• "The Festo Case - Choosing Between Certain Unfairness and Uncertain Fairness," Issue of Technology Law Newsletter, State Bar of Georgia (2002).
• "In Search of the Ideal Scheduling Order - Timing and Sequence of Key Events in Patent Litigation," coauthor, paper presented at The Fifth Annual Intellectual Property Litigation, Law Seminars International, San Francisco, California (2001).
• "Proving Patent Damages At Trial: A Review of Recent Patent Damages Decisions and An Update on the Proper Use of Financial Expert Testimony," coauthor, 669 PLI/Pat 719 (Patent Litigation) (2001).
• "In Search of the Ideal Scheduling Order - Timing and Sequence of Key Events in Patent Litigation," coauthor, paper presented at Patent Litigation, Law Seminars International, Atlanta, Georgia (2001).
• "Proving Patent Damages At Trial: A Review of Recent Patent Damages Decisions and An Update on the Proper Use of Financial Expert Testimony," coauthor, 619 PLI/Pat 755 (Patent Litigation) (2000).
• "Effective Use of Opinions of Counsel in Patent Litigation," paper presented at Litigating Patent Disputes, American Conference Institute, Washington, D.C. (2000).

Speeches

• “Protecting Your Intellectual Property,” TIE Vista Summit (Atlanta, 2011)
• “The Litigator’s Perspective,” AIPLA 2011 Mid-Winter Institute – Patent Reform (Orlando, 2011)
• “What Israeli Companies Really Need to Know About IP in the US” (Israel, 2011)
• “Direct and Cross Examination of Damages Witness,” Practicing Law Institute (PLI) – Patent Litigation (Atlanta, 2010)
• “Current Issues in Patent Damages," New York State Bar IP Institute (New York, 2010)
• “Current Issues in Patent Marking,” American Conference Institute (ACI) (Webinar, 2010)
• “Mock Markman Hearing,” NASABA – South Asian Bar (Boston, 2010)
• “Litigating Patent Disputes – Current Issues in Patent Damages,” The Daily Journal (San Jose, 2010)
• “Current Issues in Patent Damages,” University of Virginia School of Law (Charlottesville, 2010)
• “In re Bilski – Practical Implications,” Bar Ilan University (Tel Aviv, 2010)
• "Patent Marking after Bon Tool,” Georgia State University School of Law (Atlanta, 2010)
• “IP Issues for the Israeli-American Company,” American Israeli Chamber of Commerce (Atlanta, 2010)
• “Patent Marking After Bon Tool,” Southeastern Medical Device Association (SEMDA) (Atlanta, 2010)
• "How to Develop Business," MCCA Annual Meeting, New York (November 19, 2008)
• "Outlook for Patent Litigation in 2009," State Bar of Georgia 14th Annual IP Law Institute (November 13, 2008)
• "Demonstration of a Direct and Cross Examination of an Invalidity Expert," PLI Patent Litigation 2008, Atlanta (November 10-11, 2008)
• "The Court Keeps an Eye Over Its Shoulder," Federal Circuit Year in Review: 2007-2008, Shearn Delamore & Co., 2008 Intellectual Property Conference, Kuala Lumpur - Malaysia (November 2008)
• "Recent Developments in Patent Litigation," presenter, PLI Patent Litigation (2007; co-chair)
• PLI "Patent Litigation," (2008; co-chair)
• "Alternative Dispute Resolution in Patent Litigation," co-chair, LSI Patent Litigation (2005)
• "Phillips v. AWH," NAPABA Annual Meeting, Chicago (2005)
• "Patent Law Reform," LSI Botechnology Conference, Seattle (2005).
• "Written Description and Enablement Defenses in Patent Litigation," PLI Patent Litigation, Atlanta (2005)
• "Hot Topics in Patent Litigation - Phillps v. AWH, Merck v. Integra and Patent Law Reform," ABA Annual Meeting, Chicago (2005)
• "The Art and Science of Business Development," National South Asian Bar Association - National Conference, Santa Monica (2004-2007)
• "Law Seminars International Presents - Opening Moves in Patent Disputes," Atlanta (2004)
• "Early Stages of Patent Litigation," co-chair, Law Seminars International, counsel in a Mock Markman Hearing, Atlanta (2004)
• "How to Prepare for and Conduct Markman Hearings," speaker, Claim Construction from the Appellate Perspective, Practicing Law Institute Program, Atlanta (2004)