Peter Root focuses on complex business and commercial litigation with an emphasis on intellectual property and technology matters, securities and corporate governance litigation, and claims arising from mergers and acquisitions. Peter was recently recognized as an “IP Star” by Managing IP Handbook 2015, and is recommended by The Legal 500 United States 2013 and Who’s Who Legal 2013.
As both trial and appellate counsel, Peter has handled a wide variety of civil litigation matters in federal and state court, including securities class and mass actions, shareholder derivative, unfair competition and fiduciary litigation, patent infringement and other intellectual property disputes, contract and fraud suits, and tax and ERISA controversies. Peter’s experience also includes conducting internal investigations on behalf of management and audit committees of public companies, and representing clients in governmental and regulatory investigations. Peter counsels clients on compliance, governance practices and litigation avoidance strategies.
Prior to joining the firm, Peter was an Associate General Counsel of litigation at Affymetrix, Inc., a biotech company in Silicon Valley, where he and other members of the in-house litigation team directly handled intellectual property and securities litigation matters. Before joining Affymetrix, Peter was a Partner at Orrick, Herrington & Sutcliffe, LLP, in its San Francisco office. Earlier in his career, Peter served as a Special Assistant District Attorney for the San Francisco District Attorney’s Office and as a Judicial Clerk for the Honorable John T. Noonan, Jr., Circuit Judge for the United States Court of Appeals of the Ninth Circuit.
Peter was a commissioned officer in the United States Navy before entering the legal profession, where he served as the Commander of a Navy SEAL platoon.
Intellectual Property Litigation
- Enzo Biochem, Inc. v. Affymetrix, Inc. (S.D.N.Y. Ongoing). Represent Affymetrix in a multi-party litigation in which Enzo alleges patent infringement and breach of distributorship agreements. Won summary judgment of non-infringement on patent claims, and now moving for summary judgment on remaining contract claims.
- E8 Pharmaceuticals LLC and Massachusetts Institute of Technology v. Affymetrix, Inc. (D. Mass. Ongoing). Represent Affymetrix in patent infringement suit brought by MIT and its licensee, E8. Successfully moved to dismiss E8 on ground that it lacks standing to sue as “bare licensee.” Following favorable claim construction ruling, plaintiffs stipulated to final judgment of non-infringement. Case currently on appeal to the Federal Circuit.
- Sequenom v. Life Technologies Corp. and related case (San Diego Superior Court Ongoing). Represent Sequenom in litigation arising from a dispute regarding a patent licensing agreement. Filed Sequenom complaint for declaratory judgment on October 11, 2011. On same day, Life Tech filed complaint against Sequenom for declaratory judgment, breach of the licensing agreement, and unfair competition under California’s Unfair Competition Law. Life Tech dismissed breach of contract claims and case settled.
- OG International Ltd. v. Ubisoft, Inc. (N.D. Cal. Ongoing). Represent OG International, a small video game company, in a declaratory judgment action against Ubisoft, the dominant player in the dance video game industry. Ubisoft counterclaimed for copyright and trade dress infringement, and unfair competition under California’s Unfair Competition Law. Successfully defeated Ubisoft’s motion for TRO and preliminary injunction, which sought to prevent the commercial launch of OG’s allegedly infringing dance video game.
- Genetic Technologies Ltd. v. Agilent Technologies, Inc. et al. (D. Colo. Ongoing). Represent Pfizer Inc. in a multi-party litigation in which a non-practicing entity alleges patent infringement. Pfizer’s motion to dismiss the amended complaint, and its conditional motion to transfer or sever, are pending.
- United Technologies Corp. v. Rolls-Royce plc (ITC 2010-2011). Represented Rolls-Royce in ITC investigation initiated by UTC’s complaint for infringement of a patent relating to jet engine fan blade design. Case settled as part of a global settlement between the parties.
- QinetiQ, Ltd. v. Oclaro, Inc. (N.D. Cal. 2010). Represented UK-based QinetiQ in a suit against Oclaro for infringement of patents related to optical electronics and components. Case settled.
- Affymetrix v. Whitehead Institute for Biomedical Research (AAA 2009). Represented Affymetrix in an arbitration matter involving an indemnification dispute arising from a sponsored research agreement. Matter settled.
- Oxford Gene Technology, Ltd. v. Affymetrix, Inc. (D. Delaware 1999-2001). Represented Affymetrix in high-stakes patent infringement case involving DNA micro-arrays. Oversaw fact and expert discovery, and drafting of all written advocacy. Case settled after the initial phase of the jury trial.
- Affymetrix business transaction with Beckman-Coulter, Inc. (2001-2002). As lead counsel, represented Affymetrix in negotiation of complex business arrangement between Affymetrix and Beckman-Coulter. This negotiation was a by-product of the OGT v. Affymetrix litigation.
Securities and Derivative Litigation
- In re Affymetrix Derivative Litig. and related state court litigation (N.D. Cal./Santa Clara Superior Court 2006-2009). Represented 20 current and former directors and officers of Affymetrix in this shareholder derivative litigation alleging various federal and state securities and common law claims based on alleged backdating of stock options. Successfully moved to dismiss several claims. Litigation settled without any payment from clients.
- In re NovaStar Securities Litigation (W.D. Mo. 2004-2006). Represented issuer (subprime mortgage lender) and top executives in defense of class action and derivative actions based on nondisclosure of alleged regulatory problems.
- Operating Engineers v. IMPAC Medical Systems (N.D. Cal. 2004-2005). Represented issuer, directors, and officers in obtaining voluntary dismissal of this and two related class actions claiming improper revenue recognition in connection with restated financial statements.
- Khader v. Affymetrix (N.D. Cal. 2003-04). Represented issuer, directors, and officers in obtaining dismissal with prejudice of class action claiming misleading projections.
- In re Metricom Securities Litigation (N.D. Cal., 9th Cir. 2001-2005). Represented underwriters – Lehman Brothers, Inc., Citigroup Global Markets, Inc., Merrill Lynch, Pierce, Fenner & Smith Inc., J.P. Morgan Securities, Inc. – in obtaining dismissal with prejudice of class action alleging claims of false and misleading statements in stock offering; affirmed on appeal.
- FPA Securities Litigation (S.D. Cal., 9th Cir. 1999-2004). Represented investment bank – Volpe Brown Whelan & Co. – that had served as financial advisor to the acquiring company in a stock-for-stock merger transaction against Securities Act claims brought by shareholders of the acquired company. Won summary judgment in favor of Volpe; affirmed on appeal.
- In re Onyx Software Corp. Securities Litigation (W.D. Wash. 2001-2003). Represented company, directors, and officers in defense of class action and derivative actions claiming improper revenue recognition in connection with restated financial statements; obtained dismissal of 10b-5 claim, and balance settled without payment by clients.
- In re Clarent Corp. Securities Litigation (N.D. Cal. 2002-05). Represented former CFO in defense of class action and mass action (Ahlstrom v. Clarent Corp., D. Minn.) claiming improper revenue recognition in connection with restated financial statements; obtained dismissal of 10b-5 claim, and balance settled without payment by client.
- Ameriks v. Zions First National Bank (D. Utah, 10th Cir. 1990-2000). Represented Zions bank in mass action alleging that Zions, as the indenture trustee, was liable for losses on debt securities issued by over 30 syndicated partnerships. Defeated plaintiffs’ motion for class certification, and won summary judgment on each of the 28 causes of action, including claims under federal and state securities laws, ERISA, Trust Indenture Act, and common law claims for breach of contract, breach of fiduciary duty, fraud, negligence; affirmed on appeal.
- Shields v. Battaglia (Santa Clara Superior Court 1991-93). Represented 17 directors and officers of Varian Associates, Inc. in this shareholder derivative action alleging that the company obtained certain defense contracts by illegal means, overcharged the government on certain other defense contracts, and that the defendant directors and officers breached their fiduciary duties. Successfully petitioned the California Court of Appeal for a writ of mandate directing entry of summary judgment in favor of all defendants, and a judgment of dismissal was entered by the Superior Court.
Financial Services/Fiduciary Litigation
- In re Dynegy, Inc. ERISA Litigation (S.D. Texas 2003-2004). Acted as shadow counsel for three former directors of Dynegy in this class action on behalf of Dynegy employees who were invested in Dynegy stock through the 401(k) plan; drafted a separate motion to dismiss on behalf of clients, which the court granted with prejudice.
- Fuller v. Emmett A. Larkin Company, Inc. (Alameda Superior Court 2001-2003). Represented brokerage firm against claims for conversion, negligence, and breach of contract. Won summary judgment on all claims.
- Deimer v. Salomon Smith Barney Inc. (N.D. Cal. 1999). Represented SSB and its registered representative in obtaining dismissal with prejudice of action alleging misrepresentation and negligent failure to render tax and bankruptcy advice.
- Prosper Corporation v. Gary C. Johnson (Santa Cruz Superior Court 1995-1997). Defended Merrill Lynch, Pierce, Fenner & Smith Inc. and Merrill Lynch Credit Corporation against claims arising from loans made to the individual defendant. After opening statements on first day of jury trial, the court granted our motion for non-suit as to 7 of the 8 claims; case settled for nuisance value on remaining claim.
- American Investment Bank, N.A. v. McPhee (San Francisco Superior Court 1993-1996). Represented bank in collection action to recover amounts due on promissory notes the bank had purchased from certain limited partnerships. Successfully defeated the defense claim that the bank was not a holder in due course, and prevailed on a motion for summary judgment. The summary judgment was affirmed on appeal, and we successfully challenged defendants’ petition for review by the California Supreme Court.
- Walpole v. SMART Modular Technologies, Inc. and consolidated cases (Alameda Superior Court Ongoing). Represent director-defendants comprising the Special Committee of SMART Modular in this deal litigation arising from the proposed acquisition of SMART Modular by Silver Lake Partners III, L.P. and related entities. Matter settled (pending final Court approval) without any payment by clients, and the transaction closed.
- Penna v. Dresdner Kleinwort Wasserstein, LLC (Los Angeles Superior Court 2003-2005). Represented investment bank and executives in litigation arising from their services as financial advisor for acquired company in stock-for-stock merger. Successfully demurred to claim for breach of fiduciary duty and claims under California’s Unfair Competition Law and securities statutes; settled remaining claims for less than costs of defense through mediation before former judge Edward Infante.
- U.S. Surgical Corp. v. Guidant Corp. (N.D. Cal. 2002-2003). Represented Guidant Corp. against claims arising from acquisition of a Guidant subsidiary. Settled case favorably after we demonstrated that a key document relied on by plaintiff had been forged by a third party.
Unfair Competition Litigation
- Politzer v. Salomon Smith Barney, Inc. (Los Angeles Superior Court, removed to C.D. Cal., 9th Cir., U.S. Supreme Court, 2003-2005). Represented SSB against claims brought under California’s Unfair Competition Law alleging misrepresentations by SSB in its research reports. Following removal, the district court denied the motion for remand and granted our motion to dismiss; the Ninth Circuit affirmed the dismissal, and the Supreme Court denied plaintiff’s petition for review.
- Lippitt v. Raymond James Financial Services, Inc. (San Francisco Superior Court, removed to N.D. Cal., 9th Cir. 2001-2004). Represented Salomon Smith Barney Inc. in an action brought under California’s Unfair Competition Law in marketing of callable certificates of deposit. Case favorably settled during the initial procedural phase in the state court after denial of remand was reversed by Ninth Circuit.
- State of California v. Fremont Bank (Santa Clara Superior Court, 1994-1998). Represented the bank in a civil enforcement action by Santa Clara District Attorney alleging claims of unfair competition and false advertising arising from the bank’s marketing of its no-cost mortgage loans. Negotiated favorable settlement. Also handled and resolved related matter initiated by California’s Office of the Attorney General.
- Wuttke v. Intersil, Inc. (Santa Clara Superior Court, 1992-1993). Represented electronics company against actions alleging state antitrust claim under California’s Cartwright Act and related claims for malicious prosecution and abuse of process. The action was dismissed with prejudice on demurrer.
Securities Arbitration Matters
- Successfully represented broker-dealers and their registered representatives against investor claims in over thirty arbitration proceedings before the National Association of Securities Dealers, Inc., the American Arbitration Association, and the Pacific Stock Exchange on behalf of such clients as Goldman Sachs & Co., Merrill Lynch, Pierce, Fenner & Smith Inc., Charles Schwab & Co., and Emmett A. Larkin Company, Inc. In five of these cases, accomplished rare feat of obtaining summary dismissal of all claims prior to evidentiary hearing.
- E. & J. Gallo Winery v. United States (U.S. Court of Federal Claims 1996-1998). Represented Gallo Winery in a tax refund action challenging disallowance of expenses relating to its employee relocation program. The case settled after the Court took our motion for summary judgment under submission.
- Fu Investment Co., Ltd. v. Commissioner of Internal Revenue (U.S. Tax Court 1995-1998). Successfully defended investment company against claims that it owed taxes on interest payments on loans made through its Dutch finance subsidiary. After the Court granted our motion to compel discovery from the Treasury Department on its historical administration of the tax treaty with the Netherlands, the case settled favorably for our client.
- Christoffers v. Siebel Systems Inc. (San Mateo Superior Court 1997-1999). Member of trial team that successfully defended the company and its founder and CEO against claims for wrongful termination, gender discrimination, and fraud.
- Barclays Global Investors, N.A. (1998-1999). Represented company against claims made by former executive for wrongful termination, unpaid bonus and stock options, fraud, negligent misrepresentation, and interference with business advantage. Case settled through pre-suit mediation before Anthony Piazza.
Construction Defect Litigation
- Deer Valley Plaza, L.P. v. UDC Homes, Inc. (Contra Costa Superior Court 1997-2000). Represented owner and developer of shopping center seeking damages against developer of upslope residential development on claims arising from defective subdrainage systems and resulting water intrusion on Deer Valley’s commercial property. After a one-month bench trial, we obtained a money judgment for Deer Valley.
- Fillmore Center Associates, L.P. v. Aire Sheet Metal, et al. (San Francisco Superior Court 1995-1999). Represented bank group that succeeded to ownership of the Fillmore Apartments – including The Sanwa Bank Ltd., The Sumitomo Trust & Banking Co. Ltd., The Dai-Ichi Kangyo Bank, Ltd., Scotiabank, and Citicorp Real Estate, Inc. – seeking damages for construction defects against the architect, construction project manager, and various construction trades. Obtained approximately $20 million in settlements.
Products Liability Litigation
- Asbestos Litigation (San Francisco Superior Court 2001-2005). Represented Patterson Frozen Foods, Inc. in three separate asbestos cases claiming premises liability against Patterson; obtained voluntary dismissal of all claims against Patterson in two of the actions and settled remaining one for nuisance value.
- Garcia v. Belflower Trucking Co., Inc. (Superior Court of California, Tulare County 2002). Represented Nova Chemicals Co. and won dismissals of complaint and cross-complaint in this action alleging claims arising from vehicle accident.
- Clifford v. Abrasives Unlimited, Inc. (San Francisco Superior Court 1994-1996). Represented Grove Valve & Regulator Co. against cross-complaints in consolidated survivor and wrongful death actions alleging that decedent contracted and died from bilateral pulmonary fibrosis as result of exposure to toxic substances; obtained voluntary dismissals of claims against Grove Valve.
In the Market
- Kaye Scholer IP Report Offers Insights on Current Patent Law Developments and Future Outcomes May 2015
- Managing IP Identifies 10 Kaye Scholer IP Stars March 2015
- The Supreme Court’s Part in Patent Reform, Post-AIA January 5, 2015