Zach's practice focuses on technology-related disputes and transactions. He represents tech companies in complex litigation, with an emphasis on patent and trademark cases. Zach also specializes in the licensing and commercialization of intellectual property, including advising venture capitalists and companies on transactions involving technology and intellectual property assets.
Intellectual Property and Technology Litigation
Zach has significant experience representing both alleged infringers and IP owners in all stages of litigation. He has particular expertise working with technologists to develop infringement and invalidity theories; working with economic experts on issues concerning the determination of a reasonable royalty; and litigating issues concerning the assertion of IP that is declared essential to industry standards. Examples of Zach’s recent work in this area include the following representations:
- Google as defendant in the District of Delaware in an action alleging infringement of three patents related to graphical software interfaces.
- Google as defendant in an action in the Central District of California alleging infringement of a patent related to cellular messaging standards.
- YouTube as defendant in an action in the Central District of California alleging infringement of five patents related to the H.264 and HEVC standards for digital video encoding.
- Ericsson as patentee in the Northern District of California in a case involving numerous patents declared essential to the LTE cellular communications standard.
- Versace as plaintiff in a trademark infringement and dilution case in the Northern District of California.
- Verizon as defendant in an action in the Eastern District of Virginia alleging infringement of five patents pertaining to fiber optic network components.
- Panda Express as defendant in the Eastern District of Texas in a case pertaining to induction heating technology.
- 1-800 Contacts in a six-week trial at the Federal Trade Commission regarding the antitrust and trademark consequences of using competitor trademarks to trigger keyword advertising on search engines.
In addition to patent and trademark cases, Zach has represented technology companies in civil litigation involving a wide variety of products and services, including medical devices, networking equipment, pharmaceuticals, restaurant equipment, social media, software, and semiconductors. He has particular expertise defending corporate clients in consumer class actions, including successfully defeating class certification in state and federal court. Zach’s experience also includes litigating disputes concerning Internet-based regulations, such as the Digital Millennium Copyright Act, the Communications Decency Act, the Electronic Communications Privacy Act, and the Computer Fraud and Abuse Act.
Zach counsels individuals, venture capitalists and corporations regarding transactions involving technology and intellectual property. He has particular experience negotiating and drafting technology license agreements, advising on VC-backed financings of start-ups, and counseling both buy-side and sell-side clients on mergers and acquisitions that involve IP assets. Examples of Zach’s recent work in this area include the following representations:
- Intel in the $9 billion sale of its NAND memory business to SK Hynix.
- The founder of Credit Karma in the acquisition of Credit Karma by Intuit.
- The founder of Siggi’s yogurt in the acquisition of the brand by French dairy firm Lactalis.
- Phil Ruffin in his acquisition of the Casino Miami.
- The J. Paul Getty Trust in leading a consortium of foundations in the acquisition of the photographic archive of Ebony and Jet magazines at auction.
- The founder of a U.S.-based advertising agency in the acquisition of the agency by a foreign conglomerate.
- An Oscar Award-winning content creator in the purchase of the assets of a film production company.
- A privately-held technology company in winding down a joint venture, purchasing the remaining membership interests of the JV entity, and the transfer of related technology.
- A venture capital fund in structuring the technology licensing agreements of its portfolio companies.
- A technology start-up that focuses on industrial coatings in negotiating license agreements, exclusivity agreements, and joint development agreements with its partners.