Software Disputes

Software disputes transcend every intellectual property discipline, contract law, property law, and a variety of other electronic rights systems. Software disputes are often among the most high profile and controversial disputes in the country today. Successful representations of these types of disputes requires a multidisciplinary approach where understanding the technology interplay with the complex web of legal disciplines are a key to success. Orrick lawyers have a proven track record of meeting this challenge. Some of our notable engagements include:

• Acta Technology, Inc. In Acta Technology, Inc. v Sagent Technology and in Sagent Technology v. Acta Technology, Inc., Orrick represented Acta Technology in the litigation of copyright and trade secret claims involving software.
• American Express Company. Orrick represents American Express in a number of technology-related commercial cases ranging from breach of contract, such as software licenses, database construction agreements, and software development agreements, to breach of contract regarding the sale of certain intellectual property assets, for example, Pickering v. American Express Travel Related Services Company, Inc., and misappropriation of confidential information, for example, Watson v. American Express Travel Related Services Company, Inc., and SIPCA v. Calyx et al.
• Apple Computer. An Orrick lawyer represented Apple Computer in its historic copyright infringement lawsuit against Microsoft and Hewlett-Packard alleging that Windows infringed the Macintosh graphical user interface. Sometimes referred to as the Macintosh "look and feel" case, the litigation involved many novel issues of copyright protection for computer software and user interfaces, resulting in a number of reported decisions from the trial and appellate courts. In addition, this Orrick lawyer helped Apple in related litigation involving the original rights to the icons and graphics of the Macintosh graphical user interface.
• AT&T and Lucent Technologies. In United Computer Systems v. AT&T Corp. and Lucent Technologies, Orrick represented the respondents in the arbitration of a software license dispute with claimed lost profits of $6 billion.
• Aztech Systems, Ltd. An Orrick lawyer was lead counsel in a landmark case regarding software copyright in sound cards and the international choice of law in Creative Technology v. Aztech Systems PTE.
• Charles Schwab & Company and CyberTrader, Inc. An Orrick IP team was successful in dismissing with prejudice a patent infringement case against Charles Schwab, CyberTrader, and Terra Nova for a nuisance value settlement that is reported to be the lowest patent settlement in Eastern District of Texas history. The case, Datamize v. Charles Schwab, Cybertrader, and Terra Nova LLC, filed by a Montana-based software company, Datamize, in the Marshall Division of the Eastern District of Texas, included five other defendants, all of whom are directly or indirectly involved in online investment or brokering services. The patents are alleged to broadly cover web-based software platforms providing customizable user interfaces and employing relational databases. The settlement of this high stakes case followed the Orrick team's discovery of invalidating prior art and a demonstrated ability to prove it all in Court. Orrick's work in the case has been characterized by its clients as "Lawyering at its best: creative vision, integrity, and cost effective execution." Orrick also is representing CyberTrader, Inc. in another patent infringement case filed in the Southern District of New York. The case, Lava Trading, Inc. v. Sonic Trading et al., involves a software patent directed to a system for aggregating order book information from multiple alternative trading systems.
• eBay Inc. Orrick represents eBay in a variety of Intellectual Property matters involving patent litigation including PayPal's on-line payment system, as well as eBay's Billpoint payment system. We have represented them in infringement suits involving multiple claims on patents disclosing electronic document delivery systems including:
  • Charles E. Hill & Associates v. Amazon.com et. al. Orrick represents eBay in a case brought in Marshall, Texas by Mr. Charles Hill. Mr. Hill has asserted three patents against eBay and 17 large retailers that sell goods over the Internet including eBay. Mr. Hill contends that selling an item over the Internet infringes his patents, which purport to claim "electronic catalogs". Discovery is underway and trial is scheduled for December, 2005.
  • AT&T Corp. v. eBay Inc. and PayPal, Inc. (2003-Present) Orrick was engaged by eBay, Inc. and its subsidiary PayPal, Inc. to defend both companies in a patent infringement action brought by AT&T in Delaware, AT&T Corp. v. eBay, Inc., et al., (D. Del.). The case involves eBay's and PayPal's popular on-line payment mechanisms. Patent litigation involving technologies for sending documents and messages over the Internet. This case settled favorably to the interests of our clients, eBay and PayPal.
  • Tumbleweed Communications v. eBay Inc. and PayPal, Inc. (2002-2004). This similar patent infringement suit to the above was brought in the Northern District of California by Tumbleweed Communications. PayPal's on-line payment system, as well as eBay's Billpoint payment system, were alleged to infringe multiple claims of three related patents disclosing electronic document delivery systems. That case settled and was dismissed in late December 2003.
• eGain Communications. In eGain v. Alcatel, the firm represents eGain Communications in a pre-litigation patent dispute with Alcatel involving email routing and response technologies, some of which include integration with customer service functionality and the use of customer response management features.
• EMC Corp. Orrick has successfully defended EMC in an arbitration concerning a database management software product in A3 Solutions v. EMC Corporation.
• Harris-My CFO. Orrick represents Harris-My CFO in Harris-My CFO v. Coyle, et al., a trade secrets case related (in part) to software technologies used for financial planning and management.
• Inktomi Corp., a Yahoo! Company. Orrick has represented Yahoo! in a number of patent suits related to software used for "proxy caching" technology and online tools.
  • Network Caching Technology, L.L.C. v. Novell, et al. Orrick successfully defended Yahoo!'s wholly-owned subsidiary Inktomi Corp. in Network Caching Technology, L.L.C. v. Novell, et al, a multi-defendant/multiple-patent infringement case directed at Inktomi's "web caching" services. In the case, Inktomi obtained favorable rulings on a variety of issues, including interpretations of both the plaintiff's "Rule 11" pre-filing obligations, and the adequacy of the plaintiff's infringement contentions under the unique Patent Local Rules adopted in the Northern District of California.
  • Teknowledge Corp. v. Akamai Technologies, Inc., et al. Orrick defended both Inktomi Corp. and Yahoo! in Teknowledge Corp. v. Akamai Technologies, Inc., et al., a multi-defendant patent infringement case that relates both to Inktomi's web caching technology and its "content delivery suite" software products. The case brought against Yahoo! relates to claims associated with Yahoo! Alerts an "update" system sent across the Internet via proxy caches. The case settled shortly after the Orrick team obtained key summary judgment rulings in favor of Yahoo! holding that two of the claims at issue were non-infringed, and one was invalid as non-enabled.
• Logitech, Inc. Orrick represents Logitech in Chan v. Logitech, et al., a software patent case involving the use of hyperlinks on CD-ROMs.
• MapInfo Corp. Orrick represented MapInfo in both California and Maryland in MapInfo Corp. v. Strategic Mapping, a trade secret and unfair competition case involving desktop mapping software.
• Microsoft Corporation. In InterTrust Technologies v. Microsoft Corporation, Orrick represented Microsoft in a matter involving over 11 patents claiming to provide Digital Rights Management Software. Described by Forbes magazine as one of the most complex patent cases in U.S. history, this matter lasted over three years.
• Mindscape, Inc. In Mindscape, Inc. and Grolier Interactive, Inc. v. Media Depot, Inc., an Orrick lawyer represented Mindscape and Grolier in litigation of copyright and trademark infringement claims involving multimedia software programs.
• Oracle Corp. In FST v. Oracle, the firm represents Oracle in a two patent dispute related to database configuration and design.
• Siebel Systems. Representing defendant Siebel Systems in a multi-state trade secret and inevitable disclosure litigation, SAP Labs v. Siebel Systems, Orrick defeated SAP's motion for preliminary injunction in Pennsylvania and SAP's demurrer in California. The case involved Siebel's B2B and CRM software technology, and the matter settled without an injunction or money damages of any kind.
• Tradescape Corp. Orrick represented Tradescape in an action for copyright infringement of software. We obtained an injunction from a federal judge in New York.
• Zoomify, Inc. Orrick lawyers defended Zoomify in a patent and trademark infringement lawsuit regarding software technology, which resulted in a favorable settlement.