Stephen A. Marshall

Partner

Washington
Willkie Farr & Gallagher LLP
1875 K Street, N.W.
Washington, DC 20006-1238
T 202 303 1198
F 202 303 2000
smarshallwillkie.com

Steve Marshall is a partner in the Washington office. He focuses on complex patent litigation and counseling with an emphasis on embedded systems and software, mobile devices and standards, and IoT (Internet of Things) technologies. Steve also has extensive experience in communications and networking protocols and standards. He has litigated patent cases across a variety of industries and technologies, including semiconductors, telecommunications, computer networking, optical data storage, electro-optical/infrared countermeasures and other defense systems, and robotics. Steve has represented clients before U.S. District Courts around the country, particularly in the Eastern and Western Districts of Texas, the District of Delaware, the Court of Federal Claims, the Court of Appeals for the Federal Circuit, and in Section 337 proceedings before the U.S. International Trade Commission (ITC).

Steve’s patent litigation experience covers all aspects of litigation, from due diligence and pre-filing investigations through trial and appeal. Steve has taken witnesses in both bench and jury trials, and successfully argued motions in the most active patent jurisdictions in the country. Steve’s practice has also regularly involved international clients, and included coordination with multinational counsel in the context of global litigation campaigns. Lauded for his dedication to client service and keen awareness of underlying business goals, he is regularly sought to handle cases on behalf of Fortune 100 clients.

In addition to his litigation practice, Steve counsels clients on an array of IP matters, including intellectual property protection, registration, and management issues, as well as intellectual property development and investment. He also manages a licensing practice directed to helping independent inventors and early phase startups realize the potential of their intellectual property.

Steve’s technical experience includes work as an Integration Engineer in EMC Corporation’s eLab (2000-2003), SAP Basis Administrator with The Gillette Company (1999), and Analyst in the SAP Solution Center at Andersen Consulting, LLP (1998-1999). As an engineer, Steve designed and built one of the largest experimental data networks in the country, and contributed to the fibre channel standard.

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Steve Marshall is a partner in the Washington office. He focuses on complex patent litigation and counseling with an emphasis on embedded systems and software, mobile devices and standards, and IoT (Internet of Things) technologies. Steve also has extensive experience in communications and networking protocols and standards. He has litigated patent cases across a variety of industries and technologies, including semiconductors, telecommunications, computer networking, optical data storage, electro-optical/infrared countermeasures and other defense systems, and robotics. Steve has represented clients before U.S. District Courts around the country, particularly in the Eastern and Western Districts of Texas, the District of Delaware, the Court of Federal Claims, the Court of Appeals for the Federal Circuit, and in Section 337 proceedings before the U.S. International Trade Commission (ITC).

Selected Significant Matters

  • Bell Northern Research, LLC v. Samsung Electronics Co., Ltd. et al (E.D. Tex.) – Managed eight patent litigation on behalf of the Samsung defendants, including successfully negotiating multiple patents out of the case. Obtained favorable business resolution for the defendants.
  • Bell Northern Research, LLC v. LG Electronics, Inc. et al (S.D. Cal.) – Oversaw all litigation efforts for defendant LG Electronics in complex case relating to mobile telephone features and communications protocols. Obtained favorable business resolution for the defendants.
  • Rain Computing, Inc. v. Samsung Electronics Co., Ltd. (D. Mass.) – Represented Samsung in a case relating to application downloads across a wide variety of consumer products. Succeeded at Markman hearing, resulting in a stipulation of non-infringement by the patentee. Currently on appeal at the Federal Circuit.
  • Certain Robotic Vacuum Cleaning Devices and Components Thereof Such As Spare Parts; Inv. No. 337-TA-1057 (ITC) – Lead attorney representing Complainant iRobot in an investigation relating to robotic vacuum cleaners, autonomous behavior, and embedded systems processing. Succeeded in obtaining limited exclusion order and cease and desist orders on behalf of iRobot.
  • 01 Communique Laboratory, Inc. v. Citrix Systems, Inc. (N.D. Ohio) – Represented defendant Citrix in a case relating to remote computer access technology. Obtained jury verdict of non-infringement.
  • Parallel Networks Licensing, LLC v. Microsoft Corp. (D. Del.) – Represented defendant Microsoft in a case relating to load balanced processing of dynamic Web page requests. Obtained jury verdict of non-infringement.
  • Personalized Media Communications, LLC v. Samsung Electronics America et al. (E.D. Tex.) — Represented Samsung in a case relating to multimedia signal processing techniques for the control of video displays and the coordination of video content. Obtained favorable settlement.
  • Certain Electronic Devices, Including Wireless Communication Devices, Computers, Tablet Computers, Digital Media Players, and Cameras; Inv. 337-TA-952 (ITC) – Represented respondent Apple in an investigation relating in part to selective operation of a device in either a conventional or IP telephony mode.
  • PaymentOne Corp. v. PayPal, Inc. (N.D. Cal.) – Represented defendant PayPal in a case relating to mobile payments processing. Obtained favorable claim construction ruling and judgment of non-infringement.
  • Certain Electronic Devices, Including Certain Wireless Communication Devices, Tablet Computers, Media Players, and Televisions, and Components Thereof; Inv. No. 337-TA-862 (ITC) – Represented Samsung respondents in an investigation relating to, amongst other things, speech coding and decoding algorithms and digital signal processing.
  • Parallel Networks, LLC v. Abercrombie & Fitch Co., et al. (E.D. Tex.); Parallel Networks, LLC v. Amazon.com Inc. et al. (E.D. Tex.) – Represented numerous defendants, including Amazon and Google, in a case relating to the dynamic generation of applets. Obtained summary judgment of non-infringement which was affirmed by the Federal Circuit.
  • ClassCo Inc. v. Kyocera Int’l, Inc., et al. (D. Mass.) – Represented plaintiff ClassCo in a case relating to audible caller identification. Obtained highly favorable settlement.
  • Virginia E-Commerce Solutions, LLC v. eBay Inc. et al. (E.D. Va.) – Represented defendants eBay and PayPal in a case relating to online credit card payment processing. Obtained favorable settlement.
  • Software Rights Archive LLC v. Google Inc. et al. (E.D. Tex.) – Represented defendants Google and AOL in a case relating to the indexing, searching, and display of data. Obtained transfer of venue from the Eastern District of Texas.

 

* Steve advised on these matters prior to joining Willkie.

Prior Experience

Prior to joining Willkie in 2021, Mr. Marshall was a Principal in the Washington, DC, office of Fish & Richardson.

Selected Publications and Lectures

  • ACC-NCR Roundtable: Unlocking the Value of Your Intellectual Property (November 19, 2020)
  • Strafford Webinar, “Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Section 101 Rejection,” (November 10, 2016)
  • “Enfish and TLI: A Study of the CAFC’s Recent Section 101 Opinions,” Lexology (May 16, 2016)