Steven Pepe
Partner
Steve Pepe is chair of the firm’s intellectual property litigation practice. He is an accomplished trial lawyer who focuses on patent litigation in nearly every significant patent jurisdiction, including the International Trade Commission, the Eastern District of Texas, the District of Delaware, the Eastern District of Virginia, the Court of Appeals for the Federal Circuit, and the PTAB. Steve has litigated patent cases for over 20 years, including as lead or co-lead counsel in over a dozen lawsuits. He specializes in complex infringement cases and has achieved numerous successes for companies in the fields of computer technology, semiconductors, telecommunications, consumer products, and mechanical systems. Steve is experienced in managing and coordinating multi-jurisdictional disputes that involve parallel actions in U.S. district courts, the International Trade Commission, and foreign jurisdictions. Steve works with diverse clients and cases that range from high-profile, “bet-the-company” litigations for Fortune 500 companies to smaller litigations for rapidly growing start-up technology companies.
Steve also advises clients on licensing and FRAND issues and has been involved in multiple PTAB proceedings, both on behalf of patent owners and petitioners. He was recognized by Best Lawyers in America as 2023 “Lawyer of the Year” for Litigation – Patent and has consistently been named a leading IP attorney by Managing IP, IAM, Super Lawyers, and Lawdragon. Steve has taught patent law at Touro Law School for the last four years, and is a frequent author and commentator concerning intellectual property issues.
Experience
- Imperium IP Holdings (Cayman), Ltd. v. A Multinational Electronics Company: Co-lead counsel in a case relating to three patents directed to functionality of image sensors and camera modules. Responsible for a patent invalidated by the jury. The case involved a six-day trial in the Eastern District of Texas.
- Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Limited et al.: Co-lead counsel representing IP Bridge at jury trial in asserting standards-essential patents related to the 4G/LTE telecommunications standard. After seven-day trial, the jury found all four asserted claims valid and infringed and awarded FRAND damages.
- Ultravision Technologies, LLC v. A Multinational Electronics Company: Lead counsel is a multi-case suit involving 9 patents involving LED technology. The case resulted in a favorable settlement for our client.
- Cellect LLC v. A Multinational Electronics Company: Lead counsel in a suit involving 11 patents and related IPRs relating to image sensor technology.
- Certain Wireless Devices with 3G and 4G Capabilities: Co-lead counsel on behalf of a multinational electronics company in an ITC investigation, including an eight-day trial, brought by InterDigital relating to seven patents directed to 3G and 4G standards.
- Certain Devices Containing Non-Volatile Memory and Products Containing the Same: Represented Spansion in an ITC investigation, including a five day trial, brought by Macronix relating to three patents directed to flash memory.
- A Multinational Electronics Company v. Imperium IP Holdings (Cayman): Representing client at the U.S. Court of Appeals for the Third Circuit in breach-of-contract appeal.
- Certain Devices Containing Non-Volatile Memory and Products Containing the Same: Lead counsel on behalf of Spansion in a second ITC investigation brought by Macronix relating to 3 patents directed to flash memory.
- Certain L-Tryptophan, L-Tryptophan Products, and Their Methods of Production (337-TA-1005): Counsel for CJ CheilJedang adverse to its competitor Ajinomoto in a two-patent dispute relating to genetically-modified bacteria for the production of L-tryptophan. Secured initial determination of no violation of Section 337 at trial, with the presiding Administrative Law Judge finding both patents to be invalid and not infringed and that Ajinomoto failed to satisfy the domestic industry requirement.
- Co-lead counsel representing StrikeForce Technologies, Inc. in a series of district court actions in E.D. Va., D. Mass. and C.D. Cal. against multiple defendants and parallel PTAB proceedings involving the assertion of its patents relating to out-of-band authentication techniques and systems.
- Motorola Mobility LLC v. Microsoft: Managed and co-led the Motorola team in multiple litigations against Microsoft involving over 30 patents, including patents essential to the 802.11, H.264 and 3G standards, asserted in various jurisdictions including the International Trade Commission, the Southern District of Florida, the Western District of Wisconsin, and the Western District of Washington. The dispute involved novel FRAND issues and included three trials, including two in the International Trade Commission.
- Certain Television Sets, Television Receiver, Television Tuners and Components Thereof: Defended a major multinational electronics company in an ITC investigation relating to two patents directed to television tuners. Led a team that successfully obtained summary determination of non-infringement for a design-around product.
- Certain Wireless Communication System Server Software, Wireless Handheld Devices and Battery Packs: Co-lead counsel on behalf of Motorola in an ITC investigation against RIM relating to five patents, including a patent essential to the 802.11 standard, directed to features of wireless devices. RIM settled with Motorola shortly before the Markman hearing as part of a global settlement of all litigation between Motorola and RIM.
- Motorola v. Research in Motion: Managed and co-led the Motorola team in multiple litigations against RIM involving of over 20 patents, including patents essential to the 802.11 standard, asserted in various jurisdictions including the International Trade Commission, the District of Delaware and the Eastern District of Texas.
- Godo Kaisha IP Bridge 1 v. TCL: Counsel for IP Bridge in a two-patent suit involving LTE SEPs in the District of Delaware.
- Allure Energy, Inc. v. Honeywell International Inc.: Counsel for Honeywell in a patent infringement and false advertising litigation involving internet-of-things technology.
- Emerson Electric v. SIPCO et al.: Counsel for Emerson Electric in a 10-patent lawsuit, multiple inter partes review and covered business method proceedings, and Federal Circuit appeals relating to mesh network technology.
- Visual Content IP, LLC v. A Major Telecommunications Company: Lead counsel in a case filed in the Eastern District of Texas relating to three patents directed to image capture and processing.
- Certain Digital Televisions and Certain Products Containing Same and Methods Using Same: Lead counsel on behalf of Polaroid in a successfully concluded ITC litigation relating to two patents directed to digital televisions and the ATSC standard.
- Praxair, Inc. v. Advanced Technology Materials, Inc.: Represented Praxair in multi-district litigation against ATMI relating to systems for the controlled discharge of toxic gases. The Federal Circuit affirmed the Southern District of New York’s summary judgment ruling that ATMI’s patents were invalid. In a separate case, a federal jury in Delaware, after an eight-day jury trial, found that ATMI infringed two Praxair patents.
- Syndia Corp. v. The Gillette Company: Represented Gillette in a three-week jury trial on four patents relating to a plasma-enhanced PVD process used in manufacturing the MACH3 razor blade.
- Motorola, Inc. v. VTech Communications, Inc. et al.: Co-lead counsel in a successfully concluded litigation relating to five patents covering telecommunication products and features.
- DataSci, LLC v. eTrials Worldwide, Inc.: Co-lead counsel in a successfully concluded litigation relating to a patent directed to centralized collection of data using the Internet.
- Akrion, Inc. v. Solid State Equipment Corporation: Co-lead counsel in a successfully concluded litigation relating to six patents directed to semiconductor processing.
Publications
- Quoted, “Avanci Aftermarket Will Succeed But Face Resistance: Sources Say,” Managing Intellectual Property (March 2, 2023)
- Co-author, “How Agency Activity is Impacting Patent Litigation This Year,” Bloomberg Law (February 10, 2023)
- Co-author, “Juries to play key role in SEP litigation for infringement and damages,” Global Competition Review and Intellectual Asset Management (January 6, 2023)
- Co-author, “Volatile US executive policy landscape means uncertainty for injunctions in SEP litigation,” Global Competition Review (December 21, 2022)
- Quoted, “Revised Essential-Patent Policy to Spur New Injunction Fights,” Law360 (October 7, 2022)
- Quoted, “Draft Standard-Patent Guidance Is U.S. Bid in Global Debate,” Bloomberg Law (December 8, 2021)
- Quoted, “How five lawyers manage work-life balance amid remote work,” Managing Intellectual Property (September 29, 2021)
- Co-author, “3 Patent Eligibility Reform Ideas Add Clarity But Bring Risks,” Law360 (September 28, 2021)
- Co-author, “Supreme Court Limits Assignor Estoppel, Making Some Patents Easier to Challenge in Court,” IP Litigator (July-August 2021)
- Co-author, “Electric Vehicles, 5G, & IP Disputes,” Bloomberg Law (July 9, 2021)
- Quoted, “What a DoJ Website Change Means for Biden’s SEP Policy,” Managing Intellectual Property (May 14, 2021)
- Co-author, “The Internet of Things: Application of Current FRAND Methodologies in Developing Markets,” The New York Law Journal (March 19, 2021)
- Co-author, “Licensing and Litigation of 5G Standard-Essential Patents,” Bloomberg Law (December 7, 2020)
- Quoted, “Counsel Must Educate Juries on US FRAND Rates,” Managing Intellectual Property (November 2, 2020)
- Co-author, “U.K. Supreme Court Permits SEP Holders to Require Worldwide FRAND Licenses,” IP Litigator (September-October 2020)
- Quoted, “How Jury Trials are Affecting US IP: Judges and Lawyers,” Managing Intellectual Property (October 5, 2020)
- Quoted, “Counsel divided on impact of Avanci case dismissal,” Managing Intellectual Property (September 18, 2020)
- Co-author, “Challenges in Quantifying 5G Benefits and SEP Value,” Bloomberg Law (April 8, 2020)
- Co-author, “Opportunities and IP Risks Surrounding 5G: The Next Dominant Cellular Technology,” Bloomberg Law (October 30, 2019)
- Co-author, “What To Expect From An Appeal Of FTC V. Qualcomm,” Law360 (June 5, 2019)
- Co-author, “Licensing Strategies for SEP Licensors in the Internet of Things Age,” Bloomberg Law’s Tech & Telecom Law (December 13, 2018)
- Co-author, “FRAND: Beginning With a Three-Pronged Approach,” World IP Review (September 10, 2018)
- Co-author, “Internet of Things: Manufacturers’ Patent, Business Considerations,” Bloomberg Law’s Patent, Trademark & Copyright Journal (May 18, 2018)
- Co-author, “Internet of Things: Next Patent War Zone,” Bloomberg BNA’s Patent Trademark & Copyright Journal (January 11, 2018)
- Steven Pepe and Samuel Brenner, “Implications of a Revitalized 28 U.S.C. § 1400(b): Identifying the 'Regular and Established Place of Business' for Patent Venue in the Internet Age,” 33 TOURO L. REV. 1 (2017)
- Co-author, “Promega: Can Inducer And Infringer Be The Same Party Now?,” Law360 (March 16, 2015)
- Cited, “Spansion Targets Macronix Patents In PTAB Review Petitions,” Law360 (July 22, 2014)
Presentations
- Speaker, “International Trade Commission: A New Frontier for Enforcement?” MIP IP & Innovation Summit (May 24, 2022)
- Speaker, “Litigating Standard Essential Patents in the U.S.,” IPWatchdog SEP Symposium (November 8-11, 2021)
- Speaker, “SEPs and FRAND: 5G, IoT and Emerging Technologies.” Managing IP U.S. Patent Forum (September 22-23, 2021)
- Speaker, “SEPs and the Internet of Things,” IP Watchdog Standard Essential Patent Symposium (November 17, 2020)
- Speaker, “IP and Privacy Law Resulting from Technological Developments,” Touro Law School Technology & Law CLE (November 5, 2020)
- Speaker, “U.S. Patent Litigation & Non-Practicing Entity (NPE) Trends,” 2020 Korea IP Summer Forum (August 27, 2020)
- Speaker, “Standard Essential Patent (SEP) Licensing Demystified,” Ropes & Gray Webinar (April 30, 2019)
- Presenter, “An Introduction to Patent Drafting, Prosecution and Litigation,” Practising Law Institute’s Patent Fundamentals Bootcamp 2018 (June 13, 2018)
- Presenter, “Patent Drafting & Prosecution: A Trial Lawyer’s Perspective,” PLI Patent Prosecution Boot Camp (June 13, 2014)
- Presenter, “Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing”
- Presenter, “Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing”
- Presenter, “Fundamentals of Patent Prosecution 2017: A Boot Camp for Claim Drafting & Amendment Writing”
Education
- LLM (Intellectual Property), The George Washington University Law School, 1997
- JD, cum laude, Touro College Jacob D. Fuchsberg Law Center, 1996; Editor, Touro Law Review
- BS (Electrical Engineering), The Cooper Union for the Advancement of Science and Art, 1993
Admissions / Qualifications
Qualifications
- New York
- Connecticut
- U.S. Patent and Trademark Office
Court Admissions
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Third Circuit
- U.S. Court of Federal Claims
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the District of Connecticut
- U.S. District Court for the District of Colorado
Awards
- The Best Lawyers in America Litigation – Patent “Lawyer of the Year” (2023)
- The Best Lawyers in America (2022-2023)
- Lawdragon 500 Leading Litigators in America (2022)
- Managing Intellectual Property "Patent Star" (2022)
- IAM Patent 1000: The World's Leading Patent Practitioners
- New York Super Lawyers (2013-2021)