Case 3:17-cv-05659-WHA Document 634-2 Filed 11/30/20 Page 1 of 4
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`Exhibit 1
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`Case 3:17-cv-05659-WHA Document 634-2 Filed 11/30/20 Page 2 of 4
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`Practice Areas
`Intellectual Property
`Litigation
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`Litigation
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`Education
`UCLA School of Law (J.D.,
`1993); Order of the Coif
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`University of Pennsylvania
`(The Wharton School) (B.S.,
`Economics, 1990), cum
`laude
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`Jonathan S. Kagan
`Partner
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`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067-4276
`t: +1.310.203.7092 | f: +1.310.203.7199 | jkagan@irell.com
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`Jonathan Kagan focuses his practice on complex intellectual property
`disputes, with a particular emphasis on patent litigation. He also counsels
`clients in other areas of intellectual property, including trademark and
`copyright. Jonathan serves on the firm's Executive Committee and chairs its
`Hiring Committee.
`
`Known as a "brilliant thinker who employs some very creative strategies”
`(Chambers USA), Jonathan represents clients in multiple industries,
`concentrating on the electronics sector, including semiconductors and
`internet infrastructure. He brings a sophisticated understanding of technology
`to his work and immerses himself in the technical details involved in each
`dispute. Jonathan has extensive experience leading teams of lawyers and
`coordinating with inter partes reviews before the Patent Trial and Appeal Board
`(PTAB). He is also adept at addressing indemnity issues when they arise in
`patent infringement lawsuits.
`
`Jonathan provides ongoing counsel on patent portfolios as well as the
`purchase and licensing of patents. Additionally, he provides strategic advice
`on patent pooling, swaps and other creative ways of acquiring and managing
`intellectual property.
`
`Jonathan is a past president of the Century City Bar Association and serves on
`the Editorial Advisory Board of the National Institute for Trial Advocacy. He is
`frequently invited to speak about the litigation of complex commercial and
`intellectual property disputes.
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`Experience
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`● Finjan Inc. v. Juniper Networks Inc. Successfully defended Juniper Networks
`Inc. against a patent infringement lawsuit, convincing a jury in the U.S.
`District Court for the Northern District of California that Juniper did not
`infringe a malware detection patent held by Finjan Inc. Finjan asserted
`seven patents against Juniper as part of the litigation, which involved
`complex matters of computer science. The judge ordered each party to
`select the patent claim they felt was the strongest and move for early
`summary judgment on that claim. Juniper prevailed on summary judgment
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`www.irell.com
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`Jonathan S. Kagan
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`for the claim it selected, and defeated Finjan’s summary judgment motion – setting up the trial on what Finjan
`had selected as its strongest claim. During the trial, Irell persuaded the court that Finjan, which sought $60
`million in damages, had not presented sufficient evidence to support a damages claim. The eight-member jury
`delivered a unanimous finding of non-infringement for Juniper. Five other patents remain unresolved, as well as
`other claims in the first two patents.
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`● Juniper Networks Inc. v. Palo Alto Networks Inc. Secured a victory for Juniper Networks in May 2014, when Palo Alto
`Networks Inc. agreed to pay $175 million to resolve the patent litigation between the two network security
`companies pending in California and Delaware. Juniper Networks sued Palo Alto Networks (PAN), a company
`founded by former Juniper employees, in Delaware federal court for allegedly infringing seven Juniper patents.
`The patents at issue were invented by the founders of PAN when they were employed by Juniper. Irell
`successfully moved the district court to strike PAN’s defense of invalidity by invoking the federal common law
`doctrine of assignor estoppel, which prevents an inventor who assigns a patent to a buyer from later challenging
`its validity. The trial in February 2014 ended in a mistrial, leading to the settlement.
`
`● Juniper Networks v. Toshiba America Information Systems. Represented Juniper Networks in a number of
`intellectual property matters, including this protracted patent infringement dispute with Toshiba. In response to a
`motion filed by Juniper Networks shortly before trial, the court issued a sanctions order against Toshiba that,
`among other things, barred Toshiba from calling its expert witness on noninfringement and severely limited
`Toshiba’s time for its opening statement and closing argument. The case settled in late 2007, shortly after the
`court issued the sanctions order.
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`● Ultratech Stepper v. ASML. Served as trial counsel for ASML, one of the world’s leading suppliers of
`semiconductor manufacturing equipment, in this patent infringement case. While both of ASML’s competitors
`(who were initially co-defendants in this action) entered into substantial settlements with the plaintiff, ASML
`elected to litigate. After a four-week trial—and with less than one day of deliberation—the jury found the plaintiff’s
`patent invalid on multiple grounds. The Federal Circuit affirmed the jury’s verdict in its entirety. The Daily Journal
`recognized this victory as one of the top 10 defense verdicts of 2005.
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`● Aviza Technology v. ASML. Served as lead counsel for ASML in this arbitration in which the claimant accused
`ASML of fraud and negligence. After a one-week hearing, the arbitrator found in favor of ASML on all causes of
`action and determined that ASML was entitled to recover its litigation expenses, including attorneys’ fees.
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`● Sharper Image v. Ionic Pro. Defended a patent and trademark case brought by Sharper Image against retailers
`and manufacturers of air purifiers that competed against its flagship Ionic Breeze. This case settled after Sharper
`Image’s claims of trade dress and design patent infringement were dismissed on summary judgment.
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`● Stac Electronics v. Microsoft. Represented Stac Electronics, a small software company, in a patent infringement
`suit it brought against industry giant Microsoft. After an extensive trial, the jury awarded Stac Electronics $120
`million in patent damages. Stac also obtained a worldwide injunction against the sale of Microsoft’s operating
`system.
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`● Novellus Systems v. Applied Materials. Represented Novellus Systems, a manufacturer of semiconductor
`manufacturing equipment, in a patent infringement lawsuit filed against it by industry leader Applied Materials.
`Over a period of seven years, each of the patents Applied Materials had asserted against Novellus was declared
`invalid, held not to be infringed or withdrawn from the case. The parties then reached a settlement of the case,
`which involved a payment from Applied Materials to Novellus.
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`Jonathan S. Kagan
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`Honors & Awards
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`● Recognized as a leading IP litigator by the Daily Journal (which has named his defense victories to its annual list
`of top defense verdicts three times)
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`● Recognized by The Legal 500 for his work in the area of Patent Litigation: High-Tech Electronics and IT
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`● Selected for inclusion in The Best Lawyers in America (2010-present)
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`● Named to the Southern California Super Lawyers list in the area of intellectual property litigation (2004-present)
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`Speaking Engagements
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`"Trademark Bootcamp," Los Angeles Intellectual Property Law Association (October 24, 2013)
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`"Remedies-Or-," LAIPLA Spring Seminar (June 8, 2013)
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