Kaye Scholer

William Coats represents companies who are leaders in their respective fields, such as Pioneer Corporation; Lucasfilm, Ltd., Lucasfilm Entertainment company and its various divisions including LucasArts and Lucas Digital (Industrial Light & Magic and Skywalker Sound); Toshiba America; HTC Corporation; DVD Copy Control Association; Aztech Systems, Ltd.; Avid Technology; In-Three; Digidesign; Laika; and Mesa/Boogie, Ltd.

In 2008, Mr. Coats was appointed by the U.S. government to the United Nations Centre for Trade Facilitation and Electronic Business Task Team on Intellectual Property Rights and Related Issues.

Representative Matters

Patents

• ASUSTeK Computer, Inc. and ASUS Computer International. Represented ASUSTeK and ASUS in a patent declaratory judgment action pending in the Northern District of California against Technology Properties Ltd. relating to patents for microprocessor and flash memory storage technologies, and in a patent infringement action brought by TPL in the Eastern District of Texas.
  
  
• HTC Corp. and HTC America, Inc. Represented HTC in a patent declaratory judgment action against Technology Properties Ltd., pending in the Northern District of California, relating to patents for microprocessor technology, and patent infringement actions against Technology Properties Ltd.
  
  
• ATEN International. Represents ATEN in a patent infringement action against Belkin pending in the Eastern District of Texas, and against Emine pending in the Eastern District of Texas.
  
  
• Acer, Inc., Acer America Corp. and Gateway, Inc. Represented Acer and Gateway in a patent declaratory judgment action against Technology Properties Ltd.
  
  
• Chunghwa Picture Tubes, Tatung Company and Tatung Company of America. Represented Chunghwa Picture Tubes, Tatung Company and Tatung Company of America in a patent infringement suit relating to photolithography.
  
  
• Toshiba America. Represented Toshiba in its declaratory judgment action against a patent holding company in Toshiba America, et al. v. Patriot Scientific Corporation (N.D. Cal. 2005).
  
  
• In-Three. Lead trial counsel representing In-Three, developer of cutting edge technology that converts 2-D movies into realistic 3-D, against IMAX. In-Three defeated a motion for preliminary injunction filed by IMAX that threatened to shut down In-Three’s operations. IMAX v. In-Three (C.D. Cal. 2005).
  
  
• Advanced Power Technology. Lead trial counsel for the successful defense of APT against claims of patent infringement by IXYS on APT’s industry-leading power MOSFET technology. APT prevailed on summary judgment and was held to not infringe the two patents in suit. In addition, in this pre-KSR case, the court held that the patents were invalid as obvious. The court’s summary judgment decision is reported as IXYS Corp. v. Advanced Power Technology, Inc. 321 F. Supp. 2d 1133 (N.D. Cal. 2004). APT’s favorable claim construction decision is reported at 301 F. Supp. 2d 1065 (N.D. Cal 2004).
  
  
• Connectix Corporation. Lead counsel for Connectix in successfully resolving copyright, trade secret and patent disputes over the creation of a PlayStation emulator. These disputes were decided in part by the Ninth Circuit in its decision in Sony Computer Entertainment, Inc. et al. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000).
  
  
• Mesa/Boogie, Ltd. Lead trial counsel for Mesa/Boogie, a leading manufacturer of musical instrument amplifiers, in various patent infringement cases involving amplification circuits:
  • Mesa/Boogie, Ltd. v. Bad Cat Amplifier Co., Inc. (N.D. Cal 2008);
  • Mesa/Boogie, Ltd. v. Fender Musical Instruments Corporation (N.D. Cal 2007); and
  • Mesa/Boogie, Ltd. v. Korg USA, Inc. and Marshall Amplification, PLC (N.D. Cal. 2005).
  
  
• Indivos. Lead trial counsel for Indivos, the developer of the Pay-By-Touch biometrics-enabled electronic payment service, in Indivos Corporation v. Biometric Access Corporation (N.D. Cal.), a patent infringement case. Mr. Coats also defended Indivos in a related case in the Western District of Texas (Biometric Access Corp. vs. Pay-By-Touch, et al.).
  
  
• Microsoft and Connectix. In VMWare, Inc. v. Microsoft, 2003 WL 23857336 (N.D. Cal. 2003), led a team of lawyers who defeated a preliminary injunction motion brought by VMWare based on its patents to enjoin the sale and release of Virtual PC and Virtual Server software by Microsoft.
  
  
• Gracenote, Inc. In Gracenote, Inc. v. Musicmatch, served as lead trial counsel for Gracenote, the leader in online and device music recognition and related information services, in a patent, trademark, and breach of contract case.

Copyrights, Trademarks and Trade Secrets

• DVD Copy Control Association. Representing the DVD Copy Control Association in RealNetworks, Inc., et al. v. DVD Copy Control Association, Inc., et al. (U.S. District Court, N.D. Cal. Case No. C08-4548 MHP). The DVD CCA and the major motion picture studios have sued Real Networks for violating the Digital Millennium Copyright Act and being in breach of Real’s license with the DVD CCA.
  
  
• N2H2, Inc. In Edelman v. N2H2, Inc., obtained a dismissal of all claims against N2H2, a leading maker of filtering software. The plaintiff, a so-called “researcher” represented by the ACLU, sought a declaratory judgment that he not be liable for violation of the DMCA, infringement of copyrights and trademarks, theft of trade secrets, and breach of contract. This high-profile case was reported at 263 F. Supp. 2d 137 (W.D. Mass. 2003) and 67 U.S.P.Q.2d 1382.
  
  
• Lucasfilm, Ltd. In Lucasfilm Ltd. et al. v. Media Market Group, Ltd. 182 F. Supp. 2d 897 (N.D. Cal. 2002), represented the Lucas entities in a copyright and trademark case involving fair use and parody issues.
  
  
• BBC Technology. Represented BBC Technology (the BBC’s technology arm) in negotiations for its license to ESPN of its Colledia for Sports product. Colledia for Sports will be part of ESPN’s Digital Conversion Project.
  
  
• Connectix Corporation. Sony Computer Entertainment, Inc. et al. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000). For a description of the engagement, please refer to the Patent section above.
  
  
• Gracenote, Inc. Gracenote Inc. v. MusicMatch. For a description of the engagement, please refer to the patent section above.
  
  
• Accolade. In Sega Enterprises v. Accolade, Inc. 977 F.2d 1510 (9th Cir. 1992), served as lead counsel for Accolade and won a landmark case upholding the reverse engineering of software for compatibility and prohibiting use of trademarks for security systems. In Accolade, Inc. v. Distinctive Software, Inc. 1990 WL 180239 (N.D. Cal. 1990), he also acted as lead counsel for Accolade in the first case involving the ownership and legality of re-using copyrighted software libraries.
  
  
• Aztech Systems, Ltd. In Creative Technology v. Aztech Systems PTE 61 F.3d 696 (9th Cir. 1995), acted as lead counsel for Aztech Systems, Ltd. and won a landmark case regarding software copyright in sound cards and the international choice of law.
  
  
• LucasArts Entertainment Co. In LucasArts Entertainment v. Humongous Entertainment, 870 F. Supp. 285 (N.D. Cal. 1993), acted as lead counsel and won a significant case of first impression regarding the interrelation of antitrust and copyright law.
  
  
• Cinema Technologies, Inc. In IMAX Corp. v. Cinema Technologies, Inc., 152 F.3d 1161, (9th Cir. 1998), served as lead counsel and won an often-cited trade secret and patent case.
  
  
• Universal Studios, Lucas Digital and Oscar-Winning Special Effects Artist Christopher Boyes. Successfully defended these clients in a copyright infringement case involving the movie, “The Lost World: Jurassic Park.”

Standards Bodies

• Pioneer Corporation. Represents Pioneer in various copy protection organizations and initiatives, such as the Copy Protection Technical Working Group, The Broadcast Protection Discussion Group, the Analog Reconversion Discussion Group, and many other technical and standards bodies affecting the content and consumer electronic industries.
  
  
• DVD Copy Control Association. Representing the DVD Copy Control Association in RealNetworks, Inc., et al. v. DVD Copy Control Association, Inc., et al. (U.S. District Court, N.D. Cal. Case No. C08-4548 MHP) For a description of the engagement, please refer to the copyright section above.
  
  
• DVD Copy Control Association. Trial counsel for the DVD Copy Control Association in its case against Kaleidescape, in its efforts to combat unauthorized copying of CSS-protected content and enforce the CSS license and specifications (176 Cal.App.4th 697 (2009)). 

Mr. Coats is a frequent speaker and author of articles on intellectual property issues in the computer, entertainment and music industries. A partial list of his recent articles and speeches is included below. Copies of other articles are available upon request.