Rodger A. Sadler

Rodger Sadler is a patent litigator in Orrick's New York office and a member of the Energy, Cleantech, Canadian, European, Asian and Software Working Groups. He has practiced throughout the United States, including in patent litigation hotspots such as the Eastern District of Texas, Southern District of Texas, Central District of California, District of Delaware and before the International Trade Commission. Rodger has experience litigating patents covering a broad range of products, methods and technologies in the fields of image sensors, Internet fax services, computer hardware and software, Internet architecture and network security, GPS, electronics, semiconductors, telecommunications, financial services, business methods and pharmaceuticals.

Trial and Litigation Experience

• Panavision Imaging, LLC v. Canon U.S.A., Inc., et al. (C.D. Cal.). Rodger is a member of a team defending Canon U.S.A. in a Los Angeles infringement action involving 4 patents relating to image sensor technology. (pending)
• California Institute of Technology v. Canon Inc. and Canon U.S.A., Inc. (C.D. Cal.). Rodger is a member of a team that defended Canon in a Los Angeles infringement action involving 11 patents relating to image sensors in digital cameras.
• GTX Corp. v. Canon U.S.A., Inc., et al. (E.D. Tex.). Rodger was a member of a team that successfully defended Canon U.S.A., Inc. in a Tyler, Texas, software patent infringement suit. After receiving a favorable claim construction from the court, Canon moved for summary judgment of noninfringement and received a ruling from the bench in favor of Canon.
• Catch Curve v. Protus IP Solutions (C.D. Cal.). Rodger and his team successfully defended Canadian technology company Protus IP Solutions in a Los Angeles patent infringement suit targeting Protus' popular Internet fax services (MyFax and Virtual Fax). After receiving a favorable claim construction order from the court, Protus filed a motion for summary judgment of no infringement. Before filing a response to Protus' summary judgment motion, and with the hearing on the motion fast approaching, the plaintiff offered to dismiss its case with prejudice in exchange for Protus agreeing not to seek reimbursement of the attorney fees and costs Protus incurred defending itself. The case was closely followed by technology and communications companies because the plaintiff and the previous owner of the patents (AudioFax) had, prior to targeting Protus, licensed the patents to more than 30 companies, and appeared intent on extracting payments from every single player in the industry.
• Reid and Net P&L v. Charles Schwab & Co., et al. (E.D. Tex.). Rodger was a member of a team that successfully defended Charles Schwab & Company in a Marshall, Texas patent infringement suit targeting Schwab's system and software for managing employee and customer access to the resources of Schwab's enterprise network. The case was dismissed after Judge David Folsom found, based on discovery obtained by the defendants from third parties, that the plaintiffs lacked title to the patent and therefore lacked standing to sue for patent infringement.
• Dynamic Depth v. emFAST and Dynamic Depth v. Faxcore (N.D. Ga.). Rodger defended two Internet fax companies in patent infringement actions relating to computerized systems and methods for routing and logging of facsimiles. Both cases were settled on favorable terms before trial.
• Aguayo and Tran v. Universal Instruments Corp. (S.D. Tex.). Rodger and his team scored a complete defense victory for Universal Instruments in a three-week patent litigation jury trial in Houston, Texas. All 17 asserted claims in the patent were found invalid and not infringed. The suit, which was closely followed in the electronics industry, involved a software patent directed to robotic assembly machines for the manufacture of printed circuit boards used in cell phones, computers, network routers and other electronic devices.
• University of Texas v. TCL/Alcatel, et al. (W.D. Tex.). Rodger was a member of the team that defended TCL/Alcatel in a multi-defendant patent infringement suit filed in Austin, Texas. The suit alleged that TCL/Alcatel's mobile phones infringed patent claims relating to predictive text software tools for use in mobile phones, PDAs and other handheld devices. The suit was favorably dismissed.
• Datamize, LLC v. Charles Schwab & Co., et al. (E.D. Tex). Rodger was a member of the team that defended Charles Schwab & Co., its subsidiary CyberTrader, Inc. and Terra Nova Trading, LLC, in a multi-defendant patent infringement case filed in Marshall, Texas, against a number of online broker dealers in the financial industry. The plaintiff asserted infringement by the industry of more than 100 patent claims from multiple patents alleged to cover Web-based financial trading platforms, and kiosks that provide customizable user interfaces, and use relational databases. Rodger's team led the defense of the suit and with the help of "antique" computer parts dealers, located the hardware necessary to resurrect and run prior art trading systems and kiosks that invalidated the asserted patents. Following the filing of an invalidity summary judgment motion, and aware of the firm's demonstrated ability to prove invalidity to a Texas jury, the plaintiff agreed to dismissal of its claims.
• Cadent Ltd. v. 3M Unitek Ltd. (C.D. Cal.). Rodger was a member of the team that represented Cadent Ltd. in a dispute over inventorship and ownership rights in a portfolio of software patents and applications claiming methods and systems for virtual orthodontic treatment. The case settled on favorable terms shortly before trial.
• In re: Elonex Phase II Power Management Litigation (D. Del.). Rodger was a member of the team that represented defendants Compal Electronics, Acer and BenQ in a multi-defendant patent infringement suit involving notebook and desktop computers, video adapters, Windows operating systems and CRT and LCD displays. The team obtained summary judgment early in the litigation by convincing the court to expedite discovery on selected issues in the case and successfully reaching out to the clients' competitors for essential evidentiary support.
• Pharmacia v. Alcon Labs., Inc. (D. Del.) and Alcon Labs., Inc. v. Pharmacia (S.D.N.Y). Rodger was a member of the team that defended Alcon Laboratories against claims of patent infringement in two cases (filed simultaneously in Delaware and New York) involving Alcon's TRAVATAN® product for treating glaucoma. In both cases, the patent owner, Pharmacia, agreed before trial to abandon its infringement claims and allow Alcon to continue marketing TRAVATAN®.
• BASF v. Eastman Chemical and Tomen Agro, Inc. (E.D. Tenn.). Rodger and his team successfully defended Tomen Agro, Inc., an agricultural products company, against patent infringement claims relating to a chemical process for making herbicides. After a favorable ruling on construction of the patent's claims, the district court granted summary judgment of non-infringement, a total victory for Tomen Agro that was subsequently affirmed by the Court of Appeals for the Federal Circuit.
• McNeil-PPC, Inc. v. Bayer Corp. (E.D. Pa). Rodger was a member of the team that defended Bayer Corp. in a pharmaceutical patent infringement action in a four-week jury trial brought by McNeil-PPC, Inc., the maker of Tylenol®.

Other Experience

• Patent Cross-Licensing Negotiation. Rodger was a member of the team that assisted with cross-licensing negotiations involving 120 semiconductor chip and system patents from the portfolios of two major Japanese and U.S. technology companies. Rodger assisted with patent review, prior art searches and preparation of infringement and rebuttal claim charts. Rodger also researched and authored many of the key patent exhaustion, indirect infringement and royalty memoranda that formed the basis of the negotiation strategy.
• Tasleema Yasin v. Q-Boro Holdings and Urban Books (NY Supreme Court). Rodger is lead counsel for Tasleema Yasin, an aspiring singer-songwriter, in a lawsuit against two publishing companies that unlawfully used her photograph on the cover of the novel Baby Doll. (pending)
• Pro Bono. Rodger represented a mother and her son in a Violence Against Women's Act ("VAWA") immigration case.

Admitted in

• New York
• United States Patent and Trademark Office

Court Admissions

• Federal Circuit
• Seventh Circuit

• Eastern District of Texas
• Southern District of Texas
• Southern District of New York
• Northern District of Illinois

Memberships

• Licensing Executives Society (LES)
• Eastern District of Texas Bar Association
• Intellectual Property Institute of Canada (IPIC) -- Vice-Chair, Forums and Seminars Committee
• American Council On Renewable Energy (ACORE)
• Communitech - Waterloo Region Technology Association
• Ottawa Centre for Research and Innovation (OCRI)
• European Industrial Research Management Association (EIRMA)
• American Intellectual Property Law Association (AIPLA) -- IP Practice in Japan and IP Practice in Europe Sub-Committees
• Fédération Internationale des Conseils en Propriété Industrielle (FICPI)
• New York State Bar Association - Intellectual Property Law Section
• New York Intellectual Property Law Association (NYIPLA)

Multimedia

Publications

• "Supreme Court Patent Ruling is Good News for Cleantech Business Models," Cleantech Insights (August 2010)
• "U.S. Patent and Trademark Office Expands Program to Speed Clean Energy Technologies to Market," Orrick Client Alert (June 2010)
• "U.S. Patent and Trademark Office Announces Program to Accelerate Clean Technology to Market," Orrick Client Alert (December 2009)
• "IP Strategies for a Clean Energy Economy," IP Law 360 (August 2009)
• "U.S. and China - Strategies For Developing And Protecting IP In The New Clean Energy Economy," Asia IP (July 2009)
• Chinese version of above article available
• "Cleantech Readies for Tide of Patent Disputes," Cleantech Group (June 2009)
• "Protecting And Profiting From Intellectual Property In President Obama's Clean Energy Economy," Bloomberg Law Reports - Sustainable Energy (April 2009)
• "Mandatory Certification Rules In China Could Impact Foreign High Technology Companies," Asia IP (March 2009)
• "Survival Strategies in the New IP Economy," Managing Intellectual Property (June 2006)
• "Patent Trolls Be Warned," New York Law Journal (April 2005)

Speeches & Programs

• "An Exploration of Section 337 Investigations at the U.S. International Trade Commission," Tokyo, Japan (October 2009)
• "Canadians And U.S. IP Litigation: What To Expect And How To Be Ready," Waterloo, Canada (September 2009)
• "Strategies For Intellectual Property Protection In The New Clean Energy Economy," Compagnie Nationale de Conseils en Propriété Industrielle, Paris, France (March 2009)
• "Cleantech And The Importance Of Intellectual Property Rights," Breakfast Seminar, Cleantech XVIII Forum, Washington, D.C. (September 2008)
• Co-Chair, Intellectual Property Institute of Canada - New York State Bar Association Summer IP Meeting, Montreal, Canada (July 2008)
• "Intellectual Property Issues for Small Business Owners," Goldman Sachs Microentrepreneurs Clinic, New York (June 2008)
• "Patent Litigation In The Eastern District Of Texas," Intellectual Property Institute of Canada, 80th Annual Meeting, Vancouver, Canada (October 2007) (with Marshall, Texas Judge Chad Everingham)
• "The New Knowledge Economy," Osgoode Hall Law School, Toronto, Canada (February 2007)
• "U.S. Patent Enforcement Trends," European Industrial Research Management Association IP Group Meeting, Dublin, Ireland (June 2007)
• "Patent Trolls: Real or Myth," The New Intellectual Property Economy, Paris, France (January 2007)
• "U.S. Claim Construction Post-Philipps," Intellectual Property Institute of Canada, 79th Annual Meeting, New Brunswick, Canada (September 2006)
• "Enforcing and Defending Licensed Intellectual Property," Calgary, Canada (June 2006)
• "Patent Trolls: Real or Myth," The New Intellectual Property Economy, Toronto, Canada (June 2006)
• The U.S. Patent Litigation Gold Rush," Osgoode Hall Law School, Toronto, Canada (February 2005)
• "Introduction to U.S. Patent Law," Université de Montreal, Canada (November 2004)
• "Strategies for Defending Against the Patent Litigation Gold Rush in the United States," Intellectual Property Institute of Canada, 78th Annual Meeting, Banff Springs, Alberta, Canada (October 2004)
• "Claim Construction in U.S. Patent Litigation," Osgoode Hall Law School, Toronto, Canada (March 2003)