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. 

Education

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

Admissions

• Georgia
• United States Patent and Trademark Office

Life Sciences Representations:

Lead counsel for Perrigo in ANDA litigation involving PATANASE olopatadine hydrochloride nasal spray. Alcon Pharmaceuticals, Ltd. v. Perrigo Co and Perrigo Israel Pharmaceuticals Ltd. (N.D. Tex. 2011, Means, J.)

Trial and appellate counsel for Cipla, largest Indian pharma, in dispute involving patent infringement and contempt issues concerning veterinary products containing fipronil and methoprene; assumed case on appeal and for post-contempt remedies issues. Merial LTD and BASF Agro BV v. Cipla Limited, Velcera, Inc., Fidopharm, Inc. (Fed. Cir. 2011; M.D. Ga. 2011, Land, J.)

Lead counsel for Cipla in dispute involving veterinary products containing imidacloprid and permethrin. Bayer Healthcare LLC v. Cipla Limited et al. (S.D.N.Y. 2011, Castel, J.)

Lead counsel for Bio-Kor in unfair competition matter involving CHRISTINA line of spa and high end cosmetics and treatments. Bio-Kor Metics, LTD. v. Five Star Form., Inc., (N.D. Cal. 2010, Armstrong, J.)

Lead counsel for Shionogi in multi-defendant litigation involving genetically modified cell lines and monoclonal antibodies. Pieczenik v. Shionogi Pharma (D.N.J. 2010, Pisano, J.)

Lead counsel for Shionogi (Sciele) in pharmaceutical patent infringement case involving Sular®; case resolved favorably. Shionoghi Pharma, Inc. v. Mylan Pharmaceuticals, Inc. (D. Del. 2007; Sleet, J.)

Lead counsel for ACI in complex patent litigation involving two patents and trade secrets in the field of combustion systems and burner designs used in electric arc furnaces; obtained favorable Markman ruling through special master that court adopted after reconsideration by master; settled favorably in 2002. American Combustion, Inc. & American Air Liquide, Inc. v. Process Technology, Inc., 1:97-CV3299-CC (N.D. Ga. 1998) (Cooper, J.)

Represented defendant Alcon (ophthalmic product subsidiary of Nestle) in complex pharmaceutical patent infringement matter involving non-steroidal anti-inflammatory drugs (NSAIDs), against subsidiary of Novartis; persuaded court to expedite resolution due to delay on final FDA drug approval; won summary judgment on all claims on eve of trial leading to highly favorable settlement before Federal Circuit argument. Ciba Vision Corp. v. Alcon Laboratories, Inc. 1997 WL 667942 (N.D. Tex. 1997)

Represented Smith & Nephew in complex patent infringement matter eventually involving six patents directed to orthopedic products such as femoral nails, total knee replacement systems, and coatings. Smith & Nephew, Inc. v. Howmedica, Inc., CV 97 2811 DV (W.D. Tenn. 1997)

Represented Scandipharm in complex patent infringement/trade secrets action involving partially desulfated heparin compositions therapeutic in treating cystic fibrosis. Scandipharm, Inc. v. Glycomed, Inc. 94-1075-A (E.D. Va. 1995) 

Computer, Semiconductor and Networking Technologies Representations:

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

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

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

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

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

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

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

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

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

Lead counsel for Samsung in 2 patent dispute involving Optical Disk Drives (ODDs) and interfaces; case currently in discovery. 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 Cisco in multi-defendant case involving parental control patents; case resolved favorably. Guardian Media Technologies, LTD. v. Cisco Systems, Inc. and Scientific Atlanta LLC (C.D. Cal. 2009; Real, J.)

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

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. LG Electronics, Inc. v. Vizio, Polaroid Corporation, Proview, Westinghouse Digital (E. D. Tex. 2008; Folsom, 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, Inc, et al. (E. D. Tex. 2008; Davis, 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. Document Generation Corporation v. McKesson Information Solutions LLC, Physicians Micro Systems, Inc, et al. (S. D. Ill. 2007; Murphy, J.) 

Counsel for Radiant, declaratory judgment plaintiff, in patent infringement claim involving point of sale computing systems; case settled favorably before discovery. Radiant Systems, Inc. v. Ameranth, Inc. (N.D. Ga. 2007; Batten, 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. NICE Systems, Ltd. and NICE Systems, Inc. v. Witness Systems, Inc. (D. Del. 2006; Farnan, 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. 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 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. IPCO, Inc. v. Cellnet Technologies, Inc., Hunt Technologies, Inc. (N. D. Ga. 2006; Carnes, J.)

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

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

Lead trial counsel for CipherTrust in trademark and unfair competition claim the federally registered mark CipherTrust® and the accused infringer CyberTrust, Inc.; bench trial in 2005 and subsequent settlement. CipherTrust, Inc. v. CyberTrust, Inc. (E.D. Va. 2005, Hilton, J.) 

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. iEntertainment, Inc. v. Valve LLC and Vivendi Universal Games, Inc. (W.D.N.C. 2004) 

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

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

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. CAPS Logistics, Inc. v. Velant, Inc. et al. (Fulton Superior Court, Ga. 2003)

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. Hilgraeve, Inc. v. Ciphertrust, Inc. and Sophos, Inc. (E.D. Mich. 2002)

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. Arrival Star v. SITA Information Technology Computing USA, Inc., et al. (N.D. Ga. 2002; Forrester, J.) 

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. IEX Corporation v. Blue Pumpkin Software, Inc. (E.D. Tex. 2002)

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. Witness Systems, Inc. v. Knowlagent, Inc. (N.D. Ga. 2002; Story, J.) 

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. 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) 

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. DOT Connectors, Inc. v. J.B. Nottingham, Inc. d.b.a. Duraline, 4-99-CV311-WS (N.D. Fla. 2000)

Chemical Representations:

Lead counsel for ACI in complex patent litigation involving two patents and trade secrets in the field of combustion systems and burner designs used in electric arc furnaces; obtained favorable Markman ruling through special master that court adopted after reconsideration by master; settled favorably in 2002. American Combustion, Inc. & American Air Liquide, Inc. v. Process Technology, Inc., 1:97-CV3299-CC (N.D. Ga. 1998) (Cooper, J.) 

Represented defendant Weston in patent litigation involving methods of removing polychlorinated biphenyl compounds (PCBs) from contaminated soil and sludge. Recycling Sciences, Inc. v. Roy F. Weston, Inc. Civil Action No. 95 C 4422 (N.D. Ill. 1995) 

Trial counsel for defendant on trade secrets and contempt issues concerning industrial chemicals and formulas. Novamax, Inc. v. Southern Industrial Chemicals, Inc. (N.D. Ga. 1995; Shoob, J.) 

Trial counsel for defendant on patents concerning flotation systems for construction of structures on bodies of water; case tried in 1994; full judgment for client. Formex, Inc. v. Sullivan Flotation Systems, Inc. (N.D. Ga. 1993) (Forrester, J.)  

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

• "Movers," The National Law Journal, November 7, 2011
• "People on the Move," Silicon Valley/San Jose Business Journal, November 4, 2011
• "On the Move," The Lawyer, October 31, 2011
• "Movers & Shakers," Daily Deal, October 25, 2011
• "The Churn: Lateral Moves and Promotions in The Am Law 200," The AmLaw Daily, October 21, 2011
• "Sheppard Mullin Adds Fish & Richardson Office Founder," Daily Journal, October 19, 2011
• "Sheppard Mullin Snags Fish & Richardson IP Litigator," Law360, October 18, 2011
• "Sheppard Mullin Adds Nick Setty to IP Practice Group," Silicon Valley/San Jose Business Journal, October 18, 2011
• "Sheppard Mullin Poaches Fish & Richardson IP Partner," The Recorder, 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).

Intellectual Property Law Blog Articles

• "Section viii Statements -- Still A Viable Route to Generic Approval Where the Application Is Not Claimed in an Orange Book Patent," April 20, 2012 
• "Federal Circuit Narrows Claim Construction Options in Game Controller Suit," February 24, 2012 

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)