Photo of Stephen S. Korniczky

Stephen S. Korniczky

Partner
San Diego (Del Mar)
T: 858.720.7443
F: 858.720.4882

Education

  • J.D., State University of New York - Buffalo School of Law, 1987
  • B.S., Mechanical Engineering, Polytechnic University, 1984
  • Judicial Law Clerk to the Honorable Giles Sutherland Rich, U.S. Court of Appeals for the Federal Circuit from 1991 to 1993
  • California
  • United States Patent and Trademark Office
Overview
Honors
Experience
Thought Leadership
Memberships

Stephen Korniczky is a partner and former Co-Practice Leader of the firm's Intellectual Property Practice Group, which has more than 100 attorneys.

Areas of Practice

Mr. Korniczky is a trial lawyer who focuses his practice on litigating patent, trade secret and other intellectual property cases. Over the past 30 years, he has handled over 175 patent and other IP lawsuits including suits relating to standard essential patents (SEPs) and worldwide FRAND license obligations in district courts throughout the US, before the International Trade Commission and on appeal to the US Court of Appeals for the Federal Circuit. He has litigated patent cases on behalf of internationally based, publicly traded and emerging companies in many diverse technologies, including wireless communications, CDMA, WCDMA, WiMAX, HSPA, Wi-Fi, GPS, USB and wireless modems, LTE, Video and Audio compression, CDMA2000, Multimedia Messaging Service (MMS), Android Operating System (OS), Internet systems, web-browsers for wireless devices, software, liquid crystal displays (LCD), televisions, IC devices and semiconductor processes, artificial intelligence and fuzzy logic systems, automotive technologies, and medical devices.

Recently, Mr. Korniczky was lead counsel for TCL Communication Technology Holdings in a three-week trial in a breach of contract and declaratory judgment action it filed against Ericsson Inc. et al. in the Central District of California seeking a FRAND license to Ericsson’s 2G, 3G and 4G SEP portfolio. Leading up to the trial, Mr. Korniczky secured a worldwide anti-suit injunction against Ericsson preventing it from pursuing a dozen actions it filed against TCL in six foreign jurisdictions. Likewise, when Ericsson filed a related action asserting five implementation patents in the Eastern District of Texas, Mr. Korniczky filed 17 IPR petitions which were subsequently instituted by the Patent Office resulting in the invalidation of four of the five patents.

Mr. Korniczky was also lead counsel for Defendants HTC Corporation, HTC America and Exedea Inc. (collectively "HTC") in a patent infringement action brought by Wi-LAN, Inc. in the Eastern District of Texas. Wi-LAN alleged that HTC infringed its standard essential patent (SEP) covering the 3GPP HSDPA mobile phone standard. After a six-day trial, the jury awarded a complete defense victory finding that HTC did not infringe the asserted patent, and that the patent claims are invalid based on anticipation and/or obviousness.

Mr. Korniczky also represented Defendants HTC Corporation and HTC America, Inc. in a two patent infringement action brought by Intellect Wireless in the Northern District of Illinois. At trial, the Honorable William T. Hart ruled that Intellect Wireless had engaged in inequitable conduct before the Patent Office rendering the patents unenforceable and dismissed the lawsuit. The decision was upheld on appeal to the Federal Circuit and, subsequently, the case was found to be exceptional, and Intellect Wireless and its litigation counsel were held jointly and severally liable for HTC’s attorney fees and costs. The patents covered wireless portable communication devices that receive and display caller ID information, non-facsimile pictures, video messages and/or Multimedia Messaging Service.

Mr. Korniczky is registered to practice before the U.S. Patent and Trademark Office, and has significant experience prosecuting patent applications and handling reexamination and IPR procedures. He utilizes his combined prosecution and litigation background to provide strategic counseling to clients on business oriented IP licensing and portfolio development plans. He has successfully designed and implemented value-added strategies to raise venture capital, generate licensing revenue, cross-license competing IP and position companies for acquisition.

For example, Mr. Korniczky designed and implemented a patent strategy for Cameron Health, a Carlsbad medical device company, to protect its Subcutaneous Cardio Implantable Defibrillator (S-ICD) system and attract over $25 million in venture capital. Subsequently, Cameron Health received an equity investment from Boston Scientific in exchange for an exclusive option to buy the company.

Honors

  • The World's Leading Patent Professionals, IAM Patent 1000, 2017
  • Life Fellow, The American Bar Foundation, 2014 to present
  • Fellow, Litigation Counsel of America, 2012 to present
  • Intellectual Property Trailblazer, The National Law Journal, 2016
  • IP Star, Managing Intellectual Property, 2015-2016
  • Litigation Departments of the Year – Giant Slayer, The Recorder, 2016
  • Chambers USA, 2008-2013
  • Legal 500, 2007
  • Best Lawyers in America, 2006-2017
  • Top 30 IP Attorneys, Daily Journal, 2005
  • Top Intellectual Property Attorneys, Daily Journal, 2015
  • Top Lawyers, San Diego Magazine, 2013-2017
  • San Diego Super Lawyer, 2007, 2010-2017
  • Top 10 IP Litigators in San Diego, San Diego Daily Transcript, 2015
  • Litigator of the Week, The American Lawyer, January 15, 2015
  • Litigation Star, Benchmark Litigation, 2015-2017

Experience

Representative Cases

  • TCL Communication Technology Holdings v. Telefonaktienbolaget LM Ericsson and Ericsson Inc. (C.D. Cal.)
    Represents TCL in a breach of contract and declaratory judgment action relating to ETSI and 3GPP IPR policies and Ericsson’s obligation to license its standard essential patents (SEPs) relating to 2G GSM/GPRS/EDGE, 3G UMTS and 4G LTE under fair, reasonable and non-discriminatory (FRAND) terms.
  • Ericsson Inc. and Telefonaktienbolaget LM Ericsson v. TCL Communication Technology Holdings, et al. (E.D. Tex./C.D. Cal.)
    Represents TCL in a two patent infringement action relating to Ericsson’s alleged standard essential patents (SEPs). Successfully moved to transfer action from Eastern District of Texas to the Central District of California.
  • Ericsson Inc. and Telefonaktienbolaget LM Ericsson v. TCL Communication Technology Holdings, et al. (E.D. Tex.)
    Represents TCL in a five patent infringement action relating to telecommunication standards, operation of chipsets, and Android OS. Four of five patents were invalidated after Patent Office instituted 17 of 17 IPR petitions.
  • Lattice Semiconductors v. Technicolor (D. Del.)
    Represent founding member of HDMI standard in SEP infringement action and defense of allegations of breach of FRAND license obligations.
  • MLR, LLC v. TCL Communication Technology Holdings Limited (N.D. Ill.)
    Represented TCL in a six patent infringement lawsuit involving Wi-Fi enabled and broadband-capable portable handsets. Case dismissed.
  • Intellect Wireless v. HTC Corporation, et al. (N.D. Ill.)
    Represented Defendants HTC Corporation and HTC America, Inc. in a two patent infringement action brought by Intellect Wireless in the Northern District of Illinois. At trial, the Honorable William T. Hart ruled that Intellect Wireless had engaged in inequitable conduct before the Patent Office rendering the patents unenforceable and dismissed the lawsuit. The decision was upheld on appeal to the Federal Circuit. Subsequently, the case was found to be exceptional, and Intellect Wireless and its litigation counsel were held jointly and severally liable for HTC’s attorney fees and costs. The patents covered wireless portable communication devices that receive and display caller ID information, non-facsimile pictures, video messages and/or Multimedia Messaging Service.
  • Intellect Wireless v. HP/Palm, et al. (N.D. Ill.)
    Represented Defendants Hewlett-Packard Co. and Palm, Inc. in a two patent infringement matter regarding wireless portable communication devices that receive and display caller ID information, non-facsimile pictures, video messages and/or Multimedia Messaging Service. The Honorable Rebecca Pallmeyer granted HP/Palm's motion for summary judgment that the patents are not directly infringed. Subsequently, the case was found to be exceptional, and Intellect Wireless and its litigation counsel were held jointly and severally liable for HP/Palm's attorney fees and costs.
  • Internet Patents Corporation v. Tree.com, et al. (Fed. Cir.)
    On appeal to the Federal Circuit, obtained precedential opinion on behalf of Tree.com finding asserted patent ineligible on a Rule 12(b)(6) motion.
  • Honeywell v. Samsung SDI and Samsung Mobile Display (D. Del.)
    Represented Defendants Samsung SDI and Samsung Mobile Display in a patent infringement action related to LCD backlighting technology. On summary judgment, we invalidated the asserted patent based on the on-sale bar after 23 other defendants licensed the patent-in-suit. The decision was upheld on appeal to the Federal Circuit.
  • Conexant Systems, Inc. v. Novellus Corporation (Orange County Sup. Ct.)
    Arbitrated an indemnity action on behalf of Conexant against supplier of semiconductor manufacturing equipment. Client was awarded a confidential sum of money.
  • Qualcomm v. Conexant Systems and Skyworks Solutions, (S.D. Cal.)
    Represented defendants in an action initiated by Qualcomm asserting nine patents and a trade secret misappropriation claim. Defendants counter-claimed with four patents and a trade secret misappropriation claim of their own and, subsequently, filed an early motion to compel Qualcomm’s confidential license arrangement with customers, a motion for sanctions for withholding discovery and a motion for summary judgment of non-infringement. After all three motions were granted and Qualcomm’s liability claim was eliminated, Qualcomm agreed to settle the dispute paying defendants tens of millions of dollars.
  • Wi-LAN v. Alcatel (E.D. Tex.)
    Represented HTC Corporation and HTC America, Inc. in a multi-patent lawsuit relating to 3G cellular technology, including HSDPA, HSUPA, and HSPA. After a six-day jury trial, obtained a complete defense verdict that HTC did not infringe the asserted patents and all of the asserted claims were invalid as anticipated and/or obvious. The trial victory led to a global settlement of several other lawsuits that Wi-LAN had filed against HTC.
  • Wi-LAN v. Apple (E.D. Tex.)
    Represented HTC America, Inc. in a multi-patent lawsuit relating to Wi-Fi, HSPA, LTE and CDMA2000 (EVDO Rev. A) technologies. Obtained favorable settlement after trial victory in related case.
  • Wi-LAN v. PCD (E.D. Tex.)
    Represented Personal Communication Devices, LLC (PCD) in a two patent lawsuit relating to Wi-Fi and CDMA2000 technologies. Obtained an extremely favorable settlement for PCD after filing three motions for summary judgment on PCD's behalf.
  • Wi-LAN v. HTC (E.D. Tex.)
    Represented HTC Corporation and HTC America, Inc. in a multi-patent lawsuit relating to Wi-Fi, LTE, Wi-MAX and CDMA2000 (EVDO Rev. A) technologies. Obtained favorable settlement after trial victory in related case.
  • Freeny, et al. v. HTC America, Inc. (E.D. Tex.)
    Represented HTC America, Inc. in a four patent infringement lawsuit involving a multiple integrated machine system performing multiple digital functions from a single operating system. Favorable settlement reached.
  • Novatel Wireless v. Franklin Wireless (S.D. Cal.)
    Represented Franklin Wireless, Inc. in a four patent lawsuit relating to wireless modems, USB modems, and Wi-Fi.
  • Golden Bridge v. HTC (D. Del.)
    Represented HTC Corporation and HTC America, Inc. in a two patent lawsuit relating to WCDMA 3G technology. Case was dismissed after Federal Circuit affirmed summary judgment decision of non-infringement.
  • UO! IP of Delaware v. HTC (D. Del.)
    Represented HTC Corporation in a two patent lawsuit relating to language translation devices. Successfully negotiated an early license on extremely favorable terms.
  • MediaTek, Inc. v. Sanyo Electric Co. (E.D. Tex.)
    Represented plaintiff in a three patent infringement action covering integrated chipset solutions for compressing video and audio data in cameras, DVDs and televisions. Case favorably settled on eve of trial.
  • Taiwan Semiconductor Mfg. Co. v. Semiconductor Mfg. Int'l Corp. (N.D. Cal.)
    Represented defendant in an action of over $1 billion in damages claimed based on the alleged misappropriation of trade secrets and infringement of fourteen patents regarding a variety of semiconductor fabrication processes, SRAM designs and related technologies. Case favorably settled for a cross-license in exchange for $175 million.
  • Turn-Key-Tech LLC v. Hitachi-Maxwell Ltd., et al. (S.D. Cal.)
    Represented plaintiff in a patent infringement action in the field of injection molding. Case favorably settled and defendant agreed to license patent under confidential terms.
  • Allied Steel & Tractor Products, Inc. v. Pierce Arrow Int'l, Inc., et al. (E.D. Wis.)
    Represented the plaintiff/patentee in a three-week infringement trial involving a patent in the pneumatic tool industry. The patent was held valid and infringed, and $14 million in damages were awarded.
  • Apcon v. MRV Communications (C.D. Cal.)
    Represented MRV Communications, a leading provider of telecommunications equipment. After Apcon threatened MRV's customers and sued MRV for patent infringement, we countersued with claims of patent misuse, inequitable conduct, and unfair competition. Within 10 months, Apcon surrendered its patent suit by agreeing to a no payment walk-away settlement and agreed to issue a press release stating that MRV's products do not infringe any Apcon patent and that MRV's customers can conduct business without fear of reprisal from Apcon.
  • Datascape, Inc. v. Sony Ericsson (N.D. Ga.)
    Represented Sony Ericsson in a six patent infringement action. The accused technology relates to data communications and Internet access in wireless devices.
  • Datascape, Inc. v. Kyocera Wireless (N.D. Ga.)
    Represented Kyocera Wireless in a six patent infringement action. The accused technology relates to data communications and Internet access in wireless devices.
  • NovelPoint Tracking LLC vs. Hyundai Motor America (E.D. Tex.)
    Represented Hyundai Motor America in patent lawsuit relating to GPS-based multimedia navigation systems. Negotiated favorable settlement for client in early stages of litigation.
  • NovelPoint Tracking v. TCT Mobile (E.D. Tex.)
    Represented TCT Mobile in a patent lawsuit relating to GPS technology. Obtained favorable settlement.
  • Litex, Inc. v. Delphi Automotive Systems Corp. et al. (D. Mass.)
    Represented plaintiff in a two patent infringement action covering non-thermal plasma enhanced catalytic converters for reducing pollutant emissions from motor vehicles. Case settled in arbitration under confidential terms.
  • Directed Electronics, Inc. v. Allen Hayes and LTH Electronics (S.D. Cal.)
    Represented plaintiff in a multiple patent infringement action in the field of electromagnetic sensors in the vehicle security industry. Case settled after preliminary injunction obtained.
  • Directed Electronics, Inc. Patent Enforcement Campaign (California, Texas and New York District Courts)
    Represented plaintiff in a multiple patent infringement action against over 40 infringers in the field of electromagnetic sensors in the vehicle security industry. Consent judgment, permanent injunctions and/or damages obtained in all cases.
  • Amersham Pharmacia Biotech, Inc. v. The Perkin-Elmer Corporation (and Celera Genomics) (N.D. Cal.)
    Represented the plaintiff/patentee in an infringement action in the DNA sequencing industry seeking over $1 billion in damages. Won motion for summary judgment that patent is infringed. Case favorably settled on confidential terms.
  • IDEXX Laboratories, Inc., et al. v. Neogen Corporation (D. Conn.)
    Represented the plaintiffs in a patent infringement action in the field of diagnostics for E.coli and total coliforms. Case favorably settled after preliminary injunction obtained.
  • Environetics, Inc. et al. v. Millipore Corporation (D. Conn.)
    Represented Plaintiffs Environetics, Inc., Access Medical Systems, Inc. and two Yale Professors in a patent infringement action against Millipore Corporation to enforce a patent covering a system for testing water samples for the presence of certain bacteria and microbes, specifically E. coli and coliforms. On the eve of trial, Millipore agreed to exit the business, discontinue selling its infringing product and pay Plaintiffs a confidential sum of money.
  • Edberg v. CPI-The Alternative Supplier, Inc. (D. Conn.)
    Represented plaintiff in patent infringement suit to enforce patents covering diagnostic for E. Coli and total coliforms. Case favorably settled.
  • GenSci Regeneration Lab., Inc. v. Osteotech, In (C.D. Cal.)
    Represented Plaintiff in declaratory judgment, unfair competition and business tort action involving bone regeneration patents and technology. Case favorably settled.
  • Nanogen, Inc. v. Motorola, Inc., et al. (S.D. Cal.)
    Represented the plaintiff in a declaratory judgment action of non-infringement and patent invalidity in the area of DNA biochip arrays. Case favorably settled.
  • DigiVision, Inc. v. DigiVision Satellite Services, Inc., et al. (S.D. Cal.)
    Successfully represented plaintiff, a national video enhancement technology producer, against trademark infringer. Case settled in mediation after defendant agreed to discontinue use of mark.
  • Laminating Co. of America v. Tri-Star Laminates (C.D. Cal.)
    Represented the defendants in a trade secret theft action in the printed circuit board industry. Case favorably settled.
  • Martin v. Walt Disney Internet Group and ESPN (S.D. Cal.)
    Successfully defended Disney and ESPN against motion for preliminary injunction. Decision was subsequently upheld by the Ninth Circuit Court of Appeals.
  • Microsoft Corporation v. Lindows.com, Inc. (W.D. Wa.)
    Represented defendant, a computer operating system developer, in trademark and unfair business practice action. Defeated Microsoft's motion for preliminary injunction and obtained ruling from the Court questioning the validity of the "Windows" trademark.

Articles

  • "China Issues White Paper Setting Forth Efforts, Progress In Protecting IP," Law Week 2005, San Diego Transcript, May 3, 2005
  • "China's Intellectual Property Law Changes Will Help U.S.," Los Angeles Daily Journal, August 9, 2004
  • “Building A Great Wall For Your Intellectual Property in China – Challenges and Opportunities for U.S. Companies,” 2004
  • "So Your Company is Growing and Prospering: Are Your Patents Still Enforceable?," San Diego Business Journal, Vol. 19, No. 21, May 25, 1998
  • "An Alternative View: The Hilton Davis Decision," New Matter, State Bar of California Intellectual Property Section, Vol. 21, No. 4, Winter/Spring 1997
  • "Supreme Court Clarifies Doctrine of Equivalents," San Diego Business Journal, March 31, 1997
  • "How to Expand the Value of Your Patent Portfolio," Special Law Report Section, San Diego Business Journal, February 24, 1997
  • "Verdict Forms: A Peek Into The 'Black Box'," Jury Trials In Patent And Other High Tech Litigation § V, 1995
  • "Proving Infringement In View Of Markman v. Westview Instruments, Inc., and Hilton Davis Chemical Co. v. Warner-Jenkinson Co.: Who Does What and When?," Advanced Intellectual Property Litigation Techniques 101-119, December 1995 (also on file with the American Bar Association)
  • Editor, San Diego Intellectual Property Law Association Newsletter, 1998  

 Intellectual Property Law Blog

Media Mentions

Speaking Engagements

  • "Damages in SEP, FRAND and RAND Litigation," Intellectual Property Owners Association – Patent Damages Summit, Palo Alto, California, May 24, 2016
  • “Attorney Fees Post Octane/Highmark,” Los Angeles Intellectual Property Law Association, Los Angeles, California, April 7, 2015
  • “Inequitable Conduct – Unwinding The Tangled Web Of Deceit,” Los Angeles Intellectual Property Law Association, Spring Seminar, Ojai Valley, California, June 6-8, 2014; San Diego Intellectual Property Law Association, San Diego, California, May 29, 2014
  • “Inequitable Conduct – Still A Viable Defense?,” New Jersey Intellectual Property Law Association, Patent Litigation Seminar, Iselin, New Jersey, March 12, 2014
  • "Thinking Outside The Box – A Case Study For Defeating The Patent Troll," The State Bar of California 31st Annual Intellectual Property Institute, Santa Barbara, California, November 2-4, 2006
  • "A View From the Bench – Exploring Regional Patent Litigation Practices in the California District Courts," The State Bar of California 30th Annual Intellectual Property Institute, Napa Valley, California, November 4-5, 2005
  • "Patent Litigation – Local Rules and Practices in the California Courts – Using Early Discovery Rules, Markman Hearings, and Court Directed Settlement Conferences to Manage and Budget Your Case," The State Bar of California 29th Annual Intellectual Property Institute Conference, Anaheim, California, November 6, 2004
  • "Inequitable Conduct – Knaves, Jackals and Defiling the Temple of Justice," ABA - Section of Intellectual Property Law, Summer IPL Conference, San Diego, California, June 19, 2003
  • Co-chair, "Patent Procurement, Licensing and Litigation In China," The Center for American and International Law, ILT Forum, San Francisco, California, January 19-20, 2006
  • “Building A Great Wall For Your Intellectual Property in China – Challenges and Opportunities for U.S. Companies,” 2004
  • "Understanding Intellectual Property Strategies Under The New Accounting Model," San Diego, California, March 28, 2002
  • "Owning Markets: Proven Strategies For Intellectual Property Success," San Diego, California, April 26, 2002

Events

Memberships

  • American Bar Association (ABA), Member
  • American Intellectual Property Law Association (AIPLA), Member
  • Diversity Law Institute, Member
  • Juvenile Diabetes Research Foundation (JDRF), San Diego Chapter — Board Member (2008-2014); Nominating Committee (2015-present)
  • National Asian Pacific American Bar Association (NAPABA), Platinum Member
  • Polytechnic University Alumni Association — Executive Council (1997-2001)
  • San Diego Intellectual Property Law Association — President, (2000-2001), Board Member (1997-2002)
  • San Diego SWAT Officers Association, San Diego Police Department — Board Member (2012-present)
  • State Bar of California
  • San Diego County Bar Association
  • Trial Law Institute, Member
  • USC Intellectual Property Institute — Committee Member (2010-present)