Andrew N. Thomases
Andrew Thomases is chair of the firm’s intellectual property litigation practice group and co-head of the firm's technology, media & telecommunications group. He is a nationally-recognized, first-chair trial lawyer with 25 years of experience litigating complex patent and trade secret cases in federal courts throughout the country, as well as before the International Trade Commission. He has achieved numerous successes for companies in the fields of computer technology, semiconductors, analog circuits, wireless technology, video streaming, medical devices, and many others.
Andrew recently represented Roku and several TCL TV entities in a multi-patent infringement litigation filed by Canon, as well as corresponding inter partes review petitions. The matter concerned TCL-branded Roku TVs, including streaming video and smart TV functionality and interfaces. Andrew achieved a favorable settlement that includes a license for all of Roku’s TV partners.
On behalf of Veeco Instruments, Andrew obtained a preliminary injunction, which is particularly rare in patent cases. The matter involved a district court case, inter partes review proceeding, and appeal against SGL Carbon. The technology related to removable wafer carriers used in the production of LEDs in Metal-Organic Chemical Vapor Deposition (MOCVD) systems.
In addition, Andrew served as lead counsel for flash memory chip maker Spansion in a large set of multi-patent litigations against its rival Macronix International. Andrew’s representation included four ITC investigations, three district court cases, eleven inter partes review proceedings before the U.S. Patent Office, and coordination of multiple patent litigations in Germany. After two successful trials before the ITC, and after obtaining sanctions against Macronix, the litigations settled favorably for Spansion.
As a first-chair litigator, Andrew also obtained a complete defense decision at the ITC for Advanced Analogic Technologies, Inc., a semiconductor device company, and supported that decision in two appeals before the U.S. Court of Appeals for the Federal Circuit. He was also a key member of a team that obtained a $57 million-plus jury verdict on behalf of a global leader in medical technology, services, and solutions – one of 2009’s largest plaintiff verdicts in California. He has extensive experience in many U.S. district courts, including the Eastern District of Texas, the Districts of California, and the District of Delaware.
Andrew has been recognized as a “leading lawyer” in patent litigation by Chambers USA: America’s Leading Lawyers for Business and has been named among the “Top IP Litigators” in California by the Daily Journal. He has also been recognized by The Legal 500 (U.S.) for his record of successfully representing clients before the ITC.
- Egenera v. Cisco Systems (D. Mass.) – Representing Egenera in a three-patent infringement case in filed against Cisco involving processing area network technology.
- Universal Electronics v. Roku (ITC) – Representing Roku in a Section 337 investigation at the ITC filed by Universal Electronics, Inc. involving Roku’s streaming players, televisions, set top boxes, remote controllers, and related products.
- Extreme Networks – Advising Extreme Networks on general IP litigation matters and has served as lead counsel for a number of patent litigations against Datacloud, Diff Scale Operation, XR Communications, Dunti Networks, and Plectrum, among others.
- Teleputers, LLC v. A Leading Semiconductor Company, Inc et al (W.D. Tex.) – Representing a leading semiconductor company in a two-patent litigation concerning permutation algorithms implemented on ARM processors.
- Canon, Inc. v. TCL Electronic Holdings Ltd. (E.D. Tex.) – Represented Roku and several TCL entities in a multi-patent infringement lawsuit filed by Canon concerning video streaming and smart TV functionality and interfaces. Achieved a favorable settlement that included a license for all of Roku’s TV partners.
- Blue Spike, LLC v. Roku, Inc. (D. Del.) – Led the Ropes & Gray team representing Roku in a seven-patent suit relating to secure transactions. Secured a favorable settlement on behalf of Roku.
- Roku – Advising Roku in its litigation strategy in responding to licensing demands from a number of non-practicing entities.
- Veeco Instruments Inc. v. SGL Carbon, LLC et al (E.D.N.Y., Fed. Cir.) – Led the Ropes & Gray team representing Veeco in a two-patent infringement case related to removable wafer carriers used in the production of LEDs in Metal-Organic Chemical Vapor Deposition (MOCVD) systems. Successfully obtained a preliminary injunction prohibiting SGL from supplying infringing wafer carriers to Veeco’s chief MOCVD competitor, after which the case settled while on appeal.
- Godo Kaisha IP Bridge 1 v. Intel Corp. (E.D. Tex.) – Represented IP Bridge in a nine-patent suit involving semiconductor fabrication technology. Obtained a very favorable settlement for client on eve of expert discovery.
- Godo Kaisha IP Bridge 1 v. Broadcom Ltd et al (E.D. Tex.) – Co-led the Ropes & Gray team representing IP Bridge in a six-patent suit involving semiconductor fabrication and microprocessors. Obtained highly favorable settlement for IP Bridge just weeks before trial and following the Court’s denial of Broadcom’s summary judgment motion that sought to limit the scope of potential infringement and damages.
- Activision Blizzard, Inc. et al. v. Acceleration Bay (PTAB) – Represented three global computer gaming companies, including Activision Blizzard, Take-Two Interactive, and Electronic Arts, in challenging three patents through multiple petitions for inter partes review. The patents relate to broadcasting information in computer networks.
- 1474971 Ontario Ltd v. A Leading Global Pharmaceutical Company (N.D. Ill., PTAB) – Represented a leading pharmaceutical company in patent case involving the use of Botox® to treat pain from spinal compression. In the IPR, the PTAB found in favor of our client, invalidating all asserted patent claims. The decision was not appealed and the district court action was dismissed with prejudice.
- Twenty-First Century Technologies v. Samsung Electronics (W.D. Tex.) – Led the Ropes & Gray team representing Samsung in a patent infringement suit relating to patents involving illuminated keyboards.
- Zipit v. BlackBerry (D.S.C.) – Represented BlackBerry in a four-patent suit filed by Zipit regarding wireless messaging and control of communications devices over a computer network.
- CollabRx v. The Jackson Laboratory (N.D. Cal.) – Defended a biomedical research institution in a trade secret misappropriation matter concerning methods of using a database to associate cancer gene variants with potential drug treatments and clinical trials.
- Clean Energy Management Solutions v. SmartThings, Inc. (E.D. Tex.) – As litigation counsel for SmartThings, obtained early dismissal in an infringement suit on a patent asserted against “Internet of Things” products.
- Packet Tread LLC v. Samsung Electronics (E.D. Tex.) – As litigation counsel for Samsung Electronics, obtained favorable early resolution of a lawsuit involving echo cancelation technology.
- Spansion v. Macronix et al. (USITC, N.D. Cal., E.D. Va.) – Lead trial counsel for Spansion in a large set of multi-patent cases related to flash memory technology, including four investigations at the U.S. International Trade Commission, three cases in the Federal courts in Virginia and the Northern District of California, and eleven inter partes review proceedings before the Patent Office. The dispute was successfully settled.
- Preservation Technologies, LLC v. Netflix, Inc. et al. (C.D. Cal.) – Represented Yahoo! Inc. in a six-patent suit filed by Preservation Technologies. Favorably settled.
- A global leader in medical technology, services, and solutions v. AGA Medical Corporation (N.D. Cal.) – Represented a global leader in medical technology, services, and solutions in a multi-patent infringement dispute involving the material properties and structures relating to stents used in the cardiovascular system; obtained a $57 million-plus jury verdict on behalf of client.
- A global leader in medical technology, services, and solutions v. W.L. Gore (N.D. Cal.) – Represented a global leader in medical technology, services, and solutions in a patent infringement case asserting six separate patents relating to cardiovascular medical devices; favorably settled case for the client.
- WIAV Networks, LLC v. 3Com Corp., et al. (N.D. Cal.) – Represented a leading global information technology company in a patent litigation involving wireless networking technology; obtained favorable settlement after successful claim construction ruling.
- Adiscov v. FTI Consulting et al. (E.D. Va.) – Represented FTI Consulting in a patent suit regarding electronic discovery tools; achieved dismissal of the complaint and a favorable settlement.
- Linear v. Advanced Analogic Technologies Inc. (USITC, Fed. Cir.) – Represented AATI in several ITC trials and appeals before the Federal Circuit involving switching voltage regulators. Settled after successful trials and appeals.
- Profiled, “California’s Top Intellectual Property Lawyers,” Daily Journal (April 18, 2018)
- Quoted, “Ropes & Gray Appoints Chair of Life Sciences IP Group,” Life Sciences Intellectual Property Review (February 12, 2018)
- Co-author, “Commentary on Patent Litigation Best Practices: International Trade Commission Section 337 Investigations,” The Sedona Conference Working Group (February 2018)
- Quoted, “The Road More Traveled: Patent Attorneys Head to Delaware,” Bloomberg Big Law Business (January 29, 2018)
- Profiled, “Top Intellectual Property Lawyers 2017” Daily Journal (August 16, 2017)
- Cited, “Texas Court Hands Patent Win to Roku Over Improper Venue,” Law360 (July 6, 2017)
- Cited, “Allergan Gets Patent Claims in Botox Suit Nixed at PTAB,” Law360 (March 29, 2017)
- Quoted, “Patent Litigation Trends to Watch in 2017,” Law360 (January 2, 2017)
- Quoted, “Patent Dispute Lawsuits on the Rise in 2016,” InsideCounsel (April 21, 2016) (subscription required)
- Co-author, “Patent Litigation Developments to Watch in 2016,” Today’s General Counsel (February/March 2016)
- Co-author, “ITC Jurisdiction Restricted,” Intellectual Property Magazine (February 2016)
Quoted, ““Q&A: Ropes & Gray’s Andrew Thomases and Steven Baughman on Patent Trends in 2016,” Reuters Legal (January 5, 2016)
This material was posted from Westlaw with permission of Thomson Reuters.
- Quoted, “Federal Circuit Violates Teva Standard, SCOTUS Chooses Not to Enforce It,” InsideCounsel (November 20, 2015)
- Quoted, “ClearCorrect Ruling Keeps ITC From Policing Web Privacy,” Law360 (November 11, 2015) (subscription required)
- Quoted, “Federal Circuit Limits ITC Jurisdiction Over Digital Goods,” Managing Intellectual Property Magazine (November 11, 2015) (subscription required)
- Co-author, “Revisiting claim construction after the Supreme Court’s decision in Teva v. Sandoz,” InsideCounsel (May 11, 2015)
- “Court Clarifies FRAND Rate Standards,” The Recorder (May 10, 2013)
- “What The Motorola FRAND Ruling Means For Your Company,”Law360 (May 2, 2013)
- “The ITC’s Pilot Mediation Program for 337 Investigations: A Primer,” IP Law & Business (October 20, 2009)
- “A Potential Gap in the ITC’s Authority: Method of Use Claims,” Landslide Vol. 1 No. 6 (July/August 2009)
- “The Impact of Kyocera v. ITC,” Law Journal Newsletters (January 2009)
- “Section 337: Latest Developments at the ITC,” FCBA Bench & Bar Conference (June 24, 2021)
- “International Litigation Strategy and Coordination,” 20th Annual Berkeley-Stanford Advanced Patent Law Institute: Silicon Valley (December 12-13, 2019)
- “The International Trade Commission (ITC) PTAB and the District Court – Through the AIA Lens," FCBA Bench & Bar Conference 2019 (June 12-15, 2019)
- “Willful Infringement: More Than Two Years After Halo, How Are Practitioners Advising Their Counsel on Willfulness Issues?,” Daily Journal Patent Disputes Forum (April 17, 2019)
- “Litigating at the ITC: Distinctions From and Similarities To District Court Proceedings," Santa Clara FCBA Regional Program (April 8, 2019)
- “The International Trade Commission – ‘All Things ITC’,” FCBA Bench & Bar Conference (June 23, 2018)
- “Where Are We Now and How Did We Get Here?,” Daily Journal’s 2018 Patent Disputes Forum (April 18, 2018)
- “The Interplay of PTAB and the ITC Post-Cisco v. Arista: Practitioners Discuss the Practical Implications for Patent Litigation and Exclusion,” ACI’s 10th Expert Forum on ITC Litigation & Enforcement (March 5, 2018)
- “Inter Partes Review: A Cross-Industry Perspective,” Ropes & Gray and the ACC on Post-Grant Patent Challenges at the Patent Trial and Appeal Board Conference (January 13, 2016)
- “The Real World Impact of Recent Supreme Court Patent Decisions,” Association of Corporate Counsel - Bay Area Chapter (May 12-13, 2015)
- “Judicial and Regulatory Rulings Affecting Value,” PLI conference on “Building a Law Department IP Licensing Program: Driving Shareholder Value,” (September 20, 2013)
- “Enforcement of Standard-Essential Patents,” Federal Circuit Bar Association’s Bench and Bar Conference (June 21, 2013)
- “Litigating Against Non-Practicing Entities,” PLI’s Advanced Patent Law Institute (March 19, 2013)
- “Essential Questions about Standard-Essential Patents,” Berkeley and Stanford Law Schools’ Annual Advanced Patent Law Institute (December 6, 2012)
- National Taiwan University College of Law/Industrial Technology Research Institute IP Conference on Non-Practicing Entities (October 30-31, 2012)
- “RAND in the Courts,” Berkeley Center for Law and Technology seminar (October 26, 2012)
- “The New Meaning of ‘Domestic Industry’ and Why NPEs Are Filing in the ITC,” Silicon Valley Association of General Counsel “All Hands” meeting (December 7, 2011)
- JD, The University of Chicago Law School, 1994; with honors
- BA (Physics), magna cum laude, Amherst College, 1990
Admissions / Qualifications
- California, 1995
- U.S. Patent and Trademark Office, 1997
- U.S. District Court for the Southern District of California
- U.S. District Court for the Central District of California
- U.S. District Court for the Northern District of California
- U.S. Court of Appeals for the Federal Circuit
- The Best Lawyers in America (2016-2021)
- IAM Patent 1000: The World's Leading Patent Practitioners (2020-2021)
- The Best Lawyers in America, Silicon Valley Intellectual Property Litigation Law “Lawyer of the Year” (2019)
- Chambers USA: America’s Leading Lawyers for Business (2008-2013, 2016-2020)
- Legal 500 US (2009, 2015-2020)
- The Daily Journal’s “Top IP Litigators in California” (2010, 2017-2018)
- Super Lawyers Northern California (2010-2016)