Mieke K. Malmberg
Mieke Malmberg’s practice focuses on complex, high-stakes intellectual property litigation and she is experienced litigating patent, trademark, copyright and trade secret disputes throughout the United States, as well as Section 337 investigations before the International Trade Commission.
Mieke is experienced in the full spectrum of patent litigation from single-patent, single-defendant disputes to multi-district and multi-defendant actions, Paragraph IV disputes under the Hatch-Waxman Act on behalf of both the generic and the brand, disputes involving the assertion of multiple patents and disputes involving standards-essential patents. Additionally, she has handled patent litigation matters covering a wide range of technologies, including matters related to pharmaceutical treatments, medical devices, online distribution, sales and advertising, computer software, consumer electronics, wireless devices and telecommunications, to name just a few.
In addition to her litigation expertise, Mieke is an expert in practicing before the United States Court of Appeals for the Federal Circuit, from briefing to oral argument, and has obtained two leading precedential opinions. See Ultramercial v. Hulu, 722 F.3d 1335 (Fed. Cir. 2013), rev’d, 772 F.3d 709 (Fed. Cir. 2014) (subject matter patentability); Oplus v. Vizio, 782 F.3d 1371 (Fed. Cir. 2015) (attorneys’ fees). Mieke has had particular success in winning Federal Circuit appeals on cases taken over post-trial.
Mieke’s background in biochemistry and cell biology and her solid laboratory experience helps her to communicate seamlessly with technical personnel, expert witnesses and patent prosecution counsel in order to execute case strategy.
In addition to patent litigation matters, Mieke has also handled several trademark, trade secret and copyright matters, and she has counseled clients on due diligence reviews, sales, licensing and indemnity issues relating to intellectual property.
Prior to joining Skiermont Derby LLP, Mieke was a principal at McKool Smith Hennigan, PC, a partner at Glaser Weil LLP, and an associate at Quinn Emanuel Urquhart Oliver & Sullivan, LLP. Mieke was named a “Super Lawyer” in 2015 and 2016, placing her among the top 5% of all practicing lawyers in Southern California, and was named a “Rising Star” for several years before that, placing her among the top 2.5% of Southern California lawyers under 40 years of age.
Mieke speaks regularly on issues relating to recent developments in patent litigation and damages calculations in intellectual property cases.
She graduated from University of California Hastings College of the Law in 2000, where she served as an articles editor for the Hastings Law Journal and where she also received the CALI award for both Intellectual Property Licensing and Legal History of Immigrants in the United States. She earned her bachelor’s degrees in both biochemistry and cell biology and U.S. history from the University of California at San Diego.
Representative Patent Cases on Behalf of Patent Owners
Dey, L.P. v. IVAX Pharmaceuticals, Inc., et. al. (Central District of California)
Represented Dey in a Paragraph IV litigation under the Hatch-Waxman Act against six companies, all competing for the ability to manufacture the generic version of the client’s branded product (a treatment for COPD). Obtained a favorable settlement with all six generic manufacturers.
Ronald A. Katz Technology Licensing, L.P. v. General Electric Capital Corp., et. al. (Central District of California)
Represented plaintiff in a lengthy and complex litigation relating to more than eight separate patents and more than 40 individual patent claims asserted against General Electric entities. This particular litigation was consolidated with more than 40 other cases in a multi-district litigation, making it one of the largest patent cases in U.S. history. Obtained a favorable settlement on behalf of the client.
Golden Bridge Technology Inc. v. Apple, et. al. (District of Delaware)
Represented plaintiff, a pioneer in 3G wireless technology, in an action involving two standards essential patents relating to 3G UMTS wireless telecommunications.
Golden Bridge Technology Inc. v. Apple (Northern District of California)
Represented plaintiff, a pioneer in 3G wireless technology, in an action involving a standards essential patent relating to wireless telecommunications.
Mosaid Technologies, Incorporated v. Dell, Inc., et. al. (Eastern District of Texas)
Represented the patent owner and exclusive licensee in a patent infringement action involving several standards essential patents relating to Wi-Fi. After a hard-fought battle, obtained favorable settlements on behalf of the client with all defendants.
Data Encryption Corp. v. Microsoft Corp. (Central District of California)
Represented the patent owner in a patent infringement action relating to encryption technology.
Activision Publishing Inc. v. Worlds Inc. (Central District of California)
Represented plaintiff, a video gaming company, in a patent infringement action relating to gaming software.
Shire v. Watson (Central District of California)
Represented the brand in a Paragraph IV litigation under the Hatch-Waxman Act relating to oral treatment for attention deficit disorder.
In the Matter of Certain Devices for Mobile Data Communication (International Trade Commission)
Represented the complainant, a pioneer in the mobile Internet and owner of several patents relating to accessing the Internet from mobile devices, in a multiple-patent investigation before the International Trade Commission.
Unwired Planet v. Google (District of Nevada)
Represented plaintiff in an action asserting ten of plaintiff’s patents covering inventions relating to mobile applications, including location and messaging services.
Confidential Evaluation of IP Portfolios
Conducted confidential analysis on large patent portfolios, evaluating strength of patents and possible infringement claims.
Representative Patent Cases on Behalf of Accused Infringers
Oceanovac v. Dole Food Company, Inc. (Central District of California)
Represented defendant in a patent infringement action alleging infringement of a method patent directed to preserving fresh produce, including lettuce, by treating the produce with warmed water followed by vacuum cooling. Won complete dismissal with prejudice on behalf of Dole.
Bluestone v. VIZIO, et. al. (Northern District of California)
Represented VIZIO in a patent infringement action alleging infringement of plaintiff’s patent relating to LED technology. Obtained dismissal of action and covenant not to sue from plaintiff following Markman and the filing of motion for summary judgment of non-infringement.
Allergan v. Exela Pharmsci, Inc., et. al. (Central District of California)
Represented the Abbreviated New Drug Applicant for an opthamalic solution in a Paragraph IV litigation under the Hatch -Waxman Act.
Global Touch Solutions v. VIZIO, et. al. (Northern District of California)
Represented VIZIO against allegations of infringement of six patents relating various touch control and screen illumination features.
Aspex Eyewear v. Marchon Eyewear (Central District of California)
Represented defendant in a patent infringement action relating to eyeglass frames.
Freeny v. VIZIO, et. al. (Eastern District of Texas)
Represented defendant in a patent infringement action relating to wireless technology. Achieved dismissal with prejudice following motion.
Roche Diagnostics Corp. v. Apex Biotechnology, et. al. (Northern District of Illinois)
Defended Apex against claims of infringement of a patent directed towards blood glucose monitoring devices.
Pre-Litigation Advice and Paragraph IV Letters
Advised a major pharmaceutical company desiring to manufacture a generic product on the specifics of the preparation of the Paragraph IV letter and the timing and filing of the Abbreviated New Drug Application under the Hatch-Waxman Act.
Investment Advice Pertaining to the Hatch-Waxman Act
Using litigation expertise and Hatch-Waxman experience, conducted confidential analysis for an investment firm interested in investing in various pharmaceutical companies. Identified issues relating to the target companies and advised on the timing and effects on revenue streams, taking into account various facets including FDA approvals and the Hatch-Waxman Act, pending and possible patent litigations, capitalization, strength of patents and market pressures.
Representative Federal Circuit Appeals
Ultramercial, LLC v. Hulu, LLC (Federal Circuit Court of Appeals)
Represented plaintiff, an advertising company, in asserting its method patent for gating and monetizing media content distributed over the Internet through the use of sponsored advertising. Overturned the trial court’s initial finding of invalidity based on patentable subject matter at the U.S. Court of Appeals for the Federal Circuit, resulting in a string of published opinions relating to business method patents and subject matter patentability. See Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011), aff’d with decision, 722 F.3d 1335 (Fed. Cir. 2013), rev’d, 772 F.3d 709 (Fed. Cir. 2014), cert denied, 2015 WL 2457913.
Oplus v. Vizio (Federal Circuit Court of Appeals)
Represented consumer electronics manufacturer in an appeal relating to section 285 of the Patent Act. In a precedential opinion, the Federal Circuit Court of Appeals vacated and remanded the District Court’s decision denying fees and instructed the district court to reconsider its earlier decision under the Octane Fitness case. The Federal Circuit also found that VIZIO had incurred additional fees caused by plaintiff’s litigation misconduct. See Oplus v. Vizio,782 F.3d 1371 (Fed. Cir. 2015).
Clean Air Engineering Maritime, Inc. v. Advanced Cleanup Technologies, Inc. (Federal Circuit Court of Appeals)
Won affirmance in the Federal Circuit Court of Appeals on behalf of client, Clean Air Engineering Maritime, Inc., in a case taken over post-trial, with the Federal Circuit affirming both summary judgment of non-infringement and verdict of invalidity on a method and a system patent for controlling maritime emissions.
Angioscore v. Trireme Medical, LLC (Federal Circuit Court of Appeals)
Won complete reversal of a $20+ million dollar judgment before the Federal Circuit Court of Appeals on behalf of client, Eitan Konstantino. After Mr. Konstantino suffered a judgment in the trial court in excess of $20 million for alleged breach of fiduciary duty through alleged misappropriation of a corporate opportunity for his development of an innovative angioplasty balloon catheter while serving as an outside director for the plaintiff corporation, Mr. Konstantino retained new counsel to represent him on appeal. The ruling was reversed in its entirety by the Federal Circuit following appeal.
Microprocessor Enhancement Corp. v. Texas Instruments (Federal Circuit Court of Appeals)
Represented the owner and exclusive licensee of a patent relating to microprocessor design. On appeal, the Federal Circuit reversed the trial court’s order invalidating the patent.
Representative Trademark, Copyright and Trade Secret Matters
Wag Hotels v. Wag Labs (Central District of California)
Represented plaintiff, a pet services provider, in an action alleging infringement of plaintiff’s trademark by a dog walking service. Case resulted in a favorable settlement for the client.
Joltid Limited v. Skype Technologies, SA (Northern District of California)
Represented plaintiff Joltid Limited in a high-profile copyright infringement litigation against Skype Technologies, SA, Skype, Inc., eBay Inc. and various Skype investors Shresulting in a favorable settlement.
Academy of Motion Pictures Arts & Sciences
Represented the Academy of Motion Picture Arts and Sciences in various copyright and trademark matters relating to OSCAR and ACADEMY AWARDS.
Represented well-known casino gaming company in several matters against online gaming competitors infringing plaintiff’s copyrights, trademarks and patents.
Air2Water, LLC, et. al. v. Aqua Sciences, Inc., et. al. (Los Angeles Superior Court)
Represented defendant in a trade secret matter relating to innovative water technology.
1Global Place v. Verisign (Arbitration)
Represented 1GlobalPlace, an Internet start-up company, in a successful arbitration against Verisign, a major Internet services company, concerning the contractual interpretation of an “earnout” provision in the merger agreement under which Verisign acquired 1GlobalPlace.
Speaking Engagements, Presentations and Publications
Representative Patent Cases on Behalf of Patent Owners
Featured Speaker, “Two Roads Diverged: The Ethics of Counseling Clients While Navigating IPRs Through the Lens of Litigation” (54th Annual Conference on Intellectual Property Law, The Center for American and International Law, Plano, Texas, November 14, 2016)
Featured Speaker, “Determining Damages For Multiple IP Assertions Covering One Product – A Venn Diagrams Exercise” (Abbott Laboratories, Quarterly Meeting of Intellectual Property Counsel, October 24, 2016)
Featured Speaker, “Determining Damages For Multiple Different IP Assertions Covering One Product – A Venn Diagrams Exercise” (State Bar of California, Webinar, August 23, 2016)
Featured Speaker, “Apportionment of Patent Damages: Daubert Proof Patent Damages Using the CAFC Valuation Methodology – Careful Apportionment Using Facts and Circumstances” (State Bar of California, Webinar, March 28, 2016)
Panelist, “Patent Disputes for Our Time: New Realities, New Approaches” (State Bar of California, San Francisco, March 23, 2016)
Featured Speaker, “Slaying the Dragon: Understanding and Effectively Managing the Use of the Model Order on E-Discovery in Patent Cases” (State Bar of California, Webinar, February 11, 2016)
Moderator, “Across the (IP) Universe: Developing a Diverse IP Portfolio Including Trademarks, Trade Secrets and Copyrights in Today’s Changing Protection Eligibility Landscape” (AIPLA Mid-Winter Institute Conference, La Quinta, January 27, 2016)
Publication, “Foreign Privilege Issues in U.S. Patent Litigation with Focus on Korea” (June 24, 2014)
Publication, “Litigation Financing is Not Champerty: Delaware Confirms that Litigation Financing is Here to Stay” (July 5, 2016) (Editor)
Publication, “Navigating Patent Damages Part III: Statutory Indemnification – Implied Warranty Against Infringement” August 4, 2015) (Editor)
Publication, “Navigating Patent Damages Part II: How Infringement Allegations Can Impact or Limit Potential Damages” (February 4, 2015) (Editor)
Awards & Accolades
Selected to the list of Southern California Super Lawyers (2015-2019)
University of California,
Hastings College of the Law
Articles Editor, Hastings Law Journal
University of California, San Diego
B.S., Biochemistry and Cell Biology
Leiden University, The Netherlands
Specialty classes in European Community Law
State Bar of California
State Bar of Texas
U.S. Courts of Appeals
U.S. District Courts
Central District of California
Southern District of California
Northern District of California
Eastern District of California
Professional & Community Involvement
American Bar Association, Intellectual Property Law Section
Los Angeles County Bar Association, Intellectual Property Law Section