|Copyright © 2011 Web Talk with Bob - Robert J. Sherwood
All rights reserved. Privacy statement and policy
Heller Ehrman White & McAuliffe.
Overture Services, Inc. (Yahoo!) v. FindWhat.com. Case No. SACV 03-00685 (CJC) (EX). The lawsuit charged FindWhat.com with infringement of
Yahoo! U.S. Patent No. 6,269,361 (the '361 Patent). The '361 Patent protects various features and innovations
relating to bid-for-placement product and pay-per-click performance technologies.
Engaged to determine the presence of secondary considerations, an indicia of non-obviousness, for establishing patent validity,
establish reasonable license fees under a hypothetical negotiation, examined Google and FindWhat business plans, pay-per-click implementation
methods, non-infringing substitutes, provided expert report, deposition and testified at jury trial for plaintiff.
Vinson & Elkins, McDermott Will & Emery, Fulbright and Jaworski
Orion IP, LLC v. Staples et al (Harley Davidson, Toyota, and Home Depot) Civil Action NO. 2:04-CV-297 (LED). Orion IP asserted
U.S. Patent No. 5,367,627 (the '627 Patent) and U.S. Patent No. 5,615,342 (the '342. Patent) against all Defendants.
Engaged to examine intellectual property valuation based on two patents, alternative cost issues surrounding the implementation of
non-infringing substitute computer-based methods for the ‘342 and ‘627 patent, estimating non-infringing substitutes, estimate hypothetical
negotiation licensee fees, examine patent invalidity based on prior art, Website analysis, valuation of custom designed software and custom and
practice issues associated with intellectual property licensing fees. Expert report and deposition for Defendants.
Shughart Thomson & Kilroy
Emergis Technologies, Inc., f/k/a BCE Emergis Technologies, Inc. v. Kansas City Power & Light CO., In the United States District Court for the
Western District of Missouri Kansas City Division, Civil Action No. 06-0201-CV-W-REL.
Emergis filed suit against KCP&L alleging infringement of a patent, entitled “Electronic Invoicing and Payment System” No. 6,044,362 (“the '362
Patent”) and seeking unspecified monetary damages and injunctive relief. This patent relates to automated electronic bill presentment and
payment systems, particularly those involving Internet billing and collection. Engaged to estimate a non-infringing substitute, establish a license
fee based on hypothetical negotiation, examine license agreement for conformance to specifications and software distribution rights. Engaged by
defendant. Prepared expert report.
Arnold & Porter LLP and Norris Keplinger & Logan LLP
CSU, Inc. v. Xerox, Inc. In 1994, CSU filed suit against Xerox, alleging that Xerox violated the Sherman Antitrust Act by
monopolizing the market for high speed copiers. The central issue was whether a unilateral refusal to license or sell intellectual property protected
by patent or copyright is absolutely immune from a claim of monopolization and attempted monopolization under Section 2
of the Sherman Antitrust Act. Xerox counter claimed for patent and copyright infringement.
Engaged to analyze the CSU $20 million business and determine if CSU would have grown to $100 million, but for Xerox’s refusal to
sell CSU a patented product. Examined all documents such as financials, bank loans, management, business plans, capital formation documents
and board decisions. Expert report, trial preparation and deposition for defendant.
Law Office of Mick Lerner, PA and Stinson, Mag & Fizzell
4th Trimester v. Reed Publishing, et al. Determine the value of a technology business. Expert report, deposition and testify at Arbitration for
Thelen Reid & Priest LLP
DJ&J Software Corporation dba Egghead Software and Elecom Corporation v. Casahl Technology, Inc. Examine sales of software
from a reseller, but for developer’s refusal to supply current versions, ability of distributor to manage software through normal
sales channels, value of software and quantity that would have been sold, but for software developer’s actions. Expert report and deposition for
Ascano & Campo LLP
Silicon Valley IPO Network et al. v. Kevin Von Poppen et al. Determine business value of video compression software had venture capital firm
invested in startup and provided initial funding. Expert report for plaintiff.
Morrison & Hecker LLP
Universal Business Computing Company, Inc. and Ken Garen v. Global Enterprise Solutions, Inc. and Brian Unger. Determine value
of founders equity share in the business had the founders had an agreement in writing for equity ownership, determine share price and actual total
share ownership under premature departure of one of the cofounders. Expert report, deposition and testify at
Arbitration for defendant.
Steefel Levitt & Weiss
Examine license agreement and software for conformance to contract specifications for functionality and use. Expert report and deposition.
Grey Cary Friedenrich
Examine license agreement for computer hardware and software for conformance to contract specifications for functionality and use. Consultant
Cooley Godward LLP
Examine license agreement and software for conformance to contract specifications for functionality and use. Consultant.
Michael Best & Friedrich
Examine websites for duplication of code and ownership of various software website commerce and affiliate development components. Expert report
Cotton & Gundzik LLP
Digital Insight v. HNC Software. Examine co-branding, OEM relationship, software customization, licensing of website and business loss due to
inappropriate distribution of website software.
Examine license agreement for conformance to specifications and software distribution rights. Expert report for plaintiff.
Crosby Heafey Roach & Smith
Raytheon Company vs. Webgear, Inc. & Ted Cooper, Case No. V-020232-9 Superior Court of California County of Alameda.
Examine license agreement for conformance to specifications, verification of computer hardware and software documentation instructions,
verification of software and wireless computer product use and determine value of software. Expert report for plaintiff.
Howrey Simon Arnold & White LLP
Business Management Systems Corporation v. Cable & Wireless USA, Inc. Civil Action No. 00-B-1069 United States District Court. Examine
software best practices of enterprise software developer and methods of measuring license requirements, measurement data, and verification of
software use, functionality and conformance with contract purchase development specifications. Examine license agreement for conformance to
specifications and software distribution rights. Expert report, deposition and testified at trial for defendant.
Mannatt Phelps & Phillips LLC
Verity, Inc. v. Broadvision, Inc. Case No. C01-20501 RMW (PVT) ADR United States District Court for the Northern District of California San Jose
Division, Examine license agreement and software for conformance to specifications, analyze customer software purchase levels for various levels
of product upgrades, determine the number of customers that would have upgraded, but for the licensee’s inappropriate software distribution.
Expert report, deposition and testified at Arbitration for plaintiff.
Schlagel Damore & Gordon
Determine value of enterprise software to licensor where licensee had developed a derivative product, examine business history, development and
reproduction costs. Expert report and deposition for plaintiff. Examine license agreement for conformance to specifications and software
Crosby Heafey Roach & Smith
Examine license agreement for conformance to specifications and software distribution rights. Expert report for defendant.
America On-Line Corporate Counsel
Investigate the methods that might be used to establish comparative market values for email addresses and to indicate possible economic
benchmarks. Civil suit regarding stolen email addresses and damages resulting from spamming. Consultant to AOL.
Boies, Schiller & Flexner LLP
The SCO Group Inc. vs. International Business Machines Corporation United States District Court, District of Utah,
Case No. 03-CV-0294. Examine license agreements for derivative product rights, best practices with respect to derivative products, conformance to
license agreement specifications for software development, use and distribution. Expert report for plaintiff.
Law Offices of Jeffery P. Widman
SunLan Corporation vs. Zenith Infotech, Inc. Case No. 04CC02648 Superior Court of California, County of Orange Examine issues relating to sale
of goods, distributor revenue sharing and pricing with respect to industry practices for computer hardware and
software, OEM licensing and distribution agreements. Examine license agreement for conformance to specifications and
software copy distribution rights. Expert report and deposition for defendant.
Chan Law Group
Perfumebay.Com, Inc. vs. EBAY, Inc., Case No.: CV04-1358 WDK (SSx) United States District Court for the Central District of California,
Examine issue surrounding the use of trade names in a domain name including search return listings. Expert report for plaintiff.
Latham & Watkins LLP
Itech Group, Inc. v. National Semiconductor Corporation. Case No. CV 810872 Superior Court of the State of California County of
Santa Clara, Examine source code and object code license agreements and investment letters of intent surrounding a software licensing dispute.
Expert report, deposition and testified at jury trial for defendant.
Latham & Watkins LLP
GR Match LLC v. Market Range LLC, et al. AAA Case Number 75-181-Y-00067-06 Examine issues relating to Website tracking methodologies for
sponsored ads, natural search returns, advertising, customer life time value and affiliate tracking. Expert report and deposition for plaintiff.
CAPOBIANCO AND BRAM, LLP
Dovebid, Inc. v. eBay Inc., United States District Court for the Central District of California. Consultant for plaintiff.
Orrick, Herrington & Sutcliffe LLP
Viewsonic Corporation vs. AmTran Technology Co., Ltd. United States District Court, Central District of California Case No. CV 05-5864 GAF
(RZx). Expert report for defendant.
Mayer, Brown, Rowe & Maw LLP
Positive Ions, Inc. v. ION Media Networks, Inc. United States District Court Central District of California Case No. CV 06-4296 ABC (FFMx).
Expert reports for defendant and counter claimant.
Needham, Davis, Kepner & Young, LLP
Ecompare v. Priceline.com. Engaged as a consultant for plaintiff in trade secret matter.
Farella Braun + Martel LLP
Securities and Exchange Commission v. Mark Leslie, United States District Court Northern District of California San Jose Division, Civil Action
No. Action No. C 07-3444 JF. Engaged as expert witness for defendant. Expert report and deposition.
Allen Dell, P.A.
Pegasus Imaging Corporation v. Northrop Grumman Corporation et al., In the United States District Court, Middle District of
Florida, Tampa Division Case No. 8:07-cv-01937. Engaged by Plaintiff. Examine license agreement for conformance to specifications and software
copy distribution rights. Provided Expert report, deposition, trial assistance. The matter concerned a software developer kit license interpretation,
software development best practices, software deployment methods, runtime analysis, and derivative product issues.
Trancos, Inc. dba Coregmedia vs. Brain Harley, Tallac Ventures, Inc., dba Tallacmedia.com and dba Leadshot, Superior Court of California, County
of San Mateo-Case No. CIV-492361. Engaged by Plaintiff. Provided expert analysis and deposition assistance. The matter concerned trade secret
misappropriation, breach of employment contract, Internet advertising, lead generation,
affiliate tracking, and website development and deployment.
Nixon Peabody LLP
Serena Software, Inc. v. Con-Way Inc. Case No. CIV 491585. Engaged b y Defendant. Expert report. Examine license agreement for conformance
to specifications and software copy distribution rights. Plaintiff contends that defendant breeched a license agreement. Further that because of this
breech, Plaintiff also contends that Defendant should be compelled to pay additional license fees for the
total capacity of all the CPUs in the network.
The Law Office of Ilona Antonyan, APC.
Avalon RF, Inc. vs, WIFI, Pacifitek Systems, Inc. et al. Case No. 868507 Superior Court of the State of California for the
County of San Diego.
Evolution Software, Inc.
Evolution vs. SunTrust Bank, Case No. 01-2409-JWL, United States District Court For The District of Kansas. Provided an expert report on the
valuation of Data Base Management Software programs used in the Premium Finance Industry.
Dempsey & Johnson P.C.
Connie Chein M.D. v. Michele Hakakha et al., Case No. SC112820, Superior Court for the State of California for the County of Los Angeles.,
Complaint for unauthorized use of Plaintiff’s name, false advertising, unfair competition. Engaged as consultant to examine Google Places, mobile
device merchant selection, Website development techniques, traffic redirect from competitive Websites.
Equal Employment Opportunity Commission
EEOC v. Dolgencorp, LLC, Case No. 1:11-CV-0755-SEB-DKL, in the United States District Court for the Southern District of Indiana Indianapolis
Division. Engaged by EEOC to determine the compatibility of Defendant’s hardware, operating systems and application software with any text to
speech or speech to text software including providing an expert report, deposition and trial testimony.
Shaub & Williams LLP
Pricegrabber.com, Inc. v. Unister GMBH, United States District Court Central District of California Case No. CV 10-09580 SJO(MANx). Engaged by
Unister to provide expert report, deposition and trial testimony. Dispute involves items such as, CPM for advertising, merchant analysis, click thru
rates, key word selection techniques, co-branding, SEM campaigns, exclusivity content agreements, click thru conversion rates, affiliate
agreements with Amazon, Overture and ShopZilla, Google AdWords, revenue sharing and tracking analytics.
|Consultant to legal community and technology startups